(pro hac vice pending)...1995. since then, the lagunitas ipa has become the company’s flagship...

1DECLARATION OF TONY MAGEE

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ROBERT K. CARROL, State Bar No. [email protected] E. COPELAND, State Bar No. [email protected] E. JOULANI, State Bar No. [email protected] PEABODY LLPOne Embarcadero Center, 18th FloorSan Francisco, CA 94111-3600Tel: 415-984-8200Fax: 415-984-8300

DEANNA R. KUNZE (née Swits) IL No. 6287513(pro hac vice pending)[email protected] PEABODY LLP300 S. Riverside Plaza, 16th FloorChicago, IL 60606Tel: 312-425-3900Fax: 312-425-3909

Attorneys for PlaintiffTHE LAGUNITAS BREWING CO.

UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF CALIFORNIA

THE LAGUNITAS BREWING CO.,

Plaintiff,

vs.

SIERRA NEVADA BREWING CO.,

Defendant.

Case No. 15-cv-153___________

DECLARATION OF TONY MAGEE

I, Tony Magee, declare as follows:

I. Introduction

1. I make this declaration in support of Lagunitas’ Motion for a Temporary

Restraining Order and for a Preliminary Injunction. The statements herein are based on my

Case4:15-cv-00153-JSW Document13 Filed01/12/15 Page1 of 10


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personal knowledge, observations, and experience, unless otherwise noted. As such, I am

qualified to testify to the matters stated below and, if necessary, I can testify to the matters stated

below.

2. I am the Founder and CEO of The Lagunitas Brewing Co.(“Lagunitas” or “the

Company”), which I began in 1993. Since it was founded in 1993, Lagunitas has strived to

consistently produce top-quality beer. It has become one of the fastest growing craft breweries in

the United States, and while Lagunitas produces a variety of beers, it is most recognized for its

ales. The most notable, widely-recognized, and longest-selling of these ales is its India Pale Ale,

sold as the Lagunitas IPA.

3. In my capacity as CEO of Lagunitas, I routinely interact with the purchasers of

Lagunitas products, including the Lagunitas IPA discussed above. I have knowledge of the

criteria the customers utilize in purchasing Lagunitas products, as well as the product nuances that

influence their purchasing decisions. I have knowledge of the factors and considerations these

individuals use when comparing products.

4. I also interact with a wide variety of Lagunitas employees, including employees

who focus on brewing, marketing, and sales of the products. I design all of the Lagunitas product

labels and packaging on my laptop.

5. In 1993, when Lagunitas began, we had distribution only in California. By 1997,

we were distributing our flagship IPA in Maryland and Oregon as well. Today, we distribute in

44 states in the U.S. and 3 countries outside of the U.S. Besides our original brewery in

Petaluma, we recently opened a second production facility in Chicago, Illinois.

6. In 2014, we will have produced about 640,000 barrels of beer, 58% of which is the

flagship Lagunitas IPA. In 2015, we expect production to be 850,000 barrels, still with

approximately 58% being the Lagunitas IPA. This extraordinary growth makes Lagunitas, which

does not do “collaborations” with other brewers, and especially its flagship Lagunitas IPA, a

target for competitors.

7. Craft beers, to my knowledge, represent approximately 9% of the total U.S. beer

market.



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II. The Lagunitas IPA

8. The Lagunitas IPA was the Company’s first seasonal beer and dates back to

1995. Since then, the Lagunitas IPA has become the Company’s flagship beer. It is now

available year-round and has been the top-selling India Pale Ale in California for the past

decade—and one of the best-selling India Pale Ales in the nation. In addition to brewing a

distinguishable beer, much of the Lagunitas IPA’s success can be attributed to its branding, using

the iconic “IPA” family of trademarks. The Lagunitas IPA brand has become well-known and

well-recognized as signifying Lagunitas, in the craft brew industry, the alcoholic beverage

industry generally, and among consumers of beer and other alcoholic beverages.

