The North Face Vs. The South Butt

Discussion
Jan 08, 2010

By Tom Ryan

The North Face
has filed a trademark infringement lawsuit against The South Butt, a parody
company started by a 19-year old allegedly to help him pay for college.

The lawsuit,
filed in federal court in St. Louis, seeks unspecified damages and asks
that South Butt’s founder, Jimmy Winkelmann Jr., be prohibited from marketing
and selling the spoof merchandise.

Mr. Winkelmann
with the help of his father and godfather created The South Butt two years
ago and began selling them through Williams Pharmacy, which has four stores
in the St. Louis area. The brand features fleece, T-shirts and other apparel
adorned with a square white on red logo that mimics The North Face’s white
and red logo. It uses the tagline “Never Stop Relaxing” in a play on The
North Face’s “Never Stop Exploring” slogan. An online store was later opened.

According to
its 84-page complaint, The North Face claims that, besides making money
on the reputation of The North Face name, South Butt’s products are confusing
the buying public. Its lawyers wrote, “Unfortunately, and inevitably, The
North Face’s success attracts opportunists seeking to pirate its famous
trademarks for their inferior knockoffs … While defendants may try to
legitimize their piracy under the banner of parody, their own conduct belies
that claim.”

North Face noted that Mr. Winkelmann offered to sell his company to The North
Face for $1 million after The North Face earlier demanded an end to the sales
of The South Butt’s products.

In its response
to the court, South Butt describes Mr. Winkelmann as a "cherubic teenager,
budding entrepreneur and college freshman from the heartland of America
studying biomedical engineering at the University of Missouri.”

His lawyers said that if not for The North Face’s lawsuit, “the South Butt
saga might have been relegated to local Friday fish-fry banter. Unfortunately,
and regrettably, South Butt’s youthful exuberant and obvious parody has not
been embraced by North Face … 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."

Articles in USA
Today
, NPR and
other media outlets have led to a hike in sales, South Butt lawyers said.

Writing for St.
Louis Today
, Joseph E. Martineau, a lawyer, said
The First Amendment protects South Butt’s right to criticize or poke
fun at North Face in words or pictures. But the legal standing is more
divided when the parody involves selling competing products.

For instance,
one court found that Garbage Pail Kids infringed on Cabbage Patch Kids
since the parody was deemed secondary to the infringer’s economic interest
in selling a product. But another court held that Lardashe jeans for large
women did not infringe on the Jordache name because the parody is obvious,
according to Mr. Martineau.

Discussion
Questions: What’s your ethical view in infringement cases involving the
parodying of brands? Should The North Face have sued The South Butt?

Please practice The RetailWire Golden Rule when submitting your comments.

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30 Comments on "The North Face Vs. The South Butt"


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Marc Gordon
Guest
Marc Gordon
11 years 4 months ago

What’s the difference between parody and infringement? Revenue. If The South Butt line was given out to an inner circle of people, I doubt The North Face would care, regardless of any attention it received. But when this kid is making money off a blatant ripoff of the name and look, then let’s be realistic.

Maybe Jimmy should change his major from biomedical engineering to business ethics and law.

Roger Saunders
Guest
11 years 4 months ago

Love the Parody. However, admittedly, without seeing the merchandise, and seeing the extent as to how it is being marketed, it seems that the North Face is taking the proper action in defending their license position.

Doug Stephens
Guest
Doug Stephens
11 years 4 months ago

How the legal system treats this case is really neither here nor there. The real question is how it plays out in the court of public opinion.

Time and again we’ve seen the carnage that can take place when items like this make their way into social media. Twitter mobs, YouTube parodies and blog-bashes by the gross are just some of the ways North Face could live to regret this.

North Face might be doing more damage to their brand by reacting to this than South Butt ever could have done.

John Boccuzzi, Jr.
Guest
John Boccuzzi, Jr.
11 years 4 months ago

I am not a lawyer, but it is clear that the logo and the parody on the name infringe on The North Face name and reputation.

In the end, The North Face is truly a marketing company and must do everything it can to protect its assets. If it lets this one go, the next infringement will be that much harder to fight and win.

It’s unfortunate that Jimmy’s father and godfather were not better ethical compasses.

Cathy Hotka
Guest
11 years 4 months ago

Apparently this hijacking of a popular brand is good for publicity.

If I were North Face I’d go after them. But it’s clear that customers will recognize that the new company is a cheap ripoff of a quality company.

Kevin Graff
Guest
11 years 4 months ago

A really funny parody, but it does obviously infringe because of its intent to profit from North Face’s brand equity.

Now, having said that, North Face should be careful not to be perceived as being a bully. Yes, they’re within their legal rights, but what about the court of public opinion? Social media is a dangerous playground to mess with. Was there not a quieter way for them to deal with this?

Mark Johnson
Guest
Mark Johnson
11 years 4 months ago

We need reasonable protections for these companies. The key word is reasonable and those who are in the public eye are often held to a higher standard. They can be parodied and libeled with less recourse.

