Defending Your Marks: A Boy, a Corporation, and an IP stand-off

PARODY FOR PROFIT
A young businessman and a corporate giant butt heads, and everyone wins

By John Stillman

Jimmy Winkelmann walks into the Starbucks in Ladue, Missouri, a suburb of St. Louis, with his two younger sisters, wearing a black fleece jacket with a white logo stitched on the right chest. He orders a small iced coffee and walks to the back of the coffee shop, where he sits down in a large and well-stuffed brown leather chair.

The fleece he’s wearing was made by Jimmy’s own apparel company—now defunct—which he launched in 2007 as a 16-year-old sophomore at Chaminade, a prep school in the St. Louis suburbs. The clothing line was a parody of the famous outdoor apparel brand The North Face, and Jimmy’s jacket is an impressively close replica of the iconic North Face Denali fleece—iconic in that virtually every student to attend an American private high school in the last decade has experienced the surreal vision of a crowded hallway of students clad in the full color spectrum of the branded fleece; The North Face’s white half-dome logo that adorns the left breast of the jacket carries a cultural cachet tantamount to Levi’s “red tab,” but with a more bourgeois association.

Jimmy’s jacket does not bear the North Face text, nor it’s stylized mountain emblem. The parody item instead bears its own mark: “The South Butt”, in block lettering, with a comical inversion of the mountain design, meant to conjure the image of two human buttocks. He’s making fun of The North Face and the large swath of the American population that he sees as brainwashed followers of the brand. Lest critics dismiss his bodily humor as lowbrow, Jimmy explains the foundational principles of his satire. The South Butt takes aim at the kids who “think that, ‘Oh, if I spend the extra money, people are gonna like me more,’” he tells me. “It’s craziness.” Maybe so, but no one else seemed to object to the craziness when Jimmy was in high school. “Going to the mall, you’d just look around, and everyone has to have this clothing item,” Jimmy recalls, “We’re looking like a bunch of guppies all wearing the same thing.”

The guppies that populate suburban St. Louis are particularly ripe for the parodying. From his parking spot in front of Starbucks, Jimmy beholds a landscape teeming with social status- markers: next door, J. McLaughlin is selling martini motif corduroys “for him”; next to that is POPtions! the gourmet popcorn boutique; across the way, Plaza Frontenac houses Louis Vuitton, Coach, and Michael Kors retail sites; just two stoplights down Clayton Road, Breeze Blow Dry Bar prepares for its grand opening (the salon’s motto: “Happiness is but a Blowout Away”). The local parodist does not struggle for want of targets.

Still, there was something that made the luxury fleece empire especially attractive, and not just to Jimmy. In the three years before The South Butt’s founding, headlines began to appear in newspapers across the nation, announcing serial robberies of North Face jackets. In February 2005, police in a D.C. suburb arrested five suspects ages 14 to 18, in connection with 17 North Face jacket robberies. In the years since, this phenomenon has gained momentum. CNN reported in January 2012 that schoolchildren in Seoul, South Korea are wearing the jackets as class signifiers, referring to them as “backbreakers” for the burden on parents who work to afford the North Face seal. Then in November 2012, Andre Jones, a 12-year-old from Baltimore, was held at gunpoint for his North Face and refused to give it up, according to the local Fox News station. Asked why he stood his ground, Jones replied, “People would tease me and call me names.”

Basic economics holds that commodity values are determined by the desires of the marketplace, and anthropologists know that commodity culture can drive people to extremes. Jimmy Winkelmann had glimpsed these forces in the mall, at parties, and at school, but when he set his sights on The North Face in 2007, he could not have predicted the momentum his brand would pick up.

***

The great surprise appeared, ironically, in the form of letter from North Face counsel Jordan LaVine in August 2009, alleging Jimmy had infringed on The North Face trademark, and requesting that the South Butt immediately cease and desist its operations. Al Watkins, counsel for Jimmy Winkelmann, Jr., his father James, Sr., and The South Butt, responded, refusing the request: “The sense of parody employed by Jimmy within the context of his South Butt undertakings,” reads the reply, “clearly demonstrates a respectful, if not flattering, ‘anti-North Face’ posture.” It went on, extolling the diligent spirit of the young entrepreneur. Jimmy Winkelmann, Watkins explained, “is a very polite, creative and hard working student with extremely limited resources.” Here was Watkins’ opening salvo, and in the three-year-long dispute that followed, this charming portrait of Jimmy would grace every press release, court filing, and sound bite The South Butt produced—it was an underdog story from the start. “My clients have [nothing] to lose by vigorously pursuing the American dream,” the letter pronounces in closing. They offered to sell The South Butt, LLC for one million dollars.

