After almost seven years of back and forth legal battles, a jury deliberated for almost four hours before reaching a unanimous verdict in favor of Globefill Inc. (Crystal Head Vodka) suit against Elements Spirits Inc. (Kah Tequila) for infringement of Globefill’s bottle trademark of its unique crystal skull shaped vodka bottle.
Actor Dank Akroyd’s vodka brand had brought a suit against the tequila maker claiming they infringed on Globefill’s trademark due to the similarities between both bottles. The case had gone to a jury trial in 2010 in which Elements was found not guilty of infringement but the case was set for a new trial because the defense had improperly referenced Mexican case law.
At trial this week, the plaintiff’s attorney asked for permission to call one final rebuttal witness before closing arguments. U.S. District Judge Consuelo B. Marshall assented the requested and Globefill called to the stand tattoo artist and sculpture Walter Szymoniak who was commissioned to create the bottle for Elements.
During questioning, Szymoniak dropped a bombshell, testifying that Elements founder Kim Brandi had lied under oath during previous testimony in the case.
According to Law360, in 2009, Brandi met Szymoniak and told him she was trying to launch a tequila that would be contained in bottles that resembled Mexican Day of the Dead sugar skulls, or calaveras. Szymoniak said that he told Brandi he had experience with sculpting, casting and molding, and he was then hired to help her improve on her first clay prototype.
Szymoniak testified that Brandi wasn’t happy with what she had come up with and actually gave him one of Crystal Head’s glass skull-shaped bottles for him to make a cast of, and that he then used clay and tools to modify that copy to produce the version that Brandi ultimately accepted.
The problem is that Brandi had previously lied under oath during the trial that she hadn’t even heard of Crystal Head when she made her own bottle. Szymoniak further testified that last week Brandi contacted him for the first time since 2010, and asked him to help find differences in the bottle for the lawsuit and told him – “’I lied under oath and said I had never seen the crystal skull bottle, but I handed it to you, the frickin, the effing bottle.”
In closing arguments the defense tried to keep the jury focused on the facts that there is other evidence in the differences between the bottles and that there has been no consumer confusion as to the packaging of both products in the past seven years.
The jury disagreed with the defense’s arguments and voted in favor of the plaintiffs. The jury was not asked to decide what profits Elements will have to give up plus the imposition of a permanent injunction which will be handled by Judge Marshall.
The case is Globefill Inc. v. Elements Spirits Inc., case number 2:10-cv-02034, in the U.S. District Court for the Central District of California.
By: Oren Cytrynbaum