CHARLOTTE — A Charlotte-based brewery’s lawsuit claiming copyright infringement on the phrase “Keep it Juicy” has been dismissed, according to court documents.
Sycamore Brewing has claimed for months that California-based Stone Brewing violated its trademark on boxes and cans sold by Stone. Earlier this month, a judge ruled Stone had to stop selling certain cans of its beer and cover up labels on drinks already in stores.
On Friday, the case was dismissed after Stone Brewing filed a countersuit against Sycamore that said Stone discovered a Connecticut brewery has been using the same phrasing for years.
According to Stone Brewing’s counter claim, “at least two years prior to Sycamore’s alleged first use of the tagline, another craft brewer, Two Roads Brewing Co. — which distributes in at least 14 states and internationally — began continuously and conspicuously using the phrase on a variety of its IPAs.”
Stone asked the court to cancel Sycamore’s trademark registration on the phrase “Keep it Juicy” and the word “Juiciness,” and a judgement that Stone’s use of the phrase is not a trademark infringement.
[ ALSO READ: Knock it off: Crocs sues stores for selling copycat versions of clogs ]
Stone also asked the court to require Sycamore to pay for all of Stone’s attorneys’ fees and costs related to the lawsuit and the costs incurred by the injunction that required Stone to cover its labels.
“[Sycamore] must reimburse Stone under federal and North Carolina law for the substantial costs and attorneys’ fees Stone has incurred in defending itself against this utterly baseless lawsuit and complying with an injunction that was obtained on a false factual record,” the suit reads.
An attorney for Sycamore Brewing told Channel 9 a settlement was reached in the case.
“Sycamore got what it came for -- it has protected its trademark rights. The parties came to a settlement yesterday, and now they can concentrate on what is really important -- making beer,” the attorney said.
A representative for Stone Brewing said the company was working on a statement that would be a released when the agreement was finalized.
Details on the settlement weren’t disclosed in the available court documents and we continue to ask both sides about settlement terms.
LAWSUIT BACKGROUND
Earlier this month, a judge ruled that Stone Brewing would have to stop selling certain beer cans, as Sycamore Brewing sues for trademark infringement, according to court documents.
A judge also ordered the California-based brewery to cover up or pull any packages that says, “Keep it Juicy.”
Stone said more than 18,000 boxes have been covered so far.
However, Sycamore filed a motion for contempt against Stone on Thursday claiming they’re barely doing the minimum to cover the labels in stores, including only putting stickers on one side of some boxes.
The next day, Stone responded to that claim to say it’s doing its best to comply with the order.
Stone also filed a counterclaim to stop Sycamore’s lawsuit saying Sycamore never used a copyright or trademark symbol on its packaging.
In April, a judge issued a preliminary injunction in Charlotte-based Sycamore Brewing’s favor.
Stone Brewing was accused of using “Keep it Juicy,” a trademark which Sycamore said it owns.
[ALSO READ: Local brewery among new food, drinking spots to join lineup at Charlotte airport]
According to court documents, Stone was told to immediately stop producing the label. Stone was allowed to sell any boxes that are in stores, but they must cover any “Keep it Juicy” labels.
Stone is “immediately enjoined nationwide from using the KEEP IT JUICY name and mark, or confusingly similar variations thereof,” court documents said.
The suit also said Sycamore Brewing must post a $50,000 bond to cover costs should it turn out the injection wasn’t justified.
According to the lawsuit, Sycamore said the slogan was first used in September 2020 and was a registered mark the following year. According to the lawsuit, the slogan is prominently displayed on retail packaging boxes.
“Based upon its federal trademark registration and extensive use, Sycamore owns the exclusive right to use the ‘Keep it Juicy’ trademark in connection with beer and craft beer services,” the suit said.
California-based Stone Brewing adopted the “Keep it Juicy” mark and used it on its packaging and advertisements for its Hazy IPA, according to the lawsuit.
The lawsuit claimed Stone Brewing was trying to confuse customers looking for Sycamore beer.
“Stone is using Sycamore’s exact mark on the same packaging to market and sell the same type of beer,” the lawsuit said.
According to the suit, Stone Brewing also used “Keep it Juicy” in the Hazy IPA page on its website and in a video advertising for Hazy IPA.
Sycamore is headquartered in Charlotte, but distributes its beers in seven other states, including South Carolina, Virginia, West Virginia, Tennessee, Ohio, Georgia and Kentucky. Stone Brewing also has a production brewery in Virginia, but distributes to all 50 states.
“Stone’s expansion into Virginia enabled it to be one of the very few craft breweries that distributes and sells its beer in all 50 states, including North Carolina. In 2017, it announced its expansion into West Virginia, which was the only state where its beers were not distributed at the time,” according to the lawsuit.
The lawsuit claimed that with Stone Brewing’s expansion, it is now a direct competitor with Sycamore Brewing.
“Stone is properly described as a ‘Trademark Bully.’ Given its aggressive use of its millions to bully smaller companies into ceasing use of common terms even when they are in non-competing industries or there is no possible likelihood of confusion,” the lawsuit said.
According to the suit, Stone Brewing received criticism in 2020 after it was reported that it filed more than 100 trademark cancellation requests with the United States Patent and Trademark Office from across the beer, wine, and spirits markets.
[ ALSO READ: South End brewery adds event space ]
According to the lawsuit, Sycamore said it was asking to prohibit the use of the trademark and an award for any damages caused.
A trial had been set for July 11.
Statement from Stone Brewing CEO regarding the preliminary injunction:
“We are disappointed by and do not agree with the Court’s order regarding Stone’s use of ‘Keep It Juicy’ on its Stone Hazy IPA packaging. Nevertheless, we had already begun efforts to address and resolve this issue and we will continue those efforts. Stone respects and understands the importance of trademark rights. As such, we are deeply disappointed that this has gotten to where it is. We have no interest in unnecessary disputes with other members of the craft beer community and would have happily worked with Sycamore to resolve this amicably had we been given the opportunity.”
Stone Brewing Co. LLC appealed the injunction ruling almost immediately
(Watch the video below: Waffle House collaborates with brewery to come up with ‘Bacon & Kegs’)
This browser does not support the video element.