In March of 2021 Heaven Hill Distilleries, Inc. filed a lawsuit against Log Still Distilling LLC for “TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION.” Heaven Hill was seeking monetary damages and preliminary and permanent injunctive relief.
Nine months after filing the lawsuit a U.S. District Judge has released a ruling granting in part Heaven Hill’s motion for a preliminary injunction and has specified the steps Log Still Distillery must take.
What Does the Injunction Say and What Will Log Still Do Next?
Before we jump into the judge’s findings and Log Still Distillery’s response, let’s take a look at the history of the J.W. Dant family and its whiskey brand.
For nearly 200 years and seven generations the Dant family name has been a part of the distilling business in the U.S. The Dant legacy can be traced back to Joseph Washington Dant or simply J.W. Dant. Dant officially started his commercial distilling operation in 1836 at Dant Station , Kentucky. The way the story goes, Dant did not have the resources to build a proper still when he started distilling so he fashioned his still out of a hollowed-out poplar log until he could afford a copper still. And the rest as they say is the story of bourbon whiskey-lore.
J.W. Dant and his wife Ann had seven sons, all of whom were involved in the distilling and spirits industry. J.W. Dant is believed to have retired during the 1880s when he turned operations over to his sons George and Wallace (Wally) who took over The Dant Distillery Company, Inc., and were assisted in that distillery by their brothers Thomas, Frank, and James.
The Dant Distillery Company, Inc. produced and sold J.W. DANT whiskey continuously from its opening until Prohibition. During Prohibition, J.W. DANT whiskey continued to be sold as medicinal whiskey. When Prohibition came to an end, six of J.W. Dant’s seven sons—all but Wally Dant—were still living. Most of the sons were involved in the revival of The Dant Distillery Company, Inc.
As often happens in the distilled spirits industry, or any industry for that matter, the members of the Dant family ultimately decided to sell their company and exit the industry. In 1943, the assets, stock, and trademarks of The Dant Distillery Company, Inc., including the J.W. DANT trademark and associated goodwill, were sold to United Distillers of America.
The distillery was sold a few more times over the years and was eventually acquired by Heaven Hill in 1993. Heaven Hill still sells a J.W. Dant Bottled-in-Bond bourbon whiskey today. Out of the many brands of spirits and bourbon that Heaven Hill sells the J.W. Dant brand is not prominently featured across its portfolio. In fact, according to the suit filed by Heaven Hill, gross revenue for all J.W. Dant brands has dropped from $2.6 million in 2004 to $1.2 million in 2020. A little surprising considering the bourbon boom over the last decade.
Heaven Hill Distilleries Files Suit Against Startup Log Still Distillery Over Use of ‘J.W. Dant’ Trademark
Choo, Choo – Wally Dant, Kentucky Gov & Friends Arrive at Log Still Distillery Ribbon Cutting by Train
Watch as J.W. ‘Wally’ Dant III and Family Along with Gov. Beshear Celebrate the Opening of Log Still Distillery’s Tasting Room [VIDEO]
Log Still Distillery Celebrates its 1st Ribbon Cutting with Opening of ‘The Homestead’ B&B at Dant Crossing
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Judge Rules In Favor of Heaven Hill Motion and Orders Log Still to Stop Using J.W. Dant Brand
The judge has ruled in favor of Heaven Hill and says that Log Still Distillery must stop using the J.W. Dant brand. They can still talk about the history and familial connection to J.W. Dant but it must be removed from any branding and should be referred to as Joseph Washington Dant to help avoid any confusion in the marketplace. Anytime they use the J.W. Dant name it must include a “conspicuous disclaimer that Log Still does not own and is not affiliated with the J.W. Dant brand.”
What is Log Still Distillery’s Response to the Judge’s Ruling?
We reached out to Log Still Distillery and they said they will comply with the judge’s ruling in the case. Here is the statement released by J.W. ‘Wally’ Dant III and Log Still Distillery.
“We are proud of our Dant family distilling history and applaud the Court for recognizing Log Still Distillery’s right to continue using the Dant name in association with Log’s Still Distillery’s products and Dant Crossing campus.
“While we do not agree with some of the Court’s conclusions, all of us at Log Still Distillery have great respect for the Court and will move expediently to comply with its ruling.
“Log Still Distillery, the Monk’s Road spirits line, and the destination being built at Dant Crossing represent a new chapter for our family that we look forward to continuing.”
~ Log Still Distillery
The entire finding from the judge is a single spaced 58 page document. We’ll save you some time and share the actual recommendation as spelled out by District Judge Benjamin Beaton.
UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF KENTUCKY
HEAVEN HILL DISTILLERIES, INC. PLAINTIFF
v. No. 3:21-cv-190-BJB-CHL
LOG STILL DISTILLING, LLC DEFENDANT
* * * * *
Mindful of those competing considerations, therefore, the Court GRANTS IN PART Heaven Hill’s motion for a preliminary injunction and ORDERS Log Still to stop using the goodwill associated with the J.W. Dant brand to promote its spirits and services by taking these steps: A. Products, labels, and logos 1. Log Still must remove references to J.W. Dant and his story from its products, labels, and logos. See, e.g., K. Taylor, 31 F. Supp. at 614–16. 2. Log Still must remove references to the year 1836 from its products, labels, and logos since its use implies an ahistorical connection to the J.W. Dant brand. See vonRosenberg, 429 F. Supp. 3d at 182–85. 3. Log Still needn’t destroy, recall, or relabel existing products that it has already labeled or branded due to Heaven Hill’s agreement, Tr. II at 214–18, and the cost and complications involved. The relabeling required by this Order will apply prospectively to any new bottle produced by Log Still. 4. The parties shall confer and update the Court regarding a timeline for rebranding, specifically addressing the timing and process for any federal label approval, see Tr. II. at 148–49, 156–57, as well as the amount and nature of the infringing products and services that will remain on offer. B. Marketing 1. Log Still may not use the jwdant.com domain in connection with any aspect of the spirits industry. See generally Audi, 469 F.3d at 543–45. 2. Log Still must remove any social media, web, advertisement, or other marketing or communications content that promotes its spirits by of signature and personal story adjacent to disclaimer); Hustler, 810 F.3d at 426–28 (barring brother from using last name Flynt “in connection with the sale, promotion or advertising of adult entertainment products or services unless it is accompanied by the first name ‘Jimmy’ in the same font size, color, and style and on the same background color” and a disclaimer regarding his brother’s brand). Case 3:21-cv-00190-BJB-CHL Document 68 Filed 12/16/21 Page 57 of 58 PageID #: 4592 58 stating or implying that Log Still is reviving, preserving, or contributing to the legacy of J.W. Dant’s distilling and the company he founded and his descendants sold. K. Taylor, 31 F. Supp. at 614–16. 3. Log Still needn’t eliminate all references to the history of J.W. Dant and the current Dants’ familial connections with him on their tours, website, social media, or campus. But such references must include a conspicuous disclaimer that Log Still does not own and is not affiliated with the J.W. Dant brand, which previous generations sold and is now owned by an unaffiliated company. See, e.g., L.E. Waterman Co., 235 U.S. at 96; Taylor Wine, 569 F.2d at 736. 4. Log Still must use Joseph Washington Dant’s full name, as opposed to J.W. Dant, when discussing his story, company, or legacy. Id. 5. Log Still and members of the Dant family involved in Log Still may refer to the current family members’ involvement in the new venture as long as they don’t use the initials J.W. out of context and explain their names and associations in an accurate and non-misleading manner. Id. C. Dant Crossing 1. Log Still may continue to refer to its campus as Dant Crossing, given the property’s historical ties to the Dant family and the term’s descriptive nature. But Log Still may not take steps to further affiliate the campus name with the marketing and offering of the spirits distilled there under different brand names. See Sazerac Brands, 892 F.3d at 857. To the extent the Dant Crossing name is used in connection with the original J.W. Dant and the marketing of spirits, Log Still must use a disclaimer. 2. Log Still must remove the Dant Distillery Company stencils from the barrels and refrain from using that common-law trademark in other commercial ways. D. Bond 1. The parties must confer regarding a potential bond amount from Heaven Hill, consistent with Fed. R. Civ. P. 65(c), and submit their joint or (if necessary) respective positions within 10 days of the entry of this Order.
Now that that is settled, time to get back to making bourbon whiskey!
Is Bourbon Justice Something New? Hardly
Bourbon and lawsuits are no stranger to each other. In fact, the book Bourbon Justice: How Whiskey Law Shaped America is dedicated to the topic.
Bourbon whiskey has made a surprising contribution to American legal history. Tracking the history of bourbon and bourbon law illuminates the development of the United States as a nation, from conquering the wild frontier to rugged individualism to fostering the entrepreneurial spirit to solidifying itself as a nation of laws. Bourbon is responsible for the growth and maturation of many substantive areas of the law, such as trademark, breach of contract, fraud, governmental regulation and taxation, and consumer protection. You can learn more about Bourbon Justice here.