The North Face versus The South Butt

In late 2009, The North Face sued its mocking upstart rival The South Butt for trademark infringement and dilution. South Butt is owned and run by a University of Missouri student James Winkelmann who, according to his attorney, “is just a great kid” being beaten-down by the system.

In his first opinion of the case, Judge Sippel has denied the South Butt’s motion to dismiss – finding it without merit. In a style the fitting of the case, the Judge also warned South Butt’s attorney that “[a]lthough [South Butt's motion] may not reach the level of frivolity, it approaches the line.” In the media, South Butt has been framing the legal question of whether consumers can “tell the difference between a face and a butt.”

As Professor Chiang notes, the classic line from the decision may be “I do not find it to be implausible that the marks cannot cause a likelihood of confusion or dilution.” (Emphasis of negatives added).

In a pre-litigation letter, Winkelmann indicated that he would sell the company to the North Face for $1,000,000.

* * * * *

THE NORTH FACE APPAREL CORP. v. WILLIAMS PHARMACY, INC., JAMES A. WINKELMANN, JR., and THE SOUTH BUTT. LLC., 2010 U.S. Dist. LEXIS 11157 (E.D. Mo. Feb. 9, 2010)

MEMORANDUM AND ORDER

It’s a strange world of language in which skating on thin ice can get you into hot water.

~ Franklin P. Jones

Plaintiff The North Face Apparel Corp. brings this lawsuit for trademark infringement and dilution against Defendants Williams Pharmacy, Inc., James A. Winkelmann, Jr., and The South Butt, LLC. The North Face is an outdoor equipment and apparel company with an international market. In 2007, Winkelmann launched The South Butt as an apparel company in Missouri. Williams Pharmacy is a retail pharmacy that carries The South Butt products.

In this lawsuit, The North Face seeks an order preliminarily and permanently enjoining the defendants from infringing and diluting The North Face trademarks by using or selling The South Butt products under a confusingly similar trademark. Defendants Winkelmann and The South Butt have moved to dismiss all counts for failure to state a claim. For the reasons set forth below, I will deny Winkelmann and The South Butt’s motion.

Background relevant to this motion

The North Face filed a seven-count complaint which contains the following counts: (1) Trademark Infringement under 15 U.S.C. § 1114; (2) Federal Trademark Dilution under 15 U.S.C. § 1125(c); (3) False Designation of Origin under 15 U.S.C. § 1125(a); (4) Contributory Trademark Infringement; (5) Common Law Trademark Infringement; (6) Common Law Unfair Competition; and (7) Violation of Missouri Anti-Dilution Statute.

The complaint begins with a three paragraph “introduction” that describes the history of The North Face, summarizes the nature of the claims, and describes The North Face’s “iconic” Denali jacket. The North Face refers to its “best-selling” and “iconic” Denali jacket in paragraphs 12, 15, 23, and 49. In paragraphs 15, 49, 50 and 52, The North Face alleges that it has trade dress rights in the Denali jacket and that Defendants are trading on its trademarks and trade dress.

The complaint also alleges that the Defendants willfully intended to trade on The North Face’s reputation and willfully caused dilution of The North Face’s trademarks. Another allegation in the complaint is that Defendants have misrepresented and falsely described to the general public the origin and source of Defendants’ products. Attached to the complaint as Exhibits H, I and K were press releases and news articles that quoted Defendants informing the media that their products are not affiliated with The North Face and indicating it is not their intent to infringe on The North Face’s trademarks.

Legal Standard

When ruling on a motion to dismiss for failure to state a claim, I must accept as true all factual allegations in the complaint and view them in the light most favorable to the plaintiff. . . . An action fails to state a claim upon which relief can be granted if it does not plead “enough facts to state a claim to relief that is plausible on its face.” Bell Atlantic Corp. v. Twombly, 127 S.Ct. 1955, 1974 (2007). To avoid dismissal for failure to state a claim, the complaint must contain “a short and plain statement of the claim showing that the pleader is entitled to relief.” Erickson, 127 S. Ct. at 2200. Although the specific facts are not necessary, the plaintiff must allege facts sufficient to give fair notice of what the claim is and the grounds upon which it rests. Id. “The plausibility standard requires a plaintiff to show at the pleading stage that success on the merits is more that an ‘sheer possibility.’ It is not however a ‘probability requirement.’” Braden v. Wal-Mart Stores, 588 F.3d 585, 594 (8th Cir. 2009).

