By Timothy Geigner
Last month, we discussed a crazy lawsuit brought by Alan Rupp, owner of Kern’s Kitchen and the trademark for the fairly famous “Derby Pie.” Rupp has a reputation for policing his trademark aggressively, having gone after a myriad of online publications and blogs for publishing their own recipes, leading to the EFF at one point posting its own recipe for a “censorship pie.”
But threatening blogs is one thing. Going after an established newspaper like the Louisville Courier-Journal is something quite different. Especially when that paper’s only actions were, (1) publishing its own recipe for a “derby pie” that differed from that of Kern’s Kitchen and, (2) reporting on the existence of other storefronts that sold derby-pie-flavored things. The paper had very clear First Amendment protections for its writings, not to mention that it wasn’t using the mark in any kind of commerce. The courts have now agreed, with the latest appeal being tossed.
The Louisville Courier-Journal’s use of the words “derby pie” in a recipe and article featuring variations of the dessert did not infringe on a bakery owner’s trademark rights, the Sixth Circuit ruled. An unpublished decision released Monday by the Cincinnati-based appeals court found the 2017 articles used the term in a non-trademark fashion and therefore did not violate the Derby Pie trademark owned by Alan Rupp.
As far as the court’s reasoning, it never even got to the First Amendment questions before tossing this thing in the trash. Instead, the unanimous ruling simply pointed out that the LCJ wasn’t using the mark in a commercial fashion and therefore wasn’t infringing on Rupp’s mark. Going further, the courts pointed out that the manner in which the paper used the term resulted in no reasonable chance that anyone would be confused as to any source of goods or associations to Rupp or his bakery. In the below, Siler is the judge who wrote the opinion.
The first article included a recipe for derby pie, but Siler emphasized the article “does not denote the recipe for the Derby-Pie but a recipe for a ‘Derby pie’ … and simply informs the reader of the type of pie – a chocolate-walnut pie – that the reader can make from the recipe provided.” Siler also pointed out the article identified the Captain’s Quarters restaurant as the source of the recipe on at least two occasions, and the recipe in question was substantially different from the Rupp family recipe in that it included bourbon and excluded vanilla.
“No reader,” the judge wrote, “could possibly think that a so-called ‘Derby pie’ containing bourbon and no vanilla came from the company or companies associated with Derby-Pie.”
The opinion goes on to note that the article about how other companies were selling similar items, but not pies, could “not possibly” come to think that any of those companies were related to Rupp or Kern’s Kitchen.
Again, the court never even got to the First Amendment protections the LCJ has in all of this, which would have been yet another reason to toss this case in the trash. In the end, Rupp’s lawsuit was always a longshot that very few would have bet on. Now that it’s dead, hopefully it will find its way to the glue factory for good.