State-Journal.com - White Light owner must pay for ripped-off pie

Rick Paul, owner of Rick's White Light Diner, was found in contempt of court Monday and must pay $1,000 to a charity of his choice, for again infringing on the Derby-Pie trademark.

Before U.S. District Judge Joseph Hood in a Lexington courtroom, Paul was found in contempt of court for violating a 1997 permanent injunction signed by Hood, ordering Paul not to infringe on Kern's Kitchen Inc.'s trademark Derby-Pie.

Paul also must pay Kern's Kitchen's attorney fees and costs.

"I am disappointed with the judge's ruling and I accept it," Paul said today. "Our proof was considerably different than Derby Pie's. The judge's ruling was, in part, based on me keeping the Derby Pie in the freezer. I failed because I did not tell the judge that I keep other pies in the freezer and then warm in a microwave prior to service."

Kern's Kitchen Inc., of Louisville " owner of the federally and state registered Derby-Pie trademark " filed an April motion in federal court claiming Paul violated the permanent injunction.

Kern's sought up to $1 million in damages, punitive damages, costs and attorney fees.

Louisville attorney Don Cox today said Kern's is pleased with the outcome.

"We're trying to get this guy to leave us alone," Cox said. "It's not about the money. It's about him complying with the permanent injunction and not infringing on the Derby-Pie trademark."

Cox said Kern's attorney fees would amount to "several thousand dollars."

According to Kern's Kitchen's motion in April:

>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.'"

According to Paul's court affidavit on May 5:

>He didn't remember investigator Landreth coming to his diner. "For 11 years now I have been asked about the Derby Pie lawsuit," Paul said. "There have been a lot of stories shared by customers over the years.

>He nor his waitress has ever called the White Light Diner's Kentucky Bourbon Pie a Derby-Pie.

>Kentucky Bourbon Pie "has pecans and chocolate and bourbon in it. Kern's Derby-Pie has walnuts, chocolate and no bourbon in it. I have never called my pie Bluegrass Bourbon Pie.

>He said he has never had "a master plan. I have never wanted to make fools out of Kern's or their lawyers or the courts."

>He said Derby Pie is a "Kentucky tradition but it is Kern's trademark. I posted a sign in January 2008 advertising Derby Pie. I bought the Kern's pie and offered it for sale."

>He said he "did attempt to inject some humor into this matter. This may have been poor judgment on my part. I am willing to publicly apologize to the plaintiffs. But I never have called my pie Derby Pie. I have consistently called it Kentucky Bourbon Pie.