Snotty Whole Foods, Dumb Starbucks and Yucky McDonalds: Trending Now

aNewDomain.net — Our legal expert, attorney Tom Ewing, watched as the Dumb Starbucks stunt unfolded. Even before it was clear comedian Nathan Fielder used the Dumb Starbucks gag to promote a show, Tom started looking into how easy it could be — legally speaking — for anyone to create a parody big name store to promote his or her own interests. Snotty Whole Foods and Yucky McDonalds, he says, are trending now …

Comedian Nathan Fielder has yet again demonstrated the power of social media. This article explains how someone else will try to do this, too, though they really shouldn’t. But that won’t matter. My bet is that a Yucky McDonald’s and a Snotty Whole Foods are coming soon to a hotspot near you.

But first let’s back up.

Fielder, maker of the now-legendary Pig and the Donkey video viewable below the fold, is the same guy who turned out to be  behind the publicity-grabbing Dumb Starbucks of late.

The fake Starbucks-branded LA coffee shop — replete with Dumb Starbucks logo, Dumb Starbucks cups, a Dumb Starbucks menu modeled on Starbuck’s menu, and even “Dumb Starbucks Norah Jones” music CDs — gave out free coffee to long lines of people throughout the weekend. The store generated a ton of media attention before Fielder revealed it as a stunt created for his Comedy Central show, Nathan for You.

If it was a stunt. After shamelessly leveraging the power of the Starbucks brand as an “art parody” defensible under “Fair Use” parody free speech guidelines, Fielder’s successful Dumb Starbucks hoax generated buzz from every major media outlet, including this one. If Fielder wanted, he could easily start up a legit coffee chain of his own now. And, the comedian says, he just might.

And that’s the point.

Now that everyone knows Fielder’s name — he didn’t even have to say that aliens had landed in Grover’s Mill, New Jersey to get his name recognition — a Fielder’s Coffee Depot in Los Angeles, Grover’s Mill or anywhere else would be slam dunk at this point.

That’s true, as you’ll see in my legal analysis below, regardless of whether Starbucks was in on the original stunt.  (Of course, there are possible consequences from the famous and wealthy trademark rights holder.)

So it’s maybe only a matter of time before someone smart uses the quick open-and-shut parody-store technique to make millions for her own bank account.

Think of the brands that could be lampooned. Whole Foods tops my list, so a Snotty Whole Foods parody would be a natural. Here’s how someone might try to do it in a way that could possibly evade a retaliation of company crippling legal pain.

First, you spend a couple of days copying the Whole Foods logo, trade dress, store layout and so on – but all with your “parody” word “snotty.” On Friday night, late, you put up a sign outside the store space you’ve rented. The sign says “Snotty Whole Foods.” At the same time, you launch Facebook, Twitter, LinkedIn, Pinterest and Google+ accounts and hire a team of bored, shaggy teens to pimp Snotty Whole Foods all over the Internet.

You’re a 24-hour Snotty Whole Foods. Open at midnight and highlight your opening specials: Organic Zanzibari cloves, free range plover’s eggs, albino snake liver pate and low-fat aged tiger’s milk cheese. Everything’s on special.

You’ll have a steady stream of earthy, yoga-bag-carrying professionals curiously sniffing the aisles all weekend long.  Everyone gets to know your store location and product offerings.

Now, before Whole Foods has a chance to rain its leagues of lawyers down upon you, the store morphs. Fast. On Sunday night, you update all the social media sites to say that the new name for the store is Friendly Dave’s Market. You take down the parody Snotty Whole Foods sign. You re-arrange the store’s layout slightly, shave off the sales clerks’ goatees and legs (as applicable) and you install a strict no-dreads policy.  Everything that says “Snotty Whole Foods” is taken out back and buried or burned.

You make the store very un-Whole Foodsy, overnight.

So, what’s Whole Foods, Inc. — the real Whole Foods — going to have done in the meantime to stop you?

In a few days, what could it have done?

The most-aggressive thing the corporation could have done is to file a request for a temporary restraining order against your store. But you were only open with Snotty Whole Foods over the weekend.

That means, they would have had to secure pricey — and local — litigation counsel over the weekend. Provided they found out about your store over the weekend at all.

