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Never Stop Suing: The Case of the North Face v. Little Jimmy Winkelmann

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Early last month, outdoor apparel manufacturer the North Face sued college freshman Jimmy Winkelmann and his company, the South Butt, for selling a line of clothing that parodies that of the North Face. Winkelmann sells t-shirts, fleeces, and hats -- many of which closely resemble the t-shirts, fleeces, and hats sold by the North Face -- featuring a logo that mocks the North Face's outdoor aspirations.

While the North Face logo is "a stylized silhouette of Yosemite's Half Dome peak," the South Butt logo, called the "half ass," is a "stylized silhouette of a rump." While the North Face's motto is "Never Stop Exploring," the South Butt encourages its customers to "Never Stop Relaxing."

The earnest Winkelmann claims he came up with the clothing line in response to the North Face's ubiquity at his high school.

Jimmy found this phenomenon to be rather curious given that his classmates were not of the exploring ilk, purportedly being the market targeted by North Face. He found the sudden collective movement by his peers to own North Face products to be symptomatic of the modern consumer culture. Thus, as an antithesis to North Face, The South Butt was born.

The last two weeks have seen a flurry of activity in the case. The North Face, which is represented by two prominent international law firms, is currently seeking a preliminary injunction that would shut down the South Butt until after the case is decided. The South Butt, which is represented by a St. Louis firm specializing in personal injury and securities cases, is moving to have some of the North Face's allegations stricken from the case. But all this activity begs the question: Why did the North Face sue Winkelmann for his sophomoric clothing line in the first place?

As a trademark lawyer, I recognize better than many that trademarks are an important and integral part of our economy and that they need to be protected from infringement. That's why courts have instituted careful tests to determine when parodies cross the line into trademark infringement. But even when a parody crosses that line, it's not always a good idea to file a lawsuit. Every lawyer practicing in the Internet age knows that a party must carefully consider the publicity risks when instituting a lawsuit -- especially one with facts that are as press-friendly as these.

Sure, the South Butt clothing line may inspire an initial guffaw, but it's a one-note joke that is unlikely to outlive Winkelmann's junior year. By suing Winkelmann, the North Face has given Winkelmann tremendous publicity -- the lawsuit brought so many new people to the South Butt's online store that the website crashed. And not only is the North Face's lawsuit driving customers to the South Butt, it's also alienating North Face's own customer base. Does the North Face really want to inspire comments like the following from Winkelmann's blog:

SUPPORTIVE MOM OF A COLLEGE STUDENT ALSO IN MISSOURI. HANG IN THERE! THIS IS SO GREAT... HEARD ABOUT IT ON THE NEWS THIS A.M. AND I AM GOING TO BUY ONE FOR EVERYONE IN MY FAMILY!

That's at least one Mom who won't be sending her college students back to school with backpacks from the North Face.

Putting aside whether the North Face made the right decision when it initiated this lawsuit, the North Face has not helped itself my taking several legal missteps along the way. First, the North Face has clearly taken the wrong tone in its legal papers. For instance, their Complaint reads like a PR brochure:

The North Face is a company built from the dreams of two young hiking enthusiasts. In 1966, they founded a small store in San Francisco where they designed and sold mountaineering equipment and apparel. They named their store "The North Face" -- evoking a mountain's north face, generally considered the most difficult face to climb.

This sort of press-friendly language is common in high-profile complaints -- but the North Face took this way too far. This PR language only sets up the North Face as even more of a Goliath. Winkelmann, not to be outdone in the rhetoric department, has fired back:

The parties in this case are a subsidiary of a self-described "$7,000,000,000.00 plus powerhouse" and a college freshman. Plaintiff states in its Motion that Jimmy stands to lose "nothing more than profits." Pursuit of the American Dream, freedom of speech, freedom of choice for consumers, and marketplace competition are all at stake.

Apparently Winkelmann can get carried away too.

But not only did the North Face's papers take the wrong tone, they also had awful timing. According to Winkelmann:

Plaintiffs filing of its Complaint on December 10, 2009 proved to be the most opportune time to file in order to generate the most pre-holiday media attention for Defendants during what is traditionally the busiest shopping season of the year. In effect, Plaintiff generated a market demand for The South Butt products.

Do these missteps mean the South Butt is likely to prevail in the case? At least the first round -- the preliminary injunction hearing -- will probably belong to the South Butt. As a general matter, courts dislike granting preliminary injunctions because injunctions can have devastating effects before any trial on the merits. For instance, the North Face's requested injunction would shut down the South Butt for months, and the South Butt might never recover. Courts thus require a party seeking a preliminary injunction to show, among other things, (1) a threat of irreparable harm if the injunction is not granted, and (2) a likelihood that the moving party will eventually prevail on the merits of the case.

In trademark cases, irreparable harm is often presumed by the Court because of the nature of trademarks. But here the South Butt has a powerful argument that the presumption should not apply: although the North Face filed suit in December, it apparently knew about the South Butt products for months beforehand. This delay substantially undermines the North Face's argument that it is now being irreparably harmed.