35

About a year ago, a new, familiar-looking coffee shop opened in LA. Their reasoning for this was, basically, that it's making fun of the popular coffeehouse chain and is thus fair use:

Dumb Starbucks FAQ

Naturally, it attracted a lot of attention and was later revealed that it was really a publicity stunt created by a comedian, but he still made a statement that "as long as we're making fun of Starbucks, we're allowed to use their corporate identity" (as seen here).

Had Starbucks sued for trademark infringement (which they probably planned to do, but the thing was actually closed for operating without a valid public health permit), would the whole parody as fair use thing hold in court (or at least have some relevance in the case)?

  • Comments are not for extended discussion; this conversation has been moved to chat. – Dale M Sep 30 at 3:58
46
+500

This is likely not fair use. At first blush it appeared similar to things one might see in The Onion (parody print and online newspaper) or other parody publications or shows (SNL, Key and Peele, etc.). In this case, the context would have likely been deemed transformative. However, since they are selling coffee called "Dumb Starbucks" while using their trademark, they would be be found liable if sued. You can parody a trademark brand, so long as the work is transformative such that the use of the brand goes from selling coffee to making a commentary in which the brand itself is relevant.

Amendment I don't think this would pass the test as a parody/commentary. Originally, I failed to notice that they are actually selling coffee. This takes it out of fair use and they would almost certainly lose if sued. If they never sold the coffee, but just had it open as a performance art (like I had originally read this) giving the coffee away to complete the parody, I think they'd be fine. However, they are literally using the Starbucks logo, and selling the same product. This is clearly an infringement of their copyright and not fair use. Sorry for the confusion.

  • In the UK, even giving coffee away (and not selling it) wouldn't protect from infringement action. – Andrew Leach Sep 16 '15 at 14:26
  • The law in the UK is clear on this? I always read their (your?) cases as being the same as the US...meaning it's always an analysis with no cut and dry one-size-fits-all answer. The courts differ from situation to situation on their opinions, as they can hinge on one single fact. Performance art in both the UK and the US is considered commentary. Are you saying that the real coffee (if free) brings it into the realm of infringement just because it's coffee? – gracey209 Sep 16 '15 at 14:28
  • Yes. Trade Marks Act 1994 Section 9 and 10. See my other comment. – Andrew Leach Sep 16 '15 at 14:35
  • 3
    There is an interesting moral to this "dumb story", which is just because you can sue (even if you'll likely win) is doesn't mean you should. Had Starbucks sued Comedy Central for this prank, they would've prob suffered more loss to their brand's reputation than the Dumb Starbucks ever had. – gracey209 Sep 17 '15 at 16:34
  • 1
    Amazing answer and analysis. Also, while your last comment (related to the "moral of the story") might not answer the original "fair use" question, I urge you to include it in the actual answer, as it probably played a very important role in the matter. – fstanis Sep 18 '15 at 14:54
13

In the UK, it would not be allowed, as the company is selling coffee while making it likely that customers will believe it is Starbucks coffee.

As well as Starbuck being able to take action over the use of their trade mark, trading standards could take action as the company is clearly likely to deceive customers.

  • 2
    In particular, both the mermaid and the complete sign are registered trademarks and the Trade Marks Act prohibits unlicensed use if "the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered" and "there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark." – Andrew Leach Sep 16 '15 at 14:15
  • I would have to look at how the terms "goods and services" are defined in these cases you are referring to. In the U.S. this terminology has a specific legal meaning, being in commerce. Things that are free are not goods and services that could viably be misconstrued as the brand itself, unless the trademark is for "complimentary goods and services" to being with. So, I think that if it were free, and with the Dumb (Starbucks isn't going to call itself dumb), it would be transformative and not likely seen to lead to brand confusion. – gracey209 Sep 16 '15 at 14:41
  • If you look at the 8Adidas-Salomon* case the Court of Justice of the EU (“CJEU”), 2003 Opinion by Advocate General Jacobs, employed the same 4 part test the U.S. employs. I think, even in the EU it will come down to what is considered art, if people could really think they're at a Starbucks, and whether the act of using the trademark for parody leads to brand dilution. – gracey209 Sep 16 '15 at 14:52
  • I think location is also key, what may be considered art in a galley, would be much less likely to be when on a normal high street. – Ian Ringrose Sep 16 '15 at 16:02
  • I don't agree that location impacts the analysis...(unless next-door to Starbucks )however, sale would negate the artistic statement argument in most instances. – gracey209 Sep 16 '15 at 16:26
5

Considering their own FAQ (as shown in the question) specifically states that they're only calling it a parody to try to get away using Starbucks' name and logo for the purpose of selling coffee, they almost certainly would not be able to get away with this in court were they sued by Starbucks. They openly admit that their intention is not parody at all, but rather an attempt to get away with trademark infringement. Their comparison to Weird Al's spoof of 'Beat It' is rather absurd, since the value of 'Eat It' is purely comedy, not just an attempt to rip off Michael Jackson's IP to sell records. Also, as a side note, Weird Al gets permission from the people he's parodying before he actually releases a parody (though he isn't legally required to do so thanks to fair use.)

