The North Face
has filed a trademark infringement lawsuit against The South Butt, a parody
company started by a 19-year old allegedly to help him pay for college.
The lawsuit, filed in federal court in St. Louis, seeks unspecified damages and asks that South Butt's founder, Jimmy Winkelmann Jr., be prohibited from marketing and selling the spoof merchandise.
Mr. Winkelmann with the help of his father and godfather created The South Butt two years ago and began selling them through Williams Pharmacy, which has four stores in the St. Louis area. The brand features fleece, T-shirts and other apparel adorned with a square white on red logo that mimics The North Face's white and red logo. It uses the tagline "Never Stop Relaxing" in a play on The North Face's "Never Stop Exploring" slogan. An online store was later opened.
According to
its 84-page complaint, The North Face claims that, besides making money
on the reputation of The North Face name, South Butt's products are confusing
the buying public. Its lawyers wrote, "Unfortunately, and inevitably, The
North Face's success attracts opportunists seeking to pirate its famous
trademarks for their inferior knockoffs ... While defendants may try to
legitimize their piracy under the banner of parody, their own conduct belies
that claim."
North Face noted that Mr. Winkelmann offered to sell his company to The North
Face for $1 million after The North Face earlier demanded an end to the sales
of The South Butt's products.
In its response
to the court, South Butt describes Mr. Winkelmann as a "cherubic teenager,
budding entrepreneur and college freshman from the heartland of America
studying biomedical engineering at the University of Missouri."
His lawyers said that if not for The North Face's lawsuit, "the South Butt
saga might have been relegated to local Friday fish-fry banter. Unfortunately,
and regrettably, South Butt's youthful exuberant and obvious parody has not
been embraced by North Face ... Jimmy and The South Butt have no choice but
to defend the present action to protect the integrity of the marketplace, freedom
of choice for the consumer, freedom of speech for all, and the fundamental
tenets of capitalism, competition and the American Way."
Articles in USA Today, NPR and other media outlets have led to a hike in sales, South Butt lawyers said.
Writing for St. Louis Today, Joseph E. Martineau, a lawyer, said The First Amendment protects South Butt's right to criticize or poke fun at North Face in words or pictures. But the legal standing is more divided when the parody involves selling competing products.
For instance, one court found that Garbage Pail Kids infringed on Cabbage Patch Kids since the parody was deemed secondary to the infringer's economic interest in selling a product. But another court held that Lardashe jeans for large women did not infringe on the Jordache name because the parody is obvious, according to Mr. Martineau.
Discussion Questions: What's your ethical view in infringement cases involving the parodying of brands? Should The North Face have sued The South Butt?