North Face Goes After South Butt Over Trademark Infringement

from the morons-in-a-hurry-in-heavy-fleeces dept

Thu, Oct 1st 2009 12:33pm — Mike Masnick

Another day, another story of a company reacting overly aggressively with a trademark infringement claim. North Face, the well known clothing company, apparently is not at all pleased with a student who created a parody line of clothing called "South Butt." The lawyer representing the student had a great quote:

"I did try to explain with a great deal of candor to counsel for the North Face that the general public is aware of the difference between a face and a butt."

And, indeed, that's the central question in most trademark lawsuits. Are the customers confused into thinking that they're buying one product, rather than the other. It would be pretty difficult for North Face to claim with a straight face that those buying South Butt clothing don't realize it's a different company...

Thank you for reading this Techdirt post. With so many things competing for everyone’s attention these days, we really appreciate you giving us your time. We work hard every day to put quality content out there for our community.

Techdirt is one of the few remaining truly independent media outlets. We do not have a giant corporation behind us, and we rely heavily on our community to support us, in an age when advertisers are increasingly uninterested in sponsoring small, independent sites — especially a site like ours that is unwilling to pull punches in its reporting and analysis.

While other websites have resorted to paywalls, registration requirements, and increasingly annoying/intrusive advertising, we have always kept Techdirt open and available to anyone. But in order to continue doing so, we need your support. We offer a variety of ways for our readers to support us, from direct donations to special subscriptions and cool merchandise — and every little bit helps. Thank you.

–The Techdirt Team

Filed Under: clothing, moron in a hurry, parody, trademark
Companies: north face, south butt

49 Comments

If you liked this post, you may also be interested in...

Reader Comments

Subscribe: RSS

View by: Time | Thread

Anonymous Coward, 1 Oct 2009 @ 12:40pm

There is a sain in arabic. Hatha birifish rasoo min tiso.
[ link to this | view in thread ]
Dark Helmet (profile), 1 Oct 2009 @ 12:41pm

Finally, sophmoric humor is useful!
"I did try to explain with a great deal of candor to counsel for the North Face that the general public is aware of the difference between a face and a butt."

Great examples of this fact are in demeaning terms/names like "buttface" and "butthead". Largely, it is accepted that such deragatory and juevenile terms are used by the masses, particularly the uneducated masses, so the proverbial moron in a hurry ought to be included in their ranks. The term "buttface", a prime example in this case, would have no demeaning value if the masses were unable to differentiate between a butt and a face. The term is only employable because of the difference.

And so it goes with ALL demeaning terms employing the more unmentionable areas of our persons and/or actions. Simply for educational purposes, I'll list a few more:

1. Assclown
2. Fuckstick (double points!)
3. Cockass
4. Ass Bandit
5. Banana Vendor
6. Vagina Face
7. Angry Dude

You see, all of these are only deragatory because there is something intrinsically different in one part of the word or sub-word...except for that last one...that last one is just mean....
[ link to this | view in thread ]
Anonymous Coward, 1 Oct 2009 @ 1:03pm

Re:
Without a translation, that's just annoying.
Thanks for trying tho.
[ link to this | view in thread ]
Anonymous Coward, 1 Oct 2009 @ 1:05pm

Re:
FYI,
google fails to find it, it only returns this page when searching for that phrase.
[ link to this | view in thread ]
Anonymous Coward, 1 Oct 2009 @ 1:07pm

I always though of facebutt as a facebook parody...
[ link to this | view in thread ]
Anonymous Coward, 1 Oct 2009 @ 1:08pm

Re: Re:
It translates to, This person doesn't know his butt from his head.
[ link to this | view in thread ]
angry dude, 1 Oct 2009 @ 1:09pm

Re: Finally, sophmoric humor is useful!
Coming from you, that hurts.

You fucking Fuckstick.
[ link to this | view in thread ]
Clitoris Klein, 1 Oct 2009 @ 1:09pm

Butt = Face
Ass = Hole in the ground
OK. Got it.

The logos are similar text/design and the clothing is similar in design.
[ link to this | view in thread ]
Anonymous Coward, 1 Oct 2009 @ 1:09pm

Re: Re:
"google fails to find it, it only returns this page when searching for that phrase."

because I kinda just improvised, or made up, the English equivalent to the arabic letters the best that I could.
[ link to this | view in thread ]
Anonymous Coward, 1 Oct 2009 @ 1:10pm

Not Difficult at All
It would be pretty difficult for North Face to claim with a straight face that those buying South Butt clothing don't realize it's a different company...

You underestimate the egomaniacs running some companies.
[ link to this | view in thread ]
fogbugzd (profile), 1 Oct 2009 @ 1:10pm

Let's hope
It sounds like the student got a good lawyer. Let's hope this is another case where someone who files false IP claims gets that tables turned and has to cough up legal fees for the the defendant.

