We live in an insatiable society. Across the globe, particularly in the United States, everyone with an Instagram account knows that the “phone eats first.” Young professionals rush to happy hour to post the obligatory cocktail cheers video before they take their first sip. On Friday nights, couples sprint to their favorite spot or the up-and-coming Mediterranean restaurant to quickly snap a picture of the “trio of spreads.” Everyone from kids to grandparents alike are flocking to the nearest Crumbl every Monday to share a picture of the pink box and the half-pound cookie inside. Social media has created a food frenzy. We are more obsessed with posting the picture of a meal than eating the meal itself. While a psychologist might have a negative view of the connection between social media and food, the baker or chef behind the photogenic creation is ecstatic by the way platforms such as Instagram and YouTube bring new patrons into their storefronts.
Due to the rise of social media over the past twenty years, food has become an obsession in our society. Many of us are self-proclaimed “foodies.” Historically, food has not fit neatly into the intellectual property legal scheme in the United States. Trademark, trade dress, and trade secrets are often associated with food, but we rarely see recipes or creative platings receive patent or copyright protection. Intellectual property law is not as enthralled with food as many of us are, but pairing the law with social media may create another way to protect food.
A RECIPE FOR IP PROTECTION
There are four main types of intellectual property: patents, copyrights, trade secrets, and trademarks. The utilitarian and economic perspectives are the two main theories behind intellectual property law. The utilitarian purpose of food is to be consumed. Economically, the food business in America is a trillion-billion-dollar industry. Intellectual property law aims to promote innovation, creativity, and economic growth. All three of these goals can be found within the food industry; however, the recipe for intellectual property protection has yet to be perfected.
Patent law is designed to incentivize and promote useful creations and scientific discoveries. Patent law gives an inventor the right to exclude others from using the invention during the patent’s term of protection. To qualify for a patent, an invention must be useful, novel, nonobvious, properly disclosed, and made up of patentable subject matter. Patentable subject matter includes processes, machines, manufactures, compositions of matter, and improvements thereof. Novelty essentially requires that the patent be new. It is a technical and precise requirement that often creates the biggest issue for inventors. Novelty in the context of food “means that the recipe or food product must be new in the sense that it represents a previously unknown combination of ingredients or variation on a known recipe.” According to the U.S. Court of Customs and Patent Appeals, to claim protection in food products, “an applicant must establish a coaction or cooperative relationship between the selected ingredients which produces a new, unexpected, and useful function.”A person cannot simply add or eliminate common ingredients, treating them in ways that would differ from the former practice. There are very few patents for food, but common examples include Cold Stone Creamery’s signature Strawberry Passion ice cream cake and Breyer’s Viennetta ice cream cake.
Copyright law affords protection to creative works of authorship that are original and fixed in a tangible medium. Fixation is met “when its embodiment … is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration.” The Supreme Court has stated, “that originality requires independent creation plus a modicum of creativity.” Copyrights are not extended to “any idea, procedure, process, system, method of operation, concept, principle, or discovery.” Food, specifically food designs, are typically not eligible “for copyright protection because they do not satisfy the Copyright Act’s requirement that the work be fixed in a tangible medium.” A chef does not acquire rights for being the first to develop a new style of food because this creation is seen as merely ideas, facts, or formulas. Furthermore, shortly after a food’s creation, it is normally eaten, losing its tangible form. Recipes alone are rarely given copyright protection because recipes are considered statements of facts, but “recipes containing other original expression, such as commentary or artistic elements, could qualify for protection.”
Trade secrets are more favorable to the food industry. Traditionally, trade secret law has encompassed recipes. To be a trade secret the information must be sufficiently secret so that the owner derives actual or potential economic value because it is not generally known or readily ascertainable. The owner must make reasonable efforts to maintain the secrecy of the information. It is unlikely that food design, the shape and appearance of food, will be given trade secret protection as “food design presents a formidable challenge to trade secret protection: once the food is displayed and distributed to consumers, its design is no longer secret.” However, certain recipes, formulas, and manufacturing and preparation processes may be protected by trade secret law. Regarding food and intellectual property, trade secrets are probably the most well-known form of IP. Examples of still valid trade secret recipes and formulas include Coca-Cola’s soda formula, the original recipe for Kentucky Fried Chicken, the recipe for Twinkies, and the recipe for Krispy Kreme donuts.
Trademark is the most favorable type of IP protection given to the food industry. Trademarks identify and distinguish the source of goods or services. Trademarks typically take the form of a word, phrase, symbol, or design. Trade dress is a type of trademark that refers to the product’s appearance, design, or packaging. Trade dress analyzes “the total image of a product and may include features such as size, shape, color or color combinations, texture, graphics, or even particular sales techniques.”
