North Face Wants|South Butt Sanctioned

ST. LOUIS (CN) - North Face asked a federal judge to declare the owners of the parody clothing line South Butt in contempt of court.

North Face sued James Winkelmann and The South Butt in 2009, claiming trademark infringement. The defendants consented to a permanent injunction on April 12, 2010, barring them from using the South Butt marks, North Face claims.

But North Face claims the defendants violated that order just two days later.

It claims James Winkelmann Sr. formed a new company - Why Climb Mountains LLC - featuring a new clothing line: The Butt Face.

"A survey conducted by plaintiff shows that approximately 35 percent of respondents identify The North Face as being associated with The Butt Face trademark when shown a sample of contempt respondents' T-shirts," North Face says in its motion for contempt. "Not only are contempt respondents now engaged in the widespread sale and promotion of The Butt Face branded goods, but Why Climb Mountains, LLC also has filed for registration of The Butt Face trademark with the United States Patent and Trademark Office."

North Face claims Winkelmann Sr., using his son James Winkelmann Jr. as the company figurehead, is drumming up publicity through legal proceedings at North Face's expense.

"TSB [The South Butt] used publicity regarding the lawsuit to drive its sales and marketing exposure even higher," North Face claims. "Indeed, as the court may recall, TSB's counsel frequently issued press releases and appeared in the media to stir up publicity about the case.

"TSB's carefully orchestrated publicity and use of the lawsuit as a marketing campaign is detailed in Winkelmann Sr.'s sworn deposition testimony, wherein he described how - even before The North Face filed its lawsuit against TSB - TSB devised a plan to increase sales by 'stir[ring] up a lot of publicity.'

"Winkelmann Sr. viewed the lawsuit as an 'unbelievable publicity opportunity' and was particularly drawn to the idea of a '7 billion apparel powerhouse against Jimmy.' 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." (Citations omitted.)

Watkins, who still represents the Winkelmanns, denied North Face's assertions.

"The South Butt and Olop [South Butt's sister line] are genuinely committed to the fundamental concept that the consuming public is perfectly capable of discerning the difference between a direction point on a compass and that part of the body from which solid waste is evacuated," Watkins said in a statement.

North Face seeks costs, sanctions for civil contempt and disgorgement for trademark violations.

It is represented by Michael Kahn, with The BrickHouse Law Group.

Follow @@joeharris_stl

Subscribe to Closing Arguments

Sign up for new weekly newsletter Closing Arguments to get the latest about ongoing trials, major litigation and hot cases and rulings in courthouses around the U.S. and the world.

Email *

Submit