More than two years after settling a trademark case over The South Butt brand, the North Face is once again confronting its litigation opponents. The outdoor clothing company has asked a St. Louis federal court to hold three defendants in contempt for selling a clothing line under the logo “The Butt Face.”
The parties are due to appear before Judge Rodney Sippel of the Eastern District of Missouri District on August 14 to discuss the plaintiff’s August 3 contempt motion in The North Face Apparel Corp. v. Williams Pharmacy Inc.
The North Face, in its contempt motion, asks the court to enter an expedited scheduling order requiring defendants James Winkelmann Jr., James Winkelmann Sr. and Why Climb Mountains LLC to show why they shouldn’t be held in contempt of the court’s consent injunction in the case over The South Butt. The company is also seeking compensatory damages, including but not limited to the defendants’ profits, plus investigative, expert and attorney fees and costs.
As reported by NLJ affiliate the Am Law Daily, the parties settled The South Butt trademark infringement suit on April 2, 2010. That settlement paved the way for the consent injunction, which Sippel issued 10 days later.
The injunction barred the two Winklemanns and The South Butt LLC from using “The South Butt Marks or any other reproduction, counterfeit, copy, or colorable imitation of the North Face trademarks” or from using “any other designation that is confusingly similar.”
The company in its pending motion alleges that the three defendants’ have sold T-shirts, caps and sweatshirts using “The Butt Face” mark in a manner that’s likely to dilute, or cause confusion with, The North Face brand.
The North Face claims that Winkelmann Sr. formed Why Climb Mountains within two days of the court’s entry of the injunction. The company also claims that Why Climb Mountains has filed for registration of “The Butt Face” trademark with the U.S. Patent and Trademark Office.
The North Face is also challenging the defendant’s current tagline of “Never Stop Smiling!”, which it uses in conjunction with The Butt Face mark. The company, in its motion brief, states that the prior litigation involved the defendants’ use of the “Never Stop Relaxing” mark, a play on North Face’s “Never Stop Exploring” trademark.
“Contempt respondents are fully aware that they have not maintained a safe distance from the enjoined activity,” the company states in its brief.
The North Face argues that the parody defense is not valid, because a “purported parody that creates likelihood of confusion is trademark infringement.” It also claims the defendants’ conceded in the injunction that The South Butt was not a parody, so they cannot reasonably argue that The Butt Face is a parody.
The North Face’s original lawsuit, filed in December 2009, was a magnet for media attention in part because company founder Winkelmann Jr. was a freshman biomedical engineering student at the University of Missouri.
In an emailed statement, the defendants’ lawyer, Albert Watkins of Kodner Watkins Kloecker in St. Louis, said, “With the punctilio of respect for the legal position of The North Face Apparel Company, it is abundantly clear the consuming public is possessed of sufficient mental capacity to discern the difference between a direction on a compass and that part of the human anatomy responsible for ejection of solid waste matter.”
Later, in a telephone interview, Watkins said the motion didn’t make sense because it was filed against Why Climb Mountains LLC, which wasn’t a party to the underlying original consent injunction.
“Secondly,” Watkins said, “there’s nothing in the consent injunction which precludes, expressly precludes, the use of the term ‘butt face.’ Clearly there is no confusion and ultimately any concerns about dilution of the brand is sheer folly.”
Roxanne Elings, a New York partner at Seattle’s Davis Wright Tremaine, and one of The North Face’s lawyers on the motion, said the defendants’ actions appear to be “purely money driven.”
“The North Face has a very famous brand and it does a lot to protect that brand,” Elings said. “There are times when people step over that line in bad faith and they’re forced to take action. This is one of those times.”
In a written statement submitted through Elings, the North Face said it “takes brand protection seriously and is periodically obligated to protect its trademark rights. In this case, Mr. Winkelmann, and his son, agreed to a court injunction prohibiting the sale of goods that infringed the THE NORTH FACE trademarks.”
Michael Kahn of The Brickhouse Law Group in St. Louis also represented the company on the motion.
Williams Pharmacy, a retailer defendant named in the original complaint, is not a party to the contempt motion.
Sheri Qualters can be contacted at firstname.lastname@example.org.