Different types of trademarks and trade dress receive different levels of protection. For trademarks, it depends on the kind of mark. Courts determine whether the mark is an inherently distinctive mark, a descriptive mark, or a generic mark. Similarly, trade dress receives different levels of protection depending on whether the trade dress consists of product packaging or product design. In the context of food, ‘the non-functionality of a particular design or packaging is required” for a product to receive protection as trade dress. Some examples of commonly-known trademarks include Cheerios, the stylized emblematic “M” logo from McDonald’s, and the tagline “Life tastes better with KFC.” Food designs that have federally registered trademarks under trade dress include: Pepperidge Farm’s Milano Cookies, Carvel’s Fudgie the Whale Ice Cream Cake, Hershey’s Kisses, General Mills’ Bugles, Tootsie Rolls and Tootsie Pops, and Magnolia Bakery’s cupcakes bearing its signature swirl icing.
SOCIAL MEDIA – THE LAST DEFENSE
When it comes to food, there is no recipe to follow to receive intellectual property protection, but social media can be a way for bakers, chefs, and restauranteurs to be rewarded for their creations and ensure creativity in the food industry. Social media influences the way businesses conduct and plan their marketing strategies. Many businesses use social media to communicate with their audience and expand their consumer base. Social media allows a chef to post the week’s “Specials Menu” to their restaurant’s Instagram, and in a few seconds, anyone who follows that account can post that menu on their account and share it with hundreds if not thousands of people. As noted previously, this single menu would not receive IP protection because it is primarily fact-based, not a secret, is obvious, and is likely not a signifier of the restaurant to the general public. However, the power of social media will bring hundreds of excited and hungry foodies to the business.
Social media alone cannot ensure that another chef or baker won’t reverse engineer the dish featured on the special’s menu, but social media has done what IP cannot. The various social media platforms embody what the framers of the Constitution were trying to accomplish through intellectual property when they drafted Article I centuries ago — the promotion of innovation, creativity, and economic growth. The Constitution states that “Congress shall have power to … promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries….” While there is no indication that the framers ever intended food to be a part of what they knew to be intellectual property, two hundred and fifty years later, it is clear that food is a mainstay in the IP world, even if it does not fit systematically into patents, copyrights, trademarks, or trade secrets. Unfortunately, the law has fallen short when addressing IP protection for the food industry; but, luckily social media has continued to fulfill the goal of intellectual property that the framers desired when it comes to the food industry.
Social media allows others to connect with the satisfying creation and gives chefs the opportunity to be compensated for their work. After seeing the correlation between the Instagram post and the influx of guests, the chef will be incentivized to create more. The chef will cook up another innovative menu for next week, hoping that she will receive the same positive reward again. The food industry is often left out, unable to fit into the scope of IP law, but through social media, chefs and bakers can promote innovation, creativity, and economic growth at the touch of their fingers.
Alessandra Fable is a second-year law student at Northwestern Pritzker School of Law.
In January 2022, after nearly one hundred years of copyright protection, Winnie-the-Pooh entered the public domain. This blog post will discuss copyright law’s grounding in the Constitution, the story of Winnie-the-Pooh’s copyright, and how the changing landscape of U.S. copyright law has affected this beloved story and the characters contained within it.
Congress’ Power to Enact Federal Copyright Law
Congress’ power to regulate federal copyright law derives from the Constitution. Specifically, Article 1, Section 8, Clause 8 (the “Intellectual Property” Clause) grants Congress the power “[t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” While this clause grants Congress general powers to govern certain aspects of intellectual property law, it does not actually supply any laws on its own. Instead, acting pursuant to this constitutional authority, Congress can write and enact federal copyright laws.
Congress enacted its first set of federal copyright laws in the late 1700’s. The laws were relatively limited in scope, protecting “books, maps, and charts for only fourteen years with a renewal period of another fourteen years.” Modern copyright laws have since become more expansive, protecting a wider variety of works for longer periods of time.
The copyright laws relevant to Winnie-the-Pooh are: (1) the 1909 Copyright Act, (2) the 1976 Copyright Act, and (3) the 1998 Copyright Term Extension Act. Under all three Acts, an original work of authorship gains copyright protection the moment it is published. The copyright protection immediately grants the author exclusive rights to reproduce, distribute, perform, and display the work. Further, all three Acts permit authors to transfer these rights to third parties, which is often exercised by authors in exchange for royalty income. While these three copyright Acts are very similar in substance, their primary differences relate to the amount of time that authors enjoy these protections.
Under this Act, works could receive protection for up to 56 years. Upon publication, a work was initially protected for 28 years, and if the copyright was renewed in its 28th year, an additional protection term of 28 years was granted.
The 1976 Copyright Act made one significant change to the renewal term of works created before 1978; it gave all current copyrights an additional 20 years of protection, for a total of 76 years. Additionally, this Act gave authors an opportunity to terminate any licensing agreements previously made under the 1909 Act.
The 1998 Copyright Term Extension Act added yet another 20 years to the renewal period of previously copyrighted works, which automatically applied to works “subsisting in their second term between December 31, 1976, and December 31, 1977,” and extended the maximum length of copyright protection to 95 years.