But say Whole Foods did. That would mean its in-house corporate counsel would have had to contact its favorite outside litigation counsel who, in turn, would have needed to contact its favorite local counsel in the town where you located your weekend-only Snotty Whole Foods.

If you weren’t located in one of the top 10 cities in the U.S., this could take a whole day itself.

Worse still, Whole Foods would need to find a judge — likely a federal judge — who had nothing better to do over the weekend than issue a temporary restraining order (TRO) against a grocery store with a clear parody name.

Since you’ve marked all your materials with an overtly parody name, it’s quite possible a savvy judge might want to hold at least a small hearing with a representative from the parody grocery store — especially if your tweets and YouTube videos mentioned the word “parody.” And of course, you’d have 100s or 1,000s of those by Saturday morning.  Of course, finding a legal representative of the store on short notice over the weekend might take all or most of Sunday.

Or … assume that either Whole Foods corporate didn’t act over the weekend or that the judge wanted to wait until Monday.

By Monday morning, the new Friendly Dave’s that took Snotty Whole Foods’ place is willing to stipulate that it will never, ever use the Whole Foods name again. And because you’ve changed all the names, logos and trade dress affiliating the grocery with Whole Foods, no judge would grant a TRO.

That would be unnecessary.

So now your new store — Friendly Dave’s — is sailing along. You have customers, promotion, everyone is still trying to figure out the trick.

And pretty much the only thing Whole Foods could do is to sue for injuries that it suffered during the weekend in which they were being parodied.

The company could sue for trademark infringement and probably copyright infringement — and then maybe some state law causes of actions related to trade dress, interference with prospective business advantage and unjust enrichment.

But the whole time the company is pondering this lawsuit against you, their lawyers are going to be wondering just how effective the parody defense is going to be and whether the damages they get awarded after bringing the lawsuit will even near or top a percentage of profits for the weekend that Snotty Whole Foods was in full swing.

Doesn’t seem like an impossible gamble, does it? And this is why I suspect that apart from the Comedy Central stunt that we might see more of these in the future.

Fielder’s Dumb Starbucks seemed like a publicity stunt from the beginning. Toby Turner, Fielder’s colleague in comedy, apparently sensed the value of free publicity and joined in the fun.  He wasn’t the only one to spot a clever idea.

The store opened on Friday at 1802 Hillhurst Avenue in Los Angeles, two blocks away from Prospect Studios, which contains the west coast bureau for ABC News.  The store was closed yesterday by the LA County Health Department. Well, yeah, we heard from our social followers that the coffee wasn’t so hot, either.

FWIW: Dumb Starbucks adapted its logo from the logo that Starbucks used from 1992 to 2011…

Starbucks 1990s logo has been the subject of roughly 10 different trademark registrations, each registration claiming the mark for different product areas. U.S. Trademark Registration 1815938 might be the closest match for the use here.

After he revealed the stunt, Fielder claimed on YouTube that U.S. law allowed him to piggyback off Starbucks’ public image — so long as he’s making fun of it.

Maybe.

Check out his video statement below — and his hard copy statement of why his parody would cut muster in court — embedded in place, too.

Check out the Nathan Fielder videos below.

Pig Rescues Donkey, by Nathan Fielder’s Comedy Central TV show, Nathan for You.

Video: Nathan for You, Petting Zoo Hero

Here’s Nathan Fielder’s promotional video, in which he defends the legality of Dumb Starbucks. He recorded it after the store closed, so he won’t have to make good on the coffee promise. The video below, originally posted on the Dumb Starbucks YouTube channel,  is now on the Nathan For You channel with Comedy Central.

Video: Dumb Starbucks YouTube Channel

Okay. So what happens if you shamelessly rip off the good will and corporate identity of a giant corporation — and they decide to extract a pound of flesh? How likely is it that you can escape unscathed?

Is the parody defense as easy as saying “It’s a parody — done?”  Well, not really.

First, you have to consider the legal rights involved. The main legal rights here are copyright and trademark. Both have parody defenses. The copyright parody defense is typically a little easier for defendants than trademark.

In the late 1990s, the rap group 2LiveCrew copied bits of Roy Orbison’s “Pretty Woman” as the opening portion of their rap song.  The case went all the way up to the Supreme Court which affirmed that their use of a generous selection of the Orbison song had been done for purposes of parody and no violation of copyright law was found.

