KAH Tequila founder prevails in copyright lawsuit

A judge has sided with KAH Tequila founder Kim Brandi in a dispute with the brand’s current owner Elements Spirits over the copyrights of its calavera skull bottle design.

Kim Brandi launched Sangre de Vida Tequila under her company Iconic Brands

In April 2015, Elements Spirits filed a lawsuit against Brandi alleging her Sangre de Vida Tequila brand – launched under her new company Iconic Brands – was identical to KAH Tequila’s calavera bottle design and a trade infringement on the brand.

Elements Spirits filed for a restraining order on the sale of Sangre de Vida Tequila and to prohibit Brandi from sending cease and desist letters to firms selling KAH Tequila bottles using Brandi’s calavera design, claiming ownership of the copyrights for both the artwork and sculpt of the skull-shaped bottle.

The court ruled that Elements Spirits had failed to present evidence that was likely to prevail on any of its claims against Brandi and Iconic Brands.

“The ruling gives a green light to the continued domestic sale of Sangre de Vida Tequila and anyone who continues to sell KAH Tequila would be well advised to read the Court’s opinion,” said Jon Miller, of Miller Johnson Law, San Diego, who represented Brandi and Iconic Brands.

According to the pleas filed in the case, Brandi agreed to a license arrangement with Elements Spirits, but the company breached these and as such, Brandi informed Elements and questioned why royalty payments had never been paid.

Multiple breaches

In retaliation, Elements filed a lawsuit in April 2015 refuting Brandi’s role as the creator of the product, questioning the validity of Brandi’s copyrights and alleging Elements Spirits held trade dress rights that were superior to Brandi’s copyrights.

However, the court ruled that Elements Spirits cannot “evade copyright law” by placing copyrighted material into commerce and “appropriating” it as its own trademark.

District judge Dean Pregerson questioned the validity of Elements Spirits’ licence for the calavera bottle design due to the “multiple breaches” of the contract with Brandi.

“Under federal and state law a material breach of a licensing agreement gives rise to a right of rescission which allows the non-breaching party to terminate the agreement,” he said. “After the agreement is terminated, any further distribution would constitute copyright infringement.”

Brandi filed a counterclaim last Friday seeking damages and a permanent injunction against Elements, Worldwide Beverage Imports, Fabrica de Tequila Finos, Wine Warehouse and Aveniu Brands, who reportedly continue to manufacture, import, sell or market KAH Tequila after the licence agreement was terminated and having received cease and desist letters from Brandi and Iconic.