Three months later, The North Face sued, citing seven claims against the parody company. Jimmy Winkelmann was thrilled. He posted an announcement on the company’s website, www.TheSouthButt.com to spread the word: “Hey everybody,” the post begins. “The North Face has decided to take us to court!” Jimmy asked customers to “please get your Christmas orders in ASAP!” and proudly declared, “We’re up against a $7 billion dollar powerhouse…but we feel confident with our idea and our friends, family, and supporters!”

Watkins, a partner at the local firm Kodner Watkins Kloecker, recalls the moment he realized the suit was a blessing in disguise. “When your client comes in to the office skipping down the hallway, ready to embrace you and tongue-kiss you because he’s being sued, you take a second and step back,” Watkins says. The company had been operating under the radar, generating a modest $5,000 in sales during the preceding year. He asked Jimmy for the numbers—in the week since the suit was filed, The South Butt had sold half a million dollars of goods, Jimmy told him. “That’s not bad for an 18-year-old punk,” Watkins tells me. “That pays for a lot of college.”

***

When The North Face Corporation filed its suit in December 2009, there was no skipping, embracing, or kissing involved. The stakes for the corporate giant, while far from life threatening, were serious: If they failed to police their trademark, they could lose it, according to federal law. The company refused to allow infringers, which it alleged Jimmy was, to make money off its name.

Under trademark law, The North Face holds exclusive rights to use its name and the half-dome logo; the registered trademark is treated as property. The South Butt, it is clear, leverages The North Face’s fame and reputation for its benefit. And while the First Amendment protects parodists using typically “parodic” media—newspapers, billboards, cartoons, etc.—that protection does not extend to commercial enterprise. If Jimmy had passed out South Butt bumper stickers, he would have been exercising his right to free speech. But the Winkelmanns’ decision to file for the South Butt trademark, stamp it onto fleece jackets nearly identical to the famous North Face versions, and sell the jackets for profit is what got them into trouble.

The dispute involved a longer list of charges, but at its core, it was an argument over whether making clothes was a form of free speech. The North Face held that Jimmy and company were unfairly trading on the North Face’s reputation, and confusing consumers as to the origin of South Butt goods. In a press release, Watkins responded that there was nothing confusing about the South Butt clothing line: “The consuming public is insightful enough to know the difference between a face and a butt.”

Plaintiff and defendant traded legal filings in the Federal District Court during January 2010, until Judge Rodney Sippel ordered the parties into mediation. After extensive coverage in the local, national, and international media, hours of depositions, and further out-of-court negotiation, The North Face settled its suit against The South Butt in April, and the court entered a consent permanent injunction against the Winkelmanns from continuing their parody brand, and using “any other reproduction, counterfeit, copy or colorable imitation of the The North Face Trademarks.”

But the fun did not end there. “Jimmy was down in Panama City having a great deal of fun, enjoying a number of young ladies who enjoyed themselves donning and sporting South Butt wear,” Watkins told American Lawyer at the time. “He immediately returned to Panama City to give away many more T-shirts.” Jimmy’s father was similarly unfazed by the injunction. “Oh, it was nothing,” Winkelmann, Sr. tells me. “That [was] just a zero thing.”

***

Sitting back in the auburn leather chair at his desk, Watkins enjoys giving his South Butt spiel. To him, the whole affair was a David versus Goliath clash, and he can’t figure out why a big corporation like The North Face would pursue someone like Jimmy. “I would wear the parody as a badge of honor,” Watkins says, lamenting the corporation’s lacking sense of humor. “It says that your brand is so good and so famous as to inspire others to make fun of it.”

Then he pauses, leans forward in his chair, stands, and walks over to a file cabinet. From the bottom drawer he pulls out a black fleece and holds it up like a showroom salesman. Adorned with the South Butt logo, it’s the same fleece Jimmy was wearing at Starbucks. “Now this,” he says, “is a great piece of product.”

