Published October 10, 2012
According to a survey that was actually conducted by The North Face, about 35% of people may associate The North Face with The Butt Face.
I own ski pants and several jackets from The North Face. I like the brand. But this survey makes me want to clean out my closet.
Here I am, paying top dollar for upscale outerwear, strutting around like I am hip to fashion, yet more than a third of the people I pass wearing this stuff may be quietly thinking "Butt Face."
The North Face cited its self-humiliating survey in documents it filed in a U.S. District Court in St. Louis. The survey supports the apparel maker's motion for federal judge to slap a college kid with civil contempt charges for creating a clothing line called "The Butt Face."
The college kid is Jimmy Winkelmann, 21 years old. He is studying biomedical engineering at the University of Missouri. He told me his goal is to graduate from medical school and start his own medical-device company. To do this, he needs money. To get money, he makes fun of The North Face.
This has been going on for a long time. I first wrote about Mr. Winkelmann in April 2010 when he reached an amicable settlement with The North Face. The agreement included his promise to stop selling clothing under the name "The South Butt." As part of the settlement, The North Face actually paid Mr. Winkelmann "a significant amount of money in May 2011," according to recently filed court documents.
The North Face now alleges Mr. Winkelmann is in contempt of this settlement and a court injunction. Those who think lawyers are basically just asses, will see their worldview confirmed in the legal language of The North Face's contempt motion:
"Whereas the prior litigation concerned THE SOUTH BUTT .. Contempt Respondents took the exact same word-BUTT-and simply moved it up a spot in their trademark so that now it is THE BUTT FACE."
The motion goes on and on like this--and, yeah, I like the way they use capital letters to scream the word they detest so much.
Executives from The North Face declined an interview. Instead they sent me a prepared statement: "We must defend our trademarks from infringement and dilution and preserve the integrity of our brand."
The case, however, has so far not lead to a decision as to where parody ends and trademark infringement begins.
Mr. Winkelmann sells The Butt Face products at www.thebuttface.com. He also lampoons Ralph Lauren's Polo mark with a brand called Olop, and the slogan "Save a Pony, Ride a Preppie!" So far, attorneys for Polo haven't been humorless enough to sue him, too.
The North Face lawsuit called so much attention to this parody clothing line that what started out as a gag turned into a business that has garnered as much as $100,000 in sales in a month, Mr. Winkelmann once told me.
The amount of money he received from The North Face to quit using The South Butt remains confidential, but at one point he was asking the company for $1 million to quit.
Mr. Winkelmann argues that his settlement with The North Face represents his agreement to stop using The South Butt.
"Everyone knows who The North Face is," Mr. Winkelmann said in an interview. "It's a perfect brand to parody. We were successful with The South Butt. From my understanding, nowhere in the agreement does it say we cannot do another parody of The North Face. It just says we can't use The South Butt anymore."
The North Face argues in court documents that the settlement agreement prohibits "any other reproduction, counterfeit, copy or colorable imitation of THE NORTH FACE Trademarks," and using "any other designation that is confusingly similar."
Mr. Winkelmann's attorney, Albert Watkins, told me The North Face's attorneys knew all about the Butt Face website at the time they approved payment to Mr. Winkelmann in May 2011 for shutting down The South Butt. Now, all of a sudden, they are complaining about it in a contempt motion.
"The learned legal counsel from one of the silk-stocking firms of the world, representing one of the largest apparel makers in the world, contacted Jimmy's simple-minded Midwest attorney in St. Louis and said, "Hey, what about this Butt Face thing?'" Mr. Watkins said.
Does freedom of speech mean a budding young entrepreneur can make tons of money peddling successive parody clothing lines? Does an agreement to end "The South Butt" mean you can't use "The Butt Face"? I am sure glad there are federal judges, handsomely paid with our tax dollars, to tackle such heady legal questions.
Meantime, Mr. Winkelmann says he's still making money and donating a portion of his profits to cancer research.
"I have some money saved for med school right now," he said. "I think we have a pretty good case... If it doesn't work out, I'll apply for scholarships."
(Al's Emporium, written by Dow Jones Newswires columnist Al Lewis, offers commentary and analysis on a wide range of business subjects through an unconventional perspective. Contact Al at firstname.lastname@example.org or tellittoal.com)