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Readers of this blog might remember our
previous coverage of the 2010 trademark dispute between The
North Face Apparel Corp. and The South Butt, LLC. The defendants in
that case adopted the trademark THE SOUTH BUTT for clothing that
resembled the style of clothing sold under the well-known mark THE
NORTH FACE. According to the
Complaint, South Butt repeatedly attempted to register THE
SOUTH BUTT as a trademark and offered to sell its business to The
North Face for $1 million. For its part, South Butt claimed that
its use of THE SOUTH BUTT and the tagline NEVER STOP RELAXING (a
play on The North Face's tagline NEVER STOP EXPLORING) was
protected parody.
The parties entered into a
Consent Injunction in April of 2010, which prohibited South
Butt and its principals from "using, without the express
written permission of The North Face, any of the THE NORTH FACE
Trademarks, or any other designation that is confusingly similar to
any of the THE NORTH FACE Trademarks, including, but not limited to
the THE SOUTH BUTT Trademarks, in any manner as to be likely to
dilute, cause confusion, deception or mistake," from
"diluting and infringing the THE NORTH FACE Trademarks, and
damaging The North Face's goodwill," and from
"otherwise competing unfairly with The North Face in any
manner."
The North Face recently filed a motion for contempt against the defendants,
alleging that the principals of South Butt are now selling
T-shirts, caps and sweatshirts under the trademark THE BUTT FACE,
and are using the tagline NEVER STOP SMILING. The North Face has
requested expedited consideration of its motion, on the grounds
that "the Winkelmanns used the original lawsuit as a lucrative
marketing device to promote sales of their infringing products
through a media blitz. We assume they will attempt to same here.
Thus the sooner this matter is heard and resolved, the
better."
The motion papers make for an interesting read. The memorandum paints a rather unflattering
picture of the father-and-son team who are the principals of South
Butt, based on the father's testimony earlier in the case:
"While Winkelmann, Sr. admitted he was running the
business, he described how he kept Winkelmann, Jr. involved to
drive sales and to further the David & Goliath story
– make it a "19 year old versus North Face."
... On receiving the initial letter from The North Face requesting
that TSB desist from infringing on THE NORTH FACE Trademarks,
Winkelmann, Sr. explained that he did two things: (1) he added a
multitude of new products to meet the expected increased demand;
and (2) rather than engage "litigation counsel," he
retained Albert Watkins for purposes of managing
publicity."
This stands in rather stark contrast to South Butt's
Answer, which identified the son, Jimmy Winkelmann, as the
person behind the company and characterized him as a "cherubic
teenager, budding entrepreneur and college freshman from the
heartland of America" who "founded his company with
parodic respect for Plaintiff." Such tongue-in-cheek
characterizations were peppered throughout the defendants'
papers prior to the entry of the Consent Injunction, to the obvious
annoyance of The North Face (and, it seemed at times, the judge).
The North Face is obviously getting ahead of that issue this
time.
The motion papers allege that the Winkelmanns formed a new
company, Why Climb Mountains, LLC, just two days after the entry of
the Consent Injunction and immediately began making plans to use
and register THE BUTT FACE as a substitute for THE SOUTH BUTT in
direct violation of the Consent Injunction. The North Face
commissioned a consumer survey, described in the declaration of well-known survey expert Gerald
Ford, showing that approximately 35% of respondents identified The
North Face as being associated with THE BUTT FACE when shown an
example of the defendants' T-shirts.
It will be interesting to see how Judge Sippel responds to the
contempt motion. He has already scheduled a status conference with the
parties' counsel on August 14 to discuss the pending motion in
chambers – which generally means off the record.
It will also be interesting to see whether the Winkelmanns will
enjoy any favorable publicity regarding their latest adventure.
Some people don't find a joke funny the second time around, and
the potential consequences of violating a court order are extremely
serious. Stay tuned.
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The North Face recently filed a motion for contempt against the defendants,
alleging that the principals of South Butt are now selling
T-shirts, caps and sweatshirts under the trademark THE BUTT FACE,
and are using the tagline NEVER STOP SMILING. The North Face has
requested expedited consideration of its motion, on the grounds
that "the Winkelmanns used the original lawsuit as a lucrative
marketing device to promote sales of their infringing products
through a media blitz. We assume they will attempt to same here.
Thus the sooner this matter is heard and resolved, the
better."
2013 IP Developments (Video Content)
