Legal Dept: Gosling's "Dark and Stormy"

[Capn Jimbo]

They will sue you...


Perhaps one of the earliest and most memorable examples of product protection was in 1936, not long after the end of Prohibition. "Bacardi and Coke" became perhaps the most famous rum drink of all time and Bacardi was determined to protect it.

Bartenders everywhere were fulfilling the common cry of "Bacardi and Coke" with rums other than Bacardi. In the now famous case of 1936, Bacardi successfully defended the drink and the court ordered that this named drink must be made only with Bacardi rum.

A bit more recently RnD's former rum review site published the recipe for a "Painkiller" specifiying a rum other than Pussers. Not good. Sure enough, they felt obligated to edit their "Painkiller" recipe to properly specify Pussers rum. You see the "Pusser's Painkiller" is the registered property and signature drink of Pussers.


Even more recently...


And very recently a poster at the Shillery linked an article at a blog named "Inu A Kena" - who published a very interesting comparison of dark rums in making Gosling's famous (and registered) "Dark and Stormy" (link).
In their "Dark & Stormy Rum Challenge" compared and rated seven rums.

Inu a Kena:

1. Coruba Dark Rum (Jamaica)
2. Cruzan Black Strap Rum (St. Croix)
3. Gosling’s Black Seal Bermuda Black Rum (Bermuda)
4. Meyers’s Original Dark Rum (Jamaica)
5. Trader Vic’s Dark Rum (“West Indies”)
6. Whaler’s Original Dark Rum (Kentucky, USA)

Just one problem. Like "Bacardi and Coke" and "Pusser's Pain Killer", the "Dark and Stormy" is registered and copyrighted and may ONLY specifiy and use Gosling's Ginger Beer and Gosling's Black Seal Rum.

Period. Of course I drew this to Inu a Kena's attention with yet another of my friendly reminders...

Moi: "It should be understood that a “Dark and Stormy” is copyrighted and can only be made with Goslings Black Seal. It is actually illegal to use the term, as here, and specify any other rum in any recipe entitled “Dark and Stormy”. The same is true of the Pusser’s Pain Killer. Not so long ago RnD had to change their website when they published a Pain Killer not using Pussers.

I think its important that we all respect the law, and Gosling’s copyright and ownership of a drink that they developed and promoted. It’s fine to compare dark rums, and we certainly have at The Rum Project, but not using the term “Dark and Stormy” and especially with any other rum than Black Seal."

Now it's fair to say that copyright - at least insofar as the internet is concerned - is used in a rather fast and loose manner. All manner of websites, pics, and quotations are linked or reproduced. Actually most of this constitutes what is called the "Fair Use Doctrine" - wherein an article is not simply stolen or put out as one's own work product, but is selectively used to make a educational point or the like.

According to the Wikipedia, "Examples of fair use include commentary, criticism, news reporting, research, teaching, library archiving and scholarship." My use of this Wiki quote is fair use. But using six rums other than Gosling's Black Seal in an article entitled ""Dark & Stormy Rum Challenge" is not.

I'd urge you to check the link and see if Inu a Kena will, like RnD, get to their rewrite their copy before Gosling becomes aware...

[Capn Jimbo]

The Capn gets his hook twisted...


I was shocked to get a very quick and really quite clever reply from "Josh" - apparently the learned webmaster at Inu a Kena:

Josh:"You’re almost right, Capn! The Gosling’s trademark is for “Dark ‘N Stormy”, not Dark *and* Stormy, as mentioned above. Cheers!"

I have to give credit to this young man, obviously well trained at the Capn Jimbo Academy of Hair Splitting, who posted a wonderfully clever retort in just a few powerful words delivered with rapier precision. Capn Josh, I commend you - but - has he been too clever by half? Especially because the article used both the terms "Dark & Stormy" and "Dark and Stormy". I thought so and posted the following...

Moi: "Somehow I think that Gosling might not see it your way, which may just prove too clever by half. Travel with care as per the NY Times, to wit: “We defend that trademark vigorously, which is a very time-consuming and expensive thing,” said E. Malcolm Gosling Jr., whose family has owned Gosling’s since its founding in Bermuda in 1806. “That’s a valuable asset that we need to protect.”

