Vacations have a way of placing things in perspective, perhaps in unexpected ways. As summer draws to a close, many (including myself) return from vacation harboring great memories of family and fun. Sometimes that fun involves not just great locales, but great food and drink. Being an intellectual property attorney, I couldn’t help but think about the great recipes and drinks I enjoyed and how they are (or aren’t) protectable. When it comes to the restaurant and hospitality industry, such recipes require more than just mixing together the right ingredients in the right amounts, and oddly enough, developing intellectual property protection around them is not any different.
Let’s start with copyright law. To the uninitiated, you may not realize that recipes are not protectable subject matter under copyright law. Although copyright law states that an original work fixed into a tangible medium of expression qualifies a work a copyrightable, recipes generally do not qualify. Why? First, recipes generally list specific ingredients and their amounts — unfortunately, such lists are not copyrightable subject matter. As explained in Circular 33 of the U.S. Copyright Office entitled “Works Not Protected By Copyright”:
A recipe is a statement of the ingredients and procedure required for making a dish of food. A mere listing of ingredients or contents, or a simple set of directions, is uncopyrightable. As a result, the Office cannot register recipes consisting of a set of ingredients and a process for preparing a dish.
Even though there may be some effort and trial and error in getting the recipe “just right,” the simple truth is that the simple listing of ingredients and how to prepare them are not enough to qualify for copyright protection.
What about patent law? Technically, the short answer is that such recipes may be protectable under patent law, but this is a difficult path to navigate here. Although patents may be granted for any “new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof” according to Title 35 of the United States Code, Section 101, the invention would need to be novel and non-obvious to be patent eligible. In other words, it is exceedingly hard for the recipe to contain a combination of ingredients that is “new” and not otherwise some variation of known ingredients. Further, such combinations and/or variations may be “obvious” to someone skilled in the art (i.e., a qualified chef or experienced bartender). I am not saying that it is not impossible to obtain patent protection, but in the context of most recipes, obtaining patent protection is just not a viable option. Further, even if viable, the limited term of protection may not correlate to the long-term strategy of the business and should be carefully considered.
So what is left? More than you might think, actually. Trademark and trade secret law weave themselves quite nicely into the mix. Most chefs are already keen on protecting their recipes as trade secrets — keeping the proportions, instructions, and other “know-how” in the creation of the foodstuff under wraps fits nicely into trade secret law. That said, protecting such elements under an appropriate trade secret program requires that specific steps be taken to ensure protection under applicable state law. Trademark is also helpful in denoting a brand’s signature foodstuffs (such as Colonel Sanders’ Kentucky Fried Chicken mix of seasonings and preparation of signature fried chicken, et al.) and distinguishing them from others; however, it only designates the brand and does not protect the specific ingredients or processes. Like a recipe that is not quite right, the intellectual property protection strategy here requires something “more.”
So what is a restauranteur to do? Whether starting your own restaurant, creating a new menu in an existing restaurant chain, or anywhere in between, here are three considerations worth chewing on:
1. Copyright Can Protect Certain Elements of a Recipe. Although procedures, processes, and methods of operation cannot be protected under copyright law, explanations of why a particular step or activity needs to be performed, as well as illustrations of such processes, are protectable expression. Circular 33 specifically supports this proposition, stating that “a recipe that creatively explains or depicts how or why to perform a particular activity may be copyrightable [including] the written description or explanation of a process that appears in the work, as well as any photographs or illustrations that are owned by the applicant.” Granted, you do not want to rely solely on these elements for protection, but they should be considered when developing an overall intellectual property strategy for the food business.
2. Trade Secret Protection Requires More Than Secrecy. This point should be obvious, but you’d be surprised how often it is overlooked. Of course, trade secrets enjoy such status by being, well, secret; however, qualifying as a trade secret under the applicable state law is not a given and should be carefully addressed. For example, the Texas Uniform Trade Secrets Act not only requires that the information “derives economic value … from not being generally known,” but that “the owner of the trade secret has taken reasonable measures under the circumstances to keep the information secret.” What measures may be deemed “reasonable” are subject to interpretation, and navigating these requirements should involve competent intellectual property counsel.
3. Trademarks Can Be a Recipe’s Next-Best Friend. Trademarks help not only distinguish goods and services, but also designate origin. When used correctly, trademarks can support a brand to which the consumer identifies and, therefore, operate to strengthen goodwill and affinity with your recipe (rather than a competitor). For example, a real Dark n’ Stormy is not just any dark rum and ginger beer, but Gosling’s Black Seal Bermuda Black Rum Since 1806 and Gosling’s ginger beer (and in the interests of full disclosure, I love the drink and absolutely agree). Granted, the brand is strengthened by their prepackaged version of the drink marketed under the same name, but you get point — trademarks can help round-out protection for the foodstuff if filed, prosecuted, and policed correctly.
Protecting recipes is anything but straightforward under intellectual property law, but after years of practice in the field, I am not surprised. Protecting intangibles usually requires a layering of various forms of intellectual property to develop the appropriate level of protection. When it comes to recipes, this is absolutely true. So don’t get stuck with a bitter aftertaste and take the time to address these elements correctly — when you get it right, well, it’s just icing on the cake.
Tom Kulik is an Intellectual Property & Information Technology Partner at the Dallas-based law firm of Scheef & Stone, LLP. In private practice for over 20 years, Tom is a sought-after technology lawyer who uses his industry experience as a former computer systems engineer to creatively counsel and help his clients navigate the complexities of law and technology in their business. News outlets reach out to Tom for his insight, and he has been quoted by national media organizations. Get in touch with Tom on Twitter (@LegalIntangibls) or Facebook (www.facebook.com/technologylawyer), or contact him directly at tom.kulik@solidcounsel.com.
Kathryn Rubino is a Senior Editor at Above the Law, and host of 
