Brewer Magic Hat files federal lawsuit against West Sixth Brewing

vhoneycutt@herald-leader.comMay 21, 2013 

In a battle of beer logos, brewer Magic Hat has filed a federal lawsuit against Lexington's West Sixth Brewing Co., claiming trademark infringement.

A lawsuit filed May 16 in U.S. District Court charged that West Sixth began selling beer, ale and brewpub services in 2012 using color, trademarks and designs "that closely resemble and are confusingly similar" to the designs used by Magic Hat for several years.

On Tuesday, West Sixth co-owner Ben Self said the lawsuit was without merit. West Sixth officials launched a social media campaign, asking customers to sign a petition on its website to ask Magic Hat to drop the lawsuit and stop "corporate bullying."

According to news reports, North American Breweries Inc. bought Vermont-based Magic Hat in 2010. North American's website said it owns and operates five U.S. breweries and six retail locations in New York, Vermont, California, Oregon and Washington.

The petition had more than 5,100 signatures by 9 p.m.

"The public has really come to our defense as a craft beer producer and joined us demanding that Magic Hat withdraw their lawsuit," Self said.

What's at issue is a logo used on a number of products, including beer bottles and cans.

The lawsuit said the appearance or trade dress of Magic Hat's #9-branded products is characterized by its distinctive orange, the predominant color on its labels, the presence of the "dingbat" star and the circular motif of the #9 design.

West Sixth recently introduced its Amber Ale, which is offered in an orange label that includes the numeral 6. The lawsuit says West Sixth has used a "dingbat" star to "confuse consumers and trade on Magic Hat's good will."

Magic Hat has used the #9 mark for beer and ale since at least 1995 in the United States and since at least 2009 in Kentucky, according to the lawsuit.

West Sixth has sold beer, ale and brewpub services using the 6 in its logo in portions of Kentucky and Ohio since April 1, 2012, the lawsuit said.

Magic Hat is seeking an injunction to stop West Sixth from using the design and is asking the court to direct West Sixth to pay Magic Hat all profits made by West Sixth as a result of "its acts of unfair competition," the lawsuit says. Additionally, Magic Hat is asking for a jury trial and damages including costs and attorneys' fees.

The lawsuit says West Sixth's use of "confusingly similar marks" is causing Magic Hat irreparable harm.

"West Sixth's use of its confusingly similar marks ... continues to cause, and is likely to cause confusion, ... and deception in the minds of the consuming public," the lawsuit said.

West Sixth officials posted a statement at Nomoremagichat.com that said, in part:

"Before we go any further, we do want to let you know that none of this will affect in any way our ability to continue brewing the great beers that you all have come to love. So, don't worry about that at all!

"They're claiming that we intentionally copied their logo, and that has caused them "irreparable harm," enough that they're asking for not only damages but also all our profits up until this point (little do they know that well, as a startup company, there wasn't any, oops!)"

West Sixth logos were created by a professional design firm in Lexington called Cricket Press that has "a long history of fantastic and creative logo designs. ... Our logo contains neither a '#' nor a '9.'"

Nashville attorney Joshua Denton, who represents Magic Hat and its co-plaintiff, Washington state-based Independent Brewers United Corp., said his clients historically have "taken extensive efforts to protect the distinctive trademarks and design that they use in the sale of their beer and ale."

"Unfortunately, last year West Sixth began infringing my clients' intellectual property rights related to West Sixth's sale of its own beer, ale and brewpub services," Denton said. "While my clients took extensive efforts to resolve this dispute informally, it ultimately was determined that this lawsuit would be required to protect their valuable intellectual property rights."

The lawsuit says West Sixth recently expanded its use of the 6 logo into South Carolina and intends to begin selling its beer and ale in other states in the near future. The two competitors use many of the same distributors for their products, according to the lawsuit.

Valarie Honeycutt Spears: (859) 231-3409. Twitter: @vhspears.

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