Dan Aykroyd’s Crystal Head vodka rebuffed over trademark damages

A US appeals court has upheld a ruling against KAH Tequila that it infringed on the rights of actor Dan Aykroyd’s Crystal Head vodka, but rejected the producer’s request for further damages.

Dan Aykroyd founded Crystal Head vodka in 2007

It was the second case between the two parties, brought against Amber Beverage’s KAH Tequila by Globefill, which has produced Crystal Head vodka since 2007.

KAH Tequila was founded by Kim Brandi as part of her then Elements Spirits venture in 2009, and is housed in a skull-shaped ceramic bottle. It was bought by SPI Group’s Amber Beverage Group in December 2016.

Both spirits are contained within a skull-shaped bottle – one glass, one ceramic – and are inspired by the Mexican Day of the Dead festival.

In 2017 Crystal Head vodka prevailed over KAH Tequila, successfully arguing that its bottle shape was too similar to its own, and infringed upon its trademark rights.

A judge ruled that Elements Spirits Inc and its founder Kimi Brandi had designed the bottle to confuse consumers into thinking it was made by or affiliated with Crystal Head.

KAH Tequila’s ceramic skull-shaped bottle

Senior district court judge Consuelo B. Marshall of the Central District of California ordered that Elements and its founder, Kim Brandi, pay US$871,536.86 in profits stemming from the infringement.

At the time, Aykroyd’s said: “We are thrilled and relieved to be victorious in this case. We thank the jurors, judge Marshall and our brilliant legal team for all of their time and effort on this case.

“We can now move forward to the next chapter of our business.”

However shortly after the ruling, Globefill launched a second lawsuit claiming that it was owed further damages.

While the judge upheld its previous ruling that KAH had infringed upon the rights of Crystal Head vodka, it rejected requests for further damages, and attorney’s fees, which the court said “weren’t justified”.

“The district court properly concluded that Elements’ earnings equaled 8% of gross sales of KAH Tequila (or $871,536.86) based on a 2010 Trademark Assignment and Royalty Agreement (TARA) between Elements and non-party Finos. None of Globefill’s arguments to the contrary is persuasive.”