A storm in a coffee cup

By Brand Heeler

In which someone tries to goad Starbucks in the name of ‘humor’

There’s been a fair bit of newsworthy trade mark litigation going down recently. You may have read about The Glee Club landing a punch on the nose of the mighty Fox in respect of TV sing-along-athon GLEE. And Lush have been educating Amazon over third party cosmetic products (and registering the Amazon CEO’s name as a trade mark to boot!)

But the brand spat that really caught our eye was the peculiar case of ‘Dumb Starbucks’ – apparently a coffee shop where everything was the spit of a genuine Starbucks, apart from the inclusion of the word DUMB at every opportunity. We weren’t quite sure what to make of this. Were we missing a joke? Was this publicity for something? Was it an anti-globalisation protest? Or perhaps one of those modern art stunts that leaves you feeling a bit used, confused and angry? Could have been any one of those, and it looks like the perpetrators may have been purposely hedging their bets, keeping several options while waiting for Starbucks’ response.

Starbucks are an easy target – big, profitable, litigious and with an apparently casual attitude to paying tax. In recent years, they’ve had to handle fallout from suing Christian monks, Thai and Vietnamese street traders, and independent micro-breweries, so this could have been just another, very obvious PR trap. Had Starbucks gone for the bait and sent their lawyers in to enforce their trade mark rights, they could have been accused of having no sense of humour and of overreacting to squash a small apparent rival. (Dumb Starbucks could also have deployed some clever-clever – but very US-specific – legal arguments about freedom of artistic expression and parodies.) If Starbucks had tried to get with the joke, they might have risked looking like they’d been wrong-footed and were trying to come across all groovy to cover up – a big moral victory for the merry hoaxers.

Which of these were Dumb Starbucks trying to achieve? Bizarrely, the answer seems to have been both – a double trap for Starbucks. The latest revelation (in what’s been a rapidly developing non story, sorry, news story) is that it’s all been in aid of Comedy Central reality series ‘Nathan For You’, in which the protagonist tries to help struggling businesses by suggesting far-from-orthodox strategies. Presumably, the joke is that no sane business adviser would suggest starting up a coffee chain called Dumb Starbucks? Oh, our aching sides…

Starbucks were in real danger of becoming patsies to Comedy Central’s PR efforts. But they’re made of sterner stuff and they’ll have been well aware of the ‘Streisand effect’. Named after La Barbra, this is what happens when you’re perceived by online public opinion to have reacted inappropriately to an issue, no matter how legally correct your stance: it blows up in your face in a hubristic PR mess and everyone can smugly say you brought it on yourself and thoroughly deserve it. As a result, received wisdom holds that it’s often better to ignore a small irritation than give it a good scratch and risk inflaming things further. One or two minor challenges to a trade mark may not matter much, but a plethora is markedly less pleasant. Knowing the difference is a matter of fine judgement and Starbucks, to their credit, seem to have got it right.

Despite their usual litigiousness, Starbucks have refused to be sucked into a row this time: ‘While we appreciate the humor,’ they say (presumably through gritted teeth, and meaning nothing of the sort), ‘[Dumb Starbucks] cannot use our name, which is a protected trademark.’ And that’s right – the whole point of trade mark law is to protect brand value against misappropriation, confusion, and erosion, and the law protects all businesses, regardless of their reputation. (In any case, now that Dumb Starbucks have revealed themselves as just another big business with hardnosed commercial motives, the real Starbucks are in a much better position – morally and legally – to slap them down.) Some victories just aren’t worth winning and sometimes the only winning strategy is to refuse to play.

It’s all a reminder that the correct legal response to any given legal problem requires more than just legal input. You need to see everything in its bigger commercial context, including asking how any action might play in the court of public opinion. After all, you don’t have to be Starbucks to find yourself in hot water, just as you don’t have to be a diva to end up like Ms Streisand.

This article contains our thoughts and opinions on an issue of general interest and is written from the perspective of Australian and/or English law. It is not legal advice and is not provided in the context of a solicitor-client relationship. It may not even be relevant to your jurisdiction. No duty of care is assumed or accepted. Please carry out appropriate research and consult with a suitably qualified legal expert before taking any action or making any decisions.

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