Call it a legal game of chicken. A former employee of a Greenwich restaurant has been sued by his former boss, with the dispute focusing on, among other things, the names of menu items.
Frank Carpenteri owns Garden Catering in Greenwich. Michael Natale used to work there, until he left to open his own Storrs-based eatery, called Wally's Chicken Coop. Now Carpenteri has filed a federal intellectual property suit against his former employee, claiming that the menu items at the Storrs deli are too much like those at Garden Catering.
"We think it's pretty clear there's really no federal issue that should go to trial," said attorney James Doyle, who represents Natale and his brother. "Essentially, we have a deli that is 104 miles from the plaintiff's deli."
The plaintiff's lawyer, Jim Reilly, of Whitman Breed Abbott & Morgan in Greenwich, declined to comment, saying that it's his policy not to comment on pending litigation. But the plaintiff's arguments are laid out in court documents.
Carpenteri claims he is the owner of common law trademarks, including the term "Hotsy" to describe various sandwiches and types of chili, and "The Special," to refer to a combo meal of chicken nuggets, a side dish and soda. He claims that Wally's Chicken Coop uses names that are identical or similar to his trademarks. For example, he objects to Wally's Chicken Coop using the term "Topsy," which he said is similar to Garden Catering's "Hotsy."
According to the complaint, filed December 2011 in U.S. District Court, the Garden Catering restaurant chain has "grown from its humble beginnings to a multi-venue mainstay across two states, known for its fried chicken, chicken nuggets and quick service."
Garden Catering has many locations in Connecticut and New York state, according to the complaint.
The complaint states that Michael Natale , who worked for Garden Catering for a number of years, was aware of Garden Catering's recipes, pricing, supplier arrangements and also knew how the chicken nuggets are prepared and served. The lawsuit alleges that while he was employed by Garden Catering, he took steps to undermine its business. Natale decided to leave Garden Catering in August 2011 and has opened Wally's Chicken Coop with his brother.
The lawsuit claims that Carpenteri is the owner of intellectual property used at the restaurants, including copyrights, common law trademarks, U.S. trademark applications, U.S. trademark registrations, and state trademark applications associated with his restaurants. The lawsuit also claims that Carpenteri is the owner of "specific confidential business information," including the recipes and the manner in which their chicken nuggets are prepared and served, as well as other trade secrets, including price lists and customer lists.
The lawsuit alleges breach of fiduciary duties, federal unfair competition, common law unfair competition, Connecticut Unfair Trade Practices Act, and unjust enrichment. The plaintiff is looking for punitive damages and court fees.
Doyle, who lives in Rhode Island but is also licensed to practice in Connecticut, said he filed a motion for summary judgment on June 12. The plaintiffs have until July 12 to file a reply brief. After that, Doyle has until July 24 to file a response. Also representing the defendants is Anthony Medico, a solo practitioner in Greenwich.
Doyle acknowledges that Wally's Chicken Coop serves the same types of food as Garden Catering. "It's fried chicken and fries," said Doyle. "It's OK to make similar chicken, just like hundreds of other delis do."
The Rhode Island lawyer said the plaintiff is claiming that Doyle's clients stole a recipe because they hired a fry cook who used to work for the Greenwich restaurant. But, said Doyle, "the recipe is not secret and it's not protected."
Doyle said the plaintiff could have taken legal steps to protect his recipes, as big companies like Coca Cola have done. But he said Carpenteri didn't do anything like that, and that the chicken nugget recipe at issue is "in the public domain because it was shared with workers under no obligation of confidentiality," Doyle said.
The defense lawyer sees no intellectual property issues at all. "We don't use their trademark," Doyle said. "We didn't steal any secret recipe."
Doyle said the plaintiff and defendant are childhood friends and he thinks the lawsuit is personal. "Clearly it's some kind of hurt feelings," Doyle said. "I see no other explanation for why you do this to somebody. There's been no harm to the plaintiffs."
A Hartford trademark lawyer said the owner of the original restaurant may be able to press his claim. George Pelletier, a partner at Cantor Colburn, in Hartford, said "they don't need a trademark registration in order to have rights in a trademark case.'' Even if someone doesn't formally register a trademark, Pelletier said, they can claim "common law trademark rights."
"You have to affirmatively demonstrate that consumers associate that [product name] as a trademark," Pelletier said. "Essentially, that's all done through discovery."
To prove that the item is trademarked, Pelletier said that each side would likely conduct surveys. "The goal of the survey is to get a significant amount of people to say 'yes, when I see this name I associate it with a specific source,'" Pelletier said.
Doyle said this suit has made things difficult for his clients at Wally's Chicken Coop. "It's been a huge expense and frustration, when they are trying to get their business off the ground," Doyle said. "People don't realize how much a federal lawsuit can cost."
When they hear about the legal dispute, "the general public seems to think it's funny," Doyle said. "But it's a serious issue."