Bacardi successfully defended the notion of a "Bacardi and Coke", or in your case "Bacardi & Coke" requiring the use of Bacardi Rum. Pusser has frequently defended their "Painkiller". RnD felt obligated to change a web published recipe for a non-Pussers "Painkiller" The legal measure: might an ordinary drinker confuse a "Dark 'n Stormy" with your "Dark and Stormy"? Choose incorrectly and you might get "Good 'n Plenty", er "Good and Plenty" from their legal department. Personally I don't see the distinction, as it seems clear that you are promoting the use of other rums based on Gosling's drink.

You decide.

On a more positive note, good on you for the dark rum sipping comparison, and travel with care."

This is where all of you - my fellow idiots - need to throw your waterproof hats into the ring and comment: would an ordinary drinker confuse a "Dark and Stormy" with Gosling's rightfully protected "Darn 'n Stormy"?

You decide...

[Capn Jimbo]

Capn Josh replies...


I'll give Capn Josh this. He's a fighter after my own heart. Better yet, he argues with respect, unlike the Shillery where even constructive criticism is met with withering insults. It's a monkey thing.

So Josh met my brilliant retort (above) with this:

Josh: "Thanks very much for that–I do appreciate your comments and the spirit in which they are given. That said, trademarks are very particular things, and having registered a few myself both with and without a lawyer, I can say that applicants must be incredibly specific in order to secure a mark. So while Gosling’s can and does vigorously defend their legal right to the name, that name is in fact “Dark ‘N Stormy” as registered with the USPTO, and not “Dark and Stormy” , “Dark & Stormy”, or even “Dark ‘n’ Stormy” as they are different.

So while I doubt the USPTO would issue a trademark to anyone for a similar product spelled a bit differently (owing to the concept of confusion) it doesn’t mean Gosling’s holds title to those similar names, or that my use of dissimilar spellings in the context of a non-commercial blog post is beyond what a “reasonable person” would consider “fair use” speech protected by the first amendment. If I was selling something called Dark & Stormy, we would of course be in a different boat!

As a lawyer friend of mine likes to say: “you can sue anyone at any time for any thing” but I don’t think the good folks at Gosling’s would (a) give a hoot about my little article or (b) find it worthwhile to sue me for it. Finally, I’m sure the Electronic Frontier Foundation would happily defend me pro bono if they did.

Cheers!

PS. Here’s a link to a USPTO search for Dark and Stormy:"

Excellent! But Josh suffers from the idealism of youth. So I replied with a little reality check...

Moi: "Josh you’re not alone in filing a mark, and I’ve conducted many a search. However, please don’t confuse the great specificity required with filing a mark with the much, much less specific issue of trademark infringement. Some readers may recall Malibu’s recent enforcement over a competitor who simply used some of the same colors and and only remotely similar bottle shape. The issue: it was confusing to the ordinary buyer, and Malibu prevailed.

There was nothing specific about it.

Now as to enforcement. It is especially the very large corporations (with very deep pockets) who must work very hard and scrupulously to protect their brand or name from entering the public doman. Ever xerox, er Xerox something? That’s why McDonald’s even shut down a small town hardware store – not a hamburger in sight – named “MacDonalds”. Another fanatical company is Coca Cola. They have been so meticulous that if a bar doesn’t have the actual product, they’ll ask “Is Pepsi OK?”. The Coke reps actually walk into mom ‘n pops to check. The big guys will even file defendable lawsuits knowing that the little guy will usually back off before risking his net worth.

Companies like Gosling are meticulous and they say so. Contrary to what most believe, it’s the little guys they are after, for it is uses like this – read by thousands of internet surfers – that threaten their protection. To allow even minor infringement is risking many millions of dollars of brand value and unique identity. The idea that you can make a “Dark ‘N Stormy”, er “Dark & Stormy” with another rum is intolerable.

Allow enough such minor infringements and your protection disappears into the public domain. “Google” that, lol!

The issue in trademark infringement is simply confusion. If the usages of “Dark ‘N Stormy”, “Dark and Stormy”, “Dark & Stormy”, “Dark ‘n Stormy” and/or “Dark And Stormy” aren’t confusing, especially when discussing variations of a famous rum drink, well then we think differently. Hell, now I’m confused as to which one is Goslings?! When you say “Next is Gosling’s Black Seal rum—the go-to rum of many a Dark and Stormy aficionado.” then even you are blurring the line. They aren’t at all worried about whether you are selling a similar product, but rather that you are implying that another rum would work as well if not better in their named drink. They must protect their brand. from the public domain.

