Does The North Face Have Its Head in Its Butt?

You may have heard that on Thursday, December 10th, The North Face Apparel Corp. (home page here) sued 19-year old entrepreneur (and, apparently, amateur comic) Jimmy Winkelmann in a Missouri District Court for trademark infringement arising out of a parody Mr. Winkelmann created out of The North Face’s rather well known logo.  Here are the two logos that are center-stage in the dispute:


Ok, seriously…how funny is that?  I mean, the kid even turned the logo upside down so it looks like a butt.  Do you see it?  Classic…

According to the website of The South Butt LLC (no, we’re not making that up), Winkelmann got the idea to start his company in 2007 in order to mock people who wore The North Face clothing simply because their friends wore it (personally, I prefer Columbia, they make a darn good fleece zippy), and also to raise money for college.  He seems to have sold over $100,000 in t-shirts and jackets bearing his THE SOUTH BUTT trademark (including one to the author) just during the month of November.  Sounds like he has that college tuition covered.

Unfortunately, as seems to happen in all cases that end up in court, The North Face didn’t find the humor in Winkelmann’s idea.  Initially, The North Face opposed Winkelmann back in August when The South Butt filed an application to register THE SOUTH BUTT & design with the U.S. Trademark Office (interestingly, The North Face ignored Winkelmann’s initial filing – just THE SOUTH BUTT without the design - which published without opposition from The North Face back in September of 2007).  Apparently, Winkelmann’s response was an offer to sell his company to The North Face for $1 million. 

However, The North Face pressed on.  Things escalated, culminating in the recent 23-page, 7 count complaint seeking a preliminary injunction against The South Butt and Winkelmann for trademark infringement and dilution.  Winkelmann has defended his actions, claiming that his logo is a Constitutionally-protected parody of The North Face’s logo.  Demonstrating that the guy really does have a sense of humor, Winkelmann has commented, through his attorney, "The South Butt has previously made it clear to The North Face that the consuming public is insightful enough to know the difference between a face and a butt."  

In fact, Winkelmann is so convinced of his position in this regard that he has set up a “Face or Butt Challenge” Quiz on Facebook (must be logged in to view content) where anyone who cares to spend a few minutes of his or her time (which you will never get back, by the way) can guess whether the pictures shown are pictures of a “face” or a “butt” (note: the questions are pretty hard to get wrong, and that’s the point).

From a legal standpoint, parodies can open up a rather murky discussion.  Many commentators have half-jokingly argued that an attempted parody will be found to be a successful (and therefore defensible) parody only if the court finds it funny.  For that reason, parody cases seem to evenly split between those upheld as parodies and those deemed infringements.  The line between the two is fairly unclear, primarily because a successful parody must simultaneously convey two contradictory messages; that the parody is the original, but also that the parody is not the original.  If the parody gets too close to the original, you end up with infringement.  If the parody gets too far from the original, it fails as a parody.  Essentially, what a court will be looking for is whether the parody takes just enough from the original trademark to allow the consumer to appreciate the nature of the parody, but not so much that the attempted parody unlawfully appropriates more of the trademark than is allowed.  In the abstract, this would seem difficult to accomplish, but courts float the parodist another potential life raft.  If a really well known or “famous” trademark is chosen as the object of the parody, courts tend to hold that the parody is all that more obvious, and all the less harmful, because the very absurdity of the thought that the legitimate brand owner would be associated with the parody dispels any potential for consumer confusion – which is precisely what trademark law seeks to prevent.

In The South Butt case, I don’t even think we need to worry about the issue of parody from a legal perspective – and in that sense, relying on parody as a defense is the only misstep Jimmy Winkelmann appears to have made so far.  The two marks are, in my opinion, not similar enough to be found infringing.  If there is insufficient similarity for infringement, the dilution claim must necessarily fail since dilution claims are reserved for marks that are identical or nearly identical.  “Parody” seems to have been thrown into the mix simply because “The South Butt” is, in fact, funny.  So what on earth is The North Face doing going after this kid then?

That's a great question.  This case seems to be another example of a company that allowed emotion to lead its course of action rather than logic.  Companies need to recognize that if you have a successful enough product, eventually someone will try to make fun of you…and that this is a good thing.  Why?  Because it draws more attention to your brand, particularly if you allow the attention to be drawn to it the right way. 

In this case, The North Face should have considered another approach.  Little Jimmy Winkelmann wouldn’t have sold even a quarter of the shirts he’s alleged to have sold without all the publicity and free marketing that The North Face has provided him.  Without this, The South Butt, LLC would have faded into obscurity after its 15 minutes had expired (and after Jimmy had maybe raised enough money for a year’s worth of tuition). 

THE SOUTH BUTT does no harm to THE NORTH FACE from a trademark standpoint.  Who could possibly confuse a face with a butt – particularly one located in the opposite direction?  The North Face should have realized that its existing and potential consumers are smart enough to distinguish the two brands, without feeling compelled to explain to them that "we" are not "they.”  If you ask me, this PR disaster could have been avoided completely had The North Face’s in-house trademark counsel convinced the company’s management team to stay as far away from this thing as possible, lest they risk subjecting the company to the kind of message board-ridiculing, listserv-chirping, blogger-grousing it is currently absorbing.  Counsel should have figured that going after a 19 year-old college kid with a sense of humor will do nothing but create the biggest trademark story of the year (bigger because even non-trademark lawyers can understand it) and cost the company a huge chunk of money in legal fees and marketing clean-up after the fact. 

Sometimes, you have to put aside the fact that you may, under the law of some federal court in this country, conceivably have a case and just walk away before you get yourself into trouble.  But in-house counsel maybe wasn’t convincing enough, and now The North Face finds itself the butt (pun intended) of jokes not just within the trademark legal community, but in the news as well. 

Sorta makes that $1 million offer to purchase the company before all this happened seem like a sweet deal, doesn’t it?


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