Yesterday, Judge Robinson issued an opinion in Pernod Ricard USA LLC v. Bacardi U.S.A., Inc., C.A. No. 06-505-SLR (D. Del. Apr. 5, 2010). Plaintiff Pernod alleged that Bacardi “made false and misleading representations concerning the geographic origin of its ‘Havana Club’-branded rum in violation of Section 43(a) of the Lanham Act.” Id. at 1. The Court noted the lack of caselaw regarding the meaning of “geographic origin,” and that the term is susceptible to two interpretations: place of present production, or place of historical origin / “heritage.” In other words, does a “Havana Club” rum have to be presently manufactured in Cuba, or merely manufactured using a Cuban recipe by a company with Cuban roots?
After a brief discussion of the caselaw, the Court avoided the issue, holding that the Bacardi rum is not misleading on either count. It accurately displays “Puerto Rican Rum” or “crafted in Puerto Rico” on both sides of the bottle, id. at 16-19, and the Bacardi company and its rum recipe both have a Cuban heritage. Id. at 19-20. Plaintiffs argued that Bacardi had changed the recipe, negating the Cuban heritage; the Court recognized that there had been minor modifications to the recipe, but that the resulting product was almost identical. Id. at 21. Regarding any minor taste differences in the resulting product, according to the Court, “As the expression goes, ‘if it looks like a duck, swims like a duck and quacks like a duck, then it probably is a duck.’” Id. at fn. 23. The Court also twice noted, on pages 20 and 21, that “The First Amendment protects defendant’s ability to accurately portray where its rum was historically made – as opposed to claiming that the product is still made there.”