Clothing giant faces down South Butt

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By Anna Vitale, Special to Missouri Lawyers Weekly

“We’re being sued!”

For most companies, especially a nascent clothing manufacturer, such an exclamation would be one of shock or fear. But for St. Louis-based The South Butt, the news bannered on its Web site might read more like exultation. The trademark infringement lawsuit filed by multibilliondollar outdoor apparel brand The North Face meant worldwide publicity for the upstart.

It was a suit ready-made for the news cycle. David versus Goliath, with a college-age David poking the clothing behemoth in its corporate eye and Goliath responding with his big legal club wielded by none other than Bryan Cave.

While the general public may be drawn to the dramatic interplay between 19-year-old Jimmy Winkleman — via his tongue-in-cheek attorney, Albert Watkins — and mega-company North Face, those in the legal world are wondering two things: Does North Face have a case, and can South Butt win on a parody defense?

North Face has filed a gamut of claims in the U.S. District Court in St. Louis against South Butt under national and Missouri trademark law. Seven in total, the claims essentially revolve around two causes of action: infringement and dilution.

Many trademark litigation experts think the infringement claims are moot.

“I think that North Face would probably have a pretty tall order there,” said Paul Fleischut, chair of Senniger Powerstrademark department in St. Louis. “I don’t think that those traditional counts are where the action will be here.”

The reason doesn’t require a degree in anatomy. To prove infringement, you must prove a likelihood of consumer confusion. And as Watkins and Winkleman have pointed out through press releases, a Facebook application and in interviews, nobody is going to mistake a face for a butt.

“There is a cause of action for infringement, but the stronger claim is for dilution,” said Barb Bunning-Stevens, trademark counsel for Monsanto.

Companies with famous trademarks — aka North Face — have gained stronger dilution protections in recent years under the 2006 Trademark Dilution Revision Act. That act requires a plaintiff to prove only the likelihood of dilution — not actual dilution, which was required under the 1995 Federal Trademark Dilution Act.

Claims of dilution can be proven either through blurring or tarnishment. Blurring involves wearing away the identity and distinctiveness of a brand by its use on noncompeting goods; tarnishment links a brand to lesser-quality products or presents the brand in an unwholesome or unsavory context.

South Butt plans to employ a parody defense against the dilution charges, Watkins said. Winkleman claims he created the company after seeing how caught up students at his private high school got with expensive North Face clothing.

Plus, try talking seriously about South Butt without at least cracking a smile.

“The South Butt brand is a clever parody and it’s clearly parody,” said Anthony Biller, an attorney with North Carolina-based intellectual property firm Coats and Bennett and chair of the American Bar Association’s Trademark Litigation committee.

And if North Face decides to take the blurring route in its dilution claims, Biller said the parody defense should be powerful.

“Parody necessarily brings attention back to the dominant mark. … In order to have a successful parody, you have to have something worth criticizing or mocking. In some ways, a parody acknowledges the importance of the senior brand.”

Watkins agrees, and he said South Butt could “even increase awareness of the North Face.”

But claiming to parody a major brand is not always a surefire defense in dilution cases focused on tarnishment.

“To prevail, [North Face has] to prove that this South Butt product is creating an unwholesome, or unsavory, or degrading association,” Fleischut said.

In the courts, associations have traditionally had to be a little more salacious than your run-of-the-mill butt to be considered tarnishing.

“The question is, ‘Is a butt something that qualifies as something that’s making an unwholesome, or unsavory or degrading association?’ Fleischut said. “My gut reaction is that would not qualify.”

Fleischut cites another case dealing with rear ends, Jordache v. Lardashe. In the 1987 case, a plus-size jeans company successfully defended their fatty name and pig logo against Jordache’s dilution claims. Lardashe, the court decided, is not unwholesome, unsavory or degrading.

The caselaw is not consistent, however, as another case with St. Louis roots showed. Anheuser-Busch prevailed over both adolescent humor and a company selling T-shirts with a “Buttwiser” slogan in 1996.

Watkins called the idea that South Butt could be found to tarnish the North Face brand “sheer folly.”

Folly or otherwise, some attorneys think the commercial aspect of South Butt is more compromising than the content of its parody.

Bunning-Stevens said that some recent cases do not look kindly on parodies that make a profit by getting a laugh at the expense of large, established brands. She said the fact that South Butt has been selling T-shirts, fleece jackets and sweatshirts similar in appearance to North Face’s, has twice applied for a trademark and even offered at one point to sell-out to North Face for $1 million paints it as a commercial venture riding the coattails of a well-established company.

“If it weren’t for the equity they [North Face] developed, this venture would be going nowhere,” she said.

Rudy Telscher is a partner at the intellectual property firm of Harness Dickey in St. Louis. He agreed with Bunning-Stevens’ read.

“The more commercial in nature your parody is, the less protection you have.”

But less protection doesn’t mean no protection.

“So if I’m taking on this case,” posited Telscher, “I certainly want to emphasize that just because a product is sold for money doesn’t strip it of First Amendment rights. … He is not only poking fun at North Face and poking fun at all of his classmates at Chaminade who felt they had to wear a North Face sweatshirt, he was making some sort of social or political statement about American’s reliance on brands. … I’d push the social commentary aspect of the case.”

Still, Telscher said the odds aren’t good for South Butt.

“If I were gonna bet a paycheck, I would bet this guy’s gonna lose. Love [North Face] or not, they’ve worked hard, done a lot of advertising, built a popular brand. It really starts to favor the company.”

Fleischut disagreed and said the commercial aspect is not the controlling issue.

“North Face has the right to prevent others from causing confusion, but there is no right not to be made fun of.”

Biller also said he thinks the law is on South Butt’s side. He said North Face has done more to harm its own brand by filing the lawsuit.

“I think North Face has shown itself to have particularly thin skin. … They’ve created this monster by giving it national exposure.”

And what about the old spend-them-into-the-ground approach common to David and Goliath lawsuits?

Watkins said he and Winkleman have nothing to lose.

“The odds of them outspending us is 100 percent,” said Watkins. “I received my fee and I drank it last night.”

Lead plaintiff attorney David A. Roodman declined to comment on the case.