Let’s be honest – you didn’t use the name “Dark & Stormy” by accident – you article rides on their coattails and proposes making a better “Dark and Stormy” (any version) using another rum. If Gosling’s hadn’t made the drink famous, you wouldn’t be trying to improve it.

Or so your well funded benefactor would say, and I tend to agree with them.

Truth be told, it would be possible to publish this article without possible infringement by giving full credit to Gosling’s “Dark ‘N Stormy” and then publishing “A comparison of dark rums with ginger ale” (giving full credit to say Canada Dry, lol), Or simply not using the name “Dark ‘N Stormy (or trivial modification) at all.

Last, as lovers and reviewers of rum don’t you think we should all be working to support families like the Goslings and to honor and help protect a brand they worked so hard to create and establish? Isn’t that the right thing to do?

And now back to rum reviewing for the both of us… keep up the good and interesting work!"

And so our exchange ended. Legalities aside, we all should support the right of the Gosling family to protect a brand and drink that they created and own, and that is worth millions to them. We owe them that...

[Capn Jimbo]

Two days later... a shocking conclusion!


After a really vigorous but respectful exchange Josh and I ended same agreeing to disagree. A review is in order:

Josh's Points

1. The Gosling’s trademark is for “Dark ‘N Stormy”, not "Dark and Stormy" or "Dark & Stormy" (his article).

2. Because trademarks are very specific, because of this difference Gosling would not act.

3. Gosling wouldn't "give a hoot" about his "little article" and even if they did, he'd contact the Electronic Frontier Foundation who would represent him "pro bono" (for free).

4. He quoted Malcom Gosling "“Would we trademark another drink?” he says wearily. “Probably not.” as implying that they were not of a mind to enforce their property.

5. He cited the "Fair Use Doctrine" as allowing his article.

6. In sum he found my observations silly and trivial.


My Main Points

1. The use of "Dark and Stormy" with any rum but Gosling is a trademark violation.

2. The issue is confusion and the use of “Dark ‘N Stormy”, “Dark and Stormy”, “Dark & Stormy”, “Dark ‘n Stormy” and/or “Dark And Stormy” are distinctions without a difference. They are all violations.

3. Gosling, like Pussers, Bacardi, Malibu, Coca Cola and McDonalds absolutely do act agressively to protect their marks, to prevent their valuable property from entering the public domain. Examples were given.

4. Small violaters are not exempt, and that included Josh. The example of RnD publication (and correction) of a "Painkiller" without Pussers was noted.

5. I noted "fair use" does exist, but does not apply to trademarks.


So who was right?

Two days later Josh closed the page.

He had received a "cease and desist" legal notice from a New York law firm which claimed Josh's knowing trademark violation and triple damages. They advised that unless he took down the page and publicly clarified Gosling's ownership within 5 days, that they would proceed! They addressed and contradicted all of Josh's public claims, including his reference to the EFF.

Holy moly, Batman!

He then dedicated a new page entitled "Cease and Desist",admitting Gosling's ownership and the correct recipe for a "Dark 'N Stormy". He publicly apologized and made clear this would never happen again. Gosling's essentially gave him a free pass. Still a number of posters felt that Gosling had been overbearing and mean, completely discounting property rights, and Goslings obligation to enforce them to prevent the loss of their name to the public domain.

Personally and property rights aside, I believe all - reviewers especially - have the moral obligation to support and defend the fine families who have worked so hard, and who have invested much time and treasure in creating products we have come to know and enjoy.

As I put it later, it's easy for all of us to shoot off our mouths on the net and hold forth as bar stool experts, but a legal notice from a New York law firm is an unequivocal and jarring reality check. My only advantage in the matter was my knowledge of trademark enforcement in food and spirits, and my past experience in legal research. Even so, I too was surprised that Gosling acted, and so quickly.

And so it was. An amazing story.


*******
Capn's Note: For those who'd like to see the actual "cease and desist" notice, Josh published a link to it (here)

[da'rum]

Sheesh.

A dark storm in a tea cup.

The balance between PR and trademark protection.

Bundaberg rum sold cans of premix rubbish called Dark and Stormy's I bet Goslings was all over that.

I wonder if re wording would of been in order; something like

We tried to make Goslings Dark and Stormys™ with other dark rums to see what tasted better...here are our opinions...etc?

