Happy Hour: Pusser's v. Painkiller

In the past week there's been a lot of buzz in cocktail circles regarding the outcome of a legal dispute between Pusser's rum and Painkiller, a tiki bar in the Lower East Side of Manhattan. It's a story that's led to a lot of anger among us folks in the cocktail biz, as it touches on a number of issues we consider important, so I figured I'd touch on it here. And because the dispute involves the confounding and often contradictory legal concept of intellectual property, there's been some confusion that I think needs to be cleared up as well--and who better than a lawyer to do so?


Photo copyright www.thelodownny.com. They were the first to break the story about the Pusser's drama. Read the original post here.

At the heart of the dispute is a classic tiki drink called the Painkiller. It's a drink I wrote about a couple years ago (photographed above; updated post here), and it's one I still enjoy on a hot summer day. It also happens to be the name of a tiki bar in Manhattan which opened just a year ago. The bar's name, obviously, is a tribute to the drink and by extension, its creators. The name Painkiller also happens to be trademarked, and that trademark happens to be owned by the rum company Pusser's. Painkiller (the bar), as you might imagine, also happened to feature the Painkiller (the drink) on their menu, and not necessarily with Pusser's rum in it.

So when Painkiller (the bar) opened its doors a year ago, Pusser's became pissed off about it and demanded that the bar cease and desist the use of their trademarked term as their name, and that they cease selling drinks called Painkiller unless it featured Pusser's rum. When the owners of Painkiller refused, the rum company decided to sue the bar in federal court (because the trademark is filed with the federal government), claiming "irreparable harm to its brand, unfair competition and unfair business practices." Rather than duke it out in court (which may seem like the honorable thing, but remember honor can also be very expensive) the owners of Painkiller decided to settle out of court. Accordingly, the owners have now changed the name of their bar (it's now officially called PKNY), surrendered their domain name, and removed any references to the Painkiller drink.

When word spread last week, the cocktail community was ablaze with fury over the issue. People soon took to social media outlets like Twitter and various blogs to sound off against Pusser's. Many called for a boycott of the rum brand, and a Facebook page was started called Bartenders Against Trademarking of Cocktails, which garnered hundreds of members in a matter of hours. Jackson Cannon, bar manager of Eastern Standard in Boston decided to take it a step ballsier by changing the cocktail menu to feature the Painkiller "proudly made without Pusser's rum," and posting a picture of the new menu along with his business card on Twitter, proclaiming "This is my menu... This is my card... You know where to find me!"


Photo by Jackson Cannon.

So who's really at fault here? To wrap our head around the issue (and various sub-issues), I figured it best to divide the analysis into three parts: the legal, the ethical, and the practical considerations.

LEGAL CONSIDERATIONS


Any legal analysis of this issue must begin by clarifying the differences between a patent, a copyright, and a trademark, the three main areas that comprise what is collectively referred to as intellectual property.

Patent

First let's get patent out of the way because it doesn't really apply in this case, though it's still useful to understand the basic concept. When someone seeks a patent, they're seeking a property right for an original invention or process they've come up. Having a patent allows the patent holders to exclude others from manufacturing or selling that invention or process.

So what can and can't be patented? A robot that has human emotions? Hell yes, and pretty cool at that. How about if someone invents a procedure from which to turn water into wine? Yes, that process can be patented, and would also be damn cool. But how about a recipe, because that's a process, right? Well, the answer is, sometimes. Technically recipes can be patented, but only if they present some new or inventive method of preparing said recipe. So to get more specific, a mere listing of ingredients and preparation instructions is not sufficient to receive a patent. Even a unique combination of ingredients is not enough. The process itself must be novel. So as it relates to cocktails, the simple answer is that cocktail recipes can not be patented. So even if you use your special homemade yak testicle bitters in an original cocktail creation, at the end of the day it's just a stirred cocktail that's no different from a Manhattan with regard to how it's prepared and the types of ingredients used (base spirit, a presumed modifier, and bitters).

