Owners of famous trademarks are often faced with making the difficult decision that arises when their mark becomes the subject of a parody. Spend a lot of money in court with the goal of obtaining an injunction to stop the potentially infringing use, or do nothing and hope that the parodist goes out of business. Both choices can carry significant negative repercussions. However, the negative side-effects can be significantly magnified in the age of web 2.0’s user created content and the unlimited potential of viral marketing.
A recent example is the suit filed on December 10 by the popular clothing company, The North Face (TNF). See the complaint here. TNF became the subject of a parody created by a Missouri college student who began marketing and selling clothes under the name The South Butt. The South Butt (TSB) argues that they are poking fun at those who will never set foot on a mountain, but every morning don $600 worth of outdoor gear on their way to class.
Along with the similar name, what has TNF crying infringement and dilution is that TSB sells a jacket that looks very similar to TNF’s “iconic” Denali jacket and adorns it with an upside down version of TNF’s famous “Half Dome” trademark. (See an example of TSB’s jacket here). Based on this activity TNF has sued to enjoin the TSB’s use of its name, symbol and the overall appearance of the jacket. But in the wake of this suit internet media has made thousands aware of upstart TSB. A recent check of The South Butt’s Facebook page shows that there are now more than 7,000 fans of the company. A Google search yields almost 300 news articles related to TSB, and a YouTube advertisement for TSB has over 14,000 views. TSB has also reported massive increases in sales and hits to its website. The founder and owner of TSB, Jimmy Winkelmann, has even been dubbed “Little Jimmy” by those who have embraced his role as David, in a David versus Goliath showdown against the multi-billion dollar TNF.
Although it is unlikely that all the negative attention directed at TNF and the exposure TSB has gained will cause TNF to have second thoughts about suing Little Jimmy, it exemplifies the ability of the internet to significantly change the game for companies like TSB. In the age of viral media and social networking, plaintiffs must take into account the ability of “the little guy” to use a lawsuit to gather significant support. This free exposure can generate revenue to fund the defense and create ill will towards the plaintiff.
With a legitimate parody defense to TNF’s claims and more money in the bank from increased sales caused by TNF’s suit, the battle between TNF and TSB could prove to be much more expensive and challenging than TNF initially anticipated.
I wont be buying The North Face products. And I might have to check out this South Butt company.