Case 4:09-cv-02029-RWS Document 24 Filed 01/04/2010 Page 1 of 12

IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF MISSOURI
EASTERN DIVISION

THE NORTH FACE APPAREL CORP., )

a Delaware Corporation, )
)
Plaintiff, )
)
v. ) Case No. 4:09-cv-02029-RWS
)
WILLIAMS PHARMACY, INC. )
JAMES A. WINKELMANN, JR., and ) JURY TRIAL DEMANDED
THE SOUTH BUTT, LLC, )
)
Defendants. )

ANSWER AND AFFIRMATIVE DEFENSES

The Defendant Williams Pharmacy, Inc. (“Pharmacy”), for its Answer and Affirmative

Defenses to Plaintiff’s Complaint, state as follows:

1. Defendant Pharmacy moves to strike Plaintiff’s “Introduction” pursuant to

Federal Rule of Civil Procedure 12(f) as being immaterial and impertinent, and in violation of

Federal Rule of Civil Procedure 8 requiring “a short and plain statement of the grounds for the

court’s jurisdiction, . . . a short and plain statement of the claim showing the pleader is entitled to

relief; and . . . a demand for relief sought . . .”1

ANSWER

2. Defendant Pharmacy is without knowledge or information sufficient to form a

belief as to the truth of the allegations in Paragraphs 1, 3, 4, 10, 11, 12, 13, 14, 15, 16, 18, 20, 24,

1
The “Introduction” of Plaintiff is neither short nor plain, and sets out not a jurisdictional basis, nor a claim
showing entitlement to relief, nor a demand for relief sought. It is strictly editorial. For example, while it might be
mildly interesting that the north face is the most difficult face of a mountain to climb, this is true mostly because it is
the face least exposed to the sun, which is where the similarity with South Butt ends, and is only true in the Northern
Hemisphere, or we would be dealing with the South Face and the North Butt.
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25, 32, 33, 34, 36, 38, 40, 41, 42, 43, 72 and 77 of Plaintiff’s Complaint, and therefore denies the

same.

3. In response to the allegations of Paragraph 2 of Plaintiff’s Complaint, Defendant

Pharmacy admits that it is a Missouri corporation having a place of business within this District

and Division at 7010 Pershing Avenue, St. Louis, Missouri 63130, that it owns the store with its

name at that location, that it maintains an informational website at www.williamspharmacy.com,

but denies each and every other allegation of Paragraph 2 of Plaintiff’s Complaint not

specifically admitted herein.

4. In response to the allegations of Paragraph 5 of Plaintiff’s Complaint, Defendant

Pharmacy states that the allegations of the paragraph do not require a responsive pleading, but

are descriptive only of terms used in Plaintiff’s Complaint.

5. In response to the allegations of Paragraphs 6, 7, 8 and 9 of Plaintiff’s Complaint,

Defendant Pharmacy states that said paragraphs state conclusions of law which do not require

responsive pleadings, but that Defendant Pharmacy does not challenge the jurisdiction or the

venue of this Court.

6. In response to the allegations of Paragraph 17 of Plaintiff’s Complaint, Defendant

Pharmacy denies that The North Face trademarks are among the world’s most famous and

widely recognized, and states that it is without knowledge or information sufficient to form a

belief as to the truth of the allegations of the rest of Paragraph 17 of Plaintiff’s Complaint not

specifically denied herein, and therefore denies the same.

7. In response to the allegations of Paragraph 19 of Plaintiff’s Complaint, Defendant

Pharmacy moves to strike Plaintiff’s references to what “VF Outdoor, Inc.” spends on

advertising pursuant to Federal Rule of Civil Procedure 12(f) as being immaterial and

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impertinent to the claims in this case, and is without knowledge or information sufficient to form

a belief as to the truth of the allegations of the rest of Paragraph 19 of Plaintiff’s Complaint and

therefore denies the same.

8. In response to the allegations of Paragraph 21 of Plaintiff’s Complaint, Defendant

Pharmacy admits that it advertises, offers for sale and sells the “The South Butt” line of apparel

with logos stating “Never Stop Relaxing” and the logo shown in Paragraph 21, but specifically

denies that this apparel is a directly competing line of fleece jackets, T-shirts, and other apparel

with any apparel of Plaintiff, and is without knowledge or information sufficient to admit the

truth of the allegations as to whether “The South Butt,” “Never Stop Relaxing,” and the logo

printed in Paragraph 21 are trademarks as this calls for a conclusion of law, denies that they are

knock-offs of Plaintiff’s trademarks, denies that Defendant Pharmacy manufactures or distributes

these products, and denies each and every other allegation of Paragraph 21 of Plaintiff’s

Complaint not specifically admitted herein.

