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.
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!"
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?
You should probably ask a lawyer, but as I understand as a layman if it can be demonstrated that you knew about an infringing trademark but ignored it, it is a lot harder to win a lawsuit.
I think the basic idea is that trademark rights are valid for as long as you need them, however you lose those rights if you abandon the mark. I think that ignoring infringement is a piece of evidence that the mark is not useful for you anymore. It may not be absolutely critical, but certainly doesn't help.
Suppose some other company markets the brand "The Fourth Ace" using the South Butt logo, and they get successful and start stealing business. The North Face sues them, but have trouble in the case because North Place points out that their logo is a variation on South Butt, which doesn't seem to bother them.
The correct solution in this situation is to contact South Butt, and offer them a license for a nominal amount. Now presto "The Fourth Ace" issue stops being an issue because you raised the issue with South Butt and made them get a valid license.
"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.
> it would be easy to assume clothes bearing that logo are actually a North Face brand
I really, really doubt it. If you believe that, you'd presumably also believe Spinal Tap were real rock group, that Spitting Image was real, and that The Onion is real newspaper.
Trademarks might be expected to get a few seconds of attention at a given moment, much of it subconscious visual processing. In the 5-10 minutes it takes to read an Onion article, almost all people will observe something not right and be motivated to decide whether it's a fake story or not. In the 1 second it takes to observe a trademark on a piece of clothing, most people will not have the motivation to decide whether it's a fake or not.
And even then, the trademarks are still very similar. Even a person looking at them side-by-side can reasonably suggest that the South Butt logo is a humorous sub-brand that comes from The North Face. Often, with Onion articles, you can point to some fact that contradicts fundamental scientific laws and therefore cannot possibly be a true story. Spinal Tap is technically a real band, and while the story told in the movie is fake it is still plausible. I would not be surprised at all if someone saw out-of-context clips of This Is Spinal Tap without knowing what it was, and assumed it was a real documentary.
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.
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.
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.
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.
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.
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.
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.
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.
> 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.
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?
The brand is the entire point of the company. How many cheap knockoffs of North Face fleeces are there? Any competitive advantage he has is that his brand is poking fun at The North Face's brand.
If he wants to stay in business, changing his brand to something vanilla is probably the worst thing he could do.
Agreed. However Im sure a smart entrepeneur could come up with a logo that rides off the back of the "infamy"/publicity but doesn't leave him in court.
I cant see that the smart approach is to let them litigate... the comparative size of the companies means it is incredibly risky.
Exactly. If I'd been him, I'd have changed the logo to be more obviously a parody (maybe made it pink or something), and changed the font or something so that it's clearly distinguishable.
He is a 19 year old college student; hence his downside risk is fairly limited.
On the other hand, he's received global coverage and now has the potential to make a substantial amount of cash. There's also the real possibility that negative publicity will force the North Face to back down.
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.
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.
Trademark tarnishment is a kind of dilution (the other being blurring). In this case, I think it will be hard to argue tarnishment and easier to argue blurring.
The real point I was trying to make, though, is that a court might find in his favor, and it wouldn't really be "a sad day for every entrepreneur without Chinese contacts". It would be a reasonable decision. Finding against them might also be a reasonable decision, though I'm prone to want to protect satire as much as possible. :)
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.
Exactly. Parodic or otherwise, he's using his riff on TNF's trademarks for commercial purposes. That seems to be the most important detail, in terms of how suits and rulings have trended, in my (admittedly brief) digging into the topic.
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).
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?
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.