9. Lagunitas has invested substantial amounts of time and millions of dollars in

promoting the Lagunitas IPA brand with the Lagunitas “IPA” family of trademarks. Lagunitas is

unique among many of its competitors in that I design the beer labels and packaging, and I strive

to instill personality into each of the beer recipes and the corresponding labels and packaging—

showcasing the individuality of each product. As a result of our efforts over almost 20 years of

continuous use, the Lagunitas brands, especially the Lagunitas IPA brand and its trademarks,

have gained an excellent reputation and a high degree of recognition among the beer-consuming

public. Today, the public recognizes the Lagunitas “IPA” Family of Trademarks and identifies

them with the Lagunitas IPA brand exclusively.

10. For nearly twenty years, the Lagunitas “IPA” has been using the all-capital, large,

bold “IPA” lettering, and the Lagunitas “IPA” Family of Trademarks has become well-known

and well-recognized in the craft brew industry, and in the alcoholic beverage industry, generally,

as associated with and signifying Lagunitas and the Lagunitas IPA. The unique “IPA” lettering

used in the Lagunitas “IPA” Family of Marks has a distinctive serif font, and distinctive kerning,

or letter spacing, between the “P” and the “A”, and distinctive elimination of any periods between

the letters. In addition, Lagunitas is well-known for using its distinctive “IPA” lettering in a

manner that it is the center and focal point of the overall design. The “IPA” lettering also has an

aged or weathered look, with uneven areas on each of the letters. The overall effect of these



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factors (the large, all-capital, bold, black lettering style, the placement with respect to other

wording and design elements, and the weathered look) creates a unique, iconic design that is

associated with and signifies Lagunitas, and its associated reputation for excellence, in the craft

brew industry and among consumers. And while some other breweries have adopted the

abbreviation “IPA” in describing their India Pale Ales, on information and belief, Lagunitas was

the first commercial brewery to do so—when the beer was first sold, consumers sometimes

sounded out the letters not realizing that “IPA” was an abbreviation, asking for an “eeh pah” beer.

But only the Lagunitas IPA bears the unique “IPA” lettering and is marketed and sold with the

distinctive Lagunitas “IPA” Family of Trademarks.

11. Lagunitas is the owner of at least four United States federal trademark registrations

directed specifically to the Lagunitas “IPA” mark used in labeling and packaging in connection

with the sale of the Lagunitas IPA. Lagunitas first introduced the core of this iconic design to the

marketplace in 1995. Indeed, since launching the Lagunitas IPA product line, Lagunitas has

invested substantial amounts of time and tens of millions of dollars in promoting its IPA brand

under its iconic Lagunitas “IPA” Family of Trademarks, including registered trademarks and

approved applications, as represented below:

Figure 1. U.S. Registration No. 3,401,147 Figure 2. U.S. Registration No. 4,457,914



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Figure 3. U.S. Registration No. 4,457,912 Figure 4. U.S. Registration No. 4,457,906

Figure 5. U.S. Serial No. 86136177 Figure 6. U.S. Serial No. 86136181

12. Lagunitas advertises its flagship IPA beer using these trademarks together.

Similar to the Lagunitas “IPA” Family of Trademarks, I also have designed labels and packaging

for the Lagunitas “PILS” ale and “PALE” ale brands in the same bold, graphic style as the

Lagunitas “IPA” brand, and those marks also are routinely advertised along with the “IPA”

Family of Trademarks. (See Ex. 1, photo of tap handles at Lagunitas brewery.) Lagunitas also

has federal trademark registrations for those designs.

13. While Lagunitas values the input of its customers and fans, and of craft brewing

industry personnel, Lagunitas does not collaborate with other brewers in order to maintain the

quality and consistency for which it has become known.

III. The Craft Beer Industry

14. As previously stated, I have worked in the craft beer industry for more than 20

years.