Steve Montgomery
Guest
11 years 4 months ago

I am not an attorney but as others have noted, I don’t think there is any denying that the intent was to make money and therein may lie the difference between parody and infringement. I think whether the request for the reported $1MM to cease and desist was a joke or an actual attempt to secure payment; it hurts the parody case stance. I don’t think The North Face has any choice but to take action to protect itself. Failure to do so could result in someone better funded to attempt the same thing.

Edward Weisberg
Guest
Edward Weisberg
11 years 4 months ago
I believe, especially in today’s viral marketing world, that “Parody is the highest form of flattery.” In a marketing environment where the best brands in the world, such as IBM, are driving their marketing message with self-parody on YouTube, it is absolutely the wrong approach for a youth-oriented brand to aggressively attack like this in the courts. This is clearly a different brand, not a knockoff attempt such as calling their product “Northeast Face” or something that might be mistaken as North Face. We saw a similar scenario when a kid started a “life sucks” t-shirt line to parody the “life is good” brand. Life is Good took a more appropriate approach. They recognized that the parody actually strengthened their brand, promoting awareness and free PR. Rather than dragging this kid into court, the wiser approach, both from a business and marketing perception view, would be to embrace this kid. Talk to him about including a small positive reference to the North Face on his site and product literature. By doing so, the net result… Read more »
Bill Bittner
Guest
Bill Bittner
11 years 4 months ago
The lesson from this whole thing for North Face is probably that they should have kept their concerns to themselves. I guess it shows that no one (excuse the pun) wants to be the butt of a joke. In this case the North Face company let their emotions get the best of their business sense and they have ended up creating the proverbial mountain from a mole hill. That is probably the lesson here. But the other aspect of this whole thing goes deeper into the mind of the consumer. Do consumers buy a brand because of its name or because of the quality of the product? Obviously, a consumer buying a product labeled “South Butt” realizes it is not from North Face. The only reason to buy the product is to poke fun. If the clothing doesn’t keep people warm or falls apart it will only serve to enhance the North Face brand and the whole parody will pass before the young man is out of college. Instead of calling in the lawyers, North… Read more »
Li McClelland
Guest
Li McClelland
11 years 4 months ago

If I were North Face, I’d offer to buy them out (at the price of a top notch college education) in exchange for dropping the infringement lawsuit and market the products on college campuses and online. The “never stop relaxing” as a counterpoint to the rugged “never stop exploring” could be considered a brand extension, and would show North Face has a sense of humor. The company could then also assure the quality they like to uphold their reputation. I would be far, far more worried about the impact of fake North Face merchandise than this parody.

Mel Kleiman
Guest
11 years 4 months ago

The most interesting part of this discussion is not about the two brands but the role that social media is now playing in how companies should or need to react to situations that arise.

Two years ago no one would have even mentioned the word social media.

James Tenser
Guest
11 years 4 months ago

North Face should be a bit red about now due to its clumsy handling of this matter. Its too-public legal threats have given South Butt a favorable kick–precisely opposite of the intended outcome.

Brands are public entities and are therefore subject to public speech. North Face is no exception to this, and it might choose to regard the South Butt parody as further confirmation of its own brand equity.

Yes, the creator of South Butt is earning a few bucks from his online store, but it’s a stretch to claim that those dollars are in any way subtracting from North Face’s sales.

My view: North Face is creating a self-fulfilling prophecy by pursuing this legal action. It should fire its lawyers, who evidently have nary a clue about the marketing implications of their hard-line advice.

Mary Baum
Guest
Mary Baum
11 years 4 months ago
Ed–terrific, insightful response that absolutely gets it on every level: The age-old value of parody and cross-fertilization of ideas–after all, most of Shakespeare is nothing but retellings and parodies of older material. The true value of so-called ‘negative publicity’ in the age of social media and the end of scarcity. And a bunch of good ideas for how North Face could have used this event to its advantage and come out a hero to its audience instead of a bully. As for the rest of us–because I, too, having lived in same city with this phenomenon and not really given much thought to the brand-leveraging possibilities, instead stopping at the intellectual-property and creativity arguments, this is a big part of what we need to fix in corporate retailing and Corporate America in general. (And I’ve been thinking of myself as somebody who understands social media. Apparently not as well as you, Ed.) Ed, thanks–we have a lot to learn from your take on this, and fast. Internet years make dog years look glacial–who can believe… Read more »
Jesse Rooney
Guest
Jesse Rooney
11 years 4 months ago

While legal action is appropriate, I think it is a shame that North Face sees a need to involve the courts. Suing a young entrepreneur for parodying one’s brand is appropriate protection of the brand, but it also makes North Face look like mean-faced Scrooges. It just leaves a bad taste in my mouth.

Instead, I would have hoped that North Face would have taken a more constructive approach to this parody. Maybe instead of hiring attorneys to sue this young man they could have used that money to buy out the South Butt brand and fund his college education. Even ignore the South Butt brand might have been a better move as this lawsuit gives a whole bunch of free publicity to South Butt.

