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.
Q: Does the fact that this was a publicity stunt change anything from a legal standpoint?
A: It certainly strengthens the idea that this was a parody. Rather than being a legitimate coffee shop, it turns out that the business is more akin to an elaborate set for a television skit. The fact that the fake business is not a legitimate competitor to Starbucks would certainly help in asserting parody as a defense to any legal action Starbucks might take.
Q: Can Starbucks still take legal action for the unauthorized use of its marks?
A: Starbucks certainly could sue to enjoin further use of its name. Because the Starbucks mark is so famous, it could sue not only for trademark infringement, but also under a legal theory know as “Dilution.” Under this theory, Starbucks would argue that the unauthorized use of its name tarnished the reputation of its valuable trademarks. Under a dilution claim, Starbucks wouldn’t have to prove that any consumers were confused. However, the parody defense would still be a potential defense to the dilution claim. Given the apparent short nature of this stunt and the difficulty it would have proving the dollar amount of its damages, Starbucks might be best just to let the matter go so that all of the discussion will die down.
PAULA BURKES, BUSINESS WRITER