Am I Infringing? Part 2: Fair Use
This guest blog post is written by Anna-Grace Nwosu, our soon to be departing to law school staff member! Anna-Grace has done an excellent job of showing introducing this topic. All legal conclusions, statements, or opinions have been vetted by Thomas Maddrey.
In Part 1 of this series, we talked about a gallery that almost got served with a major infringement lawsuit for using a derivative of another company’s trademarked name. But what about the cases where using another brand’s name and material is actually protected by law?
In the summer of 2014, comedian Nathan Fielder demonstrated this type of case when he decided to poke a little fun at a famous coffee chain by opening up Dumb Starbucks. If you were anywhere close to a media source at the time, you probably saw the lines wrapped around the block for “Dumb Frappuccinos” and “Dumb Nora Jones CDs.”
Though many lawyers have theorized how Starbucks could have sued, I think it’s more interesting to examine the law that Fielder used to create Dumb Starbucks in the first place: fair use.
Commentary and Criticism
Fair use principles allow for a person to use copyrighted or trademarked material for a limited or transformative purpose without permission from the copyright owner. These transformative purposes include criticism, commentary, and parody.
Criticism and commentary allow people to use copyrighted material for things like book reports, reviews, or on the news. If you’re a devoted Game of Thrones watcher, you’ve probably seen blogs dedicated to episode reviews that include pictures or lines from the show. These reviewers are likely allowed to use limited portions of HBO’s material because of the commentary protection. Now, if those reviewers used the same images on t-shirts that they sold on their blog’s website then these same principles wouldn’t apply and a call from HBO’s legal department would be imminent.
Parody is the fair use protection that Mr. Fielder used in the creation of Dumb Starbucks. It’s also the protection that has led SNL into its 44th season and what keeps Weird Al’s career thriving. Under parody protection, one is allowed to use copyrighted material for the sole purpose of satirizing a work or a brand. And, as Fielder demonstrated by copying the setup, uniform, and products of Starbucks but simply adding “dumb” in front of everything, you can mimic the copyrighted material pretty closely.
But when does parody cross over into bold-faced infringement? Well, that’s where consumer confusion gets involved. If Fielder had written “dumb” in front of everything in very small, unreadable print, a consumer may very well be confused into thinking it was an actual Starbucks. If Fielder had taken over an old Starbucks and just replaced the signage, a consumer may mistakenly walk in thinking it was the same shop they had been patronizing for years. But Fielder did neither of these things, not to mention that the place formally presented itself as an “art project” and the coffee served was for free.
Does that mean the comedian was totally in the clear with his use of Starbucks trademarks? That’s harder to answer. Fielder did say in a statement posted to the door that “We are simply using their name and logo for marketing purposes”, not parody purposes. And Starbucks could still bring a suit for trademark dilution or brand tarnishment. But even so, cases on the subject for the past twenty years would indicate a tossup.
To Sue or Not to Sue?
In the end, Starbucks decided not to go after Fielder. This is probably because the shop was shut down by the health department within a few days of its opening, though some legal experts say any lawsuit brought by Starbucks would have been a mistake. Nevertheless, unless you are a comedian yourself and have a great legal team, I wouldn’t count on parody protections saving your business from infringement lawsuits.
You can read more legal analysis of Dumb Starbucks HERE.
You can watch the video of Fielder consulting an unsuspecting attorney on the concept here: