The Parody Defense to Trademark Infringement: The North Face vs. The South Butt
October 9 2009
Missouri teenager Jimmy Winkelmann grew weary of his high school classmates’ blind and materialistic infatuation with The North Face products, and decided something had to be done. Mr. Winkelmann’s answer was to come up with his own competing apparel line to mock the ubiquitous North Face fleece jackets found on his high school campus. He called his line “The South Butt” and designed a suspiciously similar logo to that of The North Face.
According to ABC news, Winkelmann said the idea for The South Butt was born a few years ago when he and his high school pals were poking fun at the kids at their private high school who satisfied their need to belong by buying the exact same jackets and vests. “People thought it was so cool to wear The North Face fleeces,” he said. “Everybody had to have them.” The term “South Butt” started as a joke, he said, and “then it just, like, escalated.” Winkelmann turned to his uncle, who owned a business printing marketing items like T-shirts and pens, for help in manufacturing the first South Butt T-shirts. Ultimately, The South Butt clothing line expanded to include T-shirts, ladies’ track shorts, both $19.99 each, and fleeces, which retail for $75.29. Winkelmann claims the entire company was founded not to rip-off The North Face, but to get people thinking about the alternatives.
The North Face apparently does not want people thinking about alternatives. In August, lawyers for The North Face sent Winkelmann a cease and desist letter requesting that Winkelmann stop using The South Butt name, and The South Butt logo. There are undoubtedly similarities between the two logos. Both logos are red squares with white lettering and design. The North Face logo features a half-dome with three ridges. The South Butt logo uses a similar design, but upside down, and with two ridges that Winkelmann confirmed are meant to infer “butt cheeks.”
The North Face’s counsel wrote to Winkelmann that the companies’ logos are similar enough to possibly cause “consumer confusion as to the source, sponsorship or affiliation of particular promotions and services that could dilute or tarnish the distinctive quality of the famous and distinctive [The North Face] marks.” The North Face requested that Winkelmann stop sales, production and promotion of his product, and also asked him to drop his trademark application for The South Butt LLC and its logo.
To respond to The North Face’s missive, Winkelmann enlisted attorney Albert Watkins, who is a friend of Winkelmann’s father and reportedly traded his services for a good bottle of red wine. Mr. Watkins wrote to The North Face: “I am compelled to respectfully disagree with the posture or assertion that ‘The South Butt’ would in any way give rise to confusion on the part of any person. In fact, the sense of parody employed by Jimmy within the context of his South Butt undertakings clearly demonstrate a respectful, if not flattering ‘anti-North Face’ posture designed in all respects to distinguish itself from any and all North Face products.”
Mr. Watkins’ letter invokes a primary affirmative defense raised by defendants in response to trademark infringement claims. Winkelmann’s defense rests on his claim that The South Butt represents a protected parody of The North Face’s trademark rights. Trademark parody involves the appropriation of another’s mark as a well known element of popular culture, and then building on it to contribute something new for humorous effect or social commentary. The Fourth Circuit’s decision in Louis Vuitton Malletier, S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 (“Louis Vuitton”) is an important trademark parody decision because it provides a detailed analysis of the parody defense to trademark infringement claims.
Haute Diggity Dog, LLC was a company that sold a number of parody pet products including products named Chewnel No. 5, Jimmy Chew, Dog Perignonn, Sniffany & Co., and Dogior. The product which was the subject of the Louis Vuitton lawsuit was Haute Diggity Dog’s parody pet toy called CHEWY VUITON. The toy mimicked the shape, design and color of a Louis Vuitton handbag, but was intended as a chew toy for dogs. Unfortunately for Haute Diggity Dog, Louis Vuitton was not amused by such haute couture for dogs. In fact, Louis Vuitton was so doggone incensed, it filed a lawsuit against Haute Diggity Dog alleging trademark infringement of its Louis Vuitton mark.
The first question facing the Court was whether or not CHEWY VUITON was a trademark parody. As stated by the Court, a trademark parody is a simple form of entertainment conveyed by juxtaposing the irreverent representation of the trademark with the idealized image created by the mark’s owner. It must convey two simultaneous and contradictory messages: that it is the original, but also that it is not the original and is instead a parody. This latter message not only differentiates the parody from the original but must also communicate some articulable element of satire, ridicule, joking or amusement.
The Fourth Circuit found Haute Diggity Dog’s use of CHEWY VUITON was a parody. The CHEWY VUITON toy was found to be similar in its name, monogram, design and coloring, which clearly indicated to the Court that the toy was an imitation. The Court also noted that all of the design and name elements were different. (e.g., Chewy/Louis, Vuiton/Vuitton). Each of the design elements Haute Diggity Dog selected to create the parody was close, but not identical to the design elements of the Louis Vuitton handbags
The Court then turned to the question of whether Haute Diggity Dog’s parody infringed upon Louis Vuitton’s trademark rights. The Court found that the strength of the Louis Vuitton mark was a factor that weighed in favor of Haute Diggity Dog. Normally, a strong mark favors the senior trademark owner, but, in the case of a parody, the fame of the mark allows consumers to readily perceive the target of the parody. Similarity of the marks themselves also favored Haute Diggity Dog. The Court found that the parody was sufficiently blatant so as to easily invoke the famous Louis Vuitton trademark in the mind of consumers, yet still distinguish the products. The similarity, or in this case dissimilarity, of the products also was in Haute Diggity Dog’s favor as one product was a $20 dog chew toy and the other was an expensive designer purse. With respect to similarity of facilities and advertising channels, the Court found it relevant that Haute Diggity Dog’s products generally were sold at pet stores with other pet products, including other parody products, while Louis Vuitton handbags generally were sold in Louis Vuitton boutiques or department stores and advertised in high-end fashion magazines. Based upon these circumstances, the Court found that Haute Diggity Dog did not infringe upon Louis Vuitton’s trademark.
Will Mr. Winkelmann’s “The South Butt” brand prevail against The North Face’s infringement claim? The question is difficult to answer with certainty. Undoubtedly, The South Butt was intended by Winkelmann to invoke The North Face brand in the minds of consumers for the purposes of mocking blind consumer allegiance to The North Face brand. However, unlike the facts in Haute Diggity Dog, Winkelman’s products do not seem to be readily distinguishable from The North Face products. Winkelmann sells a South Butt fleece jacket, just like the North Face does. Winkelmann apparently markets his South Butt apparel to the same consumers that the North Face does. These facts tend to support The North Face’s position, and may cause trouble for Winkelmann.
What can be said with certainty is if you intend to use a trademark parody in your business, you must be prepared to be sued, or at minimum, harassed by a larger and more well-known company. By definition, the more famous a trademark, the more likely a parody will be effective. Is your trademark important enough to be on the other side of a large and presumably well-funded adversary like Louis Vuitton? Unless you are lucky enough to have counsel like that of Mr. Winkelmann who will conduct your defense for a good bottle of wine, you must be prepared to expend a considerable sum in legal fees to prove that your mark is a parody and does not infringe upon the rights of another company