Newspaper Publication of Pie Recipe Bakes in Sixth Circuit Oven

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

CINCINNATI (CN) — The owner of the Derby Pie trademark argued before the Sixth Circuit on Friday that a Louisville newspaper cannot publish recipes or news articles about similar desserts without his approval.

Alan Rupp sued the Louisville Courier-Journal in 2018 for trademark infringement, claiming the newspaper knowingly infringed on his mark for the dessert when they published two separate articles in the summer of 2017.

The articles, one of which was published on the day of the Kentucky Derby, included a recipe for a “Derby chocolate-walnut pie” and advertised a local business that made Derby Pie flavored macarons.

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.

The trademark was first registered in 1969 and relates to a chocolate nut pie made by Louisville-based Kern’s Kitchen and sold to retailers in the United States by the Rupp family.

According to Rupp’s brief filed with the Sixth Circuit, the pie is the “cornerstone” of his family’s business and has been continually recognized as something wholly distinct from a run-of-the-mill chocolate nut pie.

He argued Jennings used an improperly heightened pleading standard when she dismissed his case and failed to consider the exhibits that were filed alongside his suit.

“The exhibits,” his brief states, “include numerous instances where the Courier-Journal either expressly acknowledged Mr. Rupp’s trademark or was specifically advised that articles and recipes it was publishing regarding a chocolate chip nut pie was subject to the trademark claims of Alan Rupp.”

Rupp also argued the “obscure reference” to the restaurant that makes the Derby Pie mentioned in the Kentucky Derby day article was insufficient to avoid consumer confusion.

“To put it bluntly,” he said in the brief, “if a confectionary product bears the name Derby Pie, it infringes Mr. Rupp’s trademark.”

The Courier-Journal also used straightforward language in its brief to the appeals court, albeit to recommend the court uphold Jennings’ decision.

“The district court correctly dismissed this case at the pleading stage after concluding that the challenged articles … do not represent an attempt by the Courier Journal to imply that plaintiff was the source of the Courier Journal’s products,” the brief states. “That holding makes perfect sense; after all, the Courier Journal is a newspaper and does not sell desserts at all.”

During Friday’s arguments before the Cincinnati-based Sixth Circuit, Rupp was represented by attorney Don Cox, who told the three-judge panel the district court erred when it failed to conduct a likelihood of confusion test.

He pointed out that his client’s trademark has been established for over 50 years, and that he has litigated cases against Bon Appetit magazine and others to preserve its integrity.

Cox cited the 2009 Sixth Circuit case Hensley Manufacturing Inc. v. Propride Inc., which he argued instructs courts to very rarely grant motions to dismiss in trademark cases and to instead undertake “a complicated … fact-weighted test about likelihood of confusion.”

Senior U.S. Circuit Judge Eugene Siler Jr., a George H.W. Bush appointee, asked Cox if simply talking about a pie around the time of the Kentucky Derby would constitute infringement of his client’s mark.

The attorney said it would depend on the context, but that Derby Pie is protected “regardless of the time of year.”

Cox went on to say that the ingredients of the desserts mentioned in the articles – which differed from his client’s mass-produced pie – do not matter when it comes to trademark infringement.

“Ingredients of the product,” he said, “are not crucial. What’s crucial is likelihood of confusion.”

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.

“Plaintiff is attacking news coverage of restaurants selling goods they think are too close to their own,” he said.

Abate disputed his counterpart’s claim that the Derby Pie trademark is “unassailable,” and said the lack of any monetary damages to Rupp also precludes his action.

In his rebuttal, Cox argued that corrective advertising in the newspaper to clarify the source of the pies mentioned in the articles would be an acceptable form of relief to grant his client standing.

U.S. Circuit Judges Eric Clay and Richard Griffin, appointees of Bill Clinton and George W. Bush, respectively, also sat on the panel. No timetable has been set for the court’s decision.

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