Monday, 10 May 2010

The Butt of the Joke?

Fashionista's fans will remember this post recounting how The North Face sued The South Butt (and its now-19-year-old founder) for piracy. Fashionista was looking forward to finding out how the courts in the US would decide on this case - but it looks as though another "piracy or acceptable parody" case will remain unheard now that The North Face and The South Butt have confidentially settled their dispute.

News of the settlement came last month, but The South Butt website still appears to be up and running. Whilst Fashionista can speculate as to the terms of the settlement, as with all conflicts which settle out of court, the terms of settlement in this case will have been influenced by particular concerns of the two parties, including, for example, the planned longevity of a brand and reasons for setting up a company (in The South Butt's case, to help the founders' parents pay for his US college tuition fees).

Fashionista would be surprised if the settlement allows for continued co-existence of the brands. As the Denver Post reports, Jimmy Winkelmann was seen dishing out The South Butt clothing whilst on his college Spring Break. Given the continued operation of the website, it is more probable that the settlement agreement allows some sort of "wind down phase" in which The South Butt is entitled to get rid of its remaining stock within an agreed period of time - but is not allowed to produce any further stock or continue to use the brand name which caused such offence to The North Face in the first place. Settlements of this sort are not uncommon and are often a speedy, cost effective way of resolving conflicts - without the risk, cost and uncertainty associated with going to court.

But who is the real winner? Even if the terms of settlement are such that Jimmy Winkelmann must (eventually) stop using The South Butt trade mark, reports that he made $100,000 in one month because of publicity regarding the lawsuit suggest that The North Face may, in fact, be the butt of the joke here (for the second time).

Fashionista wonders, was it worth The North Face pursuing this claim? it can't have been cheap for them. Is it worth going after everyone who could potentially be seen to be infringing your marks, or is it better to be selective and pick your targets more carefully? As a result of The North Face bringing its claim, it sounds as though Jimmy Winkelmann got exactly what he was hoping for (legal headaches aside): enough money to fund his way through college - and no doubt, his 15 minutes of fame as an added bonus.


James Wagner said...

Ultimately whether the decision to sue was wise or not will likely come down to whether South Face also received increased sales as a result of the publicity, or if they instead painted themselves with a bully persona and suffered diminished sales.