ASCAP Now Demanding License From Venues That Let People Play Guitar Hero

North Face Didn't Get The Message; Sues South Butt

from the yeah,-that'll-go-over-well dept

Tue, Dec 15th 2009 8:40am — Mike Masnick

Earlier this year, we wrote about how outdoor clothing firm North Face was seriously overreacting in threatening a small parody clothing manufacturer run by an 18-year-old student creating clothing under the "South Butt" brand name. At the time, we were amused by the boy's lawyer noting:

"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."

Well, now he may get the chance to explain that in court as well. Despite all of the publicity around those original threats, which resulted in many people trashing North Face for threatening this parody operation, North Face has apparently decided to still move forward with a lawsuit against the kid (thanks Jackie). Apparently, North Face has no sense of humor whatsoever. It's really amazing that no one at North Face paid much attention to what was being said online about the company even in bringing the threat of a lawsuit. Now that it's actually filed, the backlash may be an even bigger deal. While it is true that companies need to police misuses of their trademark, this was an opportunity for North Face to act cool about it (and, hell, why not just grant the kid a license). It would have made them look cool. Instead, they look like big corporate bullies, beating up on a kid who was having fun selling a parody line of clothing.

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Filed Under: clothing, parody, south butt, trademark
Companies: north face, south butt

50 Comments

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senshikaze (profile), 15 Dec 2009 @ 8:57am

so can i buy south butt clothing on the internet?
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DH's love child, 15 Dec 2009 @ 9:08am

Cue AC's "moral panic" rant in
5......4.......3......2......
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The Mad Prosecutor, 15 Dec 2009 @ 9:10am

Mike, I think you truly (and often) greatly overestimate the backlash for events like this.

A vast, vast, vast majority of customers will never know, and a vast majority of those that do know won't care or spend less as a result. This registers as a "huh!" to most people.
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:Lobo Santo (profile), 15 Dec 2009 @ 9:11am

Re: Cue AC's "moral panic" rant in
It'll likely be that person who wants to be my pet (which is SO weird...)

Seriously, any pet of mine which acted so ignorantly would be kept away from everybody until it had learned to reason...
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Dark Helmet (profile), 15 Dec 2009 @ 9:15am

Re:
"Mike, I think you truly (and often) greatly overestimate the backlash for events like this."

Let's assume you're right, and the backlash produces nothing more than a blip on North Face's radar. The question remains, how is this a more beneficial reaction than selling the kid a cheap license to use their trademark or whatever and having fun with this whole thing? Protection doesn't become an issue if it's licensed, and maybe they make $20 off of a license rather than the gobs of money they're spending on counsel to strike down the horrific threat posed by a college kid that uses potty language....
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Dark Helmet (profile), 15 Dec 2009 @ 9:30am

Re: Re: Cue AC's "moral panic" rant in
"Seriously, any pet of mine which acted so ignorantly would be kept away from everybody until it had learned to reason..."

Sometimes you just have to put the animal down for the sake of society....
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Ima Fish (profile), 15 Dec 2009 @ 9:36am

Re: Re:
"how is this a more beneficial reaction than selling the kid a cheap license to use their trademark or whatever and having fun with this whole thing?"

Great idea, I totally agree, but the problem is that attorneys cannot bill their clients for "having fun with this whole thing." And that's the root of this problem, as far as I'm concerned.
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John Doe, 15 Dec 2009 @ 9:36am

Why does he need a license?
His name is completely opposite (in every sense) of North Face, so why does he need any kind of license at all? He doesn't use either North or Face or any combination thereof.
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Derek Bredensteiner (profile), 15 Dec 2009 @ 9:50am

Re: Re: Re:
My sarcasm meter is pretty weak, but I'm pretty sure that's a joke. In all seriousness though, that is what's needed to solve the real cause of these issues. We need something to keep attorneys busy that doesn't involve suing people. Perhaps some sort of large ball of string ...
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:Lobo Santo (profile), 15 Dec 2009 @ 9:58am

Re: Re: Re: Cue AC's "moral panic" rant in
Agreed, but long ago I swore that any pet of mine--in exchange for its lifetime of "imprisonment" (ie being a pet)--would live out its natural lifespan in the greatest luxury which I could maintain.

