City Paper is not for tourists
It’s Magnus versus Magnus in a new lawsuit filed by Ivy City-based whiskey distiller Jos. A Magnus & Co. against a Scottish whiskey producer for its Magnus beverage that the D.C. company says infringes on its copyright and is causing “irreparable harm.”
The suit, filed Nov. 6 in the U.S. District Court for the District of Columbia, names as defendants the Glasgow-based Highland Distillers Limited that produces Magnus Highland Park Single Malt Scotch Whiskey, and the U.S. Beverage Advertising Corp. doing business as Reserve Bar that distributes the Scottish company’s products in the U.S.
The local whiskey sells as “Joseph Magnus Bourbon,” while the Scottish whiskey sells as “Highland Park Magnus,” and their bottles have similarities and differences.
Both bottles prominently feature the name Magnus, albeit the U.S. brand uses “Joseph Magnus” in title case and the Scottish brand uses just “MAGNUS” in all caps. They both have black labels, though the domestic label stretches around the bottle with plenty of room to see the whiskey above and below, while the Scottish whiskey’s label covers most of the bottle. And on both bottles, you’ll see ornate silver interlacing designs next to the lettering—similarities that Jos. A. Magnus & Co. says violate its trademark.
Jos. A Magnus & Co. says its brand pays tribute to Joseph A Magnus, a distiller from pre-Prohibition days. The Ivy City bourbon and gin distillery launched in 2015 with the vision to revive several of Magnus’ brands from more than 100 years ago.
Highland Park’s website says its spirit, which debuted in 2017, pays homage to the company’s founder Magnus Eunson, who first distilled whiskey in an “illicit” operation in the late 18th Century. “And, while we say Highland Park was founded in 1798, in truth that’s just the year that the authorities caught up with Magnus—he was certainly making whisky before that,” says Highland Park’s website, which touts the fact it’s been distilling for at least 220 years.
Nevertheless, Jos. A Magnus & Co. claims that the Scottish Magnus whiskey is a violation of the company’s trademark for its Joseph Magnus bourbon, which according to the complaint has been produced since 2015.
The complaint also says the D.C. company owns federal trademark registrations for “Magnus,” and that it has “invested considerable resources to develop and promote” these marks, saying that they have become “associated exclusively” with its goods and services.
Highland Park’s product has a “similar design and overall appearance” to the Jos. A Magnus & Co. bottle, the complaint reads. It says the Scottish drink is likely to cause confusion among consumers and infringes on its trademarks.
To bolster its case, Jos. A Magnus & Co. in the complaint notes that Highland Park previously attempted to register its Magnus trademark with the U.S. Patent & Trademark Office in June 2017 for “alcoholic beverages except beers,” but the U.S. company objected and the government rejected the application.
According to the complaint, Highland Park then submitted a new trademark application for Magnus for “scotch whisky,” but the USPTO suspended the application in September 2018 due to “a likelihood of confusion” with Jos. A Magnus & Co.’s then-pending trademark application for its Magnus brand and design for “whiskey, gin and distilled spirits.” Despite the suspended application, Highland Park continues to produce whiskey bottles with the Magnus label, the complaint says.
The local company seeks an injunction barring Highland Park from using any of the Magnus trademarks; demands the destruction of all prints, wrappers, signs, and more that use the trademarks; and asks for “sufficient” damages and profits from sales of the infringing whiskey to the plaintiffs, among other costs.
City Paper reached representatives for Jos. A Magnus & Co. and Highland Park. Both declined to comment.
Regardless of the outcome of the lawsuit, its filing has already caused co-defendant Reserve Bar to drop Highland Park’s bottle from its advertising. A link on the Scottish company’s website to Reserve Bar’s website previously displayed the whiskey for sale, but when you click on it now you’re directed to a 404 “page not found” error.
“Apparently, this is a dispute between Joseph A. Magnus and Highland Park regarding its ‘Magnus bottle,’” Reserve Bar presidentLindsay Held tells City Paper in an email. “We have nothing to do with that dispute. Similar to any advertising or marketing platform, or any publisher, we are not liable for displaying this bottle. We are neither the seller, manufacturer, or distributor of that bottle. When we heard about this dispute between Joseph A. Magnus and Highland Park, we immediately removed the bottle from our advertising platform.”
The news of the lawsuit comes as Jos A. Magnus is undergoing some changes. Eater reported earlier this year that they slashed staff and closed certain parts of the distillery in order to ready for expansion. The distillery also made the news this year when consumers discovered Secretary of Education Betsy DeVos was an investor.
This story will be updated if Jos. A Magnus & Co. and Highland Park decide to comment.