Give a Man Cupcake Sushi, and He’ll Have Dessert for a Day; Teach a Man to Make Cupcake Sushi, and He’ll Rip You Off

Lori Shubert and her company Cupcake Sushi, LLC filed an interesting lawsuit against Santiago and his associates doing business as Sushi Sweets, for patent infringement, trademark infringement, misappropriation of trade secrets, common law trademark infringement, federal and state unfair competition, and trade dress infringement. Shubert claims to have invented a unique confectionery dessert cake: cupcake sushi. Shubert has apparently built a thriving business in Key West Florida.  According to the complaint, Santiago, a former licensee and employee of Cupcake Sushi, absconded with product, equipment and Cupcake Sushi’s trade secrets.

Shubert clearly had an interesting and appealing idea, and while she took some steps to protect it, she probably should have formed a more comprehensive plan at the outset.  As she pleads in her lawsuit she applied for a utility patent (14/487364), she allowed the application to abandon.  She also applied for and obtained a design patent (D789,025) but filed the application several years after she claims to have developed her product.  Even if this patent validly protects a later design, she left her earlier designs exposed. While she did register her CUPCAKE SUSHI name and logo (Reg. Nos. 4471750 and 4770652), she might have also tried to protect her products names and appearances.

Resources are always tight in start-ups, and it is easy to second guess the allocation (or lack thereof) to lawyers, as entrepreneurs always seem to have other fish to fry. Shubert probably could have done more and done it sooner.  Shubert did take a number of appropriate steps to protect herself, and if those rights have been violated, then hopefully she will be able to enforce them and this won’t represent the fish that got away.  However, a more comprehensive approach might have made enforcement like shooting fish in a barrel:

Shubert may have learned another important lesson about protecting confidential information.  A confidentiality agreement does not make a dishonest person honest. The most important steps in protecting confidential information is limiting disclosures to people who can be trusted.

Shubert may have to also have to face the fact that no matter how comprehensive your intellectual property protection, there will always be some way for other to compete.  Good luck to Ms. Shubert, but if things don’t work out, there are always other fish in the sea.

Should You or Any of Your C&D Team be Caught or Killed the Client will Disavow and Knowledge

Late in December, the attorneys for Metallica sent a Cease and Desist letter to Sandman. a Metallica tribute band playing in Toronto.  Sandman lead, Joe Di Taranto, posted a copy of the letter on his Facebook page:

Metallica Letter

After the letter gained some attention, Metallica responded with supportive statements blaming lawyers and directing Sandman to “file the letter in the trash.”  Saying that “neither we nor our management were aware of” the letter until it surfaced online, Metallica said “Lucky for us, [Sandman] was kind enough to post it for us to see, and it turns out that we have a very overzealous attorney who sent this letter without our knowledge.”  Metallica added that “in the meantime, our attorney can be found at [San Francisco airport] catching a flight to go permanently ice fishing in Alaska.”

The sending of a cease and desist letter is a serious matter, whose consequences should be thoroughly reviewed among counsel and client.