Just about anyone who has walked across a college campus has seen that familiar arches symbol – and no, not McDonalds.  The arches are, of course The North Face.  The North Face brand of clothing is very popular on college jackets, backpacks, hats, and gloves.  However, with a tagline of, “Never Stop Exploring,” it was originally intended for the hiker or explorer, not the college student.  Today it seems you can’t attend college without acquiring some article of clothing that sports the North Face symbol.  It’s almost as essential as books and a laptop, and might as well be included on that ‘useful’ list sent out to freshmen, “Checklist for College.”  Therefore, it’s ironic that Jimmy Winkelmann, an 18-year-old from the St. Louis area, started a line of clothing called the South Butt with the tagline, “Never Stop Relaxing” to help him pay for his college.

In December 2009, the North Face filed a lawsuit claiming trademark infringement and to have the company prevented from producing the line of clothing.  Jimmy and his attorney, Al Watkins, filed a response January 4, 2010 stating, “But for the actions of North Face, 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.”

Jimmy’s intention behind creating the South Butt line was not to steal the North Face thunder but to poke fun at the norm. He said he wanted to spoof a status symbol — The North Face logo, which he frequently saw his fellow classmates of Chaminade College Preparatory wear regardless of whether they related to it.  He said that he wanted to create a brand that was bought because it was an affordable and a quality product, not something that was bought because everyone else was doing it.

The symbol used on the North Face is two arches that follow the words ‘North Face.’  The South Butt places these arches first, turned them upside down, and then uses the words ‘South Butt.’  The trademark is similar and does seem like a fair suit for trademark infringement.  However, there is a lot of support for the South Butt.  A trademark attorney for Town and County, Annette Heller, reported that if the North Face can make a good case for parody, they have a good shot at winning the case.  Winkelmann’s attorney, Watkins, has stated publicly that there is no consumer who confuses the South Butt logo with the North Face logo; in the era of free market capitalism, the consumer should be given the power to decide whichever they prefer.

While this case is just in the early stages, marketing techniques frequently employ the use of a similar design, catch phrase, or symbol to get people to buy their product, usually a cheaper version of the original product.  Enter any shoe store and you will find 30 types of boots that look like the infamous UGG boots however they are slightly modified and cost around $100 less than UGGs.  Is this really wrong to do?

According to the fair use doctrine, parodies, while similar to the original work, are protected from copyright claims, codified in 17 USC § 107. The Supreme Court of the United States stated that a parody “is the use of some elements of a prior author’s composition to create a new one that, at least in part, comments on that author’s works.”¹ That commentary function provides some justification for use of the older work.²

According to the Supreme Court decision and the fair use doctrine it seems that Winkelmann’s South Butt clothing line is fair game.  North Face attorneys state that the success of North Face attracts opportunists seeking to pirate its famous trademarks for their inferior knockoffs.  However, Winkelmann’s stands by his clothing line design putting a disclaimer on his website that South Butt is in no way to be confused with the North Face.  He also added to his site, and his popular Facebook fan page, “If you are unable to discern the difference between a face and a butt, we encourage you to buy North Face products.”  The North Face does not appreciate his sense of humor, it seems as they are still proceeding with the suit.  However, for the South Butt, this case has brought them some well-deserved publicity and hopefully will help boost sales.

For now it seems that it will be up to the consumer to decide if they prefer the expensive status symbol of the North Face, or they want to partake in the parody, the cheaper version that pokes fun at it, the South Butt.  And for now, if you can’t tell the difference between the two, namely a face and a butt, then there are bigger issues for you!
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¹ Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 569-70 (1994).
² See id.