North Face Goes After South Butt Over Trademark Infringement

from the morons-in-a-hurry-in-heavy-fleeces dept

Another day, another story of a company reacting overly aggressively with a trademark infringement claim. North Face, the well known clothing company, apparently is not at all pleased with a student who created a parody line of clothing called “South Butt.” The lawyer representing the student had a great quote:

“I did try to explain with a great deal of candor to counsel for the North Face that the general public is aware of the difference between a face and a butt.”

And, indeed, that’s the central question in most trademark lawsuits. Are the customers confused into thinking that they’re buying one product, rather than the other. It would be pretty difficult for North Face to claim with a straight face that those buying South Butt clothing don’t realize it’s a different company…

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Companies: north face, south butt

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Comments on “North Face Goes After South Butt Over Trademark Infringement”

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49 Comments
Dark Helmet (profile) says:

Finally, sophmoric humor is useful!

“I did try to explain with a great deal of candor to counsel for the North Face that the general public is aware of the difference between a face and a butt.”

Great examples of this fact are in demeaning terms/names like “buttface” and “butthead”. Largely, it is accepted that such deragatory and juevenile terms are used by the masses, particularly the uneducated masses, so the proverbial moron in a hurry ought to be included in their ranks. The term “buttface”, a prime example in this case, would have no demeaning value if the masses were unable to differentiate between a butt and a face. The term is only employable because of the difference.

And so it goes with ALL demeaning terms employing the more unmentionable areas of our persons and/or actions. Simply for educational purposes, I’ll list a few more:

1. Assclown
2. Fuckstick (double points!)
3. Cockass
4. Ass Bandit
5. Banana Vendor
6. Vagina Face
7. Angry Dude

You see, all of these are only deragatory because there is something intrinsically different in one part of the word or sub-word…except for that last one…that last one is just mean….

Anonymous Coward says:

Re: Finally, sophmoric humor is useful!

“And so it goes with ALL demeaning terms employing the more unmentionable areas of our persons and/or actions. Simply for educational purposes, I’ll list a few more:

1. Assclown
2. Fuckstick (double points!)
3. Cockass
4. Ass Bandit
5. Banana Vendor
6. Vagina Face
7. Angry Dude”

You forgot #8…

8. Dark Helmet

As I understand it, it’s a derogatory term which refers to a gay man who doesn’t clean off his penis after anal sex.

Dark Helmet (profile) says:

Okay, I'll try to bring it back

My question is simple: what is the motivation behind the lawsuit? Does North Face want the kid shut down, and if so, why? Does his parody line stem from some disatisfaction with North Face (rants on their website, anti-North Face text on the clothing, etc)?

I just don’t see what good comes from this even if they win. What in the world are they attempting to accomplish?

Anonymous Coward says:

Re: Okay, I'll try to bring it back

The Law firm retained by North Face is seeing a downturn in their annual profits due to the economic slow down and are unable to augment their income with taxpayer supplied bailout or stimulus money. They have convinced the the executives of North Face that kids nowadays use South Butt interchangeably with North Face and therefore there is a clear and present threat there will be confusion. Therefore, North Face MUST use them to stop this threat to North Face.
Billable hours … the motivation behind the lawsuit.

Matt (profile) says:

Re: Okay, I'll try to bring it back

TM damages are awesome.

It would be entertaining to know whether there were any settlement proposals prior to filing suit. North Face wants to protect its marks, because it will lose protection if it does not diligently protect. TM holders who don’t actually care about a particular use often send C&Ds and then offer to license the mark for free or cheap or a small royalty. That way, the use is authorized and they are not failing to enforce their mark. If the offer goes unanswered, they are now in the uncomfortable position of having to sue over something they don’t really care about.

I have absolutely no reason to believe that is what is happening here, and no reason to think it is not.

Matt (profile) says:

On straight TM grounds, I agree that the suit makes no sense. There is a concept of “dilution by tarnishment,” however, in the FTDA. The concept is, if someone uses your mark in such a way as to cause _your mark_ to lose value (not the association between source or origin and product that your mark is supposed to create,) that use is actionable. North Face may be attempting a novel extension to tarnishment by asserting that parodic uses can also tarnish the underlying mark.

At about this point, trademark starts to run irretrievably afoul of the First Amendment.

Matt (profile) says:

Re: Re:

Okay, just went and read the article. It sounds like _all_ that has happened so far is a C&D letter – no suit has been filed.

