The North Face claims that consumers don’t know their heads from their asses

by Jason Fischer

The North Face logo

Clothing producer, The North Face (TNF), recently got a lesson in how bad trademark enforcement decisions can make a company look silly. It seems a St. Louis teen thought that it would be amusing to create a clothing line parody, calling it “The South Butt,” — south being the logical opposite of north and butt being… well… you get the idea. TNF was not amused, however, and they set their attorneys to attack mode, sending a cease and desist letter to the college freshman (source).

TNF’s letter asserted that use of the “South Butt” logo (pictured below) constitutes an infringement of their own federally registered trademark (pictured above). On its face, TNF’s claim is not so unreasonable. As any trademark owner (who has a decent attorney) can tell you, trademark rights can be lost if you don’t enforce them. TNF must, in order to maintain its ability to sue legitimate infringers, actively look for unauthorized uses of its logo. However, owning federal trademark rights does not mean you can stop every use of your mark that you don’t like. Federal trademark law was created to prevent consumers from becoming confused about the source of goods, not give complete exclusionary rights in logos, words, and phrases. It certainly wasn’t meant to give companies the power to stifle criticism — a point that corporate attorneys seem to frequently fail to explain to their clients.

The South Butt logo

In order to be actionable as an infringement, the South Butt logo must be likely to cause confusion in the minds of the consuming public. In other words, if “an idiot in a hurry” would not be able to tell the difference between these two logos, then TNF could conceivably stop South Butt from using their logo. I think South Butt’s attorney states the issue with TNF’s claim pretty well:

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. (source)

The irony is that, as many other companies have learned in the past, over enforcing your trademark rights can have the exact opposite effect from the one that you intended. In this case, only a few people were even aware of the “South Butt” brand before TNF took any action. Presumably, TNF wanted to suppress this innocent gibe at their popular brand, but instead, they only managed to boost web traffic at shop.thesouthbutt.com.


This story has also been published on The Tactical IP Blog.

10 Responses to The North Face claims that consumers don’t know their heads from their asses

  1. […] The North Face Claims That Consumers Don’t Know Their Heads From Their Asses – First Amendment Lawyer, Marc Randazza […]

  2. The intergoogles brought me to this interweb when I searched the term “lawyers for hire copyright trademark infringment multibillion dollar settlement”

    As a Christian, I would like to sue the authors of the Koran for biblical infringement. Clearly, the muslims who wrote the Koran, and who continue to wrongly purport that it represents the Word of God, lifted gigantic swaths of Biblical Text and claimed it for their own.

    Do you think I have a case?

    Would any of you lawyers here like to take this case? I don’t have a great deal of money for a retainer, seeing as how I’ve had my own legal issues lately.

    • jfischer1975 says:

      I’m fairly certain that you have no cognizable right that has been infringed by the authors of the Koran. First, the Bible is a public domain work, i.e., any copyright that may have once existed has long expired, meaning that the Bible’s text is free for anyone to copy or use in any way. Second, even if there were a valid enforceable copyright in the Bible, and even if the authors of the Koran plagiarized the whole thing word for word, you’ve missed the statute of limitations by several centuries.

      If you want to base your claim on something like false advertisement or false designation of origin, you’ve got a pretty tough sell that either the teachings of Christianity or Islam are covered by unfair competition laws. Also, you better be ready for a counterclaim of the same flavor, and it would not be possible for a U.S. court to rule on that dispute without violating the First Amendment — so you’re SOL there too.

      My advise to you: find a hobby to spend your free time on, rather than tilting at windmills. How about model airplanes?

    • Harry D. Mauron says:

      Genius idea, but the Jewish controlled courts of “law” will certainly dismiss your righteous claim and steal the idea to sue your holy brothers and sisters for correctly restating their heathen incomplete testament. I think the Mormons already tried this, but the Scientologists ruined it for everyone.

  3. Brother Harry-

    Excellent point. But a workable solution is a negotiated compromise in which Christians embrace God of the Old Testament, a God not unafraid to mete out punishment when deserved, and repudiate the liberal-biased God of the New Testament. This will have the added benefit of providing a nifty solution for the Catholic Problem.

    -RPTH

  4. Joe says:

    If it’s supposed to be a parody, I must be missing the funny parts.
    It does actually seem to present itself as an alternative to TNF, while using a very similar logo, and stating, as their sales pitch “Why bother climbing a mountain?” which seems to be an obvious reference to TNF.

    What if people started making sites like this about every major brand on the market?
    And offered substandard products by tricking you into thinking you’re part of a political statement or something.
    That’s ok?

    I guess I can start selling Ferrarri’s online. I just have to think up a funny play on their name and take a grainy photo of a Pinto, and wait for a sucker to come along.
    With my ridiculous Terms and Conditions, that I make you accept before buying the “pos” product, I won’t have to worry about giving your money back when the car won’t start. Because you agreed to be screwed when you purchased it.

    Anybody see it that way but me?

    • No, I’m pretty sure that you’re alone on this one. The theory is interesting… cute even…. but not remotely close to how trademark law actually works.

      • Joe says:

        Not to beat a dead horse…

        But after reading the appeal you linked to in your Mattel vs. MCA blog posting, I don’t understand why the following doesn’t apply in the case of the NorthButt.
        ***
        Harley-Davidson, Inc. v. Grottanelli,
        164 F.3d 806, 812-13 (2d Cir. 1999) (a parodist whose
        expressive work aims its parodic commentary at a trademark
        is given considerable leeway, but a claimed parodic use that
        makes no comment on the mark is not a permitted trademark
        parody use).

        “Whatever first amendment rights you may have
        in calling the brew you make in your bathtub ‘Pepsi’ are easily
        outweighed by the buyer’s interest in not being fooled into
        buying it.” Trademarks Unplugged, 68 N.Y.U. L. Rev. 960,
        973 (1993).
        ***
        Pages 7 and 10 of the pdf. file.

        The “butt site” seems to exist for the sole purpose of making money off of the Northface brand.
        I’m not familiar with the cases above, but those little snippets appear to speak directly to the owners of this domain, and they seem to give a better argument for my point of view.

        Is it really different?

  5. Chris512 says:

    Actually North Face has a point, since they are acting like a bunch of butts so I can see where there might be some confusion.

  6. […] their lawsuit against The South Butt (TSB).  (You can find my previous coverage of the case here.)  Before TNF filed their lawsuit, TSB had a whopping $5,000 in gross sales — after […]

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