In what may be one of the funniest knockoff lawsuits of the year, North Face meets South Butt. Someone here will have to do an about face to make amends.

Here’s the scoop on this latest fashion knockoff lawsuit. North Face, who is well known for selling a particular kind of hiking apparel is more than slightly peeved with South Butt who is also offering very similar clothing, which isn’t so bad if that was all they were doing. However, South Butt is blatantly using North Face’s logo and typeface. This is decidedly tacky to say the least, not to mention it crosses some fine lines in the world of trademark infringement.

One of the defense’s used in this case invokes something not a lot of people, even lawyers, have heard about; the free speech/parody defense. It’s quite clear that South Butt (who do you suppose chose that name anyhow?) is just having a blast with this lawsuit. And why not, the publicity is potentially worth millions for them in sales. What’s so hilarious is the fact that their official court documents claim the public is well aware “of the difference between a face and a butt.” Well, obviously the Butt’s lawyer happens to have a sense of humor.

While it might be funny, knowing the difference between a face and a butt really is precisely the question that needs to be asked – would the public be confused by the difference in clothing lines and names? Hard not to laugh about this, isn’t it? Take a look at this from the viewpoint of the right to free speech is inherent in our nation and add the vital importance of parody in the marketplace and, well to be honest, it appears South Butt has a good point. It begins to appear that perhaps North Face may be holding some sour grapes.

What’s even more interesting about this case is that the creator of South Butt is 19 years old and set up this line of clothing for the very purpose of commenting on consumerist culture by doing a parody on the prominence of the North Face logo. Enter the freedom of speech defense. North Face is none too impressed, but the general public is rather amused.

Here is a really good question to ponder. When does the right to free speech and parody trump a trademark? Case law indicates that “it appears that resolution may turn on no more than how clever and humorous the court thinks the defendant’s usage is. If it is relatively innocent and clever, it will be allowed.”  For example the federal court in Ohio held that the slogan “This bud’s for you” as part of a florist’s ad campaign was not an infringement of the Budweiser beer slogan.

And, let’s not forget the stuffed dog chew toys dubbed Chewy Vuiton, Chewnel #5, Dog Perignon and Sniffany & Co.  The court allowed these names, reasoning that the  “Chewy Vuiton” dog toy deliberately conjures up the famous [plaintiff's] marks and trade dress, but also communicates that it is not the [plaintiff's] product …  The juxtaposition of the similar and dissimilar-the irreverent representation and the idealized image of [plaintiff's] handbag-immediately conveys a joking and amusing parody. The furry little “Chewy Vuiton” imitation, as something to be chewed by a dog, pokes fun at the elegance and expensiveness of a Louis Vuitton handbag, which must not be chewed by a dog.

So, in the case of North Face versus South Butt – it looks like the winner may be South Butt, provided they really are making a social comment.

To learn more about David Alden Erikson, Attorney at Law, visit Daviderikson.com. Mr. Erikson specializes in Los Angeles fashion law, internet law, business litigation, trademark and copyright law.

Just because a law firm is big does not mean it’s “bigger and better.” In fact, small firms and solo practitioners usually make far more sense for small businesses.

After six years at a top global law firm, I started a solo practice that has now grown into a small boutique firm. So I know firsthand: my clients get better representation now than I could provide at my big firm, and at about a third of the cost. Hiring a top gun mega-firm guarantees enormous bills, but not enormous success.

If you are negotiating oil leases with the Saudi government or facing a $100 million complex class action lawsuit with 200 witnesses in 200 cities, then by all means hire a big firm. That’s what they’re for. But too often, small businesses hire a firm for prestige or in the mistaken belief that it will intimidate the opposition. That’s a horrible waste of money.

In fact, like most good lawyers, I am thrilled to go up against a top firm. First and foremost, that’s because I know exactly how they will handle a case. They will be smart and thorough, but entirely predictable. They will be cordial, collegial and they will play fair. And they will be charging an arm and a leg, which gives my client a huge leg up in the settlement dance.

