IMG_20140210_124208In ‘Oh, Really?’ the Biederman Blog’s editors — voracious consumers of all matters pop culture — cast a curious, skeptical, fun and smart end-of-the-week eye on popular productions, sharing their keen observations about legal matters these raise. Blog editors Karen Hao and Kasia Campbell investigated a bit of L.A. street theater for this piece:

With the online buzz and media blitz that comedian Nathan Fielder whipped into a perfect latte froth with his “Dumb Starbucks Coffee” shop in the trendy Loz Feliz area, it might have seemed as if he cured cancer or created a crazy way to take a common daily drink that should cost a few bits and make us all pay gazillions for it. No, wait, just like some hipster java haven,  it was not long before crowds of people (including the authors of this post) waited in line for hours to get “dumb coffee” at his pop-up creation and to see what the fuss was all about. Would it be dumb and dumber to rely, as Fielder asserted he did, on “parody law” to circumvent the Starbucks’ trademark and to capitalize on an addictive brand? Maybe he just needed a way to promote his upcoming Comedy Central show, “Nathan for You?” Or maybe he wanted law-watchers to consider smartly some intellectual property issues of his brilliantly dumb stunt, which health officials shuttered just days after its Feb. 7 opening?

According to Fielder’s Frequently Asked Questions handout, “by adding the word ‘dumb,’ we are technically ‘making fun’ of Starbucks, which allows us to use theirIMG_20140210_143602 trademarks under a law known as fair use. In the eyes of the law, our ‘coffee shop’ is actually an art gallery and the ‘coffee’ you’re buying is considered art.”

Nice try, Nate. That won’t get you beyond life as a 1L, as just simply calling something dumb does not mean it’s a parody.

While the U.S. Supreme Court has held unequivocally that a “parody may qualify as fair use,” the context of this statement is reserved under §107 of the Copyright Act — and Dumb Starbucks actually involves a potential trademark case. And for a trademark owner to bring a trademark infringement claim, courts have applied a “likelihood of confusion test.”

Trademark and ‘likelihood of confusion’

However, the U.S. Court of Appeals for the Ninth Circuit applies the nominative fair use test in determining whether a work’s parody infringes. Nominative fair use allows a defendant to use a plaintiff’s trademark or trade dress to describe or identify the plaintiff’s product, even if the ultimate goal is to describe the defendant’s own product.

The defendant must meet three criteria under the nominative fair use test : (1) the plaintiff’s product or service in question must be one that is not readily identifiable without using the trademark, (2) only so much of the plaintiff’s mark(s) may be used as is reasonably necessary to identify the plaintiff’s product or service, and (3) the user (defendant) must do nothing that would, in conjunction with the mark, suggest the trademark holder (plaintiff) is sponsoring or endorsing the defendant’s product or service.

In Fielder’s instance, Dumb Starbucks did not have to use Starbucks’ exact mermaid logo. He simply, for example, could have altered the logo, keeping the green and white colors and the circular shape.

Second, Dumb Starbucks used more than what was reasonably necessary to identify Starbucks’ trademarks (mermaid logo “Starbucks Coffee,” and “Frappucino) by copying the trademarks exactly, except for putting the word dumb in front of “Starbucks Coffee” and Starbucks menu items.

Lastly, while Dumb Starbucks, as evidenced by its FAQ handout, did nothing to suggest that the real Starbucks was a sponsor or endorser of the “coffee art gallery.” Though there was speculation as to whether the real Starbucks was behind it or whether it was a Banksy-style art installation, Dumb Starbucks made it clear that the real Starbucks Corp. was unaffiliated with it.

So even though Dumb Starbucks met the last factor, it  seems to have failed to meet the first two. So it follows that Dumb Starbucks has failed the nominative fair use test and it likely would not have a fair use defense.

Grounds for a claim

Was Starbucks laughing its way to a bonanza of free publicity and attention? It did rumble about discussions with its lawyers.

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Starbucks might make a claim under 15 U.S.C. §1127 for trademark dilution, which results from the “lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of – (1) competition between the owner of the famous mark and other parties, or (2) likelihood of confusion, mistake, or deception.” However, the Ninth Circuit applies the “noncommercial exception in striking down Dilution Act challenges to parodies,” meaning that the “use of famous marks in non-commercial settings, such as parodies…. would not be actionable.”

In Mattel, Inc. v. MCA Records, Inc., the Ninth Circuit held that while the defendant (Aqua) did use Barbie to sell copies of the Barbie Girl song, that tune also ridicules the Barbie image and comments on the cultural values that the doll represents, thus the use was ‘exempted’ from a Dilution Act claim. Although Dumb Starbucks may appear to ridicule Starbucks by calling it “dumb” the Frequently Asked Questions page states, “we love Starbucks and look up to them as role models” and the “only way to use [Starbucks’] intellectual property under fair use is if we are making fun of them,” which isn’t actually ridiculing Starbucks. Further, unlike Mattel, Dumb Starbucks does not comment on the cultural value of Starbucks, which makes a Trademark defense of parody difficult to stand in court.

Beyond this brew ha-ha

For an excellent and thorough copyright v. trademark guide, check out the American Bar Association’s Intellectual Property discussion outline.

For a basic understanding of Trademark and Fair use, please check out the International Trademark Association’s fact sheet.

And if you haven’t seen enough of Fielder and caught his gag, here’s him putting it out there: