IP Law Daily, TRADEMARK—EDMo: Proof of Infringement Was Not Required to Show Violation of Consent Judgment Prohibiting Use of “North Face” Marks or Colorable Imitations, (Oct 12, 2012)

By Peter Reap, J.D., LLM

The North Face Apparel Corp. would not be required to prove that defendant Winkleman, his father (Winkleman Sr.), and a corporate entity formed by Winkleman Sr., Why Climb Mountains (collectively, the defendants), infringed its “North Face” trademarks in order to secure a finding of civil contempt against the defendants for violating a consent judgment, the federal district court in St. Louis has ruled (The North Face Apparel Corp. v. Williams Pharmacy, Inc., October 10, 2012, Sippel, R.). Instead, North Face only needed to show that the defendants violated the terms of the consent injunction, which they would have done by using marks that were “colorable imitations of” the North Face trademarks.

The consent judgment enjoined the defendants from “using, without the express written permission of The North Face, any of The South Butt Marks or any other reproduction, counterfeit, copy, or colorable imitation of the North Face trademarks,” as well as from using “any other designation that is confusingly similar to any of the North Face trademarks, including, but not limited to the South Butt trademarks, in any manner as to be likely to dilute, cause confusion…” with the sale of any product not The North Face’s.

The defendants did not dispute that within two days of the entry of the consent injunction, Winkelman, Sr. formed Why Climb Mountains, which sells products using “The Butt Face” mark and accompanied by the tagline, “Never Stop Smiling.” The North Face contended that these activities violated the consent injunction and sought a finding of civil contempt.

Once North Face came forward with clear and convincing evidence that there was a specific and definite court order and that defendants have violated the order, the burden shifted to defendants to show that compliance was presently impossible, the court noted. To show that compliance is presently impossible, the defendants must demonstrate: (1) that they are unable to comply, explaining why categorically and in detail; (2) that their inability to comply was not self-induced, and (3) that they made in good faith all reasonable efforts to comply.

In addition to admitting that the consent injunction applied to them, defendants also admitted that the consent injunction was a “specific and definite order” of this court. The only dispute was whether the defendants violated the order.

Based on the evidence presented thus far in support of North Face’s motion, the court expected North Face to easily meet this burden at the upcoming hearing. Despite the parties’ lengthy recitation of trademark law and defendants’ continued insistence that their activities were protected as parodies, those issues were not before the court.

North Face was not required to establish infringement in this proceeding, according to the court. The Second and Ninth Circuit Courts of Appeals have concluded that, when the issue was whether a defendant violated a consent judgment, a plaintiff “who already has a judgment establishing that the defendant has infringed is not required to muster all of the evidence it would need to make out an original infringement case in order to prove contempt.”

Although the defendants argued that North Face must present evidence of consumer confusion to prevail, North Face was not required to present expert testimony of consumer confusion between the North Face and the Butt Face marks to meet its burden in this case, the court held. This conclusion was consistent with the “safe distance” rule, which defendants conceded applied, and provided that where an individual or entity had been enjoined from infringing a plaintiff’s mark(s), the infringer could be required to keep a “safe distance” from the plaintiff’s mark(s).

The parties were directed to address the issue of whether the Butt Face marks were a “colorable imitation” of the North Face marks prior to the upcoming hearing. The parties were also instructed to provide supplemental briefs on the standards the court should apply when deciding the colorable imitation issue, as well as whether the court’s visual inspection of the two marks would be sufficient for this purpose.

Finally, the court acknowledged the defendants’ argument that laches possibly could preclude a contempt finding in this case. The court would be required to evaluate North Face’s entitlement to some, or any, of its claimed damages (including disgorgement of profits and attorney fees) against the backdrop that North Face chose to sit on its rights for some time after discovering defendants’ conduct. This factor could prevent North Face from obtaining the full amount of damages it sought.

The court expected the parties to talk about settlement in good faith and, if they did not resolve their pending dispute, they would be required to report on the status of these negotiations before the start of the hearing.

The case is No. 4:09CV2029 RWS.

Charles A. LeGrand (Davis Wright Tremaine, LLP) for The North Face Apparel Corp. Thomas M. Blumenthal (Paule, Camazine & Blumenthal, P.C.) for Williams Pharmacy, Inc.

Cases: Trademark MissouriNews