That’s not to say there’s not a lot of creativity and legal talent in those skyscrapers. It’s just that those resources are mostly going to bigger clients who spend millions annually—and certainly not to the cases worth less than a million dollars.

A big firm usually assigns a case to three lawyers: a senior partner, a mid-level person, and a newbie.

The newbie is completely worthless—mostly because they don’t teach practical real-world lawyering skills at Harvard. Savvy Fortune 500 companies don’t even allow first- or second-year associates to work on their cases, because they know its little more than on-the-job training.

The senior partner doesn’t contribute all that much either (thankfully, given the cost).

It’s the mid-level person who does all the important work. The mid-level guy or gal first assigns the research to Newbie, who works ten hours and treats it like a college thesis–preparing a legal memorandum that the middle guy then reviews and marks up (again like a college paper). The young guy then spends three more hours fixing it up and then hands it in.

Middle guy then re-checks all the research because there better not be anything wrong or confusing in there when Mr. Big reads it! Not only is that process cumbersome and inefficient, it’s also antiseptic. Young Guy and Middle Guy are mostly interested in not making a mistake, which hardly makes for conducive, creative or client-oriented decisions. The thinking is all very much “inside” the box.

On the other side, there is me. I do my own research. There are no memos, politics, or people pleasing–and I come to the answer in two hours at my computer. With rates far less expensive than what they billed for me at the big firm, the savings are enormous and the result is better tailored to the case.

Surprisingly, the creativity that goes into the design of useful objects, like clothing and furniture, can usually be freely copied because it’s not protected by copyright.

That Balenciaga dress or the crazy lamp made from ostrich feathers and pine cones may be beautiful. But their creative design—no matter how artistic—is not protected by copyright law. This is the main reason there are so many knockoffs in the world of fashion and design.

There’s great debate about whether this fundamental doctrine of intellectual property law is fair. For example, the fashion industry (or at least the segment of the fashion industry that’s more likely to be copied than to copy) has been lobbying Congress for years to pass a bill called the Design Piracy Protection Act, which would extend copyright-ish protection to apparel design. But for the foreseeable future, useful objects can be freely copied.

This raises an obvious question: What counts as a useful object under copyright law? There are going to be close cases, such as a sink (obviously utilitarian) the base of which is essentially a statue of a Balinese dancer (obviously ornate and non-functional). Can that be copied? The answer to that would be very important; someone who wanted to copy the design of a useful article like a sink, or someone who was about to invest in producing original Balinese dancer sinks will wonder whether IKEA could steal their idea.

In a nutshell, a court would try to resolve the question by saying that the artistic elements (the sculptural base) are protected if the elements are in some sense “separate” from the useful aspects of the object. Now that would solve some easy cases like a textile design or graphic on a piece of clothing being protected—simply because those elements are clearly “separate” from the useful aspect of clothing. But the cut of a dress will pretty much never be protected because it is just too intertwined with a garment’s inherent utilitarian function of covering the body

However, there are still much tougher cases and as it turns out, the law isn’t that good at always providing answers.

Consider the rather famous case of a sculpture that turned out to make a terrific bike rack. In this case the court was asked to consider an undulating wire sculpture that was originally created as art, but was eventually quite widely used as a bike rack design. The court decided that if design elements reflect a merger of aesthetic and functional considerations, the artistic aspects of a work cannot be said to be conceptually separable from the utilitarian elements. So far so good.

However, the court then went on to say that “where design elements can be identified as reflecting the designer’s artistic judgment exercised independently of functional influences, conceptual separability exists.” What this means is that you have to look at what the maker intended.

The sculpture was originally a “sculpture” but was marketed as a bike rack. Therefore the court said it wasn’t protected because even though it originally was thought of as a sculpture, the artist came to see it as a bike rack.

While this may sound relatively easy to interpret, the facts are that this area of the law can get even more complicated. Not all courts look at what was in the mind of the artist. They may also look at whether an “ordinary” person would think that the aesthetic or useful aspects would dominate the object.