Oddly enough, this is the primary reason I've rarely kept a pet...
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Ragaboo (profile), 15 Dec 2009 @ 9:59am

Re: Why does he need a license?
Frankly, I was wondering the same thing. I find it interesting that Mike doesn't say that North Face doesn't have a legal leg to stand on, he simply jumped to, "They should offer him a license," with an implied, "and he should accept!" Why should he pay them for an unnecessary license? Parody is allowed, especially when you're selling a product that could NOT be confused for the actual product by an idiot in a hurry. Even if his line becomes popular somehow and starts getting offered in stores (which is obviously incredibly unlikely), there is still no danger of someone grabbing a South Butt jacket thinking it's from North Face.

Am I way off? I don't get the omission on Mike's end...
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vmichael, 15 Dec 2009 @ 10:04am

no news is bad news
there truly is no form of bad press. especially on the internet. Google ads, put up a link for north face at macy's at the bottom of this page when i read it...
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Anonymous Coward, 15 Dec 2009 @ 10:05am

Re: Why does he need a license?
I was also rather confused too. If I saw South Butt I'd probably think "Hong Kong rip off... and they had a sense of humor." This lawsuit is going to go no where unless North Face spends tons of money to make the judge and defense relent and say fine.
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interval, 15 Dec 2009 @ 10:06am

I thought parody has been tested and come out smelling fine through the courts so many times any case involving it should have been immediately dismissed. How can any reason lawyer take such a case? You find an unreasonable one I guess...
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Anonymous Coward, 15 Dec 2009 @ 10:07am

Re: Re: Re:
Yep, and it's probably why even the most basic North Face jackets run $150+.

It doesn't cost 200% more than a comparable Columbia Jacket because there is 200% more materials in the jacket, there's 200% more attorney fees, all FREE!
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Rabbit80 (profile), 15 Dec 2009 @ 10:28am

If i saw both in the shop side by side, I would buy both... North Face T-shirt / South Butt trousers :) I would say the two products compliment each other! Granting the kid a license (to mention the North Face name in his marketing) could make it possible for both companies to make more cash!
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Anonymous Coward, 15 Dec 2009 @ 10:39am

Never buy from them
Well, I was trying to decide on a new winter jacket to get.. I guess I'll be getting Columbia.
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jayfree, 15 Dec 2009 @ 10:45am

Re: Never buy from them
If you live in the US, check out some high quality American Made Clothing, it's worth the effort . North Face and the likes are mostly imported sweatshop garbage with a 2000% markup.
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Chuck Norris' Enemy (deceased) (profile), 15 Dec 2009 @ 10:55am

Re: Why does he need a license?
If you click through the links you will see that the South Butt logo is an upside down North Face logo. I am pretty sure that is the major to do. This is the first I heard of South Butt so I am going to try to get some clothing if still possible. Hilarious stuff, really. Thanks North Face for bringing the brand to my attention through lawsuit.
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Dementia (profile), 15 Dec 2009 @ 10:56am

Not to side with North Face, I think they're being amazingly stupid, but while the entire logo IS pretty much completely opposite of the North Face logo, I can see where they might be confused due to the general style. However, although I can see a possibility of confusion, I would tend to agree that a licensing agreement, while cheaper than a lawsuit, shouldn't be necessary.
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David T, 15 Dec 2009 @ 11:22am

Helps me narrow down my shopping list
I was deciding between either a North Face or LL Bean jacket. The choice is made; I don't like bullies.
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B's Opinion Only (profile), 15 Dec 2009 @ 11:23am

Yup. I suspect The North Face is most concerned with the graphical treatment of South Butt's logo. It is substantially similar, and while very clever in its humor, would be enough to make most lawyers salivate.
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kilroy, 15 Dec 2009 @ 11:24am

rounded corners on every web page are in danger of being next ...

The way I see it is that his only crime is in drawing a couple of curved parallel lines and then having the audacity to name his company the South Butt. I am not a sheep & don't buy the North Face crap any way but now I will make a point of not even accepting their product if it is offered free of charge - as a prize or a gift.

