North Face Lawyers Try To Drag South Butt Family Through The Mud

from the a-bit-aggressive dept

Fri, Mar 26th 2010 12:40pm — Mike Masnick

We've been covering the bizarre and somewhat ridiculous fight that The North Face is putting up against a kid who created a parody line of clothing called The South Butt. You can read through the previous stories if you haven't been following this, but at its most basic, this is a trademark dispute. The North Face is claiming trademark infringement, and in doing so, demonstrating that it has no sense of humor. However, the latest legal shenanigans from the lawyers representing The North Face are bordering on cruel. In early depositions, it appears that they are trying to drag the names of the kid who created The South Butt and his father (Jimmy and James Winklemann) through the mud by digging up any kind of dirt on them that they can.

Joe Mullin points us to the news of a contentious deposition of the father, where The North Face's lawyers started bringing up a variety of old business partnerships, including one with someone who had pleaded guilty to stealing money from clients. What that has to do with your everyday trademark dispute is not clear, but it certainly angered the father (and also resulted in claims of a conflict of interest, in that the same law firm had apparently been involved with that former business partner in some manner).

Then there's the younger James (better known as Jimmy), and here the North Face lawyers chose to ask him about being charged as a minor for possessing alcohol at a party last fall, as well as being arrested for having a small amount of marijuana (a charge that was later changed to littering). Jimmy admits that this was embarassing, since his father was unaware of these minor infractions, but he ended up confessing to his father before the news of the deposition came out.

But, honestly, what is up with The North Face? They never should have filed this lawsuit in the first place, as it only makes them look like a bunch of bullies. If they were really concerned about protecting the trademark from being considered generic, why not give the kid a super cheap license and enjoy people finding the whole thing amusing. Instead, they're not just aggressively suing this kid, but bringing up a whole bunch of totally unrelated things to try to embarass both the son and his father. The North Face has gone from just being big corporate bullies to being out and out obnoxious jerks.

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Filed Under: lawyers, trademark
Companies: north face, south butt

59 Comments

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Dark Helmet (profile), 26 Mar 2010 @ 11:15am

Donde?
"North Face Lawyers Try To Drag South Butt Family Through The Mud"

There's a poop joke in there somewhere, but I can't seem to find it....
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crade (profile), 26 Mar 2010 @ 12:48pm

He is obviously infinging our trademark your honour, afterall, he drinks, and might even smoke dope!
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Ima Fish (profile), 26 Mar 2010 @ 12:57pm

I'm just sitting back and waiting until North Face and Monster Cable goes head to head. If they put that shit up on pay-per-view they'd make millions.
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:Lobo Santo (profile), 26 Mar 2010 @ 1:09pm

Re: Pay-per-view
Yeah, except court battles are so very slow... unlike real battles.
Hey! That gives me an idea...
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Ima Fish (profile), 26 Mar 2010 @ 1:18pm

Re: Re: Pay-per-view
Are you saying the battle would not take place in a caged arena?! Damn!
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Tony, 26 Mar 2010 @ 1:18pm

Just did a live chat with North Face rep
This was the canned response:

"The North Face is all for creativity, but we opposed Jimmy Winkelman's logo in order to protect our famous trademark. And, just to be clear, we have not sued him.

We respect genuine, entrepreneurial spirit; we are built on it. However, it's also important to maintain integrity and strong ethics in any business endeavor----such as the creation of a unique logo and brand identity.

The North Face is named for the coldest, most unforgiving side of a mountain and our logo represents Half Dome in Yosemite National Park. For more than 40 years, The North Face has been manufacturing authentic and technically-advanced apparel and gear. Athletes and enthusiasts around the world recognize The North Face brand and logo as symbols of outdoor exploration.

Like thousands of companies around the world, we work diligently to protect trademark rights. This situation is, in reality, a serious problem companies deal with every day."

