Yesterday, The New York Times reported on a lawsuit one restaurant owner instituted against another for copying “each and every element” of her restaurant, including “the white marble bar, the gray paint on the wainscoting, the chairs and bar stools with their wheat-straw backs, the packets of oyster crackers placed at each table setting and the dressing on the Caesar salad.”
The Times goes on to quote celebrity chef Tom Colicchio of “Top Chef” fame (pictured right), who expressed frustration over his perceived inability to stop a sandwich shop from cloning his “Witchcraft” restaurants: “There’s nothing you can do,” he said. “You can’t protect recipes, you can’t protect what a place looks like, it’s impossible.”
Unless you know a trademark lawyer, that is. Here is my partner Bob Cumbow’s (pictured bottom right) take on the issue:
“As I read the story, three issues are raised, one with an easy answer, two others not so.
“1. One of the persons asks, How can you protect the way a place looks? He’s obviously unfamiliar with Two Pesos v. Taco Cabana, in which the U.S. Supreme Court confirmed that trade dress applies to restaurant decor and that it can be protectable even without secondary meaning, as long as it is shown to be inherently distinctive — which is the challenge facing the plaintiff in this case.
“2. Are recipes and menus protectable? Under copyright law, probably not, except to the extent that they embody original expression. Also, a list of items, each unprotectable alone, may be protected as an original selection and arrangement under Feist v. Rural Telephone — but with respect to an oyster house menu this would be a very ‘thin’ copyright, since the offerings of restaurants within such a narrow niche are likely to be substantially similar from one restaurant to another, and protecting one party’s menu from another party’s even near-identical menu could be the first step on a ‘slippery slope’ of granting one restaurateur exclusive rights in something that its competitors ought to be allowed to do.
“3. Can recipes and menus be included as part of a restaurant’s overall trade dress? Probably not, because they are almost certainly functional. But this is a novel argument that may seek to expand the notion of ‘tertium quid’ trade dress to include menu offerings as part of the overall ‘look and feel’ of a restaurant. I’d be surprised if it were successful — but I’ve been surprised before.”
Great analysis, Bob. Thanks for sharing!
The case cite is Powerful Katinka, Inc. v. McFarland, 07-6036 (S.D.N.Y).
Photo credits: Bravo TV and Graham & Dunn PC