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Intellectual Property Lawyer Naomi Straus on How Chefs Can Protect Their Work

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Last week, Eater's Gabe Ulla took an in-depth look at copying in cooking, talking to chefs from Wylie Dufresne in New York to Christian Puglisi of Copenhagen's Relae about the importance of attributing sources in the kitchen. Though most of the piece deals with what a lawyer might call "community norms" — how the chef community regulates itself through the court of public opinion to minimize culinary plagiarism — the chefs didn't seem to find much protection at all in the real court system. Dufresne himself questions "why recipes aren't protectable."

Indeed, at first glance there seems to be little legal recourse for chefs for whom the community norms have failed. But as intellectual property and trademark lawyer (and former restaurant worker) Naomi Straus argues in the latest issue of the UCLA Law Review, chefs and restaurateurs might have legal options that wouldn't shut down the collaborative nature of their profession. Here now, the Mitchell, Silberberg & Knupp associate talks about how chefs might protect themselves under trade dress law — and, yes, even copyright. She also explains why chef should want to at least consider protecting their intellectual property, even in a collaborative industry.

What exactly is trade dress, in layman's terms?
Trade dress is a form of trademark. You can use your trademark to protect your brand name, to protect your logo, to protect catch phrases, like I think Rachael Ray has "Yum-O!" trademarked. Trade dress basically started off protecting the look and feel of packaging. The best example I can think of is the Coca-Cola bottle. When you see the shape of that bottle you know that what's inside of it is Coca-Cola even if doesn't have the word Coca-Cola on the label. Consumers really see this as meaning that the item came from a particular source.

Trade dress has also expanded to protect things like interior design. The biggest trade dress case, the one that went to the Supreme Court and established trade dress as protectable, was actually about restaurant décor. It's called Two Pesos v. Taco Cabana. A Mexican restaurant sued another Mexican restaurant for using what they thought was décor that looked too much like theirs. And the Supreme Court said that, yes, restaurant décor could function as trademark and could be protected.

And so you think that can be expanded into plating and perhaps also menus?
Yeah, I mean, if we can protect the way a restaurant looks, why can't we protect the way that the food in the restaurant looks? This isn't really established at all, but there's a possibility of analogizing to other cases to show that if it's a signature dish that people really associate with the particular chef and it looks a specific way, that could theoretically be protected as trade dress.

What is the trade dress registration process like?
Basically you submit documentation to the US Patent and Trademark Office that explains what your trade dress is and you usually have some type of drawing that they use to evaluate it. You explain how it's been used in business and that nobody else is using it and that customers associate it with you. It's not super expensive. It's probably no more than a couple thousand dollars. There are people like processed food companies who use that. Frito Lay has the shape of some tortilla bowl chip registered. If they can do that, why can't Thomas Keller register the salmon cornets?

It seems that it would be much easier for the chefs in the upper echelon to be able to actually achieve this with their recognizability of their dishes.
I think it definitely would be because most likely a court or the trade dress office would require you to show this thing called secondary meaning, which basically means that people already associate this trademark with you. So it would have to be something like Thomas Keller, somebody really well known or whose dishes are really well known. If it's just brand new, it gets complicated. There are ways you could argue that it's just automatically so distinctive that you know it means that it's a trademark.

And now let's talk about copyrighting.
Copyright is very different [from patent law] in that there are no formalities in copyright. You can submit things to the copyright office, but it's just voluntary. Copyright attaches immediately to your creative work.

But it's hard to enforce?
It can be hard to enforce and, in the food context, the hurdle is in convincing a judge who maybe has never heard a case where they said, "I have a copyright in my food," to look at it as a creative work. There's various requirements. The work does have to be original, but the fact you use things that people have used before doesn't mean that it's ineligible for copyright. You're allowed to take common themes, put them together in an original way and you have a copyright over the original aspect of that piece. I don't think this has ever been litigated, but I think you can claim a copyright in an entire menu because you made the decision of how to order everything. The bar for originality for copyright is actually fairly low.

[Ed.: After the interview, Straus reached back out via email to clarify on the topic of copyright, writing: "I realized that I should have said... that while it is not necessary to comply with any formalities to get copyright in a creative work, there is an optional process for copyright registration, and registration carries with it some very important benefits, such as the ability to get statutory damages and attorney fees if the copyright owner proves that his or her work has been copied. Basically, this makes it financially feasible for copyright holders to actually go after copycats and litigate a case, which, as we were discussing, is a huge issue in whether these rules are ever enforced. I don't know off the top of my head if anyone has tried to register a copyright in a restaurant dish, but this might be something interesting to look into."]

What do you think all of this means for photography in restaurants, for example?
I think it depends on where you're looking for the protection. There's not really any doctrinal reason why copyright couldn't cover food or at least like the way a dish looks. If you think about it as a type of sculpture, there is obviously artistic and creative work that goes into how you're composing a dish. So in that case, printing a picture of somebody's dish would probably be a form of copyright infringement because you're making a reproduction of their work.

