Face Off: North Face Sues South Butt in a Trademark Action

The North Face Apparel Co. is not amused. Jimmy Winkelmann wanted to make fun of people and companies fueling the market for name brand clothing, so he named his company South Butt, as a parody on North Face. North Face is now suing for trademark infringement. Once again, I am mystified why we have allowed trademark and copyright laws to get so expansive as to make such claims even remotely credible.

The South Butt plays off of North Face’s tag line is “Never Stop Exploring” with its own slogan “Never Stop Relaxing.” The lawsuit was filed in the U.S. District Court for the Eastern District of Missouri,claiming trademark infringement, trademark dilution and unfair competition. The complaint below alleges that South Butt is selling “inferior knockoffs” and its “marketing apparel that directly and unabashedly infringes and dilutes The North Face’s trade dress in its iconic Denali jacket.”

South Butt’s website includes the following disclaimer:

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.

Winkelmann was a Missouri University student when he created the company.

North Face notes that the defendants should not be viewed as social critics engaging in parody since South Butt offered to sell its company to North Face for a million dollars. The complaint says that South Butt brings in $100,000 annually. However, South Butt claims that the lawsuit has expanded business and that it is now grossing much more.

Winkelmann’s lawyer, Albert Watkins, said, “The company is worth well more than a million dollars now that The North Face has done what it’s done.”

I fail to see why a company infringes on another company by engaging in such open parody and mockery. While I do not particularly like the offer to sell South Butt (which makes this look more like a harassment business than good-faith parody), I have serious problems with North Face being able to sue anyone using a direction and body part as a name.

The case follows the successful lawsuit by Larry Flynt over his nephews using their own name, Flynt, for their own porn operation, here.

The lawsuit actually makes Apple look reasonable in its recent lawsuit, here.

The courts have been highly supported of celebrities in seeking compensation for the use of such images, including the case of Vanna White who successfully sued Samsung for using a robot in a blond wig turning cards. In a decision that I find perfectly incomprehensible, the Ninth Circuit ruled that a blond person turning cards was White’s sole shtick and that the company stole her likeness. I agree with Judge Kozinski’s dissent in thatWhite v. Samsung, which can be accessed here.

For the complaint, click here.

For the full story, click here.