9. Defendant further moves to strike the imposed term “Infringing Trademarks”

throughout Plaintiff’s Complaint, first introduced in Paragraph 21 of Plaintiff’s Complaint,

pursuant to Federal Rule of Civil Procedure 12(f) as being immaterial and impertinent and as

invading the province of the Court in attempting to establish in the mind of the Court the relief

Plaintiff has sought without being capable of meeting the burden of proof which Plaintiff must

meet to prevail and prematurely assuming that it has done so.

10. Defendant Pharmacy denies the allegations of Paragraphs 22, 23, 31, 45, 47, 49,

50, 51, 52, 53, 54, 55, 56, 58, 59, 60, 61, 62, 63, 65, 66, 67, 68, 69, 70, 74, 75, 76, 78, 80, 81, 82,

83, 84, 86, 87, 88, 89, 90, 92, 93, 94, 95 and 96 of Plaintiff’s Complaint.

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11. In response to the allegations of Paragraph 26 of Plaintiff’s Complaint, Defendant

Pharmacy admits that it sells described products which do not infringe on Plaintiff’s rights in its

store located in this judicial district, and that the products are available on the

www.thesouthbutt.com website, but denies each and every other allegation of Paragraph 26 of

Plaintiff’s Complaint.

12. In response to the allegations of Paragraph 27 of Plaintiff’s Complaint, Defendant

Pharmacy states that The South Butt does not prominently identify Williams Pharmacy as the

seller of the non-infringing products and that the only page on the website where Williams

Pharmacy may be found is http://www.thesouthbutt.com/online-store/ which has the one

sentence statement: “The South Butt is also available in St. Louis, Mo. at all Williams

Pharmacies,” which includes a link to the Williams Pharmacy web site, and denies each and

every other allegation of Paragraph 27 of Plaintiff’s Complaint.

13. In response to the allegations of Paragraph 28 of Plaintiff’s Complaint, Defendant

Pharmacy admits that The South Butt Defendants have links on their website to both

www.facebook.com and www.twitter.com, but deny that the products carry infringing

trademarks and are without knowledge as to the purpose for which The South Butt Defendants

created these links, and denies each and every other allegation of Paragraph 28 of Plaintiff’s

Complaint not specifically admitted herein.

14. In response to the allegations of Paragraph 29 of Plaintiff’s Complaint, Defendant

Pharmacy admits that it has accepted telephone and online orders for the non-infringing

products, though it no longer accepts on-line orders and does not fill telephone orders but will

hold product in certain circumstances, and admits that it has advertised the non-infringing

products and the non-infringing marks in its storefront windows, and on the home page of its

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website as shown in Paragraph 29, but denies each and every other allegation of Paragraph 29 of

Plaintiff’s Complaint.

15. In response to the allegations of Paragraph 30 of Plaintiff’s Complaint, Defendant

Pharmacy admits that while supplies are available it gives a free sticker with each sale of the

non-infringing products as shown in Paragraph 30, but denies each and every other allegation of

Paragraph 30 Plaintiff’s Complaint.

16. In response to the allegations of Paragraphs 35 and 39 of Plaintiff’s Complaint,

Defendant Pharmacy is without knowledge or information sufficient to form a belief as to the

truth of the allegations of Paragraphs 35 and 39 of Plaintiff’s Complaint, but moves to strike the

paragraphs pursuant to Federal Rule of Civil Procedure 12(f) as being immaterial and

impertinent as they clearly contain only settlement discussions between Plaintiff and The South

Butt Defendants, and therefore denies each and every allegation of Paragraphs 35 and 39 of

Plaintiff’s Complaint.

17. In response to the allegations of Paragraph 37 of Plaintiff’s Complaint, Defendant

Pharmacy is without knowledge or information sufficient to form a belief as to the truth of the

allegations of Paragraph 37 of Plaintiff’s Complaint as they apply to The South Butt Defendants,

and specifically denies the allegations as they apply to Defendant Pharmacy, and therefore denies

the entirety of Paragraph 37 of Plaintiff’s Complaint.

18. In response to the allegations of Paragraph 44 of Plaintiff’s Complaint, Defendant

Pharmacy admits that it has knowingly advertised, offered for sale, and sold the non-infringing

products in interstate and foreign commerce until November of 2009, but that it no longer does,

that it still knowingly advertises, offers for sale, and sells the non-infringing products in

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intrastate commerce in the State of Missouri and in this judicial district, but denies each and

every other allegation of Paragraph 44 of Plaintiff’s Complaint.