I have been shopping for a new jacket, and I just scratched the North Face one off my list. I wonder if South Butt makes one in my size?
[ link to this | view in thread ]
Anonymous Coward, 1 Oct 2009 @ 1:13pm

Re: Re:
BTW, it'll probably be a lot funnier if you speak arabic because it's very commonly used in Arabic to make fun of people.
[ link to this | view in thread ]
interval, 1 Oct 2009 @ 1:17pm

Re: Re: Re:
Yeah. That's a real gem there. Right along with "I pray to Allah that you and your family die in a nuclear holocaust you Jewish dog."
[ link to this | view in thread ]
BobinBaltimore (profile), 1 Oct 2009 @ 1:21pm

Re: Finally, sophmoric humor is useful!
Dark Helmet rules!
[ link to this | view in thread ]
Dark Helmet (profile), 1 Oct 2009 @ 1:22pm

Okay, I'll try to bring it back
My question is simple: what is the motivation behind the lawsuit? Does North Face want the kid shut down, and if so, why? Does his parody line stem from some disatisfaction with North Face (rants on their website, anti-North Face text on the clothing, etc)?

I just don't see what good comes from this even if they win. What in the world are they attempting to accomplish?
[ link to this | view in thread ]
Chronno S. Trigger (profile), 1 Oct 2009 @ 1:26pm

Re: Re: Re:
In the US we use the phrase "doesn't know his ass from a hole in the ground". Must be a good insult.

Douse this North Face, South Butt thing mean I could never make a clothing line called crevice or cleavage?
[ link to this | view in thread ]
Chronno S. Trigger (profile), 1 Oct 2009 @ 1:28pm

Re: Finally, sophmoric humor is useful!
I have to ask, "Banana Vendor"? Is that one of those terms that I didn't know were derogatory nor would ever understand why?
[ link to this | view in thread ]
Matt (profile), 1 Oct 2009 @ 1:32pm

On straight TM grounds, I agree that the suit makes no sense. There is a concept of "dilution by tarnishment," however, in the FTDA. The concept is, if someone uses your mark in such a way as to cause _your mark_ to lose value (not the association between source or origin and product that your mark is supposed to create,) that use is actionable. North Face may be attempting a novel extension to tarnishment by asserting that parodic uses can also tarnish the underlying mark.

At about this point, trademark starts to run irretrievably afoul of the First Amendment.
[ link to this | view in thread ]
Anonymous Coward, 1 Oct 2009 @ 1:36pm

Re: Okay, I'll try to bring it back
The Law firm retained by North Face is seeing a downturn in their annual profits due to the economic slow down and are unable to augment their income with taxpayer supplied bailout or stimulus money. They have convinced the the executives of North Face that kids nowadays use South Butt interchangeably with North Face and therefore there is a clear and present threat there will be confusion. Therefore, North Face MUST use them to stop this threat to North Face.
Billable hours ... the motivation behind the lawsuit.
[ link to this | view in thread ]
Matt (profile), 1 Oct 2009 @ 1:36pm

Re: Okay, I'll try to bring it back
TM damages are awesome.

It would be entertaining to know whether there were any settlement proposals prior to filing suit. North Face wants to protect its marks, because it will lose protection if it does not diligently protect. TM holders who don't actually care about a particular use often send C&Ds and then offer to license the mark for free or cheap or a small royalty. That way, the use is authorized and they are not failing to enforce their mark. If the offer goes unanswered, they are now in the uncomfortable position of having to sue over something they don't really care about.

I have absolutely no reason to believe that is what is happening here, and no reason to think it is not.
[ link to this | view in thread ]
Dark Helmet (profile), 1 Oct 2009 @ 1:37pm

Re: Re: Finally, sophmoric humor is useful!
It's a deragatory term used to described homosexual men, let's just leave it at that. You ought to be able to figure out the meaning in short order.
[ link to this | view in thread ]
Jesse, 1 Oct 2009 @ 1:37pm

I’m going to go out on a limb and say NorthFace’s chances to win are about the same as their chances that the majority of people who wear their clothes actually go climbing the north face of any mountain.
[ link to this | view in thread ]
Sean T Henry (profile), 1 Oct 2009 @ 1:42pm

Re: Re: Re: Re:
It should be fine as long as you do not include a direction like calling the clothing line "East West Cleavage".

Albeit, I would buy a East West Cleavage shirt for my girlfriend.
[ link to this | view in thread ]
Matt (profile), 1 Oct 2009 @ 1:46pm

Re:
Okay, just went and read the article. It sounds like _all_ that has happened so far is a C&D letter - no suit has been filed.

And the alleged infringement is apparently _not_ over "North Face" versus "South Butt," but over the red & white dome design. Frankly, North Face appears to my eye to be absolutely correct that the logos are confusingly similar.

