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January 11, 2010 3:54 PM

It's On: South Butt Creator "Little Jimmy Winkelmann" Fires Back at North Face

Posted by Matt Straquadine

Southnorthlogo2 It's one of the most chuckle-inducing trademark claims in recent memory: The North Face Apparel Corp. has sued 19-year-old University of Missouri freshman James Winkelmann for trademark infringement and dilution. According to its motion filed in December in the U.S. district court for the eastern district of Missouri, The North Face says Winkelmann, a biomedical engineering student, has caused it “irreparable harm” by producing his parody clothing line, The South Butt (motto: "Never Stop Relaxing").

Last week Wilkelmann (pictured below, left) and his attorneys filed an irreverent reply brief, which is excerpted below, along with a motion to dismiss the suit. According to his filing--as well as to his website and his attorney, Albert Watkins of St. Louis firm Kodner, Watkins, Muchnick, Weigley & Brison--Winkelmann started the clothing line as a joke. Winkelmann says he was inspired to do so after noticing that all his friends were buying North Face gear even though they weren’t mountaineers. He decided to poke fun at the idea by coming up with a "South Butt" logo; slapping it on T-shirts, jackets, and sweatshirts; and selling the clothes via a Columbia, Mo., pharmacy and the Web.

091067JimmyWPicture The North Face didn't find the joke funny. The company learned that Winkelmann had moved to trademark the South Butt name, and in August sent him a cease-and-desist letter. Winkelmann--who Watkins claims had sold less than $5,000 worth of South Butt merchandise by that point--ignored the demand.

So in December The North Face brought out its big guns, retaining IP lawyers Michael Kahn of Bryan Cave and G. Roxanne Elings of Greenberg Traurig, and suing Winkelmann, his small company, and the pharmacy that sells South Butt clothing. The North Face’s complaint says that because Winkelmann intended to expand the manufacture and sale of The South Butt nationwide, it had no choice but to file suit for trademark infringement and dilution.

Winkelmann’s answer, drafted by Watkins and filed on January 4, is clearly intended to play to the sympathies offered by the particular defendant, referred to in the filing as "Little Jimmy Winkelmann." It's also intended to draw smiles. You can download the entire document here, but highlights include:

- "But for the actions of North Face, the South Butt saga might have been relegated to local Friday fish-fry banter."

- "Described as a handsome cross between Mad Magazine's Alfred E. Newman of 'What me Worry' fame, and Skippy the Punk from the Midwest, Jimmy refused to turn the other cheek." (The "Skippy" reference is lost on us, too.)

- "Jimmy and The South Butt have no choice but to defend the present action to protect the integrity of the marketplace, freedom of choice for the consumer, freedom of speech for all, and the fundamental tenets of capitalism, competition and The American Way."

Though our calls to The North Face's lawyers at Bryan Cave and Greenberg Traurig either went unreturned or were politely turned away, we were able to speak with John Strand, an IP litigator at Wolf Greenfield (who also happened to teach us trademark law at Northeastern University's School of Law) about the case. Strand was among the lawyers for C.R. Bard, Inc. in its $400 million patent infringement case against W.L. Gore & Associates, Inc., one of the largest patent infringement awards ever.

According to Strand, The North Face’s infringement claim is unlikely to go far: “The question," Strand says, "is whether there is a likelihood that [The South Butt] trademark could be confused with The North Face mark. To me it’s clear that the answer is 'no.'”

As for the dilution claim, Strand says, The North Face’s argument that its reputation is being tarnished by The South Butt is harder for Winkelmann and The South Butt to fend off: “Though [The South Face] is intended as parody, this isn’t an affirmative defense if you’re using the parody to make money.”

One thing is for sure, The North Face’s decision to sue has brought much more attention to Winkelmann’s tiny clothing line than it previously enjoyed. According to Watkins, before the suit and the explosion of media attention that’s followed, The South Butt’s sales were small. Now, Watkins says, Winkelmann is moving enough merchandise to cover his full four-year college tuition bill.

“Simply put, if it weren’t for the efforts of The North Face," says Watkins, "The South Butt probably wouldn’t still exist."

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The South Butt and this suit is probably helping North Face more than hurting them. I had never head of North Face before this news stream. I'll bet their sales are also rising.

The North Face makes great outdoor clothing. I went on a missions trip in Russia and as I looked through the photographs it struck me that it looked like a North Face catalogue- their name was on almost every jacket of the American team and some of the Russians' as well. They really shouldn't worry about this little parody tarnishing their image. If anything, taking the part of "Goliath" in this battle does far more harm.

Why didn't North Face just buy him out? It would've been much cheaper than litigating. Now they have turned a little known parody into a nationally known competitor.

Silly.

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