7 ms·

Humorless "North Face" Sues "South Butt" For Trademark Infringement

89 points by grellas 17y ago

jacquesm 17y ago
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 17y ago
  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 17y ago
    > 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.
  - deleted 17y ago
    [deleted]
  - shrikant 17y ago
    I hadn't heard of North Face till this. OTOH now I also know of South Butt. Free publicity for all. Makes me wonder if the Streisand Effect is something that some companies actually strive towards.
bobbywilson0 17y ago
This actually makes me like North Face a lot less if anything.
mootothemax 17y ago
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?
- markpercival 17y ago
  Why, if he can prove he's not infringing on their trademark, he should absolutely continue to make money selling his merchandise. If IBM didn't exist you probably wouldn't have Microsoft - doesn't mean they shouldn't compete with each other.
  - mootothemax 17y ago
    If he can prove he's not infringing on their trademark, it'll be a sad day for every entrepreneur out there. Actually, no, I'm wrong, scratch that. What I meant to say was: it'll be a sad day for every entrepreneur without Chinese contacts.
    - mrkurt 17y ago
      Really? The test is whether he's diluting the value of North Face's trademark. I think a court could reasonably decide he's not. There's a long and golden history of people creating satirical products that are meant to poke fun at trademarks.
      - raganwald 17y ago
        One of the tests is whether he's diluting North Face's trademark. The other is whether he's damaging it. Freedom to satirize is not the same thing as freedom to create a satirical product. There is a long history of such products, but that does not guarantee a defense.
        Goladus 17y ago
        Yeah I think if this logo had appeared in a Simpsons Episode or on Penny-Arcade it would clearly not be infringement. The fact that he's selling clothes changes things.
Goladus 17y ago
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.
- mootothemax 17y ago
  Heh, I wonder if trademark lawyers are ever tempted to claim confusion on grounds like: "Yes sir, the average man on the street might think we suddenly developed a sense of humour and then be confused when he learned that this was not the case!"
- grannyg00se 17y ago
  "it would be easy to assume clothes bearing that logo are actually a North Face brand" Except one says "The North Face" and the other says "The South Butt". How can these be confused? Are the names beside the logo and the logo itself separate? If so, perhaps he should simply be made to change the logo. I would suggest more detail on the curves so they actually look more like a sitting butt. However, I think the logos are sufficiently different as they are.
- henrikschroder 17y ago
  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?
  - potatolicious 17y ago
    "And who judges if you've been "aggressively" defending your trademark?" Presumably, the judge. "It's a perfect example of the Streisand effect." A very, very temporary Streisand effect, yes. If North Face is at all confident about winning this suit, then South Butt will have to shut down - you're granting them a brief bit of revenue (which you can later sue them for too!) in exchange for their permanent death. "Shouldn't that amount to something if they later have to defend their North Face trademark?" Trademarks don't work that way. "We inadvertently publicized this infringing trademark while we were suing them" is not grounds for losing your own trademark.
mahmud 17y ago
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.
- pwnstigator 17y ago
  In legal jargon, that's known as a "credited response". Or, alternatively, "1-fucking-80".
- deleted 17y ago
  [deleted]
deleted 17y ago
[deleted]
allenbrunson 17y ago
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 17y ago
  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.
RyanMcGreal 17y ago
Nice to see the Streisand Effect is still at work. http://en.wikipedia.org/wiki/Streisand_effect http://en.wikipedia.org/wiki/Streisand_effect
stonemetal 17y ago
Note trademark isn't copyright so the rules are different. http://www.wptn.com/trademark_vol5is1/insight.htm http://www.wptn.com/trademark_vol5is1/insight.htm
- Goladus 17y ago
  Another resource: http://cyber.law.harvard.edu/metaschool/fisher/domain/tm.htm#6 http://cyber.law.harvard.edu/metaschool/fisher/domain/tm.htm...
jrockway 17y ago
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.
mkyc 17y ago
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.
cookingrobot 17y ago
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?
cabalamat 17y ago
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).
phil 17y ago
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.

89 points by grellas 17y ago

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 17y ago
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 17y ago
  > 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.
- deleted 17y ago
  [deleted]
- shrikant 17y ago
  I hadn't heard of North Face till this. OTOH now I also know of South Butt. Free publicity for all. Makes me wonder if the Streisand Effect is something that some companies actually strive towards.

bobbywilson0 17y ago

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

mootothemax 17y ago

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?

markpercival 17y ago
Why, if he can prove he's not infringing on their trademark, he should absolutely continue to make money selling his merchandise. If IBM didn't exist you probably wouldn't have Microsoft - doesn't mean they shouldn't compete with each other.
- mootothemax 17y ago
  If he can prove he's not infringing on their trademark, it'll be a sad day for every entrepreneur out there. Actually, no, I'm wrong, scratch that. What I meant to say was: it'll be a sad day for every entrepreneur without Chinese contacts.
  - mrkurt 17y ago
    Really? The test is whether he's diluting the value of North Face's trademark. I think a court could reasonably decide he's not. There's a long and golden history of people creating satirical products that are meant to poke fun at trademarks.
    - raganwald 17y ago
      One of the tests is whether he's diluting North Face's trademark. The other is whether he's damaging it. Freedom to satirize is not the same thing as freedom to create a satirical product. There is a long history of such products, but that does not guarantee a defense.
      - Goladus 17y ago
        Yeah I think if this logo had appeared in a Simpsons Episode or on Penny-Arcade it would clearly not be infringement. The fact that he's selling clothes changes things.

Goladus 17y ago

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.

mootothemax 17y ago
Heh, I wonder if trademark lawyers are ever tempted to claim confusion on grounds like: "Yes sir, the average man on the street might think we suddenly developed a sense of humour and then be confused when he learned that this was not the case!"
grannyg00se 17y ago
"it would be easy to assume clothes bearing that logo are actually a North Face brand" Except one says "The North Face" and the other says "The South Butt". How can these be confused? Are the names beside the logo and the logo itself separate? If so, perhaps he should simply be made to change the logo. I would suggest more detail on the curves so they actually look more like a sitting butt. However, I think the logos are sufficiently different as they are.
henrikschroder 17y ago
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?
- potatolicious 17y ago
  "And who judges if you've been "aggressively" defending your trademark?" Presumably, the judge. "It's a perfect example of the Streisand effect." A very, very temporary Streisand effect, yes. If North Face is at all confident about winning this suit, then South Butt will have to shut down - you're granting them a brief bit of revenue (which you can later sue them for too!) in exchange for their permanent death. "Shouldn't that amount to something if they later have to defend their North Face trademark?" Trademarks don't work that way. "We inadvertently publicized this infringing trademark while we were suing them" is not grounds for losing your own trademark.

mahmud 17y ago

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.

pwnstigator 17y ago
In legal jargon, that's known as a "credited response". Or, alternatively, "1-fucking-80".
deleted 17y ago
[deleted]

deleted 17y ago

[deleted]

allenbrunson 17y ago

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 17y ago
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.

RyanMcGreal 17y ago

Nice to see the Streisand Effect is still at work. http://en.wikipedia.org/wiki/Streisand_effect http://en.wikipedia.org/wiki/Streisand_effect

stonemetal 17y ago

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

Goladus 17y ago
Another resource: http://cyber.law.harvard.edu/metaschool/fisher/domain/tm.htm#6 http://cyber.law.harvard.edu/metaschool/fisher/domain/tm.htm...

jrockway 17y ago

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.

mkyc 17y ago

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.

cookingrobot 17y ago

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?

cabalamat 17y ago

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).

phil 17y ago

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.