Recipe for Confusion

Why Drinks Can Have Trademarked Names but Not Protected Recipes

In the world of intellectual property (IP) law, there are curious nuances when it comes to protecting certain creations. Take, for instance, the trademarked cocktails like the “Dark ’n Stormy” and the “Painkiller.” Bartenders, cocktail aficionados, and IP enthusiasts like this author will know these need to be made with specific ingredients. While these names are protected through trademark law, the recipes themselves remain unprotected. So how does this work, and why are some aspects protected while others are not?

TL;DR

While names like “Dark ’n Stormy” and “Painkiller” are trademarked, their recipes remain unprotected by intellectual property law. Trademark law shields the name, but copyright and patent protections don’t extend to the ingredients and instructions. The only way to protect a recipe is through trade secret law, provided the recipe remains confidential.

Summary of Intellectual Property Avenues

• Trademark and Trade Dress: Protects names, logos, slogans, and other identifying features that distinguish goods or services in the marketplace. This helps preserve the brand and its image (e.g., Home Depot orange, Christian Louboutin’s red heels/soles: See Christian Louboutin S.A. v. Yves Saint Laurent Am. Holding, Inc., No. 11-3303 (2d Cir. 2012)).

• Copyright: Protects creative and artistic works, such as literature, music, visual art, and graphic design. Copyright law covers the expression of an idea, not the idea itself (e.g., a novel or a song).

• Patent: Protects inventions, including processes, systems, and machines, as long as they are novel, non-obvious, and useful.

• Trade Secret: Protects confidential business information, such as recipes or processes, as long as the information is not publicly known and reasonable steps are taken to maintain its secrecy.

Trademark Protection for Drink Names

Trademark law allows businesses to protect names, logos, and other identifiers that distinguish their products or services in the marketplace. For example, the “Dark ’n Stormy” can only legally bear that name if it’s made with Gosling’s Black Seal Rum. Similarly, the “Painkiller” must include Pusser’s Rum to carry the official name. These trademarks protect the association between a specific brand and the cocktail, helping companies maintain control over how their products are perceived and consumed.

However, while the names are protected, the recipes themselves are not.

Why Recipes Can’t Be Copyrighted or Patented

Recipes, as a combination of ingredients and instructions, are considered functional and therefore ineligible for copyright or patent protection. As outlined in Lorenzana v. S. Am. Rests. Corp., 799 F.3d 31, 34-35 (1st Cir. 2015), the mere listing of ingredients and steps, no matter how unique, cannot be copyrighted because it’s functional rather than creative expression.

The key difference between creative and functional works lies in what is being protected. Creative works, such as literature, music, and visual art, are eligible for copyright protection because they involve original, artistic elements. In contrast, functional works like recipes, procedures, or processes are utilitarian and cannot be copyrighted. Eldred v. Ashcroft, 537 U.S. 186, 221 (2003); Golan v. Holder, 565 U.S. 302, 328 (2012).

In Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 349 (1991), the U.S. Supreme Court clarified that copyright protection extends only to the original expression of an idea, not the idea itself. Simply alphabetizing facts is not sufficiently creative for copyright protection. In the case of recipes, this means that while a unique way of presenting or arranging a recipe could theoretically be copyrighted, the underlying ingredients and steps are functional and therefore cannot.

For utilitarian items like processes and systems, patent protection is the appropriate legal avenue. According to 35 U.S.C. § 101, patents can protect any new and useful process, system, or method. However, recipes typically do not qualify for patents because they do not meet the novelty or non-obviousness standards required by patent law. Bd. of Trs. of the Leland Stanford Junior Univ. v. Roche Molecular Sys., 563 U.S. 776, 785 (2011); Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217-18 (2014).

The Viable Option: Trade Secret Law

The most viable form of protection for recipes in the 4th Circuit is trade secret law. Trade secrets apply when a recipe is kept confidential and not generally known in the industry. As highlighted in Hui Kun Li v. Shuman, 2016 U.S. Dist. LEXIS 171009, at *12 (E.D.N.C. 2016), the key characteristic of trade secret protection is maintaining the secrecy of the recipe. If a business can prove that reasonable efforts were made to keep the recipe secret, they may be able to legally prevent others from using it.

However, unlike copyrights or patents, trade secrets rely entirely on the owner’s ability to keep the information confidential. If the recipe becomes public, trade secret protection is lost.

Trademark Protects the Name, Not the Recipe

Trademark protection does not extend to the recipe itself but rather to brand names, logos, or slogans associated with it. So while bartenders are free to make a drink using similar ingredients, they cannot market it as a “Dark ’n Stormy” or “Painkiller” without using the specific, trademarked brand of rum. This creates an interesting dynamic where the recipe is widely available, but the name remains tightly controlled.

Conclusion

In the world of intellectual property, the protection of a name often holds more legal weight than the recipe behind it. Trademark law allows brands to safeguard their identity, while recipes remain free for others to replicate—unless they can be protected as a trade secret. The distinction between creative and functional works underpins why recipes cannot be copyrighted or patented, but names can be trademarked. This fine line illustrates both the limits and opportunities within intellectual property law when it comes to functional items like drinks and recipes.

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Disclaimer Regarding Federal IP Law

This discussion focuses on federal intellectual property law. While state laws are often similar, they may contain nuances or additional protections that are not covered in this article. If you are dealing with IP issues, it is important to consult with a qualified attorney who can advise you on both federal and state laws as they apply to your specific situation.

Disclaimer

This blog post is for general informational purposes only and should not be construed as legal advice. The opinions expressed are solely those of the author. This content is considered attorney advertising and does not establish an attorney-client relationship. For specific legal advice tailored to your situation, please consult with a qualified attorney licensed in your jurisdiction.

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