Watkins sees a great deal of dignity in defending his client. He relishes the fact that The North Face even bothered to sue Jimmy Winkelmann, explaining that a suit of this nature gives the parodist media attention that would otherwise be out of reach. The press was a boon to South Butt sales, he says (although counsel for The North Face could not confirm Watkins’ claim that sales skyrocketed to $500,000 in a week). Still, he’s not in it for the money, Watkins says. His attorney’s fees? “A good bottle of well crafted Burgundy.”

Three years of otherwise billable hours is a large investment for a bottle of Burgundy, to be sure. But as Watkins writes to me in an email, he takes pride in his “performance art skills.” (Representing the creators of the children’s storybook Santa Paws in a recent suit against Disney, Watkins dressed one colleague as Santa and had him hold a vigil outside the courthouse.) “The American consumer is fully capable of appreciating a joke,” he says. The South Butt case, then, was the opportunity of a career.

It was an opportunity that arose on the squash courts at the Racquet Club of St. Louis, where both Watkins and James Winkelmann, Sr. are members. According to one of the myths surrounding the South Butt saga, Watkins wagered his representation on a game of squash against Jimmy’s father, a stockbroker, and lost. The rest, as they say, is history. Winkelmann’s and Watkins’ accounts of that history match up, except for one detail regarding compensation. Watkins says the fees amounted to one bottle of burgundy; Winkelmann tells me it was two—he left the bottles in the attorney’s locker at the Racquet Club.

Apart from The South Butt, the recent ventures of the Winkelmann, Sr. represent a casualty emblematic of the 2008 recession: during his 2010 deposition, he listed two business addresses where his seven businesses were located—all seven currently employ zero workers besides Winkelmann himself.

But while the other companies struggled, The South Butt offered a laugh, at the very least. Winkelmann recalls the moment the parody brand was born—Jimmy was making fun of his sister’s North Face jacket in the kitchen of the family’s Frontenac, Missouri home. “We thought the brand had become absurd,” Winkelmann, Sr. says. “Or, Jimmy did. He was never a big logo- wearer.”

***

“Are you kidding me?” exclaimed an open-mouthed Michael Kahn, The North Face’s lead attorney, working at Bryan Cave in St. Louis at the time. It was the fall of 2009, and his partner on the case, David Roodman, had just called Kahn into his office to show him the South Butt’s line of fleece jackets. “I thought [the jackets] were the North Face’s,” he recalls. “Take a closer look,” Roodman told him. The South Butt jackets on the desk were so similar to The North Face’s original design that Kahn had mistaken them—it was a textbook case of consumer confusion. Kahn had been unsure whether he wanted to take on the case, but seeing the evidence firsthand, he committed. “Sign me up,” he said.

The St. Louis offices of Bryan Cave, LLP, where both Roodman and Kahn worked during the South Butt case, are a far cry from Watkins’ digs. The firm occupies nine floors of the marble monolith at One Metropolitan Square, and a monumental Christmas tree, faux but fully trimmed, takes up at least three stories’ worth in the lobby of the building. The two lawyers nostalgically revisit the three years they spent on the case. I had interviewed Al Watkins the day before, and this gave them a hearty laugh. “That had to be an experience,” Roodman says. He lets Kahn into the conference room—each room is named after a different city in which Bryan Cave has an office, this one is Atlanta—and tells him. “Michael, you just got here for the punch line—he met with Al yesterday.”

The North Face’s attorneys appreciate the circus-like nature of the case, and they join in the fun when appropriate. “The biggest problem I had in that case,” Kahn remembers, “was to avoid laughing when [Watkins] would make these cracks in front of our client.” He’s a funny guy, the two lawyers concede, and that’s fine, but only to a point. Kahn puts the legal dispute in perspective: “North Face would be the first to tell you,” he says. “They’re big business, people are allowed to make fun of them. That’s what part of the First Amendment is about: people are allowed to make fun of you.” True, in a non-commercial setting. But Roodman adds the caveat: “Just don’t do it in a manner that confuses the public.”

Under explicit instruction from the North Face public relations department not to comment to the media during the case, Roodman and Kahn were easy targets for a gifted spin-doctor like Watkins. Their concern, though, was not with spin but with fact. Roodman admonishes Watkins for getting carried away in his public statements. “You gotta be careful,” he says. “You can be a little too flamboyant, playing fast and loose with the facts, and it can come back and bite you.”

