By Stephen Young
By Stephen Young
By Stephen Young
By Jim Schutze
By Rachel Watts
By Lauren Drewes Daniels
She never guessed that this little enterprise born of artistic passion and domestic convenience would pit her in a legal tussle against the world's largest wine maker: the E.&J. Gallo Winery. The first salvo was fired in February when King received an e-mail from Gallo lawyers objecting to her use of the terms "gallo verde," "gallo rosso" and "gallo blu" to describe the patterns on the ceramic pieces posted on her Web site. King contends that gallo, which means rooster in Italian, has been in common use among Italian ceramic collectors and producers to describe a specific rooster pattern on ceramic pieces originating from the town of Deruta in Umbria since the early 19th century. "In fact, when I got the initial e-mail, I didn't even respond because I thought this is a joke," she admits.
But Gallo wasn't laughing. A month later King received another note from Gallo lawyers threatening to slap her with a trademark-infringement lawsuit if she didn't strip her Web site of all uses of the word gallo. King responded with an e-mail reiterating that gallo is an Italian term meaning rooster and that its use in conjunction with colors constitutes a historically accurate and generally excepted descriptor.
"I understand that Gallo means 'rooster' in Italian," shot back Gallo associate general counsel Paul Riedl. "[H]owever, Italian is not the official language in the United States, so it plainly is not a generic term...I must therefore ask you to change your Web site immediately."
Two weeks later Gallo filed a lawsuit against King in a California U.S. District Court charging her with, among other things, trademark infringement, trademark dilution and unjust enrichment. "I think it's a little bit of hardball myself," says King's attorney Jeffrey Look. "The unusual fact is that you're talking about a case where the central issue turns over art history, a particular form of art. We're just trying to use this term of art on this art."
Hardball or not, such tactics are not unusual for the Modesto, California-based winery, founded in 1933 by brothers Ernest and Julio Gallo. Ranked last year by Forbes magazine as the 141st largest privately held company in America, with $1.6 billion in revenues, the E.&J. Gallo Winery accounts for roughly one-quarter of all wine sold in the United States, from its jug wines marketed under the Carlo Rossi and Gallo labels and its cheap Thunderbird fortified wine, all the way to its highly successful premium and super premium brands marketed under the Indigo Hills, Gossamer Bay, Turning Leaf and Gallo of Sonoma labels.
As a result of this market presence, Gallo can be ferocious when it comes to protecting its trademark turf. Court papers show the winery employs many "watchdogs" to sniff out potential trademark incursions, including its own sales force, distributors, trademark watch services, clipping services, law firms and advertising agencies. In its complaint against King, Gallo says it has forced others to stop using its mark on everything from salsa, beer and rice, to hosiery, poker chips and Thoroughbred racehorses.
And King's skirmish isn't the first time the winery has struck in Texas. In 1996 Gallo sued San Antonio artist Joe Lopez after he silkscreened a rooster profile onto T-shirts and sold them under the names Puro Gallo, Gallo Fino and Gallo Indio. In February 2000, Gallo sued Houston-based Spider Webs Ltd., a firm created to lock up Internet domain names to keep them out of the hands of their namesakes with the intention of forcing them to pay for the rights to use them. The suit was triggered when Spider Webs registered the name "ernestandjuliogallo.com," and during the litigation process, the company used the site to post discussions of the case (including a wine bottle in the lower left-hand corner of the Web page with the label "Whiney Winery"), as well as anti-alcohol messages.
But perhaps the most unusual episode in the litany of Gallo trademark fracases occurred when Ernest and the late Julio Gallo sued their younger brother Joseph in 1986 to block him from using the Joseph Gallo moniker on his line of cheeses. A judge ruled in favor of the older Gallos, forbidding the younger sibling from using his own surname on his products and advertising.
King insists her case is different. She isn't using the Gallo name to label her products but is merely using a historically accurate term to describe them, she says. "She's been screaming that she's allowed to use gallo on ceramics," Reidl says. "It's not a descriptor." To bolster his argument, Reidl cites a 1990 case in which Gallo successfully sued the Consorzio Del Gallo Nero, an Italian trade association that promotes Chianti Classico, from using the term "gallo nero" in its U.S. marketing thrusts. A U.S. district judge subsequently blocked the consortium's use of the term, which means black rooster, even though a black rooster has been the symbol of the Chianti region for roughly 800 years.
It's easy to see how this use of the word gallo in a wine marketing campaign could potentially result in a fog of consumer confusion. But is it reasonable to conclude the use of the word gallo in simple pattern descriptions for cups and pots would fluster consumers?
"That would seem to be quite a stretch," says Frank Vecella, a longtime Dallas trademark lawyer who is currently associate general counsel for Ericsson Inc. "That would strike me as quite an uphill battle to show actual infringement...Is somebody looking at that Web site and mistakenly thinking that the Ernest & Julio Gallo Winery is behind this?"
At this point, it doesn't matter. The force of Gallo's corporate heft proved too much for King and her fledgling Internet business, even though she believes she would have prevailed in court. She has since changed all "gallo" references on her Web site to "galleto," which means little rooster in Italian. She has also agreed to other undisclosed concessions as part of a settlement with the winery. "I have a small daughter who requires a lot of care," she laments. "I have a family. I'd like to not have to deal with this for the next however many years of my life."