A morning visit to the local Starbucks en route to work is a familiar routine for many of us and a visit which seldom produces any surprises other than occasionally getting to your desk only to discover that your white Americano doesn’t contain any milk! The same can’t be said for those who embarked on their morning commute and happened to stumble across the “DUMB STARBUCKS” faux coffee shop in Los Felix, Los Angeles.
Comedy Central’s Nathan Fielder is the man credited with the ‘comic’ depiction of the Seattle-based coffee giant in which he meticulously mimicked every minor detail of the Starbucks brand and trade dress, from the iconic figurative siren mark and green get up to the contents of the menu. The only notable departure from the legitimate marks was the addition of the word “Dumb” to the Starbucks sign and several of the items on the menu.
Mr Fielder claims that, by adding the word “Dumb”, he was making fun of Starbucks by way of parody which excludes him from infringing Starbuck’s intellectual property rights as parody falls within the ambit of the US ‘fair use’ defence.
The freedom of expression is enshrined in the First Amendment to the US Constitution and it is perhaps rather unsurprising that the monopoly conferred by US copyright law is subject to a relatively wide limitation which allows for unauthorised use that falls outside of legal liability.
17 U.S.C. § 107 of the US Copyright Act of 1976 provides a list of permitted purposes in which use of a copyrighted work, without the authorisation or permission of the author, will not amount to infringement [rather like the more limited “Fair dealing” provisions of the UK Copyright, Designs and Patents Act 1988 (as amended) (ss29-30)]. In view of the nature of the various copyright works and the function of copyright law, there is an unequivocal need to strike a balance between the scope of the monopoly afforded to the author/owner of original copyright works and the wider public interest of freedom of speech and dissemination of ideas.
However, it is rather interesting that in the US, the balance between IP monopoly rights and the wider public interest extends beyond copyright works into the realm of registered trade marks, despite the fact that trade marks have traditionally been considered to possess a more commercial function. The US Trademark Dilution Revision Act 2006 amended the US Trademark Act of 1946 and widened the scope of permitted purposes to include parody. Consequently, dilution by blurring or dilution by tarnishment is not actionable if the use is “a parody of the famous mark owner or the goods or services of the famous mark owner”.
As litigation is potentially more injurious to Starbuck’s reputation than the alleged infringement in this instance, it appears that the coffee chain may merely sit back and enjoy the free publicity rather than test the accuracy in court of Mr Fielder’s “Frequently Asked Questions” placed strategically in the window.
Bearing in mind that the UK legislature is about to enact a parody exception later this year, proprietors of UK trade marks may be asking the question as to what level of protection is available if a third party were to make use of their mark for parody purposes in the UK.
It appears that owners of UK trade mark rights need not lose sleep as the new parody exception is merely intended to ‘allow creators to make minor uses of other people’s copyright material for the purposes of parody, caricature or pastiche, without first asking for permission’.
Consequently, it is unlikely that the UK will follow the US (at least in the short term) in extending the fair use exception to cover trade marks.
Owners of registered UK trade mark rights can assert a claim of trade mark infringement arising from any unauthorised use of the identical or a confusingly similar mark. This powerful arsenal is further enhanced by the possibility of a claim of passing off based on common law rights established through sufficient use in the UK and in some more extreme circumstances trade libel may also be asserted.