There is an interesting legal point, here, about the trademark standard. Ostensibly, and jurisprudentially, it is "likelihood of consumer confusion." Because of the context in which these marks are used, there is no likelihood of consumer confusion. But what actually gets applied in the courts is whether the competing marks are "confusingly similar." These marks are probably confusingly similar. Because of the way these cases posture (often, competing motions for summary judgment,) the trademark holder tends to get the benefit of whichever standard best makes his/her/its case.

The problem is not North Face. They are doing what the law permits and may even require them to do. The problem is that the law is stupid.
[ link to this | view in thread ]
Free Capitalist (profile), 1 Oct 2009 @ 1:49pm

Re: Re: Re: Finally, sophmoric humor is useful!
You ought to be able to figure out the meaning in short order.

Zing! Ouch you're on a roll.
[ link to this | view in thread ]
Anonymous Coward, 1 Oct 2009 @ 1:50pm

Re:
HAHA fuck NorthFace. Now I'm going to go wear my rain-slicker I made from a tarp and some cord.
[ link to this | view in thread ]
Chronno S. Trigger (profile), 1 Oct 2009 @ 1:53pm

Re: Re: Re: Re: Re:
Actually, I was making a jab at "Gap".
[ link to this | view in thread ]
A Dan (profile), 1 Oct 2009 @ 2:03pm

Re: Re:
You beat me to it. If you look at the South Butt logo, I can see how it would be worth a trademark complaint. Even with Mike's consumer confusion yardstick.
[ link to this | view in thread ]
thornintheside, 1 Oct 2009 @ 2:03pm

boycott north face
I have some of their products, look and work quite well. however, I have a choice and will look at alternatives the next time I need some gear. Maybe North Face should change their name to Red Face.
[ link to this | view in thread ]
Anonymous Coward, 1 Oct 2009 @ 2:04pm

The Obvious and Confusion
In the link:
In fact, Winkelmann's dad says the whole idea behind his son's creation is to offer customers an alternative.

Well, Duh ... North Face does not want customers to have a alternative. The logos are very similar, and a lawyer in a hurry could get the logos (and a face and a butt for that matter) confused I suppose.
[ link to this | view in thread ]
NullOp, 1 Oct 2009 @ 2:04pm

Really!
The dudes at North Face need a big time out! Them boyz is takin themselves W A Y too seriously....
[ link to this | view in thread ]
john, 1 Oct 2009 @ 2:19pm

The real issue is that he's 'trading off' of the North Face brand
I'm no corporate shill, but he's using the notority and fame of North Face and using a similar looking logo to sell his product, which without stealing North Face's brand, would probably sell nowhere...

Moreover, his south butt brand dilutes the power and exclusivity of the North Face brand...

It's a funny joke, but I'd be pissed too if I were North Face - this guy's product is only getting notice because of all the hard work North Face already did.
[ link to this | view in thread ]
batch, 1 Oct 2009 @ 2:20pm

Just like the the lawyer defending the guy behind http://glennbeckrapedandmurderedayounggirlin1990.com/ said: "only an abject imbecile could believe that the domain name would have any connection to the Complainant.": Only an abject imbecile would confuse The North Face with The South Butt.

Also, that North Face logo, the 3 curved lines, how is that even possible to trade mark? Its so generic. Like trademarking a single, common, not-made-up, English word, such as "Edge" (also referring to another trademark case here).
[ link to this | view in thread ]
Anonymous Coward, 1 Oct 2009 @ 2:21pm

Re: Finally, sophmoric humor is useful!
"And so it goes with ALL demeaning terms employing the more unmentionable areas of our persons and/or actions. Simply for educational purposes, I'll list a few more:

1. Assclown
2. Fuckstick (double points!)
3. Cockass
4. Ass Bandit
5. Banana Vendor
6. Vagina Face
7. Angry Dude"

You forgot #8...

8. Dark Helmet

As I understand it, it's a derogatory term which refers to a gay man who doesn't clean off his penis after anal sex.
[ link to this | view in thread ]
Dark Helmet (profile), 1 Oct 2009 @ 2:34pm

Re: Re: Finally, sophmoric humor is useful!
Is that why it's DARK helmet? Not enough cleaing?

Brilliant, I love it!
[ link to this | view in thread ]
AC's Long lost brother, 1 Oct 2009 @ 2:35pm

Re: Re: Re:
I don't agree. the only way I can see a moron in a hurry to confuse these logos is if they're drunk and laying upside down.
[ link to this | view in thread ]
Anonymous Coward, 1 Oct 2009 @ 2:36pm

Re: Finally, sophmoric humor is useful!
Whatta Shithead!
[ link to this | view in thread ]
Richard (profile), 1 Oct 2009 @ 2:41pm

Re: The Obvious and Confusion
I checked the logos - they are different ways around.

