Get Off My Tail
In the dynamic world of business and branding, the clash between trademark rights and free speech is a frequent battleground. At the heart of this conflict lies the concept of trademark fair use, a legal doctrine that aims to strike a delicate balance between protecting the rights of trademark owners and safeguarding the public's right to use language and symbols in expressive and informational ways. The fight between a small Louisiana based coffee shop, Mountains & Mermaids, and Starbucks raises the question of how far trademark fair use can really go.
About five years ago, Mountains & Mermaids and Starbucks got into a dispute over the trademark SIREN’S BREW. Mountains & Mermaids filed an application to register the mark. Starbucks opposed and argued it was too confusing for consumers given that Starbucks logo is a siren. The USPTO sided with Starbucks and refused to register SIREN’S BREW for Mountains & Mermaids. Starbucks was able to register the trademark SIREN’S BREW though and has recently filed a trademark infringement action in federal court against Mountains & Mermaids.
Mountains & Mermaids is a spirited company. One look at their website tells you that they like to make statements with their logos. One of their logos says “I like my coffee black and my tea in the harbor”! Last year, while its fight with Starbucks was still brewing, Mountains & Mermaids started selling coffee and merchandise with a graphic showing a black business shoe pushing what looks like a Starbucks cup onto a mermaid’s tail with the words “Get Off My Tail: save small businesses from corporate greed”. The image is parodic and clearly a reference to how poorly Mountains & Mermaids regards Starbucks’ conduct.
There was a time that this parodic reference might have been considered fair use, but last year the Supreme Court clarified the standard for trademark fair use and, under the new test, it's less than clear whether this use would be fair use.
Fair use can come in two forms:
Descriptive Fair Use: This occurs when a trademark is used descriptively to refer to the actual product or service it represents. For example, a product review on Amazon that refers to the brand name of the product.
Nominative Fair Use: Nominative fair use occurs when a trademark is used to identify the trademark owner or its products or services. This blog post is a good example of nominative fair use.
The use of the “Get Off My Tail” image may be nominative fair use because the coffee cup and foot are intended to refer to Starbucks. Whether the “Get Off My Tail” image is trademark infringement or fair use is a close call though. Under the standards articulated by the Supreme Court in Jack Daniel’s Properties, Inc. v. VIP Products LLC, whether the image is fair use will come down to whether consumers would view the image as indicating the source of the goods. In other words, when a consumer sees the coffee with the image, do they think that the image indicates the source of the coffee.
Here is why this is a close call. On the one hand, the Mountains & Mermaids logo is nowhere to be found on the packaging and the use is commercial (it is being used to sell everything from coffee to hoodies). The only logo on the products is the “Get Off My Tail” image, which may lead consumers to think that it is indicative of the source. On the other hand, the reference to Starbucks in the image is not used to identify the source of the goods. If anything, the source looks like a company called “Get Off My Tail”.
One may think this is a silly analysis because no reasonable consumer would see the image and think the coffee was from Starbucks. In other words, even if the “Get Off My Tail” image was not fair use, it still shouldn’t be trademark infringement because there is no likelihood of confusion. Taking this approach to the analysis, however, ignores the idea that Starbucks may very well have a famous mark and could argue that the “Get Off My Tail” image was tarnishing its famous brand.
I don’t think it is unusual for companies to want to make a statement, especially a funny statement, about their intellectual property disputes when they think another company is abusing their intellectual property rights. But, that doesn’t mean that companies should take on the risk of a gray area in intellectual property law. To limit their risk, Mountains & Mermaids could add the Mountains & Mermaid logo to their product (frankly, the logo should be added to all their products anyway). If Mountains & Mermaids wanted to avoid any risk, they could sell through the inventory they have and stop selling merchandise with this design. Instead, they could keep the design on their website and in particular on their page titled, “Our Battle With Starbucks”. This is a page of the Mountains & Mermaids website that contains updates about its fight with Starbucks and is clearly fair use. If they wanted to, they could keep the phrase “Get Off My Tail” as a brand and simply redesign the image that goes along with it.
Disclaimer: attorney advertisement. This is not legal advice and is an informative post.