Owner of 'Derby Pie' Trademark Sues Newspaper For Using The Term, Publishing Recipe

from the and-they're-off! dept

Long-time Techdirt readers may recall that the "Derby Pie", a notable dessert sold in Kentucky chiefly around the time of The Kentucky Derby, has been the previous subject of trademark issues. Way back in 2013, the EFF posted a special recipe for its "mean-spirited censorship pie" after Kern's Kitchen, headed by Alan Rupp, went on a threat blitz against a bunch of blogs for posting their own recipes for "derby pie". Rupp has a trademark on the term, see, and seems to think that trademark means that he is in universal control of anyone using it for their own recipes, regardless of whether those recipe posts cause any customer confusion, are used in actual commerce, or generally violate the other aspects of trademark protection statutes. He's wrong about that, of course, but his threats are often met with shivering compliance.

But Rupp took this to a whole new level when he filed a trademark suit in 2018 against the Louisville Courier-Journal, a newspaper, for both posting its own Derby Pie recipe and for mentioning that other bakeries had derby pie products. The court promptly dismissed the lawsuit.

U.S. District Judge Rebecca Jennings, an appointee of President Donald Trump, dismissed Rupp’s complaint in March and ruled the newspaper had used the term in a “non-trademark” fashion.

Jennings called Rupp’s complaint “skeletal,” finding he failed to establish a plausible claim that a consumer would think the newspaper asserted ownership of the mark or itself was a manufacturer of Derby Pie.

In other words, there was no chance for customer confusion because, well, The LCJ is a damned newspaper. As to mentioning that other bakeries had products that existed, the LCJ reporting on that factual occurrence had nothing to do with trademark law and is protected First Amendment speech.

But rather than admitting how absurd this all was and slinking away, Rupp instead appealed the ruling. At this point, Rupp's legal team is asserting that dismissal at the pleading stage was incorrect, as courts are supposed to give deference to plaintiffs at that stage. Which is true, except in cases when the case has little to no chance of succeeding, which is certainly the case here. The LCJ itself responded, pointing out that First Amendment is a thing.

Attorney Michael Abate argued on behalf of the Courier-Journal and told the panel there is “no conceivable basis” for a trademark infringement claim, but also pointed out the newspaper’s speech is protected under the First Amendment.

“We’re talking about news stories that are plainly protected under the First Amendment.

Add to that the non-commercial nature of the article's recipe (the newspaper isn't selling pies or the recipe itself), the lack of monetary harm to Rupp, and the fact that these attacks are on news coverage and you have a, ahem, recipe for a failed lawsuit. Rupp possibly should be going after other bakeries using his trademark, but not a newspaper.

A panel of judges is currently reviewing all of this, but one expects this appeal will be tossed as quickly as the original lawsuit.

Hide this

Thank you for reading this Techdirt post. With so many things competing for everyone’s attention these days, we really appreciate you giving us your time. We work hard every day to put quality content out there for our community.

Techdirt is one of the few remaining truly independent media outlets. We do not have a giant corporation behind us, and we rely heavily on our community to support us, in an age when advertisers are increasingly uninterested in sponsoring small, independent sites — especially a site like ours that is unwilling to pull punches in its reporting and analysis.

While other websites have resorted to paywalls, registration requirements, and increasingly annoying/intrusive advertising, we have always kept Techdirt open and available to anyone. But in order to continue doing so, we need your support. We offer a variety of ways for our readers to support us, from direct donations to special subscriptions and cool merchandise — and every little bit helps. Thank you.

–The Techdirt Team

Filed Under: alan rupp, copyright, derby pie, journalism, kentucky, recipe, trademark
Companies: louisville courier-journal


Reader Comments

Subscribe: RSS

View by: Time | Thread


  1. identicon
    Anonymous Coward, 14 Dec 2020 @ 9:33pm

    desert?

    *dessert

    link to this | view in thread ]

  2. icon
    Beefcake (profile), 14 Dec 2020 @ 10:24pm

    Re: desert?

    I’ve been through the dessert on a horse with no name.

    link to this | view in thread ]

  3. identicon
    Anonymous Coward, 14 Dec 2020 @ 10:29pm

    Re: desert?

