A plucky response has been filed in one of the most unusual trademark infringement lawsuits of 2009. Apparel manufacturer The North Face has sued 19-year-old University of Missouri freshman James Winkelmann for trademark infringement and dilution. At issue is James Winkelmann's small business, The South Butt, which utilizes a logo and tagline that are similar to -- and arguably parodies of -- The North Face's marks.
As The American Lawyer notes: Last week Winkelmann and his attorneys filed an irreverent reply brief along with a motion to dismiss the suit. According to his filing -- as well as his Web site 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.
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.
Winkelmann's answer 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.
Trademark attorney  Dyan House of Munck Carter in Dallas says that while there is a parody defense, it may not be successful in this case. "What makes this different is that The South Butt sells fleece jackets and other clothing and therefore competes directly with The North Face. That may be reason for a jury to go against the defendant." By contrast, House says Louis Vuitton lost to a company making "Chewy Vuiton" toys primarily because the latter company makes pet toys and not designer handbags. In this case, the relatedness of the goods offered under the marks will likely be a key element in the analysis.