On February 9th, The Huff Post and other media outlets reported the grand opening of a store in the Los Feliz neighborhood of Los Angeles, “Dumb Starbucks”. The clever prankish parody even caught the attention of Forbes:
‘Although it looks like Starbucks, smells like Starbucks and even acts like Starbucks (the super-friendly baristas asking for your name were hired off Craigslist), the whole thing is an elaborate goof on Starbucks culture. A list of Frequently Asked Questions posted on premises compared the place to Weird Al Yankovic’s homage to Michael Jackson’s “Beat It.” Dumb Starbucks, you see, is the “Eat It” of $6 coffee drinks.’ Source: Forbes.com
Amazingly, people stood in line for hours for the Dumb Starbucks java, which reportedly was whatever the local grocery store had on hand for the few days Dumb Starbucks remained open. The locals and media alike seemed to get a big kick out of the entire thing. Starbucks execs? Um, not so much. The Dumb Starbucks mastermind, Comedy Central comedian Nathan Fielder from Nathan for You, explained the method to his parodic madness and the Starbucks response to Jimmy Kimmel recently:
The store shutdown for reasons completely unrelated to the trademark vs. parody debate. It seems that Fielder not only caught the attention of the coffee giant, Starbucks, but also the local health department. The Health Department cited code violations for selling coffee without a permit. And there is no word on whether Fielder will attempt to secure the necessary permissions to re-open. But what is sure to re-open and remain so is the debate on whether the First Amendment and parody trumps trademark law.
Many have focused on whether Fielder runs afoul of trademark and trade dress of the Starbucks logo and store design, respectively. Trademark law protects a manufacturer’s use of a word, phrase, logo or (collectively called mark) in connection with the sale of goods (trademark) or services (service mark). One of the goals of trademark protection is to avoid “the likelihood” of consumer confusion. If you’re a Coming to America fan you’ll remember the big kerfluffle about the McDowells “M” and store design vs. McDonalds and the golden arches.
The real focus, I believe, should be trademark dilution of a famous mark. There are two types of dilution: blurring and what Starbucks would likely argue, tarnishment. In the case of dilution, the law protects against injury to the goodwill in a mark and its reputation, regardless whether an unauthorized use of a famous mark confuses consumers. It applies to actual and the likelihood of dilution. [More information about dilution]
However, Fielder’s parody use may also be protected by trademark law as it is an affirmative defense that appears in the statute itself. The problem is just how a court would view this particular case in light of the potential damage to Starbucks goodwill. Section 1125(c)(3) of the Lanham Act excludes as fair use the following:
The following shall not be actionable as dilution by blurring or dilution by tarnishment under this subsection:
(A) Any fair use, including a nominative or descriptive fair use, or facilitation of such fair use, of a famous mark by another person other than as a designation of source for the person’s own goods or services, including use in connection with—
(i) advertising or promotion that permits consumers to compare goods or services; or(ii) identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner.(B) All forms of news reporting and news commentary.(C) Any noncommercial use of a mark.
‘Dumb Starbucks’ parody shuts down but debate over trademark law & parody continues by Professor Tonya M. Evans is licensed under a Creative Commons Attribution-NonCommercial-NoDerivatives 4.0 International License.
Based on a work at http://wp.me/pOf0n-hi.
I followed this story as it developed over the past week – nice job summarizing the events thus far.
On the discussion of who has the stronger argument, it gets interesting. First, there is the First Amendment and parody vs trademark law. Followed by, dilution by blurring or tarnishment.
The trademark protection argument is weak because it hinges upon the “the likelihood” of consumer confusion. I find it difficult to believe that anyone here is confused. The parody literally attached the word “dumb” to Starbucks name. No one would reasonably believe the two stores are related.
Fielder also has a decent argument against dilution by blurring and tarnishment with §1125(c)(3) of the Lanham Act. In short, the section specifically permits for the parodying of the goods or services of a mark owner. While it protects against injury to the good will and reputation of the mark, here I do not believe Starbucks has suffered much harm. It was fairly clear the act was a prank; it was funny, and the coffee was free!
Over time, if the parody were to remain open (or expand), and a correlation was made with a decline in the public’s perception of Starbucks, then perhaps, an argument may be made for the good will and reputation of Starbucks’ mark. Otherwise, I think it may be considered fair game.
Either way, it will be exciting to see what comes next in this ‘kerfuffle’!
Thanks for the great comment. Agreed!
Best, TE
Reblogged this on The Burgeoning Young Attorney and commented:
I followed this story as it developed over the past week – nice job summarizing the events thus far.
On the discussion of who has the stronger argument, it gets interesting. First there is the First Amendment and parody vs trademark law. Followed by, dilution by blurring or tarnishment.
The trademark protection argument is weak because it hinges upon the “the likelihood” of consumer confusion. I find it difficult to believe that anyone here is confused. The parody literally attached the word “dumb” to Starbucks name. No one would reasonably believe the two stores are related.
Fielder also has a decent argument against dilution by blurring and tarnishment with §1125(c)(3) of the Lanham Act. In short, the section specifically permits for the parodying of the goods or services of a mark owner. While it protects against injury to the good will and reputation of the mark, here I do not believe Starbucks has suffered much harm. It was fairly clear the act was a prank; it was funny, and the coffee was free!
Over time, if the parody were to remain open (or expand), and a correlation was made with a decline in the public’s perception of Starbucks, then perhaps, an argument may be made for the good will and reputation of Starbucks’ mark. Otherwise, I think it may be considered fair game.
Either way, it will be exciting to see what comes next in this ‘kerfuffle’!