December 18, 2009

"The North Face’s tag line is 'Never Stop Exploring' while The South Butt sells products with the tag line 'Never Stop Relaxing.'"

There is no sense of humor in trademark law. And that disclaimer — "If you are unable to discern the difference between a face and a butt, we encourage you to buy North Face products" — is not the lawsuit deflector you might have hoped it was.

29 comments:

Rockeye said...

If we need to go to Mt. Everest to notice reality, then we'll need warm coats. I'd rather have one which orders me to relax.

peter hoh said...

I'm assuming that the big issue is that The South Butt simply flipped The North Face logo.

AprilApple said...

The stolen logo is a problem.
It is clever, however. I almost want one of these.

http://www.shop.thesouthbutt.net/product.sc?productId=42

Almost.

Big Mike said...

Please add the tag "Dickens was right."

Scott said...
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Scott said...
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Scott said...

IANAL - "I, Anal" ... but(t)...

If a maker of clothing is so good at marketing their product that their commercial trademarks are infused in the popular culture, then you ought to have the right to comment on that in a commercial way.

Are your free speech rights nullified if you make money on that free speech?

(Damn, it's cold in Jersey City this morning - my fingers haven't thawed yet!)

PatHMV said...

In the first place, the "Introduction" of the complaint by the un-fun people of North Face are nothing but a press release summarizing the complaint itself. As a judge, I'd be tempted to entertain a motion to strike that portion in its entirety. The complaint should be for the court, not the news media, and it's not a place for the equivalent of a closing argument, either.

I'd strike paragraph 10, which extols the great virtues of the founders of North Face, too, as being utterly irrelevant to the allegations of the complaint.

Their most legitimate claim, on the face of it, would appear to be the "trade dress" portions, where they assert that the South Butt line of fleece jackets and other products bears a very close resemblance to North Face's Denali jacket. They do look similar, but I'd need more research to know whether they are similar enough to be infringing. The most obvious similarity is that they both make the upper torso part of the jacket out of a different material from the arms and lower torso of the jacket. Surely that design is not entirely unique to North Face?

I think South Butt gets by with the logo, for several reasons. The logo isn't simply flipped. First, the SB logo has only 2 segments (for obvious reasons) while the NF logo has 3. Second, the SB logo looks like, well, a butt.

Oh, and the so-clever NF lawyers try to make a lot of hay out of SB's offer to sell out to NF for $1 million, as if that is evidence that they must be infringing or nefarious. It also might suggest that some guys had a funny idea, decided to sell some products on a lark, and then got pissed off when big Corporation decided to try to intimidate them. If I got nasty cease-and-desist letters from a company in those circumstances, I'd try to make them pay for the privilege of shutting me down, too.

And seriously, paragraph 51? I realize you have to put in a boiler-plate paragraph about likelihood of confusion, but does anybody at North Face seriously, in good faith, believe that somebody will see the South Butt logo and products and believe that they were made by North Face? Perhaps if viewed from a distance the jackets might be similar, but the logo? Please.

I'm sure there's a line of cases out there on parody apparel, we being a nation of jokesters and all. Without having read any of those, my bet is that SB prevails on the vast majority of the lawsuit... IF they have the funds to pay the lawyers long enough.

In the meantime, I considered North Face too trendy and brand-conscious to begin with, and I like them even less now.

Scott said...

Yeah, but hiring a lawyer to defend oneself is so expensive, the defendant loses even when they win. Which is probably why lawsuits like this are filed.

Pogo said...

1. Who needs mafia violence when legal violence is just as effective at destroying one's opponents?

2. Clearly, I shop at all the wrong stores. I see people wearing NF logo clothes all the time, but have never seen an article of NF clothing for sale in a store.

I thought maybe they all in some secret club like the Masons.

3. The "Dinali jacket" seems like a fleece version of the 1980s Members Only jacket, at least in spirit.

peter hoh said...

Members Only. The original fleece jacket.

Paul Zrimsek said...

Best copyright case since Jordache sued Lardache.

former law student said...

Dilution of a famous mark, like the WcDonald's (upside down golden arches) from the ABA article comments. If The North Face were not a famous mark, parodying it would have no commercial value.

