Humorless "North Face" Sues "South Butt" For Trademark Infringement
law.com
law.com
The South Butt logo is very similar to The North Face logo. The design is almost identical except the curves are upside down and one is missing. This is hilarious. But, it's not subtle at all and it would be easy to assume clothes bearing that logo are actually a North Face brand.
On the other hand, I probably never would have heard of South Butt if it weren't for the lawsuit.
In this case it's pretty obvious that the best thing North Face could have done was to completely ignore South Butt, because their actions have only led to South Butt selling more of their stuff. It's a perfect example of the Streisand effect. Shouldn't that amount to something if they later have to defend their North Face trademark?
Presumably, the judge.
"It's a perfect example of the Streisand effect."
A very, very temporary Streisand effect, yes. If North Face is at all confident about winning this suit, then South Butt will have to shut down - you're granting them a brief bit of revenue (which you can later sue them for too!) in exchange for their permanent death.
"Shouldn't that amount to something if they later have to defend their North Face trademark?"
Trademarks don't work that way. "We inadvertently publicized this infringing trademark while we were suing them" is not grounds for losing your own trademark.
I think the basic idea is that trademark rights are valid for as long as you need them, however you lose those rights if you abandon the mark. I think that ignoring infringement is a piece of evidence that the mark is not useful for you anymore. It may not be absolutely critical, but certainly doesn't help.
Suppose some other company markets the brand "The Fourth Ace" using the South Butt logo, and they get successful and start stealing business. The North Face sues them, but have trouble in the case because North Place points out that their logo is a variation on South Butt, which doesn't seem to bother them.
I really, really doubt it. If you believe that, you'd presumably also believe Spinal Tap were real rock group, that Spitting Image was real, and that The Onion is real newspaper.
And even then, the trademarks are still very similar. Even a person looking at them side-by-side can reasonably suggest that the South Butt logo is a humorous sub-brand that comes from The North Face. Often, with Onion articles, you can point to some fact that contradicts fundamental scientific laws and therefore cannot possibly be a true story. Spinal Tap is technically a real band, and while the story told in the movie is fake it is still plausible. I would not be surprised at all if someone saw out-of-context clips of This Is Spinal Tap without knowing what it was, and assumed it was a real documentary.
We are not in any fashion related to nor do we want to be confused with The North Face Apparel Corp. or its products sold under "The North Face" brand. If you are unable to discern the difference between a face and a butt, we encourage you to buy North Face products.
The student didn't cause North Face irreparable harm, suing the student and attracting the attention of the media did. Big companies need to learn when to step down, because a victory in a court of law is not necessarily a victory in the court of public opinion. And it's the public that buys your products, not the Law.
how about instead putting your own reactions into a comment here under the article. i'm sure it will be great and i'll read all of it, regardless of the length.
On a more serious note, this case does highlight the tremendous dilemma faced by companies that invest large marketing dollars in a distinctive mark and brand only to see it suddenly subjected to ridicule in the public's mind. The real risk for North Face is not so much the direct competitive threat as it is the risk that future customers will no longer be able think of "north face" without immediately associating it with "south butt." Parody is a highly compelling way of grabbing our imagination and, if this type of association sticks, it will very likely do great damage to the mark.
At the same time, when a company files suit over the issue, this clearly exacerbates the risk highlighted above. Lawsuits are no longer a localized matter. When they are filed today, they clearly carry the risk of garnering a lot of publicity if their subject matter is otherwise such as to grab people's fancy, and this one certainly does by dint of its subject matter alone.
This must have been a tough one for North Face, and they probably had no choice but to sue to deal with it, in spite of the risks of enhancing the potentially bad association of its mark with the parody. It is a classic case of "no-win" for them.
On a final, unrelated note, law (whatever its notoriously humorless aspects) does serve as a gathering place for all the foibles of the human condition and whatever humor may derive from it lies largely in the subject matter of the disputes over which people choose to fight. I remember once, while clerking for the federal court, a notorious lawsuit that stretched for years over a guy who claimed that an airline owed him millions because it allegedly lost his rare dime in transit. Along such lines, the "south butt" case is one for the case books.
I think they have a great case for infringement, though. From a reasonable distance (a few feet), I can't tell the difference. Oh, right - the south butt logo is on the left. Except, of course, when the item in question (say, a bag) is lying on the floor. Or maybe I don't care that much to remember details, relying more on crass pattern-recognition.
If you think that the text of a logo has all that much to do with the logo, then you're missing the point of having a logo. A "South Butt" logo could have been made that infringed on pepsi, or on mcdonalds. But we'll see how this goes.
Even if they lose the lawsuit and will be forced to change their brand they still come out ahead, because the news of the name change will get a lot of airplay too.
And if they prevail they should send the North Face execs a bunch of flowers and thank them profusely.
It can be also a reputation boost for TNF. After all the parody is on them because they make the best equipment.
I'm sure their clothing woulsd be the same quality. Nevertheless, I choose not to buy from arseholes; otherwise you cause there to be more arseholeness in the world than would otherwise be the case.
North Face (and all other corporations) should make money by making things people want. When they choose the route of legal shenanigans instead, they are not conducive to the public good.
Free publicity for all. Makes me wonder if the Streisand Effect is something that some companies actually strive towards.
I don't see a problem with being satirical, but surely after making $5,000 and receiving the notice from North Face you should be prepared to stop trading?
If IBM didn't exist you probably wouldn't have Microsoft - doesn't mean they shouldn't compete with each other.
Actually, no, I'm wrong, scratch that. What I meant to say was: it'll be a sad day for every entrepreneur without Chinese contacts.
There is a long history of such products, but that does not guarantee a defense.
The real point I was trying to make, though, is that a court might find in his favor, and it wouldn't really be "a sad day for every entrepreneur without Chinese contacts". It would be a reasonable decision. Finding against them might also be a reasonable decision, though I'm prone to want to protect satire as much as possible. :)
It's somewhat puzzling to see this opinion posted on a news site that caters to entrepreneurs.
On the other hand, he's received global coverage and now has the potential to make a substantial amount of cash. There's also the real possibility that negative publicity will force the North Face to back down.
If he wants to stay in business, changing his brand to something vanilla is probably the worst thing he could do.
I cant see that the smart approach is to let them litigate... the comparative size of the companies means it is incredibly risky.
The time to quit is when the cost starts to outweigh the benefits, in this case that time may not have arrived (yet).
Why? If people are continuing to buy their stuff, they are obviously making things people want.
I think this could be remedied by requiring that if the big company loses the lawsuit, it has to pay substancial sums to the smaller entity (maybe an amount could be decided by the jury based on how outrageous their claim was).