It might not hurt their bottom line, but if enough rain-drops fall in quick enough succession I've seen entire mountain sides washed away. Now that would be something I'd like to see the lawyers for the North face at the bottom of.
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Tatheg, 15 Dec 2009 @ 11:28am

North Face used to be known for quality products ...

Now they are the Members Only of this decade ...

Oh well. Nice knowing you North Face ....
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Anonymous Coward, 15 Dec 2009 @ 11:45am

Oh well,
It's Burton or Columbia for a new snow jacket this yr. Im certainly not going to help North Face
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Bob (profile), 15 Dec 2009 @ 11:50am

Well...
Maybe it should be South Butte
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Pippo, 15 Dec 2009 @ 12:04pm

Pfft
hahaha

http://www.elpippodelagente.blogspot.com/
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Andrew F (profile), 15 Dec 2009 @ 12:07pm

I'd love to know how much extra business this lawsuit is generating for South Butt.
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mrtraver (profile), 15 Dec 2009 @ 12:20pm

Re: Why does he need a license?
According to this article, the trademark issue arose because he is using a mirror-image of the North Face logo. http://www.columbiatribune.com/news/2009/dec/14/lawsuit-aims-kick-south-butt-out-business/
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Pitabred, 15 Dec 2009 @ 12:31pm

Re: Re: Re: Re: Cue AC's "moral panic" rant in
Completely OT, but in my experience cats are rarely prisoners. They're typically just visitors who happen to be happy not leaving.
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JH, 15 Dec 2009 @ 12:33pm

Re: Helps me narrow down my shopping list
Maybe you should wait until BB Lean starts up with an upside down LL Bean logo before you make your purchase ;)
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Christopher (profile), 15 Dec 2009 @ 12:39pm

+1 accurate
Lawyers like money.
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Anonymous Coward, 15 Dec 2009 @ 12:59pm

To the parodist all I can say is "Welcome to the real world of business." Perhaps if he had stifled his intent to play cutesy for long enough to learn even a little bit about trademark law he may have realized that he was inviting precisely this type of reaction and that the law is not in his favor.

The holder of a well-known trademarks is not exactly thrilled when someone decides to use a colorable imitation of the mark in a manner representing comical relief or even ridicule.

Advice? Settle ASAP, apologize, adopt another trademark, and then get on with the business of selling your products.
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dorp, 15 Dec 2009 @ 1:08pm

Re:
To the parodist all I can say is "Welcome to the real world of business." Perhaps if he had stifled his intent to play cutesy for long enough to learn even a little bit about trademark law he may have realized that he was inviting precisely this type of reaction and that the law is not in his favor.

Wait, you forgot to mention your typical "moral" panic!
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Robert Ring (profile), 15 Dec 2009 @ 1:55pm

Re: Why does he need a license?
I assumed Mike was saying that, even though the kid shouldn't legally need a license, North Face could grant him one anyway, just as a kind gesture.
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Dave H, 15 Dec 2009 @ 4:26pm

This isn't quite as frivolous as you think it is. First of all, in response to one of the commenters, this isn't the kind of parody that trademark dilution law is likely to protect. Second of all, counsel for the South Butt said they're trying to get North Face to buy them and their inventory for a million dollars. Seems like a case of a lame company blatantly taking advantage of another's brand goodwill and doing the equivalent of cybersquatting on their trademark. I don't think this is a case of North Face just being unable to take a joke.
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SteveC, 15 Dec 2009 @ 9:42pm

South Butt should...
Obviously, South Butt should take aim at North Face, and fart in their general direction.
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Michael, 16 Dec 2009 @ 5:38am

Re:
North Face may be unhappy, but whether or not they have a legal leg to stand on is pretty questionable. The real question is if turning the North Face logo over is enough of a change to make sure consumers know the difference (remembering that is the purpose of trademarks).

