Satire requires a food permit. At least that was the reason given by the Los Angeles County Health Department when they shut down Dumb Starbucks, a parody on the coffee giant created by a comedy duo.
However, this wasn’t before Dumb Starbucks stoked the ire of the real Starbucks while building social media buzz for popping up its own coffee shop in Los Angeles over the weekend. People stood in line for hours to order a dumb latte and pick up a copy of Dumb Jazz Standards. According to the owners’ FAQ, the store, which was giving away drinks for free, was parody art and “by adding the word ‘dumb,’ we are technically ‘making fun’ of Starbucks, which allows us to use their trademarks under a law known as ‘fair use’.” After weekend of media attention, comedians Tim Heidecker and Eric Wareheim came forward as the store’s owner on Monday.
The Seattle-based company wasn’t laughing, and spokespeople asked them to stop using their name before the faux store was shut down for not having the proper food permits.
While Starbucks didn’t pursue trademark infringement prior to the closure, the comedians’ publicity stunt is an example of what can happen when someone tries to step on the toes of a notorious litigious company. In the last year, Starbucks pursued two trademark cases, one of which resulted in a $6 check and a brewery to stop using the word “Frappuccino.”
The coffee company did get burned when they tried to get a small coffee shop in New Hampshire to stop using the word “Charbucks” because of trademark dilution. The Second Circuit Court rejected Starbuck’s injunction and found that “the lack of an actual association between the Charbucks and Starbucks marks outweighed the distinctiveness, exclusive use, and high recognition of the Starbucks mark. The central issue here was whether consumers were likely to confuse Charbucks for Starbucks,” according to intellectual property lawyer Jessie Kuhn of Baker Hostetler.
Were people getting Dumb Starbucks and Starbucks confused? From the Twitter chatter, it seemed unlikely. Claiming parody doesn’t mean that Dumb Starbucks would have been successful in evading a lawsuit, according to Martha Engel, patent and trademark lawyer at Winthrop & Weinstine.
The spoofers in response often cry “parody” and First Amendment rights, but just because the use may evoke humor or social commentary, it isn’t always a sure bet on a defense. Parody defense can be quite gray and courts have come down on different sides of the issue. If a parody confuses the consuming public into assuming source or sponsorship by the brand owner, then it often will be found to be an infringing use. Also, where the mark is used in a crude context, this may also be found by some courts to be an unlawful tarnishing use.
According to Nicholas O’Donnell, partner at Sullivan & Worcester, Dumb Starbucks wasn’t exactly right in calling itself satire.
Unfortunately for Dumb Starbucks, they have a few points mixed up. First, it claims that it is allowed to use trademarks by claiming fair use over copyrighted works. Those are legally distinct concepts, covered by separate laws. The real issue here revolves around the logo and the store design. A trademark is a symbol that is used “to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.” … Both the logo (a registered trademark) and the look and design of Starbucks shops can be protected.
O’Donnell also added that if people were going to Dumb Starbucks for coffee instead of a regular Starbucks, Dumb Starbucks couldn’t claim fair use.
The real winner here is the LA Health Department. It saved Dumb Starbucks from the legal headache of dealing with the real Starbucks and the citizens of LA from drinking any more “horrible” and “bitter” coffee.