The president of Kern’s Kitchen filed a lawsuit against the local newspaper, Courier Journal, on May 2 alleging trademark infringement.
Alan Rupp, the grandson of Kern’s Kitchen’s founders and holder of a trademark for “DERBY-PIE,” filed the suit in U.S. District Court of the Western District of Kentucky.
“Beginning some time last year and continuing to date, Defendant has knowingly infringed upon the Plaintiff’s trademark,” the lawsuit states, alleging further that “although notified of the existence of the trademark DERBY-PIE in 1992 and before, Defendant has continued to infringe and encourage others to infringe the mark in a knowing, willful and malicious manner.”
The lawsuit points to two articles from May 2017, one with a recipe titled “Derby chocolate-walnut pie” and another that used the phrase “Derby Pie macarons.” The alleged infringement has created unfair infringement, the lawsuit argues.
Rupp has requested more than $1 million in punitive and compensatory damages and that the Courier Journal destroy all paper and digital versions of the items that it says infringe upon the trademark, as well as “engage in corrective advertising to dispel any confusion caused by Defendants’ infringing activities.”
In an emailed statement, Joel Christopher, the executive editor of the Courier Journal, said: “We think the lawsuit is without merit, and we’ll defend appropriately.”
Kern’s Kitchen is well-known for its vigorous defense of the trademark. While it hasn’t kept people from selling pies with similar ingredient makeups, it has made many bakers and restaurant owners leery of using the words Derby and pie in the same breath.
In the past, Kern’s Kitchen has also sued other media organizations, including Bon Appetit magazine, PBS and The Washington Post. It’s won each case.
The company was founded in 1973 by Rupp’s grandparents, Walter and Leaudra Kern. It has made Derby-Pie since at least 1954 and first trademarked since 1969.