DERBY-PIE Trademark Owner Can’t Stop Newspaper from Discussing Other Derby Pies
In Rupp v. Courier-Journal, Inc., decided yesterday by the Sixth Circuit (opinion by Judge Eugene Siler joined by Judges Eric Clay and Richard Griffin), the Louisville Courier-Journal published these articles:
This led to a trademark lawsuit by Alan Rupp, who “owns DERBY-PIE®, a federal trademark for a ‘well-known chocolate nut pie'”; but the Sixth Circuit rejected the claim:
“The touchstone of [trademark infringement] liability … is whether the defendant’s use of the disputed mark is likely to cause confusion among consumers regarding the origin of the goods offered by the parties.” “[T]he likelihood of confusion analysis … involves a preliminary question: whether the defendants ‘are using the challenged mark in a way that identifies the source of their goods.’ If they are not, then the mark is being used in a “‘non-trademark” way’ and trademark infringement laws … do not even apply.” …
In evaluating whether the Courier-Journal is liable for trademark infringement for using “Derby pie” in its two articles, the question is whether the Courier-Journal used “Derby pie” in a trademark way, i.e., in a way to identify the sources of the pie recipe advertised in the first article and the macarons in the second article. In short, “[i]f [the Courier-Journal is] only using [Rupp’s] trademark in a ‘non-trademark’ way—that is, in a way that does not identify the source of [the pie recipe and macarons]—then trademark infringement and false designation of origin laws do not apply.”
The second article at issue here is a biographical piece about a Louisville baker who makes various flavors of macarons, one of which is “Derby Pie[.]” Since the article is an in-depth look at the story of an independent, small business owner, i.e., a baker, who makes “Derby P
Article from Latest – Reason.com
