Q&A with Phillip Free
Claiming parody as a defense
in trademark case can be tricky
Q: News outlets reported this week that a new business opened in Los Angeles using the name “Dumb Starbucks.” The store was reported to be a coffee shop that imitates a regular Starbucks in almost every way, using the Starbucks name, logo, color scheme and menu with the addition of the word “Dumb.” According to its FAQ, which was posted on Forbes, “Although we are a fully functioning coffee shop, for legal reasons Dumb Starbucks needs to be categorized as a work of parody art. So, in the eyes of the law, our ‘coffee shop’ is actually an art gallery and the ‘coffee’ you are buying is considered the art. But that’s for our lawyers to worry about. All you need to do is enjoy our delicious coffee!” The business turned out to be an apparent publicity stunt by comedian Nathan Fielder to promote his upcoming series on Comedy Central. The stunt raised questions, though, about the limits of a legal parody. Can a business really defend its use of another’s trademark by simply putting the word “Dumb” in front of it and calling it a parody?
A: If the coffee shop were a legitimate business, parody would probably not be a successful defense under these circumstances. Generally speaking, a legal parody of a trademark is one in which the mark is used in a way that pokes fun at the original mark, but does so in a way that will not confuse the public. Also, a legal parody must take only so much of the original mark as necessary to bring to mind the original target of the parody. In this case, Dumb Starbucks used the marks, logos, color schemes and menu of Starbucks in their entirety and simply added the word “dumb” in front of the menu items and store name. Inattentive customers could have easily been confused into thinking they were at a real Starbucks, not getting the joke at all. In fact, news outlets appear to have been duped as well, believing the business was a legitimate coffee shop and reporting on it widely.