Tag: Intellectual Property

On September 18, 2015, U.S. Customs and Border Protection (“CBP”) published a Federal Register notice concerning its adoption of certain amendments to the Final Interim Rule regarding the “Disclosure of Information for Certain Intellectual Property Rights Enforced at the Border”.

The amendments allow CBP to disclose information appearing on merchandise or its retail packaging that may be otherwise protected by the Trade Secrets Act to a trademark owner for the purpose of obtaining assistance in determining whether the merchandise bears a counterfeit mark.  The CBP must notify the trademark owner that the disclosure is for the limited purpose of assisting CBP.

The amendments also expand information-sharing procedures by requiring CBP to release to the importer an unredacted sample or image of the suspect merchandise or its retail packaging any time after presentation of the suspect goods for examination.  The purpose of these amendments is to assist the importer to provide a response to the detention notice.  The amendments also require CBP to release limited importation information to the trademark owner no later than the time of issuance of the detention notice to the importer (rather than within 30 business days from the date of detention).

Copyright protection may extend to a recipe book or cookbook because it is a compilation, but that protection is limited to way the content is presented and how the compilation’s elements are presented. The elements themselves are not necessarily protected by copyright law.

In Tomaydo-Tomahhdo LLC et al. v. Vozary et al., the plaintiff sued the defendant, a former business partner, for copying her recipes and offering the dishes at a competing restaurant. The plaintiff claimed she created the “Tomaydo Tomahhdo Recipe Book” in 2012 and obtained a copyright for her recipe book in 2014. After she learned that the defendant was offering the dishes from her recipe book at his restaurant, she brought a claim for copyright infringement against him and others claiming that the menus, offerings, recipes and presentation of food at his restaurant are nearly identical to her copyrighted “work”. In support of her claim, the plaintiff conducted a “comparison test” of the various recipes and menu items offered. According to the plaintiff, the results of the test were that the defendant copied her recipes.

The defendant argued that copyright protection does not extend to the recipes themselves, but may only be extended to the layout of the recipe and any other artistic elements in the book itself. Further, the defendant claimed that the plaintiff’s comparison test was inadmissible.

The Court granted summary judgment in favor of the defendant on the copyright claim. The Court did not have to address the comparison test, because it found that the recipe itself is not protected. However, the Court did state that if it did use the comparison test, then the test shows the food items served by the defendant were different than those offered by the plaintiff. For example, the plaintiff’s chicken salad sandwich used provolone cheese and Defendant’s chicken salad sandwich used mozzarella cheese. The Court stated, “Certainly, plaintiffs cannot be suggesting that somehow copyright protection prevents defendants from serving chicken salad sandwiches.” The Court also dismissed the plaintiff’s supplemental state court claims, thereby dismissing the entire action.

The plaintiffs have filed an appeal to the Sixth Circuit.

As first reported in the LA Times, Huy Fong Foods, Inc., the originator of the famous spicy Sriracha sauce, may have missed its opportunity to trademark the term “Sriracha”. David Tran, the owner of Huy Fong Foods, named his sauce after a coastal city in Thailand and believed that it would be difficult to register the Sriracha mark for that reason.

Sriracha-style sauces include a combination of chili paste, vinegar, garlic and sugar. There are several brands marketing sauces using this recipe and the name Sriracha, including Frank’s Red Hot, Kikkoman, Lee Kum Kee, Taco Bell and Pizza Hut. Tran initially considered other companies’ use of the word “Sriracha” as free marketing for his product and his sales have grown from $60 million to $80 million in the past two years, according to the LA Times. However, when McIlhenny Co., the maker of Tabasco, announced its plan to release a hot sauce using the name Sriracha, Tran admitted that Tabasco’s use of the Sriracha mark may present a problem for his company.

Fortunately, Huy Fong Foods registered its signature rooster logo and green-capped bottle that holds their famous Sriracha sauce and licenses the right to use these trademarks to specialty producers, which helps to market their sauce. It does not appear that Huy Fong Foods has any intention of registering the mark at this time. In the event that Huy Fong Foods were to attempt to register the Sriracha trademark now, the USPTO may find that the term has become too generic.

On January 9, 2015, Ted Poe (R-Texas) introduced the Foreign Counterfeit Merchandise Prevention Act (H.R. 236). The purpose of this bill is to amend the Trade Secrets Act to allow U.S. Customs and Border Protection to involve trademark and copyright owners in its investigation once it has seized a potential counterfeit shipment. A similar bill was previously introduced in 2012, but it was not passed.

Presently, U.S. Customs redacts bar codes and identifying marks before sharing photographs of the counterfeit merchandise with trademark owners pursuant to 18 U.S.C. §1905, which provides for a broad criminal prohibition of disclosure of information by officers and federal employees. The new bill creates an exception to 18 U.S.C. §1905 by explicitly allowing U.S. Customs to provide a trademark or copyright owner with information, samples and images of the counterfeit merchandise and retail packaging. The bill includes also includes an amendment to §42 of the Lanham Act, which allows U.S. Customs to provide information, digital images and samples (subject to a bond) to the trademark owner.

The bill was assigned to the Subcommittee on Crime, Terrorism, Homeland Security and Investigations of the House Judiciary Committee.

This article is provided as general information for clients and friends of Gibney, Anthony & Flaherty, LLP. It does not constitute, and should not be construed as, legal advice. The contents of this article may be considered attorney advertising in some states.