I politely asked that the rep pass along my distaste with their handling of the situation to those that might care what potential customers think of their company.
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matt, 26 Mar 2010 @ 1:23pm

Mike, don't be disingenuous
Look at South Butt's online product catalog. They sell, for example, a fleece vest which is the exact same style, colors, & fabric as North Face Denali. They brand it with a logo which is quite similar using the same solid arched bands next to the brand name which uses a similar naming structure, a very similar font and the exact same typesetting.

If you took the Nike swoosh, flipped it backwards then printed it on the exact same cut/color/style clothing as Nike, you could be violating their trademark.

South Butt took a nearly identical logo and featured it on a line of clothing that seems to have the exact same cut/color/style as North Face. Isn't that a potential trademark violation? This doesn't seem at all akin to a case like Monster Cable bringing trademark action against a Monster Bike Shop or some other unrelated commercial venture.

Although I totally agree about the improper conduct by NF's counsel. Bringing up municipal offenses committed by a minor in trademark mediation proceedings seems not only irrelevant but improper.
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Anonymous Coward, 26 Mar 2010 @ 1:28pm

Where's the law-talking guys around here
Are they allowed to ask irrelevant questions during depositions?

Even if he didn't need to answer, the questions themselves seem harmful. It seems like there should be some sort of redress for irrelevant questions intended solely to embarrass.
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:Lobo Santo (profile), 26 Mar 2010 @ 1:29pm

Re: Re: Re: Pay-per-view
I'm suggesting a MUCH larger cage--and involving far more of the executives... it'll be fun.
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Chosen Reject, 26 Mar 2010 @ 1:29pm

Re: Just did a live chat with North Face rep
I just tried to email them. Either their email system is broken, or I just submitted it a bunch of times.
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Ben, 26 Mar 2010 @ 1:30pm

Sombody should dig up dirt..
On the CEO, CFO, CTO & The corporate officers at North Face, you know that whole "pivot man at a circle jerk" kind of thing!
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NAMELESS.ONE, 26 Mar 2010 @ 1:33pm

they try to do this with everyone
SO dont download any pron and if they try shit GO POST THE laws REGARDING
SLANDER and DEFAMTION as well AS PAIN and SUFFERING for damages of your country

YES when they know you will counter sue or sue them back they back off

If they had proper legal representation they WOULD NOT BE ALLOWED TO ASK, or SPEAK of things NOT RELEVANT TO THE CASE

thats called hearsay amongst a few things and if you do that often you can get a contempt of court if it's brought up.
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crade (profile), 26 Mar 2010 @ 1:34pm

"If you took the Nike swoosh, flipped it backwards then printed it on the exact same cut/color/style clothing as Nike, you could be violating their trademark."
The style of clothing has nothing to do with trademarks.

As for the logo, if you look at the image portion seperately from the text, and you add in the fact that the guy was an underage drinker and may have smoked dope, it is similar.
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NAMELESS.ONE, 26 Mar 2010 @ 1:35pm

@4
gave me an idea for a matrix like combat sequence with a legal preceding LOL

can end with the judges gavel smashing down
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Ima Fish (profile), 26 Mar 2010 @ 1:35pm

Re: Re: Re: Re: Pay-per-view
And chainsaws!
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Ima Fish (profile), 26 Mar 2010 @ 1:37pm

Re: Mike, don't be disingenuous
"the exact same style, colors, & fabric as North Face"

Um, there is no law against selling clothing of identical style, color, or fabric of someone else.
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mjb5406 (profile), 26 Mar 2010 @ 1:38pm

Re:
You beat me to a comment about the OTHER dirtbags, the ones at Monster Cable. These companies, and their frakking attorneys, need to be slapped down in a court of law.

By the way, I just got a call... Monster Cable is suing me or using their name in a blog post. Oops, there... I did it again!
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OldGeek, 26 Mar 2010 @ 1:39pm

Really
The real problem is the kid is selling the quality of stuff for half the price. He's showing the world that Northface is gouging the he11 out of there customers, and the spoiled brats don't like it.
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Colin, 26 Mar 2010 @ 1:40pm

Re: Mike, don't be disingenuous
Yep, it's exactly the same except for the entirely different words on the logo.

