A typical comedian would not devote an episode of his TV show to issues of trademark law, but Nathan Fielder is not a typical comedian.
Most people in the U.S. familiar with the Canadian comedian’s work know him primarily from his Comedy Central TV show, “Nathan for You.” With his deadpan humor and impeccable delivery, it is hard to understand why Fielder is not more widely known. However, his relative obscurity lends itself to making his show such a success. On “Nathan for You,” Fielder uses his supposed business expertise to offer advice to actual struggling businesses. Since Fielder is not a widely-recognized comedian, those receiving his help believe he is genuine and go along with his absurd and outlandish ideas. Only the audience is aware that the whole experience is part of a comedic bit.
In February of 2014, Fielder’s work not only caught the attention of the media world but of the legal community as well. In order to help a struggling Los Angeles coffee shop owner, Fielder suggests rebranding the store as “Dumb Starbucks.” The concept? The shop would look exactly like a real Starbucks, except that every item was preceded by the word “dumb,” from “dumb espresso” and “dumb tea” all the way to “dumb Nora Jones” CDs on sale. While the plan succeeded in drumming up huge crowds that came to see the store and get coffee, a bulk of the episode was dedicated to Fielder getting around the obvious legal issue of infringing on the real Starbucks’ trademark. To accomplish this, Fielder explained that he was permitted to use the Starbucks’ trademark because he was parodying Starbucks. Though Starbucks never chose to sue, much has been written on whether Dumb Starbucks could actually win in court.
According to the United States Patent and Trademark Office, “a trademark includes any word, name, symbol, or device, or any combination used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name.” Businesses rely on trademarks in order to establish goodwill and customers rely on trademarks in order to quickly identify products as coming from a reputable source. An overview of trademark law from Harvard explains that “In order to serve as a trademark, a mark must be distinctive—that is, it must be capable of identifying the source of a particular good.” In Starbucks’ case, the unique Starbucks logo on top of the store and on the cups allows customers to know that they are buying the same Starbucks coffee that they have come to love and depend on.
One of the main grounds on which a trademark holder can sue is trademark infringement. The court explained that the standard for trademark infringement is that there must be a “likelihood for confusion” by customers. For example, had Fielder simply stuck the regular Starbucks logo onto the storefront and every item inside the store, customers would not know that they were entering a fake Starbucks. However, it is likely that no such confusion existed in the way Fielder designed the store. For starters, Fielder had a very prominently displayed sheet with Frequently Asked Questions that stated explicitly that “Dumb Starbucks is not affiliated in any way with Starbucks Corporation.” Additionally, as one Freakonomics article points out, Dumb Starbucks would not confuse anyone because “literally everything had the word ‘dumb’ appended to it” and the coffee was free, which never occurs at a real Starbucks.
While Starbucks probably could not show likelihood of confusion to win on infringement, they could potentially have sued for trademark dilution. The law states that trademark dilution occurs if an unauthorized use of a trademark would cause “blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.” Blurring occurs when the trademark is not as strong because it becomes identified with unrelated goods, while tarnishment occurs when unauthorized use of the trademark will cast the real trademark in an unflattering light. Starbucks could have claimed that Dumb Starbucks was tarnishing their brand. Indeed, The Guardian reported that Starbucks stated, “We are evaluating next steps and while we appreciate the humor, they cannot use our name, which is a protected trademark.”
However, Fielder’s main legal argument was that he was protected from claims of infringement or dilution under the parody doctrine. According to the FAQ’s, “by adding the word ‘dumb,’ we are technically ‘making fun’ of Starbucks, which allows us to use their trademarks under a law known as ‘fair use.’ Fair use is a doctrine that permits use of copyrighted material in a parodical work without permission from the rights holder.” While it is true that parodying is a potential defense against infringement and dilution, it is unclear if adding the word “dumb” to everything in the store would solve Fielder’s potential legal problems. As some practitioners have pointed out, courts have lacked consensus in analyzing what exactly is considered a legal parody, but there are certain characteristics that have generally been held to be non-infringing. Firstly, the use of the trademark must actually poke fun at the trademark holder. Secondly, if the use of the trademark is for noncommercial use, it is more likely to be deemed a parody. Finally, the use of the trademark should not consist of an unnecessarily scandalous modification of the trademark. So would adding the word “dumb” be enough as Fielder contended?
Looking at Dumb Starbucks, it is possible to mount arguments from both sides. While one could argue that Fielder’s purpose in appending “dumb” to everything was to make fun of Starbucks, the International Business Times points out that the FAQ sheet claims that the principle purpose of the store is for marketing as opposed to a commentary on Starbucks itself. However, it is hard to say that this was a scandalous use of the trademark compared to other cases that were much more salacious in nature. Additionally, as The Guardian argued, since Starbucks itself stated that Dumb Starbucks is “obviously” not a real Starbucks, there would be little confusion or reason to think that Dumb Starbucks had anything to do with the real company.
Though Dumb Starbucks existed for only a few days before the Los Angeles County Board of Health shut it down for operating without a license, it lasted long enough to present very interesting questions in trademark law. Since Starbucks never actually sued Fielder, we can only speculate how a court may have ruled in this case, but it seems it could have gone either way depending on the court. What is clear, however, is that Dumb Starbucks was a brilliantly crafted bit by Nathan Fielder and was anything but dumb.
Joshua Polevoy is a J.D. candidate, 2018, at NYU School of Law.