And the alleged infringement is apparently _not_ over “North Face” versus “South Butt,” but over the red & white dome design. Frankly, North Face appears to my eye to be absolutely correct that the logos are confusingly similar.

There is an interesting legal point, here, about the trademark standard. Ostensibly, and jurisprudentially, it is “likelihood of consumer confusion.” Because of the context in which these marks are used, there is no likelihood of consumer confusion. But what actually gets applied in the courts is whether the competing marks are “confusingly similar.” These marks are probably confusingly similar. Because of the way these cases posture (often, competing motions for summary judgment,) the trademark holder tends to get the benefit of whichever standard best makes his/her/its case.

The problem is not North Face. They are doing what the law permits and may even require them to do. The problem is that the law is stupid.

Anonymous Coward says:

The Obvious and Confusion

In the link:
In fact, Winkelmann’s dad says the whole idea behind his son’s creation is to offer customers an alternative.

Well, Duh … North Face does not want customers to have a alternative. The logos are very similar, and a lawyer in a hurry could get the logos (and a face and a butt for that matter) confused I suppose.

john says:

The real issue is that he's 'trading off' of the North Face brand

I’m no corporate shill, but he’s using the notority and fame of North Face and using a similar looking logo to sell his product, which without stealing North Face’s brand, would probably sell nowhere…

Moreover, his south butt brand dilutes the power and exclusivity of the North Face brand…

It’s a funny joke, but I’d be pissed too if I were North Face – this guy’s product is only getting notice because of all the hard work North Face already did.

Richard (profile) says:

Re: The real issue is that he's 'trading off' of the North Face brand

Think about the implications of this. Apple computer (apparently) names itself after a fruit. Should Apricot computers (or for that matter Blackberry) be forbidden to use their names because they are “trading off” the Apple brand.

What all these people are doing is identifying the nature of their own brand with reference to an existing brand. Unless your brand is actually confusable with the existing brand (which this one clearly isn’t) you still have to build your own market presence. The fact that you do it with reference to an existing brand name is no more significant than any other well known proper noun or word in the dictionary – like for example “Eiger” as in “the North Face of the…

Hint – look up Eiger clothing….

C3PO says:

Re: Re: The real issue is that he's 'trading off' of the North Face brand

Funny thing is:

If I had seen the South Butt branded clothing in a store before reading this article…

…I would have thought to myself, “South Butt? What an unfortunate choice of brandname!” I would never have made the connection to North Face.

Now, every time I see it, I will. Hasn’t North Face diluted South Butts brand by starting this stupid lawsuit in the first place?

Winky says:

Re: The real issue is that he's 'trading off' of the North Face brand

Unfortunately for you and others who too would be pissed, there is no law against “trading off” someone else’s brand…just *trading on* that brand.

Exclusions to trademark being what they are, all North Face is doing is increasing this young man’s sales.

And to your comment about not being a corporate shill:

It’s not really corporate shilling that you are doing sir, it is shilling of another ilk: Law Firm Shilling. We are all painfully aware these days that Law Firms like nothing more than to file suit on behalf of their clients, whether or not it is in their client’s best interest.

In this case, I can see the legal team tittering behind closed doors at how North Face is going to spend a king’s ransom to fight this quixotic battle, only to find that trademark law doesn’t and never did allow them any kind of recourse.

The lawyers get paid either way.

You sir, are a Law Firm Shill.

Shame on you.

john says:

Re: Re: The real issue is that he's 'trading off' of the North Face brand

Personally, I think NF’s strategy is stupid, and just adds to Butt face’s sales and builds ill-will against NF. But to each his own. However, for all you 1st Amendmenters, butt face has every right to use NF mark to criticize, comment on, parody NF and its products. But that’s not what its doing by selling competing products. There’s no reason to sell products under the south butt brand except to get instant recognition (for those who get it) for his products based on the fame of NF. UNLESS this is really some way too subtle counter-corporate, I hate NF free speach campaign… doubtful…
And, I’m an IP laywer who leans strongly toward free speach over IP… Your generalizations are misplaced.

batch (profile) says:

Just like the the lawyer defending the guy behind http://glennbeckrapedandmurderedayounggirlin1990.com/ said: “only an abject imbecile could believe that the domain name would have any connection to the Complainant.”: Only an abject imbecile would confuse The North Face with The South Butt.

Also, that North Face logo, the 3 curved lines, how is that even possible to trade mark? Its so generic. Like trademarking a single, common, not-made-up, English word, such as “Edge” (also referring to another trademark case here).

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