Introduction


Presented in reverse chronology, this history stretches from the present back to the Fellowship's 1970 founding, and beyond.
(See "Blog Archive" in the sidebar below.) It draws from many sources, including The Fellowship of Friends - Living Presence Discussion, the Internet Archive, the former Fellowship of Friends wiki project, cult education and awareness sites, news archives, and from the editor's own 13-year experience in the Fellowship.

The portrait that emerges stands in stark contrast to sanitized versions presented on the Fellowship's array of
alluring websites, and on derivative sites created by Burton's now-estranged
disciple, Asaf Braverman.

Monday, July 15, 2002

Renaissance Vineyard and Winery's use of "Da Vinci" brand name challenged

[ed. - When first designed in the late 1970s, the Fellowship winery was to be called the "Leonardo Da Vinci Winery." The name was eventually dropped (perhaps due to potential trademark concerns) and "Renaissance Vineyard and Winery" was adopted. Still, the Fellowship decided to use the "Da Vinci" brand for a second label, consisting of wines that fell short of the quality desired for the primary label. By the mid-1980s, before the agreement with Barcamerica, the Fellowship was already bottling and labeling a number of varietal wines under the "Da Vinci" label. (See the article below for one such example.) It is fairly obvious that the Fellowship, and its attorney Abraham Goldman were naive to the responsibilities and requirements under the licensing agreement with Barcamerica.]
The Naked Truth about Trademark Licensing
15-Jul-2002
San Francisco Daily Journal
by Robert B. Burlingame

Trademark owners and their attorneys beware! As the Ninth Circuit Court of Appeals confirmed in its decision issued May 6, 2002, owners can unintentionally forfeit their trademark rights if they fail to exercise quality control after granting another party the right to use a trademark. Barcamerica Int’l USA Trust v. Tyfield Importers et al., 2002 WL 850825 (9th Cir. 2002). Such a grant is referred to as a "naked license" and is deemed to constitute the owner’s abandonment of rights in the trademark.

In short, the Ninth Circuit held that Barcamerica had abandoned its rights in the trademark DA VINCI for wine because it granted a naked license to Renaissance Vineyards ("Renaissance"). Consequently, Barcamerica was unable to stop an Italian wine producer and its U.S. importer from using the trademark DA VINCI for wine. Furthermore, the court found it was appropriate to cancel Barcamerica’s U.S. registration for the trademark DA VINCI.

Although the concept of naked licenses is by no means novel, this recent decision is relatively unusual given its harsh result. The case serves as a strong reminder that a trademark owner’s work does not end with the execution of a license agreement, and that quality control clauses which are included in license agreements are not merely for show. The decision also confirms that the key issue in a naked license determination is whether the licensor (the party granting the right to use the trademark) is exercising quality control over the licensee (the party receiving the right to use the trademark) so as to maintain a consistent and predictable quality for all goods and services for which that trademark is used; the actual level of quality (be it high, low, etc.) is irrelevant.

The case teaches us that trademark owners and their counsel should work together to ensure that the owners regularly and effectively monitor the quality of the products and services for which the licensees use the trademark. For example, as the Ninth Circuit proposed, those who license wine-related trademarks should at least sample each year, in some organized way, an adequate number of bottles of the wine on which the licensee is using the trademark. On-site visits are another common product quality control practice. Owners should take such actions on a regular basis.

The history of the Barcamerica case is typical of many trademark disputes: an entity applies to register a trademark at the United States Patent and Trademark Office ("USPTO"); the USPTO refuses the application due to the existence of a trademark registration for a confusingly similar trademark; the applicant conducts an investigation and determines that the registrant is no longer using the registered trademark; and then the applicant petitions the USPTO to cancel the registration on grounds of abandonment.

In Barcamerica, however, after Italian wine producer Cantine Leonardo Da Vinci Soc. Coop. a.r.l. ("Cantine") filed a cancellation action against Barcamerica’s DA VINCI trademark registration, Barcamerica responded by filing for a preliminary injunction in federal court to enjoin Cantine and its importer from making any further use of the DA VINCI trademark. Barcamerica argued that it had not abandoned its trademark, as evidenced in part by the fact that Renaissance was using DA VINCI pursuant to a license from Barcamerica.

Under a valid license, the licensee’s use of a trademark is said to "inure" to the benefit of the licensor. Therefore, had the license between Barcamerica and Renaissance been valid, Renaissance’s use of DA VINCI would have been considered the equivalent of use by Barcamerica. However, the Ninth Circuit held that the license between Barcamerica and Renaissance was an invalid naked license because Barcamerica failed to exercise quality control over Renaissance’s DA VINCI wines.

Barcamerica had argued that one of its principals occasionally, informally tasted Renaissance’s wines. Barcamerica further testified that it relied on the good reputation of Renaissance and its now-deceased winemaker, Karl Werner. The court, however, found that such tastings and reliance on reputation did not constitute sufficient quality control.

The court also noted that the license agreement between Barcamerica and Renaissance did not contain any provision regarding quality control, and that Barcamerica and Renaissance did not have any close (e.g. parent-subsidiary) relationship which would amount to de facto control. Rather, Renaissance explained that Barcamerica never played any role in monitoring or maintaining the quality of Renaissance’s DA VINCI wines, and it refused Barcamerica’s request to sign a Declaration stating otherwise. It should be noted that licensees have no incentive to cooperate in such instances because invalidation of the license agreement would free the licensee from the agreement’s restrictions and would result in the licensee having the independent right to use the trademark.