Trademark is a different body of law than copyright. The essence of trademark law arises from assuring the public that a good or service was made by the company that they think it was made by. So, for example, if you buy a can of Coke, you’re expecting the product to be made by the Coca-Cola Bottling Co. If it turns out that the Coke you bought was made by the Elmer T. Goodthwap Beverage Co., it doesn’t matter if it’s the finest can of Coke ever brewed, it’s still a trademark infringement.

So, “consumer confusion” is a big deal in trademark law, and it plays into the parody defense. If consumers thought that the parodied product actually arose from the company that was being parodied the parody defense won’t work. There are other concerns, too, such as trademark dilution — in other words, the activity harmed the mark itself. Deciding whether a mark has been harmed can be tricky.

Dumb Starbucks distributed a FAQ that is provided below. In the FAQ, they explained that Dumb Starbucks wasn’t really a “coffee shop” but an “art gallery,” and the coffee should be considered “art.” This was essentially their fuller argument behind their parody defense.

Proving the parody defense can be difficult. In the late 1980s, an artist began selling a line of coffee mugs, buttons, caps, sweatshirts and T-shirts bearing the phrase “Mutant of Omaha,” which was a play on words of the “Mutual of Omaha” company and the Mutual of Omaha Wild Kingdom television program. Mutual of Omaha sued for trademark infringement, and the parody defense failed here because it was insufficient to overcome the consumer confusion aspects.

Even when a court accepts that a use has some parody, the court may still find that the defendant’s actions are more for commercial reasons than for parody reasons. In the early 1990s, a Washington company began selling T-shirts bearing the phrase “Hard Rain” in a style resembling that of the Hard Rock Café logo. The court was more-or-less persuaded about the parody aspect but still found for trademark infringement because of the commercial nature of the defendant’s actions.

One of the more-famous cases for similar trademark infringement involved the adult film Debbie Does Dallas. The Dallas Cowboy Cheerleaders organization obtained an injunction against an adult theater in New York City.

Of course, even if trademark infringement is found, then there is the question of damages. Since Dumb Starbucks simply gave the coffee away, it wouldn’t be helpful to use their profits as the basis for damages since the profits were zero. In fact, that’s an argument that Dumb Starbucks would likely use. Similarly, Starbucks could try to quantify the amount of harm that their trademark had suffered, but this, too, would likely be difficult because the mark is so famous that it could be extremely difficult to quantify the value of the harm caused by one weekend of infringement.  Starbucks’ best damages argument might be to seek compensation for the value of the prank to Fielder personally and/or Comedy Central, but that’s a more complicated argument that might well involve an expensive battle of valuation experts.

Starbucks has claimed that it is not involved in the Dumb Starbucks prank. This sounds logical, as corporate types are often cautious. On the other hand, I sort of wonder who made Fielder’s Dumb Starbucks cups, cup holders, napkins, exterior sign, etc.  Anytime I ever wandered into a FedEx-Kinkos and asked them to copy something that superficially appeared to be from someone else, they always said “No way. Unless we have a written statement from the rights owner.”

But let’s just suppose that Starbucks was in on the gag with Fielder. The fact that he was giving away the coffee could well help him avoid any sort of consumer fraud claims from the folks who received the coffee. After all, they didn’t have to pay for the coffee.

Disclaimer: This article does not suggest or in any way advocate copying the trademarks associated with famous brands or their respective copyrights.  If you really want to do something this crazy, please talk to an intellectual property attorney first, particularly a grumpy one with a limited sense of humor.

Here’s a funny story from Feb. 10, 2014, as folks tried to figure out Dumb Starbucks’ defense of itself as a so-called “art gallery.” In it, the host analyzes the variety of other parody stores possible, like Gay Walmart.

Video: SourceFed YouTube Channel

Here’s the FAQ Nathan Fielder posted as his defense of the idea, before he revealed Dumb Starbucks was a stunt.

How Was This Legal: Dumb Starbucks FAQ — anewdomain analysis

For aNewDomain.net, I’m Tom Ewing.

Based in the U.S. and Europe, Tom Ewing is an intellectual property strategist and attorney who advises the United Nations agency WIPO on patent issues, lawsuits and strategy. He also is a senior editor and a board member at aNewDomain.net.