The strange saga of a college student who launched parody brands of an outdoor clothing company appears to have come to a conclusion. The North Face and the makers of “South Butt” and “Butt Face” parody products have filed a joint consent judgment of contempt.
The filing means that the defendantsJames Winkelmann Jr., James Winkelmann Sr. and their company Why Climb Mountains LLCagree they’re in contempt of a consent injunction issued in April 2010 to settle a lawsuit The North Face brought over the “South Butt” parody line. That lawsuit, filed in December 2009, garnered a great deal of media attention in part because company founder James Winkelmann Jr. was then a freshman biomedical engineering student at the University of Missouri.
The recent consent judgment, which was filed October 16 in in St. Louis federal court, concerns the defendants’ more recent line of products, which use as its logo “The Butt Face.”
The consent judgment requires the parties to disgorge up to $65,000 if they don’t comply with its terms. If the defendants comply with all of the judgment’s terms, the no-interest judgment will be cut by $1,000 each month. It can be reduced to zero through the passage of time or when the defendants provide evidence that they’ve paid the remaining balance to charity.
Besides requiring the defendants to honor the terms of the earlier injunction, the judgment gives them 24 hours to take numerous other steps. These include stopping the use of the “Butt Face” marks “or any other reproduction, counterfeit, copy, or colorable imitation” or parody of The North Face trademarks, either alone or to sell goods or services.
The judgment also gives the defendants 48 hours to turn over any domain name or Twitter account that violates the order or the earlier injunction “or includes in any way a direction on a compass or body part, either alone or in combination with each other or other terms.”
Within 10 business days, the defendants must turn over all goods with The Butt Face marks.
The agreement also bars the defendants from a “competing unfairly” with The North Face through a variety of other actions. This includes passing off The North Face products as not made by that company. It also includes taking actions that would lead consumers to believe that The Butt Face products are sold under The North Face’s control and supervision. Also prohibited is conspiring with others in any prohibited action. Additionally, the judgment bars the defendants from using social media in any way that would violate the agreement.
The North Face sued the Winkelmanns and The South Butt LLC in December 2009 in a case captioned The North Face Apparel Corp. v. Williams Pharmacy Inc. Williams Pharmacy, a retailer defendant named in the original complaint, was not a party in the contempt motion
The August 2010 injunction barred the Winkelmanns and their company 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 case was revived this year, when The North Face challenged the defendants over their use of “The South Butt “products, including T-shirts, caps and sweatshirts.
The North Face claimed the “South Butt” products were likely to dilute, or cause confusion with, The North Face brand. It also challenged the defendants’ “Never Stop Smiling!” tagline used with the products. The North Face has a “Never Stop Exploring” trademark, and the earlier litigation involved the defendants’ use of the “Never Stop Relaxing” mark.
This August, Judge Rodney Sippel of the Eastern District of Missouri held a hearing on The North Face’s contempt motion.
The North Face’s lawyers at Seattle’s Davis Wright Tremaine did not respond to requests for comment. Michael Kahn of The Brickhouse Law Group in St. Louis, which also represented the company, declined to comment.
The North Face issued a written statement, saying, “We feel the court has made a reasonable decision given the facts of the case. The North Face remains focused on the continued innovation of our best-in-class outdoor equipment and apparel that our customers have come to expect from us.”
The defendants’ lawyer, Albert Watkins of Kodner Watkins Kloecker in St. Louis, also did not respond to a request for comment.
Andrew Berger, a counsel to New York-based Tannenbaum Helpern Syracuse & Hirschtritt, said that most defendants keep a safe distance from the plaintiff after an injunction is issued, but since that didn’t happen here, the court exercised its contempt power. Berger, who isn’t involved in the case, added, “Here the judge is saying, ‘no contact whatsoever, nothing even close.’ You don’t see this kind of judgment that often.”
Sheri Qualters is a reporter for The National Law Journal, a Legal affiliate based in New York.
