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?