The logo looks quite different upside down, so it may not be confusing. We will see how the court rules, but assuming they stick to the purpose of trademark law, North Face will need to demonstrate that the change to the logo is not significant enough to avoid consumer confusion. That may not be all that easy to do in this case.
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KellerMaverick (profile), 16 Dec 2009 @ 5:42am

Maybe...
North Face just wants to let people know who the butts really are.
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Dave H, 16 Dec 2009 @ 10:29am

Re: Re:
No offense, Michael, but do you know anything about trademark law? Likelihood of confusion is evaluated by using an 8-factor test (in most jurisdictions). If you think this isn't nearly a slam dunk case for likely confusion given the virtually identical goods and the blatant attempt to piggyback on North Face's accumulated goodwill, you're wrong. Also, this "purpose of trademark law" talk is misleading. The purpose of trademark law is not consumer protection but protecting businesses from illegitimate diversions of their trade. Consumer confusion is sometimes used as a proxy, which is why you see a lot of it in the case law, but let's not kid ourselves about whose interests are being protected here. The South Butt's only shot here is a parody defense, but there's very little shot of that succeeding given the pretty weak parody.
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DS78, 16 Dec 2009 @ 1:44pm

Re: Re:
The upside down logo also resembles a butt...
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Esahc (profile), 16 Dec 2009 @ 2:28pm

Re: Re: Never buy from them
Patagonia is a good one.
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Dave H, 17 Dec 2009 @ 6:46am

Also, in case anybody wants to look at the actual complaint, it's here:

http://www.courthousenews.com/2009/12/14/SouthButt.pdf

It'd be great if Techdirt linked to the legal documents involved in cases like these instead of relying on others' reports.
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Anonymous Coward, 18 Dec 2009 @ 12:07pm

this is stupid South Butt is a cheap crapy knockoff!!!

North face rocks and i would sue South Butt too!!
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anonymous, 23 Dec 2009 @ 10:23am

Re:
totally agree
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anonymous, 23 Dec 2009 @ 10:29am

Re: Re:
i read the lawsuit, im completely on northfaces side, there are many ways to become an entrepreneur this kid could have done it in a number of ways. hell, if he had a half a gram of talent he could of created his own logo, but he doesn't, so whats the next best thing to fast riches? rip off another companies already solid business model.

which he had no qualms of doing, i hope they sue his ass into the grass and into the dirt!
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Anonymous Coward, 19 Jan 2010 @ 2:17pm

tell the kid to do this... tell the kid to do that.
when does the kid get to say, hey i went to high school, i saw this crazy thing that my peers were all buying a brand that doesn't make its own clothes; then i remembered the story about THE EMPRUOR AND HIS CLOTHES.

North Face really did make their own clothes in Berkeley Calif but they went bankrupt being knocked of by off shore labor with other brands like Columbia and Polo to mention just two of a hundred more.

So VF really Vanity Fair a famous lingerie company decided to get into the great outdoors first buying backpack companies and jeans makers.

Then they won the auction bid for North Face for around $40 million.

The factory was gone in Berkeley, the retail outlet remains.
The brand grew making everything but Goretex and Polartec and Down.
Placed in Macy's and other non technical retailers the North Face has changed from a brand about the most difficult side of a mountain to climb to a brand that has paved over malls with parody tee shirts, sneakers, sweatshirts and anything else you ever saw or bought in a Mall rather than a ski shop or a famous outdoor barn like REI.

A Butt is a butt and a Face is a face. But the real meaning of those words changes as fast as anyone grows to become ten times bigger than the original founder who never allowed the North Face brand beyond the scope of the original retail store that started it all called North Face.

So now the bra and panties of VF (Vanity Fair) are really upset that the BUTT has found their roots.

North is North and South is South if the brand can't tell you that then do not go climbing or exploring in North Face or you will go the wrong way. And if you do relax with South Butt instead of exploring make sure the kids and the family dog are enjoying it too.

Yes the PARODY worked and is near perfect.. It broke the tried and true needle of a compass
Up's that last three letters might become a parody of compbutt..
As in hey Vf comp it and leave the kid alone.
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Anonymous Coward, 19 Apr 2010 @ 6:37pm

Re:
ya
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mike, 26 Jan 2012 @ 5:07pm

More people who dont like NorthFace
Check out this campaign against northface http://stop-northface-campaign.let.nu/
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Robert, 8 Jan 2016 @ 9:34am

The North Face makes overrated, overpriced crap.
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