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South Butt Creator Fires Back at North FaceLawyers for James Winkelmann last week filed an irreverent reply brief and motion to dismiss The North Face Apparel Corp.'s trademark infringement suit against the 19-year-old University of Missouri freshman and owner of the The South Butt. North Face claims that Winkelmann's parody clothing line has caused it "irreparable harm" -- but Winkelmann's attorneys say North Face's lawsuit and the resulting publicity have caused business to skyrocket for Winkelmann's tiny clothing line.
The American Lawyer2010-01-12 12:00:00 AM
It's one of the most chuckle-inducing trademark claims in recent memory: The North Face Apparel Corp. has sued 19-year-old University of Missouri freshman James Winkelmann for trademark infringement and dilution. According to its motion filed in December in the U.S. District Court for the Eastern District of Missouri, North Face says Winkelmann, a biomedical engineering student, has caused it "irreparable harm" by producing his parody clothing line, The South Butt (motto: "Never Stop Relaxing").
Last week Winkelmann and his attorneys filed an irreverent reply brief, which is excerpted below, along with a motion to dismiss the suit. According to his filing -- as well as his Web site and his attorney, Albert Watkins of St. Louis firm Kodner, Watkins, Muchnick, Weigley & Brison -- Winkelmann started the clothing line as a joke. Winkelmann says he was inspired to do so after noticing that all his friends were buying North Face gear even though they weren't mountaineers. He decided to poke fun at the idea by coming up with a "South Butt" logo; slapping it on T-shirts, jackets and sweatshirts; and selling the clothes via a Columbia, Mo., pharmacy and the Web.
North Face didn't find the joke funny. The company learned that Winkelmann had moved to trademark the South Butt name, and in August sent him a cease-and-desist letter. Winkelmann -- who Watkins claims had sold less than $5,000 worth of South Butt merchandise by that point -- ignored the demand.
So in December, North Face brought out its big guns, retaining IP lawyers Michael Kahn of Bryan Cave and G. Roxanne Elings of Greenberg Traurig, and suing Winkelmann, his small company and the pharmacy that sells South Butt clothing. North Face's complaint says that because Winkelmann intended to expand the manufacture and sale of The South Butt nationwide, it had no choice but to file suit for trademark infringement and dilution.
Winkelmann's answer, drafted by Watkins and filed on Jan. 4, is clearly intended to play to the sympathies offered by the particular defendant, referred to in the filing as "Little Jimmy Winkelmann." It's also intended to draw smiles. You can download the entire document here, but highlights include:
• "But for the actions of North Face, the South Butt saga might have been relegated to local Friday fish-fry banter."
• "Described as a handsome cross between Mad Magazine's Alfred E. Newman of 'What me Worry' fame, and Skippy the Punk from the Midwest, Jimmy refused to turn the other cheek."(The "Skippy" reference is lost on us, too.)
• "Jimmy and The South Butt have no choice but to defend the present action to protect the integrity of the marketplace, freedom of choice for the consumer, freedom of speech for all, and the fundamental tenets of capitalism, competition and The American Way."
Though our calls to North Face's lawyers at Bryan Cave and Greenberg Traurig either went unreturned or were politely turned away, we were able to speak with John Strand, an IP litigator at Wolf Greenfield (who also happened to teach us trademark law at Northeastern University's School of Law) about the case. Strand was among the lawyers for C.R. Bard Inc. in its $400 million patent infringement case against W.L. Gore & Associates Inc., one of the largest patent infringement awards ever.
According to Strand, North Face's infringement claim is unlikely to go far: "The question," Strand says, "is whether there is a likelihood that [The South Butt] trademark could be confused with The North Face mark. To me it's clear that the answer is 'no.'"
As for the dilution claim, Strand says, The North Face's argument that its reputation is being tarnished by The South Butt is harder for Winkelmann and The South Butt to fend off: "Though [The South Face] is intended as parody, this isn't an affirmative defense if you're using the parody to make money."
One thing is for sure, North Face's decision to sue has brought much more attention to Winkelmann's tiny clothing line than it previously enjoyed. According to Watkins, before the suit and the explosion of media attention that's followed, The South Butt's sales were small. Now, Watkins says, Winkelmann is moving enough merchandise to cover his full four-year college tuition bill.
"Simply put, if it weren't for the efforts of The North Face," says Watkins, "The South Butt probably wouldn't still exist."
This article first appeared on The Am Law Daily blog on AmericanLawyer.com.