Although Barcamerica argued that quality control was unnecessary because Renaissance made good wine, the court confirmed that a trademark license without quality control is inherently deceptive and thus invalid, regardless of the actual quality of the licensee’s product. "What matters," the court explained, "is that Barcamerica played no meaningful role in holding the wine to a standard of quality—good, bad or otherwise." Accordingly, the court determined that Barcamerica had forfeited its rights in the DA VINCI trademark.

The effect of Barcamerica’s involuntary forfeiture was significant. Not only did Barcamerica lose the right to halt others from using the DA VINCI trademark, but the court also held that Barcamerica had lost all rights to the DA VINCI trademark and that Cantine’s cancellation of Barcamerica’s U.S. trademark registration was therefore appropriate.

Interestingly, the Ninth Circuit did not recognize that some courts have held naked licensing to result in partial, rather than total, forfeiture of the owner’s trademark rights. For example, some courts have held that an owner should only lose rights in those geographic areas and/or in those product markets where use of the trademark was not controlled. This less severe approach may have been used had there been any equities weighing in Barcamerica’s favor.

Whether total or partial, any forfeiture of rights is significant to the trademark owner. Consequently, the lesson to be learned from Barcamerica is: (1) always include quality control provisions in your trademark license agreements; and (2) carry out those provisions by regularly and routinely monitoring the quality of the goods and/or services for which the licensee is using the trademark.
[ed. - Speaking of quality, tasting notes from a May 14, 1986 tasting by members of the Fellowship's San Diego "Centre" describe the Da Vinci Zinfandel (vintage not noted) as being "disappointing" and tainted by "volatile acidity" (vinegar character). The wine review below is interesting, noting that Renaissance released the Da Vinci Petite Sirah 25 years after bottling. If not for sale publicly, the wine was certainly available to Fellowship members over the years.]
Xmas: For Wine Geeks Who Think They Have Tried Everything
Posted by Fredric Koeppel
Those madcaps at Renaissance Vineyard and Winery have done it again, releasing a wine that’s not only unique but sort of crazy. If you think you have tasted everything, you must try this.

 
The wine is the Da Vinci Petite Sirah from the Sierra Foothills. (Da Vinci is a second label that Renaissance uses occasionally.) Notice that no vintage is stated on the label. That’s because this petite sirah is a “cross-vintage” blend from 1979, 1980, ’81 and ’82 — 70% from 1982, 20% from 1981, the remainder from 1980 and 1979. (Federal regulations state that if a label carries an American Viticultural Area designation, then 95% of the grapes must come from the stated vintage.) The wine was bottled in 1984 and was released on Oct 15 this year. That’s right, readers, this wine, in its finished state, has been aging at the winery for 25 years, though the base wines go back 30 years.
The Da Vinci Petite Sirah (nv) offers all the attributes of a well-made, perfectly aged and mature red wine. It’s mild and mellow, yielding hints of mint and white pepper, spiced and macerated black and red cherries and a touch of cedar and tobacco. Sporting a ruddy, luminous ruby-garnet color, the wine is smooth and harmonious; flavors of black and red currants are wreathed with cloves and spiced plums, and as the minutes wear by, a wafting of smoke emerges. Despite its age, there’s nothing puny about the wine, which is enlivened by bold but unobtrusive acidity and framed by gently faded yet still persistent tannins. A masterpiece!
Renaissance produced about 300 cases of this petite sirah, a true California classic. It’s the kind of wine you savor with duck or pheasant or squab. Most mature red wines from 25 or 30 years ago would cost hundreds of dollars, but the price here is $65. It’s available by mail from the winery in states where direct shipment of alcoholic beverages is legal, which of course it should be in every state of this union. I mean, come on, can’t we all act like grown-ups?
Sent to me as a review sample, and am I ever glad it was.

[ed. - Washington Times review of Da Vinci wine sourced from proquest.com.]
Da Vinci, Cabernet Sauvignon, Sierra Foothills, 1986, $9: [2 Edition]
By Paul Lukacs
Washington Times [Washington, D.C]
11 Feb 1998: E2.

Da Vinci is the second label of Renaissance Vineyard, a unique operation in California's Yuba County. Owned by the Fellowship of Friends, a group committed to the spiritual growth of its members, Renaissance's terraced, mountain vineyards represent a labor of love.

Far removed from the other wine regions, the Renaissance vineyards are difficult to farm and naturally low-yielding. They also produce wines of unquestioned distinction.

Renaissance's wines deserve to be better known. This cabernet has deep, complex flavors, firm tannins and a rich texture. Made in a Bordeaux style, it successfully walks the line between overt fruitiness and brawny structure. The result is a wine of considerable sophistication, with the patina of age but still some of the charm of youth.

At $9 a bottle, this wine is a fantastic bargain. Buy it by the case and drink it over the next year or two. Although we are only in February, it has to be a candidate for best buy of the year.

Copyright Washington Times Library Feb 11, 1998

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