For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Tuesday, 11 February 2014

Dumb ... and Dumber? Art-installation or IP infringement at "parody" coffee shop 'Dumb Starbucks'

Dorothea Thompson
It is a truth universally acknowledged that Kats enjoy a good laugh, coffee and birds. This is why today the IPKat is delighted to host a guest contribution from talented IP enthusiast Dorothea Thompson (Davenport Lyons), who tells us a story concerning parodies, Starbucks and Twitter. Here's what Dorothea writes:

"Now at the centre of a social-media sensation, the hottest new coffee place in LA launched on 7 Feb, with a single tweet, from handle @dumbstarbucks. Accompanying said tweet was a snap of a shop frontage in familiar dark green and white livery, an iconic 'siren' logo, and the words DUMB STARBUCKS COFFEE emblazoned across the entrance.

As the word spread, further details began to emerge. Not only is the exterior labelled 'Dumb Starbucks', but inside almost exactly replicates every aspect of one of the most recognised (and valuable) brands in the world - the paper cups, the drinks sizes, the menu, the easy-listening CDs for sale.  

Almost - because every item is preceded by the word DUMB- ("Dumb-venti Dumb white chocolate mocha", anyone?).

In the store’s published FAQ, Dumb Starbucks state they are not affiliated in any way with Starbucks Corporation: “We are simply using their name and logo for marketing purposes”.  

Logically, next up is "How is that legal?"  Their reply: "Short answer - parody law".

A dumb tall cappuccino, please!
The FAQ goes on to 'explain' that adding to word 'dumb' means they are "technically 'making fun' of Starbucks, which allows us to use their trademarks under a law known as 'fair use'.  Fair use is a doctrine that permits use of copyrighted material in a parodical work without permission from the rights holder."

It then goes on to cite fair use as "the same law that allows Weird Al Yankovic to use the music from Michael Jackson's 'Beat It' in his parody song 'Eat It'" (see here).

Except that, of course, Dumb Starbucks is no ‘Eat It’. Whereas Weird Al’s Grammy-winning song fits snugly within the parody definition (and Yankovic always seeks permission, in order “to maintain relationships”), Dumb Starbucks position is questionable.

Parody

In the landmark decision addressing fair-use in Campbell v Acuff-Rose Music, Inc the US Supreme Court stated that parody "is the use of some elements of a prior author's composition to create a new one that, at least in part, comments on that author's works"; the commentary function providing the justification for use of the original work.   

Is Dumb Starbucks commenting on Starbucks’ copyrighted works? Or on Starbucks itself, or both, or something else? As discussed here, if considered satire, not parody, Dumb Starbucks could be liable for infringement (Dr Seuss Enterprises v Penguin Books USA (1997)).

It seems unlikely that adding DUMB- provides enough distinction for it to avoid being considered an unauthorised derivative of Starbucks’ copyrighted works. The adjective appears somewhat empty when applied to a large, successful corporation, providing limited ‘commentary’ to justify the use of the original works.

Fair use

Even if a parody, the new work must still constitute fair use, considering the non-exclusive list of factors incorporated into the Copyright Act of 1976,17 USC § 107.

Despite stating that Dumb Starbucks is a “real business”, and “a fully functioning coffee shop”, all products are given away for free. But after tweeting that “the owner will be making an in person announcement”, on Monday afternoon comic Nathan Fielder, star of the Comedy Central series Nathan For You, appeared and admitted that he opened the store to shoot segments for his show. 

Dashing hopes of an installation by sartorial street artist Banksy, Dumb Starbucks is actually a marketing stunt for a paid-for television channel (part of Viacom, the world's fourth-largest media conglomerate), which happens to have a familiar-looking logo of its own. Perhaps the objectives of Dumb Starbucks and Starbucks do not seem “sharply different” in this context (Blanch v Koons).

