Tough Mudder Gets Its Hands Dirty in Trade Dress Fight (Guest Blog Post)
By Guest Blogger Tsan Abrahamson of Cobalt Law
[Eric's introduction: Tsan and I go back two decades to when we were both JD/MBA students at UCLA; then we worked together at Cooley in the second half of the 1990s before we both left to go in-house. Tsan is now one of the nation's leading experts on contests and sweepstakes; she's also an expert in trademark law and marketing law, especially kids' marketing. And she's a vegan chef and a hardcore skiier. On top of all that, Tsan has completed Tough Mudder events before, so when I saw this ruling, I immediately thought of her. I've been trying to get Tsan to guest-blog for years now, so I'm pleased to share this guest post from her.]
Tough Mudder, LLC v. Mad Cap Events, LLC, 2012 WL 760887 (M.D. Fla. March 7, 2012)
Participants in the Tough Mudder endurance race take an oath before they begin which includes the words, “I do not whine. Kids whine.” And apparently, Tough Mudder whines.
Tough Mudder recently got pissy when Mad Cap Ventures offered its own endurance race, the “Savage Race,” using colors, fonts, and images on its website that Tough Mudder believed similar to its overall trade dress. On those grounds, Tough Mudder sought a restraining order to enjoin the actual race from taking place.
In its denial, the court made quick work of Tough Mudder’s request, finding Tough Mudder had not met its burden under the legal standard required to issue a TRO. It’s difficult to find a lot of juicy bits in a 4 page denial, but the judge gives us enough to suggest Tough Mudder’s attorneys were not worthy of the orange headband the Mudder gives to those who have to mettle to cross the finish line. Alive.
The court never reached the merits of the case, seizing on the fact that Mudder hadn’t properly set forth its arguments. Whether Savage Run’s trade dress was confusingly similar to Tough Mudder’s was never actually addressed, suggesting both form and function play equally important roles in a successful motion.
Mudder’s attorneys alleged harm on the grounds that the Savage Race was an inferior race, a point not necessary for a trade dress claim where tarnishment isn’t alleged, but one where if raised, must be proved. The court seized on the fact that the claim was made without an offer of any evidence that the Savage Race in fact was inferior.
Mudder’s attorneys also failed to convince the court that its knowledge of the Savage Race was recent. The judge noted Tough Mudder’s own pleadings made clear it knew of the event at least 5 months prior to the race date, and thus viewed as dubious the sudden need to shut down the whole shebang.
The court did throw Mudder a bone at the end, however, converting the motion to “one for a preliminary injunction[.]” Perhaps while he was tapping out a procedural denial, he took an actual gander at the websites in question (or better, was himself a Mudder, and member of that small band of whack-jobs that endures scaling 15 foot walls, belly-slithering through mud, crawling into drainpipes half submerged, jumping 20 feet into freezing water, swimming under barbed wire, and running through live electrical wires, all for the prize of saying you did it; and that elusive orange headband).
The Tough Mudder website is characterized by shades of orange, gray, and black. Across the top, a horizontal screen showcases participants of the race covered in mud, water, sweat, and smiles. The liner notes use a sans-serif font, while the headers – including the logo itself – use a font designed to look like crumbling blocks. The Tough Mudder site reminds you that this is not your average mud run. Words like “kickass,” “stamina,” and “endurance” pepper the site. If you finish the race, you’re greeted with an orange headband and a beer.
The Savage Race website is characterized by shades of orange, grey, and black. Across the top, a horizontal screen showcases participants of the race covered in mud, water, sweat, and smiles. The liner notes use a sans-serif font, while the headers – including the logo itself – use a font designed to look like crumbling blocks. The Savage Run site reminds you that this is not your average mud run Words like “kickass,” “stamina,” and “endurance” pepper the site. If you finish the race, you’re greeted with a medal and a beer.
Had Mudder sought a TRO to take down Mad Cap’s site back when Mudder was actually made aware of the event, it likely would have been successful in forcing the organization to change its overall look-and-feel. The sites are highly similar – from the fonts displayed to the language used – and the similarities are clearly not coincidental. Mad Cap clearly meant to capitalize on the military style look-and-feel that Tough Mudder made popular. But Mudder got greedy, strategically trying to shut down the Savage Race altogether. Even if Mudder had properly shown the harm caused by the nearly identical website, it was – in this Mudder’s opinion – too late: the sales had already been made, the money collected. Running the course wasn’t going to change things.
Tough Mudder’s unspoken motto is “no risk, no reward.” It invites its runners to push the limits of their own boundaries and reach beyond what they thought logically possible. Applying this tactic to the law, however, was not the best strategy.