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This project is a collaborative effort of Street Law, Inc. and Constitutional Rights Foundation. Educating to Protect Intellectual Property (ePIP) is funded by grant 2009-BE-BX-0001 from the United

States Patent & Trademark Office and the United States Department of Justice.

The North Face Apparel Company v. The North Face Apparel Company v. The South Butt and OthersThe South Butt and Others What is Trademark Infringement?What is Trademark Infringement?

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Do you own any North Face Do you own any North Face apparel?apparel?

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Do you own any South Butt Do you own any South Butt apparel?apparel?

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The North FaceThe North Face

North Face is a mountaineering equipment and apparel North Face is a mountaineering equipment and apparel company. The owners named their original store “the company. The owners named their original store “the North Face” – evoking a mountain’s north face, generally North Face” – evoking a mountain’s north face, generally considered the most difficult face to climb. considered the most difficult face to climb.

Key points about The North Face:Key points about The North Face: During the last four decades, THE NORTH FACE During the last four decades, THE NORTH FACE ® mark ® mark

and a stylized silhouette of Yosemite’s Half Dome peak and a stylized silhouette of Yosemite’s Half Dome peak have become famous trademarks uniquely associated have become famous trademarks uniquely associated with The North Face and its quality goods. with The North Face and its quality goods.

The North Face tagline is “Never Stop Exploring.”The North Face tagline is “Never Stop Exploring.”

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The South ButtThe South Butt The South Butt, LLC, founded by college freshman The South Butt, LLC, founded by college freshman

Jimmy Winkleman, is a “parody apparel company which Jimmy Winkleman, is a “parody apparel company which served to spoof its biological and directional counterpart, served to spoof its biological and directional counterpart, The North Face.” The North Face.”

Key points about The South Butt:Key points about The South Butt: Winkleman maintains that he was tired of seeing all his Winkleman maintains that he was tired of seeing all his

classmates spend money on the exact same jackets and classmates spend money on the exact same jackets and vests so he started the parodic company to get people vests so he started the parodic company to get people thinking about alternatives.thinking about alternatives.

The South Butt tagline is “Never Stop Relaxing.”The South Butt tagline is “Never Stop Relaxing.”

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The North Face said:The North Face said:

South Butt is marketing apparel that “directly and South Butt is marketing apparel that “directly and unabashedly” infringes on The North Face’s unabashedly” infringes on The North Face’s famous trademarks-including replicating The famous trademarks-including replicating The North Face’s trade dress in its Denali jacket.North Face’s trade dress in its Denali jacket.

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The South Butt said:The South Butt said:

It’s parody. The founder of South Butt, Jimmy It’s parody. The founder of South Butt, Jimmy Winkleman said he was tired of seeing all his Winkleman said he was tired of seeing all his classmates spend their money on the exact classmates spend their money on the exact same jackets and vests. He started the same jackets and vests. He started the company to get people thinking about company to get people thinking about alternatives.alternatives.

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The LawsuitThe Lawsuit

The North Face sued The South Butt for The North Face sued The South Butt for trademark infringement and requested a trademark infringement and requested a permanent injunction to stop further customer permanent injunction to stop further customer product confusion.product confusion.

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Your RolesYour Roles

You will participate in one of three groups:You will participate in one of three groups:

an “expert” group to prepare to be the judge an “expert” group to prepare to be the judge

an “expert” group to prepare to represent the an “expert” group to prepare to represent the plaintiff—The North Face Apparel Corporation plaintiff—The North Face Apparel Corporation

an “expert” group to prepare to represent the an “expert” group to prepare to represent the defendant—The South Buttdefendant—The South Butt

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The Hearing ProcessThe Hearing Process

Plaintiff’s counsel makes argumentsPlaintiff’s counsel makes arguments 2 minutes2 minutes Judge may ask questionsJudge may ask questions 1 minute 1 minute Defense counsel makes argumentsDefense counsel makes arguments 2 minutes2 minutes Judge may ask questionsJudge may ask questions 1 minute 1 minute Plaintiff’s counsel rebuts 30 secondsPlaintiff’s counsel rebuts 30 seconds Defense attorney rebutsDefense attorney rebuts 30 seconds 30 seconds Judge makes decisionJudge makes decision 2 minutes 2 minutes

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Trademark InfringementTrademark Infringement

Trademark infringementTrademark infringement means that there means that there has been some use of the trademark by has been some use of the trademark by someone other than the owner in a manner that someone other than the owner in a manner that is likely to cause consumers to be confused as to is likely to cause consumers to be confused as to the source, or origin of the product or service to the source, or origin of the product or service to which that mark is applied.which that mark is applied.

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Factors that help a judge or court determine Factors that help a judge or court determine

whether trademark infringement has occurredwhether trademark infringement has occurred

The strength of the mark of original userThe strength of the mark of original user The relatedness of the goodsThe relatedness of the goods The similarity of the marksThe similarity of the marks Evidence of actual confusionEvidence of actual confusion Sophistication of purchasersSophistication of purchasers The defendant's intentThe defendant's intent

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What is parody?What is parody?

A parody can be a writing, music, and/or design A parody can be a writing, music, and/or design that imitates something in a satirical, comic or that imitates something in a satirical, comic or amusing way. In a trademark infringement case, amusing way. In a trademark infringement case, parody is a defense to infringement.parody is a defense to infringement.

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Factors that a court may consider when Factors that a court may consider when determining whether or not the offending use of a determining whether or not the offending use of a

trademark constitutes parodytrademark constitutes parody

do the products compete?do the products compete? do retail and advertising channels overlap?do retail and advertising channels overlap? do the customers overlap?do the customers overlap? is the parody portraying unlawful or offensive is the parody portraying unlawful or offensive

material?material? Is the owner’s trademark famous?Is the owner’s trademark famous? Is there only enough similarity to bring the Is there only enough similarity to bring the

senior owner’s trademark to mind?senior owner’s trademark to mind? is the parody adequately distinguished from the is the parody adequately distinguished from the

original to avoid confusion?original to avoid confusion? Is there any First Amendment speech involved?Is there any First Amendment speech involved?

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The HearingThe Hearing

After you have prepared, you will be placed into After you have prepared, you will be placed into mini court groups. Each group should have 1-2 mini court groups. Each group should have 1-2 plaintiffs, 1-2 defendants, and 1-2 judges. plaintiffs, 1-2 defendants, and 1-2 judges.

Begin your hearing. Judges are in charge and Begin your hearing. Judges are in charge and should direct the procedures and keep time. should direct the procedures and keep time. The hearing should take about 10 minutes.The hearing should take about 10 minutes.

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The DecisionThe Decision

Judges should take a few minutes to consult Judges should take a few minutes to consult and to formulate your opinions.and to formulate your opinions.

The judge from each group should announce The judge from each group should announce her/his opinion with supporting rationale to the her/his opinion with supporting rationale to the whole class.whole class.

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What do you think?What do you think?

How do you think this case should be How do you think this case should be decided? Why?decided? Why?