Recent years have witnessed a surge in the United States in the appreciation for fine food and those who create it. Indeed, the concept of the “celebrity chef” has taken such hold in the United States that there are entire television networks and countless magazines (on-line and in print) to cooking, recipes, chefs and the like, not to mention a wide variety of restaurants at all price points trading on the name and reputation of such chefs. Indeed, in much the same way that sports fans snap pictures of star athletes or look for Top Ten highlights, diners now post from well-known (or even not so well known) eateries on-line reviews and uploaded photographs of each course served to memorialize their memorable food encounters; would-be diners and others take it all in as they try to decide what and where to eat.
Though often motivated by a desire to share the pure joy of delicious meal, this posting trend has become so pervasive, public and indiscriminate that it has engendered a more negative name for its seamier side—food porn! As one chef noted, food porn “takes away the surprise, and a little bit of my intellectual property.” Because chefs, especially in the United States, have not always had a clear path to controlling the depiction of their creations, controlling food porn has usually been left to the too-frequently-absent discretion of the diners, much to the chefs’ chagrin. But that may have changed with the United States Supreme Court’s decision in Star Athletica v. Varsity Brands, 137 S.Ct. 1002 (2017), which we have written about once or twice before. If Star Athletica is given in food cases the sort of application found in an August 30, 2017 decision by a federal court in the Southern District of New York in a lighting case called JetMax v. Odd Lots, chefs may have something to cheer about.
Before jumping into the legal issues, let is start with what Food Porn is. “Food porn” is popularly defined as “a glamourized spectacular visual presentation of cooking or eating in advertisements, infomercials, blogs, cooking shows or other visual media, foods boasting a high fat and calorie content, exotic dishes that arouse a desire to eat or the glorification of food as a substitute for sex. Food porn often takes the form of food photography and styling that presents food provocatively, in a similar way to glamour photography or pornographic photography.” The food photography obsessions, readily apparent to anyone on Facebook, has also spawned wholesale Twitter (@foodporn and @itsfoodporn) and Instagram participation, a Food Porn Daily, a Food Porn You Tube channel, and scores of articles on what Food Porn does to one’s brain (such as those published in The Atlantic or New York Magazine). As with the self-depiction of other pleasurable human activities, advances in technology allow casual diners to self-publish through Facebook, Instagram and other social media platforms their own Food Porn. One difference, among many of course, is that this sort of “porn” is often photographed in public restaurants and the “stars” are not the people photographing or videotaping themselves as amateur stars—it is the food that is the star. And many chefs are understandably protective concerning how their creations are depicted.
But, for a long time, there was not necessarily much a US-based chef could do to protect his/her creations legally. Though trademark has long played a prominent role in food issues, as we have previously noted, US copyright law has long been little protective of chef’s creations, for example offering virtually no copyright protection for recipes under long recognized principles. As has been noted in the lead up to Star Athletica, “[i]n copyright law, the marriage of beauty and utility often proves fraught. Domestic and international lawmakers have struggled to determine whether, and to what extent, copyright should cover works that are both artistic and functional.” Indeed, efforts to protect individual food dishes as a sculptured creation of various elements was expressly rebuffed in Kim Seng Co. v. J&A Importers, Inc., 810 F. Supp. 2d 1046, 1053 (C.D. Cal. 2011). In fact, that case also found that the pictures of such food in that case did not merit copyright protection either. Id. Though the Kim Seng Court found that there was sufficient creativity involved in the selection and placement of the ingredients to allow for copyright protection, it concluded that the other elements of the then-applicable test for copyright protection had not been met. The Kim Seng Court concluded that (i) the “combination of unprotectable elements — a common bowl, and the ingredients of a traditional Vietnamese dish…cannot be separated from their utilitarian function, which is to be eaten” and “[a]ccordingly…must fail for want of originality”; (ii) the work cannot be considered fixed in a tangible medium of expression because it is “’inherently changeable,’” because “a bowl of perishable food will, by its terms, ultimately perish.” (As an aside, it seems strange to conclude that art is not protectable simply because the chosen medium is not immutable or immortal—canvas and paper can decay and crumble and stone may erode, yet that painted and sculpted on such media is not less worthy of protection, nor should it be forsaken as somehow perishable art. Some who have considered this question agree in so far as it has applied to body art, and even the great masters have sometimes worked in less than stable media, such as daVinci’s works on wax (noting that the master’s now lost Battle of Anghiari was painted on a wall covered “with a preparation containing some kind of waxy substance, probably beeswax” that did not dry fast enough to hold his colors) and on plaster (noting the “paint” on The Last Supper “had begun to flake off even during his lifetime.”), without anyone concluding it had not been sufficiently “fixed” to be recognized as art).
