GUEST ARTICLE: Eat your art out… intellectual property protection for food

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Related tags Food industry Trademark

Properly applied, intellectual property law is flexible enough to protect creative food designs from substantial copying, but with built-in limitations that safeguard against stifling collaboration in the food industry, says Foley Hoag attorney Natasha Reed.

Caitlin Freeman, head pastry chef for Blue Bottle Coffee, is known for creating pastry masterpieces inspired by iconic works of art at San Francisco Museum of Modern Art (SFMOMA), where Blue Bottle previously operated a café.

Her signature 'Mondrian cake' (inspired by Piet Mondrian’s painting 'Composition (No. III) Blanc-Jaune/Composition (No. III) with Red, Yellow, and Blue') is particularly well-known for its artistic elements. Freeman was shocked to recently learn that SFMOMA’s new café (McCall Catering’s Café 5) is apparently selling similar art-inspired cakes.

The obvious question for chefs like Freeman is whether there is anything they can do to prevent another from copying their culinary creations for economic gain, particularly in an industry where chefs sometimes borrow and build upon ideas from others.

Properly applied, intellectual property law is flexible enough to protect highly creative food designs from substantial copying, but with built-in limitations that safeguard against stifling collaboration in the food industry. Here’s how.

Copyright law

Copyright law protects an artist’s original, creative expression fixed in a tangible medium. It does not protect merely utilitarian articles, ideas, facts, or formulas. Since food is a useful article, copyright law will apply only if the food incorporates highly creative features that are separable (either physically or conceptually) from the food’s utilitarian features.

Conceptual separability is particularly relevant when it comes to culinary creations like, for example, the Mondrian cake. The cake’s artistic features appear to be separate from its utilitarian functions (i.e., the ability to eat the cake, its taste and nutritional value). The cake design also appears to be an original artistic expression, even though it is inspired by Mondrian’s painting. Freeman’s creation is arguably transformative of the original because it imbues the pre-existing artwork with a new expression and a different character. Mondrian’s painting is also currently in the public domain.

Also, while the cake is meant to be consumed (and thus may not be “fixed” permanently), fixation requires only that a work be perceived for more than a transitory duration. Thus, Freeman’s art-themed desserts would appear to be the quintessential example of the kind of food that should be entitled to copyright protection against others creating substantially similar designs.

Because copyright law does not protect mere ideas, facts, or formulas, a chef cannot secure rights for being the first to come up with the idea of creating a certain style of food (e.g., art-inspired pastries). Likewise, although a compilation of recipes and descriptions in a cookbook are often entitled to some level of copyright protection, merely listing ingredients in a recipe is not because recipes are considered facts and formulas. These limitations should allow chefs to continue to borrow recipes and ideas from others without violating copyright laws.

Patent law, something to sink your teeth into

You can obtain a utility patent on a novel and non-obvious recipe or cooking technique. You can also obtain a design patent for a novel, non-obvious and ornamental food creation. However, overcoming the novel/non-obvious hurdle under patent law is difficult in the food industry, given the custom of borrowing from others (called prior art in the patent world). For example, Smucker’s utility patent for its crimped and crustless peanut butter and jelly sandwiches (called Uncrustables) was found to be invalid, partially due to obviousness. Let’s face it, there’s nothing new about PB&J, and Uncrustables’ crimped edges look just like ravioli.

Nonetheless, examples of food patents that have issued include a utility patent covering a recipe for instant stuffing mix, a utility patent for a method of making microwavable sponge cake, a design patent for Cold Stone Creamery’s signature Strawberry Passion ice cream cake, and a design patent issued for Breyer’s Viennetta ice cream cake.

In light of these examples, it is reasonable to conclude that uniquely styled foods such as Freeman’s Mondrian cake could also be protected under patent law, thus preventing others from offering substantially the same design.

Trademark law, the cream of the crop

In addition to trademarking the name of a food product, restaurant or chef, it is also possible to trademark the design and appearance (known as 'trade dress') of a food configuration, so long as the design is non-functional and has achieved consumer recognition as a source identifier (called 'secondary meaning').

There are several well-known food configurations that are registered trademarks, including Pepperidge Farm’s Goldfish Crackers and Milano Cookies, Hershey’s Chocolate Bar, Frito-Lay’s Sun Chips, and every child’s favorite whale-shaped ice cream cake, Carvel’s 'Fudgie the Whale.'

