In February 2014, comedian Nathan Fielder orchestrated an ambitious publicity stunt – he crudely poked fun at global mega-brand Starbucks. His elaborate prank could have been a costly one. Fielder treated a long queue of fans to his new “café,” “Dumb Starbucks.” The shop mirrored the real Starbucks, except the word “dumb” was affixed to virtually everything in the shop, including the company’s logo, menu items (“Dumb Venti,” “Dumb Chai Latte”), and fake CDs for sale (“Dumb Norah Jones Duets,” “A Dumb Taste of Cuba”). Wall Street Journal, “LA’s Dumb Starbucks Imitates The Real Thing,” February 9, 2014. In the store’s “frequently asked questions” handout, Fielder assured customers that Starbucks was in no way affiliated with “Dumb Starbucks,” and that the latter’s existence was protected by parody law and the fair use doctrine. “Dumb Starbucks” did not actually sell coffee, tea or baked goods. In fact, it sold nothing at all. It did not operate as a legitimate brick-and-mortar business. Rather, it was an “art gallery” and the accompanying stunt was, to some degree, “performance art.” A spokeswoman for Starbucks acknowledged that Fielder’s enterprise was “obviously” not a real Starbucks. While the burden of policing trademark infringement rests on the trademark owner, Starbucks was smart to ignore the bait.
Parody as a Defense to Trademark Infringement
Although parody is generally not a defense to trademark infringement, courts have nonetheless applied the requisite “likelihood of confusion” test to parodies, noting that a successful parody will rarely be considered infringing. In Louis Vuitton Malletier S.A. v. Haute Diggity Dog, 507 F.3d 252 (4th Cir. 2007), the Court of Appeals affirmed the lower court’s decision and held that “Chewy Vuiton,” a manufacturer of dog chew toys, did not infringe or dilute the trademarks of Louis Vuitton (“LV”). LV, an international gargantuan darling of the fashion elite, manufactures luxury handbags and various leather goods and accessories, including a limited selection of luxury pet accessories. LV sued Haute Diggity Dog (“HDD”), a small Nevada business that manufactures and sells, mainly through pet stores, a line of pet chew toys and other products whose names parody high-end brands, with names like “Chewnel No. 5” (Chanel No. 5), “Furcedes” (Mercedes) and “Jimmy Chew” (Jimmy Choo). Id. at 258. HDD’s dog toys resembled miniature handbags and appeared similar in shape, design and color to LV’s handbags. HDD also used an identical imitation of LV’s monogram design, except “LV” was changed to “CV,” and a “t” was omitted from “Vuitton” to spell “Chewy Vuiton.” Id. The quality of LV’s pet products is unmatched and both manufacturers’ products were sold at very different price points, with LV’s being exponentially more expensive. LV contended that HDD’s marketing and sale of its “Chewy Vuiton” dog toys infringed its trademark because it was likely to cause confusion. Id. at 251. Establishing a “likelihood of confusion” of the source of a product is the sine qua non of any trademark infringement claim, and the factors considered by the court favored HDD. In determining whether HDD’s products created a likelihood of confusion, the court applied several nonexclusive factors, including the strength or distinctiveness of the plaintiff’s mark, the similarity of the two marks, the similarity of the goods or services the marks identify, the similarity of the facilities the two parties use in their businesses, the similarity of the advertising used by the two parties, the defendant’s intent and actual confusion. Id. at 259; see also Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1527 (4th Cir. 1984). Even before examining these factors, the court made up its mind from the outset – Chewy Vuiton was a cute, tongue-in-cheek parody meant to amuse any poker-face.