And if "athletes and enthusiasts around the world recognize The North Face brand and logo as symbols of outdoor exploration", why are they worried about people getting this mixed up?
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:Lobo Santo (profile), 26 Mar 2010 @ 1:40pm

Re: Re: Re: Re: Re: Pay-per-view
Yeah!! Now we're on the same wavelength.
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fogbugzd (profile), 26 Mar 2010 @ 1:49pm

Re: Mike, don't be disingenuous
This is much different than just reversing the Nike logo. If someone did that, they would obviously be trying to confuse people who are looking for Nike products and fool them into buying their knock-offs. That is exactly the purpose of trademark law. Nike would win without question.

In this case South Butt is not trying to confuse people. In fact, they are doing quite the opposite and making fun of themselves as well as the whole yuppiness factor that is embodied in the North Face product line.
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Anonymous Coward, 26 Mar 2010 @ 1:52pm

Re: Re: Re: Re: Re: Re: Pay-per-view
Can we also have hungry tigers and land-sharks?
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Nastybutler77 (profile), 26 Mar 2010 @ 1:52pm

Not how I'd like to be known
I feel bad that they are now known as "the South Butt Family." At least the Manson Family has a nice ring to it.
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Matthew, 26 Mar 2010 @ 1:58pm

I've been following this on techdirt for a while, and every time I read the title it always makes me laugh a little.

This particular update reminds me of a governor race, or any political race where they show those stupid commercials with dirt that they dug up about his/her competitor.
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Anonymous Coward, 26 Mar 2010 @ 2:20pm

I will never buy northface
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Anonymous Coward, 26 Mar 2010 @ 2:36pm

Dang
The North Face makes some of the best camping stuff I've ever used.. I guess it's time to stop buying their crap too now..
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Matthew Krum (profile), 26 Mar 2010 @ 3:00pm

Re: Re: Mike, don't be disingenuous
I thought the Nike logo flipped was the Newport Cigarette Logo?

http://www.busytrade.com/common/image.php?file=1264525&x=200&y=200&jpg=
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Anonymous Coward, 26 Mar 2010 @ 3:16pm

Meanwhile, an unintended consequence of North Face's immoral legal wrangling is that the relationship between father and son is probably stronger than ever! (Now that the lies between them have been flushed out.)
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Johnny Canada, 26 Mar 2010 @ 3:16pm

the South Butt Family
Now that they are known as the South Butt Family, won't they get sued by the creators of "South Park"?

I for one could get confused :)
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Hephaestus (profile), 26 Mar 2010 @ 3:30pm

Re: Donde?
here is the newspaper headline when the kid wins

South Butt squats on North Face.
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DJ, 26 Mar 2010 @ 3:35pm

Re: @4
"TEAR DOWN THE WALL!"
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Hephaestus (profile), 26 Mar 2010 @ 3:35pm

Re:
Columbia is better quality actually
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DJ, 26 Mar 2010 @ 3:37pm

Re: Dang
...and buy as much South Butt as possible.

Reverse Streisand effect, anyone?
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DJ, 26 Mar 2010 @ 3:39pm

Re: the South Butt Family
I don't follow South Park, but has there not been an episode about this yet???
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pr, 26 Mar 2010 @ 3:43pm

Re: Re: Dang
I'd never heard of the South Butt before. But now that I have ...
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Anonymous Coward, 26 Mar 2010 @ 3:57pm

I never have, and certainly will never purchase any 'North Face' douche gear.

However, I would like to know where to purchase 'South Butt' apparel.

*google search initiated*
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Nastybutler77 (profile), 26 Mar 2010 @ 4:11pm

Re: Re:
Columbia is crap. For what you pay, Marmot or Mountain Hardware are much better quality and cost about the same as the equivalent North Face product.

/$.02
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DocMenach (profile), 26 Mar 2010 @ 4:15pm

Re: Re: Re: Mike, dont be disingenuous
I thought the Nike logo flipped was the Newport Cigarette Logo?

Actually, Newport began selling cigarettes in 1957, while Nike was founded in 1964. So it looks like the Nike copied the Newport Logo and flipped it around.
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Hephaestus (profile), 26 Mar 2010 @ 4:36pm

Re: Re: Re:
Actually I tend to be rough on sports wear, North Face keeps ripping, ??marmot?? I might have borrowed a jacket by them a couple years back and it leaked when it rained. Columbia just keeps going and going... I guess its a personal preference...
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Tim, 26 Mar 2010 @ 4:53pm

Support South Butt
I will purchasing something from South Butt and sending an email to North Face with a link to this article explaining that I can, in fact, understand the difference between the two names.

I also understand the tactics, and I won't purchase from thugs.
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another mike (profile), 26 Mar 2010 @ 5:00pm

Dear North Face
Dear North Face,

I am going to buy a parka at the end of the season. Waiting until stores offload their winter stock is a great way to pick up quality equipment at a good price. This letter is to inform you that it will not be a North Face brand parka. Or any North Face product ever again. Thank you for your kind attention.

Sincerely,
Another Mike
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fish, 26 Mar 2010 @ 5:24pm

I strongly support only referring to the clothing company in question as "Ass Face" in the future.
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Anonymous Coward, 26 Mar 2010 @ 5:34pm

south butts lawyers were obnoxious to start with. they are getting schooled now big time on how a real lawsuit works
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Chargone (profile), 26 Mar 2010 @ 7:18pm

Re: Re: Re: Re: Re: Re: Re: Pay-per-view
do the sharks have frikin' lasers on their heads?
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Another AC, 26 Mar 2010 @ 7:39pm

@43
South Butt's(notice proper use of punctuation) lawyers may be obnoxious, but they are presenting themselves as those who appreciate humor. They may or may not get schooled by The North Face's lawyers, but they will show the media, the courts and the nation that corporate bullying is something to be fought.
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BearGriz72 (profile), 26 Mar 2010 @ 8:24pm

Re:
Oh look one of North Farce's lawyers came to visit.
For future reference please get a clue.
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Anonymous Coward, 26 Mar 2010 @ 8:52pm

Re: they try to do this with everyone
What are you babbling about, now, mouthbreather?
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Anonymous Coward, 27 Mar 2010 @ 12:45am

Re:
Aaaaaaw, are your bosses all pissy?

Ask them if they'd like me to send them a crying towel.
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athe, 27 Mar 2010 @ 2:15am

Re: Re: Donde?
Replace "squats" with "dumps"...?
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ChimpBush McHitlerBurton, 27 Mar 2010 @ 9:43am

Re: Re: Re: Re: Re: Re: Re: Re: Pay-per-view
Jesus.

ChimpBush's Law:

"At the moment an online discussion has a contributor mention the word "shark", the probability of a followup comment mentioning the word "laser" approaches 1."

CBMHB
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Aaron Martin-Colby (profile), 28 Mar 2010 @ 6:00pm

Re: Re: Re: Re: Re: Re: Re: Re: Re: Pay-per-view
Win.
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JustMe (profile), 29 Mar 2010 @ 10:11am

Lost me as a customer
Hi, I've been a North Face customer for around 30 years and I still have my first NF sleeping bag. However, I've decided that I no longer need to purchase their products.

I have also filled out a letter of complaint at http://northface.esecurecare.net/cgi-bin/northface.cfg/php/enduser/copy_cvg_inqry_form.php
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Anonymous Coward, 30 Mar 2010 @ 1:06pm

Questions in fact go to the character of the person and that persons integrity. Should TNF decide that the South Butt family is honestly trying to be in the clothing business or are they trying to cheat and steal from the trademark that is legally protected.
How honest is South Butt about their clothing? Is it the same as TNF stitch for stitch fair labor wages and same quality of fabrics OR is it lower end stuff made in child labor sweatshops and full of cheap fibers/ and yarns and fabrics?
You can buy a knock off Denali or tee shirt or sweatshirt for much less than South Butt at a gas station.
So is this about pumping fumes or pumping iron. Is the will of a kid really as honest as his clothing?
TNF has done it the hard way through 3 bankruptcies and previous owners while trying to assure its customers of the best quality clothing. nobody can say what that price is worth to the consumer. The fact that so many have bought TNF and a kid even admits that it is worth chasing says they climbed fair to get to the top.
TM's are not BM's..

