Kern's Kitchen Inc. " owner of the federally and state registered Derby-Pie trademark " claims Frankfort's Rick Paul of Rick's White Light Diner has again infringed on its trademark.
Louisville attorney Donald L. Cox, representing Kern's, has filed a motion in federal court seeking an order requiring Paul to show cause why he should not be held in contempt of court.
In August 1997, Kern's Kitchen, of Louisville, sued Paul and his diner for trademark infringement. Then in November 1997, a federal court judgment permanently enjoined Paul from infringing on the Derby-Pie trademark.
In a motion filed last week in Frankfort, Kern's claims Paul recently violated the permanent injunction.
Kern's seeks up to $1 million in damages, punitive damages, and costs and attorney fees " if Paul can't show why he shouldn't be held in contempt.
Paul's lawyer, Robert Reeves of Lexington, said Wednesday he doesn't think
Kern's Kitchen's claims are "justified under the facts. But that remains for the court to determine and we're in the process of preparing a response."
Reeves said he received a copy of the motion last Friday, "and I think I have 10 or 15 days to respond."
A court date has not been set.
According to Kern's Kitchen's motion:
>Private investigator John Landreth ate lunch at the White Light Diner on Jan. 15.
>A hand-lettered sign hung at the restaurant's entrance stating, "Have a Piece of Derby Pie."
>After lunch, Landreth's female assistant ordered a slice of "Derby Pie," referring to the sign. The waitress brought her a slice and was asked about an identical looking pie displayed under plastic wrap. The waitress said that was a whole "Derby Pie," which Landreth purchased for $18.
>When asked why the pie was not on the menu, the investigators were told it was the same as the "Bluegrass Bourbon Pie" listed on the menu.
>Then Paul spoke, saying the "Bluegrass Bourbon Pie" was not listed as "Derby Pie" because "'that damn pie had caused him to be sued for $350,000.'"
>After a discussion about the lawsuit, Paul said although he had stood up to Kern's Kitchen, he had not won the suit, which was the "reason for the menu listing "Derby Pie' under a different name." Basically, Paul was selling a similar pie to the Derby-Pie chocolate nut pie, calling it "Bluegrass Bourbon Pie," but still advertising it as a Derby-Pie brand product.
>Landreth said when his assistant then made reference to the Derby Pie sign outside, "Mr. Paul then revealed his master planconcerning how he intended to "make fools of the Kern's people, their lawyers and the courts.'"
>Then Paul produced from his freezer a real Derby-Pie brand frozen product in its original box. Paul said "when he was taken to task by "them' he intended to produce the "real Derby Pie' and offer to sell them a piece, thereby fulfilling their request for "Derby Pie,' and making fools of them since they could do nothing about his actions."
>The assistant then asked whether the Derby-Pie product was for sale. Paul "laughingly replied "sure, but it will cost you $80.'" He explained he needed to keep it in stock for his own protection in case "'they show up' about the "Derby Pie.'"
In his diner by the Singing Bridge Wednesday afternoon, Paul said there are inaccuracies in the private investigator's statements, "and that's what we're going to get clear on."
"I was advertising Derby Pie on the front of the building and we were selling the real Derby Pie in the restaurant," Paul said. "In fact, I thought they might want to thank me for that.
"We do not call our pie Derby Pie, and we've never called our pie Bluegrass Bourbon Pie. Our pie is called Kentucky bourbon pie."
During the interview Wednesday, Paul picked up a copy of a book by Gary West, Eating Your Way Across Kentucky " 101 Must Places to Eat, published last year. Paul flipped to the chapter on Rick's White Light Diner.
In the book West says, "Rick has a couple of desserts that are about as good as it gets. His key lime pie is the real deal and his Kentucky bourbon pie is one of those where you'll probably want to buy a whole one to take home with you."
Reeves, the attorney, said Kern's Derby-Pie and Paul's Kentucky bourbon pie "have some similarities, but there are several differences. They both appear and taste differently."
Paul said, "There are differences, for sure. It's hard to mix them up. People are so in love with my pies, although we have Derby-Pie available here as well, sales do not go well.
"We went to court (in 1997). We were wrong. We paid $300 to serve their pie 11 years ago. I think they probably would be better served going after some of these people on the Internet that are advertising Derby Pie as their own recipe, every day."
Paul then Googled Derby Pie on his computer in the diner and showed several customers "190,000 entries."
Cox said Wednesday citizens often notify Kern's Kitchen about someone misusing the Derby-Pie trademark.
"In this case, we got an e-mail from somebody who indicated what was going on," Cox said, and that led to the January investigation of Paul.
"This is not a game as Mr. Paul seems to be treating it," Cox said. "Nobody would think it is OK to steal your car. Why could they think then that it's OK to steal your name?"
Over the years, Cox said Kern's has probably filed 25 lawsuits, "and we have prevailed on every single one. We tend to get larger settlements when it's a second offense."
At first, "we put people on notice and ask them to sign a letter agreeing not to infringe," Cox said. "When they sign the letter, we keep a record. The next time, we sue them."
Kern's biggest cash award in a court case "has probably been $25,000 or $30,000," Cox said.
In one case involving a national magazine, "we received hundreds of thousands of dollars in free advertising in their magazine," Cox said.