In the trademark context, I think it's probably better for a chef to have the pictures out there because it's helping people recognize that as theirs. It also makes it easier to identity the copycat. There's a case that was a big deal probably about five years ago with a guy in Australia. He was ripping off Grant Achatz's stuff. The way that was discovered was a food blogger went and had a dinner and took pictures. Somebody else saw the pictures and said, "Wait, that looks exactly like the food at Alinea." So, in its sense, it helps the current protection system, which is the community norm — If we think a "no copying" norm that exists.

It's how you shame people out of copying?
Totally. I think honor and shame are really what's driving it right now. This hasn't become a legal issue, really. I think [the community norm] probably works fairly well among really high-level chefs. They don't want to exactly copy somebody else's work. If you're taking pride in your work, you don't want to be a copycat. I think it's more worrisome when a big restaurant chain would come in and rip off something that a small chef is doing.

Do you think trade dress protection is the better route to go rather than copyright?
I thought it was the more likely way of getting protection. Trade dress is a more loose area of the law. And because there is this registration procedure, I see it as a way that chefs could start to assert that they have trade dress and get this limited form of recognition. At least if it's on the trademark register, that's something to show to potential investors. You can say, "Look, I have a trade dress registration on this very special signature dish that I make." Whereas with copyright it's like, well, these theoretical people in academic legal land think that maybe copyright should extend to food, but nobody's ever dealt with it.

The problem with all of this is it takes people going to court and litigating it and paying the money. And it can be very, very expensive. In the cases where people have made these trade dress claims, the cases settle, which makes sense from a practical standpoint because it can be very expensive. Until somebody's really got the money and is willing to fight it and to take it all the way to a trial, there's just not that much precedent that we'll have. There is precedent for getting food things on the trade dress, like those chips. It's not completely theoretical. But part of the American legal system is just that most cases in all fields settle before they go to trial.

Say I get a trade dress registration on a dish. What would that mean in practical terms for a competitor who might want to use elements of the dish or who attempts to outright copyright?
If somebody outright copies the dish then the person with the trade dress registration — or even somebody who hasn't registered, if it's become really well known — could sue them for trade dress infringement. In that case, you have to show that there's a likelihood the public would be confused as to who was the originator of the dish or of the restaurant. So that's another hurdle because obviously you're already in the restaurant when you have the dish. I don't think I'm at the French Laundry if I get a cornet at a different restaurant. But if you thought the restaurant was connected to the other chef's, that could be confusion. If it seems like, "Oh, this might be a Mario Batali restaurant. He must own this."

And then the thing I thought was good about trade dress is that if you're another chef who just likes the dish and you want to build off of it, trade dress is composed of many different elements, usually. If several of the elements are different, then it wouldn't be a trade dress infringement. If you have a distinctive way that you put together a plate and somebody copies it exactly, they've infringed your trade dress. If they take certain elements of it, add elements of their own and it's clearly different? Not an infringement.

Is there a gray area in there? I imagine that as a way for copycat chefs to get around trade dress by using a somewhat different element.
It's all very fact-based, so that's the point where you have to start going into court. Theoretically it would be a jury that would decide whether it was similar enough that it was confusing. If it ever got to that point, it would be a jury or a judge looking at the plates, looking at everything and saying, "Do we think this is actually confusing or not?" But yeah, it's not a complete protection, which in a way I think is good because it would let people play and riff on things.

Right, there's the issue of the balance between protecting your intellectual property and the value the restaurant industry puts on collaborating.
I think that is the big unanswered question in all of these discussions about expanding IP protection for food. I'm not sure that I come out one way or the other on it. I think it's really important that people be able to make money off of their creations, and I also think it's important that people be able to keep creating. There's some stuff in the trademark law that looks at whether the copying was done in bad faith. That can be part of the inquiry that the court goes into. But you definitely don't want it to be so much protection that nobody's getting to create anything. You don't want to shut down the way the restaurant industry works.

The more people are actually knocked off, the more chefs start worrying about protection. I think anybody who's looking to really make money should be a little bit more worried about their intellectual property. I love the restaurant industry, but there can be a sense of, "Oh well it's all just completely collaborative and great." But you have to be watching out. It's worth considering. Or being aware as a chef or restaurateur that there are things you could be doing to protect your intellectual property. Just thinking of it as intellectual property changes things a little bit.

Please note, this article is for informational purposes only, is general in nature, and is not intended to and should not be relied upon or construed as a legal opinion or legal advice regarding any specific issue or factual circumstance. Therefore, you should consult an attorney in the event you want legal advice.

[Photo: msk.com]

· Trade Dress Protection for Cuisine: Monetizing Creativity in a Low-IP Industry [UCLA Law Review]
· Inspiration and Attribution in Cooking: How and When Should Chefs Credit Their Sources? [-E-]
· All Interviews on Eater [-E-]

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