Topic Author's Original Post - Oct 16, 2009 - 11:32pm PT
This is from SNEWSNET.
In early September 2009, Jordan LaVine, a lawyer for The North Face, apparently sent a cease-and-desist letter to Jimmy Winklemann, who at 18 years is both a freshman at the University of Missouri and the owner of the South Butt apparel line.
In that letter, according to news reports that included statements from Winklemann’s attorney, Albert Watkins (a friend of the family), The North Face is opposing the registration of the South Butt trademark because it and the TNF logo are similar enough to cause consumer confusion. In addition, The North Face, as Watkins was reported to have said, is demanding "South Butt" cease sales, production and promotion of its product.
Apparently, The North Face also is taking issue with Winklemann’s use of the tagline “Never Stop Relaxing” as a direct rip-off of The North Face tagline, “Never Stop Exploring.”
After sending a letter on Sept. 10 rebutting The North Face’s infringement assertions, and offering to sell South Butt to TNF for $1 million, it did not take long for Winklemann’s attorney to crank up the PR machinery and, in short order, newswires, blogs and even ABC news were running with stories of “Little Jimmy” Winklemann vs. The North Face. And that is where trademark law, public relations and a public company’s image all collide.
Whether or not The North Face truly believes South Butt is a threat to its logo is not really the issue. According to a number of trademark experts with whom SNEWS® spoke, TNF has no choice but to oppose the registration of any trademark, logo and name in use in commerce that might infringe on its own mark or might trade on its goodwill. If The North Face does not act to protect its trademark, the mark could become less distinctive and defensible. It also needs to be acknowledged that even though parody is funny, The North Face is entitled to defend the goodwill that it has earned and make a case that even a parody can be damaging to its goodwill and brand.
One can certainly argue that there are sufficient similarities in the South Butt mark to cause confusion to someone looking at it from a distance. Perhaps TNF’s lawyers will be able to argue successfully that even up close, the logos are so similar that market confusion may result – although we have to say, any confusion over the two marks would require a pretty clueless consumer. But we digress.....
Suddenly exploding between Sept. 29 and Oct. 1, the uproar and negative press look to have caught the TNF team by surprise, but it really shouldn’t have. Sending a legal letter challenging a trademark and logo registration is one thing. But when you send it to a teenager whose baby face image makes everybody want to hug him and say, “Awwwwwww,” and also demand him to stop selling product he claims is simply a business to help with college expenses, it ranks near the top on the list of PR Nightmares Waiting To Happen. This is one of those times when legal might have wanted to consult with PR before taking any action to ensure a strong preemptive response was ready, should it be needed.
Naturally, the TNF lawyers are telling its folks to stay mum on the topic -- other than referring media to an official company statement that has all the flavor of pabulum and is about as satisfying to inquiring media as feeding a grape to a starving man:
The North Face is all for creativity, "butt" we opposed Jimmy Winkelmann's logo in order to protect our famous trademark. And, just to be clear, we have not sued him. We respect genuine, entrepreneurial spirit; we are built on it. However, it's also important to maintain integrity and strong ethics in any business endeavor----such as the creation of a unique logo and brand identity.
The North Face is named for the coldest, most unforgiving side of a mountain and our logo represents Half Dome in Yosemite National Park. For more than 40 years, The North Face has been manufacturing authentic and technically-advanced apparel and gear. Athletes and enthusiasts around the world recognize The North Face brand and logo as symbols of outdoor exploration.
Like thousands of companies around the world, we work diligently to protect trademark rights. This situation is, in reality, a serious problem companies deal with every day.
Meanwhile, Winklemann and his lawyer Watkins have been talking to everyone, with media-delicious sound bites for anyone who called:
Winklemann was reported as saying in one news report: "The economy is tough. I know my parents are working hard to help me out with college, I took steps to contribute and now I am being bullied into submission."
Watkins said in another news report: "In the end, no pun intended, North Face has to understand that Jimmy may be bright and creative, but he is an 18-year-old college freshman with a total net worth which precludes him from buying beef for dinner. Perhaps North Face and other mega-corporations should embrace his spirit and talents and not smack him across the butt with threats of litigation."
Truly, TNF is in a very tough spot. And it is a place other companies have found themselves before too. Think Life is Good vs. Life is Crap for example. Click here to read a July 28, 2008, story in SNEWS, “Life is Good parts ways with retailers selling Life is Crap brand,” as one example.
And herein lies the conundrum: TNF has every right and obligation to defend its trademark. But where does one draw the line between parody, which as a form of humor requires a relationship to the original (be it a word, a phrase, an image), and real trademark infringement? And how does a company then defend its trademark without appearing to be humorless or acting like a bully? Products that parody another certainly make trademark defense a bit more challenging and, of course, offer that potential PR dilemma.
To many, on the surface and from most every other angle viewed, South Butt and Life is Crap are parodies of the original parent brand, The North Face and Life is Good, respectively. And there is no doubt in our minds that South Butt and Life is Crap would have no business were it not for the existence of the brands each is parodying. Does anyone honestly believe that South Butt would have any kind of marketing appeal were it not for the existence of The North Face? And, with all due respect to the legal beagles at TNF, South Butt’s use of the tag, “Never Stop Relaxing” is quite funny and right up there with all the spoofs we’ve ever seen and heard around Nike’s famous “Just Do It” tagline.
The irony here is we doubt Winklemann is the supposedly naive and innocent lad his lawyer is trying to portray. Winklemann seems to be one very smart teenager, and we would not be surprised if getting TNF to engage him by firing a legal letter across his company bow was part of the plan all along. With that legal shot at South Butt in his back pocket, TNF can be portrayed as the big bad Evil Empire trying to crush Little Jimmy, a poor and helpless college freshman who can’t even afford beef for dinner. TNF also becomes Winkelmann’s best marketing and PR machine -- at little cost. Almost overnight, as a result of the media exposure around this legal tussle, Winklemann’s small brand with a sales volume even a local street vendor would scoff at, has vaulted onto the national scene. Already, we’ve heard, orders are flooding into the company from around the country and Winklemann’s reportedly had to ramp up production to meet demand.
Will Winklemann prevail against TNF? Maybe, maybe not. But either way, he’s likely going to come out on top in the public polls. And we suspect he’s also going to pocket far more than the $2,000 he was reported to have earned from South Butt product sales before this brouhaha erupted. TNF will win either way on the legal front since it defended its trademark, which it had to do. In the public eye, though, we’re not so sure how well TNF will fare – unless of course it finds a way to offer an olive branch of some kind to Winklemann.
Is there anything to be learned here? A large corporation must tread carefully and make decisions on a case-by-case basis about how to go about defending a brand and trademark in the face of another launching on a parody platform. Right or wrong, the public is very quick to pass judgment, usually at the expense of the larger company. So, the question then becomes, which is more important in the long and short term – public perception, or trademark protection?