Their motion to dismiss the suit denied, the good-humored team at The South Butt must now buckle down to business in light of the trademark infringement and dilution charges brought against them by The North Face. Predictions on the outcome of the North Face and The South Butt lawsuit remain uncertain and inconsistent.
Trademark infringement and trademark dilution are types of unfair competition, and occur when a business appears to have borrowed pieces of a logo or slogan that have already been registered.
The North Face’s claims include that The South Butt is purposefully attempting to harm The North Face’s reputation and intentionally deceiving the public into believing that The North Face and The South Butt are affiliated.
“If you’re trying to promote that association, then that is a type of infringement,” Craig Jenkins, Ohio University professor of the Department of Management Systems, said.
The North Face’s claims depend largely on “likelihood of confusion,” or the plausibility that a consumer would mistake a South Butt product for a North Face product.
“The consumer just has to know that it’s not The North Face, and as long as they know it’s not North Face and there’s no confusion in the minds of the public, then the likelihood of confusion disappears,” Jenkins said.
There is no specific test for likelihood of confusion, however the trend is that the senior user of the mark, in this case The North Face, will be favored.
The South Butt’s defense depends on attorney Al Watkins’s ability to prove that The South Butt products are a parody. Jenkins said that he has never heard of this defense being used in a trademark case, but only in cases of copyright infringement. (1), (2)
Cathy Perkins, an Ohio attorney, defined a copyright as a form of protection to authors of original works of authorship.
“A parody would also be considered an original work,” Perkins said. “But you also want to make sure that it doesn’t infringe so much on the original that it would be a violation of the original.”
Jimmy Winkelmann and Al Watkins are hoping that Judge Rodney W. Sippel will decide that The South Butt isn’t too original or not original enough. A trademark parody must balance perfectly on the line between clever and confusing.
“The problem with [the defense] is that it actually kind of admits that they borrowed from the other person’s trademark to create the parody,” Jenkins said.
The North Face’s official complaint asks that the court withdrawal The South Butt’s request to register their trademark, and also that they would order The South Butt to destroy all the products with their logo. The North Face is also seeking damages, but Jenkins believes this part to be meaningless.
“In actually, for a big company like The North Face, the damages are not really significant,” Jenkins said. “What they really want is this guy out of business.”
Sophomore business student Alex Welsh agrees. “They [The North Face] are just trying to be competitive and use their weight. I guarantee that’s what they’re going to do in the courtroom. They’re going to try to throw their weight around just to try to get rid of competition,” Welsh said. (3)
Welsh believes that The North Face has too little trust in the education and intelligence of the general public.
“I don’t think it’s misleading,” Welsh said of The South Butt’s logo. “I think The North Face is mad because it’s clever.”
Perkins holds a similar view, saying, “Nobody’s going to turn up with a North Face if you say, ‘Go buy me a South Butt jacket,’ and vice versa.”
However, the importance of this case for The North Face is that its name and product not become too casual.
“Your reputation is actually worth more money to you than the brick and mortar,” Jenkins said. “If you have a lot of people selling products under a trademark that looks like North Face, and North Face doesn’t defend that mark, then sooner or later that mark will be worthless to them.”
Jenkins said that the situation is comparable to what has happened to trademarked names like Zipper, Velcro, Xerox, and Kleenex. All of these were once specific brands and have now become common names for anything similar to them.
“It all depends on whether the consumer gets the joke,” Jenkins said. (4)
As far as jokes go, it seems that The South Butt has many more up its jacket sleeves. The question is whether or not they are taking it too far.
“The North Face is taking the situation too seriously, and The South Butt isn’t taking it seriously enough,” Welsh said. He said that it stems from The South Butt wanting to create awareness and taking advantage of their rising publicity.
The first South Butt commercial:
A North Face commercial:
1) In 1984, Anheuser-Busch threatened the owners of a flower shop called “This Bud’s for You” with a lawsuit for trademark infringement.
2) In 2006, McDonald’s won a lawsuit against a restaurant in Scotland called McCurry. The court ruled that McDonald’s holds the rights to the prefix “Mc.”
3) While The North Face may have all the weight of money and power to tip the scales, at least the South Butt has had an increase in sales due to publicity.
4) Even Rush Limbaugh voiced an opinion on this lawsuit, saying, “This is hilarious.”