Saw 'Em Off settled
Kalaouze to pay $25,000 to UT, changes logo
Published: Tuesday, June 26, 2007
Updated: Wednesday, July 25, 2012 21:07
Fadi Kalaouze, owner of Aggieland Outfitters, says the settlement of the legal dispute with the University of Texas over his "Saw 'Em Off" products was a victory - a victory not only for his family business, but also for a longstanding tradition of Texas A&M.
In a settlement announced Monday, the "Saw 'Em Off" logo printed on T-shirts and other merchandise will be altered with a white blaze on the forehead of the longhorn silhouette and two nostrils.
Kalaouze will also have to pay $25,000 to UT.
The long and relatively costly dispute between UT and the College Station-based vendor comes to a close.
The settlement resolves the lawsuit filed by UT in December, which requests that Aggieland Outfitters and parent company, Kalcorp, halt the sale of products featuring the logo of a longhorn silhouette with amputated horns. The University claimed, in the suit, the logo manipulated the registered trademark and Kalaouze made a profit - without paying licensing fees or their permission. Kalaouze, however, contended his merchandise was a parody protected under the First Amendment.
His concessions in the settlement - altering the logo and the payment - are tolerable, Kalaouze said, because the new two-dimensional logo allows for more fashion options and the $25,000 payment is much less than what he would have paid in court costs if the suit went to court.
"I'm very happy with the settlement," he said. "We didn't want to pay any royalties or admit any wrongdoing."
Besides continuing to produce a variant of his best-selling merchandise, he won't have to pay any royalties in the future or require further approval from UT. He also retains the copyrights related to the previous logo.
The settlement grants Aggieland Outfitters 10 days to halt manufacturing and 90 days to liquidate the inventory of the merchandise featuring the disputed logo.
G. Allan Van Fleet, a Houston-based attorney who represented Kalaouze, said the settlement was reached after several weeks of negotiation. The two sides debated over a possible replacement logo, he said, but they couldn't come to an agreement - until they compromised and devised adding the blaze and nostrils to the logo.
In the settlement, UT reached their objective of protecting their registered mark, said Louis T. Pirkey, an Austin-based attorney who represents UT in matters regarding trademarks.
He said with Aggieland Outfitters no longer using the disputed mark and paying what he considers an adequate amount in damages, it sends the intended message.
The payment of $25,000, however, is less than what UT will spend in pursuing the matter, Pirkey speculated. He declined to address the financial aspect of the settlement further, and said he couldn't discuss the happenings within the negotiations, per attorney-client privilege.
Beginnings of Saw 'Em OffAn immigrant from Lebanon, Kalaouze, Class of 1991, paid his way through A&M by selling T-shirts in the Memorial Student Center. After graduating, he continued selling T-shirts with his wife Hege, Class of 1990, growing his business into Aggieland Outfitters in 2000.
In 1997, he started selling T-shirts with the "Saw 'Em Off" logo originally designed by former A&M student Travis Nap, paraphrasing a line from the Aggie War Hymn.
UT wasn't aware of the Aggieland Outfitters' product until a few years ago, Pirkey said.
In 2004, the disagreement between the two parties began. Pirkey said UT requested that Kalaouze find another logo, or alter it sufficiently enough that it couldn't be confused with the UT mark.
"We have no objection to him using a longhorn with its horns cut off as his logo," he said, as long as the longhorn wasn't a registered trademark of UT.
The two parties discussed the logo for a period of several months before the lawsuit was filed Dec. 4.
In a motion to dismiss the lawsuit, attorneys for Kalcorp wrote that the lawsuit was the product of poor sportsmanship, because the UT football team lost to A&M on Nov. 24.
Pirkey, however, labeled such a contention as ridiculous. He said the negotiations between Kalaouze and UT broke down around Thanksgiving and the lawsuit was the outcome of that.
In the lawsuit, the University sought to halt Aggieland Outfitters' manufacturing of products with the logo because of possible consumer confusion: "Defendants' unauthorized use of UT marks complained herein is likely to cause confusion, to cause mistake, or to deceive customers," Pirkey wrote in the suit.
But for Kalaouze, halting sale of his most profitable product would strike a crippling blow to his small business.
Plus, he said, he's never seen a Longhorn fan request the product, thinking it endorsed UT.
For a family owned business facing off with a wealthy university, Van Fleet compared the dispute with the biblical fight between David and Goliath - just like the story, David won.
"We were always confident in our legal position," he said, adding the settlement was, "very much the desired outcome."
UT, however, also says they met their objective. In a statement, representatives for the University said their goal was to protect UT's logo, which is, they argue, the best and most valuable logo owned by any college or university.