by Andrew Jacobson

Comedian Nathan Fielder has been revealed as the brains behind the “Dumb Starbucks” shop that popped up without fanfare (or a health permit) on a Friday afternoon. It disappeared the next Monday. While the joke seemed to be on the people who waited in line for three hours for bad coffee and Vons-bought pastries, comedian Fielder claimed it was a performance-art parody of Starbucks, and thus was protected by the fair use exception under the US copyright laws.

Mr. Fiedler is, technically, incorrect – fair use is a defense for fairly using someone else’s copyrighted expression, but he is “using” Starbucks’ trademarks to make his point. There is no explicit fair use exception in trademark law, as there is under copyright law. However, there are plenty of trademark cases that show that a parody use of someone else’s trademark does not violate the law.

[caption id="attachment_1442" align="alignright" width="320"] The Smart (and Original) Starbucks in Seattle.[/caption]

Trademark law protects trademark owners by preventing other trademarks that are likely to confuse potential consumers into believing the other trademark is associated or sponsored by the first. The purpose is to stop the parasitical behavior that feeds off of others’ success. The Ninth Circuit uses an eight-part test first used in AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (1979)  to examine whether there is confusion. Courts look at the factors together; not every box has to be checked to be liable for trademark infringement. Those factors are:

1. strength of the mark;
2. proximity of the goods;
3. similarity of the marks;
4. evidence of actual confusion;
5. marketing channels used;
6. type of goods and the degree of care likely to be exercised by the purchaser;
7. defendant's intent in selecting the mark; and
8. likelihood of expansion of the product lines.

At first glance, “Dumb Starbucks” is in trouble: the first, second, third, fifth, sixth, and eighth factors are squarely against “Dumb Starbucks.” Starbucks is a very famous mark, rated the 76th most popular in the world. The goods are identical (coffee and sweet treats), and the Starbucks name and logo are used in their entirety.

However, Mr. Fielder's parody intent comes into play in the fourth and seventh factors. There are few that would not get the joke* of “Dumb” Starbucks – you’d have to be pretty idiotic not to get his intent. Mr. Fielder intends to criticize the pretentiousness of Starbucks, not copy its business model. This intent is reinforced by the giving away of the (by all accounts awful) coffee – no one is going to be in business long with the Dumb Starbucks business model of giving away product. While few have failed by overestimating Angelenos' gullibility, Mr. Fielder’s intent won’t unfairly suck business and profits away from Starbucks.

In a larger sense, trademarks are a form of commercial speech, and are subject to tighter regulation than non-commercial speech, like Mr. Fielder’s. Starbucks opens itself to criticism with the often bombastic titles and sizes (a “tall” is “small”?). At least as of the posting of this article on February 12, 2014, Starbucks has not gone to court, apparently preferring to register its mild objection in the court of public opinion, and let it die a natural death – the way that it apparently has in other situations (warning: not for children, clergy, or those who get the vapors easily when viewing shocking words.)

* For those who don’t get the joke, you can get a “Dumb Starbucks” Grande Cup on eBay – bids start at just $50.00!
Photo of the original Starbucks in Seattle’s Pike Place Market, by Postdlf, courtesy of Wikipedia Commons and the GNU Free Documentation License.