Hey North Face! Our Story About You Flipping Out Over 'Hey Fuck Face' Is Not Trademark Infringement
from the hey-fuck-face,-hire-better-brand-protection dept
Update: After this article was published The North Face reached out to me, admitting that it was “ridiculous” to send this threat letter, and that they were using the mistake to improve their processes to (hopefully) avoid this kind of thing happening again.
The “brand protection” industry is endlessly fascinating to me, in that it seems to be a near total scam that preys on gullible big company execs who believe that if anyone uses their brand or logos in a way they don’t approve of, it’ll mean the end of the world. That’s not to say there aren’t legitimate “brand protection” steps that large companies need to take, but so much of it is overblown fluff and nonsense, and all of the various “brand protection” companies out there feel the need to justify whatever bizarrely lucrative contracts these giant companies hand out. So they completely overreact to the smallest of things — and the end result is not brand protection, so much as brand destruction for demonstrating just how over aggressive you are as a company.
The clothing company The North Face seems to have a particularly itchy trigger finger in overreacting based on its “brand protection” strategies — and their latest target is… Techdirt. Now, I’m pretty fucking sure we don’t compete with The North Face in any real way (I don’t think our limited selection of self-designed tech policy nerd t-shirts counts). We do, however, sometimes report on the ridiculous ways in which The North Face overreacts to parodies.
It started, back in 2009, when The North Face decided to sue a student who created a sophomoric parody line of clothing called South Butt. Absolutely no one was going to be confused about where the clothing was coming from. No one was accidentally going to buy South Butt clothing, thinking it was really from The North Face. There was no likelihood of confusion. There was no dilution or tarnishment. There was just over-protective marketing execs who didn’t like being made fun of. Unfortunately, the judge in the case didn’t dismiss it upfront, meaning that it was about to get super expensive, and The North Face’s lawyers started dragging the family of the student through the mud. Given all that, it was unfortunate, but not surprising, that South Butt settled the case. Of course, a few years later, South Butt showed up again, but this time as… Butt Face, giving The North Face lawyers some billable hours.
Anyway, soon after all that happened, we wrote about a different overreaction by The North Face. Some guy made parody patches mocking The North Face (it’s not even clear if he actually made any patches, or just Photoshopped images of such patches). A key one was a patch with the phrase “Hey Fuck Face” on it, and The North Face’s three-line Half Dome wannabe logo design.
I mean, not the most clever of parodies, but a parody. “Mr. Smashy” posted the image to Flickr, and the hypersensitive lawbots at The North Face sent Flickr/Yahoo a takedown notice. And then, we at Techdirt wrote about this completely stupid overreaction by The North Face.
That was nine years ago. On Friday, we got a notice from a company “Yellow Brand Productions” on behalf of The North Face, complete with legalistic sounding language to make us think that us writing a story about The North Face overreacting to a parody image of a parody patch that has never actually been sold anywhere is actually trademark infringement.
Subject: Notice of infringement – techdirt.com
Date: November 12, 2021
I, the undersigned, state under penalty of perjury that:
- I am the owner, and/or an agent authorized to act on behalf of the owner, of certain intellectual property rights.
- I have a good faith belief that the listings identified hereto offer items and/or contain materials that infringe on The North Face and Design trademark (see attached file) and are not authorized by the Intellectual Property Owner, its agent, and/or the law.
- Please act expeditiously to remove the listings identified.
Intellectual Property Owner: The North Face Apparel Corp.
Email Address for communication: [redacted] Website: https://www.thenorthface.com/
URLs at Issue:
Yellow Brand Protection
on behalf of,
The North Face Apparel Corp.
The email also, helpfully, included the Trademark Registration of The North Face logo, which notes that it covers specific trademark categories including backpacks, sleeping bags, tents, and clothing. As far as I know, a news article about a stupid overreaction to parody is not one of those things. The “notice of infringement” also included a signed letter from Christine Hernandez, saying that Yellow Brand productions and Matthew Leclerc are “authorized to represent The North Face, in trademark enforcement”. Usefully, this lets me know who I should address our response to: Christine Hernandez, who (according to her LinkedIn profile) is currently General Counsel at “VF Corporation” which is the parent company to a bunch of outdoor-focused brands that I will now start keeping track of to avoid ever supporting again, including The North Face, Vans, Timberland, Altra, Icebreaker, Smartwool, Jansport, Eastpak and more (this is unfortunate as I have a few Icebreaker and Smartwool products, and didn’t realize they were owned by an evil overly aggressive corporate conglomerate bully).
So, here’s our response:
Dear Christine Hernandez,
I wanted to make sure you were aware that you were throwing away money with “Yellow Brand Protections” (who itself appears to have bought up its own conglomerate called Corsearch.) While the company promises to “protect your brand to grow its value” and claims that it uses “advanced technology to detect, monitor and protect your brands,” it appears that it employs people who can’t tell a news story about your company’s itchy trademark trigger finger from actual infringement.
Sending out completely bogus trademark threat letters to news organizations covering your company’s bad practices seems like the kind of thing that might come back to bite your brand. In fact, rather than “brand protection” this feels a lot like “brand destruction.”
I’d suggest revisiting your contracts with “brand protection” companies who you give the authority to use your name in bogus threat letters, and maybe (just maybe) easing up on believing you need to threaten everyone over parodies.