FAIRHAVEN – A golf-centric social media page had a hit on its hands when it started peddling hats mimicking the logo of Titleist, the golf equipment and apparel company. Only their stuff didn’t say Titleist—the merchandise replaced the brand name with a lewd anatomical reference that also starts with a T. Followers cackled at the joke and bought up the snapbacks, beanies, and beer koozies.
Titleist wasn’t laughing. Its parent company, Acushnet Co., sued the seller, I Made Bogey, for unfair competition, trademark infringement and dilution.
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It’s the latest effort by a well-known clothing brand to stop parody products from flooding the marketplace. Such lawsuits are far from rare, but the successful ones are. Companies often choose to settle out of court in a bid to quietly disappear offending products, but also because strong legal protections make trial risky. Parodies are commonly viewed as speech and even part of the political discourse. I Made Bogey’s products, one lawyer said, could be considered social commentary—a send-up of a sport that is traditionally associated with wealthy white men.
Parody logos and phrases became trendy around 2013, when streetwear brands poking fun at big luxury labels rose to fashion prominence. Céline was replaced with Féline, and Fendi morphed into Trendi. Celebrities got on board, as Rihanna donned a “Homiés” (not Hermés) shirt. Even some designers at the labels being ridiculed couldn’t help themselves, as Balmain’s Olivier Rousteing posted a photo of himself in a “Ballin’” sweatshirt.
Yet blowback from some quarters came swiftly nevertheless. Clothing makers have long battled those who dared subvert their precious brands. Big labels will often send cease-and-desist letters, and it usually stops there. Cartiér wasn’t pleased with a Parsons School of Design student who created a profane version of its logo and stuck it on hats—one even ended up atop the head of supermodel Cara Delevingne. He acquiesced, rather than risk a legal war with the 170-year-old jewelry maker.
These situations do occasionally escalate. Louis Vuitton took a company called Haute Diggity Dog to court over a “Chewy Vuiton” plush chew toy. In 2007, a federal appeals court threw out the lawsuit, rejecting claims that shoppers may confuse the toy with something made by the French fashion house, or that the toy may dilute Louis Vuitton’s trademark. As that saga ended, a new one began: The North Face began a three-year effort to get rid of The South Butt, a parody brand that flipped the outerwear company’s logo and spoofed its “Never Stop Exploring” tagline with the catchphrase “Never Stop Relaxing.” The parties settled in 2010 and The South Butt disappeared—but not after an attempt to push forward under a new moniker: The Butt Face. That also died when a court ordered it to shut down its website and surrender all merchandise.
While the craze for cheeky logos has faded of late, fights over mocking designs continue. Chanel and Saint Laurent have fought parody tee label What About Yves, which sold designs including a sweatshirt mashing up Chanel’s double-C logo with the Ghostbusters mascot, and a plain black shirt with “Ain’t Laurent Without Yves” emblazoned on the front. Both lawsuits were settled.
“A lot of these just go away,” said Donna Tobin, a trademark lawyer at Frankfurt Kurnit Klein & Selz. “They find it’s not worth fighting a very big company.”
Between golf balls, clubs, and gear, Titleist’s annual sales come in around the billion-dollar mark, according to the complaint filed in Boston federal court by Acushnet.
Acushnet said it first sent a letter to I Made Bogey in early April. An attorney for I Made Bogey, which promotes its merchandise through a golf-focused Facebook page with about 30,000 followers, responded by disputing the infringement allegations and stating it would continue selling the products. Benjamin Russell, identified in court papers as the operator of I Made Bogey, didn’t return requests for comment. Titleist declined to comment.
Many of Titleist’s products feature its brand name written in a distinct scripted font. A scripted font was also used on products sold by I Made Bogey. I Made Bogey sold hats, golf towels, sunglasses, ball markers, tees, and many other products with crude variations on the “Titleist” name.
I Made Bogey “intentionally creates an unwholesome and undesirable association—one involving a patently offensive and obscene reference to sexual organs and sexual activity,” Acushnet said in its lawsuit, adding that the play on its trademarked brand “tarnishes plaintiff’s Titleist brand identity and reputation.”
In the suit, Titleist claims both trademark infringement and dilution. For dilution to stick, it must show that I Made Bogey’s hats tarnish Titleist’s reputation or blurs its fame. For trademark infringement, however, Titleist must show that consumers would be confused by the two logos. “They would have to show that people would think Titleist is making hats” with the sexually explicit misspelling, said Tobin, the attorney. And that would be pretty difficult, she said.
The golf giant also took issue with I Made Bogey’s use of the hashtag “golf porn” in a post promoting the offending hat on Instagram, where it has more than 2,000 followers. The post included the hat next to a drawing of a naked woman’s torso. In its complaint, Acushnet said I Made Bogey’s actions “are offensive not only to women, but to consumers in general.”
“Russell is poking fun at the refinement and privileged social status of golfing, and there’s a strong free speech interest in allowing him to do so”
Experts aren’t convinced Acushnet has a case. “The lawsuit is probably doomed because nobody would think that Titleist made these products. It’s a parody, and most people would get the joke,” explained intellectual property attorney David Erikson, principal of Erikson Law Group in Los Angeles. “Trademark law doesn’t prevent all uses of a competitor’s name—it only forbids uses that are likely to confuse consumers about the source of goods. Because he’s not passing off his golf products as coming from Titleist, Mr. Russell would probably prevail.”
That doesn’t mean Russell is going to come out on top, though: Trademark cases are expensive to litigate because they can go on for a long time, and a big company likely has a more robust legal budget than a seller of parody products.
Still, Russell could persevere with the parody defense. In fact, the lewd nature of the products might be to his benefit from the standpoint of legal strategy. “For a parody defense to trademark infringement, the more offensive, the better,” Erikson said. “The more off-color the parody, the less likely the public is to mistakenly think that the trademark owner has sponsored or approved it.” (A common example cited for this is the tendency of porn film makers to parody famous mainstream movies.)
But Erikson said there’s a more wholesome defense for the makers of some parodies, namely free speech.
“The public benefits from allowing parody uses of established trademarks. No harm is done because there’s no deception, which is what trademark law protects against. And the public discourse is enriched because parodies can provide valuable social comment,” the lawyer said. “Russell is poking fun at the refinement and privileged social status of golfing, and there’s a strong free speech interest in allowing him to do so.”
Polly Mosendz and Kim Bhasin are reporters for Bloomberg News.