If the case had gone to trial, Roodman believes the judgment could have taken a sizeable chunk out of the Winkelmanns’ wallets. The North Face counsel is confident they would have proven likelihood of confusion, which would entitle their client to every penny of The South Butt’s profits, as well as compensation for damage to the brand and legal fees—up to three times that amount if they’d proven that Jimmy’s mark was intentionally counterfeit. “It was risky for them,” Roodman said.

Risk, in this case, is in the eye of the beholder, and Watkins sees no risk whatsoever in the defendants’ position. Even if The North Face had won the case, The South Butt’s attorney says they would have had difficulty collecting his clients’ money. “The operative word is ‘collect,’” he writes in an email. The chances Watkins would allow The North Face to collect from his clients? “Zero,” he says, “or… less than zero.”

***

Outside the courtroom during December 2009 and into the early months of 2010, The South Butt was skyrocketing in popularity. The Winkelmanns and their attorney say online sales were booming, while T-shirts, hooded sweatshirts. Jackets were flying off the shelves at Ladue Pharmacy, the town’s closest thing to a general store and the only brick-and-mortar shop selling South Butt apparel at the time. Rick Williams, the owner of the pharmacy, compares the swell of consumers to the Beanie Baby frenzy, during which crowds stampeded through his store anticipating a new shipment. The brand was making headlines in local and national newspapers, and Williams saw the impact of the publicity firsthand. “It’s human nature,” he says of the South Butt fad. “It was so hot, and everybody just had to have it.”

Spreading from Jimmy’s high school, Chaminade, to his sisters’ schools, Ursuline Academy and St. Joseph’s Academy, the South Butt movement soon took hold at local elementary schools. In January 2010, Mary Queen of Peace administrators banned students from wearing South Butt products to school. Principal Gerry Kettenbach, PhD sent a letter home to parents reminding them to keep their children dressed according to school policy. “Today we noted a couple of students wearing attire with a logo the opposite of North Face,” the letter read. “This is inappropriate at school.” But twists like this only helped the South Butt’s cause, Jimmy explains. “The more press, the better,” he says. “No press is bad press.”

The phenomenon even found its way to Roodman outside the office. He returned home after work one day to find his sixth-grade daughter Jordan upset. “[She] was kidding around and said, ‘Dad, I’m not gonna talk to you if you’re going after the South Butt.” Whether the brand was subversive or simply prankish, it had caught on. “The kids wanted to wear the South Butt stuff,” Roodman admits, smiling. “They thought it was cool.”

***

A courtroom veteran, Judge Rodney W. Sippel chooses his words carefully when speaking about the case, for fear that it might pop up again. He has good reason to play it safe. Within two days of the 2010 injunction against The South Butt, Winkelmann, Sr. formed a new entity, Why Climb Mountains, LLC, and shortly thereafter he and Jimmy began producing a defiant new clothing line, this one bearing the mark, “The Butt Face.” (“There’s a huge market out there for parody clothing items,” Jimmy says, explaining his penchant for the genre. “I just think it’s like a hidden gem that people really haven’t tapped into.”) Finally, in October 2012, the Winkelmanns signed a consent judgment to abandon The Butt Face, as well. Ashes to ashes.

Sippel grants that these cases provided for some “entertaining” antics over the past three years, but he is a professional. When conversation veers toward the hype surrounding the dispute, he stays on point. “The law is the law,” he says. “The law is there to give a level playing field.” The sentimental case for the underdog did not sway him, Sippel maintains: “Do you think there should be a different set of rules for me versus for you, just because of our relative difference in age?” If Watkins expected the feel-good story of Little Jimmy to give him the legal upper hand, Sippel was unmoved.

Counsel for the North Face has faith in this aspect of the judicial system. Roodman and Kahn accepted their client’s order to avoid comment, and felt entirely comfortable sitting back and watching the Watkins show unfold. “Litigation is advocacy,” Roodman explains, but only as it pertains to the judge. “It’s persuading the finder of fact to decide in your favor.”

