April 9th, 2014
The tweedy Explorers Club is going hunting and the target is Johnny Walker‘s new Explorers’ Club (note the apostrophe) limited edition scotch in a court action citing an obscure law protecting non-profits from commercial exploitation.
US president, naturalist and big game hunter Teddy Roosevelt, underwater pioneer Jacques Cousteau and Arctic explorer Sir Ernest Shackleton have all graced the New York institution’s club house, and now the non-profit is invoking a 100 year-old+ law to block the Diageo mega-brand from selling its sound-alike scotch in duty-free stores here and abroad.
This article in Fortune reports that club members from around the world (there are 26 chapters) are shocked that the scotch bears the club’s name. While protected with a US trademark, the Explorers Club’s mark is not protected from Diageo using the sound-alike name overseas as part of what the brand describes as “the biggest spirits roll-out in history.” Diageo owns and/or distributes some of the world’s largest alcohol brands, including Bushmills Irish whiskey, Captain Morgan rum, Smirnoff vodka, Tanqueray gin, and of course, Broad Street Licensing Group client, Guinness beer.
According to the article, Diageo assumed that it was in negotiations with the club to secure a commercial endorsement when the club hired a big-time law firm which promptly filed two lawsuits: a standard trademark infringement brief in Federal Court, as well as one invoking Section 135 of New York’s General Business Law in State Court. The former would likely play out over time and involve an expensive and complex round of claims and counter-claims about whether consumers would be confused by Johnny Walker’s use of the name. The suit in NY State Court invokes a statute meant to prevent fake charities from scamming the public for contributions. The standard of proof is lower, and only requires that the club prove there would be confusion without the long, complicated (and expensive) trial customary in Federal Court trademark cases.
Apparently if the club wins the case in NY State Court, a permanent injunction would bar Diageo from selling their Explorers’ Club scotch domestically. Legal sources referenced in the article think it’s unlikely the State Court case will go forward, sending the dispute to the higher Federal Court.
In either case, expect the lawyers for both sides to stock up on scotch for a lucrative payday.
NOTE: This post was prepared from materials in the public media and in no way was prepared with any information supplied by Diageo.