It is important to identify potential intellectual property protection early on
By Peter Lemire
One thing is for certain in the intellectual property world – no one likes the feeling that someone has stolen something. For business owners, not every similarity or perceived “theft” of an idea or concept is actionable under the law. This is especially true if technology is involved, since the law usually lags behind the latest technological advances. Businesses often are caught unaware in this IP no-man’s land without an effective strategy for dealing with other competitors entering the market place.
A recent story that has made headlines illustrates this unenviable position business owners can find themselves in.
Our story starts with a Pinterest-worthy confectionary creation called the snow globe cupcake. For those unfamiliar with the quirky treat, a snow globe is a cupcake that does in fact look like a snow globe.
Enter Sugarhero.com, our first character in the saga. SugarHero is the brainchild of Elizabeth Labau and is devoted to “sharing fun, creative and modern dessert recipes.”
Labau v. Television Food Network G.P., 2:17-cv-04077 at *3 (C.D. Cal. 2017). SugarHero claims it first published the cupcake recipe in 2014. The cupcakes were a hit and the recipe went viral in 2015 with a Facebook post that was shared more than 740,000 times in just a few days. Id. at *5. In December of 2016 SugarHero released a video demonstrating the process of making a snow globe cupcake. The video also caught fire and garnered 5.6 million views (https://www.sugarhero.com/snow-globe-cupcakes-gelatin-bubbles/).
As with most other content providers on the internet, SugarHero generates revenue through ad revenue based on the number of views its website and social media garner, as well as revenue from affiliate sales resulting from clicking links for ingredients and other items from Amazon.com. The more popular SugarHero’s content is, the more money SugarHero makes.
Enter Food Network, the alleged villain in SugarHero’s lawsuit. Approximately three weeks after SugarHero launched its video, Food Network launched its own video illustrating the process to make a Snow Globe Cupcake (https://www.facebook.com/FoodNetwork/videos/10154060603151727/).
According to the lawsuit, as of the filing date of the complaint, Food Network’s video had received more than 11 million views. Unhappy with this, and presumably seeing its viewership stagnating, SugarHero filed suit in the Federal District Court for the Central District of California claiming copyright infringement of the video.
Now comes the part in the story where the limitations of intellectual property law come into play.
Unfortunately for SugarHero, the fact that its only claim is for copyright infringement likely doesn’t bode well. Copyrights protect creative works of authorship, and the two videos in question would qualify as a creative work and would be protected to a certain extent under copyright.
However, section 102 of the Copyright Act explicitly states that copyrights do not protect “in any idea, procedure, process, stem, method of operation, concept, principal, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied such work.” Therefore, the concept of the snow globe cupcake and/or the process used to make the treat is not protected by copyright law
Generally speaking, the inventions described in Section 102 are subject matter for patents. In order to be eligible for a patent, the invention must be useful, novel and non-obvious. Additionally, in the U.S., an inventor has one year from the date of first public disclosure to file for a patent, otherwise the invention is dedicated to the public domain.
Most likely the snow globe cupcakes were never patented. Therefore, anybody could make, use or sell the cupcakes and create their own “how-to” videos.
Additionally, since SugarHero’s videos are describing a particular procedure that generally is completed in certain sequential steps and in a certain manner, the copyright protection is going to be fairly thin since there are only a finite number of ways that one can express the concepts.
Reviewing both videos, I think there are sufficient differences in Food Network’s video that would make it non-infringing and I do not expect SugarHero’s suit to be successful.
So what can business owner’s take from all of this?
First, it is important to identify potential intellectual property protection early on. If SugarHero was eligible for and obtained patent protection on the concept and process of making the Snow Globe Cupcakes, LaBau would be in a much stronger position than she currently is.
Business owners also need to contemplate what business strategies they will use to fend off competitors in the marketplace. You must be prepared ahead of time to hit the market, make your impact and move on. First-to-market strategies can be successful if a business is prepared and understands that their time in the limelight is limited and then must be ready to move on to the next big thing.