The American holiday of Thanksgiving is tradition-laden and is celebrated as much for the leftovers after that November Thursday as it is for the turkey on that day, at least according to the US Department of Agriculture. Indeed, Americans “idolize Thanksgiving left overs,” and the “[t]he overstuffing of America’s fridges has become something of a tradition every November,” as Grist noted. Indeed:
“A lot of people talk about loving Thanksgiving leftovers even more than the dinner itself,” said Helen Zoe Veit, a professor who studies the history of food at Michigan State University. For some Americans, they’re the whole point: Nearly three-quarters say that a fridge teeming with surplus food is the best part of the holiday.
[Yoder, In defense of leftovers]
Of all the possible ways to use Thanksgiving leftovers — Dagwood sandwiches, turkey enchiladas, turkey potpies — soup may well be both the most widespread and the most variable. It’s definitely among the coziest.
And going “back to the table for seconds and thirds…and may be even fourths” is, like watching football, “a time honored and practically sacred Thanksgiving tradition in many families.” But, despite such fondness for keeping the leftovers around so seconds can, a day or two later, maybe move past fourths, one needs the space, things get stale or spoil, and it is time to clean out that fridge or pantry because more holiday parties and a new year is right around the corner.
So, it is with intellectual property matters as well—there are matters, some previously addressed, where recent developments require us to use what we have before it gets too stale. Or maybe we just want to return for seconds.
Either way, let’s jump in:
A. Some Holiday Cheer—In a previous post (in fact in multiple such posts, here and here as well), we discussed the United States Supreme Court’s decision in Star Athletica v. Varsity Brands, 137 S.Ct. 1002 (2017), a case about cheerleading uniforms for most, but an invitation to me to examine the intellectual feast of issues about food porn. In that piece, I also made the observation that “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,” and that “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.” Well, seems it is time to go back for seconds on all that (and of course, it makes sense to start the Thanksgiving column with food references).
Since my 2017 article, there seems to have been great attention paid by legal commentators to efforts to protect recipes. Claire Germain, a US law professor, wrote a 2019 article comparing French and US intellectual property law on the question of recipe rights. Though noting that each regime offered little protection to traditionally formatted recipes, recipes in cookbooks like Cowboy Chow had been found protectable since they were “’infused with light-hearted or helpful commentary,’” (quoting Barbour v. Head, 178 F. Supp. 2d 758, 764 (S.D. Tex. 2001), which itself carried on the notion described in Publications International, Limited, v. Meredith Corporation:
In one case, the alleged infringement involved the copying of approximately 170 recipes, which were accompanied by “much other instructive and valuable matter and information for household and family purposes.” Belford, Clarke & Co. v. Scribner, 144 U.S. 488, 490, 12 S.Ct. 734, 735, 36 L.Ed. 514 (1892). Nothing in Belford directly supports a rule of per se recipe copyrightability; in fact, it illustrates the important difference between barebones recipes like Meredith’s and recipes that convey more than simply the directions for producing a certain dish.
[Pub. Int’l, 88 F.3d 473, 481 (7th Cir. 1996)]
In 2021, Andrea Borroni wrote the perceptively punctuated Protecting Recipes? chapter in Mancuso’s Law and Food: Regulatory Recipes of Culinary Issues (2021), noting that “talented chefs are battling for recognition, looking for legal protection for their recipes, which they deemed manifestations of their creativity to be rewarded and not a mere act of mimicry only meant to feed the masses.”