But the notion that food is a purely functional item judged for taste and nutrition wholly apart from its artistic presentation has lost its force in popular culture, if it ever had such force. Lest we forget, as the religiously-inspired feasts of the Middle Ages gave way to the more secular banquets of the Renaissance, serving and presentation of ingredients and foodstuffs was part of an elaborate and choreographed art form that came to celebrate the meal itself: as one reference work notes, “By this time the form of the banquet had evolved considerably, according to the accounts of Christoforo di Messisbugo, and included theatrical and musical performances”; as di Messisbugo recounted in his book, Banchetti: Compositioni di vivande et apparecchio generale (1549), “in unparalleled detail, the management and staging of these lavish, formal, ceremonial feasts,” celebrated the artistry of food presentation “from the setting of the tables with several tablecloths” to the “ornamental figures of sugar or marzipan to the accompanying music and the dances performed during the course of the meal.” Indeed, “one of the most striking features of banquet food,” even before the Renaissance, was the use of certain ingredients, like sugar, not only for their taste, but “for both visual and symbolic effect.” Id. (emphasis added). Likewise, the judging criteria on the present-day, popular cooking competition show Chopped continues in that very tradition by telling chefs that they will be judged on “presentation, taste and creativity.” As The Sage Encyclopedia of Food Issues also notes at page 69, “[b]y presenting food in a visually engaging way, the tastes, smells and textures of edible goods are enhanced. This is because people interpret their senses syncretically—the stimuli of sights, smells, tastes, textures and sounds interact with each other in our minds to become more meaningful. To exploit this reality, foods are often cast or carved with great skill. Chocolatiers and bakers make their delicacies in numerous visual forms, and cooks form butter in beautiful shapes. Vegetables and fruits can be transformed into beautiful garnishes. Even the arrangement of conventional foods on plates can be done with aesthetic considerations.” (emphasis added). Indeed, at least one highly trained and skilled chef believes such aesthetic considerations are present even in seemingly every-day dishes, noting, for example, that a “flawlessly executed omelet is a thing of beauty” that “[w]hen prepared properly…is a radiant, shimmering gift from heaven, creamy on the inside, enfolded by an outer layer of egg with the consistency and firmness of lace.”
So, food no doubt is a useful and necessary article. Yet it is also something that can be used to present artistic ideals or even a philosophy. Consistent with the law’s tradition of trying to accommodate such the functional and expressive duality, the notion of extending copyright protection to the creative elements of useful article has had a long undercurrent in intellectual property law. That undercurrent came to the surface in the German Geburtstagszug (“Birthday Train”) case in 2013, as we will discuss now and in Star Athletica as we will detail thereafter. In the Geburtstagszug decision in Case I ZR 143/12 on November 13, 2013, the German court concluded, as one commentator noted (and helpfully translated into English), that the protection of copyright law extends to works of applied art if those works exhibit a “‘degree of creativity which allows, from the view of a public open to art and sufficiently skilled in ideas of art, to be called an artistic performance.’” Id. (quoting the opinion). As the commentator went on to note, this “is the traditional standard for works of fine art and literature. Consequently, differences in standards for protecting works of applied and non-applied art do not exist anymore under German copyright law.” Id.
Though the German Geburtstagszug case related to a toy, commentators were quick to pick up on a German magazine article’s pointing out its potential application to the culinary arts: “in Germany if you take a picture of a dish in a restaurant without prior permission, you are violating chef’s copyright for his creation and can be liable to pay a hefty fine. If this approach to foodporn will become universal, what will we put in our Instagrams?,” said one; another noted that “a 2013 judgment of the Bundesgerichtshof (Germany’s highest federal court) … lowered the threshold of originality traditionally required for obtaining copyright protection in the ‘applied arts.’ While it is unclear what makes a meal sufficiently artistic to be eligible for protection, meals whose preparation includes a certain amount of creativity, which can be found in the texture, color combination, and food placement, likely will be eligible….”
The question naturally became, as stated by Julianna Walo in The John Marshall Review Of Intellectual Property Law, “Will the U.S. Follow Germany’s Lead in Copyrighting Artistic Food Placement?” While it seemed clear to Walo in 2016, as it had been to some others before her, that “neither food sculptures nor food placement are covered by these laws” according copyright protection to works of art in the United States, Id. at 567, she made a proposal to amend the US copyright statute to extend its protection to such art:
In short, given the changing attitudes of today’s modern society and the emergence of foodie culture, the law should react to these changing customs. Chefs were once seen as servants and food was seen as necessary for survival. Today, food art has transformed these outdated views. The culinary arts are doing what traditional arts always have: “Comfort the disturbed and disturb the comfortable.” Following Germany’s innovative lead, the U.S. should enact a statute giving protection to the fruits of this ever-so-quickly expanding art.
But such an amendment may not be necessary, or may be more easily achieved, after Star Athletica.
Though Star Athletica is a case about cheerleading uniforms with chevrons, it may help the chefs who aspire to a Michelin star as well. That is because Star Athletica, like the Birthday Train case in Germany, recognizes that the creative elements of useful articles can be, and indeed now under US law must be, analyzed separately from the articles themselves:
the [Star Athletica] majority created a new standard rather than picking from the numerous varying tests that lower courts had used. The new test focused on the statutory language of Section 101, and said: “[A] feature incorporated into the design of a useful article is eligible for copyright protection … if the feature (1) can be perceived as a two-or three-dimensional work of art separate from the useful article and (2) would qualify as a protectable pictorial, graphic or sculptural work — either on its own or fixed in some other tangible medium of expression — if it were imagined separately from the useful article into which it is incorporated.” In doing so, the majority “abandon[ed] the distinction between ‘physical’ and ‘conceptual’ separability” in favor of a separability analysis that “is a conceptual undertaking.” In other words, one must now perform an “imaginary extraction” of the item’s artistic features to view them standing alone or incorporated — to think of them either as standing alone or transposed into another form.