[Capn Jimbo]

Oid say this, mate...


I don't know about Australian law and/or the effects of international trademarks, but a "Dark 'N Stormy" cannot, shall not use or suggest any other rum than Gosling's Black Seal. Josh attempted to "improve" the D&S by testing seven other rums and, heaven help him, rating them to see which made the best version.

All illegal, all making him liable for significant damages.

It's simple. Dark and Stormy's were traditionally made with Gosling's, who at a point, decided to make the use official and defendable property, and D&S's continued to be made - solely - with Gosling's. This is a family who invested millions in their name and property, which they properly proceeded to protect via trademark and copyright. Legal appications were made and no one objected, and were therefore granted. That horse is out of the barn, and I personally take strong exception to any party who wants to walk the razor's edge and use or abuse the property belonging to another. Want to make a competitive drink using another dark rum?

Have at it.

But fer gawdssake have the legal and moral sense to pull yourself up by your own bootstraps. Whatever you create may not use or imply that it is a "substitute" for Goslings. Attempts to gain attention by using the property of another is cheap and indefensible. There is no "balance" between PR and trademark protection. We are a country and people of laws and no such distinction exists.

Attempts to weasel around trademarks by indirect reference should not, and won't succeed. Establishing a trademark only begins with the relatively inexpensive filing - it is the years of agressive defense against interlopers and abusers that cost money. Failing to do so allows the valuable mark to enter the public domain and cannot be tolerated.

That's the sum of it. Competitors should have the cajones to name their own fucking drink and spend their own millions promotinig and protecting it. It's the right thing to do and I support family Gosling, et al, 100%...

[da'rum]

Yes, and if he (Josh) was selling something then wacko, but he wasn't selling anything. He's just a young blogger musing over the hyperglobalmeganet on what rum would be best for him and his buddies to recommend to whoever cares to follow their lead in a Dark and Stormy™.

The balance of PR over copyright remark was just my observation on the ill will created by the legal dept by threatening a blogger (not a business selling something). The remarks in that blog (approx 15) were 99% (apart from yours) vehemently against Goslings ™ and the legal threat.

To the point where they stated they wouldn't use Goslings™ any more.

Now split that into the pure gas ratio and you probably have 1/3rd who will definitely not use Goslings™ again multiplied by impassioned critiques to their friends against Goslings™ and then that is multiplied again. Then you have those who will use Goslings if they have no other choice but will still voice their negativity on this now out of proportion episode.

Result: A fair chunk of negative PR and a ™ protection threat that wasn't.

You were in marketing you know how it goes. When a company pleases a customer they tell 10 friends conversely when a company pisses a customer off that customer tells ALL their friends.

[Capn Jimbo]

It's a nation of laws first, and a free-for-all later...


Property rights affect us all. That includes our homes, cars, names and businesses. Companies spend serious money deevloping, naming, makiing, distributing, promoting and selling a product: be it Big Mac's, Crest toothpaste, Coke Zero, BP's Invigorate gas, STP fuel additives, Morton salt, Campbell's tomato soup, Heintz catsup, Sue Bee honey, Xerox copying machines and on and on, ad infinitum. Protected drinks include "Bacardi and Coke", Pusser's Pain Killer and Gosling's Dark 'N Stormy.

Read the link to Josh's "Cease and Desist" order above for a precise explanation that you don't have to sell the product to violate its trademark protection.

Underlying this is a huge issue. A company spends years and millions promoting a name, recipe or product that finally - finally - becomes well known and respected. Believe me if Gosling's hadn't established a successful and valuable product and signature drink, nobody would be trying to improve it by substitution. It's fine to substitute rums, but not to call it a Dark and Stormy, or Dark & Stormy as Josh did.

It's just that simple. They own it.

Companies who achieve this success may not want to chase down violations, but they are forced to - otherwise and unchallenged the name can enter the public domain, then anyone can not only blog about it, but actually sell a Dark 'N Stormy using any rum they'd like. This is not an outcome any successful company or individual can tolerate.

You wouldn't either.

Think in terms of your property line. How long would you tolerate people crossing through your yard, allowing their pets to poop there and throw picnics in your back yard? Gosling has a choice: suffer the temporary loss of Josh and a handful of scofflaw posters, or lose the millions of dollars they have invested in their good name.

