News that a coffee shop had opened in Los Angeles entitled "Dumb Starbucks" has again raised the proper interpretation of fair use under U.S. intellectual property law into the realm of popular culture and commerce. Whereas last year’s Beastie Boys/GoldieBlox dustup (still ongoing) revolved primarily around copyright law, here the potential issue is one of trademark infringement. To stave off accusations of liability, the new enterprise has preemptively labeled itself an "art gallery." Will this hold up? Even Starbucks seems puzzled.
The solitary coffee shop is seemingly identical to an authentic Starbucks, except that nearly everything simply has the word "dumb" in front of it. From the store’s Twitter feed, for example, here is their menu:
As if that weren’t enough, the store apparently has an "FAQ" sheet posted. The key paragraphs read:
How is that legal?
Short answer – parody law.
Can you elaborate?
Of course. 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.' Fair use is a doctrine that permits the use of copyrighted material in a parodical work without permission from the rights holder. It’s the same law that allows Weird Al Yankovic to use the music from Michael Jackson’s "Beat It" in his parody song "Eat It."
So this is a real business?
Yes it is. Although we are a fully functioning coffee shop, for legal reasons Dumb Starbucks needs to be categorized as a work of parody art. So, in the eyes of the law, our "coffee shop" is actually an art gallery and the "coffee" you’re buying is considered the art. But that’s for our lawyers to worry about. All you need to do is enjoy our delicious coffee.
Are you saying Starbucks is dumb?
Not at all. In fact, we love Starbucks and look up to them as role models. Unfortunately, the only way to use their intellectual property under fair use is if we are making fun of them. So, the "dumb" comes out of necessity, not enmity.
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." 15 U.S.C. § 1127. Not only that, but designs—even restaurant designs—can become associated with a particular product or services such that they become trade dress under the Lanham Act, and can also be protected. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992). Thus, both the logo (a registered trademark) and the look and design of Starbucks shops can be protected. The touchstone is confusion: is a consumer going to think that the secondary mark speaks for the product or services represented by the protected mark?
As for Dumb Starbucks‘s defense: copyright fair use is a statutorily created set of permissions to use otherwise copyrighted works of expression, governed by 17 U.S.C. § 107 and its well-known factors:
(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
(4) the effect of the use upon the potential market for or value of the copyrighted work.
Words and phrases cannot be copyrighted, however, so "Starbucks" is not going to be regulated by copyright. Although the 9th Circuit provided a helpful primer last year in the Green Day case, the degree of transformation is hard to perceive even focusing purely on the logo as a work of visual art. This comparison courtesy of a Twitter search:
Not only that, the "purpose and character" of the derivative work is for the same stated purpose as the real logo: to sell coffee. That works against Dumb Starbucks under copyright fair use too: a person who buys a cup of coffee from them is less likely to buy one from (real) Starbucks, and thus adversely affects the potential market.
Trademark fair use also has a statutory origin, and some judge-made emphasis. 15 U.S.C. § 1115(b)(4) allows a non-owner to use a mark (1) "nominatively"—that is, to name the mark and display it for the purpose of talking about it—(2) in comparative advertising, and (3) for parody. Even where the fair use is likely to cause confusion among consumers, it can be protected.
But is Dumb Starbucks a parody? Merriam-Webster defines parody as "a piece of writing, music, etc., that imitates the style of someone or something else in an amusing way: a bad or unfair example of something." Dumb Starbuck’s Weird Al analogy is thus wide of the mark. Yankovic’s music is a pardody of the song—the original work of expression—and analyzed under copyright fair use. To use a more recent example, consider Number Two’s explanation to Dr. Evil that rather than pursue Austin Powers, he can enjoy the benefit of an early investment in Starbucks. Can an entire store be a "bad example" of a major multi-national corporation, however? Perhaps if this were an art installation at a museum, or even in precisely the same form but without the acknowledgement that its primary purpose is to sell coffee (rather than parody Starbucks). But it is not a "coffee shop" that sells "coffee" because it is an "art gallery," it is a coffee shop--a "real business"--that sells coffee.
It may well be that the entire exercise is tongue in cheek. The "FAQs," with liberal use of quotes and a brazen declaration that the fair use is but a pretext to use protected marks, are either charmingly (but naively) honest, or a hint that perhaps this is all a joke. Perhaps the real parody topic will be legal analysts and bloggers who, ahem, fell for it.
Finally, I’ll note that in the time it took to write this blog post, @dumbstarbucks gained five times as many Twitter followers as I’ve accumulated in several years. What does that say about the purpose and character?