    I’ve been through the dessert on a horse with no name.

    link to this | view in thread ]

  4. icon
    Toom1275 (profile), 14 Dec 2020 @ 10:58pm

    Re: Re: desert?

    Or rather, the horse remains nameless because some idiot will vexatiously sue you for trademark violation if you mention its name.

    link to this | view in thread ]

  5. icon
    That One Guy (profile), 14 Dec 2020 @ 11:13pm

    'Deference' is not a magic 'I win' phrase

    But rather than admitting how absurd this all was and slinking away, Rupp instead appealed the ruling. At this point, Rupp's legal team is asserting that dismissal at the pleading stage was incorrect, as courts are supposed to give deference to plaintiffs at that stage.

    From what I've read over the years to the extent that he's correct it just shows how pathetic his case is/was, as courts are supposed to give all reasonable deference to the plaintiff's claims in the early stages so if a case gets tossed even with that advantage it's a pretty good indication that the case is not just weak but utterly without merit.

    link to this | view in thread ]

  6. icon
    PaulT (profile), 14 Dec 2020 @ 11:30pm

    So, the argument is "home cooking is killing restaurants"?

    I thought that was a silly exaggeration we used to point out how dumb the home taping piracy slogans were, not something that people actually believed, but I'm done being surprised here.

    link to this | view in thread ]

  7. icon
    JoeCool (profile), 15 Dec 2020 @ 3:39am

    Lower expectations

    A panel of judges is currently reviewing all of this, but one expects this appeal will be tossed as quickly as the original lawsuit.

    One hopes it will be tossed, but these days, we expect it to go to trial.

    link to this | view in thread ]

  8. This comment has been flagged by the community. Click here to show it
    icon
    Airoshot blast (profile), 15 Dec 2020 @ 3:47am

    sand blasting machine

    Airo Shot Blasting machine manufacturer specializes in Manufacturing <a href="https://www.airoshotblast.net/main-product/41-Sand-Blasting-Machine"&gt; sand blasting machine</a> of & <a href="https://www.airoshotblast.net/main-product/19-Shot-Blasting-Machine"&gt; Shot Blasting machine</a>. Shot Blasting machines are customized and slandered type portable shot blasting Equipments which are used to clean the surface. Sand Blasting Machine is leading Manufacturers of <a href="https://www.airoshotblast.net/main-product/66-Portable-Sand-Blasting-Machine">Portable Sand Blasting Machine</a> with various type blasting equipment like Blast Hopper,<a href="https://www.airoshotblast.net/main-product/45-Blast-Room-System">Blast Rooms</a>, Blast Cabinet etc. Airo Shot blasting manufactures a wide range of shot blasting machines/sandblasting machines for various applications to meet the requirements of different sectors.

    link to this | view in thread ]

  9. identicon
    Anonymous Coward, 15 Dec 2020 @ 8:15am

    the District Court is now of the opinion that a publisher can avoid trademark infringement by using a recipe that includes slightly different ingredients and includes a denial that it is a recipe for DERBY-PIE despite the publication of the recipe being on Derby Day and despite the reference in the title to "Derby Pie"

    Um... yes? If the publisher is literally saying "This isn't the recipe for the trademarked pie," then how can there be any confusion?

    link to this | view in thread ]

  10. identicon
    Pixelation, 15 Dec 2020 @ 9:55am

    Looks like Kern's Kitchen will be eating ahem humble pie.

    link to this | view in thread ]

  11. icon
    zyffyr (profile), 17 Dec 2020 @ 1:32am

    I just wish that the judge had come up with a reason to quote the offending recipe in the order. That way the paper (or anyone else) would have solid grounds to do a story about the case that includes it.

    "Sorry dude, we were just quoting from the judgement."

    link to this | view in thread ]


Follow Techdirt
Essential Reading
Techdirt Deals
Report this ad  |  Hide Techdirt ads
Techdirt Insider Discord

The latest chatter on the Techdirt Insider Discord channel...

Loading...
Recent Stories

This site, like most other sites on the web, uses cookies. For more information, see our privacy policy. Got it
Close

Email This

This feature is only available to registered users. Register or sign in to use it.