The north face apparel company v south butt 2010Presentation Transcript
The North Face Apparel Company v. The South Butt and Others What is Trademark Infringement? This project is a collaborative effort of Street Law, Inc. and Constitutional Rights Foundation. Educating to Protect Intellectual Property (ePIP) is funded by grant 2009-BE-BX-0001 from the United States Patent & Trademark Office and the United States Department of Justice.
North Face is a mountaineering equipment and apparel company. The owners named their original store “the North Face” – evoking a mountain’s north face, generally considered the most difficult face to climb.
Key points about The North Face:
During the last four decades, THE NORTH FACE ® mark and a stylized silhouette of Yosemite’s Half Dome peak have become famous trademarks uniquely associated with The North Face and its quality goods.
The South Butt, LLC, founded by college freshman Jimmy Winkleman, is a “parody apparel company which served to spoof its biological and directional counterpart, The North Face.”
Key points about The South Butt:
Winkleman maintains that he was tired of seeing all his classmates spend money on the exact same jackets and vests so he started the parodic company to get people thinking about alternatives.
The South Butt tagline is “Never Stop Relaxing.”
The North Face said:
South Butt is marketing apparel that “directly and unabashedly” infringes on The North Face’s famous trademarks-including replicating The North Face’s trade dress in its Denali jacket.
The South Butt said:
It’s parody. The founder of South Butt, Jimmy Winkleman said he was tired of seeing all his classmates spend their money on the exact same jackets and vests. He started the company to get people thinking about alternatives.
The North Face sued The South Butt for trademark infringement and requested a permanent injunction to stop further customer product confusion.
You will participate in one of three groups:
an “expert” group to prepare to be the judge
an “expert” group to prepare to represent the plaintiff—The North Face Apparel Corporation
an “expert” group to prepare to represent the defendant—The South Butt
The Hearing Process
Plaintiff’s counsel makes arguments 2 minutes
Judge may ask questions 1 minute
Defense counsel makes arguments 2 minutes
Judge may ask questions 1 minute
Plaintiff’s counsel rebuts 30 seconds
Defense attorney rebuts 30 seconds
Judge makes decision 2 minutes
Trademark infringement means that there has been some use of the trademark by someone other than the owner in a manner that is likely to cause consumers to be confused as to the source, or origin of the product or service to which that mark is applied.
Factors that help a judge or court determine whether trademark infringement has occurred
The strength of the mark of original user
The relatedness of the goods
The similarity of the marks
Evidence of actual confusion
Sophistication of purchasers
The defendant's intent
What is parody?
A parody can be a writing, music, and/or design that imitates something in a satirical, comic or amusing way. In a trademark infringement case, parody is a defense to infringement.
Factors that a court may consider when determining whether or not the offending use of a trademark constitutes parody
do the products compete?
do retail and advertising channels overlap?
do the customers overlap?
is the parody portraying unlawful or offensive material?
Is the owner’s trademark famous?
Is there only enough similarity to bring the senior owner’s trademark to mind?
is the parody adequately distinguished from the original to avoid confusion?
Is there any First Amendment speech involved?
After you have prepared, you will be placed into mini court groups. Each group should have 1-2 plaintiffs, 1-2 defendants, and 1-2 judges.
Begin your hearing. Judges are in charge and should direct the procedures and keep time. The hearing should take about 10 minutes.
Judges should take a few minutes to consult and to formulate your opinions.
The judge from each group should announce her/his opinion with supporting rationale to the whole class.
What do you think?
How do you think this case should be decided? Why?