Parody of free speech does not over rule laws created for fairness and right doing.

SouthButt BM's will drag TNF TM"s to the rest room of a gas station if this kind of law breaking is allowed to get through the Courts.
Who will get the tile work signature phone numbers in those restrooms??
Lawyers looking for more clients??
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Nastybutler77 (profile), 30 Mar 2010 @ 2:25pm

Re:
It's really amazing that you were able to write so much and say nothing at all. I can't even begin to find the point (if there even is one) in all that babbling, but to address your first remark that TNF's lawyer's questions were designed to establish the lack of character and integrity of the "kid," what difference does that make as far as a trademark dispute is concerned?

If you are implying that someone who smokes pot has questionable character, then I guess you probably weren't in favor of any of the past three US Presidents, as they've all either admitted to, or tacitly acknowledged they've smoked pot at some point. Does that mean none of them has integrity or character? I'm not saying they do or don't, just that whether or not they do has nothing to do with marijuana.

Your other arguments are equally irrelevent, or just plain incorrect, to the basis of this trademark case, but I don't have time to waste on launching into more exposition.
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Anonymous Coward, 1 Apr 2010 @ 1:09pm

okay nasty get to the point of trademark law.

does the logo look like the north face logo from ten feet away. is the entire survival of a knock off company that makes gas station quality clothing going to survive based on the name without the copied logo thing. and when the face and butt thing are over who will pay twice as much for south butt as thousands of other sweats and tees and fleece offer them for
in other words the south butt must be able to distinguish itself from the trademark
and so far they seem anchored to it to sell anything to anyone.
do you really know what the difference is between the fabrics in north face and south butt...
where the child labor sewing begins and ends..
come on nasty are you getting ripped off paying twice as much for the butt as the real ones in any gas station store.
the kid is laughing at everyone that is foolish enough to pay him more than most for the same stuff.
as far as pot smoking the real north face was in berkeley man are you stupid or what.. the company was higher than the yosemite based logo tm... it to was a dream of college youth trying to get through school and make a living .
so why knock it because it got big..
if the kid was smart he would play ball and build the business not play school boy adolescent to the media..
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TrademarksProtected (profile), 5 Apr 2010 @ 11:42am

Re: Nike Swoosh comment
fyi - the style of clothing has everything to do with the trademark infringement.

if South Butt was using the trademark (which consists of the words and the design) on power tools, this wouldn't be a threat to The North Face. It is the "likelihood of confusion" aspect that is the basis of their claim; people are likely to believe that The South Butt is related or sponsored by The North Face. Why? Because the CLOTHING IS IDENTICAL.

In analyzing Trademark cases, there are two levels: are the marks identical? and are the goods/services related?
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TrademarksProtected (profile), 5 Apr 2010 @ 11:47am

Re: TMs vs BMs
good comment - excellent. I hope people read it and realize that companies SHOULD protect their valuable trademarks.

Thank you for writing.

Natalie
National Trademark Center
www.trademarksprotected.com
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longshanks, 7 Apr 2010 @ 5:53am

Done with them
I own quite a bit of Nort Face clothing and I'll continue to use it. However, I will not purchase another thread of it; Patagonia will get my money from here on out.
Oh, I also eat at McDowell's!
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Drive23, 15 Feb 2011 @ 1:39pm

I seriously don't get half the comments on here. Why are people making him out to be a victim. It's not like some highschool bully just picked on some random kid. The kid threw a rock at the biggest kid in school. That doesn't make him a victim, that makes him an idiot.

"You mess with da panda, you get da chopsticks"
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