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Last week, the United States Court of Appeals for the Sixth Circuit issued a nonprecedential opinion in <em>Rupp v. Courier-Journal, Inc.</em>, No. 20-5409 (January 11, 2021), holding a newspaper did not infringe the trademark DERBY-PIE. The decision affirmed the district court’s order of dismissal, finding the mark-holder failed to “plausibly establish” the paper’s headline and caption incorporating the mark constituted trademark uses.

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Alan Rupp owns the federal registration for DERBY-PIE for bakery products. His grandparents claimed to have created the pie containing chocolate, walnuts, and vanilla made and sold under the mark by the family’s bakery. In 2017, coinciding with the annual running of the Kentucky Derby, the Courier-Journal published the recipe for another baker’s chocolate-walnut bourbon pie under the headline “Bourbon makes this Derby pie a state original.” The paper also used “Derby Pie” in captioning a photograph of another baker’s flavored macarons. Rupp, known for his aggressive enforcement efforts, sued for infringement.

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The district court dismissed Rupp’s claims because the complaint failed to allege the paper had used the mark in a “trademark way,” that is, “in a way that identifies the source of [the defendant’s] goods.” The Sixth Circuit agreed. First, the paper had not used “Derby Pie” to identify the source of the recipe or the macarons; it had identified the bakeries responsible for each. Second, the plaintiff’s marketing boast that its pies use “walnuts and vanilla” – not just any nuts, let alone bourbon – eliminated any risk of mis-association between the bakeries and the plaintiff: “[N]o reader could possibly think that a so-called ‘Derby pie’ containing bourbon and no vanilla came from the company … associated with DERBY-PIES.” And third, the paper’s uses of the mark were “wholly descriptive.” The use of “Derby Pie” in the first article’s headline “simply informs the reader of the type of pie – a chocolate-walnut pie – that the reader can made from the recipe provided.” Likewise, the use of “Derby Pie” in the caption of the second article merely “informs the reader of the general flavor, not the origin, of the macaron.”

The court declined to address the paper’s First Amendment argument as unnecessary to the resolution.

Sixth Circuit Affirms Noninfringement by Newspaper

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