SXSW SUES RESTAURANT

Austin restaurant will change name after SXSW sues

Festival says the name is too similar

By Michael Corcoran
AMERICAN-STATESMAN STAFF
Friday, May 09, 2008

The signs for a new South Austin restaurant that was set to be called South by South First are coming down.

Charging that the business would infringe on its trademark, South by Southwest Inc., which runs the film, music and interactive festivals held every March in Austin, filed suit May 2 against the steak and seafood eatery with a stage for live music set to open soon at 730 W. Stassney Lane. On Thursday, co-owner Mike Mikeska said, on the advice of an attorney, that the restaurant will change its name.

"They're this big tower with all this money, and we just can't afford to fight them in court," Mikeska said.

SXSW Inc.'s request for a temporary injunction asked that South by South First be prevented from using that name or any other that "is likely to cause confusion with, or which is likely to dilute the distinctive quality of South by Southwest's marks."

Mikeska said he doesn't understand why there would be any confusion.

"We're a restaurant, not a music festival," he said. The older bands being booked at the club, he said, "are not the type you'd see at South by Southwest."

Restaurant co-owner Gary Miller, who was served with the lawsuit Tuesday afternoon, estimated that he and his partners had sunk about $5,000 into the South by South First name, through signage and menu printing.

SXSW managing director Roland Swenson said his company first contacted the restaurant owners in January, three months before the South by South First signs went up.

"I wish they'd talked to a lawyer back then," Swenson said. "We made multiple attempts to engage them in an effort to resolve this dispute without resorting to litigation. We don't want to sue anybody, but we had no choice."

There are many "pirate" showcases that use variations on the SXSW name or initials during the festival, but Swenson said SXSW has "short-term written agreements with many of (the fringe fests), giving them permission to use variations of the SXSW name during our event."

They have granted permission to one in the past called South by South First.

What made the South by South First restaurant/bar different, Swenson said, is that it will operate year-round and not just for a weekend in March.

He said he worried that allowing one business to use a name that plays off South by Southwest would lead to expectations that others could do the same.

"Our name is our primary asset, and we have defended our trademarks many times over many years," Swenson said. "The only way to truly own a trademark is to defend it."

The name South by Southwest is a play on the title of the Alfred Hitchcock film "North by Northwest." The movie title is also the name of a restaurant in Northwest Austin. So, why didn't SXSW file an injunction in that case?

"Well, for starters, they came to us and asked if we minded them opening a place called North by Northwest," Swenson said. "There was already the movie, plus the only word in common with our name was 'by.' With South by South First, the first three words are the same. That's too close to ignore."

mcorcoran@statesman.com; 445-3652