IP rights are at the centre of Starbucks’ dispute with union

Intellectual Property /
John Simpson
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By Tony Poland, LegalMatters Staff • Recent lawsuits concerning a pro-Palestine social media post by Starbucks union organizers is an example of how intellectual property law often finds its way into larger disputes “as a collateral issue,” says Toronto intellectual property lawyer John Simpson.

Starbucks and the Starbucks Workers Union are countersuing after the union expressed “solidarity with Palestine” in a post on X (formerly known as Twitter). The post has led to threats against employees, property damage and calls for a boycott of Starbucks, the company states.

Simpson, principal of IP boutique Shift Law Professional Corporation, says he is not surprised intellectual property rights are being asserted by Starbucks. 

“Intellectual property law often finds its way into the issues we read about in the news that seem to have little to do with intellectual property,” he tells LegalMattersCanada.ca. “It is part of what makes it fun to be an intellectual property lawyer.

“Just wait for it when a political campaign kicks off. In a matter of weeks, there will be someone suing someone else and it will have an intellectual property aspect to it. For example, a candidate will face a lawsuit for using songs at some campaign event,” adds Simpson. “I see the Starbucks case much like many others where the intellectual property aspect is more of a collateral issue than the central issue. But that is what gets litigated.” 

Social media statement

Starbucks says Workers United posted a statement at the beginning of October “with an image of a bulldozer tearing down a part of the Israel and Gaza border, reflecting their support for violence perpetrated by Hamas.”

“Unfortunately, as violence against the innocent in the region continues to escalate, some people are mistakenly tying these remarks to us, because Workers United and its affiliates and members continue to use our name, logo and intellectual property,” according to a statement on the coffee giant’s website. “Starbucks unequivocally condemns acts of terrorism, hate and violence, and we strongly disagree with the views expressed by Workers United, including its local affiliates, union organizers and those who identify as members of ‘Starbucks Workers United’ – none of these groups speak for Starbucks Coffee Company and do not represent our company’s views, positions, or beliefs. Their words and actions belong to them, and them alone.”

“The ongoing confusion from this misinformation has sadly led directly to incidents where angry, hurt customers are confronting partners in our stores and sending graphic and violent messages to partners in our Customer Contact Center (CCC),” the statement adds. “Our retail leaders and support teams are prioritizing partner care and safety, working to ensure every store and the CCC feels supported in de-escalating these situations.”

Starbucks demanded the union stop using its name, logo and intellectual property and issue a correction. When the union refused, the company filed a lawsuit in U.S. federal court claiming trademark infringement.

Union filed its own lawsuit

The union filed its own lawsuit claiming Starbucks “defamed Workers United through the company’s public statements asserting that Workers United supports ‘terrorism, hate and violence.’” 

“The company’s statements are a transparent effort to bolster its illegal anti-union campaign by falsely attacking the union’s reputation with workers and the public,” according to the lawsuit.

The union states that it has no interest in aligning its identity with Starbucks.  

“Workers United has no interest in engendering confusion between itself and the corporation whose workers it represents. Particularly given Starbucks’ egregious anti-union campaign, Workers United does not want workers to fear that the Union is somehow controlled or sponsored by the company,” according to the statement of claim. 

Looking at the case through a purely trademark lens, Simpson says he believes it would be difficult for Starbucks to establish that the union is using any Starbucks trademark.

The company claims the union is using a similar circular green-and-white logo to the one they have made famous.

‘Use is a very technical term in trademark law’

“However, use is a very technical term in trademark law. You are only liable for trademark infringement if you are using the trademark to distinguish yourself as a source of goods or services,” Simpson says. “That is not being done here. 

 “While I don’t think there would be trademark infringement, there might be copyright infringement because of the display of logo that closely resembles the Starbucks logo.”

He points to a similar case in Canada, Compagnie Générale des Établissements Michelin-Michelin & Cie v. National Automobile, Aerospace, Transportation and General Workers Union of Canada. 

In its 1994 union drive, the Canadian Auto Workers (CAW) distributed leaflets depicting the Michelin Man (also known as Bidendum) standing cross-armed with one foot raised over the head of a worker.

Michelin filed a lawsuit alleging trademark and copyright infringement. The Federal Court rejected the trademark claim but found the CAW had infringed on the company’s copyright to the Bidendum character.

Trademark was not used as a trademark

“The CAW were not displaying Bidendum as a source of any goods or services,” says Simpson. “Their use in the leaflets was found not to be trademark infringement because they were not competing with Michelin in a commercial sense. Simply stated, the CAW was not using Michelin’s trademarks as trademarks.

“A parallel exists here with Starbucks,” he adds. “The company is getting complaints from the public who had seen the Starbucks Workers United union logo and pro-Palestine posting on social media. The association is not something that Starbucks wants.”

“Intellectual property rights often get asserted in disputes about other things,” he says. “This case strikes me as an example of a dispute that is not really about intellectual property but is one where intellectual property becomes a proxy for some other issue that is harder to litigate.”