Last Thursday, The North Face Apparel Corp., makers of the popular winter and athletic fleece jackets, sued The South Butt LLC, for trademark infringement and dilution relating to the South Butt’s line of clothing.  University of Missouri college freshman Jimmy Winkelmann came up with the idea for THE SOUTH BUTT clothing in response to the ubiquity of THE NORTH FACE jackets at his high school.

Here’s a look at the respective logos:

The obvious question is whether Winkelmann’s THE SOUTH BUTT mark is entitled to a parody defense.  The Fourth Circuit’s decision in Louis Vuitton Malletier, S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 (2007), provides one of the most recent standards for trademark parody cases.  In this case, Louis Vuitton lost its claims against the manufacturer of CHEWY VUITON dog toys on the basis that the defendant dog toy manufacturer had a valid parody defense.

So how does the Louis Vuitton case apply here?  Zachary Wadlé offers a nice analysis here.  As Wadlé notes, the fact that THE NORTH FACE is an especially famous mark actually helps Winkelmann’s parody defense for his use of the THE SOUTH BUTT mark.  The idea here is that famous, iconic brands are more likely to be parodied, and that, to the extent that we allow a parody defense to trademark infringement for free speech reasons, we should be more willing to find parody in the case of famous marks.

There is one critical difference here from the Louis Vuitton case, and that is the fact that the respective goods here are virtually identical (fleece jackets and other clothing).  In Louis Vuitton, the Defendant used its parody mark in connection with goods (dog toys) that were very different from Plaintiff’s (luxury hand bags).

It’s unclear how much important this distinction will be here.  In the meantime, Winkelmann is holding his ground and enjoying the media attention and increased sales that have resulted from his current battle with North Face.

If you like these “David versus Goliath” trademark stories as much as I do, you should check out this list from Mental Floss (THE NORTH FACE v. THE SOUTH BUTT has the #3 spot).

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