Lower courts have begin applying Star Athletica, and some have extended it interesting ways such as in JetMax Ltd. v. Big Lots et al., a recent case in the Southern District of New York, that held that the artistic separation test is quite flexible and forgiving to would-be plaintiffs: “A party need not show that the extracted element is solely artistic, that it was designed free from considerations of utility, or that it would be marketable once separated.” In that same decision, concerning ornamental lighting designs, the District Court concluded that a light cover was artistic and not functional since, “once the covers are removed, the remainder is a functioning but unadorned light string.” Commentators have already recognized that cases like Jetmax show where Star Athletica may lead: “’The court [in Star Athletica] seemingly opened the door to much more eligible subject matter for copyright protection, even beyond that in the fashion world,’ …[JetMax] could be the first of many cases to test what other objects can now receive a degree of copyright protection. [Copyright protection can extend to] ‘identifiable aesthetic features of useful products that can be imagined on a different medium, such as in a museum sculpture…Under the court’s new two-part test, these features would appear to be protectable under copyright law while previously they likely were not.’”
How this could happen under Star Athletica starts with two steps.
First, as should be readily apparent, this “imaginary extraction” test almost presupposes what the Kim Seng Court could not fathom—that the food items could be, and indeed to perform the Star Athletica analysis would be, conceptually separated from their utilitarian function of being eaten. Applying Jetmax as an example, one can easily see how food presented without the care or precision of one looking to avoid being chopped would nonetheless serve its nutritional and taste functions much like the unadorned light still illuminated. This would be true even if one could not separately market the food from its nutritional content or taste in the real world.
Second, because the Star Athletica analysis is a “conceptual undertaking,” it invites further examination of the second prong of the Kim Seng court’s rejection of the food presentation copyright claim. It would certainly seem possible under Star Athletica to describe the momentary or temporary stasis of the food dish at the moment of presentation as continuing conceptually for a legally sufficient time to amount to fixation under 17 U.S.C. § 101 (defining “fixed” as “for a period of more than transitory duration”). This is especially true where transitory “fixation” in digital media – deemed sufficient by some to assure copyright protection—is even more fleeting. In fact, as one Australian commentator noted:
After all, what is permanent? Thus if a work, such as Dobell’s portrait of Joshua Smith or Sutherland’s portrait of Sir Winston Churchill were destroyed, the copyright would continue to protect the exclusivity of the reproduction rights. Nevertheless, the question of when a form is sufficiently substantive to qualify as ‘material’ has remained a point of discussion in the case law. For example, is a vapour sculpture (made by an artist using a jet engine) ‘material’? Some would say not because it is insufficiently substantial. But what of an ice sculpture? It employs the same substances but lasts slightly longer. All would surely say, ‘Yes’. What then is the difference? Merely the length of time that the work exists? Given that every physical object is in a constant state of decay, the question is ‘what degree of substantiality is required?’ From vapour to ice to stone – it is only a matter of degree.
[Shane Simpson with Ian McDonald MA LLB, “26. The Uses And Protection Of Copyright,” in Collections Law: Legal Issues for Australian Archives, Galleries, Libraries and Museums, Australian Government represented by the Department of Regional Australia, Local Government, Arts and Sport]
Indeed, at least one court outside the US, in Metix (UK) Ltd v Croner Trading Pty Ltd  Fleet Street Reports Vol 24(10) 718 at 721, used “the example of an ice sculpture to indicate that protection can be granted to such impermanent works,” as Simpson noted. And US law already hints at recognizing transitory media in decided cases such as Kelley v. Chicago Park District, 635 F.3d 290, 305 (7th Cir. 2011), noting for example that courts “are not suggesting that copyright attaches only to works that are static or fully permanent” because courts must acknowledge that “no medium of expression lasts forever.” Id. As another Australian commentator has noted, in “Garcia v Google, [786 F.3d 733, 741 (9th Cir. 2015), the United States Court of Appeals for the] 9th Circuit stated that ‘[t]he statute purposefully left ‘works of authorship’ undefined to provide for some flexibility” in broadening coverage possibly to include, among other things, “creative food constructions, … in addition to any new forms of expression not yet conceived,” and later that “Fixation is a moment in copyright law. It is not an enduring condition.”
If those two arguments are possible on separation from function and fixation, Star Athletica may already provide a path past Kim Seng toward the copyrightability of food presentation art. But even if not alone “vaut le voyage” legally because Star Athletica itself may fall short of fully arming chefs with the ability to shut down uncontrolled food porn exploitation of their creations, the case and its emerging progeny already provide a basic recognition of the notion that the artistic expression in the presentation of their plates is separately recognizable from the food’s nutritional function. Something for the IP world to chew on…and hopefully a blog post “mérite un détour” from one’s other work today.