Could Dumb Starbucks have pursued their marketing objective without copying as much of the Starbucks branding?  It seems that the complete duplication may be “excessive”, in light of the quantity, quality and importance of the material used (Blanch v Koons).
Bruno is unimpressed with the dumb
Starbucks crown he has to wear
to make his significant human happy

In relation to market effects, would the hundreds of people queuing up for Dumb Starbucks have alternately visited the original coffee retailer that day?  It seems, in fact, they might – with multiple visitors comparing the outlets’ products, showing their familiarity with Starbucks goods.

Trade marks

What Dumb Starbucks’ FAQs don’t mention, is that the parody defence, as such, only applies to copyright. US trademark law does incorporate the fair use doctrine, but courts have applied different tests, often analysing factors in relation to the likelihood of confusion. In this context, it is unlikely that a successful parody will be considered infringing, since the object is to amuse, not confuse: “[i]f a joke is recognizable as a joke, consumers are unlikely to be confused, and whether the butt of the joke is society at large, or the trademark owner in particular, ought not to matter” Keller & Tushnet, 2004 at 999–1000. 

Further, the high recognition factor of the Starbucks marks may make it easier for consumers to realise and understand the use as parody.

However, Dumb Starbucks has reproduced Starbucks’ iconic marks in their entirety, in relation to identical goods, in the same product market, for example.  In an advertising age of humour, parody, social media engagement, viral and guerrilla marketing, and turning spoofs into great publicity, it seems unsurprising that some commentators questioned whether Dumb Starbucks was, in fact, related to the real thing.

Dilution

Starbucks may also consider anti-dilution provisions, as additional recourse, irrespective of confusion. Given that Dumb Starbucks’ coffee has been described as “NOT impressive” (and the quality of their straws has been slammed on Twitter), it seems that tarnishment may apply: where “a famous trademark is linked to products of shoddy quality, or is portrayed in an unwholesome or unsavory context” (Gilson on Trademarks, § 5A.01[6]).

***
  
The notoriously litigious Starbucks, in the meantime, have informed USA Today that Dumb Starbucks is not affiliated with Starbucks, and "while we appreciate the humor, they cannot use our name, which is a protected trademark".
Although an infringement claim would be evaluated on its own merits, and could go either way, Dumb Starbucks’ publication of their objective (as marketing not social commentary), may prove their dumbest move.  With another store apparently on the horizon in Brooklyn, perhaps cease and desist letters are in the mail, for Dumb Starbucks to contemplate in their Los Feliz store, newly-closed under Health Code violations." 

7 comments:

Anonymous said...

As I recall, another trademark parody, that of South Butt, did not end well for the party making the parody.

Pity the poor parody party.

Richard Smith said...

"Glosta Coffee" has been around in Gloucester, UK for a while now, where there is at least one coffee shop with an arguably similar name & logo...
See this image!

Kharol said...

While agreeing that this stunt really goes a bit far, when it comes to dilution: isn't the orginal coffe already diluted?

Robert Cumming said...

Nice post.

One wonders whether, if the shop was opened in the EU and was actually serving coffee rather than contributing to culture per se, the use would be with due cause as required by Article 5(1) of Directive 89/104. It seems difficult to justify.

Anonymous said...

If they really wanted to create a parody and/or enrich the legal professions, they could have tried "South Butt Coffee".

That would have certainly made for interesting plaintiffs and debates.

john r walker said...

Some time in the late 40s, Charles De Gaulle was addressing a meeting when somebody in the audience cried out "death to all fools". De Gaulle turned and muttered to an aid "an very ambitious project".

Anonymous said...

I wonder what MAD Magazine would have made out of it. They had "Dee-Cayers" drawn life-like on "Life Savers" rolls. "Recommended by all dentists", as I recall.

They were famous for doing these pranks, but I do not think they were the reason for the magazine disappearing.

Kind regards,


George Brock-Nannestad

Subscribe to the IPKat's posts by email here

Just pop your email address into the box and click 'Subscribe':