15. Consumers purchase beer either at “on-premises” retailers, or “licensees,” such as

restaurants and bars, where they consume the beer on-site, or at “off-premises” licensees, where

they purchase package products to enjoy elsewhere. At on-premises licensees, consumers

generally will view bottles of beer or tap handles from several feet away, often in dimmed

lighting. At off-premises licensees, consumers will view 6-packs, 12-packs, and, occasionally,

individual bottles, either in a crowded refrigerated cooler or on a crowded shelf, often for only a

few seconds and from several feet away before reaching the product. At both on-premises and



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off-premises retailers, beers of the same style, i.e. all India Pale Ales, are often sold side-by-side.

I specifically designed the Lagunitas “IPA” labels and packaging to differentiate the Lagunitas

“IPA” brand from other India Pale Ales.

IV. Sierra Nevada Brewing and Its Infringing Hop Hunter IPA

16. I have been aware of Sierra Nevada and familiar with their operations in an

amicable competitive way for many years. I became aware of the proposed label and packaging

designs for the Hop Hunter IPA in late 2014 through, to the best of my recollection, an article on

www.brewbound.com. The labels I saw are reflected below:

Figure 7. Proposed Sierra Nevada Label Figure 8. Proposed Sierra Nevada Neck Label

17. After seeing these labels, I immediately instructed Lagunitas’ attorneys to send a

“cease and desist” letter to Sierra Nevada, which was sent on December 5, 2014. (Ex. 2, Cease

and Desist Letter dated December 5, 2014.) I personally contacted the CEO of Sierra Nevada,

Ken Grossman about that same time. On December 11, lawyers for Sierra Nevada sent a formal

response to that cease and desist letter. (Ex. 3, Letter from counsel for Sierra Nevada dated

December 11, 2014.) Thereafter, I also personally communicated with Ken Grossman and

lawyers for both parties attempted to negotiate an amicable resolution to the issues. When it

became apparent that no resolution could be had through those negotiations, Lagunitas filed this

lawsuit.

18. Specifically, these Hop Hunter IPA labels use the large, all-capital, bold, black

“IPA” lettering in a font selection that is not unlike that of, and is in fact remarkably similar to,

the iconic Lagunitas “IPA” brand and family of trademarks. The all capital, large, bold, black



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“IPA” lettering in the Hop Hunter IPA design is the central and most prominent feature of the

new design—just like the iconic Lagunitas family of IPA trademarks. Moreover, this proposed

design includes the kerning between the “P” and the “A” characters that is unique to the

Lagunitas family of IPA trademarks, and in the case of the second label shown above (i.e., the

“neck” label), the proposed Sierra Nevada “IPA” lettering appears to mimic the “weathered look”

that likewise is unique to the Lagunitas “IPA” brand and family of IPA trademarks.

19. I am familiar with Sierra Nevada’s beers, including several of its current and prior

IPA offerings, such as Torpedo IPA, Celebration Ale, Snow Wit IPA, Nooner IPA, Blindfold

IPA, and Boomerang IPA, some of which are shown below in Figure 9 alongside the proposed

Hop Hunter IPA. In my opinion, the label and packaging design for the Hop Hunter IPA is a

strong departure from the usual Sierra Nevada branding, and the overall effect of the Hop Hunter

IPA label and packaging design is to create, and is specifically intended to create, consumer

confusion as to the sponsorship, source, or approval of that product with the Lagunitas IPA.

Figure 9. Traditional Sierra Nevada India Pale Ales compared with proposedHop Hunter

20. I also am familiar with Sierra Nevada’s extensive history of and reputation for

releasing products made in collaboration with other breweries. For example, Sierra Nevada has

released collaborations with Dogfish Head Brewery and Russian River Brewing.

