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It’s Not Delivery, It’s Infringement.

Posted in Fair Use, Famous Marks, First Amendment, Goodwill, Infringement, Social Media, Trademarks

In-N-Out_Burger_hamburgers_and_cheeseburgers

We’re not talking pizza, we’re talking burgers. Not just any burgers, either, we’re talking In-N-Out burgers. As any California transplant will tell you, no other burger from any other restaurant comes close. In-N-Out has more than just burgers; it also has French fries, shakes, and drinks. They also have a drive-thru if you don’t want to get out of your car. However, In-N-Out does not have a delivery service. And a trademark infringement lawsuit filed yesterday seeks to keep it that way.

As a result of consumer demand and advancements in technology, a smorgasbord of food delivery services have emerged to make it easier for consumers to eat out while staying in. Here in Minneapolis, we have at least four options: Bite Squad, GrubHub, PostMates and the more recent entry, DoorDash.

It is our new Minnesotan friend DoorDash that was on the receiving end of In-N-Out’s lawsuit. In-N-Out asserts that it has repeatedly requested that DoorDash stop delivering In-N-Out food, and stop displaying the In-N-Out trademarks (including the In-N-Out logo) from DoorDash’s website. According to the complaint, DoorDash complied with In-N-Out’s request for a short period, but then resumed its delivery services.

But wait, isn’t DoorDash just giving consumers what they want and, along the way, increasing sales to In-N-Out? Where’s the beef? According to In-N-Out, they’ve got a Double-Double’s worth:

Defendant’s use of Plaintiff’s famous trademarks implies that Defendant not only delivers In-N-Out products to its customers, but that the quality and services offered by Defendant is the same as if consumers had made purchases directly from Plaintiff. Upon information and belief, the quality of services offered by Defendant does not at all comport with the standards that consumers expect from Plaintiff’s goods and services. Further, Plaintiff has no control over the time it takes Defendant to deliver Plaintiff’s goods to consumers, or over the temperature at which the goods are kept during delivery, nor over the food handling and safety practices of Defendant’s delivery drivers. While Plaintiff adheres to the Food Code, on information and belief, Defendant does not adhere to such regulations, including with regard to compliance with required food safety and handling practices.

If Vegas put odds on “what legal defense is DoorDash likely to assert,” the good money would be on “Nominative Fair Use” (sorry American Pharoah). We’ve discussed nominative fair use a few times at DuetsBlog, but the basic issue is whether the defendant is using the mark to identify the actual products or services of the plaintiff. A defense is likely established where:

  1. The product cannot be readily identified without using the trademark;
  2. Only so much of the trademark is used as is necessary for the identification; and
  3. No sponsorship or endorsement of the trademark owner is suggested by the use.

The issue in this case will be whether DoorDash’s use suggests that In-N-Out has sponsored or endorsed DoorDash as a delivery service. Third-party food delivery services have not been around for very long. Do consumers expect a delivery service to be endorsed by individual restaurants? Or do consumers consider a delivery service to be a neutral third-party that simply takes the travel out of “carry-out” service

Having used delivery services before, my instinct says In-N-Out may be out of line. On the one hand, if my Pizza Hut delivery guy delivers cold pizza to me, I would complain to Pizza Hut. But if I had a local pizzeria delivered via DoorDash, my reaction has been “that pizza doesn’t travel well, looks like I need to eat in.” Complicating the matter is the fact that DoorDash has entered into partnerships with other companies, including Taco Bell and 7-11.

Will that be enough to create an association in the minds of consumers? If DoorDash loses, it’s hard to see how any of the other food delivery services can survive, unless they reach individual deals with each and every restaurant they utilize. Such a requirement would add some significant business cost to this model, with little benefit to consumers. Here’s to hoping the issue is resolved quickly, especially for everyone who had planned on getting In-N-Out delivered for Thanksgiving.