Now, pardon me as I hop into my Poorsche to get a centi at Starsucks.

traditionalguy said...

This trademarking of a name and suing everyone who ever uses that in language thereafter is an abuse. But little people in a small business cannot face a threat of a million dollars in damages and attorneys fees to face these bullies. Locally, a restaurant had never trademarked its long used name, and then a national chain got started using some of the same name and systematically smashed all the little businesses using a part of the name. Who could pay to fight them when no quarter was offered. So how the heck do you Copywrite the phrase "Lone Star" in connection with a Texas themed restaurant's name?

Paul Zrimsek said...

Bet the guys who sell genuine Romex watches on street corners are sweating cannonballs right now.

JAL said...

PZ above:
I really don't think so.

wv cabling
It's using English words this week.

Skookum John said...

Anyone remember "Get Off Your High Horse" shirts? Just like a Ralph Lauren Polo shirt, from back in the early 80s days of pink and green polos with popped collars and Vuarnet sunglasses.

Except if you looked closely the polo player was being bucked off and thrown on his ass.

I still have one that my daughter finds very amusing to borrow for the 80s theme parties that the kids are doing all wrong these days.

chuckR said...

I bought a pair of NF lightweight khaki pants at the local discount clothing joint. It has that logo - Never Stop Exploring - on the inside of the fly flap.

Maybe that's why it was at the discount joint in the first place.

PZ - those Romex watches must be electrifyingly good...

wv - appar - apparently apparel must be a cutthroat business

Expat(ish) said...

@Skookum - !!Vuarnet !!

Total blast from the past. I loved my 'nays in the 80's.

-XC

Oclarki said...

What about the NFL trademarking "super Bowl" it is annoying that every commercial has to reference "the big game" instead of just calling the Super Bowl no one in real life talk that way.

former law student said...

I always refer to it as the "Superb Owl," and only owl fans can criticize me.

Eric said...

Who needs mafia violence when legal violence is just as effective at destroying one's opponents?

Oddly enough, that's when you do need the mafia. When you're on the receiving end, anyway.

Jerry Pournelle is fond of bringing up an anecdote about Vietnamese nail salon owners in LA who were a favorite target of a slip-and-fall artist and his shady lawyer. After years of harassment they realized they could never come out ahead defending themselves in court, so they pooled their money to hire a local street gang to persuade the guy to take up some other line of work. Apparently he was convinced.

kentuckyliz said...

It amazes me that Successories doesn't sue despair.com.

Kev said...

Locally, a restaurant had never trademarked its long used name, and then a national chain got started using some of the same name and systematically smashed all the little businesses using a part of the name. Who could pay to fight them when no quarter was offered. So how the heck do you Copywrite the phrase "Lone Star" in connection with a Texas themed restaurant's name?

But sometimes, the little guy wins, at least for a while. A small, local chain called McDonald's Drive-In kept the "real" McDonald's out of Houston until the early '70s.

Kev said...

It amazes me that Successories doesn't sue despair.com.

Despair's work likely falls under parody protection under Fair Use, in the manner of Weird Al Yankovic's song parodies. IANAL, but the Supreme Court's statement that parody "is the use of some elements of a prior author's composition to create a new one that, at least in part, comments on that author's works" seems to fit here (and no, Successories has never gone after them in court).

Incidentally, Despair itself was granted the patent for the frowny emoticon back in late 2000. No, really.

(FULL DISCLOSURE: Despair is run by a relative of mine.)

From Inwood said...

Chuck R

Your comment

those Romex watches must be electrifyingly good...

proves that you're a live wire, as we used to say in my youth!

From Inwood said...

I feel that North Face stole its logo from the shoulder sleeve insignia of my old Infantry Division, The 42nd (Rainbow) Division

u2umm said...

When I first saw Winkelmann’s mark, I thought it was The North Face mark. I’d bet that most people who see it would not bother to read the text because they think they already know what it says.

If The North Face wants to protect their mark from being weakened, doesn’t that mean that they have to sue here? They did warn Winkelmann to stop, and he responded with a ridiculous offer. Winkelmann was basically asking for a lawsuit.

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