A coffee store by the name of “Dumb Starbucks” opened in Southern California. (Story here.) Its name, logo, font, colour of the lettering, menu items, style of menus, and interior are all identical to a real Starbucks store, except each item and the name has “Dumb” in front of it. It sells coffees that are identical in design (although probably not in quality) to Starbucks coffees.
The store claims that its trademark infringement is protected under “fair use” to copyright laws. Further, the store claims that it is selling “art”, which just happens to be coffee.
Problematically, that isn’t enough to save Dumb Starbucks from trademark infringement. Let’s discuss the issues:
Coffee as “art”:
This is the easiest non-issue. Dumb Starbucks claims that it is selling “art,” not “coffee,” but that the “art” happens to be coffee. Under this logic, trademarks would be functionally unprotected: so long as the infringer made a pro forma claim about the commercial goods being “art”, they would be allowed to sell them with impunity. Sorry, that doesn’t fly.
Parody and Fair Use
Generally, copyright infringement is allowable if there is “fair use,” which includes parodies of the original. (Think Weird Al “I Want a New Duck.”) That analysis often does not extend to trademarks; exceptions have been things like “For everything else, there’s MasterCard” or “Barbie Girl.” In those situations, the seller is a purveyor of a good that is fundamentally different than the trademarked good: “Barbie Girl” was selling a cheesy pop song, not a plastic doll; Ralph Nader’s “MasterCard” commercials were selling public policy, not charge cards; and the “Coca-Cola” script T-shirts with things like “Capitalism” written on them are selling items of apparel, not soda.
Unfortunately for “Dumb Starbucks,” they are selling coffee. If they were selling office supplies, they might have a different argument, but they are selling identical menu items. (More on that below.) That makes it less of a parody and more of shameless exploitation of a trademark.
Even if the good are different, parodies are not allowed when they will besmirch or tarnish the good name of the trademarked company. For example, a shirt that said “Cocaine” in the distinctive Coca-Cola script was found to not be fair use: it was sufficiently crass to undermine Coca-Cola’s reputation. Illegal drugs suffice for this (even if used by the company when legal), but “Dumb” might not. “Dumb Starbucks” would have been better off using something more clever than “Dumb,” however, if they wanted to avoid this pitfall.
Likelihood of Confusion
The touchstone of trademark protection is “likelihood of confusion” with a trademarked product. There are a variety of factors that courts use to analyse whether or not there is a likelihood of confusion (the Polaroid Factors), including strength of the trademark (i.e. how distinctive it is); similarity of the infringing mark to the protected mark (particularly important for parody uses, wherein the person alleging fair use should use as little of the mark as possible to get the point across); similarity of products or services; geography; good or bad faith of the person using the protected trademark; evidence of actual confusion (frequently found through surveys); harm from consumer confusion (i.e. lesser or different quality of the goods or services); and related products or services.
Dumb Starbucks is going down in flames on almost all of those factors.
The Trademark Dilution Revision Act of 2006 protects trademarks that are recognised by the general public from “dilution” by competitors.
Holders of distinctive trademarks do not need to prove that there is “actual” dilution of their marks or actual economic injury; to win an infringement case, they only need to prove that such dilution is likely. (I am assuming that the Starbucks trademarks are distinctive and recognised by the general public and are not a niche market.)
Problematically for Dumb Starbucks, the it is almost impossible for them to argue that they are not diluting Starbucks’ famous trademark (and possibly trade dress). The similarities are too many and too intentional for them to argue that their store won’t dilute the famous Siren.
As I’ve pointed out on this blog (to the chagrin of pro-aborts, one in particular), being “correct” about the law often does not mean that you will get the result you want. Whether it be the via Streisand Effect or a war of attrition, meritorious claimants frequently do not get the relief to which they are entitled.
Here, however, Starbucks is the company with the deep pockets. One suspects that “Dumb Starbucks” and its financiers will be overwhelmed in the trenches of legal warfare, and with such a lousy case, will simply cave.