That battle has largely been fruitless, however. For example, though Borroni devotes pages to that title question, the answer is incomplete, unsatisfying in concluding that “[t]he only solution can be to recognize a ‘moral’ credit (by means of a homage in the menu) to the original creator, but it is only a matter of courtesy, acknowledged as a social rale within the foody community, rather than the rule of law,” reaching that conclusion because “all [legal] methods so far analyzed have proven to leave something to be desired.” Likewise, earlier this year, Ghose and Ali examined in Protection of Cuisine under Intellectual Property Law: A Global Perspective various approaches to this question, starting interestingly with a discussion of the ethical guidelines of the International Association of Culinary Professionals, which “mandate the members to take a pledge that they shall not knowingly use any recipe or intellectual property belonging to another for their own financial or professional advantage,” and that they will “provide for use with proper recognition, further reflecting the industry’s norms of sharing.” Like Germain and Borroni, however, Ghose and Ali run through the possibility of protecting recipes through alternatives to copyright, such as patent, trade dress, trade secret, and the like, and offer little of concrete help. And that is fine for Rachum-Twaig, whose forthcoming article actually makes The Case Against Copyright Protection Of Food, stating that “haute cuisine is an efficient and flourishing market even absent copyright protection, thus making such protection redundant and unjustified” and “that keeping copyright protection off food even makes this market more efficient due to its own piracy paradox.”
There has also been continued attention to the protection of food presentation, or plating, as a potentially protectable artistic interest beyond the recipe itself. As Bonadio and Weissenberger addressed it in Food Presentations and Recipes: Is There a Space for Copyright and Other Intellectual Property Rights?, “Culinary creations involve various elements – the recipe per se, the expression of the recipe in textual or other forms, the process of preparing the dish, and the presentation, or ‘plating,’ of the dish. Accordingly, a distinction is to be made between rights applicable to food presentation on the one hand, and to recipes on the other.” That distinction is interestingly examined by these authors and is worth one’s attention.
B. Mm! Mm! Good, Thanksgiving Recipes From Campbell Soup—So much about Thanksgiving is about coming up with great flavors, and so much of the art (and heart and soul) of dealing with Thanksgiving leftovers is finding ways to transform. That, of course, is a perfect segue into the discussion of another helping of Warhol and issues raised in a matter now awaiting a decision by the Supreme Court.
As noted in a previous post, in The Andy Warhol Foundation v. Goldsmith, courts have had to deal with whether or not Warhol’s Prince Series was a transformative, non-infringing use of photographs by Lynn Goldsmith. That 2nd Circuit decision is now before the Supreme Court to decide on how one should best address questions of fair use and transformative works, which the Court had addressed last year in Google v. Oracle, 141 S. Ct. 1183 (2021), noting in part (in an obvious allusion to Warhol’s famous Campbell Soup piece) that “’[a]n ‘artistic painting’ might, for example, fall within the scope of fair use even though it precisely replicates a copyrighted advertising logo to make a comment about consumerism.'” Id. at 1203 (quoting 4 Nimmer on Copyright § 13.05[A][b]). The Warhol matter was argued before the Court on October 12, 2022, and those interested in issues of fair use and transformative works would do well to review the transcript, listen to the argument, review the briefs, or all of the above, as it really was a great showcase of issues and arguments at the highest levels on these complex issues about which we write so often.
And one should understand that so listening is just a warm-up to the next Supreme Court case that will wrestle with what constitutes fair use and what counts as transformative work. On Monday, November 21, 2022, the Court granted cert. in Case No. 22-148, Jack Daniel’s Properties, Inc. v. VIP Products LLC. That case includes six amicus briefs, and presents the following questions, according to Petitioner:
Whether humorous use of another’s trademark as one’s own on a commercial product is subject to the Lanham Act’s traditional likelihood-of-confusion analysis, or instead receives heightened First Amendment protection from trademark-infringement claims.
Whether humorous use of another’s mark as one’s own on a commercial product is “noncommercial” under 15 U.S.C. § 1125(c)(3)(C), thus barring as a matter of law a claim of dilution by tarnishment under the Trademark Dilution Revision Act.
[Jack Daniel’s Cert. Petition, at I]
The case, detailed in earlier district court and appellate decisions, relates to a claim that a dog’s chew toy Bad Spaniels Silly Squeaker that parodies by shape, font, and wording Jack Daniel’s classic Old No. 7 Tennessee Sour Mash Whiskey bottle. This case, and the place of jokes and parodies, is being watched in the legal press, non-legal press, and was the subject of discussion here just a few months ago. Stay tuned.
