Free Speech

Owner of DERBY-PIE Trademark Can't Stop Kentucky Newspaper from Discussing Other Derby Pies

An important principle, which also applies to uses of trademarked terms in films, books, video games, and the like: "A party does not violate trademark law solely by using words another entity has trademarked."

|The Volokh Conspiracy |

From Thursday's opinion by Judge Rebecca Grady Jennings (W.D. Ky.) in Rupp v. Courier Journal, Inc.:

Plaintiff owns DERBY-PIE® (the "Mark"), a federal trademark for a "well-known chocolate nut pie" sold nationwide. First created in 1954 at the Melrose Inn in Prospect, Kentucky, DERBY-PIE® is handcrafted by folding "[p]remium chocolate and choice walnuts" into a "decadent filing" and baking it in a "delicate crust." … Plaintiff is … seeking to enforce the Mark against Defendant for using it in two articles it published in 2017….

On the same day as the 2017 Kentucky Derby, Defendant [the Louisville Courier Journal] 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" …

In June 2017, Defendant published an article ("Article 2") about Derby City Macarons, an independent, locally owned shop specializing in macrons, the "French almond flour pastry." Below a photograph of assorted macarons, Defendant wrote: "Derby Pie, Mint Julep and Peach Tea macarons from Derby City Macarons."

Plaintiff sued the Courier Journal for trademark infringement, seeking $250,000 plus $750,000 punitives. No, said the court; trademarks are used to identify the source of products, and to show trademark infringement, the plaintiff must show that the defendants used plaintiff's mark "in a way that identifies the source of their goods." If they used it for some other purpose, "then the mark is being used in a non-trademark way and trademark infringement laws … do not even apply." [T]he "inquiry focuses on whether a consumer is likely to notice [the plaintiff's trademark] … and then think that the [defendant's product] may be produced by the same company[.]" In this case, the plaintiff's allegations don't support such a finding:

[B]oth Articles explicitly and repeatedly identify the source of the product as being other than DERBY-PIE®…. In Article 1, "Chocolate-walnut bourbon pie from Captain's Quarters" identifies the source of the recipe as Captain's Quarters, not DERBY-PIE®. Moreover, the headline, "Bourbon makes this Derby pie a state original," uses "Derby" to modify "pie," not to identify the source of the product as DERBY-PIE®. This is analogous to using "Derby" to modify "horse," "hat," or "party" and does not constitute an impermissible use of the Mark.

"[A] party does not violate trademark law solely by using words another entity has trademarked[.]" …. Because bourbon is not an ingredient in DERBY-PIE®, Defendant's use of the word "Bourbon" in the headline also indicates that this is not a recipe for DERBY-PIE®. A reader of Article 1 would not think that Defendant, a newspaper, produced DERBY-PIE®.

Article 2 likewise uses "Derby Pie" in a non-trademark way. Next to a photograph of macarons, Defendant identifies three flavors sold by Derby City Macarons: "Derby Pie, Mint Julep and Peach Tea." A DERBY-PIE® is a pie; a Derby Pie macaron is a "French almond flour pastry." Thus, because the Defendant visually and textually links "Derby Pie" to a flavor of macaron sold by Derby City Macarons, a reader would not think that Defendant produced DERBY-PIE®.

Because Defendant used the Mark in a non-trademark way, trademark infringement laws do not apply. Therefore, Plaintiff's claims in Count 1 must be dismissed.

Seems quite right to me.