Intellectual property and its digestion

Back and forth in in social networking space — I digest some key ingredients of intellectual property as it applies to famous burgers (reprinted with Ivan’s permission):
Today at 10:35am

Hi Ron,

I had an interesting IP question/hypo that’s been weighing on my mind the last couple of days. (At at least it seemed interesting to a non-IP person such as myself- there may be well-settled law on this. This is purely hypothetical, and I’m not seeking legal advice of any sort.)

A book entitled Top Secret Recipes, written by Todd Wilbur, became a top seller some time ago. It features the recipes of same famous franchise foods, like the Big Mac, or other foods, such as the Twinkie. (http://www.thesun.co.uk/sol/homepage/features/article2165816.ece). Presumably, Wilbur reversed-engineered these foods according to his taste, and then wrote the recipe book based on his experimentation.

My question is, did the author have to obtain permission/enter a licensing agreement of some sort with the litnany of franchises (i.e., McDonald’s KFC Yum Yum, et. al.), before publishing such a work? If the author did not get permission, do McD’s, Hostess, et. al. have a viable cause(s) of action against Wilbur, who presumably has profited as a result of publishing his interpretation of the recipes? Presumably, Wilbur did not convert any “trade secrets” as it were, but it does appear that he’s using their intellectual property for his commercial gain. What would the franchises’ cause(s) of action be in such a case?

I did a Google Search; there appear to be no suits filed in connection with this book. So I remain curious.

Thanks for reading,
Ivan

My answer:
Today at 12:07pm

No, he has every right in the world to do this as long as his use of the trademarks associated with these famous foods is not misleading

Recipes are generally impossible to protect. You can copyright a cookbook but not the information in it, i.e., the recipe itself. You can’t patent a sandwich. (See http://en.wikipedia.org/wiki/Sealed_crustless_sandwich.) Mainly recipes actually are at best trade secrets, and you always are allowed to reverse-engineer someone else’s trade secrets or, if they are revealed to you and you are not under a contractual or other legal obligation to maintain confidentiality, to go tell them on the mountain.

In short, Wilbur didn’t profit from their intellectual property. He profited from his hard work in figuring out what it was they were selling successfully. People often forget that the main reward from intellectual investment — which is the only way intellectual “property,” protectible or otherwise, can come into being — is the benefit, commercially or otherwise, of what you create itself. McDonald’s gets the benefit of its investment in the Big Mac every time you buy one, and is also given the privilege by trademark law of preventing Wilbur, Alexander or Coleman from calling anything we make, no matter how exact a copy, a Big Mac. That’s really more than enough!

Today at 12:18pm

Thanks Ron!
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Author:Ron Coleman

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15 Responses to “Intellectual property and its digestion”

  1. Ben D. Manevitz
    February 20, 2009 at 2:04 pm #

    Just to be nitpicky…

    The whole sealed-crustless-sandwich decision (as I recall) was based on obviousness and anticipation, not subject matter.

    That is, the court there was basically saying that you *could* patent a sandwich – or rather a _way_ of _making_ sandwiches – as long as it was really novel. They rejected that patent because (a) PB&J had been around for, y’know, ever and (b) the whole pocket-sandwich method of making a sandwich was well anticipated by raviolis, pies, etc.

    But there isn’t (or shouldn’t be) a subject-matter problem per se with sandwiches. W/r/t the sandwich itself, it’s just going to be hard to find some combination of stuff to put in the sandwich that isn’t actually anticipated or obvious (as that term is meant by lawyers.)

    That is, let’s pretend Elvis was the first person ever in history ever, no, really to put PB together with fried bananas. Or any fried fruit. Then the Elvis sandwich would probably be unanticipated. It would still have an obviousness problem, but imagine there were cookbooks out there to the effect that “putting peanut butter with any fried fruit or vegetable is completely unacceptable practice in any kitchen anywhere.” Now you’ve got prior art teaching *away* and that could help with obviousness. So the Elvis Sandwich would be patentable.

    (And I gleefully anticipate my C&D letter from Memphis.)

    W/r/t a method of sandwich-making, same analysis. If I could figure out some sort of new way of putting that stuff together, that would be patentable. I can’t even think of an example of what that would be.

    Recipes are like the PB&Banana thing. Not copyrightable for the information communicated, but copyrightable for any creative expression incorporated therein. (I’m thinking of descriptive aspects of the recipe – texture and consistency descriptions. Probably “functional,” but I could imagine a recipe that went beyond the functional.)

    –Ben

    • February 20, 2009 at 3:57 pm #

      That’s not a quibble, it’s a good point. And well worth it to me, Ben, just to see you put that many lines of text together in one place! Thanks!

  2. David Nieporent
    February 20, 2009 at 2:15 pm #

    Typo, Ron. You write: “is also given the privilege by trademark law of preventing Wilbur, Alexander or Coleman from selling anything we make, no matter how exact a copy, a Big Mac. That’s really more than enough!”

    You mean “calling,” not “selling.”

    • February 20, 2009 at 3:56 pm #

      I guess at least one of my former associates is gracious to me! That wasn’t a typo, it was a mistake! Fixed.

      Fixed for clarity. What I meant by selling was “putting out on the market” — not necessarily that someone would buy it. But your choice of words is better.

  3. February 20, 2009 at 2:20 pm #

    Quibble: “what you create itself?”

    Amusing story. I’m not a lawyer, but having worked in publishing and software for years and years and years, you learn some things about IP. So I was in a sandwich shop one day, a shop where they bake their own bread fresh a few times a day. So, literally, if you eat there you are eating truly *FRESH* bread. So, like any place that makes fresh bread daily, they often have “day old” bread to sell.

    So one day people working at a competing sandwich shop down the street came in and bought up all the day old bread for use in their shop, because they’d run low.

    People working at the first shop were shocked and outraged. “That bread is copyrighted, they could get in trouble!”

    I started to say something, then figured I might as well shut up. 🙂

  4. February 20, 2009 at 2:58 pm #

    I still chuckle; hey, do you think they should put shrink wrap licenses on their bread?

    • February 20, 2009 at 3:59 pm #

      It’s only a matter of time, Dean…

  5. Jody
    February 20, 2009 at 3:00 pm #

    Ahh… but could you simultaneously patent and indict a ham sandwich?

    • February 20, 2009 at 3:55 pm #

      I could Jody but I still wouldn’t be able to eat it!

  6. February 21, 2009 at 12:57 am #

    Thing about reproducing recipes is that the ultimate product is seldom even a reasonable facsimile of the original. I’ve tried lots of those “tastes just like_____” recipes, and the best anybody can do, I’ve found is “tastes kindalike _____”

    I’m thinking more often than not, food manufacturers look at these reverse-engineered recipes and just laugh.

    I’ve been trying to duplicate Miracle Whip for several years now, and can’t even get close.

  7. February 24, 2009 at 12:22 am #

    “if they are revealed to you and you are not under a contractual or other legal obligation to maintain confidentiality, to go tell them on the mountain.”

    A small point, but as I understand the California statute (Cal. Civ. Code 3426.1), it is forbidden to reveal a trade secret if you know that it is a trade secret and learn of it by accident or due to the mistake of the owner, even if you have no contractual obligation not to disclose. It is also forbidden if you learn of the trade secret from someone whom you have reason to know was under an obligation not to disclose it, even if you yourself are under no such obligation. You’re still home free with reverse engineering though.

  8. February 24, 2009 at 12:41 am #

    Well, come on Bill, I did say “other legal obligation” — I don’t know much about sandwich patents but I know how to write escape clauses!

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  2. Chez Service - September 17, 2010

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