Discussion

Winkelmann and The South Butt argue The North Face’s claims should be dismissed on two bases. Winkelmann and The South Butt argue that The North Face has failed to state a claim for trade dress infringement. 1 Winkelmann and The South Butt also argue that because the complaint contains attachments quoting their attorney and Winkelmann that are inconsistent with The North Face’s allegations, the complaint should be dismissed in its entirety.

1 In the prayer for relief, Winkelmann and The South Butt ask to the Court to strike all references to trade dress, but the motion is titled a motion to dismiss. Winkelmann and The South Butt’s argument appears to be under Rule 12(b)(6) and not under Rule 12(f). Therefore, I interpret their motion as one to dismiss a trade dress claim and not one to strike references to trade dress. If Winkelmann and The South Butt intended this filing as a motion to strike, I would deny their motion for the reasons stated in my order denying Williams Pharmacy’s motion to strike.

Trade dress

Winkelmann and The South Butt argue that The North Face has failed to state a claim for trade dress infringement because it has failed to plead what qualifies its alleged trade dress as distinctive or arbitrary with sufficient specificity to support the notion that those features are distinctive, nonfunctional and have secondary meaning. The North Face acknowledges that the complaint does not contain a count alleging trade dress infringement. As a result, I will deny as moot Winkelmann and The South Butt’s motion to dismiss the trade dress claim.

The complaint in its entirety

Winkelmann and The South Butt acknowledge that The North Face has pleaded the requisite elements to state a claim for relief. They argue, however, that the complaint should be dismissed in its entirety because the complaint contains attachments quoting Winkelmann and his attorney that are inconsistent with The North Face’s allegations and because a comparison of the marks shows that The North Face cannot possibly show a likelihood of confusion or dilution. The North Face argues that Winkelmann and The South Butt’s motion could be described as frivolous.

The complaint alleges that the Defendants willfully intended to trade on The North Face’s reputation and willfully caused dilution of The North Face’s trademarks and that Defendants have misrepresented and falsely described to the general public the origin and source of Defendants’ products. The attachments that Defendants deem fatal to The North Face’s complaint were press releases and news articles that quoted the Defendants informing the media that their products are not affiliated with The North Face and indicating it is not their intent to infringe on The North Face’s trademarks. The North Face correctly argues that the Defendants’ self-serving statements made in anticipation of this litigation are not an appropriate basis for a motion to dismiss. Whether Defendants’ statements are credible is an issue to be determined at a later time and not in a motion to dismiss.

Winkelmann and The South Butt also argue that the marks are so dissimilar that The North Face cannot possibly prevail. I do not find it to be implausible that the marks cannot cause a likelihood of confusion or dilution.

I remind counsel of their obligations under Rule 11 and that, with each filing, they certify to the Court that the motion is not being presented to harass, cause unnecessary delay or needlessly increase the cost of litigation and that the legal contentions are warranted by existing law or nonfrivolous arguments for extending, modifying, or reversing existing law or for establishing new law. Although this filing may not reach the level of frivolity, it approaches the line.

Accordingly,

IT IS HEREBY ORDERED that Defendants Winkelmann and The South Butt’s joint motion to dismiss is DENIED.

Dated this 9th Day of February, 2010.

/s/ Rodney W. Sippel

RODNEY W. SIPPEL

UNITED STATES DISTRICT JUDGE

58 thoughts on “The North Face versus The South Butt

  1. In June I will be a 57 year old outdoor junkie, who bought his first TNF item in 1968 or 1969 (very early in the history of TNF). I have copies of TNF catalogs that go back into the early to mid 1970’s.

    A long time ago (and before all of today’s hype) TNF was generally considered the 2nd best manufacturer of outdoor clothing in the world (Chouinard [which became Patagonia] was, and still is, numero uno).

    But today’s TNF is but a shell of it’s former self. It’s products today are, in the main, decidedly 2nd rate.

    I bought the first geodesic tent TNF ever sold in Europe in 1977; then it was light years ahead of anything on the market. But, I haven’t been able to bring myself to buy anything from TNF since the mid 1990’s. I’ve tried on lots of stuff, and used clothing and equipment bought by others. I haven’t been impressed!

    TNF, like most of the pioneering producers of outdoor equipment from the period 1965-1985, sold out to corporate interests, who have no interests in maintaining the company culture that made TNF great.

    You go Jimmy. I have no doubt that the average person wouldn’t be confused by TNF or TSB logos. But; perhaps TNF customers just might be. After all, if they aren’t smart enough to recognize TNF products for the crap that they have become in 2010, maybe they couldn’t tell the differences between the logos.

