The North Face takes The South Butt to court

The court case focuses on trademark infringement.

By Jared Grafman

Published Jan. 22, 2010

The North Face is preparing to take sophomore Jimmy Winkelmann's parody of the winter clothing brand, The South Butt, to court Wednesday.

According to the official complaint filed by The North Face, trademark infringement, trademark dilution and unfair competition will be the issues of the case.

Winkelmann, who created The South Butt in May 2007, said he feels confident about not losing the lawsuit because there are so many other companies and people making similar products as The South Butt and The North Face.

"It's just our logo," Winkelmann said. "I don't know, some people think it's similar but in reality if you really analyze it closely, they're not the same."

In its official complaint, The North Face said Winkelmann's clothing brand could lead to misunderstandings for customers.

"The defendants' use of the infringing trademarks is likely to cause initial confusion, mistake and deception among consumers who are drawn to the infringing products believing they originate from, are associated with or are otherwise authorized by the plaintiff even if such consumers do not purchase the defendants' infringing products as a result of such confusion," The North Face stated in its official complaint.

St. Louis attorney Albert Watkins, who represents The South Butt, disagreed and said The South Butt by its very nature is the opposite of The North Face.

"In essence, The South Butt does not want, nor has it solicited nor is it targeting North Face customers," Watkins said. "The South Butt is targeting those who don't want North Face, who don't want to be part of a herd with The North Face logo emblazoned on their chest."

Watkins said The North Face's official complaint has only hurt their own brand's reputation.

"We're just entirely delighted that The North Face has taken those steps necessary to publicly humiliate itself by attempting to bulldoze little Jimmy Winkelmann into submission," Watkins said.

Winkelmann received a letter from The North Face requesting The South Butt stop production and sales in August, and the official complaint from The North Face was filed in December, Winkelmann said. In the last few months, The South Butt has remained open for business and even saw an increase in demand.

"We pretty much just tried to ramp up everything," Winkelmann said. "We hired a lot of new people to keep up with the demand. We're really trying to make the Web site stuff more interactive so when people visit they can share their user comments about the products and all that's going on with the lawsuit."

In response to The North Face's allegations of confusion between the two companies, The South Butt has put a disclaimer on its Web site, stating "We are not in any fashion related to nor do we want to be confused with The North Face Apparel Corp. or its products sold under The North Face brand. If you are unable to discern the difference between a face and a butt, we encourage you to buy North Face products."

Winklemann said The South Butt would stand its ground and continue business as usual, unless the court decides otherwise.

"All it's really done has given free publicity and advertising which made the company grow in popularity significantly," Winkelmann said. "Now we're actually trying to expand and come out with new products."

A hearing will be held Jan. 27 to establish dates and deadlines for the case. Watkins said The North Face would try to attain a preliminary injunction against The South Butt to shut the brand down during the case.