What's Inside A 'Derby Pie'? Maybe A Lawsuit Waiting To Happen

Ask anyone in Louisville, Ky., what to eat and drink during the Kentucky Derby, and chances are good he'll tell you two things: mint juleps and "derby pie."

But while bartenders around the country make mint juleps without controversy, things are a little more complicated for "derby pie." The creators of the pie are real sticklers about what can be called a "derby pie" — and what can't. And they're not afraid to sue over it.

For 24 years, Susan Fouts was a hostess at the Science Hill Inn, a restaurant in Shelbyville, Ky., outside Louisville. Fouts says she and her co-workers served lots of what they called "derby pie," until one day Science Hill received a cease-and-desist letter in the mail. The letter said that the name "Derby-Pie®" was a federally registered trademark of Kern's Kitchen in Louisville.

"We were threatened," says Fouts. "And we never, never mentioned 'derby pie' again."

What's commonly called a "derby pie" is like an embellished pecan pie: sticky, sweet filling made with bourbon and chocolate chips, covered by a hard nut top and a pastry crust. Ironically, Kern's recipe is made without bourbon, and it uses walnuts instead of pecans. "Derby-Pie" is said to have been created by Kern family members in 1950 as the signature item for their restaurant, the Melrose Inn.

Alan Rupp, the Kerns' grandson, says Grandma Kern started out baking three pies at a time, leaving them on the windowsill to cool. In 1960, the Kerns closed the Melrose Inn but kept the pie business. Not long after, Kern's Kitchen filed "Derby-Pie" as a registered trademark.

A view inside the Kern's Kitchen factory in Louisville, Ky. Though lots of people in Kentucky have their own versions of what they call "derby pie," the Kern family trademarked the name "Derby-Pie" decades ago. And the Kerns are quite vigilant about protecting that brand name.

Nina Feldman for NPR

Rupp says Kern's Kitchen now makes over 800 pies a day. The company goes to great lengths to protect its recipe and technique. In the kitchen, a curtain closes off the mixing area so that the production manager can make the filling in private. And the trademark protects the name.

Science Hill still serves its pie, but changed the name on its menu. Fouts says if someone ordered a slice of "derby pie," servers had to be very careful.

"You can say, 'We have chocolate pecan pie, but we do not have "Derby-Pie," ' " Fouts says. "You didn't know if they'd sent a plant in to see if we were doing it or not."

Not everyone backed down as easily as Science Hill did. Rick Paul, who has managed the White Light Diner in Frankfort, Ky., since 1991, has been sued twice by Kern's Kitchen. When I asked how long he's been making "derby pie," he was quick to correct me.

"I don't make a pie that I call 'derby pie,' " he says. "I make a Kentucky Bourbon Pie."

A slice of Kentucky Bourbon Pie at the White Light Diner in Frankfort, Ky.

Courtesy of White Light Diner

Paul says when Kern's Kitchen first told him he had to stop selling anything called "derby pie," he decided to have a little fun with it.

"I actually put up a sign after that conversation [that read]: Have a piece of 'I Can't Call It Derby Pie' pie," he says.

Kern's sued Paul in 1997 and again in 2007. Paul says he's still paying off the $14,000 in lawyer fees he owes.

Paul, like many Kentuckians, felt that the name "derby pie" belonged to everyone. So why would Kern's go to the trouble of protecting a brand name to which the public feels entitled?

Liz Williams, a New Orleans attorney specializing in food law, says Kern's was smart: Once you've got a trademark, you have to protect it. If your name starts being used as a generic term, you can lose your trademark. Williams gives zipper as an example.

"It became so synonymous with the product that now it is a word," she says. "So it's lost its trademarked status."

Kern's doesn't want "Derby-Pie" to become the next zipper, which explains why it defends its trademark so aggressively. But many argue it's too late — that "derby pie" is already a generic term.

Back in 1986, Kern's sued Bon Appetit magazine for including a recipe for "derby pie" in one of its issues and then again in a hardback book. To prove that "derby pie" was a generic term for chocolate-nut pie, Bon Appetit found stories in the newspaper, recipes from magazines and cookbooks, and menus across the country — all referring to a "derby pie" without mentioning Kern's.

The judge bought the magazine's argument, ruling that the term "derby pie" had become generic. But that wasn't the end of it. The next year, the U.S. Court of Appeals for the 6th Circuit in Cincinnati found that Bon Appetit had not presented enough evidence to say for sure that "derby pie" was now generic. To make that case, the magazine would have had to go to trial — it settled the suit instead.

Still, if Kern's is the original "derby pie" — the dessert that people think of when they think of the name — why do people feel such a sense of ownership over it? If Kern's pie was the original, why do most people use a different recipe? White Light Diner's Paul argues that what Kern's is doing robs Kentuckians of their history.

"If you have people scared to use the words 'derby pie,' and yet Grandma used to make it, then you've really banished Grandma in a way, haven't you?" Paul says.

For their part, the folks at Kern's think that protecting their family recipe actually works to honor Grandma — their grandma.

Nina Feldman is a journalist based in New Orleans. A version of this story originally ran on Gravy, the podcast from the Southern Foodways Alliance.