19. In response to the allegations of Paragraph 46 of Plaintiff’s Complaint, Defendant

Pharmacy admits that it is not authorized to advertise, sell or offer for sale products bearing the

Plaintiff’s Trademarks but further states that it does not do so, and denies each and every other

allegation of Paragraph 46 of Plaintiff’s Complaint.

20. In response to the allegations of Paragraph 73 of Plaintiff’s Complaint, Defendant

Pharmacy admits that The South Butt Defendants continue to supply Williams Pharmacy, but are

without knowledge or information sufficient to admit the truth of the allegations of the rest of

Paragraph 73 and therefore deny the same.

21. In response to the allegations of Paragraphs 48, 57, 64, 71, 79, 85 and 91 of

Plaintiff’s Complaint, Defendant Pharmacy incorporates by reference the entirety of this Answer

and Affirmative Defenses as if set out herein in full.

22. Pursuant to Federal Rule of Civil Procedure 38(b), Defendant Pharmacy demands

a jury trial on all issues.

AFFIRMATIVE DEFENSES

By way of answer and affirmative defense to all counts of Plaintiff’s Complaint,

Defendant Pharmacy states:

23. By way of further answer and affirmative defense, Defendant Pharmacy states

that it has been selling “The South Butt” apparel to the general public since July of 2007, as well

as displaying the products on the internet in an open and notorious fashion, and has never

received a complaint or request to stop doing so from Plaintiff until August of 2009, over two

years later, in circumstances which have worked to the detriment, disadvantage and prejudice of

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Defendant Pharmacy by allowing it to believe that the parody apparel was not disputed by

Plaintiff but was an obvious parody. As a result, Plaintiff’s claim must fail due to the equitable

principles of laches, estoppel and waiver, Plaintiff is not entitled to damages for any claimed

infringement and can no longer proceed to obtain equitable relief.

24. By way of further answer and affirmative defense, Defendant Pharmacy states

that Plaintiff does not police its name or its marks, specifically Registration Nos. 1,102,407;

1,030,071; 2,097,715; 2,300,758; and 3,358,773; (collectively referred to herein as the “Logo

Marks”) and have thus abandoned the marks, as there are in fact other similar registered marks

in use in connection with similar or related goods, such as:

a. The Deluxe Enterprise Operations, Inc., also known as Deluxe Checks, Registered

Trademark No. 3708118, which registration includes a symbol or logo similar to

the Logo Marks which is registered for clothing including “. . . shirts, pants,

jackets, footwear, hats and caps,” so that Plaintiff is not entitled to protection of

the mark alone;

b. Duffs International, Inc., Registered Trademark No. 2939601, which registration

includes a symbol or logo similar to the Logo Marks which is registered for

clothing including “. . . footwear, namely, shoes and boots, . . . sneakers, . . .and

hiking boots; clothing, namely shirts, shorts, pants, jackets, t-shirts, shell jackets,

cargo jackets, sweatshirts, sweatpants and socks; and sporting wear, . . . ,” so that

Plaintiff is not entitled to protection of the mark alone;

c. As well as other registered trademarks to be shown at trial to be similar to the

Logo Marks.

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25. By way of further answer and affirmative defense, Defendant Pharmacy states

that “The South Butt” mark is clearly not similar to Plaintiff’s mark but rather is clearly

evocative of the two legs of a pair of shorts in a sitting position as opposed to a remotely stylized

three bar depiction of the face of a mountain.

26. By way of further answer and affirmative defense, Defendant Pharmacy states

that it does not offer for sale any of Plaintiff’s apparel or other goods, nor does it purport to offer

for sale any goods which are used by the outdoor and mountaineering recreational public for that

purpose alone.

27. By way of further answer and affirmative defense, Defendant Pharmacy states

that any use of “The South Butt” apparel is a use in parody of both Plaintiff and Plaintiff’s

customers which parody is protected by the free speech clause of the First and Fourteenth

Amendments to the United States Constitution and Article I, Section 8 of the Missouri

Constitution of 1945, and any federal or state statutory or common law attempts to restrict such

speech are constitutional violations of Defendant Pharmacy’s federal and state constitutional

rights.

28. By way of further answer and affirmative defense, Defendant Pharmacy states

that any use of “The South Butt” apparel is an obvious use in parody which eliminates any

possibility of a likelihood of confusion with Plaintiff’s product.

