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Contracts and Commercial Law

When to Call the Whole Thing Off

 People who aren’t intellectual property lawyers often mix up trademark, copyright, patent and trade secret protection. Each provides a different kind of protection for a different kind of property interest, and they generally don’t overlap. There are also different protections awarded under federal and state (and sometimes foreign) law for different forms of intellectual property, requiring some serious navigation of the legal system. A recent case out of the U.S. District Court in Cleveland is illustrative of the difficulties encountered in finding one’s way through the minefield of intellectual property.

The case is Tomaydo-Tomahhdo v. Vozary [an enhanced version of this opinion is available to subscribers], although the actual dispute was between two former business partners in the restaurant named Carroll and Moore. Carroll bought out Moore, and in their purchase and sale agreement, Moore agreed “to return ‘all originals and copies of graphic design files, videos, photographs [ ], menu files and development ideas, recipes (current and historical) and training tools (picture boards, build sheets, prep lists, master order guide)…'”  Insofar as one can tell from the court’s opinion, though, Moore did not agree not to use any recipes or other learning gained while he and Carroll were in business together, all of which were developed by Moore and none by Carroll.

Moore and the named defendant, Vozary, who used to work for Tomaydo-Tomahhdo, opened a catering business called Cater-ology. Carroll, who was compiling a cookbook for and named for her restaurant, decided that Cater-ology was using her restaurant’s recipes, and sued.

Pause a moment for a civil procedure lesson. Federal courts are courts of limited jurisdiction, their jurisdiction limited by both Article III of the Constitution and by federal statutes. Basically, a case needs to be brought under federal law or else the parties must be citizens of different states (with a requirement of an amount in controversy, currently $75,000). But what if the parties are from the same state, but one of several causes of action involve a federal question?  The courts have developed, as a means of efficiency (so you don’t have to bring two actions at the same time on the same facts), a concept called “pendent jurisdiction”. It allows a court that would otherwise only have jurisdiction over one or several of a larger number of claims to keep them all in a single action. Importantly for this case, pendent jurisdiction is discretionary with the court.

Carroll’s claims were vast, but only one, for copyright infringement, was a federal question. The other claims, for breach of fiduciary duty, breach of contract, misappropriation of trade secrets, unfair competition, tortious interference with current and prospective business relationships, and civil conspiracy, are all state law claims, whether statutory or common law. So Carroll’s copyright claim was the only one that entitled her to a day in federal court. But that claim was, as the court found, untenable.

The distinction is that copyright protects only the expression of a work, it doesn’t protect ideas or processes. The words, the images, the display of the information in a recipe–these things are all protectible by copyright. So when my cousin Jennie Schacht writes a cookbook, the words she uses in describing the recipes, the photographs (the copyright in which may actually belong to the photographer), and the way the words are displayed on the page, these are all protected by copyright. But anyone can use the recipes, without a license. It would be somewhat rude to do this, but you could copy down the recipes in a bookstore and make them at home and not owe anyone anything. I totally adore her key lime ice cream, by the way.

And the judge in this case dismissed the copyright case on this very basis. Quoting a case out of the Sixth Circuit involving Godiva Chocolates, the court held,

The identification of ingredients necessary for the preparation of food is a statement of facts. There is no expressive element deserving copyright protection in each listing. Thus, recipes are functional directions for achieving a result and are excluded from copyright protection under 17 U.S.C. 102(b).

Now, if you were to write a cookbook and use the exact same words as in one of these recipes, you’d have yourself a copyright problem. But the court specifically noted that when Carroll began to write her cookbook, both Moore and Vozary were not working with her. Of course, that would only matter if Moore and Vozary were competing with a cookbook, not competing with food made from a recipe.

My partner Anne Glazer, who works extensively on intellectual property law in food and agriculture, has this to say about the case:

Don’t worry, you can cook any recipe you like, as long as you haven’t contractually agreed not to. A copyright is a bundle of exclusive rights, for example, the rights to copy, display and modify the copyrighted work. The right to use the work is not in the bundle.

If the defendants had made posters out of the recipes and put them on the walls, there might be a copyright case — if a court could find some original creative expression in the wording of the recipes.

Oddly, we also learn that Carroll’s claims about the recipes did not survive scrutiny. She claimed, for instance, that Cater-ology was using her chicken salad sandwich recipe. Only the defendants had changed the cheese, changed the kind of mayo, and added pecans and apples. As the court wrote, apparently in exasperation, “Certainly, plaintiffs cannot be suggesting that somehow the copyright prevents defendants from serving chicken salad sandwiches.”

The district court’s decision, then, was no surprise. What was a surprise was that the plaintiffs have apparently decided to appeal the case to the Sixth Circuit Court of Appeals. I suspect you’ve all been humming what I’m going to suggest here. Or let Ella Fitzgerald suggest.

 Read additional articles at the Food Liability Law Blog

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