The Law and Pastries

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Category: Intellectual Property Law, Public
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In law school, we learn to “think like a lawyer.” As the fictional Professor Kingsfield put it, we develop “the ability to analyze that vast complex of facts that constitute the relationships of members within a given society.” We learn the rules under which those relationships operate, and the theory and reasons behind how we handle things when those relationships go sour. We begin to see the world around us in a different light – the light of the law.

Torts got me first. I was seeing standards of care, the illusive reasonable man, and potential negligence wherever I went – except at my house, where we always behave reasonably and prudently. Contracts are no longer something I quickly sign and shove back across the counter. Don’t get me wrong, I only read them for entertainment value before signing. After all, I want my iPhone, and there is a reason they’re called adhesion contracts. Property’s spell struck when I encountered a private driveway, which crossed a county bike trail, which ran along a We-Energies right of way. I’ll leave constitutional law and criminal law to your imaginations, but I will say that I haven’t had to invoke any of my rights, nor has anyone had to read them to me. Finally, although I didn’t encounter it in real life, civil procedure did haunt my dreams for a while. Fortunately, new areas of the law from my summer session courses have started to edge out the 1L voices in my head.

One course, intellectual property, has me seeing trademarks and copyright disputes all over the place. Like everyone else, I had been seeing trademarks everywhere for my whole life, I just didn’t know what a trademark was. As I learned trademark law, I remembered a story from my hometown’s recent past. It was big news at the time, but it is likely unfamiliar to people who are not from Racine, Wisconsin. (For those of you not familiar with Racine, it is a lovely city located about 30 minutes south of Milwaukee. Among other things, Racine features an award-winning beach, excellent local government, and kringle.) I’ll have more on the local government in a future posting. For now, I want to talk about pastries.

The story begins long ago, when a wave of Danish immigrants settled in Racine. Like other immigrant waves throughout our history, the Danes brought their food here. In this case, they brought kringle, a large, tasty, pretzel-shaped pastry. At some point, Racine bakers swapped the pretzel shape for an oval shape and the Racine kringle was born. For decades, Larsen’s, Lehmann’s, O & H, and Bendtsen’s bakeries prepared and sold delicious Racine kringles. There was plenty of room in the market for all of the competitors to do well, and the good people of Racine, and many lucky visitors, ate their fill of these tasty treats. All was well in kringle-land.

Then, in the 1990′s, as the rise of online sales was taking kringle beyond our borders, a new player emerged on the scene: Racine Danish Kringles (RDK). 

This caused quite a stir among the traditional players, who felt their product was better, as do many kringle connoisseurs. Some thought that this new player’s lesser product was giving Racine kringle a bad name. RDK kringles were carried in many grocery stores outside of the Racine area, and sold online; so RDK is all some people know about kringle. (Think about how Kansas City BBQ shop owners might feel if outsiders thought the McRib was representative of their product.) Then, RDK started suing over the use of the domain name racinekringle.com. The “Kringle War” had begun.

In 2000, Larsen’s bakery started selling kringles online at racinekringle.com. RDK didn’t sue Larsen’s, but did sue their webhosting provider. There was a stipulated judgment and an injunction, both favorable to RDK, issued in that case. However, the domain name didn’t belong to the webhosting provider, so the injunction didn’t do much, and Larsen went on using it with a new provider. In 2002, RDK sued Larsen’s directly over use of the domain name, and Larsen’s stopped using it in August 2003 because of the pending legal action. RDK’s suit contended that they held a common law trademark in the name “Racine Kringle.” Larsen’s maintained that the name was generic, and thus could not be a protected mark.

As the war waged on, the local newspaper covered every battle, and trademark law became the talk of the town. Who could sell Racine kringles? What is a Racine kringle? How could this upstart come in and just start suing our bakeries? Why can’t they all just sell Racine kringles? How come RDK can use kringle.com, but they think Larsen’s can’t use racinekringle.com? How can this new company claim exclusive use of a term that others had been using for more than 50 years? Fortunately, there was plenty of kringle and coffee available to fuel these important discussions.

Local talk died down, but the case went on for years. In 2004, RDK filed for summary judgment. In 2006, the motion was denied. The ruling, RDK Corp. v. Larsen Bakery, Inc., 02-C-0675, 2006 WL 2168797 (E.D. Wis. July 31, 2006), did not go well for RDK. The court, in addition to denying their motion, ruled that there were questions of fact in all elements of the claim. There is also footnote 17, wherein the court states that RDK “offers no persuasive argument for finding a right in ‘Racine Kringles’” Ouch. Finally, in September 2006, just two months after the ruling, a settlement was reached.

The settlement’s terms were not disclosed, but as far as I can tell, the settlement didn’t settle much. Although the racinekringle.com domain is registered to RDK, it is not in use. RDK continues to use their mark, but the other bakeries in town all use a variant of Racine Danish Kringle or Racine Kringle on their websites: “Racine’s Original Kringle,” “Original Racine Danish Kringle,” “Award Winning Kringle From Racine,” and “Authentic Hand-made Kringle in Racine.”

In the end, it appears that it boiled down to a drawn-out and very expensive domain name purchase. It seems to me that this wasn’t worth the cost. A good domain name helps, but page ranking and search engine optimization are bigger factors in getting customers to an online product. RDK already had kringle.com – how much more to the point can a domain name get? It took 5 years and a ton of money to acquire something that, based on the fact they aren’t using it, is not crucial to their business.

There are also other cost factors to consider, like goodwill and reputation. For instance, it seems that RDK’s trademark suit over kringle left a bad taste in the locals’ mouths. Racine’s Convention and Visitor’s Bureau website refers to Racine as “America’s Kringle Capital,” but they only link to the four traditional bakeries.

Sometimes, there is more to the law than the law. In a case like this, someone truly thinking like a lawyer (counselor) would do their best to help their client avoid this mess in the first place.

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One Response to “The Law and Pastries”

  1. As a civil litigation attorney who has seen his fair share of people trying to “litigate over principal” rather than using common sense to resolve disputes, I think this blog drives the point home perfectly. As attorneys (even “litigators” and “trial attorneys”), we should always keep the best interest of our clients in mind. Oftentimes, this leads to the narrow road to resolution rather than the broad path to destruction.

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