Watkins, on the other hand, was more concerned with brand advocacy than with litigation. Once he and the Winkelmanns saw the impact of the suit on their business, he says, “We began to realize the completely inane nature of litigation.” Winkelmann, Sr., who became Business Manager shortly after the initial cease and desist letter in August 2009, saw a tremendous upside to his son’s venture. When Jimmy went to school in the fall, his father took the reins. In a December 2009 email (Exhibit 16 of the case) to the CEO and founder of Infuz, a digital marketing agency, Winkelmann laid out his strategic vision: “The North Face versus Jimmy,” reads the subject line of the email; in the body, he describes the situation as an “unbelievable publicity opportunity”—one that he wanted to entrust to professionals. Infuz would handle The South Butt’s website, Facebook page, and Twitter account, while Winkelmann, Sr. took care of day to day business operations and wrote occasional blog posts to buoy the company’s publicity, under the pseudonym Lewis Leffingwell. From his seat in the classroom, Jimmy would serve as the poster boy.

Michael Kahn, The North Face’s attorney, explains that these discoveries majorly discredit the integrity of The South Butt’s story. “The greatest work of fiction in the South Butt case,” he says, “was the creation of ‘Jimmy.’” Jimmy’s father, however, approaches the situation from a purely pragmatic point of view. “Jimmy doesn’t want to be in the dorm room licking envelopes,” he tells me. “That’s a job. There’s a big difference between owning a job and owning a business.”

***

As the case unfolded, the St. Louis legal community gathered along the sidelines. A partner at a local firm, John Greenberg specializes in corporate intellectual property litigation. He explains that for a corporation with as much money as the North Face, the action plan is clear: “Nip it in the bud early,” Greenberg says, and that’s exactly what they purported to do. “[The North Face] wanted that injunction… and within a matter of months, they got their home run decision.”

But the home run, as it happened, did not arrive soon enough to preclude the South Butt media sluggers from racking up impressive numbers in meantime. The legal process allowed Watkins ample time to do what he does best: stir up a media whirlwind and place Jimmy, the star of the show, in the spotlight.

One of the bizarre contributions to the media whirlwind came from local Hip Hop artist Corle 2 Da. Late in 2010, ostensibly after the court’s injunction, Corle wrote and recorded a South Butt anthem and publishing it to YouTube. “We goin’ nationwide, so get on board,” he raps, “and grab that South Butt, yo, it’s priced to afford.” In conversation, Corle makes his allegiance to the cause clear: “I won’t buy North Face products, just because I’m kinda, so to say, on the South Butt team.” A year and a half ago, Corle left St. Louis for Los Angeles in hopes of landing a record deal. He identifies with the South Butt brand because he and Jimmy have similar stories. “To me, it was kinda like a corporate giant versus an underground, smalltime guy,” Corle explains. “And to me, that’s me in the music industry.” The rapper has not yet landed a record deal, but he takes satisfaction in The South Butt’s success: “I was proud of ‘em, you know, they won their lawsuit, in the federal court, against a corporation.”

Corde2da watched the case as it developed, made headlines, and finally fell silent, but he’s mistaken about the outcome. The case never went to trial—Jimmy Winkelmann and the South Butt did not actually win their lawsuit. In fact, the injunction against the Winkelmanns stipulates that neither of them can use the South Butt mark in the future. The severity of this situation is apparent in conversation with Jimmy—he is legally barred from saying the words, “The South Butt.” Still, Corle intuits the larger meaning of the Winkelmann saga: the fight was entirely worth fighting.

According to Watkins, the defendants are proud of the message they sent. I ask the attorney what the South Butt’s story stands for. He wears a stern expression and speaks as if to a crowd of trademark hounds. “Pick your battles,” he says. “Don’t fuck with some teenager that has nothing to lose but the six pack in his fridge.” If you have to go after someone, Watkins cautions, “Make sure he’s not from the heartland of America, where people actually care about that.”

The court forced the Winkelmanns to silently abandon both companies, and yet the underdogs still walked away with the money. The parody companies’ profits will likely be enough to pay for Jimmy’s college, medical school, and graduate school tuitions—possibly even his sisters’ high school and college tuitions, too. When I ask Jimmy to reflect on the experience, he remembers the injunction and restrains himself. “No comment,” he says, “But at this point in time I’m pretty content.”

 

John Stillman is a senior in Yale College. He can be contacted at john.stillman@yale.edu.

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