By Shane Wax
Did you know the New York State Brewers Association was founded nearly 50 years before the New York State Bar Association? In fairness, beer was first produced in Mesopotamia at least a thousand years before the legal profession began to take form in Ancient Greece. In that sense, brewing is not unlike other forms of creation including artistic expression and useful invention – indeed, many might argue that brewing is both an art and a science. It is only natural, then, that the modern world of craft brewing encapsulates several potential ways to protect (or infringe) intellectual property.
Craft brewing has exploded in the past two decades, with American craft breweries eclipsing the thousand mark in 1996, the 2,000 mark in 2012, and then growing annually at a 20% rate to over 8,000 today.[1] So it has become increasingly important for craft brewers to set themselves apart from their competitors while disputes have become more and more common.[2] This article will take a glance at a few ways that intellectual property law intersects with the craft brew industry, from the suds itself, to names, to artwork and decoration.
Let’s start with beer itself. For a long time, food and drink recipes were unprotected under U.S. federal law,[3] and victims of recipe theft were limited to state law trade secret misappropriation claims – which several states, including New York, did not recognize. In 2016, the Defend Trade Secrets Act was enacted, which creates a federal private cause of action for the misappropriation of a “trade secret related to a product or service used in, or intended for use in, interstate or foreign commerce,” and explicitly authorizes injunctive relief.[4] The federal statute is worded very similarly to the Uniform Trade Secrets Act now adopted by 48 states (but still not New York), so the biggest change is simply having a federal forum and a guaranteed cause of action regardless of jurisdiction. Still, proving that a particular beer recipe qualifies as a trade secret will be an uphill battle in any case.[5]
But consumer interactions extend beyond the bending of an elbow to quaff a brew made with a secret recipe. A beer can or bottle can feature copyrightable artwork, like the expressive and colorful sci-fi scenes adorning the labels at my local brewery, Kings County Brewers Collective. Fancy tap handles may also merit copyright protection, either as two-dimensional artworks or three-dimensional sculptures, like SweetWater’s fishy tap handles or SingleCuts rockin’ tap handles. Craft breweries also set themselves apart and attract through other creative decorative choices, like ornamentation adorning bars or fanciful beer or tap list signs, which may be copyrightable. Further, if unique enough, a tap room might even claim trade dress rights in the exterior or interior designs and architectures.[6]
Perhaps the most obvious way craft breweries try to set themselves apart is in the selection of names, both for the brewery at large (e.g., Cigar City Brewing), or for their individual beers (e.g., “Jai Alai” by the aforesaid Cigar City). Indeed, most craft beer infringement lawsuits relate to similar names or logos. The rub here is that the industry’s common nomenclatural is driven by descriptive terms, and U.S. trademark law does not protect descriptive marks unless the trademark owner has established ‘secondary meaning’ for the mark. For example, take Brooklyn Brewery – “Brooklyn” is descriptive of where the company is located, and “Brewery” is a generic term; however, it has been in business for over 30 years, and, assuming it could show substantial exclusivity, it might be presumed to have acquired secondary meaning.[7]
The bar on trademarking generic terms extends to beer types (e.g. IPA or Pilsner) while terms that describe how a beer tastes may walk the line between merely descriptive (e.g. “peanut butter stout” or “pumpkin ale”). However, it only takes a little imagination to cross the “distinctiveness” threshold and adopt a name that is suggestive, arbitrary or whimsical. Evil Twin Brewing (based out of Ridgewood, Queens) offers many great examples – an imperial stout called “Imperial Biscotti Break,” which suggests a flavor profile (biscotti) without describing what’s in the beer; another pair of stouts called “Double Barrell Jesus” and “Even More Jesus,” whose names are arbitrary and don’t describe the beer at all; and whimsical or fanciful names like “If You Want The Rainbow, You’ve Got To Put Up With The Rain” and “No Snowflake Ever Falls In The Wrong Place.”
Brewery and beer names are not the only goods and services that can be protected under trademark law. Marketing materials from tap handles to glassware to clothing and merchandise bearing the brewery’s name, beers images or names, logos or slogans are protectable as trademarks.
Let’s not forget about patent law. Design patents can protect ornamental designs of bottles or glassware. Plant patents may be granted to new varieties of hops and genetically modified yeasts may also be patentable. Further, a new machine, method or process related to brewing or distribution might be novel and non-obvious enough to qualify for a utility patent.
In sum, pretty much every aspect of modern craft brewing can be protected under federal intellectual property laws, from secret and unique recipes to brewery and beer names to artwork, décor and merchandise.
[1] See Brewers Association, National Beer Sales & Production Data (last accessed Mar. 29, 2021), https://www.brewersassociation.org/statistics-and-data/national-beer-stats/; Paul Gatza, Brewers Association, U.S. Craft Brewery Count Reaches 2000 (May 24, 2012), https://www.brewersassociation.org/brewing-industry-updates/u-s-craft-brewery-count-reaches-2000/.
[2] See, e.g., Tailgate Beer, LLC v. Boulevard Brewing Co., No. 3:18-cv-00563 (M.D. Tenn. Oct. 16, 2019); Anstalt v. Route 66 Junkyard Brewery LLC, No. 1:17-cv-00062 (D.N.M. Jan. 16, 2019); Shipyard Brewing Co. v. Logboat Brewing Co., No. 2:17-cv-04079 (W.D. Mo. Jun. 25, 2018); Dist. Brewing Co. v. CBC Rest., LLC, No. 2:15-cvV-3114 (S.D. Ohio Nov. 7, 2017); New Belgium Brewing Co. v. Travis Cnty. Brewing Co., No. 15-cv-00272 (D. Colo. May. 1, 2015); Bear Republic Brewing v. Central City Brewing Co., 716 F. Supp. 2d 134 (D. Mass. 2010).
[3] Procedures, processes, systems and methods of operation are explicitly not copyrightable. See 17 U.S.C. 102(b); Publications Int’l Ltd. v. Meredith Corp., 88 F. 3d 473 (7th Cir. 1996) (holding that cookbook recipes are not copyrightable to the extent they combine facts (ingredients) with a procedure (directions)).
[4] 18 USC § 1836.
[5] Cf. Buffets, Inc. v. Klinke, 73 F.3d 965, 968 (9th Cir. 1996) (“The recipes were for such American staples as BBQ chicken and macaroni and cheese and the procedures, while detailed, are undeniably obvious.”); Hui Kun LI v. Shuman, No. 5:14-cv-00030, 42 (W.D. Va. Dec. 9, 2016) (“Lu claims his dishes taste different than similar dishes at other restaurants but identifies no explanation for that difference or ‘secret ingredient’ that makes his dishes unique. . . he points to nothing about his recipes or the ingredients that go into those recipes that gives him a competitive edge. . . . General references to ‘the process’ and ‘combination of different ingredients’ are not specific enough to constitute a trade secret.),
[6] See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992).
[7] See 15 U.S.C. § 1052(f) (“proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years” may constitute “prima facie evidence that the mark has become distinctive”); Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 162-163 (1995); Aromatique, Inc. v. Gold Seal, Inc., 28 F.3d 863, 870 (8th Cir. 1994) (“In order to establish secondary meaning, the user of a mark, or, here, a dress, must show that by long and exclusive use in the sale of the user’s goods, the mark has become so associated in the public mind with such goods that the mark serves to identify the source of the goods and to distinguish them from those of others.”); Royal Palm Props., LLC v. Pink Palm Props., LLC, 950 F.3d 776, 784 (11th Cir. 2020).