Copyright

A copyright provides protection to "original works of authorship." This includes anything artistic, literary, musical, intellectual, etc. Owning a copyright gives you exclusive the right to do what you want with your creation. You can sell it, reproduce it, license others to reproduce it, display it for free, or perform it as the case may be, and prevent others from doing the same with your work. The reason behind the principle of copyright is to promote creativity by protecting it, with the rationale being that if creative works can be stolen, then creative people have less incentive to do creative things, and society would be presumably worse off.

It's important to note that a copyright protects the form or method of expression, and not the subject matter itself. So let's say for example that someone writes a book about the history of the Painkiller cocktail. The writer can copyright his original work of authorship so that someone else can't just publish his specific writings in whole or in part without his permission. But it doesn't prevent someone else from writing a different book on the history of the Painkiller cocktail because the subject matter itself is not protected. Otherwise there would only be one book published per subject.

So can recipes be copyrighted? The answer is no. A mere listing of ingredients is not protected under copyright law because it's not deemed to be a "substantial literary expression." What could be potentially protected is an accompanying "description, explanation, or illustration." Thus a cookbook can be protected, but the mere listing of the ingredients for a particular recipe within the cookbook can not be protected.

If that's the case, then what's the basis for Pusser's claim? Read on.

Trademark

A trademark is a word, symbol, or name that is used to distinguish a product of one company from the same product from another company. For example, Coca-Cola is a trademark. The company that owns that trademark, in this case Coca-Cola, has the right to sue another company if that company uses Coca-Cola's trademark on their products.

The principle behind trademark law is that it encourages honest competition between companies, and enables the consumer to distinguish between competing products. Unlike copyright law which is intended to limit competition, trademark law works to foster competition--or at least that's what it's supposed to do. You can see how it would be disadvantageous to consumers if someone were to be able to use the name Coca-Cola or a confusingly similar name to promote their own independent soda product. Even if that product were to be of higher quality than the real Coca-Cola, it would amount to consumer fraud, and we surely wouldn't want to allow that. When you buy a can of Coke, you expect it to be a can of Coke.

This principle is at the heart of Pusser's claim, which is that when a customer orders a Painkiller, they expect it to have Pusser's rum in it because they're expecting that unique taste. They have two trademarks on the name Painkiller: one for "alcoholic fruit drinks with fruit juices and cream of coconut and coconut juice," with the claim that the alcohol in the drink is Pusser's rum; and one for "non-alcoholic mixed fruit juices," because they also sell a product called "Pusser’s Painkiller Cocktail Mix." The former trademark enables them to force a bar to either remove the Painkiller drink from its menu or use Pusser's in the drink. The latter would appear to apply to the issue of preventing a bar from taking on the name Painkiller, since they have a product on the market with that name.

Note that there's no specific recipe being protected here. Their claim is not based on the precise measurements of particular ingredients to be used in a Painkiller, but rather that any drink called a Painkiller must include Pusser's rum in addition to "fruit juices and cream of coconut and coconut juice."

Legal Conclusion

It's important to remember that the case settled before actually going to trial, so no legal precedent has been set in favor of Pusser's. Whether or not they would have prevailed is something we'll never know, but presumably the attorneys for the defendant believed Pusser's had a good chance of prevailing and thus advised their client to settle; or that even if they believed they could successfully fend off the suit, the cost to do so simply wasn't worth it.

That said, the fact that Pusser's owns the trademark is not in dispute, and therefore the legal analysis seems to point in their favor. So why are people still upset then? People are upset, and I believe rightfully so, because this is a case where a colorable and convincing argument can be made that the law as applied has consequences that conflict with the spirit of the law as conceived.

