On July 14, 2017, the Eastern District of Kentucky found that the use of trademarked words to describe a property’s history is not trademark use.

In 2014, Peristyle, LLC purchased the abandoned Old Taylor Distillery in Millville, Kentucky, hoping to exploit its unique history. The distillery was built in 1887 by Colonel Edmund H. Taylor, considered by many to be the father of the modern bourbon industry. Peristyle renamed the property “Castle & Key,” intending to do all its whiskey-related business under that name; nevertheless, a historic sign at the property’s entrance reads “The Old Taylor Distillery Company,” and throughout the renovation period, Peristyle and the media often referred to the location as “the former Old Taylor Distillery” or simply “Old Taylor.”

Sazerac Brands, LLC owner of trademark rights to the marks OLD TAYLOR and COLONEL E.H. TAYLOR for its own bourbon offerings, sued for trademark infringement, alleging multiple infringing uses by Peristyle of its marks. Those included that Peristyle had, in promoting its own future products: (1) displayed photos of the distillery prominently featuring the “Old Taylor Distillery Company” sign; (2) invited future customers to sign up for a “Former Old Taylor Distillery” mailing list; (3) sent newsletters promoting products from the “Former Old Taylor Distillery”; (4) sent fliers with headings such as “The Historic Old Taylor Distillery Coming Soon!”; and (5) frequently identified itself using “Old Taylor” language on social media.

On summary judgment, the court concluded that Peristyle’s use of the mark did not qualify as “trademark use” for purposes of Lanham Act liability? The court noted that Peristyle did not identify itself as the source of Sazerac’s OLD TAYLOR or COLONEL E.H. TAYLOR bourbons, but rather as the former “Old Taylor Distillery Company” which was an accurate statement of fact. The court stated: “Sazerac’s OLD TAYLOR and COLONEL E.H. TAYLOR trademark rights prevent Peristyle from marketing itself as the source of Old Taylor bourbon today, but they do not serve as a gag order on historical accuracies.” While noting that the Lanham Act contains no “historical use” exception, it emphasized that all use by Peristyle of the words “Old Taylor” did not necessary qualify as a trademark use. Finding, “Peristyle ultimately seeks not to benefit from the reputation of Sazerac, but the reputation of Colonel Taylor himself,” the court continued: “This is, in the end, what Sazerac too is trying to accomplish: distilling spirits and attracting consumers with a bit of assistance from the captivating history and ongoing legacy of the father of the modern bourbon industry.” Based upon its conclusion that Peristyle’s Old Taylor references did not constitute trademark use, the court declined to address the issue of likelihood-of-confusion.

The court did note the potential for abuse in this unique situation, and suggested certain parameters to guide the parties going forward. For example, the court cautioned Peristyle not to market itself under the Old Taylor name or to use Sazerac’s marks on its bourbon labels. Further, though the sign is part of the property’s historic character and could remain, the court warned Peristyle against constructing additional signs featuring Sazerac’s marks. The court emphasized that Peristyle was not prohibited from mentioning the property’s historic name on the occasional social media post, or from using photographs or depictions of the historic sign.

The case is Sazereac Brands, LLC v. Peristyle, LLC, Case No. 3:15-cv-0076-GFVT-EBA (E.D. Ky.).