In Rupp v Courier-Journal, Inc. ruled yesterday by the Sixth Circuit (statement by Judge Eugene Siler, along with Judges Eric Clay and Richard Griffin), the Louisville Courier-Journal published the following articles:
This resulted in a trademark lawsuit by Alan Rupp, who owns “DERBY-PIE®, a federal trademark for a ‘well-known chocolate and nut cake'”; but the Sixth Circuit denied the claim:
“The touchstone of [trademark infringement] Liability … is whether the defendant’s use of the trademark in question can lead to confusion among consumers regarding the origin of the goods offered by the parties. “”[T]The analysis of the likelihood of confusion … includes a preliminary question: whether the defendants “use the offending mark in such a way that the source of their goods is identified”. If not, then the trademark is being used “non-trademark” and trademark infringement laws don’t even apply. “…
In assessing whether the Courier-Journal is liable for trademark infringement due to the use of “Derby Pie” in its two articles, the question arises whether the Courier-Journal used “Derby Pie” for trademark purposes, i.e. to identify the sources of the cake recipe advertised in the first article and the macarons in the second article. In summary, “[i]f [the Courier-Journal is] only with [Rupp’s] Brand in a way that is not a brand, that is, in a way that does not identify the source of [the pie recipe and macarons]- then no trademark infringement and incorrect designation of origin apply. “
The second article we are talking about is a biographical piece about a Louisville baker who makes different flavors of macarons, including “Derby Pie”[.]”Since the article gives an in-depth look at the history of an independent small business owner, ie a baker who makes derby pie-flavored macarons rather than cakes, it was impossible for a reader to notice [Rupp’s trademark] … And then think that the [‘Derby Pie’ macaron] can be made by the same company (or a company affiliated with the company) that makes them [DERBY-PIE®]. “
“Derby Pie[,]”Such as” Mint Julep “and” Peach Tea “, as used in the article, inform the reader about the general taste and not about the origin of the macarons. It is important that the origin of the” Derby Pie “macarons is explicitly called independently identified baker in the article is discussed, not Rupp (or Kern’s Kitchen, which appears to be the company that actually makes the DERBY-PIE®) – “Derby Pie” cannot be said to identify the source of the macaron, if the actual source of the macaron is specifically mentioned in this article. Nor can it be said that an association between Rupp and the macaron “derby pie” has been suggested. Although Rupp’s complaint states that he “ha[s] applied… DERBY-PIE® to various products that are sold nationwide[,]”He has never specifically claimed that he (or Kerns Küche) produces macarons, nor has he made any mistake in the District Court finding that”[a] DERBY-PIE® is a cake[,]”no macaron.
Similarly, “Derby Cake” as used in the first article does not refer to the recipe for the DERBY-PIE®, but rather a recipe for a “Derby Cake”: “It happens all the time,” he says [counsel for Rupp]. People say Derby Pie® as an abbreviation for Chocolate Nut Cake, as they say Xerox when they mean copying or copying. As used in the article, Derby Torte simply informs the reader of the type of cake – a chocolate cake. Walnut pie – that the reader can make using the recipe provided. Rupp’s own evidence suggests that ‘Derby Torte “can be used in this way, much like” chess pie “would be used if that term were registered as a trademark. The use of” Derby Pie “as a trademark is also supported by the fact that the Courier-Journal, as in the second article , who identified the source of the recipe twice as Captain’s Quarters (restaurant) and not as Rupp (or Kern’s Kitchen).
Nor can it be said that an association between Rupp and the recipe “Derby Pie” has been suggested. The “Derby Pie” described in the first article differs “sufficiently” from DERBY-PIE®. An exhibition that Rupp himself submitted in support of his response to the Courier-Journal’s application for rejection states that “Derby pie does not contain bourbon …”. While there is only one ingredient difference, Rupp’s own evidence shows that no reader of an article describes a “derby cake” made with bourbon, especially one called a “state original”[,]”would associate such a cake with DERBY-PIE®. And the recipe not only differs from DERBY-PIE® in the addition of an ingredient, but also lacks a key ingredient that is contained in DERBY-PIE® – vanilla….
In sum, because (1) the Courier Journal identified the specific sources of the cake recipe and macaron in its articles; (2) These products differ “sufficiently” from the products designated by DERBY-PIE®, which means that there is no risk of incorrect allocation between the independent baker’s / captain’s quarters and the Rupp / Kern kitchen. and (3) the Courier-Journal has used the term “Derby Pie” in a “fully descriptive manner”[,]”We can safely say that the Courier-Journal did not use Derby Pie as a trademark.
The District Court also justified such a conclusion by referring to the structure of the expression “Derby Pie” used in the first article. Because the first article was published “[o]On the same day as the 2017 Kentucky Derby, the District Court found that the heading used “Derby” to change “cake” rather than to identify the source of the product as DERBY-PIE®. This is analogous to using ‘Derby’ to change ‘Horse’, ‘Hat’ or ‘Party’ and does not constitute an improper use of the mark. “In other words, the District Court has recognized that the use of” by the Courier -Journal “Derby Pie” in its first article is a typical play on words in newspapers that here draws the reader’s attention to both the generic taste of the cake being discussed and the event that is being celebrated by the making of that cake. In none of these ways is the term by which the product is referred to as DERBY-PIE®.