For one, this seems to suppress competition, not enhance it the way trademark law is intended to do. Requiring Pusser's to be used in any drink called a Painkiller seems no different in principle than requiring only one brand of tequila to be used in a Margarita, or even one brand of pasta to be used in a Fettucine Alfredo. The only difference is that in the case of Pusser's they happen to have a trademark on that name. The current bartending culture thrives on cooperation and sharing of ideas, and the fact that a bartender could be restricted from using a different rum in a drink recipe just seems plain odd and out of line with plain common sense.

Furthermore, Pusser's trademark is certainly not akin to that of Coca-Cola, which involves a product with a secret recipe. The recipe for a Painkiller is not only public knowledge, but it was not even created by the Pusser's. Nor did Pusser's come up with the name. Worse yet, the Painkiller recipe predates the existence of the company by a decade, and the filing of the trademark by nearly two decades (I'll elaborate on that later).

This doesn't seem fair at all, and the entire concept of intellectual property is built on the notion of fairness. It's therefore too simplistic to say that Pusser's had a right and they were merely exercising that right. In fact, the more involved legal analysis reveals a reasonable argument that a trademark should have never been issued to Pusser's in the first place, or in the alternative, that trademark law needs to be changed to reflect a fair outcome in these types of cases.

ETHICAL CONSIDERATIONS

All the analysis about legal issues and rights doesn't change the fact that for many people, something just didn't smell right. Pusser's claim that Painkiller's use of their trademark caused "irreparable harm to its brand, unfair competition and unfair business practices" seemed to many like old-fashioned legal speak drummed up by smart corporate attorneys. Fuel to the fire of that suspicion was added when a few facts came to light that didn't put Pusser's in the most honest ethical light.

The first of those issues I mentioned above, that Pusser's did not even create the recipe for the Painkiller, nor did they come up with the name. Robert Simonson reported on his blog that tiki historian Jeff "Beachbum" Berry researched the history of the Painkiller and noted that it was created in 1971 by the owners of the Soggy Dollar Bar in the British Virgin Islands. He further notes that the original Painkiller was made with Mount Gay and Cruzan dark rums, not Pusser's. And as mentioned above, Pusser's didn't even exist as a company until a decade after the drink's creation. This is not in dispute, as it is corroborated by Pusser's rum founder Charles Tobias in a recently released statement on the company's website.

This was something I only recently realized. Up until a week ago I believed Pusser's was the original rum in a Painkiller, and that's what I wrote two years ago when I first wrote about the Painkiller recipe, and I've since had to go back and correct the record. As Simonson noted in his piece, even Jeff Berry, with his immense knowledge of tiki drinks was fooled, and admitted that Pusser's litigation lead him to believe they actually created the drink. I suspect others with an even more modest knowledge of tiki history were also fooled by Pusser's claim.

And that's not the only issue. Besides not being the creators of the drink they've trademarked and now aggressively enforce, it appears they're guilty of the same practices they accuse others of. A crafty member of the bartender community dug up a tweet by @pussers_bvi (the company's Twitter account) dating back to May 2010 which encouraged consumers to use Pusser's rum when making a Dark & Stormy. The significance of this is that a Dark & Stormy is the name of a cocktail created and trademarked by Gosling's rum; it is a trademark that Gosling's vigorously seeks to enforce in the same manner as Pusser's. In the legal field, the term for such behavior on the part of Pusser's is "unclean hands."

Ethical Conclusion

That many in the cocktail community are up in arms over the actions of Pusser's is not merely an irrational, uninformed, or visceral reaction as some have stated. There are bona fide issues of moral duplicity on the part of Pusser's which are difficult to avoid, and have not yet been responded to by the folks at Pusser's. Moreover, most people aren't well-versed in the legal intricacies involved, so these issues strike a bigger chord than claims of legal right. To most people learning of the issue, Pusser's actions simply don't pass the smell test.

PRACTICAL CONSIDERATIONS

In addition to the various legal and ethical issues here, a number of people have brought up certain points that are simply common sense considerations, irrespective of the technicalities of the law or otherwise. Below is a summary of some of the most notable ones.

