I have always found trademark, copyright, and right of publicity litigation interesting because of the types of cases involved. Who can resist a case involving involving a robotic Vanna White or a case involving Victoria’s Secret?
In yet another case to laugh at, The North Face has sued 19-year-old James Winkelmann for trademark infringement and dilution. The North Face makes, “Technologically advanced, innovative, apparel, footware, and gear that inspires you to Never Stop Exploring.” Winkelmann has enough spare time in between his studies as a Freshman biomedical engineering student at the University of Missouri to have created a line of clothing parodying the apparel company – or clothing industry and life in general. As laughable as these types of cases are, they still are taken seriously because they do have First Amendment free speech issues.
Winkelmann produces a parody clothes line – The South Butt. On the “About” page of his website:
“I thought of The South Butt in response to a growing number of people
who continued buying gear and clothes from a brand they really didn’t
relate to, but were buying because “everyone else was”. After seeing the same people wearing the same brands, I decided to create
a way to poke fun at the norm, while making an affordable and quality
The South Butt doesn’t expect you to climb mountains on your way to school
or work. If anything, all I ask is that you make decisions and purchases
based on what you like; not what you are expected to.
The South Butt – Never Stop Relaxing.
Winkelmann states that he started his clothing line as a joke. He was inspired to do so after noticing that all his friends were buying North Face gear even though they weren’t mountaineers. He decided to poke fun at the idea by coming up with a “South Butt” logo, slapping it on jackets, T-shirts and sweatshirts, and selling the clothes via through a Columbia, Missouri pharmacy and the web.
While the whole project has been quite comical to Winkelman, North Face doesn’t find it so funny. In December, North Face busted out the big guns, retaining IP lawyers Michael Kahn of Bryan Cave and G. Roxanne Elings of Greenberg Traurig who promptly went about suing Winkelmann, his small company and the pharmacy that sells South Butt clothing. In the complaint, North Face’s contends that because Winkelmann intended to expand the manufacture and sale of The South Butt nationwide, it had no choice but to file suit for trademark infringement and dilution. And in North Face’s motion filed in December in Missouri, the apparel company claims that Winkelmann has caused it “irreparable harm” by producing his parody clothing line.
Along with a motion to dismiss the suit, Winkelmann and his attorneys countered by filing a pretty comical reply brief. Winkelmann’s answer, drafted by Albert Watkins of St. Louis firm Kodner, Watkins, Munchnick, Weigley, & Brison and filed on January 4, definitely plays up the David v. Goliath aspect of the lawsuit. Indeed, the suit pits the “world’s largest apparel maker against the 19 year-old college Freshman. You can download the motion here, but highlights include:
• The consuming public is well aware of the difference between a face and a butt
• But for the actions of North Face, the South Butt saga might have been relegated to local Friday fish-fry banter
• Described as a handsome cross between Mad Magazine’s Alfred E. Newman of ‘What me Worry’ fame, and Skippy the Punk from the Midwest, Jimmy refused to turn the other cheek
• Jimmy and The South Butt have no choice but to defend the present action to protect the integrity of the marketplace, freedom of choice for the consumer, freedom of speech for all, and the fundamental tenets of capitalism, competition and The American Way
It would seem that North Face’s infringement claim is unlikely to go far. In these types of cases the critical question is whether there is a likelihood that The South Butt trademark could be confused with The North Face mark. To me, it seems like someone would have to be pretty dumb to confuse a face with a butt. In regards to the dilution claim, Winkelmann may have a harder time defending that action, but should still prevail. Though The South Face may be intended as parody, a court would have to find that there was no likelihood of confusion between it and the North Face mark. After all, the true goal of trademark law is for consumers are able to find the goods and services they are looking for. Jimmy also has an excellent precedent in his corner with Louis Vuitton Malletier S.A. v. Haute Diggity Dog, a case with similar facts where the parodying company won. Indeed, in one commentator suggests that in order for the parody defense to work, your parody better be funny.
One thing is for sure, North Face’s decision to sue has brought much more attention to Winkelmann’s small clothing line than it previously enjoyed. Enough even to pay for all four years of Winkelmann’s schooling at Missouri. Winkelmann is moving enough merchandise that his website recently crashed three times due to the volume of traffic.
“Simply put, if it weren’t for the efforts of The North Face,” says Albert Watkins, “The South Butt probably wouldn’t still exist.”