Consumers Confuse Your “Face,” My “Butt”?

North Face v. South Butt settled out of court on Apr. 11, 2010. Nobody’s sayin’ nothin’ about the terms beyond “no comment” or “The matter has been amicably resolved between the parties” (nobody was quoted as saying “If we told you, we’d have to kill you” but it may be implied).

But(t) – even though Plaintiff was after a permanent injunction against marketing pretty much anything with a South Butt trademark, Defendant’s website is still up a month later and even features a “South Butt rap.” Score one for the smartalecks; I am so freaking glad the law hasn’t been able to suck all the humor out of the marketplace yet. A couple of the broader interpretations of trademark dilution and and the “goodwill-hitchhiking” aspects of unfair-competition law could do that someday if we’re not careful.

In case you haven’t been following this one, here’s a quick recap. The North Face is a big, famous maker of outdoor equipment and apparel; the class of high-tech, high-end gear that tempts adventurous yuppies to substitute it for experience, research, and local guidance, occasionally resulting in Darwin Award nominations. The South Butt was started by then-high-school-kid Jimmy Winkelmann, who also used the slogan “Never Stop Relaxing” (North Face’s is “Never Stop Exploring”). Last December NF filed a complaint against SB for trademark infringement, trademark dilution, and unfair competition.

Trademark infringement is when two marks on similar goods/services are so similar that consumers become confused; they might buy one of the brands by mistake, thinking they’re buying the other. Since identifying the source of goods and services is what trademarks have been for (for about 3000 years), a possible mis-identification defeats the whole social purpose. This was the part of the complaint that begged responses such as SB’s (former) online disclaimer: “”If you are unable to discern the difference between a face and a butt, we encourage you to buy North Face products.”

Unfair competition is, at its original core, a type of commercial fraud: passing off your goods as coming from someone else, or vice versa. That’s what those look-alike designer knockoffs sold on street corners are, but not really what SB did. However, a whole penumbra has built up around that core, embracing any taking of “free rides” on a competitor’s reputation. Undoubtedly NF put a lot of time, effort, and money into becoming a famous and reputable brand. And just as undoubtedly, an SB in the absence of a famous NF would not have that instant appeal to former buyers of Wacky Packages bubblegum cards. However, there would probably still be plenty of consumers (I daresay mostly under 18) who would still be interested in buying something that said “butt!”

Trademark dilution is a much newer cause of action (1995 at the US federal level, though a number of states have had it longer). And it ain’t even remotely about protecting consumers; it’s about protecting successful major investments in branding. Not that there’s anything wrong with that; it’s just rather a departure from the policy behind most previous trademark laws. If (and only if) you have a “famous” trademark (NF does), you can sue NON-competitors whose goods or services are nothing like yours if their use of a similar mark would somehow break consumers’ instant mental association between that mark and your products (“Let’s get a Pepsi.” “Oh, you mean the cola? Or that new lawn sprinkler I saw online?”). The revision of the federal Act in 2006 provided that plaintiffs only had to prove that dilution was “likely,” not that it actually happened. But this, too, really hinges only on the logo similarity.

SB’s defense, “it’s a parody,” is, from what I can tell, absolutely accurate. It’s a well-established defense. . . against copyright infringement. Trademarks, not so much – although courts have weighed it in the standard consumer-confusion tests and rarely find parodies infringing. A good discussion of the precedent can be found here starting on p.9.

So, what really happened in NF v. SB? We’re not likely to ever know for sure, so let’s speculate wildly with no actual basis whatsoever! First, all three complaints really only had the upside-down logo as leverage; the company name was a straightforward parody. For either an injunction or damages, NF probably would have had to show how many sales they plausibly lost to SB – probably very tough to calculate. There is the David v. Goliath factor; many judges hate smartaleck kids but few are that fond of big corporations who can’t seem to take a joke. And juries – are you kidding? Defendant, a clean-cut Midwestern kid (or if not, he would’a been “made over” into one for court) started the SB biz “to make money for college.” At the time of the lawsuit, he was a biomedical engineering freshman at UMo Columbia, so that was actually true. I wonder what might have gone differently if he did it to make money for beer or an electric guitar instead? Or went to clown college? No, NF probably stood to lose more sales from presenting itself publicly as a humorless bully (their customer base prides itself on fearlessness after all) than it ever was likely to lose to SB. You start down that road, might as well just put on the mouse ears.

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