    If TSB needs an expert witness with years of experience buying & using TNF (and almost every other ‘big name’ brand of) outdoor equipment around the globe I hope they let me know. I’d be more than happy to help TSB show TNF the error of their ways.

  2. There’s a strong case for parody here, as butt obviously makes fun of face, and SB’s logo copies NF’s logo only enough to allow a customer to appreciate the parody. SB’s logo is not merely an inversion of NF’s logo, as SB uses only two curved bars, whereas NF uses three. The words also look and sound different. Also, even though SB may be using the South Butt mark to designate its goods, thus putting it out of fair use territory, the parody can still be used in averting NF’s claim for dilution. NF should be thankful for the publicity, as another commenter noted above. The parody seems sufficiently strong so as to defy a likelihood of confusion, thus rendering NF’s infringement claim rather weak. SB’s motion to dismiss should have been examined more closely, and it was far from frivolous.

  3. Can the North Face sue themselves for diluting their own good will? Seems like a simple case of Parody and it is ridiculous that the case has gone on this far. To save face, the North Face should just buy out the South B. mark and move on. It is such a ridiculous suit that I won’t buy North Face products anymore. So NF’s own actions are causing me to not want to buy their products. Is this sufficient grounds for NF to sue NF?

  4. “Probably a Dell customer assisant specialist by day.”

    Far better and more honest than you Mooney. You are probably a crack smoking cross dresser at night. I’m sure your wife and kids will be really proud of you when they finally learn the truth.

  5. Slightly OT, but this title reminds me of something I read in the Starr Report about the Clinton/Lewinsky affair — when a White House staffer noted that the intern was getting a lot of “face time” with the President.
    Patent law is not without comic relief.

  6. I again am suposed to understand what he meant is certainly not what he said

    Posted by: sarah mcpherson | Feb 15, 2010 at 12:54 PM

    I’m guessing English as a second language, and law as a part-time hobby. Probably a Dell customer assisant specialist by day.

  7. I wouldn’t want to be the defendant right now.

    Why? The defendant continues to get a lot of relatively cheap advertising. Who ever heard of these guys before this case?

    I’d rather be the defendant in this case than the plaintiff in that sad Nicholas Cage movie lawsuit.

  8. I really am shocked by the mistatements of black letter law here. Come on people, look it up BEFORE you post it.

    For example, “write a text book and then have it copyrighted…”? Really? Copyright doesn’t subsist in the author from the time that the original work of authorship is fixed in a tangible medium of expression anymore? You now have to REGISTER a copyrighted work in order to “get a copyright”?

    There’s a law against profiting from parody? And someone cites SNL as an entity that doesn’t profit from parody in the same sentence? That’s the definition of what SNL does, profit from parody. They sell t-shirts with stuff from their skits on it. They make movies out of this stuff and lampoon people/businesses in it.

  9. *****Actually, you are technically wrong: parody is expressly excluded from liability for dilution 15 USC 1125 (c)(3)(A)(ii) … problem is that parody (and other fair uses) are limited to uses “other than” for identifying one’s own goods/svcs … so you’re partly right that it shouldn’t work for TSB which is being used commercially to identify goods, apparel no less. *******

    Thanks, Jeff. For the trademark infringent and dilution actions, I was, of course, relying on the requirement in the fair use defense that the author must use the mark in a non-trademark manner and not as a source identifier of the author’s work. Sorry I did not make that more clear.

    I do not see The North Face making a claim for Trademark Disparagement. Is Trademark Disparagement still alive and well as a tort? I think so. I think you still have to be very careful about portraying someone else’s trademark in a negative way in the media. Here, the design alone is a trademark, and the use of it might well be viewed as disparaging, the way it is modified to make it look like a bxtt crack, and the phrase being placed next to it saying that it is a butt. This claim might prevail even if this supposed “parody” were made in the media, and not placed on similar goods. By placing it on similar goods, the dilution and infringement actions become available as well.

    I wouldn’t want to be the defendant right now.

  10. My comment at 3.08 was posted before I had read the comments minutes earlier.

    Now I have another question. Did TNF put TSB up to it, in order to use the resulting publicity to make more profits? If not, is this particular business method my invention, which would have been patentable in the USA if I hadn’t already blurted it out here?