As for where parody stops and trademark infringement begins, I guess that is now for the courts to decide.

Warren Thayer
Guest
11 years 4 months ago

No doubt North Face had to object in order to go on record and protect itself, the vagaries of law being what they are. But it’s hard not to believe that cooler heads could have prevailed. Perhaps along with the lawyers, they should have had Deepak Chopra, or someone like him, in the room.

Jonathan Marek
Guest
11 years 4 months ago

If I were North Face, I’d use this parody to get my brand out there with lots of free (good) PR, targeted at my demographic. I don’t really think that suing is the answer to that. I suspect that playing along and taunting back might get them a lot further.

Bob Houk
Guest
Bob Houk
11 years 4 months ago

North Face has damaged their brand with the lawsuit far more than South Butt could ever have hurt them. Few would ever have heard of South Butt without the lawsuit, and I doubt that North Face’s demographic is going to think highly of what they will see as corporate bullying.

Michael Justice
Guest
Michael Justice
11 years 4 months ago

The only real problem I see is with the logo. If people prefer South Butt to North Face, so be it; but you can’t use an obvious symbol. No matter how clever he is, the blatant use of the logo will cause him to lose in court.

Justin Time
Guest
11 years 4 months ago

Like Gimbels of Maine vs Gimbels Department Store, if you wait long enough, maybe this won’t be an issue.

I agree with nearly all the posters in that North Face has indeed handled this situation very badly.

I am still convinced that North Face’s logo is a directly ripoff of the old National Tea inverted Loblaw’s corporate logo, anyway.

Two thumbs way, way up for The South Butt. May the underdog win.

Doug Fleener
Guest
11 years 4 months ago

I wonder if South Butt is getting a free pass from the panel because the company was started by a college kid? What would we say if Patagonia started a South Butt line? We’d probably all agree that North Face was taking the right steps.

But if North Face doesn’t protect their brand then couldn’t the kid then sell the South Butt brand to Patagonia? At which point the line might be called Pata South Butt. (Pun intended, of course.)

The bad publicity of taking the kid to court is short-term. The cost of not protecting your brand when others are trying to get a free ride is long-term. I’ll take short-term pain any day.

Lee Peterson
Guest
11 years 4 months ago

This reminds me of when the record companies went after Napster–it just made Napster into a cult hero and denigrated the record label’s brands. And instead of going with the flow and perhaps buying Napster, they got “legal” on them and wound up letting Apple take the idea and run with it, a double whammy. The more North Face goes after this kid, the more press it’s going to get and the worse they’re going to look.

Mark Burr
Guest
11 years 4 months ago
The bad publicity for North Face is short term? I don’t think so. If they persist, they do so at their own peril. In the days of lightening fast social media, trends and choice changes fast. They should have looked at it, recognized that imitation is the sincerest form of flattery and moved on to making their brand superior and the consumers choice. Rather than stirring their passions, it simply should have made them smile. In fact, as mentioned, maybe they should have even talked to the college student and hired him. They might have even found a form of innovation in the process. No one wins these fights, especially the instigator. Evaluating this type of situation with our previous viewpoints and perspectives could cost North Face everything. Sure they won’t spend everything in legal costs, but rather in their hope of stopping the kid, they may stop themselves. Today, Twitter, Facebook, 24 hour news, and the internet, could cost North Face everything. The legal bill will be small change as compared to becoming instantly… Read more »
Craig Sundstrom
Guest
11 years 4 months ago

If imitation is the sincerest form of flattery, then perhaps parody is second. Though I’m not a lawyer (appropriate legal disclaimer here) IIRC from the small amount of legal education I’ve had, the grounds for infringement are that it tends to create substantial confusion in the minds of the consumer; hence mimicking of a name, slogan OR logo will probably pass muster, but mimicking of all three is problematic. As to the general issue of the ethics of spoofing, and those who complain–or whine–that “someone is profiting from all my hard work,” get over it: cleverness may bring someone in the door, but it won’t keep them there…a brand has equity because it delivers value. If someone else can do the same, then let them.

Robert Straub
Guest
Robert Straub
11 years 4 months ago

I know it’s comparing apples to oranges, but it just occurs to me that if Bart Simpson or Peter Griffin were to wear a South Butt jacket prominently on The Simpsons or Family Guy, North Face wouldn’t dare take them on, and those shows make a lot more money off their parodies than the South Butt kid does.

M. Jericho Banks PhD
Guest
M. Jericho Banks PhD
11 years 4 months ago

I just placed an order at http://www.thesouthbutt.com. A hoodie and t-shirt for my son. I love this sort of in-your-face marketing along with the inevitable pompous response. Lighten up, TNF, this can only help your bidness. If anyone thinks that serious outdoor types will substitute purchases from TSB that would have gone to TNF, they need to attend marketing rehab. I have a camp for that, with drums, campfires, and a sweatlodge.