Some of the writers at InsideCounsel have been known to pepper their articles with groan-inducing puns. But, apparently, journalists don’t have a monopoly on such humor. Judges seem willing to slide in a groaner every now and again as well. And, when a case is as ludicrous as New York Pizzeria, Inc v. Ravinder Syal, where the plaintiff tried to claim trademark protection on the flavor of its chicken parm, well, apparently Circuit Judge Gregg Costa could not resist a pun or two.

“The flavor infringement claim is plainly half-baked,” the judge wrote. And it’s an apropos phrasing, as InsideCounsel’s Italian Cuisine expert Chris DiMarco explains that many dishes listed in the suit–baked ziti, chicken and eggplant parmesan, for example–are indeed finished in the oven after they’ve been prepared with other cooking methods.  But it also tacitly points out just how ludicrous certain aspects of the suit really are.



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A closer look at the ingredients of the case show just how strange it is. New York Pizzeria, Inc. (NYPI) accused former employees of stealing its data, including recipes. That part is pretty straightforward. But NYPI took it further, claiming that its flavors and plating designs should be protected under trademark law. The judge disagreed.

“I was surprised to see that the plaintiff was alleging a trademark right to flavors of some well known dishes. It’s hard to imagine how a subtle variation in a recipe for any of those dishes could be protected as a trademark,” says Robert Zelnick, partner at McDermott Will & Emery LLP .

These Italian dishes are extremely common. One could find a dozen or more places that serve them in a few block radius of InsideCounsel’s Manhattan office, for example, granted to varying degrees of quality. But to imagine that the flavors of these dishes could be trademarked is patently ridiculous.

Now, the plaintiff was likely pretty miffed that his recipes had been copied, so his natural reaction might have been that he was wronged. But, of course, anything that is not protected by an IP right can be copied, so NYPI’s attorneys decided to try and get relief by claiming a trademark right. But that is not so easy to do when food is concerned.

“Flavor trademarks are analogous to color trademarks in fashion. We wear clothes to keep us warm, but we buy what we buy because of what it looks like,” Zelnick explains. The judge in the case felt the same way. He noted that, while we eat food for sustenance, we also eat it because of its flavor, so that flavor is an integral part of a food that carries meaning, not a source-distinguishing characteristic, like the packaging of a candy bar. The same holds true for colors in fashion – those colors carry meaning and are inherently distinctive to the article of clothing in question.

Legend has it that the formula for Coca-Cola is better protected than the names of the biggest mafia dons in New Jersey. If the folks at Coke had patented their formula, it would have expired by now. But the challenge of relying on a trade secret is, well, keeping it secret, which is tough to do in a time when data theft and reverse engineering are possible.

But baked ziti is not Coke. “It’s hard to imagine how the particular taste of this baked ziti is noticeably different from the thousands of others that are out there,” Zelnick says. “Besides, if we hand out exclusive rights for various dishes we’ll end up with flavor depletion and not that many restaurants.”

If the claim of a flavor trademark was not enough, NYPI also says that it had distinctive plating arrangements that were infringed upon as well. Once again, this claim stunk like week-old eggplant. The court noted that it could imagine a situation where the plating of a signature dish could be protected by an IP right. Take, for example, a sushi restaurant that presents its food in the shape of the Statue of Liberty. That is arbitrary and unusual, and could serve as a source identifier, so if people come to associate that plating with a particular restaurant, there could be some confusion if others copied the design.

But, in the case of NYPI, its claims were so non-specific that a potential defendant would not know how to avoid infringing, since NYPI had not outlined the metes and bounds (not to be confused with meats and bounds) of the right. Thus, this claim, too, was rejected by the court.

Too many, it seemed like the plaintiff was overreaching when there was no reason to do that, but the proprietor of NYPI was clearly hurt by the perceived betrayal of his former employees, and perhaps it was understandable that he, as Zelnick puts it, “Threw in everything – and the kitchen sink.”

I guess lawyers can be punny, too, sometimes…