North Face and South Butt Take the Gloves Off at Deposition
Litigators know that from time to time, tempers will flare at a deposition. In the normal case, it's just part of the overall process and the rest of the world never learns about it..png)
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It's becoming increasingly clear, however, that North Face v. South Butt is NOT a normal case. Yesterday's American Lawyer ran a story first reported in St. Louis's Riverfront Times about some craziness at the deposition of Defendant Jimmy Winkleman's father just last Friday. Seems the senior Winkleman alleged that one of North Face's lawfirms, Bryan Cave, had a conflict of interest because it had represented him numerous times in the past. Bryan Cave denies any conflict, claiming it went through its normal conflicts clearance process.
I don't know if there is a conflict or not, but there is no doubt that this case seems to be getting tried on every issue but the one that actually matters -- whether there is likelihood of confusion between the two marks. That will be determined by admissible survey evidence -- not the informal "butt versus face" type of analysis that South Butt's website and attorney are driving in the press.
The preliminary injunction hearing is scheduled for April 12, so we'll know soon enough. Until then, we'll keep watching this case, which South Butt's attorney Albert Watkins recently described in particularly graphic language. One thing's for certain -- lots of attorney's fees are being generated. In some circles, that alone would justify Watkins' description!
Pete Salsich III is an occasionally accomplished illustrator and relatively weak guitar player whose secret identity is that of an
Geoff Gerber keeps waiting for his superpowers to materialize. In the meantime, he uses his lawyer-powers to litigate intellectual property
David B. Groce is a lawyer with 25 years of experience representing clients in North America, Europe, and Asia in
Michael A. Kahn concentrates his practice in copyright, trademark, First Amendment and media law (libel, privacy rights). He is
I'd love to see what the survey results are going to say -- I bet more than 50% of the people say that they thought it was a joke, and that it's a pretty funny joke too.
It's amazing how popular The North Face has made The South Butt simply by filing this silly lawsuit. They could have clapped and said "Hey, that's a good one," and acknowledged that it was just wacky college humor, but instead they had to pull out the patently bogus argument that customers are going to be confused. They're not, and if they were before the lawsuit (a doubtful proposition), all the airtime the lawsuit is getting is sure to have educated them about the true facts.
I foresee a long litigation mess which does nothing to enhance The North Face's reputation.
Thanks for the comment, Robert. You're absolutely right that South Butt's popularity has sky-rocketed as a direct result of North Face's litigation, although North Face would also be correct in saying that South Butt would not even exist without North Face in the first place. And I think on some level, South Butt's strategy all along was to provoke North Face into a dispute in order to drive a large settlement. Whether North Face made a wise (or foolish) decision to call South Butt's bluff remains to be seen. It certainly could be a long drawn-out litigation mess, but I suspect that it will settle one way or the other fairly quickly after the April 12 preliminary injunction hearing.
Great blog, by the way -- I just subscribed.
Pete - I think your comment is a little off. Although I think the South Butt was obviously doing some free riding on the fame of the North Face mark, they wouldn't be the ones to get a big settlement if they are the ones being sued. At best, The North Face would drop its suit instead of giving The South Butt a payout. What The North Face did give the South Butt was a bunch of free advertising. The South Butt commented that their sales have exploded due to the publicity of this case. And I'm skeptical about your claims of provoking a payout - a parody necessarily free rides to some extent on the fame of the subject matter being parodied, but I doubt The South Butt was trying to provoke a lawsuit. They were just trying to generate business.
Thanks for your comment, Caleb. I think your analysis of the relative positions of the plaintiff and defendant in provoking a lawsuit and settlement are correct in most cases -- it's just that the way this case was tried makes it seem counterintuitive on some of those issues. One of the first things the South Butt did in response to the North Face's pre-litigation threats was to demand $1,000,000 -- and then withdraw that demand because it wasn't big enough. The case just settled last week, immediately prior to the preliminary injunction hearing, and the result included a permanent injunction against South Butt. No word on what (if anything) the North Face paid, but I suspect it paid a fair amount to gain certainty before it had to make its case in court -- otherwise, why not wait until the hearing and let the court do your work for you?
Anyway, it's been an interesting case on many fronts, and I appreciate your commenting on our blog. Hope you'll come back in the future --
Pete