  11. I’m wondering whether The North Face is rather too casual about protecting its famous mark. I’m writing from Europe, and have no knowledge of US American trademark law but I should have thought there is plenty of scope here for:

    1. registrations of marks that correspond to the device/colour combination content of the logo, irrespective of the words that are found within the red field.

    2. if “palming off” is a misrepresentation that is made in order to feed off the reputation of a competitor, wouldn’t TNF want to run a palming off component in the complaint of misappropriation of its famous mark?

  12. ****Not that I would make fun of you…*****

    Nor I you, but surely you realize that The North Face has registered the design alone, absent limitation to any particular words, in addition to the combination mark. For a few examples, see the following serial numbers: 77600199; 76223997; 73138805; 73019714.

    To be clear, I do not represent any of the parties, or have any kind of personal stake in the matter that would cloud my judgement. I wonder if our anonymous poster can say the same?

  13. Parody is making JOKE. Such as in SNL. But making money off of a parody continuously, I would’t call that parody. I’d call that something else. Piracy maybe? Or is that to strong?

  14. so you’re partly right that it shouldn’t work for TSB which is being used commercially to identify goods, apparel no less.

  15. problem is that parody (and other fair uses) are limited to uses “other than” for identifying one’s own goods/svcs.

  16. broje: Actually, you are technically wrong: parody is expressly excluded from liability for dilution 15 USC 1125 (c)(3)(A)(ii)

  17. broje,

    Not that I would make fun of you…

    In order to read the words the label would have to be in a particular orientation.

    Since the words and the offending curves are together, the argument of viewing upside is considerably weakened – unless one is confused by upside down words being exactly the same as rightside up words.

    Aside from the graphic being two curves rather than three, SB’s logo can also represent a picture of someone sitting. Most people sit in one direction.

    Curves alone are not in question – curves in relation to text are not confusing and have added meaning.

    Recognizing that being flippant is a part of the strategy, when this gets serious, North Face is likely to be faced.

  18. Please correct me if I am wrong, but I don’t thank that parody is a defense to trademark infringement, trademark dilution, or even trademark disparagement.

    Plus, to me, the symbol alone would appear to be grounds for infringement. For example, keep in mind that clothing is often folded and laid flat on tables for purchasers, and can be viewed from either side. That SB logo, viewed upside down, could easily confuse a consumer with the similar graphic and upside down words. Placing parodic language next to it does not solve the problem, especially where the SB word mark will be upside down when the graphic mark is viewed from the angle at which it is most likely to confuse the consumer.

    So I guess you can see I have a problem with the view that the parody excuuses it, or that people would not likely be confused by it. As always, this has not been legal advice.

  19. sarah mcpherson,

    If you own a copyright, you inherently restrict another’s right of free speech. For example, if you write a textbook and have it copyrighted, I cannot copy your entire text word-for-word, make it my textbook, and yell that the First Amendment protects my use of your work. Hence, the copyright law inherently restricts my right of freely “speak’ your words in your text.

  20. Oh and by the way Malcolm, like so many of your posts, I again am suposed to understand what he meant is certainly not what he said

  21. S.McP so sorry I am ignorant. Is that what you meant?

    I don’t think that’s what WCG meant. It’s certainly not what he said.

    But congrats on realizing that you are ignorant. That’s the first step to recovery.

  22. So if copyright being what I have been told is stronger than Patent Law. And then that makes Patent Law Bull S$$t.Patent Law is in essence heheheheh….. diarrhea? How’d have thought. Strike what I said about Attorneys taking over after an action. It’s a wash. hehe And Patent Attys. need to get in the bread line with the rest of us.

  23. Jeff,

    Parody is a defense to free speech under the First Amendment. Aren’t trademark laws an inherent restriction to free speech?

  24. Does a parody defense work against a dilution claim when you are using the parodied mark to sell competing products (i.e. apparel in this case)? What are the elements of dilution?

  25. I’m trying to remember how dilution laws work…

    Setting that aside, though, I’m rooting against SB. It’s not just a parody website making fun of a brand that takes itself seriously–he’s actually selling clothes.

    link to shop.thesouthbutt.net

    Were it not for the North Face, he probably wouldn’t be making much money off of the site…

    …and he’s offered to sell the company for $1M, which is the cybersquatter MO.

    Maybe none of this matters under dilution law; I don’t know…

  26. I’m pretty sure that the North Face has no obligation to get a sense of humor. If customers (or potential customers) are confused at a glance and write the North Face letters of complaint (or asking for merchandisers, or wondering about warranties), the South Butt stops being a fun parody, and starts costing corporate resources

    It sucks that the little guy is being pushed around, but everyone who made it through Trademark Law in law school knows that it happens.

