The North Face Kicks Butt...Face

The North Face has asked a federal judge to hold the owners of "The South Butt" in contempt of court.

The North Face had sued James "Jimmy" Winkelmann and the South Butt LLC in 2009, alleging trademark infringement from the use of "THE SOUTH BUTT."  The defendants claimed it was merely a parody, but the Defendants consented to a Permanent Injunction in 2010 barring them from using any of the South Butt marks.

The North Face now claims that only two days later, the now-enjoined Defendants formed a new company called Why Climb Mountains LLC, and came out with a new clothing line -- THE BUTT FACE.

North Face Apparel cites a consumer survey that it conducted, showing that more than 1 out of 3 people perceive the North Face as being associated with the Butt Face mark.

North Face Apparel is seeking sanctions including damages and attorneys' fees.

The case raises several interesting legal issues.  First, when a defendant consents to be permanently enjoined after having been sued, he is under a legal duty to steer clearer of potential infringement than he otherwise would have in the first place.

Therefore, had the South Butt came out with "THE BUTT FACE" initially, it may or may not have been found liable (although given the results of the survey, they probably would have been sued anyway).  But the point is that Court Orders have to have meaning or else, where is the finality to litigation?

Further, the parody defense that could have potentially prevailed in the first case, becomes a tougher sell to the Court the second time around, as the defendant's conduct demonstrates its potential for treating the litigation process as a joke, and disrespecting the Court's authority.