Umberto Cesari's Liano Wine. (Photo: Umberto Cesari)
A 20-plus-year court battle between Italian and Californian winemakers has culminated in a pair of $666,214 payments to the Italian vintner Umberto Cesari, Law360 reported on Friday. The unprecedented double award was granted due to "exceptional" circumstances surrounding the defendant and its "blatant disregard" for trademark law.
Like many alcohol industry lawsuits, the case revolved around similar brand names. The conflict was first brought to light before the Trademark Trial and Appeal Board in 2004 when Cesari — who founded his Liano wine brand in 1989 — filed a complaint against Napa Valley's Peju Province winery, which introduced its "Liana" wine in 2003. The TTAB ruled in favor of Cesari, ordering Peju to cease sales of its Liana wine range.
In the years after, however, Peju appeared to double down on the contested branding. The winery continued to sell Liana products until 2007, taking a brief pause until an affiliate organization dubbed Peju Partnership started selling wine under the name Liana in 2014. Peju attempted to register a trademark for its newly minted "Liana Estates" in 2016, triggering opposition from Cesari.
The case was ultimately taken to court in New York, where Cesari demanded $1.7 million in damages for the continued and knowing infringement on his brand name. The judge presiding over the case seemed to agree, albeit with a small caveat. Cesari's $1.7 million was adjusted down to $666,214 in awards after it was found that he didn't suffer "actual competitive harm" from Liana and its affiliates.
In the Sept. 2023 filing, U.S. District Judge Naomi Reice Buchwald wrote:
"Peju continued to use the LIANA mark despite actual knowledge of Cesari’s first-in-time registered trademark [...] Peju dirtied its hands when it flouted the legal conclusion of a judicial authority and disregarded its duty as a second comer 'to avoid all likelihood of consumers confusing it with the product of the first comer.'"
On Friday, Judge Buchwald took the proceedings a step further and awarded Cesari an additional $666,214 to cover attorney fees. According to Buchwald, the nearly two-decade-long infringement of the Liano trademark warranted "exceptional" consideration of compensation due to Cesari and his representatives. The judge commented plainly; "Given this series of events, there should have been no need for the filing of this case at all."
Though Peju has since ceased production of Liana Estates wines and scrubbed its pages from the Internet, attorneys reportedly contested Buchwald's findings and plan to take the case back to court.
"We respectfully disagree with the judge's finding of exceptionality," Peju attorney Joel G. MacMull of Mandelbaum Barrett told Law360 in an email. "Peju intends on appeal to vindicate its position on the underlying merits of the case as well as the fee award. And, to that end, Peju has already filed its notice of appeal."
