Kendall-Jackson Winery v. E. & J. Gallo Winery N.D. Cal. (Walker, J.), 150 F.3d 1042 (9 th Cir. 1998) Paul W. Reidl Law Office of Paul W. Reidl Modesto, California © Paul W. Reidl. All Rights Reserved.

Straw Poll? © Paul W. Reidl.

Background  Family feud  Gallo’s entry into the premium market  Gallo family succession  Computerized shelf sets  IP litigation was simply the means to an end © Paul W. Reidl. All Rights Reserved.

Background  Extensive PR review of the Complaint and PR campaign  Tremendous media coverage designed to resurrect dirt and undo Gallo image advertising (C) Paul W. Reidl. All Rights Reserved.

Settlement Discussions?  Are you kidding me? This was the modern-day equivalent of Gladiator; only one would be left standing  That’s why both sides had plaintiff’s trial lawyers as their lead counsel  The Judge understood this and never pushed for a settlement conference or ADR (C) Paul W. Reidl. All Rights Reserved.

Trademark Issue (C) Paul W. Reidl. All Rights Reserved.

Trademark Issue  Motion to Dismiss - Denied  Summary Judgment – Granted  Trial – Tried TM case with no instructions  Appeal – Grape leaves are generic © Paul W. Reidl. All Rights Reserved.

Trade Dress Issue (C) Paul W. Reidl. All Rights Reserved.  Burgundy/Bordeaux bottle  Flanged Top  Cigar Band Wrapper  White label  Grape Leaf

Trade Dress Issue  Motion to Dismiss  Summary Judgment: “distinctive leaf design”  Reconsideration: = 1  Trial: 25 bottles, M. Mondavi on the flange, admissions from their witnesses, all about the leaf = “California look”  Appeal: sufficient evidence for jury © Paul W. Reidl. All Rights Reserved.

Survey Issues  Gallo: Eveready design – no confusion  KJ: Squirt survey – 30% confusion  Initial Pilot with Mondavi control – 0%  Squirt without a control  Motion in Limine granted  Daubert hearing; admitted  Judge trashed it on the State law claims © Paul W. Reidl. All Rights Reserved.

Consumer Research Issues  Claim of copying in the Complaint  Industrial espionage  Research done during study of entering premium market; “KJ leaf”  Cornerstone of the “intent” case But even if true there was a major problem with the KJ case ………. © Paul W. Reidl. All Rights Reserved.

“Look at but don’t copy Turning Leaf” (C) Paul W. Reidl. All Rights Reserved.

Consumer Research  Jury research: avoid Soccer Mom’s  Jury outcome: the Soccer Mom was the holdout, and she was adamant that Gallo had been unethical because it studied the KJ label therefore they must have copied it. © Paul W. Reidl. All Rights Reserved.

Laches  Pre-launch knowledge  “Wait and watch”  Filed 8 months after knowledge  By that time Turning Leaf was #1 in the category  Judge (state law claims): laches  9 th Circuit: moot (C) Paul W. Reidl. All Rights Reserved.

Privilege Waiver  Prior in-house review and memo  KJ Expert – retired TTAB judge  “The review was not up to standards: no interviews, no research, no survey, should always use outside counsel because in house cannot be impartial”  “reasonable people can disagree on inherent distinctiveness” (C) Paul W. Reidl. All Rights Reserved.

Other Issues  Damages were excluded  No Pre-Trial Order  Clash of lawyering cultures  David Gallo passing away before trial  Plaintiff’s “Victory Celebration”  Malicious prosecution action (C) Paul W. Reidl. All Rights Reserved.

Thank You! 3300 Wycliffe Drive Modesto, California (209) tmguy © Paul W. Reidl. All Rights Reserved.