California Based North Face Sues Tongue-In-Cheek Competitor For Trademark Infringement
California – A wide portion of the American public recognizes North Face, the outdoor lifestyle company, and its distinctive logo trademark. However, that distinctive logo became the “butt” of a Missouri teenager’s parody when he created a new brand in 2007 that encouraged consumers to “Never stop relaxing”.
The South Butt was the brainchild of Jimmy Winkelmann, as an alternative to “sheep-like” following of fashion trends. The Alameda, California based retailer did not find anything funny about the spoof of its trademarks and took Winkelmann and The South Butt, LLC to court for trademark infringement.
On April 10, 2010, the United States District Court for the Southern District of Missouri, Eastern Division, issued a permanent injunction against The South Butt and its creators. The injunction prohibited the use of the offending South Butt trademarks and designs including, “The South Butt, Never Stop Relaxing”. At the conclusion of the original lawsuit, The South Butt agreed to drop its brand and cease using any and all of the offending logos.
However, the saga did not end when The South Butt was disbanded. To the delight of Winkelmann and his family, the publicity created by the lawsuit generated increased sales and created a show of support from the surrounding community. Bolstered by family and friends, The South Butt creator used the lawsuit as a marketing ploy and formed a new company, Why Climb Mountains, LLC. As part of its new identity, the Missouri based company created Butt Face brand, which again copies the look and feel of the North Face trademark.
Like the previous case, Winkelmann’s lawyer is using the “parody defense”. Trademark parody involves the appropriation of another company’s trademark that is well known in popular culture, and then using it to create something new for humorous effect or social commentary. In a parody defense, a defendant argues that consumers know the real difference between the two brands and that use of a copycat trademark does not dilute or tarnish the original trademark. Accordingly, Winkelmann claims that consumers know the difference between the two brands, and that Butt Face represents a protected First Amendment parody of The North Face’s trademark rights.
Representatives for North Face claim that the Missouri Company is blatantly copying its trademarks and disregarding the court’s previous holding. To support its case, North Face submitted documentation showing that 35% percent of consumers believe the Butt Face logo is in some way connected to the North Face trademark. North is asking for Winkelmann and his company to be held in contempt of court, and is seeking a disgorgement of profits and costs of suit.
Posted in: Trademark Infringement