BRAND PROFILE: STARBUCKS W
hen the Dumb Starbucks store opened in Los Angeles in February 2014, many in the media had hoped
for a bang, a David and Goliath battle even, but instead they got a whimper. Featuring the familiar Starbucks siren logo with the combination of
green and white
colours, but with the word ‘Dumb’ included in it, many had seen it as a brazen attempt to infringe the Starbucks brand. Te store was opened by Nathan Fielder, a
US comedian who has a show called Nathan for You broadcast on Comedy Central. While the customers travelled in and the coffee headed out, Starbucks merely said it was looking into what action it could take. In the end, however, the media did not get the battle they had wanted: Dumb Starbucks was shut down by the Los Angeles Department of Public Health for violating hygiene codes. Such carefulness on Starbucks’s part comes with a wealth of
experience in protecting
intellectual property rights over many years and across multiple jurisdictions. Starbucks, which has outlets in countries ranging from Austria to Vietnam, boasts a trademark portfolio that has 17,000 registrations. Kim Teraberry and Batur Oktay, directors of
corporate counsel for Starbucks, and their team are constantly vigilant about protecting the Starbucks brand from infringement.
“We haven’t had a case where somebody has
claimed what they are doing is a parody and we have had to litigate it. Usually people are more interested in trading off our goodwill, and trademark infringement doesn’t matter,” he adds. In the case of Dumb Starbucks, Fielder went
to great lengths to ensure the store would be protected by US parody law. He consulted a lawyer and went public about his actions. For Starbucks, taking legal action against
“We employ 16 people and we coordinate
everything here in the US,” explains Teraberry. “We have four attorneys and we have one
that works on copyright; we all primarily work on trademarks. And we have eight paralegals who split the work between regions and groups across the world,” she says. Jokes about the size of Starbucks are nothing
new. In an episode of Te Simpsons in series nine, Bart is ushered out of a piercing shop because it is about to become a Starbucks store; the image of the mall expands to show a row of Starbucks outlets. Oktay says: “We don’t see that many true
parodies of Starbucks—we see more commercial uses where they’re trying to be funny, but they’re actually not really falling under the legal definition of parody.
infringers is always a complex decision. When you throw in its image as a multinational company, every move it makes is followed by the general public. Oktay says the decision to take legal action
against an alleged infringer is done on a “case-by- case basis”, with one of the most important factors being that the dispute is clearly “winnable”.
Location, location Because Starbucks operates across the world, and protection for brand owners differs enormously in different countries, the location of infringement can oſten determine the company’s likelihood of triumphing in legal action. “It’s going to be a different case depending
on the country, because we have stronger rights in some countries than others, which makes it easier to go aſter infringement,” Oktay says. For instance, in 2002 Sergey Zuikov, a resident in Russia, set up a company called Starbucks
www.worldipreview.com
World Intellectual Property Review May/June 2015
37
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