
Humorless "North Face" Sues "South Butt" For Trademark Infringement - grellas
http://www.law.com/jsp/article.jsp?id=1202437826267&src=EMC-Email&et=editorial&bu=Law.com&pt=LAWCOM%20Newswire&cn=NW_20100112&kw=South%20Butt%20Creator%20Fires%20Back%20at%20North%20Face
======
Goladus
Trademarks must be aggressively defended if you want to keep them.

The South Butt logo is very similar to The North Face logo. The design is
almost identical except the curves are upside down and one is missing. This is
hilarious. But, it's not subtle at all and it would be easy to assume clothes
bearing that logo are actually a North Face brand.

On the other hand, I probably never would have heard of South Butt if it
weren't for the lawsuit.

~~~
henrikschroder
What does "aggressively" mean? And who judges if you've been "aggressively"
defending your trademark?

In this case it's pretty obvious that the best thing North Face could have
done was to completely ignore South Butt, because their actions have only led
to South Butt selling more of their stuff. It's a perfect example of the
Streisand effect. Shouldn't that amount to something if they later have to
defend their North Face trademark?

~~~
Goladus
You should probably ask a lawyer, but as I understand as a layman if it can be
demonstrated that you knew about an infringing trademark but ignored it, it is
a lot harder to win a lawsuit.

I think the basic idea is that trademark rights are valid for as long as you
need them, however you lose those rights if you abandon the mark. I think that
ignoring infringement is a piece of evidence that the mark is not useful for
you anymore. It may not be absolutely critical, but certainly doesn't help.

Suppose some other company markets the brand "The Fourth Ace" using the South
Butt logo, and they get successful and start stealing business. The North Face
sues them, but have trouble in the case because North Place points out that
their logo is a variation on South Butt, which doesn't seem to bother them.

~~~
btilly
The correct solution in this situation is to contact South Butt, and offer
them a license for a nominal amount. Now presto "The Fourth Ace" issue stops
being an issue because you raised the issue with South Butt and made them get
a valid license.

------
mahmud
He has a funny disclaimer too, calling North Face's customers stupid:

 _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._

------
jrockway
_North Face says Winkelmann, a biomedical engineering student, has caused it
"irreparable harm" by producing his parody clothing line, The South Butt
(motto: "Never Stop Relaxing")_

The student didn't cause North Face irreparable harm, suing the student and
attracting the attention of the media did. Big companies need to learn when to
step down, because a victory in a court of law is not necessarily a victory in
the court of public opinion. And it's the public that buys your products, not
the Law.

------
phil
This is especially funny if you're a climber, because South Butt is actually
meaningful (in context, it's common to abbreviate "buttress" to "butt"). Many
of the world's great climbing and mountaineering routes are on S facing
buttresses.

------
stonemetal
Note trademark isn't copyright so the rules are different.
<http://www.wptn.com/trademark_vol5is1/insight.htm>

~~~
Goladus
Another resource:
[http://cyber.law.harvard.edu/metaschool/fisher/domain/tm.htm...](http://cyber.law.harvard.edu/metaschool/fisher/domain/tm.htm#6)

------
allenbrunson
dear grellas: you are now the _de facto_ news.yc lawyer. i am continually
impressed with your clear, level-headed explanations of legal things which
laymen just guess at, poorly. so i am a little surprised that you've added the
word 'humorless' to the title, which doesn't exist in the original.
editorializing in titles is frowned on here.

