November 30, 2000
Cartoonist Kieron Dwyer Sued By Starbucks
At a meeting during Comic-Con International, the Comic Book Legal Defense Fund Board of Directors voted to support cartoonist Kieron Dwyer's defense of a suit brought against him by the Starbucks Corporation (Starbucks v. Dwyer, C00 1499). Starbucks is suing Dwyer for copyright and trademark infringement of its "mermaid" logo, a parody of which appeared on the cover of Dwyer's Lowest Common Denominator #0. Dwyer contends that his drawing is a legitimate parody and, as such, protected by the First Amendment.
In addition to LCD #0, Dwyer also used the parody on t-shirts, stickers, and coffee mugs, which he sold at comic conventions and through his Lowest Common Denominator website (www.lcdcomic.com). It's through the web that Starbucks attorneys discovered Dwyer's parody. Shortly afterwards, Starbucks filed for a restraining order which would have compelled Dwyer to surrender all items bearing the parody logo to the custody of the court. Starbucks also demanded that Dwyer remove the parody logo from his website. Curiously, their initial brief did not mention Dwyer's comic book at all-only the ancillary merchandise that made use of LCD's cover.
The Internet has spawned a new specialty in the practice of intellectual property law, putting legions of attorneys on the web in search of copyright and trademark infractions. It's a booming business that generates many thousands of billable hours to corporate clients around the world. When what appears to be an unlawful use of a client's copyrighted material is discovered, these attorneys typically fire off a "cease and desist" letter demanding that the offending material or product be removed. At that point, the content provider or webmaster can choose to comply with the request, negotiate a settlement, or go to court.
In this case, however, Starbucks attorneys made no effort to contact Dwyer prior to slapping him with a lawsuit. A bike messenger served Dwyer with Starbucks' motion for a temporary restraining order on a Saturday afternoon. Dwyer had just three days to prepare for a court date. Without legal counsel to register his opposition to the suit, the restraining order would have gone into effect automatically, and Dwyer would have had no recourse at all.
Fortunately, Dwyer did have access to an attorney to combat Starbucks' hardball tactics. Before publishing LCD #0, Dwyer had run the cover past Andy Gold, a San Francisco intellectual property lawyer who does pro bono work with California Lawyers for the Arts. LCA is a non-profit organization that provides legal advice to graphic artists, and they referred Dwyer to Gold. In Gold's opinion, Dwyer's parody of the mermaid logo was a social satire every bit as legitimate as an editorial cartoon. He advised Dwyer that he might receive a cease and desist letter, but that they could deal with that when the time came. Given LCD #0's modest print run and the small scale of Dwyer's other merchandising, neither Gold nor Dwyer had any reason to expect the reprisals that followed.
To say Gold was surprised when Dwyer showed him Starbucks' suit is an understatement. "It's like carpet-bombing an anthill," said Gold. "Clearly, they expected Kieron to roll over and play dead." The fact that Starbucks' suit seeks attorneys fees in addition to all revenues generated by the LCD cover is particularly ridiculous, according to Gold. "[Their lawyers] must have billed Starbucks twenty or thirty thousand dollars just preparing the lawsuit, when all they had to do was pick up the phone and call Kieron."
At the hearing to consider Starbucks' motion for a preliminary injunction, Gold asserted that Dwyer's image did not infringe on the company's copyright, because it meets the standards of parody. Unlike libel or slander, parody is protected speech, and presiding judge Maxine Chesney seemed to agree that Dwyer's image constituted a legitimate parody. In response to questioning by Judge Chesney, Starbucks' attorney was forced to admit that Dwyer would be within his First Amendment rights to place the parody logo on a billboard. Finding that Starbucks was unlikely to prevail on the copyright portion of its lawsuit, Judge Chesney later ruled that Dwyer was free to display the parody on his website.
Gold also argued that Dwyer's parody does not violate Starbucks' trademark, because there was no likelihood that consumers would confuse Dwyer's merchandise with Starbucks products. Dwyer does not manufacture or sell coffee and as such is not a commercial competitor of Starbucks. Further, no one would think that the "Consumer Whore" coffee mug was a product of Starbucks because the mermaid logo and Dwyer's parody are too dissimilar.
Starbucks charges that the t-shirts, stickers, and other images on Dwyer's website render their logo "sexually offensive to a substantial portion of the public" and tarnish the coffee seller's trademark by associating it "with conduct that many consumers will find lewd, immoral, and unacceptable." Starbucks cited a string of cases that dealt with "tarnishment" of famous copyrights, including the "Genital Electric" t-shirts that were found to damage the General Electric trademark; the "Buttwiser" t-shirts, which a court found tarnished the Anheuser-Busch trademark; and the "Gucci Goo" diaper bags, which degraded the marks of the fashion house Gucci.
While Dwyer does not use Starbucks' name or a pun on its name in his parody, Judge Chesney did find that Dwyer's was "confusingly similar" to the mermaid logo, and that the phrase "consumer whore" could be considered offensive to some and thereby constitute a tarnishment of the Starbucks mark. She further found that Dwyer's sale of merchandise bearing this "confusingly similar" logo constituted a trademark infringement.
In other words, while Judge Chesney agreed that Dwyer's image was a legitimate parody in and of itself, and thereby protected by the First Amendment, the sale of items bearing that image constituted an infringement on Starbucks' trademark. Dwyer cannot profit by this image, because the only reason that people would buy the t-shirt, mugs, or stickers was because they bore a logo "confusingly similar" to Starbucks'. The temporary restraining order she eventually signed now bars Dwyer from selling any such merchandise.
Interestingly, the restraining order explicitly names comic books among the other items Starbucks originally specified in its suit. Somewhere along the way, the LCD comic was added. But consumers buy comic books, unlike t-shirts or coffee mugs, for more than a single image, and certainly for more than what's on the cover. LCD #0 is a comic magazine, featuring a number of strips and stories. In categorizing Dwyer's comic along with the t-shirts and coffee mugs, the judge's ruling reduces LCD's status from a medium to a commodity.
In electing to help fund Dwyer's defense, the CBLDF is standing up for comics as media. While it may be that a t-shirt bearing Dwyer's parody logo is illegal under trademark law, we do not believe that a magazine cover can be-even if that magazine is a comic. When he drew the cover to LCD #0, Dwyer was doing his job as a cartoonist and a satirist. That Starbucks would go to such lengths to silence what is essentially a political cartoon is particularly galling. Fortunately, Dwyer and the comics community do not have to roll over and accept the world according to Starbucks. A trial date has not yet been set. Stay tuned for more developments in this case.
The Comic Book Legal Defense Fund is a non-profit, tax-exempt organization dedicated to the preservation of First Amendment rights for creators and retailers in the comics community. Donations can always be sent directly to the Comic Book Legal Defense Fund at P.O. Box 693, Northampton, MA 01061.
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