C. A Most American Holiday Still Reaches Overseas: Americans think “typically of Thanksgiving as a quintessentially American holiday. And it is! But the United States isn’t the only country in the world where people celebrate Thanksgiving,” according to Zack Beauchamp. It turns out that Canada, Liberia, one town in the Netherlands, Grenada, and the Australian territory of Norfolk Island also celebrate Thanksgiving. Id. Or at least a holiday by the same name that may, or may not, enjoy the same source or origin.
Source or origin, of course, is often a central concept in trademark cases, as trademarks themselves are intended to be an indicator of just such source or origin. In a November 4, 2022 Order, the United States Supreme Court decided to hear Abitron Austria GmbH et al. v. Hetronic International Inc., a case on extraterritorial application of the Lanham Act to address the issues of “Whether the U.S. Court of Appeals for the 10th Circuit erred in applying the Lanham Act, which provides civil remedies for infringement of U.S. trademarks, extraterritorially to Abitron Austria GmbH’s foreign sales, including purely foreign sales that never reached the United States or confused U.S. consumers,” as noted at scotusblog.com. In Abitron, the Court of Appeals that the respondent could recover even for sales that were not likely to result in consumer confusion within the United States. In fact, that court allowed for recovery as to all allegedly infringing sales although only 3% of such sales occurred in the United States, prompting the petitioner to note on page 30 of its cert. petition that “Awarding damages for 100% of worldwide sales on the theory that 3% of them implicate the Lanham Act would allow a very small tail to wag a very large dog.” Just as “Happy Thanksgiving?” may be the applicable rhetorical question when US employment laws are extended extraterritorially, questions will arise with the possible extension of the Lanham Act beyond US borders. There is, indeed, a likelihood of confusion, nay an actual present confusion, as to such extension of US laws, which prompted the Solicitor General to urge the Court to grant certiorari because this case is a suitable vehicle for clarifying the Lanham Act’s geographic scope.
D. Home Cookin’: Many Thanksgiving traditions include heading home and celebrating what is special and familiar in such locales. One source has said “Some holiday rituals are timeless and inclusive — a favorite family recipe, say, or a neighborhood football game. The practice of gathering for a boozy night before Thanksgiving, however, belongs to the recent post-grads, young adults not yet responsible for families of their own. Members of this club understand: Thanksgiving is for celebrating with family; the night before, for partying with friends.” Others carry that over into declaring the whole holiday the best holiday, noting that “Thanksgiving is a great time to visit friends from your hometown or spend the holiday together exclusively.”
As many who read here know, this writer aged out of that club a while ago, but nonetheless likes celebrating what is special and familiar in his hometown—Bayonne—and home state–New Jersey. See Out Of Character: Jersey Boys, Detective Stories, & The Case Of Space-Traveling Tardigrades; WORLD FAMOUS (By, Say, New Jersey Standards): Expanding The Right Of Publicity Nationally And Internationally; Still Standing?: The Sometimes Rocky World Of Public Art). Though, as reported here previously, the Chuck Wepner mural got covered over in Bayonne, we are happy to report that on November 12, 2022, the bronze Chuck Wepner statue was unveiled at its public home in Dennis Collins Park in Bayonne, New Jersey. Not only was Chuck himself there, but so were boxing greats Larry Holmes, Iran Barkley, and Gerry Cooney, along with actor Liev Schreiber (who played Wepner in the bio-pic Chuck). So, just as art imitated life as Wepner’s story spawned the Rocky franchise, life has now imitated art as Chuck has gotten a statue, just like Rocky did:
“Definitely a thing of beauty,” as Mickey Goldmill said.
