A common refrain: “There must be a way to protect this idea, either by trademark or copyright.” Regrettably, in many instances, the answer is “none of the above.” Take, for example, the humble chicken sandwich.
Late last week, a three-judge panel at the Court of Appeals for the First Circuit upheld a granted motion to dismiss with a holding worthy of a double take: “the district court properly determined that a chicken sandwich is not eligible for copyright protection.”
The plaintiff, Norberto Colón Lorenzana, was a former employee of South American Restaurant Corporation (“SARCO”), a franchisee of Church’s Chicken in Puerto Rico. During his employment as a manager, Lorenzana came up with “the concept for a new chicken sandwich that could be included on Church’s menu.” As alleged in Lorenzana’s complaint, the concept was a hit, and SARCO/Church’s began offering the new sandwich – dubbed the “Pechu Sandwich.” SARCO eventually obtained a federal trademark registration for the mark PECHUSANDWICH in 2006, though SARCO did not file a five-year declaration under Section 8, and so the registration was cancelled in 2013.
Lorenzana’s relationship with SARCO and Church’s soured from there, and Lorenzana brought suit in the District of Puerto Rico, alleging that SARCO “received economic benefits from plaintiff’s creation” without compensating him, and that SARCO “intentionally, willfully, fraudulently, and maliciously procured the registration of Plaintiff’s creation in the Patent and Trademark Office without his consent and proper compensation” — essentially a claim for fraud on the PTO. Lorenzana sought “no less than $10,000,000.00 as damages.” (You can read the full complaint here)
SARCO quickly moved to dismiss Lorenzana’s complaint, asserting that it did not state sufficient facts to allege fraud on the PTO. Ruling on the motion, the District Court for the District of Puerto Rico agreed and dismissed the claim. The court then generously read in a claim for copyright infringement (the complaint made no specific reference to copyright protection or the Copyright Act), but summarily dismissed that claim as well, holding “Neither plaintiff’s idea for the chicken sandwich recipe or the name ‘Pechu Sandwich’ is subject to copyright protection.”
Lorenzana appealed to the First Circuit, which unsurprisingly affirmed the District Court. As a quick refresher, according to Section 102 of the Copyright Act, there are eight categories of creative works eligible for copyright protection:
(1) literary works; (2) musical works, including any accompanying words; (3) dramatic works, including any accompanying music; (4) pantomimes and choreographic works; (5) pictorial, graphic, and sculptural works; (6) motion pictures and other audiovisual works; (7) sound recordings; and (8) architectural works.
Those categories make no room for recipes, which are functional directions to achieve a result rather than a creative work. Therefore, the First Circuit concluded that “[a] recipe — or any instructions — listing the combination of chicken, lettuce, tomato, cheese, and mayonnaise on a bun to create a sandwich is quite plainly not a copyrightable work.”
From there, the First Circuit turned “to the meat of [the] allegations” (pun presumably intended) and held that Lorenzana failed to sufficiently allege “that any false statement exists” that would constitute fraud on the PTO. So while the name PECHUSANDWICH is certainly eligible for trademark protection as evidenced by the registration, Lorenzana did not sufficiently allege factual grounds for fraud. Lorenzana did not claim ownership of or priority to the PECHUSANDWICH mark, presumably because SARCO, not Lorenzana, was the party to actually use the mark in commerce.
While Lorenzana is left uncompensated for his sandwich, we at least have the comfort of knowing that chicken sandwiches remain above the copyright infringement fray.