In 1926, Alan Alexander Milne wrote Winnie-the-Pooh, the first of several collections of short stories about a boy named Christopher Robin, his stuffed bear, Winnie-the-Pooh, and their friends in the Hundred Acre Wood. Since the book was published during the 1909 Copyright Act regime, it automatically gained copyright protection upon publication through 1954, and received an additional 28 years of protection because the copyright was renewed. The 1976 Copyright Act further extended Winnie-the-Pooh’s protection through 2001, and the 1998 Copyright Term Extension Act tacked an additional 20 years of subsequent protection. Since the 1998 Act was the final extension of copyright protection, the book’s copyright expired at the end of 2021, causing Winnie-the-Pooh and the characters contained within it to enter the public domain in January 2022.
While these copyright extensions are important, the more interesting aspect of Winnie-the-Pooh’s journey into the public domain pertains to copyright transferability. In 1930, Milne first took advantage of his ability to transfer his copyright protections by signing an agreement with Stephen Slesinger, a “television-film producer, creator of comic-book characters, and pioneer in the licensing of characters for children.” Milne granted Slesinger “exclusive merchandising and other rights on the Pooh works in the United States and Canada.” This license lasted for the entirety of Winnie-the-Pooh’s copyright, which at the time extended through 1982. Slesinger subsequently granted these rights to Walt Disney Productions in 1961, and Milne’s estate also entered into a separate agreement with Disney around the same time. Milne’s agreement with Disney gave Disney nearly all of Pooh’s remaining copyright protections. This left Disney with nearly unrestricted access to use and develop the Winnie-the-Pooh characters into the popular cartoon versions.
The 1976 Copyright Act gave Milne’s estate an opportunity to reevaluate its agreements with Slesinger and Disney, as the Act allowed an author (or his heirs) to terminate a licensing agreement made under the 1909 Act. However, instead of terminating the licensing agreements, Milne’s estate opted to renegotiate its agreement with Disney in 1983 to receive a larger portion of royalties. Other than the royalty payment provisions, the new agreement had nearly identical terms to the old agreement, so Disney retained its nearly exclusive and unrestricted access to Winnie-the-Pooh. The licensing agreement was set to expire when the work entered the public domain, which at the time was less than 20 years away.
However, Milne’s estate in 1983 was unaware that the 1998 Copyright Extension Act would later grant Winnie-the-Pooh an additional 20 years of protection, further extending the duration of the licensing agreement as well as Disney’s exclusive rights to the work. Milne’s estate attempted to terminate the licensing agreement after the 1998 Act took effect, but the language of the 1998 Act only allowed for the termination of licensing agreements made before 1978. Because Disney and Milne executed a new contract in 1983 after renegotiating its terms, Milne’s estate was unable to terminate the agreement and Disney retained nearly exclusive rights to Winnie-the-Pooh until the book entered the public domain in 2022.
What Does This Mean for Pooh?
Now that Milne’s 1926 book has entered the public domain, “the plot, dialogue, and settings in that book are open for future creators,” along with the “appearance and traits” of any characters appearing in that book. This includes Piglet, Eeyore, Rabbit, Kanga, Roo, Owl, and Christopher Robin. Tigger, on the other hand, did not appear until 1928 in The House at Pooh Corner, so he does not enter the public domain until 2024.
While entering the public domain allows “anyone [to] adapt the 1926 book into a play, musical, film, or write a prequel or sequel,” the public does not have free reign to use many of Pooh’s modern characteristics. Any adaptations that Disney made to the character under the licensing agreements, such as giving him his signature red shirt, are still protected as derivative works. As such, Disney can still prevent the public from using its modified, well-known versions of Pooh.
The horror film, Blood and Honey, serves as an example of how creators can take advantage of Pooh’s entry into the public domain. This film, set to be released in 2023, “follows Pooh and Piglet as they go on a rampage after Christopher Robin abandons them for college.” While this film uses characters like Pooh and Piglet and refers to Milne’s original settings, the film refrains from using Disney’s red-shirted, cartoon-like version of Pooh.
Other artists have used their depictions of Pooh to explain and poke fun at copyright’s boundaries. For example, artist Lukey McGarry recently created a comic strip where Pooh refers to Disney’s copyright and jokingly explains to Christopher Robin that, “as long as I don’t put a little red shirt on, I can do as I like.”
How Will Disney Respond?
Though both the horror film and comic strip appear to be staying within the permissible boundaries of public domain, only time will tell if these works and others like them can escape intellectual property challenges brought by Disney. On one hand, Disney might actually benefit from the widespread renewed interest in Milne’s characters and, as a result, may refrain from challenging public use of Pooh. However, given Disney’s longstanding monopoly on Milne’s works, Disney may have trouble relinquishing its control over the characters. As a result, I presume that Disney’s last attempt to retain control over Pooh and his friends is yet to come.
Elisabeth Bruckner is a second-year law student at Northwestern Pritzker School of Law.