Too Many Lawyers in the Kitchen? - Fordham Intellectual Property, Media & Entertainment Law Journal
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Too Many Lawyers in the Kitchen?

Too Many Lawyers in the Kitchen?

By: L.S.

On June 26, 2007, Rebecca Charles, owner of Pearl Oyster Bar in the West Village, filed suit in the Federal District Court in Manhattan against her former employee, Ed McFarland, chef and co-owner of Ed’s Lobster Bar in SoHo. She alleged trade dress and trade secret infringement. The next day, the New York Times ran an article about the dispute, “Chef Sues Over Intellectual Property (the Menu).” Since then, foodies and lawyers alike have been debating the merits of Charles’ intellectual property claims.

Charles alleged that McFarland’s New England-style seafood restaurant copied “‘each and every element’ of Pearl Oyster Bar”— from the look and feel of the physical restaurant, a potential trade dress infringement, to the Caesar salad dressing recipe, a potential trade secret infringement. Pete Wells, Chef Sues Over Intellectual Property (the Menu), N.Y. TIMES, June 27, 2007. McFarland countered, “I would say it’s a similar restaurant. I would not say it’s a copy.” Id. Focusing on the trade dress claim– should the law permit two “similar” or exceedingly similar New England-style seafood bars in Manhattan? Does Charles have a legitimate trade dress claim or are there just too many lawyers in the kitchen?

On,, and, bloggers and blog commentators engage in heated rhetoric to impart their differing opinions on the matter. Some argue that Charles “hardly invented these concepts [white marble bar, grey painted wainscoting, bar stools with wheat straw backs, oyster crackers at each table setting, etc.] ten years ago” and has no right to claim them now as her own., Pearl Oyster Bar v. Ed’s Lobster Bar: Day 2, (last visited January 20, 2008). They claim that McFarland could not open an authentic-seeming lobster bar without including some of these iconic “Maine seafood restaurant” details. Id.

Others defend McFarland by pointing out that people rarely have completely novel ideas about food and restaurants., When Can Chefs Sue Other Chefs?, (last visited January 20, 2008). Erik Sherman of stated, “you need to know when you’ve really done something different and when you owe too much to everyone who has gone before.”, Pearl Oyster Bar v. Ed’s Lobster Bar: Day 2, (last visited January 20, 2008). In fact, Ms. Charles herself acknowledged that Pearl Oyster Bar was inspired by a San Francisco restaurant, Swan Oyster Depot. Pete Wells, Chef Sues Over Intellectual Property (the Menu), N.Y. TIMES, June 27, 2007. She further revealed that she learned the Caesar salad recipe, “a signature at Pearl,” from her mother who learned it years earlier from a chef at a Los Angeles Restaurant. Id.

On the other hand, many support Charles’ decision to bring suit and maintain that she “has a right to feel betrayed.”, Pearl Oyster Bar v. Ed’s Lobster Bar: Day 2, (last visited January 20, 2008). While the look and feel of Charles’ restaurant exists everywhere in New England, Charles is the one who brought this innovative concept to New York City and turned it into an upscale restaurant. Supporters feel this merits intellectual property protection. Id.
All of these arguments aside, though, Charles’ case will ultimately turn on whether or not Pearl Oyster Bar’s trade dress qualifies as “inherently distinctive.” In the pivotal trade dress case, Two Pesos, Inc. v. Taco Cabana, Inc., the Supreme Court of the United States held that inherently distinctive trade dress is protectable under Section 43a of the Lanham Act without a showing that such trade dress had acquired secondary meaning. Two Pesos v. Taco Cabana, 505 U.S. 763 (1992). Inherently distinctive trade dress exists when a trademark’s nonfunctional “look and feel” is immediately capable of identifying a unique product source. Protection of trade dress serves to “secure to the owner of the mark the goodwill of his business and to protect the ability of consumers to distinguish among competing producers.” Id. at 763.

In Two Pesos v. Taco Cabana, plaintiff Taco Cabana, a Mexican fast food chain in Texas, sued Two Pesos, another Texas Mexican fast food chain. Two Pesos opened years after Taco Cabana with a similar motif—a “festive eating atmosphere having interior dining and patio areas decorated with artifacts, bright colors, paintings and murals.” Id. at 765. Because the court found Taco Cabana’s trade dress inherently distinctive, it prevailed in its suit. While I have frequented neither Pearl’s Oyster Bar nor Ed’s Lobster Bar, it seems as though Charles’ case is analogous to Taco Cabana’s and is certainly capable of achieving the same, victorious result. Her restaurant has a distinctive look with identifiable, “theme” elements. The lawyers, for now, may have found their place in the kitchen.

Chris Reid