Kentucky Newspaper Defeats Trademark Suit Over Pie Articles

Although the term Derby Pie is trademarked and denotes a specific type of chocolate nut pie, the court ruled the newspaper did not infringe on the mark when it published an article about pie-flavored macarons and a recipe for bourbon-infused pie.

A slice of Derby Pie, a chocolate and walnut dessert. (Photo by Markmark28 from Wikipedia Commons)

CINCINNATI (CN) — 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An unpublished decision released Monday by the Cincinnati-based appeals court found the 2017 articles used the term in a non-trademark fashion and therefore did not violate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.

Rupp, whose family has owned the trademark since 1969 and manufacturers the chocolate nut pie through their Louisville-based Kern’s Kitchen, sued the Courier-Journal in 2018 and claimed its articles were likely to confuse consumers.

A federal judge dismissed the complaint in its entirety and determined it was implausible to think a consumer would believe the newspaper owned the trademark or manufactured the dessert.

Monday’s terse, nine-page opinion was written by Senior U.S. Circuit Judge Eugene Siler Jr. and was released just over a month after the case was argued via videoconference in December.

Siler, an appointee of George H.W. Bush, wrote that neither article mentioned in the case gave Rupp solid footing for a trademark claim.

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.” (Emphasis in original)

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 was equally emphatic in dismissing Rupp’s claims related to the second article, a biographical piece about a baker of macarons who crafted a derby pie-flavored variation.

“Since the article is an in-depth look at the story of an independent, small business owner, i.e., a baker, who makes ‘Derby Pie’ flavored macarons, not pies, a reader could not possibly ‘notice [Rupp’s trademark] … and then think that the [‘Derby Pie’ macaron] may be produced by the same company … that makes [Derby-Pie],’” the ruling states. (Brackets in original)

Siler agreed with the district court’s determination that the publication of the recipe article on the day of the Kentucky Derby further solidified the use of the phrase derby pie as non-trademark.

“The district court recognized that the Courier-Journal’s use of ‘Derby pie’ in its first article is a typical play on words seen in newspapers that, here, both tips off the reader to the generic flavor of the pie discussed and the event celebrated by the making of that pie,” he wrote. “In neither of those ways, however, is the phrase used to designate the product as Derby-Pie.”

U.S. Circuit Judges Eric Clay and Richard Griffin, appointees of Bill Clinton and George W. Bush, respectively, joined Siler on the unanimous panel.

In an interview after the ruling was handed down, Courier-Journal’s attorney Michael Abate said he was pleased with the decision and that the facts of the case made the decision a straightforward one for the panel.

“The articles that were challenged, if you read them,” the attorney said in a phone interview, “do not in any remote way attempt to pass off a derby pie product as something sold by the Courier-Journal.”

Abate mentioned the protections granted to newspapers for trademark liability under the First Amendment – an issue not reached by the panel – as another defense for the articles.

“The notion that trademark holders are going to sue newspapers for covering events in the community that sound like a product they sell was, to us, always out of bounds of trademark law,” he said.

The newspaper’s attorney was not surprised the opinion of the panel was unpublished, meaning it can’t be cited as precedent, and said “the law about trademark usage has been very well settled in the Sixth Circuit.”

He noted the case stemmed from trademark dilution claims and allegations that the articles lessened the “value of [Rupp’s] brand by confusing people about where Derby pie comes from,” an argument Abate said cannot be made against a newspaper under the federal dilution statute.

Once the dilution claim was dismissed, Abate said Rupp was left with a weak infringement claim “based on news articles covering other companies’ products that didn’t attempt in any way to portray them as the plaintiffs’ products.”

Rupp’s attorney, Don Cox, did not immediately respond to a request for comment.

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