Similar to the fair use analysis in copyright law, the object of a trademark parody is to borrow just enough of the original for the public to recognize that the alleged infringing use is not the original. Is the joke recognized as a joke? The answer in the case of Dumb Starbucks is “yes.” “A parody must convey two simultaneous – and contradictory messages – that it is the original but also that it is not the original and is a parody.” Tommy Hilfiger v. Nature Labs, LLC, 221 F. Supp. 2d 410, 418 (S.D.N.Y. 2002). It relies upon a difference from the original mark, presumably a humorous one, in order to produce its desired effect. Jordache Enter., Inc. v. Hogg Wyld, Ltd., 828 F.2d 1482, 1486 (10th Cir. 1987). Consumers are unlikely to confuse or associate Starbucks, the real deal, with Dumb Starbucks, the fake. Surely, no reasonable person would expect Starbucks to poke fun at its own brand or refer to the company’s core mantra as “dumb.”
Some may characterize Fielder’s humorous exercise as “satirical in nature,” which, if we have learned anything from copyright law, will not survive a fair use analysis simply because he uses an irreverently humorous tactic not to make a commentary on the Starbucks brand or mark, but to promote his own products or services. But Fielder is not exactly hawking any products. What he is selling is his name, his own brand, and perhaps he wants us to watch his show on Comedy Central.
But if we’re being honest about what we, as consumers, see – Fielder’s artistic endeavor is a successful parody. We get it. He is sneering at the high-mindedness of the Starbucks franchise. Starbucks rapidly gained a cult following over the years by differentiating itself from its competitors. Starbucks cares. The company supposedly sources its coffee beans from farmers in developing nations and it adheres to the hippy code of fair trade. Its baristas are attractive hipsters who participate in choosing each café’s music soundtrack for the day. The shop is shabby-chic enough to bring a date, just upscale enough to study or hold important meetings and laid-back enough to compose music with one’s bandmates. It is a success at every turn (by all accounts), but there is a high price to pay for consumers who appreciate these sorts of distinctions. Its coffee is, quite simply, just coffee, and it is expensive. To Fielder, Starbucks overindulges in its own image, and this deserves a good laugh.
Dilution for “Dumbies”
Starbucks could potentially have pursued dilution claims under the Trademark Dilution Revisions Act of 2006, but it would have lost. The TDRA defines “dilution by blurring” as the “association arising from the similarity between a mark or a trade name and a famous mark that impairs the distinctiveness of the famous mark.” 15 U.S.C. §1125(c)(2)(B). “Dilution by tarnishment” is the “association arising from the similarity of a mark or trade name and a famous mark that harms the reputation of the famous mark.” 15 U.S.C. §1125(c)(2)(C). The Haute Diggity court acknowledged that a successful parody would not dilute the famous brand, but rather, it may make it even more famous. 507 F.3d at 267 (“By making the famous mark an object of the parody, a successful parody might actually enhance the famous mark’s distinctiveness by making it an icon. The brunt of the joke becomes yet more famous.”) Clearly, Dumb Starbucks neither impaired the distinctiveness of Starbucks nor harmed Starbucks’ reputation. As noted by the Haute Diggity court, the very mimicking nature of Dumb Starbucks simultaneously communicates that it is not the world-famous Starbucks. 507 F.3d at 266. And, because the Starbucks mark is particularly strong and distinctive, it becomes even more likely that a parody like Dumb Starbucks will not impair the distinctiveness of the mark. Id.
Grounds for a Permit
My only wish was for Dumb Starbucks to hang around a little while longer, if only to exercise its right to free speech and take pleasure in baffling legal experts. The “art gallery” was quickly shuttered by the Los Angeles Health Department for operating without a health permit, which in itself may be baffling to some because Dumb Starbucks sold nothing at all. Rather, any “treats” available for adoring fans were given away for free. Under Section 7.72.010 of the Los Angeles Health Code, Dumb Starbucks would have qualified as a “Public Eating Place,” requiring a health permit whether the food available to the public was provided for sale or as a gift. Fielder’s artistic endeavor, though a heavy-handed and arguably disrespectful scheme, was nothing but a good, old-fashioned joke, with social media as its accomplice. “No one likes to be the butt of a joke, not even a trademark. But the requirement of trademark law is that a likely confusion of source, sponsorship or affiliation must be proven, which is not the same thing as a ‘right’ not to be made fun of.” McCarthy on Trademarks & Unfair Competition §31:155 (4th ed. 2001).