First, and in defense of Pusser's, they rightly claim that not enforcing their trademark in instances of potential infringement leaves them vulnerable for when they do decide to enforce. Essentially the claim is that you risk losing a right you don't take care to defend. True as that may be, it's still a tough sell when you weren't the creator of the trademark.

Others have noted that claims of legal right aside, suing a well respected bar as Painkiller, with owners as highly regarded in the cocktail community as Richard Boccato and Giuseppe Gonzalez, is asking for a major PR headache. As it is Pusser's doesn't have a huge presence in the U.S. market, and pissing off bartenders who are the gatekeepers of consumer awareness and consumption is not a bright way to increase market share.

Furthermore, it's likely that in its one year of existence, the bar Painkiller has done more to promote the drink--and indirectly Pusser's as a brand--than all of Pusser's marketing efforts in the last decade. So rather than seeing the Painkiller the bar as hurting the Pusser's brand, one could argue the bar has helped shine a positive light on their rum that they didn't previously enjoy; that with a little creative thinking on Pusser's part they could have created some mutually beneficial collaborative opportunities.

Lastly, if you're going to claim that you have a product so unique and amazing as to make it indispensable in a recipe, you had better be able to back it up. As noted above, Pusser's can't be that indispensable to a recipe if it wasn't even called for, nor even existed, when the recipe was created. But even putting that issue aside, perhaps they could claim that the Painkiller recipe is better with Pusser's than it ever was.

Of course this can't be proven or disproven because it's a subjective claim, but one would think that if it makes such a great Painkiller, then tiki bars would use the brand more often in the recipe--at least the bars that fashion themselves as using the highest grade ingredients. But that fact simply doesn't bare out. Painkiller and other high quality establishments that serve Painkillers often use other rums besides Pusser's.

Why is that? Contrary to their ridiculously sounding claim on the Pusser's website that their product is "The Single Malt of Rum," the truth is that many bartenders and rum experts will tell you is that it flat out sucks. For starters, it's outright puffery to claim that a rum can even be a single malt (it is impossible, since rum is distilled from sugar, not malted barley). But even if we take the phrase in a looser sense, it doesn't jive with reality. Paul Pacult, who is a highly respected spirits critic, published a review of Pusser's rum in his 2008 book Kindred Spirits 2. It may be enlightening to read what he had to say about the highly self-touted rum. Here's the review in its entirety:

"The brilliant copper penny color is pretty, but displays minor sediment beneath the examination lamp. The opening nose detects peculiar smells of olive brine, seaweed, wood polish, and shellfish; extra air contact does nothing to enhance the briny/solvent-like and weird aroma. Better in the mouth than in the nasal cavity; the palate entry is piney, cedar-like, and astringent; at midpalate there are flashes of molasses, coffee, and tobacco that aren't significant enough to drag this oddball rum up into recommended territory. Ends up poorly as highly astringent and manufactured tastes dominate the exit. This was originally labeled as "Admiral's Reserve" in 1993 and 1996. That designation no longer appears on the label, though the abv strength is the same. The detergent-like, cleaning liquid finish brings the rating back down to one star. A waste of a good glass bottle. No wonder the British Navy fell into disrepair. Rating: 1 star/Not Recommended"

One star is the absolute lowest rating that Paul Pacult gives a spirit. In other words, their rum just sucks. Of course that's only one critic's review--one notable and highly respected critic--and ultimately you should decide for yourself. Nonetheless it doesn't help Pusser's claims that it is the one and only rum that must be used in a Painkiller.

Perhaps then, in the utmost consideration of practicality, some of Pusser's legal budget ought to be redirected toward product development.

Just a thought.

*Got a cocktail question? Hit me on twitter @paystyle, email me at payman(at)lifesacocktail(dot)com, or simply drop me a comment below.