21. I also am aware of its heavy promotion of its “Beer Camp Across America” tour of


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festivals and beer releases to celebrate the opening of their new brewery in North Carolina. Sierra

Nevada collaborated with 12 other breweries and/or alliances to release a 12

each beer was a joint brew cre

collaborators were: 3 Floyds, Allagash, Ballast Point, Bell’s, Cigar City, Firestone Walker, New

Glarus, Ninkasi, Oskar Blues, Russian River, Victory, and the Ashville Brewers Alliance

information and belief, the “Hoppy Lager” was a collaboration between Sierra Nevada and

Ballast Point Brewing Company located in San Diego, California that now is being released by

itself in 6

12

website

lettering that appears weathered

design echoes the surrounding hops leaf imagery into its faded green background as does the

Lagunitas IPA Six

Figure 10

India Pale Ales, is likely to be confused as to the source of the IPA based on the overall

of the Lagunitas IPA 6






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also are distributors of Sierra Nevada, regarding their concerns over consumer confusion in the

marketplace between the Lagunitas IPA and the Hop Hunter IPA designs.

25. Unless Defendant is restrained from offering its infringing “Hop Hunter IPA,”

Lagunitas will suffer immediate and irreparable harm to its goodwill and reputation due to

Defendant’s infringing activities. From the first day, consumers will begin to integrate our

identities and commingle our brands. As explained below, such loss includes loss of market share

that be not be recovered, increased exposure to infringing competition and an erosion of its

intellectual property rights, and an immeasurable blow to Lagunitas’ reputation as a market

leader.

I declare under penalty of perjury under the laws of the United States of America that the

foregoing is true and correct based on the information currently available to me and to the best of

my knowledge, and that this declaration was executed at ____________, California on January

__, 2015.

Tony Magee


EXHIBIT

1

Case4:15-cv-00153-JSW Document13-1 Filed01/12/15 Page1 of 2

EXHIBIT

2


EXHIBIT

3


Boston Brussels Chicago Düsseldorf Frankfurt Houston London Los Angeles Miami

Milan Munich New York Orange County Paris Rome Seoul Silicon Valley Washington, D.C.

Strategic alliance with MWE China Law Offices (Shanghai)

Jorge R. Arciniega

Attorney at Law

[email protected]

310.551.9306

DM_US 57215916-1.060109.0015

U.S. practice conducted through McDermott Will & Emery LLP.

2049 Century Park East Suite 3800 Los Angeles California 90067-3218 Telephone: +1 310 277 4110 Facsimile: +1 310 277 4730

December 11, 2014

BY EMAIL ONLY

Mr. Robert K. CarrolNIXON PEABODYOne Embarcadero Center, 18th FloorSan Francisco, CA 94111-3600

Re: Sierra Nevada Brewing Co.’s IPA Logo

Dear Robert:

This is in response to your letter of December 5, 2014 addressed to Ken Grossman of Sierra Nevada Brewing Co. (“Sierra Nevada”). This response is made without admission of any facts or claims asserted by your client Lagunitas Brewing Company (“Lagunitas”).

After review and consideration we find your client’s allegations of confusing similarity between its IPA logo and our client’s IPA logo to be unfounded. Set forth below are your client’s IPA label next to our client’s IPA label for their respective India Pale Ale beverages.

Even at a cursory glance, whether up close or from afar, the two labels are starkly different. A longer look magnifies the differences.

For example, Lagunitas claims that its IPA logo is unique and distinctive because the lettering has “anaged or weathered look,” with uneven areas, broken lines, a unique font, and unique spacing on each of the letters. Such a look, your client contends, is unique and distinctive such that it could serve as a brand


Mr. Robert K. CarrolDecember 11, 2014Page 2

DM_US 57215916-1.060109.0015

identifier, i.e., a source indicator. The lack of any factual support for that proposition in either your or your client’s correspondence is understandable. But assuming for the sake of argument that Lagunitas’ logo is protectable as a source indicator, Sierra Nevada’s logo does not possess the features that Lagunitas claims are uniquely its own. Sierra Nevada’s lettering is comprised of continuous and fairly smooth lines, which gives our client’s logo a fresh look. There is nothing “aged” or “weathered” about it. Also, there are very notable differences in the styling of the letters in the companies’ logos, most distinctively appearing in the letters “P” and “A.” Furthermore, Sierra Nevada’s superimposing of the term HOP HUNTER on its “IPA” lettering is a very significant and prominent feature of its logo design, as is the placement of its house brand – the SIERRA NEVADA banner that is consistent across all of itsbeverage offerings.