Not even look same

simples

eeeee
[ link to this | view in thread ]
Bono, 1 Oct 2009 @ 3:06pm

Re:
Sir,

My personal friend and bandmate would take great exception to your callous and insensitive opinion on this matter.

Do not incur our collective wrath, lest we descend upon you like the limb from a great Joshua Tree.

Yours,

Bono
[ link to this | view in thread ]
Richard (profile), 1 Oct 2009 @ 3:20pm

Re: The real issue is that he's 'trading off' of the North Face brand
Think about the implications of this. Apple computer (apparently) names itself after a fruit. Should Apricot computers (or for that matter Blackberry) be forbidden to use their names because they are "trading off" the Apple brand.

What all these people are doing is identifying the nature of their own brand with reference to an existing brand. Unless your brand is actually confusable with the existing brand (which this one clearly isn't) you still have to build your own market presence. The fact that you do it with reference to an existing brand name is no more significant than any other well known proper noun or word in the dictionary - like for example "Eiger" as in "the North Face of the...

Hint - look up Eiger clothing....
[ link to this | view in thread ]
Winky, 1 Oct 2009 @ 3:22pm

Re: The real issue is that he's 'trading off' of the North Face brand
Unfortunately for you and others who too would be pissed, there is no law against "trading off" someone else's brand...just *trading on* that brand.

Exclusions to trademark being what they are, all North Face is doing is increasing this young man's sales.

And to your comment about not being a corporate shill:

It's not really corporate shilling that you are doing sir, it is shilling of another ilk: Law Firm Shilling. We are all painfully aware these days that Law Firms like nothing more than to file suit on behalf of their clients, whether or not it is in their client's best interest.

In this case, I can see the legal team tittering behind closed doors at how North Face is going to spend a king's ransom to fight this quixotic battle, only to find that trademark law doesn't and never did allow them any kind of recourse.

The lawyers get paid either way.

You sir, are a Law Firm Shill.

Shame on you.
[ link to this | view in thread ]
C3PO, 1 Oct 2009 @ 3:27pm

Re: Re: The real issue is that he's 'trading off' of the North Face brand
Funny thing is:

If I had seen the South Butt branded clothing in a store before reading this article...

...I would have thought to myself, "South Butt? What an unfortunate choice of brandname!" I would never have made the connection to North Face.

Now, every time I see it, I will. Hasn't North Face diluted South Butts brand by starting this stupid lawsuit in the first place?
[ link to this | view in thread ]
john, 1 Oct 2009 @ 4:45pm

Re: Re: The real issue is that he's 'trading off' of the North Face brand
Personally, I think NF's strategy is stupid, and just adds to Butt face's sales and builds ill-will against NF. But to each his own. However, for all you 1st Amendmenters, butt face has every right to use NF mark to criticize, comment on, parody NF and its products. But that's not what its doing by selling competing products. There's no reason to sell products under the south butt brand except to get instant recognition (for those who get it) for his products based on the fame of NF. UNLESS this is really some way too subtle counter-corporate, I hate NF free speach campaign... doubtful...
And, I'm an IP laywer who leans strongly toward free speach over IP... Your generalizations are misplaced.
[ link to this | view in thread ]
Whirrled Peas, 1 Oct 2009 @ 8:07pm

Re: Re: Re: The real issue is that he's 'trading off' of the North Face brand
"And, I'm an IP laywer who leans strongly toward free speach over IP..."

You're an IP LAWYER? Really? And you lean strongly toward FREE SPEACH? REALLY?

Whatever doofus. Get a dictionary, Fuckstick.
[ link to this | view in thread ]
Enrico Suarve, 2 Oct 2009 @ 12:37am

Re: Re: Re: Re:
Sweet - I bet that looks great in arabic script - you got a picture?

P.S. May the fleas of a thousand camels infest your armpits
[ link to this | view in thread ]
Enrico Suarve, 2 Oct 2009 @ 12:39am

Re: Re: Re: Re: Re: Re:
ROFL - Remember GTA2 and the 'Gash' shops inside the shopping centre?
[ link to this | view in thread ]
Lisae Boucher (profile), 2 Oct 2009 @ 2:52am

Thanks!
I never heard of South Butt before! Do they have a website where I can order some of their clothes? Do they accept international orders? Now I've heard of South Butt, I definitely want to buy something from them. :-)
[ link to this | view in thread ]
Almost Anonymous (profile), 2 Oct 2009 @ 12:23pm

Re: Finally, sophmoric humor is useful!
"""
...
7. Angry Dude
"""

This actually made me lol, thanks DH :)
[ link to this | view in thread ]
BEACH BOB, 3 Oct 2009 @ 4:27pm

BOYCOTT NORTH FACE
BOYCOTTTTTTTTTTTTTTTTTTTTTTTTTTTTTTTT
[ link to this | view in thread ]