The only thing I can see here that they might possibly be poking fun at, ironically enough, is the parody fair use exception itself (i.e. by trying to make a ridiculous example of fair use.) If that were the intention, though, it isn't a very good parody, since such a use almost certainly wouldn't hold up as fair use.

  • 2
    Or maybe they're parodying the parodying of the parodying of the parody fair use? It's parodies all the way down. :-) – Travelling Man Sep 17 '15 at 23:34
  • 1
    @TravellingMan: A m00se bit my sister once. – dotancohen Sep 18 '15 at 14:00
2

It is not fair use because they are, in effect, using a variation of the Starbucks logo to sell the same product, coffee, thereby competing directly with Starbucks.

It could be fair use if they were selling "comedy," in the form of say, post cards or posters. Then they would be selling a completely different product. That is, no one would say that people would use Dumb Starbucks' comedy about Starbucks to satisfy their demand for its coffee, or Starbucks' coffee to satisfy their demand for comedy.

-3

Well, while it might be possible to consider it fair use from the logo's perspective, one could always file a complaint at the Federal Trade Commission or a local consumer protection office since they're, needless to say, tricking customers into thinking they're in a real Starbucks.

  • The question is about trademark. – Mark Sep 17 '15 at 23:20
-3

Firstly what's in a law and what a judge decides are often only loosley connected.

The first thing I would expect is that using the same mermaid logo would be a no-no, it's too close and would be perceived as deceptive to the illiterate.

Next simply prefixing "Dumb" doesn't distinguish the brand, it would be like using "New" or "Different" it's entirely possible Starbucks themselves would choose to do that (and not our place to decide if they should) so it is reasonable to expect the public to be confused.

As far as Starbucks are concerned, they probably aren't that insulted but will almost certainly see it as an attempt to insult them and the response will be something along the lines of "I'll put Starbucks money up for a lawyer, you put your money up for a lawyer and we'll see who's dumb".

Finally, "Dumb Starbucks" it's not even a good parody, I doubt any simpathy could be elicited from a judge if your parody doesn't even strike a bemused smile.

My opinion, close the shop for the day, change the name and logo, try to cover your tracks and if you even smell a Starbucks employee in your shop smile and give them free stuff.

-3

All existing answers have failed to notice one important aspect that's been widely reported in the articles describing the event...

All coffee and pastries were provided free of charge.

So, yes, it would appear that the whole operation was indeed merely a joke and a parody, not meant to be run on a continuous basis. As such, it does appear that the reason they weren't sued had more to do with their goofiness than with the short time during which they've operated the establishment.

  • 1
    Actually, gracey209's original answer (before editing) was all about this, however it simply seems that wasn't true and they did sell coffee, which is why she edited her answer into the one that's now accepted. The free coffee thing seems to have been just the first weekend, after which they started selling, it seems. – fstanis Sep 26 '15 at 7:53
  • @fstanis, is their menu the only proof that they were selling coffee? that doesn't really prove much, and might as well have been part of their exhibition. i couldn't find any reports that they were, in fact, selling any coffee; to the contrary, people were quite amazed that they were (supposedly) shut down for providing exactly the free coffee, whereas other businesses and such get away with it all the time. – cnst Sep 26 '15 at 8:24
  • Well, the problem is, most of the media reports on the matter happened during the weekend when the coffee was free, leading to the (possibly false) assumption it remained free. In the image from my question they clearly called themselves a "fully functioning coffee shop" and "coffee you're buying is considered the art", without any mention of it being free. – fstanis Sep 26 '15 at 8:52
  • @fstanis, the people behind the art show also never mentioned that it was or wasn't free; what sense would it make for a reality TV show coffee shop if they were advertising from the start that the coffee was free? just because they used the word "buying" in their promotional materials (and had a menu with the prices) is really no indication that they were actually charging for the coffee. – cnst Sep 27 '15 at 0:08

Your Answer

By clicking “Post Your Answer”, you agree to our terms of service, privacy policy and cookie policy

Not the answer you're looking for? Browse other questions tagged or ask your own question.