Intellectual Property

Don’t Bet On It: Tarts, Trademark Infringement, And Trademark Use

Trademark infringement requires trademark use.

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(Photo by Michael Reaves/Getty Images)

They call it the “sport of kings,” and few things embody this reference to horse racing in America more than the Kentucky Derby. Held annually at Churchill Downs in Louisville, Kentucky, on the first Saturday in May, the “Run for the Roses” (named for the blanket of roses draped on the winning horse) has been held there since 1875. The event is not only the first race of what’s known as the “Triple Crown” but also a grand spectacle with many traditions. From drinking mint juleps and eating burgoo to the ladies’ wearing of elaborate hats and the box seats known as “Millionaires Row,” the Kentucky Derby is a grand spectacle indeed. Another treat associated with the Kentucky Derby is a decadent chocolate-and-walnut tart that has caused a stir recently due a trademark associated with the original, leaving a bad taste in the mouth of the trademark owner yet providing a valuable, satisfying lesson about the nature of trademark infringement worth digesting.

A little history is necessary for context.  The original “derby pie” is a special pastry originally created in 1954 at the Melrose Inn in Prospect, Kentucky, by its owners Walter and Leaudra Kern.  After a great deal of experimentation and the assistance of their son George Kern, they arrived at the perfect recipe and they dubbed the creation “derby pie” after pulling names out of a hat (go figure).  In 1968, Kern’s Kitchen registered the trademark “DERBY-PIE” for this delicious confection, and seems to guard the use of this trademark as diligently as it guards the pie’s secret recipe, having filed over 25 trademark infringement lawsuits over the years to protect its “DERBY PIE” trademark, including one in 2013 against Bon Appetit magazine.

This brings us to the present day and yet another lawsuit brought by Kern’s Kitchen, against the Louisville Courier Journal. Basically, the newspaper published two articles on the day of the 2017 Kentucky Derby.  According to the court in Rupp v. Louisville Courier Journal:

On the same day as the 2017 Kentucky Derby, Defendant published an article (“Article 1”) with the headline, “Bourbon makes this Derby pie a state original.” [DE 1-2 at 10]. In the article, Defendant provided the recipe—courtesy of the “fine folks up rivers at Captain’s Quarters—for a “Derby chocolate-walnut pie”.

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In June 2017, Defendant published an article (“Article 2”) about Derby City Macarons, an independent, locally owned shop specializing in macarons, the “French almond flour pastry.” [DE 1-3 at 12]. Below a photograph of assorted macarons, Defendant wrote: “Derby Pie, Mint Julep and Peach Tea macarons from Derby City Macarons.”

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Taking exception to the newspaper’s ostensible reference to its trademark in both Article 1 and Article 2, Kern’s Kitchen filed suit against the newspaper in federal district court for trademark infringement under Sections 1114 and 1125 of the Lanham Act.  The newspaper later moved to dismiss the case for failures to state a claim.

After considering the arguments, the district court dismissed the case. Why? Because when push comes to shove, the newspaper’s use of the term “Derby pie” simply was not a trademark use. As I have written numerous times previously when explaining trademarks, the court stated that a “trademark” is defined under the Lanham Act as “any word, name, symbol, or device … used by a person … to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.” The court then pointed out that a successful assertion of trademark infringement under Section 1114 requires that the “[p]laintiff must allege that: 1) he owns the registered trademark; 2) Defendant used the mark in commerce; and 3) the use was likely to cause confusion” (emphasis added). In the present case, this required the court to address the pivotal (and preliminary) question: Did the newspaper use the plaintiff’s trademark in a way that identifies the source of their goods?  The district court found that the use was a nontrademark use and that the trademark laws do not apply — no reasonable reader would think that the newspaper’s references in Article 1 and Article 2 reflect the newspaper’s sale of products it is attempting to pass off as Derby Pie pies. I am not addressing the trademark dilution claim (which the plaintiff withdrew) or the dismissal of the fraud claim (as the court held that plaintiff failed to state the elements of the claim), as they are ancillary to my basic point here: Trademark infringement requires trademark use.

I can’t question Kern’s Kitchen for bringing the claim — trademark owners have a duty to police their trademarks, and it seems they have not been timid in doing so over the years. What is important to note, however, is that the court did not address classic fair use or nominative fair use arguments (and rightfully so) — the plaintiff’s attempts to preempt these potential defenses by the newspaper were a lot of smoke and mirrors that ignored the fundamental reality that the newspaper’s use of the phrase “Derby pie” was not a trademark use. One cannot cause confusion in the marketplace by using a term in a non-trademark way.  In my over 25 years of law practice, I have seen this mistake made quite often because it can be easy to miss the forest for the trees in such cases (or in the present case, missing the pie for the chocolate and walnuts). So the next time your company (or client) is pushing for an infringement action against an alleged infringer, address and answer the preliminary question about trademark use at the outset. Odds are the answer to this question will be more helpful than you think.

Tom Kulik is an Intellectual Property & Information Technology Partner at the Dallas-based law firm of Scheef & Stone, LLP. In private practice for over 20 years, Tom is a sought-after technology lawyer who uses his industry experience as a former computer systems engineer to creatively counsel and help his clients navigate the complexities of law and technology in their business. News outlets reach out to Tom for his insight, and he has been quoted by national media organizations. Get in touch with Tom on Twitter (@LegalIntangibls) or Facebook (www.facebook.com/technologylawyer), or contact him directly at tom.kulik@solidcounsel.com.

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