By: Sharon Urias, Esq.
Jimmy Winkelmann, the founder of two brands that parodied outdoor clothing and equipment maker The North Face Apparel Corp., has agreed this week that his most recent brand has violated a 2010 settlement of a trademark infringement lawsuit involving his first brand, The South Butt.
A Missouri court ordered James Winkelmann, Sr., and James Winkelmann, Jr. and their company Why Climb Mountains LLC, to stop using The Butt Face, their most recent line of clothing, trademarks or any other reproduction, counterfeit, copy or imitation of The North Face’s trademarks. The Winkelmanns must also silence all Facebook and other media promotions, take down YouTube videos posted by family members and cease communications of any kind about The North Face or The South Butt and The Butt Face line of clothing. The defendants must also turn over any products bearing The Butt Face trademark for destruction and pay $65,000 to The North Face.
The North Face, Inc. is a well-known American company that specializes in outdoor clothing and equipment. The company’s logo consists of a skewed quarter circle with two lines separating the circle in three parts. The image is an interpretation of the massive monolith, Half Dome, in Yosemite National Park.
Jimmy Winkelmann hatched the idea for a parody line of clothing back in 2007 while he was a student at Chaminade College Prep. His logo for The South Butt is also a skewed quarter circle, but divided into two parts by on line.
In the 2010 infringement lawsuit, Winkelmann reached an amicable settlement with The North Face promising to stop selling clothing under the name The South Butt. However, according to the St. Louis Post-Dispatch, Winkelmann, Sr, formed the company Why Climb Mountains which began selling The Butt Face merchandise with the motto “Never Stop Smiling” within days of the settlement.
In August, The North Face filed a contempt motion against the Winkelmanns and their company, saying, “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 do the same here. Thus the sooner this matter is heard and resolved, the better.
In the order filed last week, U.S. District Judge Rodney Sippel said that The North Face would “easily meet” their burden to prove that the Winkelmanns violated the 2010 consent injunction. Sippel counseled, “It’s time to stop smiling and start exploring a sensible resolution to this dispute.”
Both sides, as part of the settlement, agreed not to comment on the case.
