Colon-Lorenzana v. South American Restaurants
799 F.3d 31
1st Cir.2015Background
- In 1987 Norberto Colón worked for SARCO (a Church's Chicken franchisee) and proposed a new chicken sandwich called the "Pechu Sandwich," sold beginning in 1991.
- The Puerto Rico Department of State registered the "Pechu Sandwich" name in 1999; SARCO later obtained a federal trademark (filed 2005, registered 2006).
- Colón sued, alleging SARCO fraudulently procured the federal trademark (Lanham Act § 38) and asserting copyright claims in the sandwich and its name; case was heard by a magistrate judge.
- SARCO moved to dismiss under Fed. R. Civ. P. 12(b)(6); the district court construed Colón's pleadings broadly but dismissed the federal claims and declined supplemental jurisdiction over Puerto Rico claims.
- On appeal, the First Circuit reviewed de novo and affirmed dismissal: it held the sandwich and name are not copyrightable and Colón failed to plead facts showing a false statement to the USPTO sufficient to support a Section 38 fraud claim.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Copyrightability of sandwich/recipe/name | Colón: the recipe and the name are his creative works entitled to copyright protection | SARCO: recipes and short phrases/names are not copyrightable categories | Held: Not copyrightable; recipe and name fall outside §102 categories and case law bars protection of short phrases/names |
| Fraud on the USPTO under 15 U.S.C. § 1120 (Lanham Act §38) | Colón: SARCO intentionally and fraudulently procured the federal trademark without his consent and with intent to injure him | SARCO: challenged sufficiency of pleadings and applied Rule 9(b) standards | Held: Dismissed — complaint contains only conclusory allegations and fails to plead any specific false representation or facts allowing an inference of fraud |
| Application of pleading standards (Rule 8/9(b), Twombly/Iqbal) | Colón: pressed claim despite limited specifics; suggested Twombly does not require heightened specifics | SARCO: argued heightened Rule 9(b) pleading applies to fraud-on-the-office claim | Held: Court required factual specificity; even under Rule 8, conclusory allegations insufficient under Iqbal/Twombly |
| Supplemental jurisdiction over Puerto Rico claims | Colón: sought relief under local law alongside federal claims | SARCO: urged dismissal of federal claims and relinquishment of supplemental claims | Held: District court properly declined supplemental jurisdiction after dismissing federal claims; appellate court affirmed |
Key Cases Cited
- Twentieth Century Music Corp. v. Aiken, 422 U.S. 151 (U.S. 1975) (purpose of copyright law to reward creative labor and promote public good)
- Ashcroft v. Iqbal, 556 U.S. 662 (U.S. 2009) (pleading standard: conclusory allegations insufficient; plausibility required)
- CMM Cable Rep., Inc. v. Ocean Coast Props., Inc., 97 F.3d 1504 (1st Cir. 1996) (copyright protection does not extend to words and short phrases such as names and titles)
- Patsy's Italian Restaurant, Inc. v. Banas, 658 F.3d 254 (2d Cir. 2011) (standards for fraud in procuring trademark registration discussed)
- Robi v. Five Platters, Inc., 918 F.2d 1439 (9th Cir. 1990) (fraud-on-the-office elements and pleading considerations)