A judge has not yet ruled on the University of Kentucky’s request to have a Whitesburg distillery’s lawsuit against the university thrown out of federal court on grounds that UK enjoys “sovereign immunity” from civil lawsuits since it is a part of state government.
The motion for dismissal of the suit filed in early November by Kentucky Mist Moonshine Inc. is the latest shot fired by UK-hired attorneys since the university started its battle with the small distillery after discovering Kentucky Mist was attempting to trademark its product name and logo.
On October 12, an attorney with the Lexington firm King & Schickli, which identifies itself at “Kentucky intellectual property attorneys,” wrote a letter to Kentucky Mist in which it said UK objected to the distillery’s attempt to register the word “Kentucky” as part of its trademark.
On October 23, another Lexington law firm, Fowler Bell, agreed to represent Kentucky Mist after reading news accounts detailing the original letter written on behalf of UK, in which King & Schickli attorney Michael Hargis claimed that UK owns the trademark to the word “Kentucky” and that legal action would be taken by UK if Kentucky Mist did not “expressly abandon its effort to register the mark Kentucky Mist Moonshine in Class 25” (the trademark class for clothing).
Finally, on November 2, Fowler Bell attorney James M. Francis filed suit in U.S. District Court seeking a declaration of Kentucky Mist’s right to trademark its logo for use in “Class 25” clothing items such as hats, hooded sweatshirts, jackets, and Tshirts. Kentucky Mist’s suit seeks no monetary award other than to have its legal bills paid for by UK, but does ask the court to declare UK’s claim to the word “Kentucky” declared invalid.
The motion to dismiss Kentucky Mist’s suit against UK was filed by attorney Bryan H. Beauman, who works for the Lexington law firm Sturgill, Turner, Baker & Maloney. Also signing the motion as attorneys for UK were King & Schickli’s Hargis and William E. Thro, acting as UK general counsel.
In an 11-page “memorandum of law in support of its motion to dismiss the complaint,” the three attorneys say that “despite media reports and assertions by Kentucky Mist to the contrary,” UK “did not demand or even request” that the distillery stop using its logo, stop selling T-shirts “bearing” the Kentucky Mist logo, or “abandon its effort to register the mark in Class 33 (wine and spirits) to identify its moonshine products.”
The three UK-hired attorneys go on to accuse Kentucky Mist of seizing “upon an opportunity to garner publicity for its new business and releasing information about the University’s letter to its local newspaper (The Mountain Eagle).”
“The local newspaper posted an online article that was reproduced and redistributed by The Associated Press,” the memorandum says. “As the publicity generated by the original article faded, (Kentucky Mist) responded to the university’s initial letter near the close of business on October 29. In the response, (Kentucky Mist) threatened to file a declaratory action against the university in the event (UK) would not voluntarily surrender rights provided by the university’s … registration for its ‘Kentucky’ mark and demanded a response the following day (Friday, October 30).”
The three attorneys go on to charge that on Monday, November 2, even though UK “was willing to discuss an amicable resolution of the matter in the near term’ … and that a written response (by UK) would be forthcoming by the end of the day,” Kentucky Mist was “apparently more interested in seeking additional publicity through filing suit than attempting to resolve the matter and elected to file the present lawsuit prior to receiving the written response.”
“(Kentucky Mist) then reported its deed to the media before informing the university or serving the complaint and a story touting (Kentucky Mist’s) lawsuit was posted online that afternoon,” the memorandum continues. “In response, the university files this motion to dismiss.”
Colin Fultz, Kentucky Mist’s co-owner and spokesman, could not be reached for comment before Mountain Eagle press time Tuesday night.
The news story cited in the memorandum by the three UK attorneys was written by Mountain Eagle editor Ben Gish and published in the newspaper’s October 21 edition.
Gish said there is no truth to claims by the UK attorneys that Kentucky Mist contacted The Eagle seeking publicity. Gish said he learned of UK’s original letter to Kentucky Mist only after stopping by the distillery on Friday, October 16, to talk about any changes that needed to made to the distillery’s weekly ad since Kentucky Mist had received permission to begin selling its flavored spirits only two days before.
Gish said that after Fultz mentioned receiving a letter from UK that Fultz perceived as a demand that Kentucky Mist change its name, he asked Fultz if he could take a look at the letter. Gish said Fultz eventually agreed to let him read the letter, but became very hesitant when Gish urged him to make a copy of the document so that The Eagle could write a story about UK’s unusual demands, especially since the Kentucky Mist logo depicting fog-filled valleys as seen in a photo taken from the top of Pine Mountain has so little in common with any logos affiliated with the University of Kentucky or any of its sports teams.
In addition, said Gish, the demands being made against Kentucky Mist by UK were extremely newsworthy, as the distillery has been a bright spot in an otherwise dismal eastern Kentucky coalfield economy and was a subject of great debate by the Whitesburg City Council before the council agreed to let it locate in an historic downtown building that was owned by the city.
Gish also noted that whatever Kentucky Mist does remains newsworthy, as it owners have gambled on the future of Letcher County by investing more than $700,000 of their own money to develop the business with no help from any government agency.
Kentucky Mist’s attorney, James M. Francis, says UK’s attempt to have the suit dismissed is an abuse of the 11th Amendment governing sovereign immunity, which was ratified in 1795.
“They had to claim sovereign immunity since they can’t win the case on its merits,” said Francis. “It’s an abuse of the 11th Amendment. We believe they waived their immunity when they threatened to sue Kentucky Mist in federal court.”