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The escalating battle between Starbucks Corporation and cartoonist Kieron Dwyer had both sides declaring victory last week after attorneys presented oral arguments before U.S. District Judge Maxine M. Chesney. The arguments concerned the terms of a preliminary injunction issued to prevent Dwyer from displaying his parody of the Starbucks logo. While Chesney found Dwyer’s satire to be protected from Starbucks’ claims of copyright and trademark infringement, she indicated that her forthcoming order will preclude him from selling material emblazoned with his parody logo. “The judge essentially ruled in my favor,” said Dwyer from his San Francisco home. “She recognized what I was doing was a parody.” Starbucks obtained a preliminary injunction last month when it filed suit to prevent Dwyer from displaying his parody of the company’s well-known “mermaid” logo. The parody adds nipples and a navel to the mermaid and changes the words “Starbucks Coffee” to “Consumer Whore.” The judge found the “Consumer Whore” design to be protected against Starbucks’ copyright infringement claim because it fell under the category of “fair use.” The defense of fair use allows the non-consensual copying of copyrighted works for certain purposes, such as criticism and comment. Starbucks’ trademark infringement argument was similarly dismissed because Chesney found Dwyer’s parody to be distinct enough to eliminate the likelihood that it would be confused with the actual Starbucks logo. Chesney’s only problem with Dwyer’s design came from the fact he was selling it on items such as t-shirts and bumper stickers. After weighing Dwyer’s free speech rights against the intellectual property rights Starbucks has in its logo, the judge found that the sale by Dwyer of his parody amounted to a dilution of the impact of Starbucks’ trademark in the marketplace. Her injunction, therefore, will prevent Dwyer from engaging in such selling. “We brought this case to prevent Mr. Dwyer from using an insulting or confusing version of our logo for his profit and the court’s decision confirmed that he can’t do that,” said Starbucks’ attorney John C. Rawls, of the Los Angeles office of Jones, Day, Reavis & Pogue. “We are very pleased with the court’s decision.” Dwyer’s attorney, Andrew M. Gold, a partner at San Francisco’s Bogatin, Corman & Gold, argued that the sale of Dwyer’s parody logo should also be considered protected speech. He maintained that the sale of articles containing what would normally be considered free speech should not change the fact that such speech is protected by the Constitution. “I tried to argue that the T-shirts were wearable speech,” said Gold. “Just because it is written on 100% cotton doesn’t mean it’s not speech.” The judge ordered both sides to negotiate the terms of the injunction based on her rulings from the bench. The attorneys are then to present her with a written brief upon which she will base her order. A stumbling block in the negotiations so far has been whether Dwyer’s posting of the parody on the cover of a comic book for sale should be included among the material precluded from distribution on trademark dilution grounds. “The cover of a comic book is not a T-shirt,” said Gold. “The comic book is bought for its content.” Attorneys for Starbucks did not share Gold’s view that comic books should be considered any differently from the other articles of commerce upon which Dwyer put his parody logo. “We believe from what the judge said from the bench that Mr. Dwyer can’t make any further commercial use of the logo,” said Rawls. “That includes the comic book.” Dwyer, for his part, feels somewhat vindicated by Starbucks’ steadfast position that no item of sale should be included as protected speech. “It came down to them admitting that their main objection was that I was making money by selling products with my design,” he said. “They sort of proved what I was contending with my image.” Chesney will review the materials submitted by both sides this week. She will then issue a formal injunction based on the findings she articulated from the bench.

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