Starbucks is at it again. Last week it filed an intellectual property rights lawsuit against the owner of a Thai street vendor and called for his arrest. This is one year after Damrong Maslae ignored the company’s cease-and-desist letter to stop using their Bangkok coffee stall’s “Starbung Coffee” logo, on the basis of trademark violation.
Yes, the basic design template, typography and color scheme are the same as the world-famous insignia. But Maslae points out that his shows a man with a skullcap who’s pouring coffee and shooting a victory sign, not that mermaid with her fins in the air. And that his star also has a moon. And green is the color of Islam. And: he told the Guardian that he’ll “fight them to the end.” Uh-huh. Good luck with that.
Maslae appears to be on much shakier ground than another, well publicized Starbucks legal kerfuffle from back in 2000. This was when comics artist Kieron Dwyer reworked the mermaid logo art for his self-published Lowest Common Denominator and substituted “Consumer Whore” for the brand name. He also sold T-shirts, mugs and stickers with his art on his website. The company was not pleased. It sued him for both copyright and trademark infringement.
Here’s how Dwyer describes his situation back then: “Given that my adult humor comic series was intended as a modern day offspring to 1970s era National Lampoon and Mad, I felt that my parody logo lampooning both Starbucks and the consumers who helped build them into the humorless global empire they became was well within the defensible realm of parody and social satire when I chose to run the logo on the cover of my first full issue in 1999.”
Ultimately, with help from the Comic Book Legal Defense Fund and an intellectual property lawyer who worked pro bono, Dwyer was found innocent of copyright infringement. This means he can use and distribute his creation. However, because of the word “whore” he was found guilty of “tarnishing” the mark, meaning he can’t profit from it by using it on products for sale.
Marc H. Greenberg, a law professor, practicing attorney and lifelong comics fan, explains: “This case illustrates the problem when a graphic artist makes fun of a well-known trademark. Dwyer was found innocent of infringement because his adaptation of the iconic Starbucks logo was deemed a parody. This is probably the right decision, since it’s intended to poke fun at the company. However, he ran afoul of a relatively recent expansion of trademark law.
“Traditionally, in order to prove trademark infringement, you had to show a likelihood of confusion in the marketplace. No one looking at Dwyer’s illustration would think it was done by Starbucks or was linked in any way to the company. Rather, the graphic pokes fun at the company, in a distinctly disparaging way.
“However, free speech doesn’t necessarily allow you to make a disparaging use of a registered trademark of a well-known company. Trademark law has been amended in recent years to include a different claim, a claim of trademark dilution. A trademark is unlawfully diluted by tarnishment when the use made by the alleged violator is one which creates initial interest confusion in the public, and which is followed by an awareness that the violator’s point is to disparage the mark. Given this standard, the judge’s finding—that Dwyer’s use in this instance met the tarnishment definition—seems valid.”
Dwyer has a different perspective: “Honestly, I feel the court would have ultimately ruled in my favor had I had the same deep pockets of the megalithic coffee chain. But there was no way for me to fight the case all the way to the Supreme Court.
“When I created the logo, I had no intention of becoming a poster boy for any cause. I was just poking fun at myself and others who were hopelessly addicted to the crappy products Starbucks makes. It seemed ludicrous to me that they went past the reasonable step of a cease and desist letter and straight to a lawsuit. I had to wonder what they feared about a lone cartoonist working out his home and making comic books that a few thousand people would see. In fact, by suing me and backing me in a corner they actually made the case a high profile one and drew much more attention to my image than it would have ever had before that. It was ironic, odd and kind of laughable.
“I’ve never had another of their crappy products since, and I urge all thinking people to find an alternative.”
And Greenberg sums up the story with this bit of advice: “It’s a cautionary tale for graphic artists who might consider using popular trademarks in their work.”