Dumb Starbucks impressed and gathered quite a lot of customers for free coffee on the day of their opening in Los Angeles last week. They ran out of coffee eventually but the publicity continued! Oh, they aren’t associated with the REAL Starbucks and even admit that they consider them as models. Naturally, Starbucks wasn’t too happy with their trademark being infringed.

After a lot on anticipation, Nathan Fielder of Comedy Central claimed that the whole act was a part of his series on the channel which creates public hoaxes like this one. However, with the response he has received, he said that he plans to take this forward. Now we are unaware of whether this is also a part of the joke or not.

While the Dumb Starbucks shop was eventually shut down by the Health Department, the real issue that has been discussed extensively on social media and lawyers groups has been that of trademark infringement and fair use.

Dumb Starbucks was trying to wiggle their way out by claiming that the whole act falls under fair use because it was merely a parody and that the coffee shop should be treated as an art gallery and the act of serving coffee as an art. The position of US law on parody is within the scope of fair use but does this scenario fall under fair use? Prefixing the term Dumb before a registered trademark and all the food and beverages being offered by them (which is identical to the ones offered by Starbucks) doesn’t at the outset seem like a falling under the scope of fair use. The law in the US allows “fair use” as a defence in trademark and copyright violations (with certain restrictions and tests of course) since it stems from their freedom of speech.

Hypothetically how would such a situation work out in India?

While in India citizens do have a right to freedom of expression under the constitution (again with restrictions) the defence of fair use has been accepted only under the law of copyright and not for trademarks. Even within Copyright we don’t have any law relating to parodies and Section 52 of the Copyright Act only deals with reviews, criticism and the like. Recently All India Backchod, a group of comedians made a parody of a Bollywood movie which was removed from YouTube on the basis of copyright infringement. Fair use as a defence in Copyright is valid but with trademarks barring a few cases, where the unauthorized use of a trademark “without due cause” has been interpreted to include parodies there is a lot left to the interpretation of the law. So does that mean Dumb Starbucks would not have worked in India? Probably not because the matter would have had to have been decided by a Court of law on the basis on infringement and it would have been a stretch to interpret that the unauthorized use was with due cause.

Everyday we witness new intellectual property issues and enforcement of these rights is becoming quite a task of owners.  In this case Starbucks sat back and let the Law (not through the typical trademark infringement route) take its course. Trademark owners need to be flexible in their approach on trying to stop infringers, and use every possible solution that the law affords.

This article has been authored by Nikita, an IP Law practitioner.