North Face v. South Butt
For the London Free Press – March 8, 2010
U.S. courts may have to decide if a teen’s parody of a popular clothing line is an infringement
The North Face Apparel Co., more commonly known as The North Face, recently filed suit against Jimmy Winkelmann, a 19-year old high school student and his small Missouri clothing company called The South Butt.
North Face’s statement of claim alleges trademark infringement and dilution, among other claims.
North Face sells athletic apparel and gear for runners, rock climbers, snowboarders and others. South Butt sells jackets, T-shirts and other apparel “approved for relaxation purposes only.”
Winkelmann says his intent was not to rip off the North Face, but to offer consumers an alternative.
He came up with the South Butt idea to mock North Face fleece jackets worn by the popular crowd at his school.
In response to North Face’s tagline, “Never stop exploring”, South Butt adopted “Never stop relaxing.”
The North Face’s legal counsel sent Winkelmann a cease and desist letter in August 2009, requesting that he stop using the South Butt name and logo and halt all sales, production and promotion of South Butt products.
According to North Face, the two logos are so similar as to possibly cause “consumer confusion as to the source, sponsorship or affiliation of particular promotions and services that could dilute or tarnish the distinctive quality of the famous and distinctive marks.”
Winkelmann recently filed a trademark application for the South Butt, which the North Face legal counsel also asked him to withdraw.
In response, Winkelmann’s counsel — a friend of Winkelmann’s father, who apparently agreed to represent the teen in exchange for a good bottle of red wine — filed a somewhat irreverent defence.
Mr. Watson, Winkelmann’s legal counsel, stated “the sense of parody employed by Winkelmann within the context of his South Butt undertakings clearly demonstrate a respectful, if not faltering ‘anti-North Face’ posture designed in all respects to distinguish itself from any and all North Face products.”
The defence points out that, to emphasize its position that the marks are unlikely to confuse, the defendant added this to its website: “We are not in any fashion related to nor do we want to be confused with the North Face Apparel Corp. or its products sold under ‘the North Face’ brand. If you are unable to discern the difference between a face and a butt, we encourage you to buy North Face products.”
Unless it is settled, the case will ultimately be decided on the technicalities of U.S. trademark law.
Since one legal tests of trademark infringement is customer confusion, you be the judge: Are the marks confusing enough that customers might think products bearing them are from the same source?
I see nothing wrong with the design, If someone cannot tell them apart maybe they should go back to school. Also if he is not making the same clothes whats the problem?
Comment by Fred Bernquist — March 8, 2010 @ 4:28 pm
Sometimes the best legal advice you can give a client is to leave well enough alone…
Comment by Derek McDonald — March 8, 2010 @ 7:32 pm
Yes, South Butt IS making similar apparel — part of the problem.
Comment by boypoet — March 10, 2010 @ 2:47 pm
This has gone beyond being a parody and is down right silly for anyone to think that the value of textiles is only okay when the price is right or the message is better.
Tee shirts were invented over 90 years ago and today are the most popular political statement in the world.
Sweatshirts almost as old are worn for every possible means to cover your body not just exploring or relaxing.
Fleece is now amongst the followers of sweatshirts and tee shirts for the same reasons.
Why does anyone think that South Butt clothing is a better deal because the price is less?
When you can buy the same tee shirt and sweatshirt and fleece for half as much as SOUTH BUTT without any fighting over trademarks.
North Face has endured for over 40 years trying to promote itself as technical clothing which as we know from the days of Nike and Air Jordan’s gets far beyond the walls of the company planners.
So when little old North Face outgrew the mountains and became more popular on the street, instead of saying no to those retailers and consumers they said if you want it I will make it for you.
Now if South Butt is really i serious about relaxing and staying in business why not do it without the parody stuff??
That is the question that I think will help the Judge decide whether or not the trademarks look too much alike.
And it is a question that could become the next field of dreams for lawyers to fight about which in the end costs consumers millions in product costs.
L.L. Bean could be fighting B.B.LeaN
The list is endless and so are the hours to be billed by lawyers caring only about how long the bubble stays up on their billing meters.
Why is this 19 year old kid getting a free ride from his lawyer?
It probably has to do with what the Judge has had enough of, smart ass jokes from an educated legal counsel that knows that was not what he learned in law school. Move it on Mr Lawyer… interview’s for Saturday Night live are waiting for you. Freedom of speech is not a breach of law.
THE SOUTH BUTT LAW FIRM PRACTICES INJURY LAW AND AS WE ALL KNOW THOSE CLAIMS HIT ALL OF US HARD IN OUR INSURANCE POLICIES AND COSTS OF PRODUCTS WE PURCHASE.
HOPEFULLY AMBULANCE CHASING IS NOT GOING TO BECOME THE FIELD FOR CLOTHING TOO. IF IS DOES NOBODY OPENING THEIR MONTHLY BILLS WILL BE RELAXING..
Comment by Anonymous — March 18, 2010 @ 3:19 pm