how about instead putting your own reactions into a comment here under the
article. i'm sure it will be great and i'll read all of it, regardless of the
length.

~~~
grellas
Frail is the human condition and each of us, no matter what our other
strengths, is prone to succumb to temptation. I confess, the editorializing
was done with _mens rea_ in order to help capture the flavor of the dispute.
_Mea culpa, mea culpa, mea magna culpa._

On a more serious note, this case does highlight the tremendous dilemma faced
by companies that invest large marketing dollars in a distinctive mark and
brand only to see it suddenly subjected to ridicule in the public's mind. The
real risk for North Face is not so much the direct competitive threat as it is
the risk that future customers will no longer be able think of "north face"
without immediately associating it with "south butt." Parody is a highly
compelling way of grabbing our imagination and, if this type of association
sticks, it will very likely do great damage to the mark.

At the same time, when a company files suit over the issue, this clearly
exacerbates the risk highlighted above. Lawsuits are no longer a localized
matter. When they are filed today, they clearly carry the risk of garnering a
lot of publicity if their subject matter is otherwise such as to grab people's
fancy, and this one certainly does by dint of its subject matter alone.

This must have been a tough one for North Face, and they probably had no
choice but to sue to deal with it, in spite of the risks of enhancing the
potentially bad association of its mark with the parody. It is a classic case
of "no-win" for them.

On a final, unrelated note, law (whatever its notoriously humorless aspects)
does serve as a gathering place for all the foibles of the human condition and
whatever humor may derive from it lies largely in the subject matter of the
disputes over which people choose to fight. I remember once, while clerking
for the federal court, a notorious lawsuit that stretched for years over a guy
who claimed that an airline owed him millions because it allegedly lost his
rare dime in transit. Along such lines, the "south butt" case is one for the
case books.

------
mkyc
Surprisingly, the South Butt is not selling butts, so tarnishment is not a
serious claim. (Unless, of course, butts are "unsavory" in the jurisdiction -
had a sufficiently rude word been used, tarnishment would be likely). In fact,
they are selling clothing. So the standard interpretation of trademark
blurring is also not quite applicable. Using a parody of a famous brand as
your own brand even for commercial purposes is... apparently ok, in many
cases.

I think they have a great case for infringement, though. From a reasonable
distance (a few feet), I can't tell the difference. Oh, right - the south butt
logo is on the left. Except, of course, when the item in question (say, a bag)
is lying on the floor. Or maybe I don't care that much to remember details,
relying more on crass pattern-recognition.

If you think that the text of a logo has all that much to do with the logo,
then you're missing the point of having a logo. A "South Butt" logo could have
been made that infringed on pepsi, or on mcdonalds. But we'll see how this
goes.

------
jacquesm
Thanks to the Streisand effect South Butt now has the marketeers wet dream
come true.

Even if they lose the lawsuit and will be forced to change their brand they
_still_ come out ahead, because the news of the name change will get a lot of
airplay too.

And if they prevail they should send the North Face execs a bunch of flowers
and thank them profusely.

~~~
mitko
IMHO, The North Face also gains no matter what the end of the lawsuit is.
That's a lot of advertisement, and wouldn't make me think less of their
products.

It can be also a reputation boost for TNF. After all the parody is on them
because they make the best equipment.

~~~
cabalamat
> and wouldn't make me think less of their products.

I'm sure their clothing woulsd be the same quality. Nevertheless, I choose not
to buy from arseholes; otherwise you cause there to be more arseholeness in
the world than would otherwise be the case.

North Face (and all other corporations) should make money by making things
people want. When they choose the route of legal shenanigans instead, they are
not conducive to the public good.

------
mootothemax
Humourless maybe, but if North Face didn't exist, the guy wouldn't be making
money right now.

I don't see a problem with being satirical, but surely after making $5,000 and
receiving the notice from North Face you should be prepared to stop trading?

~~~
philk
>> but surely after making $5,000 and receiving the notice from North Face you
should be prepared to stop trading

It's somewhat puzzling to see this opinion posted on a news site that caters
to entrepreneurs.

~~~
mootothemax
Isn't a valuable part of being an entrepreneur knowing when to quit?

~~~
philk
I'm not sure that "when you've just received a huge amount of free publicity"
constitutes a good time to quit.

~~~
ErrantX
No - but it might be a clever time to change the logo, make money off the back
of the publicity and side step the litigation.

~~~
charliepark
The brand is the entire point of the company. How many cheap knockoffs of
North Face fleeces are there? Any competitive advantage he has is that his
brand is poking fun at The North Face's brand.

If he wants to stay in business, changing his brand to something vanilla is
probably the worst thing he could do.

~~~
ErrantX
Agreed. However Im sure a smart entrepeneur could come up with a logo that
rides off the back of the "infamy"/publicity but doesn't leave him in court.

I cant see that the smart approach is to let them litigate... the comparative
size of the companies means it is incredibly risky.

~~~
Goladus
Exactly. If I'd been him, I'd have changed the logo to be more obviously a
parody (maybe made it pink or something), and changed the font or something so
that it's clearly distinguishable.

------
cabalamat
The problem here is that large companies face little cost in launching
unfounded lawsuits against individuals or small companies. And it's often in
the interest of the smaller side to back down, because if they don't they'll
be ruined, and even if they win they won't get anything.

I think this could be remedied by requiring that if the big company loses the
lawsuit, it has to pay substancial sums to the smaller entity (maybe an amount
could be decided by the jury based on how outrageous their claim was).

------
RyanMcGreal
Nice to see the Streisand Effect is still at work.

<http://en.wikipedia.org/wiki/Streisand_effect>

------
cookingrobot
How much can he lose? What kind of business would he need to register to limit
his risk? For ex, if this was an LLC, could he pay himself a sweet salary
during the next few months, and then just declare the business bankrupt if he
loses the suit?

------
bobbywilson0
This actually makes me like North Face a lot less if anything.