Keep in mind that Goslings cut Josh some real slack, by allowing him to retract his page and go on with his life, scot-free. Had they sued him for $100,000 these complainers might be justified. Actually Goslings offer was really rather a fair and kind gesture on their part. It could have been much worse. It's like the guy who back ends your car, you stop and look at your slightly dented bumper, and you let him go. Be careful next time brother...

Drive carefully and don't break the law.

[da'rum]

It's murky territory all this Dark and Stormy™ talk.

You draw an extremely long bow with the pooping in the yard analogy but I get your gist.

I will add my final thought to how I think Josh should of proceeded. I think most of this type of copyright law is pure bollocks and employed by company's that want to tie something up and remove competition through legal channels rather than create something of superior quality and let that quality and the market decide the game. (see Apple and Samsung apparently Apple owns the shape 'rectangle with round edges')

Soooo. Taking on board your points about the hard work and money spent that Goslings®™ have invested to copyright the name of a drink they didn't invent but never the less did it legally and therefore must be adhered to. Here is how I would of changed Joshs's page,

Today we are going to make Goslings®™ Dark and Stormys™ using Goslings Black Seal rum™ and (this ginger beer™). We will also be trying out different rum brands to see which ones taste the best. We must however bear in mind that once different rum is used it is then no longer called a 'Dark and Stormy™' but rather a 'highball' version DS1.0

Then insert testing results and thoughts.

Conclusion:

We are very appreciative of the hard work that the marketing, legal and copyright arms of Goslings® have put in to making a 'Dark and Stormy™' famous however in our entirely different drink (as we now know it is not and can't be a Dark and Stormy™ as it is not made with Goslings®) We have found that this/these rums for our palate/tastes mix more pleasurably with (this Ginger beer™). So the winner is for the best black rum for a Highball DS1.0 is bla bla bla.

Credit given to Goslings® trade mark, Dark and Stormy® acknowledged. Job done.





*******
Capn's Log: Actually, this is pretty much what Josh did, and had to shut down. One can't imply that you can make the same trademarked drink with another rum.

The issue in trademark infringement is confusion. As you pose it, there remains confusion, as this presentation still implies the substitution (and rating!) of rums other than Goslings. Naming the Dark 'N Stormy even indirectly is risky. As another example Malibu shut down a competitor who didn't even use the name but very similar colors on a white bottle, as so held by an independent judge and jury.

Again - the issue is confusion. A consumer could easily mistake the very similar presentation, names aside, for Malibu's product. Hint: don't use golden arches in your restaurant design. And on goes this Dark and Lengthy (but worthwhile) discussion...

[da'rum]

And re word he has, good on him.

http://inuakena.wordpress.com/spirit-re ... omment-821

[Capn Jimbo]

Back to the Future...


DR, you may have missed the original thread which was taken down. Parts of it are above, where my suggestion was:

Moi: "Truth be told, it would be possible to publish this article without possible infringement by giving full credit to Gosling’s “Dark ‘N Stormy” and then publishing “A comparison of dark rums with ginger ale” (giving full credit to say Canada Dry, lol), Or better not using the name “Dark ‘N Stormy (or trivial modification) at all.

In that thread another law abiding poster also suggested:

DJ Mal:

"Capn Jimbo is spot on with this. Many think that if you change something by 50% you’re not infringing. This is not true. You can change it 99.9% and still be infringing. If a judge decides the consumer could be confused its infringing no matter how much you change it. Still a great review, just need to change the heading to Dark Rums and Ginger Beer and most will know what were talking about."

It seems our advice was pretty good after all. Good on Josh for belatedly coming to the party... here's to family Gosling and their terrific Dark and Stormy!


By the way...

The Rum Project did this very comparison four years ago, called the "Dark Rum Smackdown". This was published in June of 2008 and is linked (here).

[John Willy]

Nothing of significance to add. Just my comment that I found this topic to be an excellent read, educational, informative and well written. Well done all!

By the way, my very first foray into a rum site was at Inu a Kena where I was reading these posts by some guy named 'Jimbo' or something like that. I realized that by clicking his 'tag' I was directed here. So aside from Josh first impressing me with a few short reviews on Bevmo and more extensive reviews on his site (sort of limited in number of rums reviewed), I found this site and ultimately arrived here. So my thanks to Josh for all that plus directing me to a few California online sites that are excellent for purchasing rum.

Good job guys!

Regards,
John