Whiskey's Good Proofing Water, But It Doesn't Tell You Who The Real Peaky Blinders Are

• Published date: 06 November 2021
• Subject Matter: Intellectual Property, Litigation, Mediation & Arbitration, Media, Telecoms, IT, Entertainment, Trademark, Trials & Appeals & Compensation, Advertising, Marketing & Branding
• Law Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
• Author: Ms Yinfei Wu

Thomas Shelby, the lead character in the British period crime drama Peaky Blinders, said, "Whisky is good proofing water. Tells you who's real and who isn't." But a federal court in California disagreed in a recent case brought by the show's producer, denying its motion for a preliminary injunction to prevent the defendants from using the mark PEAKY BLINDER to sell liquor and beer in the United States. The court said that, for each of its claims, the producer failed to meet the high bar required for a preliminary injunction.

Through its show, Caryn Mandabach Productions Limited ("Mandabach"), the producer of Peaky Blinders and the plaintiff in this case, introduced Americans to the street gang that once operated in turn-of-the-century England. The gang, based in Birmingham, included characters who were often violent but also loved their whiskey:

The defendants were two English alcoholic-beverage companies (Sadler and Halewood) and their U.S. distributor (Winebow). In 2017, Sadler filed a trademark application in the U.S. to use the mark PEAKY BLINDER for beer and liquor, including Sadler's Peaky Blinder Blended Irish Whiskey:

After filing suit, Mandabach sought a preliminary injunction on its complaint, which included claims for (1) unfair competition under both the federal Lanham Act and California law, (2) false designation of origin under the Lanham Act, (3) passing off under the Lanham Act, and (4) false advertising under both the common law and California law. The court, however, found that Mandabach had failed to demonstrate that any of the relevant factors'likelihood of success, irreparable harm in the absence of an injunction, the balance of equities, or the public interest'favored granting a preliminary injunction.

The Court Found the Rogers Case Inapplicable.

The court initially addressed Mandabach's claims of unfair competition and false designation of origin. After saying that Mandabach would have to establish two things to prevail on these claims'that it owned a valid and protectable mark and that the defendant's use of the mark was likely to confuse consumers'the court considered the defendants' argument that the claims were barred by Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). Under Rogers, the court said, where a trademark has been used in a way that would normally be infringing, but the mark was allegedly used to communicate "messages and ideas," that use is actionable under the Lanham Act only where () the use had "no artistic...