  27. I’m impressed by the number of supposedly smart people here who are incapable of recognizing a parody.

    Doesn’t that suggest that there might be a likelihood of confusion, even though it is clear to you and me that it is a parody?

  28. Ridiculous. This should have been kicked out by the judge sua sponte. And NF should get a sense of humor.

  29. Honestly, I got the joke once North face filed the complaint, but I never would have though of North Face had I seen a South Butt logo.

    Regardless, this is the type of case that reinforces my opposition to dilution laws.

  30. West Coast Guy,

    I am confused by your moniker, being a direction and a (gross) body part.

    You will need to cease and desist use of that moniker for fear of likelihood of confusion.

  31. Does anyone on this board believe that Winkelmann would have chosen the name “The South Butt” and drawn its mark as shown but for the presence of “The North Face” and its mark? Does anyone on this board believe that he did not use The North Face mark in naming his company and developing its mark?

    Frankly, at first glance, my wife and I were confused in thinking that the product was from The North Face. It was only after a double-take did we realize it was not The North Face.

  32. If the judge held the defense’s motion to dismiss, borderline frivolous, the judge should also hold the plaintiff’s complaint as frivolous on the face of the facts alleged in the complaint itself. If the judge did not, the judge is paying due deference to the power of big corporations to affect judicial as well as polictical outcomes. After all, the judge forbade either side to file any frivolous motions, as if he was anticipating them. Without having to pay deference to the power of big corporations, the judge would know that no jury would ever find the two marks to be confusingly similar, that is why he himself used such a confusing language of implausibility, that itself would be butt of jokes. – IPG

  33. There is nothing in the law that says Parody cannot be for economic gain.

    Parody without some level of approximation would not be parody.

    Anyone egotistical enough, yet gullible enough to buy into “The North Face” marketing message probably also believes that ANY direction combined with ANY body part evidently falls under the North Face umbrella of protection.

  34. It’s not just the color; look at the curved bars in the corner. I am (ok, was) an avid skier and N Face makes great clothing and their brand is well known in my circles. Yet, I might think that South Butt is a joke BY North Face if it had the same “dress”, and thus think it was their merchandise. South Butt is either lying or deluded if they claim not to be trying to gain(at least) exposure/reputain by way of NFace by their name/dress.

  35. “And it just shows the danger of using multiple negatives that what the judge actually wrote is directly contrary to what he likely meant.”

    Or using really long sentences without proper or even any punctuation.

  36. Great catch TJ.

    Not sure it’s directly contrary to what he meant though. He meant to say “it’s not implausible that someone could find confusion or dilution”. But he said (translated) “it’s plausible that someone could fail to find confusion or dilution.”

    A directly contrary statement to what he meant would be “it’s implausible that someone could find confusion or dilution.”

    Still, great catch!

  37. Now that I see the respective logos/marks side-by-side, I agree with IANAE. I would have suggested South Butt at least use a different color scheme and style for the curved features of the logo, as well as a different font type for the mark.

  38. I do not find it to be implausible that the marks cannot cause a likelihood of confusion or dilution.

    Wow, a triple negative. And it just shows the danger of using multiple negatives that what the judge actually wrote is directly contrary to what he likely meant.

  39. When both labels are shown in the same color, as in this article, it’s completely plausible that a customer in a hurry could be confused as to source.

    That suggests an easy resolution to this dispute, no?

  40. If anyone confuses the source of south bxtt goods with the source of north face goods, we should just put them out of our misery.

    When both labels are shown in the same color, as in this article, it’s completely plausible that a customer in a hurry could be confused as to source. SB might be a natural (if silly) brand extension of NF, and if you turn either label upside down it becomes hard to imagine that even the position of the “butt” graphic is coincidental.

    It’s not like the apparel brand space is so crowded that this guy couldn’t have come up with something more distinctive. And I only refer to him as a “guy” because I assume Dennis didn’t completely disable the obscenity filter.

  41. If anyone confuses the source of south bxtt goods with the source of north face goods, we should just put them out of our misery.

    I still think the appropriate claim is copyright infringement (derivative works), but the parody defense kills it.

  42. It’s truly a shame that the defendant’s “we disagreed with the plaintiff in a press release, so the case should be dismissed” argument didn’t fly.

    Whatever happened to freedom of the press?

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