E. Thanksgiving, Football, & “The” Game: Many associate football with Thanksgiving:
Since its inception in 1920, the National Football League (NFL) has played games on Thanksgiving Day, patterned upon the historic playing of college football games on and around the Thanksgiving holiday. The NFL’s Thanksgiving Day games have traditionally included one game hosted by the Detroit Lions since 1934, and one game hosted by the Dallas Cowboys since 1966 (with two exceptions in 1975 and 1977). Since 2006, a third prime time game has also been played on Thanksgiving. Unlike the afternoon games, this game has no fixed teams.
In 2022, the NFL branded the Thanksgiving games as the John Madden Thanksgiving Celebration, to honor the memory of head coach and broadcaster John Madden
[NFL on Thanksgiving Day (emphasis added)]
Let’s focus on the “historic playing of college football games on and around the Thanksgiving holiday” portion of that.
There are two classic college football rivalry contests, one usually the weekend before the holiday (Harvard v. Yale) and another usually the weekend after (Ohio State v. Michigan), that bracket Thanksgiving. Each is known as “The Game,” as seen here and here. While in past years, such references were simply a harmless overlap outside of families mixing Ivy and Big Ten alums, or certain select folks who had both Ivy and Big Ten degrees, this year there may be more to the question of which is “The” Game than in years past, as illustrated here and here.
That is because, on June 21, 2022, Ohio State University federally registered THE as trademark. The New York Times noted that the registration “won’t unleash heavy-handed lawyers in search of anyone using the word ‘the’ — its protections are limited to a narrow set of circumstances that people are unlikely to cross.” But that may have been wishful thinking by the Gray Lady. After all, that publication’s name starts with the same definite article.
But even accepting the New York Times spin, “’The’ Game” presents an interesting circumstance now. The registration certificate makes clear that the mark given to The Ohio State University covers sports paraphernalia in the field of sports and college athletics:
Looks like it would support an argument that OSU alone can sell “The Game” t-shirts, as it owns THE and “GAME” is likely a required disclaimed element as it is currently in a combined 600+ live registrations and pending applications (based on an 11/26/22 TESS search).
Harvard and Yale both seem to be testing their luck in using THE in connection with college sports clothing and hats. Michigan maybe runs a risk in doing so, but at least Michigan has an argument that it enjoys an implied license (a concept well explained by Tseng & Zimmerman) given the necessity of the Wolverine’s participation The Game that was being played this November 26th in Columbus, Ohio (where Michigan prevailed and now has “a two-game winning streak in The Game for the first time in 22 years,” 45-23).
So Maybe Harvard v. Yale really is limited to depicting that contest this year as “The Game,” as at least one outlet already seemed to be doing. Or more precisely, maybe the Ivies have to use “The Game.” (By the way, Yale took this year’s contest, besting Harvard 19-14).
Just something to chew on next year while thinking about those games between rival schools around the holiday.
F. Christmas Is Next, But Somebody Isn’t Getting What They Wanted: Speaking of The (there we go again OSU) Thanksgiving Day Parade, “the parade always ends with the arrival of Santa Claus to ring in the Christmas season,” and so we will end this Thanksgiving post with a similar look forward to that next holiday. In recent IP news, Mariah Carey, famous for belting out All I Want for Christmas and other holiday tunes as one of the best-selling holiday albums of all time, got bad news on the trademark front recently:
Mariah Carey won’t be getting everything she wants for Christmas this year … her attempt to trademark the phrase “Queen of Christmas” was just rejected, TMZ has learned.
The U.S. Trademark Trial and Appeal Board denied MC’s attempt to trademark “Queen of Christmas” on Tuesday … along with her attempts to lock down the rights to “Princess Christmas” and “Christmas Princess,” according to a release given to TMZ.
Interestingly, she lost by default—she never answered the opposition filed to her trademark registration request, despite having two chances. If you’re claiming to be Christmas royalty, you better check your list twice so you don’t default.
Have a great holiday season and all the best for the New Year.