The trademark battle between The North Face and startup clothing company The South Butt is getting louder. As South Butt founder Jimmy Winkelmann heads off to spring break in Florida, his father is turning up the volume in the case, accusing North Face's lawyers at Bryan Cave of a conflict of interest.
Readers might recall our January story about Lil' Jimmy (pictured right) and his parody clothing line, The South Butt (the company's motto: Never Stop Relaxing). In December, the freshman biomedical engineering student at the University of Missouri was slapped with a trademark infringement suit by The North Face, a San Leandro, Calif.-based outdoor products company.
The North Face hired lawyers from Bryan Cave and Greenberg Traurig to handle the suit, filed in federal court in St. Louis against Winkelmann, South Butt and a local St. Louis pharmacy that sells South Butt merchandise. Before long, the story was all over the Internet and running in several news outlets, getting pickup as far away as South Africa.
In late January a federal judge ordered mediation in the case, and set a deadline of late March. That led lawyers from Bryan Cave and Greenberg to schedule a deposition with Winkelmann's father, James Winkelmann Sr., to be held in Bryan Cave's St. Louis office last Friday.
From what we've read of the proceeding, it did not go well.
We learned of the deposition thanks to the St. Louis Riverfront Times, a local paper that's been covering the North Face suit since it was first filed, and which posted transcripts of the proceedings on its Web site (click here and here to read them).
In his testimony, Winkelmann became enraged over questions about his past business practices asked by Bryan Cave commercial litigation and IP partner David Roodman. Winkelmann became so furious, the Riverfront Times reports, that just 18 minutes in, the proceeding was halted.
What exactly set Winkelmann off? First, Roodman asked the witnesses about his relationship to HFI Securities, a suburban St. Louis brokerage firm where Winkelmann was once a partner of Don Weir Jr., who, it turns out, pleaded guilty a year ago to charges he stole more than $10 million from clients. Winkelmann was never implicated in any wrongdoing.
Roodman then asked Winkelmann about a civil suit filed by a former landlord over unpaid rent due from another business owned by Weir and Winkelmann, Huntleigh Financial Services. Winkelmann acknowledged that Huntleigh entered into a consent judgment in the case, then sarcastically expressed surprise over Roodman's question.
Winkelmann went on to say that Bryan Cave had represented Huntleigh on the lease in that case, and had advised Winkelmann, his family and at least six other Winkelmann businesses on at least 15 different matters over the last eight years. When Roodman questioned the accuracy of the those statements, Winkelmann lost control.
"I'm telling you that this is the truth and now you're sitting here today trying to get information from me to prosecute my son," said Winkelmann, later adding that he had paid Bryan Cave roughly $500,000 for the work. That led to this exchange:
Roodman: "Sir, please get control of yourself."
Winkelmann: "No. I am out of control."
Eventually, Albert Watkins, a name partner at St. Louis firm Kodner, Watkins, Muchnick, Weigley & Brison representing South Butt and its founder Little Jimmy Winkelmann (who was not present at the deposition), managed to convince the elder Winkelmann to take a break and cool down.
Winkelmann, who was being deposed without the advice of his own counsel, then called a lawyer to the proceedings, St. Louis solo practitioner Robert Horan. When Horan arrived, he promptly shut down the deposition, stating that his client needed to obtain another opinion on whether he could proceed. (Horan, who did not respond to a request for comment, expressed concern that Winkelmann could still be added as a defendant in the case.)
In the deposition, Roodman maintained he never knew anything about Bryan Cave's previous representations of Winkelmann, stating that he only relied on facts that were publicly available. At one point in the deposition, after excusing himself from the room to have Bryan Cave run a conflicts check, Roodman returned and said that nothing in the firm's system identified Winkelmann as a client.
"Our representation of North Face Apparel Corporation is not in conflict with any prior representation by the firm," Bryan Cave said in a statement sent to The Am Law Daily. "In light of the pending litigation, however, it would not be appropriate to comment further."
Neither Roodman nor Michael Kahn, another Bryan Cave IP partner representing North Face, returned calls seeking comment. G. Roxanne Elings, co-chair of Greenberg's trademarks and brand management practice, also did not respond to a request for comment. (Barbara Kaplan, senior in-house IP counsel for North Face's parent company V.F. Corp., was present at Winkelmann's deposition along with Roodman and Elings.)
Calls to Thomas Blumenthal and Jeffrey Michelman, partners at St. Louis firm Paule, Camazine & Blumenthal, were not returned. The two IP lawyers, both present at Winkelmann's deposition, are advising defendant Williams Pharmacy in the case. (Blumenthal stated in the deposition that his firm would seek fees from either the deponent or the parties to the dispute.)
Watkins, South Butt's attorney in the trademark case, also did not return a call seeking comment. He did tell the Riverfront Times that the case was now a "monumental clusterfuck."
As for Little Jimmy Winkelmann, he was also recently deposed in the suit, reports Courthouse News. North Face lawyers asked Lil' Jimmy about being ticketed for possession of alcohol and a small amount of marijuana last semester. The South Butt founder admitted the indiscretions -- even telling his dad -- but said they shouldn't take away from his other accomplishments.
Winkelmann, whom Courthouse News reports made the honor roll last semester with three A's and a B+, does have some down time coming to him. According to South Butt's Facebook page, Lil' Jimmy will be on spring break in Panama City, Fla., handing out free merchandise from March 27 until April 3.
This article first appeared on The Am Law Daily blog on AmericanLawyer.com.
