A legal tempest is brewing in the Starbucks teapot as it became clear late Monday that the Dumb Starbucks pop-up store that appeared in Los Angeles over the weekend was not the real thing but a parody produced by a Comedy Central TV host, Nathan Fielder.
Starbucks is mulling over a response, according to an e-mail to the Monitor from a Starbucks spokesperson – presumably vetted by its, um, barristers. “We are evaluating next steps and while we appreciate the humor, they cannot use our name, which is a protected trademark,” the e-mail says.
The brew-ha-ha, as the Los Angeles Times dubbed it, began on Feb. 7, when a tweet from @dumbstarbucks announced the arrival of the dumb Starbucks store at 1802 Hillhurst in Los Feliz, a L.A. suburb. Inside, the menu offered tasty treats such as "Dumb Espresso” and "Dumb Frappuccino.”
A Starbucks acolyte could be forgiven for having questions, as the venue appears to be nearly identical to a regular Starbucks hangout, with two exceptions: The word Dumb appears before all the product names, including mock CDs and the size names for the venti, tall, and grande drinks. And, of course, all the products were being given away for free.
Then there was the FAQs posted in the shop explaining that Dumb Starbucks was protected as a parody, similar to allowing "Weird Al" Yankovic to use Michael Jackson's "Beat It."
But in Mr. Fiedler's case, Dumb Starbucks was promptly shuttered by the L.A. County Health Department on Monday evening for not obtaining proper permits.
Fielder acknowledges this lapse, but insists that Dumb Starbucks is a legitimate parody, protected by the laws that govern a work of art, not a coffee shop. According to a letter from Fielder, this is an art gallery and "The 'coffee' you're buying is considered the art.”
Meanwhile, Comedy Central’s parent company, Viacom, weighed in with The Hollywood Reporter on Tuesday, affirming that “the episode relating to 'Dumb Starbucks' constitutes protected free expression. Viacom takes intellectual property rights seriously, and also recognizes the important constitutional protection afforded to expressive works characterized by social commentary."
Lawyers who specialize in trademark and copyright issues say legal precedents on the issue are mixed. The primary focus of trademark law is to protect consumers from confusion; copyright law, by contrast, protects authors of creative works, says Jeffrey Kobulnick, an attorney with the firm Ezra Brutzkus Gubner in Los Angeles. As the Starbucks logo design is protectable under both trademark and copyright law, both come into play, he says.
“The big question on the trademark side is whether customers are likely to be confused about whether the Dumb Starbucks is affiliated with the real thing,” he adds. "It will probably be viewed as legitimate parody," because the Starbucks brand is so well-known.that consumers are likely to recognize that this is a spoof on the trademark and not the real thing.
However, “the law also protects famous [trade]marks against dilution,” says lawyer Sean O’Hara, who specializes in intellectual property litigation. Even if there’s no likelihood that anyone thinks that Dumb Starbucks is associated with Starbucks, he says, “Starbucks can argue that its mark is so famous that it risks losing its identifying power if everyone can spoof it in nonconfusing uses.”
The case raises important questions, says attorney Randy Friedberg of New York, because satire and parody can communicate important ideas in an accessible and identifiable way. “We need to care because it is a First Amendment issue, and the First Amendment sets forth one of our most fundamental and important rights,” he says, via e-mail.
But to qualify as satire, “the commentary has to be transformative of the original work," he adds. "You cannot simply use the Starbucks name or logo without transforming it in some way and using it to make some point.”
That said, it could be argued that at least one element of the Starbucks brand was transformed and perhaps even diluted in the Dumb Starbucks debut: The coffee that Fielder handed out came from what he says was the best that Ralph’s, a local grocery store chain, was brewing that day.