'The Butt Face' Lays Bare the Right Time to Protect a Trademark
My professional opinion: I dont think The Butt Face has a leg to stand on.
Let me explain. As regular readers of this column may recall, in June I wrote about an ill-advised trademark case involving Louis Vuitton Malletier S.A., the well-known maker of a variety of luxury goods. A knock-off of one of their handbags appeared briefly in the popular 2011 movie The Hangover: Part II. The company sued, asserting that that the presence of the bag created customer confusion. Louis Viutton lost the case, and in the process, I argued, looked really uncool and humorless before the very customers it is trying to impress.
I put forth the proposition that, as much as trademarks, copyright, and other intellectual property, reputation is what makes a brandso companies and their counsel should think twice before recklessly suing over perceived trademark infringement and risking blowback that can have long-term reputational consequences. There is a delicate balance (as one observer put it) between enforcing intellectual property rights and being so aggressive legally that you hurt your client and their broader business goals. In other words: sometimes it makes good business sense to be the butt of a joke.
But make no mistake: there are times where a trademark must be protected, particularly when the infringement itself has the potential to do real damage to a brand and its reputation.
Which brings us to The Butt Face. As reported in The National Law Journal (a sibling publication of Corporate Counsel) last week, The North Face, a well-known maker of outdoor equipment and apparel, appeared before a federal judge in St. Louis in mid-August seeking to enforce a 2010 injunction against three defendants who had previously sold outdoor apparel under the brand The South Butt, and who are now selling very similar apparel using the logo The Butt Face.
The North Face had sued The South Butt LLC for trademark infringement in 2009, and the parties reached a settlement several months later. The settlement not only prevented the defendants from using The South Butt as a mark, but also any other reproduction, counterfeit, copy, or colorable imitation of the North Face trademarks or any other designation that is confusingly similar.
Surely, at this point, attorneys for The North Face must have assumed they had put this messy business behind them. Yet this summer, the matter hasfor lack of a better termreared its ugly head again, with a new The Butt Face logo that is as close to The North Face as the defendants prior scatological branding endeavor.
According to the NLJ:
The North Face, in its contempt motion, asks the court to enter an expedited scheduling order requiring defendants James Winkelmann Jr., James Winkelmann Sr. and Why Climb Mountains LLC to show why they shouldn't be held in contempt of the court's consent injunction in the case over The South Butt. The company is also seeking compensatory damages, including but not limited to the defendants' profits, plus investigative, expert and attorney fees and costs.
So why sue here, and not in the case of the Hangover IIs Lewis Vuitton reference? Isnt this just another case where a major corporation and its lawyers should lighten up?
I dont think so. There are several differences, and they serve to highlight the delicate balancing act mentioned earlier. First, The Butt Face is a much clearer case as a matter of fact and law: the Vuitton reference, youll recall, was a fleeting, noncommercial product reference (Im assuming no one expected to sell a ton of Louis Vuitton knock-offs as a result of the Zach Galifianakis characters endorsement). Moreover, the prior settlement and judicial injunction obtained by The North Face prevented the defendants from engaging in exactly this type of behavior going forward.
In addition, the primary goal of the The Butt Face brand appears to be commercial in nature, rather than protected, noncommercial speech. Simply put, their goal is to sell stuff, rather than to parody The North Face and its products. Indeed, according to the NLJ, the defendants specifically agreed as part of their earlier settlement that The South Butt was not an attempt at parody.
And, most importantly, there is the actual reputational damage to consider: this is exactly the type of situation where the infringement is not only diluting a mark, but damaging a brand. The defendants may be doing it solely for profit, but there can be little argument against the idea that comparisons to a derriere will ultimately diminish a product in the public mind. Given the overwhelming likelihood that the brand will suffer, any cost/benefit analysis clearly indicates that aggressive legal action to protect The North Face trademark will do more good than any negative repercussions that may result.
I often say that most battles in the court of public opinion come down to a case of reasonable vs. unreasonableif it appears I am being reasonable and my adversary unreasonable, I win. And vice versa. In this instance, even the most humorously inclined among us would excuse a company for taking action in the face of so derogatory an infringement. In other words, The North Face had the ability to protect itself without, in the end, looking like an ass.
James F. Haggerty, an attorney and communications consultant, is CEO of PRCG/Strategic Communications and the author of In The Court of Public Opinion: Winning Strategies For Litigation Communications (American Bar Association Publishing, 2009).
See also: "Lawyers Should Lighten Up to Serve Their Clients Better," CorpCounsel, June 2012.