In response to Lagunitas’ contention that Sierra Nevada is “radically departing” from its traditional label design we attach as Exhibit A examples of Sierra Nevada’s traditional label design, which disprove Lagunitas’ contention. Exhibit A also shows that the HOP HUNTER name and the SIERRA NEVADA house brands, which are integral and major components of our client’s IPA design, are front and center, superimposed over the descriptive term IPA. While the logo on the HOP HUNTER neck label might seem more “ghostly” or less pronounced in the photograph you provided, Sierra Nevada’s bottles all have a significantly larger label in addition to the neck label. The larger label has nothing ghost-like about it. The words HOP HUNTER cannot be missed. Thus, your client’s argument that HOP HUNTER is much less visible and is unlikely to be seen by a consumer is unsupported by the facts.

Let’s turn to the other design elements that Lagunitas claims to be unique to it.

1. Kerning/Letter Spacing: Your letter claims that your client’s logo has unique kerning, or letter spacing, between the letters “P” and “A”. This is not true. Exhibit B shows that several third-party India Pale Ale labels appear to also have similar spacing in the IPA lettering. Putting it mildly, your client would be hard-pressed to prove its choice of kerning as unique. Even if it were the case that your client were the only bottler that used that spacing, unique spacing is insufficient to serve as a brand identifier.

2. Elimination of Periods: Your letter claims that the elimination of periods between the letters is also unique to your client’s design. However, Exhibit B shows that a number of third-party India Pale Ale labels do not use periods in the “IPA” lettering. Therefore, it is inarguable that there is nothing unique about your client’s elimination of periods.

3. Placement: Your letter claims that your client is well-known for using its distinctive “IPA” lettering in a manner that it is the center and focal point of the overall design. Again, the facts belie your client’s assertion. Exhibit B shows that a number of third-party India Pale Ale labels feature the “IPA” lettering prominently in very large fonts in the center and as the focal point of their labels, whereas their house names or brands are shown in much smaller text and in distinctively different font style. Because the kind of composition used by other competitors is very similar to that of your client’s label, there is nothing unique about your client’s placement of the “IPA” lettering on its label.

To sum up, most of the design elements that your client claims to be uniquely identifiable with your client are not unique at all – indeed, they seem quite commonly used by others. To the extent that alleged aged


Mr. Robert K. CarrolDecember 11, 2014Page 3

DM_US 57215916-1.060109.0015

or weathered look is suggestive of your client’s IPA (a point that we do not concede, having not researched this), our client’s design differs materially from your client’s design in that aspect, as our client’s logo does not have a weathered or worn look: Sierra Nevada’s look is fresh and conveys a different overall commercial impression from that of your client’s product. It is our belief that no appreciable number of consumers is likely to be confused about the source of Sierra Nevada’s IPA.

Sierra Nevada very much remains interested in an amicable resolution of this dispute, but finds itself at a loss as to what it should suggest where it did not intend to engage in any wrongdoing and apparently did nothing wrongful. I welcome speaking directly with you at your convenience.

Sincerely yours,

Jorge Arciniega

Jorge Arciniega

Exhibits A and B sent under separate emails

Copy: Ken Grossman / Sierra Nevada Brewing Company

EXHIBIT A

[see separate email]

EXHIBIT B[see separate email]


EXHIBIT B


(pro hac vice pending)...1995. since then, the lagunitas ipa has become the company’s flagship...

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