Trademark registrations for food are not limited to pre-packaged store-bought food designs produced by large companies. Smaller food shops, restaurants, and cafés have also obtained trademark protection for their food products.

New York-based Magnolia Bakery obtained a trademark registration for its cupcakes bearing its signature swirl icing.

Minneapolis ice cream shop Izzy’s Ice Cream Cafe obtained a trademark registration for ice cream cones topped with a 'baby scoop' of ice cream (called the 'Izzy Scoop').

A Utah-based restaurant called J Dawgs was even able to obtain a trademark registration for hotdogs with crisscross cuts.

Food configurations like Freeman’s Mondrian cake may also be entitled to trademark protection. The Mondrian cake should be considered non-functional since the design is not dictated primarily by utilitarian concerns. The cake also appears to have achieved a high level of consumer recognition. Whether consumers recognize the cake design as a source indicator has not been tested as far as we know.

Your goose is cooked!

Beyond lawsuits for breach of trade secrets (which protect secret recipes) and nondisclosure agreements, chefs and others in the food industry rarely invoke intellectual property law in response to copying. However, there are cases where copyright, patent, and trademark law have been invoked to combat alleged food plagiarism. Below are some recent lawsuits worth noting:

Magnolia Bakery sued a former employee who opened a competing café called Apple Café Bakery, just blocks away from Magnolia’s flagship store in Greenwich Village. Magnolia alleged in its complaint that the former employee committed trademark infringement when he used Magnolia’s signature swirl icing on the tops of his cupcakes.

Magnolia claimed that its swirl-topped cupcakes had become famous among consumers, in part due to its use for over fifteen years and the notoriety it received from being featured on television shows like Sex and the City and films like The Devil Wears Prada. Apple Café ultimately closed its doors and the parties entered into a confidential settlement agreement according to the case docket. Magnolia Intellectual Property, LLC v. Trawally et al. (S.D.N.Y. Sep. 20, 2012).

Leslie Friend, owner of a design patent for a pretzel shaped like a peace sign, commenced a lawsuit for patent infringement against Keystone Pretzels and Laurel Hill Foods for making and selling peace sign-shaped pretzel snacks. Friend demanded that the companies pay her a royalty or their profits from selling the allegedly infringing product.

Shortly after filing suit, Friend voluntarily dismissed the complaint. While neither news reports nor the docket state why, it is reasonable to speculate that Friend received a handsome payout, since Keystone (under its corporate name Condor Corporation) eventually acquired Friends’ patent and Laurel Hill appears to still sell its peace sign pretzels. Leslie Friend v. Keystone Pretzels and Laurel Hill Foods, Inc. (W.D.Pa. Nov. 14, 2013).

Kim Seng Company, a California-based Asian food supply company, sued its competitor for copyright infringement based on the competitor’s use of a photo depicting a bowl of traditional Vietnamese food comprised of rice sticks, egg rolls, grilled meat, and garnishes.

King Seng claimed copyright ownership not only in the photograph, but also in the actual bowl of food and its arrangement as a sculpture. The court held that copyright protection did not extend to the bowl of food because the traditional Vietnamese dish was too common and therefore lacked originality. The holding suggests that a more creative culinary creation might be entitled to copyright protection. Kim Seng Co. v. J & A Importers Inc., 810 F.Supp.2d 1046 (C.D.Cal. 2011).

Final food for thought

IP protection can have a positive impact on the food industry by discouraging blatant and direct copying and by motivating chefs to come up with novel, unique, and creative culinary ideas.

Copyright, patent and trademark law all have built-in limitations that would still allow chefs to continue to work in a collaborative environment without fear of liability. In practice, protection for food designs should extend to non-functional, original, highly creative, unique, and/or distinctive food designs, and liability should generally be limited to cases of substantial similarity, excluding unprotectable elements.

Chefs, restaurants and food manufacturers interested in maximizing the value of their brands should therefore consider engaging IP counsel to determine whether their food designs are entitled to intellectual property protection and, if so, consider filing for protection.

Natasha Reed is a Counsel in Foley Hoag’s intellectual property practice in New York. Her practice covers all aspects of trademark and copyright law with an emphasis on global protection for multinational businesses, from managing trademark portfolios for domestic and international clients to litigation involving among other areas, trademark infringement and anti-counterfeiting, to negotiating and drafting trademark licenses.