29. By way of further answer and affirmative defense, Defendant Pharmacy states

that the sale of “The South Butt” apparel does not in any way create an undesirable,

unwholesome, unsavory or degrading mental association with the Plaintiff’s product or marks or

any negative statement about the quality of Plaintiff’s product, and therefore does nothing to

tarnish Plaintiff’s products or marks.

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30. By way of further answer and affirmative defense, Defendant Pharmacy states

that the sale of “The South Butt” apparel is the sale of a product with a name and mark

sufficiently different in context and meaning so that the name and mark of the Plaintiff both are

in opposition to the name and mark, and as a result may in fact increase the public identification

of Plaintiff’s name and mark rather than blur the identity of the two marks so as to allow

confusion.

31. By way of further answer and affirmative defense, Defendant Pharmacy states

that it is unlikely that members of the consuming public generally will associate “The South

Butt” with the manufacturer of the Plaintiff’s apparel.

32. By way of further answer and affirmative defense, Defendant Pharmacy states

that Plaintiff has failed to allege that any trade dress it seeks to protect has any secondary

meaning, is non-functional, and any claim for trade dress violation therefore must be dismissed

for failure to state a claim under which relief can be granted under Federal Rule of Procedure

12(b)(6), and all references to “trade dress” or the “Denali jacket” should be stricken as

immaterial and impertinent pursuant to Federal Rule of Civil Procedure 12(f).

33. By way of further answer and affirmative defense, Defendant Pharmacy states

that Plaintiff fails to specifically describe a precise expression of the character and scope of the

claimed trade dress, the elements which compromise its distinct dress by showing what features

are distinctive and by describing with specificity how they are distinctive, what elements of

Defendant The South Butt’s product is infringing, and any claim for trade dress violation

therefore must be dismissed for failure to state a claim under which relief can be granted under

Federal Rule of Procedure 12(b)(6), and all references to “trade dress” or the “Denali jacket”

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should be stricken as immaterial and impertinent pursuant to Federal Rule of Civil Procedure

12(f).

34. By way of further answer and affirmative defense, Defendant Pharmacy states

that the degree of care reasonably exercised by the Plaintiff’s potential customers, who by

Plaintiff’s own admission are people who “push themselves to higher levels of achievement”

(Paragraph 12 of Plaintiff’s Complaint), and who are looking for “high quality technical and

casual outdoor apparel and equipment” (Paragraph 11 of Plaintiff’s Complaint), due to “its

commitment to pushing design limits” (Paragraph 12 of Plaintiff’s Complaint), would be the

highest degree and would preclude them from likely confusing Plaintiff’s apparel with “The

South Butt” apparel.

35. By way of further answer and affirmative defense, Defendant Pharmacy states

that Plaintiff’s have pled that their mark is known in the “performance apparel, equipment and

footwear markets” (Paragraph 11 of Plaintiff’s Complaint), and to “potential consumers and

other members of the public and outdoor products industry” (Paragraph 17 of Plaintiff’s

Complaint), which deprive the mark of the ability to be famous to the general public by

Plaintiff’s own admission, being only a niche fame, as a result of which Plaintiff’s claim under

15 U.S.C. ƒ1125(c), common law trademark infringement or common law unfair competition,

and must be dismissed for failure to state a claim under which relief can be granted under

Federal Rule of Procedure 12(b)(6).

36. By way of further answer and affirmative defense, Defendant Pharmacy states

that The South Butt Defendants conspicuously display on their website home page

http://www.thesouthbutt.com, and on other pages within their website, the following:

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Disclaimer
We are not in any fashion related to nor do we want to be confused with The North Face
Apparel Corp. or its products sold under "The North Face" brand. If you are unable to
discern the difference between a face and a butt, we encourage you to buy North Face
products.

37. By way of further answer and affirmative defense, Defendant Pharmacy states

that Plaintiff has unclean hands and is not entitled to injunctive relief.

38. Defendants are entitled to attorneys’ fees for defending this action under 15

U.S.C. ƒ1117(a).

WHEREFORE, Defendant Williams Pharmacy, Inc., asks that Plaintiff’s Complaint be

dismissed with prejudice, that judgment be entered in favor of Defendant Pharmacy and against

Plaintiff, for attorneys’ fees for defending this action, for the costs of this action, and for such

other relief as this Court deems just and proper.

Respectfully submitted,

PAULE, CAMAZINE & BLUMENTHAL, P.C.

/s/ Thomas M. Blumenthal

Thomas M. Blumenthal, EDMo 2652
Jeffery L. Michelman, EDMo 3851
165 North Meramec Ave, Ste 110
St. Louis, MO 63105-3772
Telephone: 314-244-3635
314-244-3669
Facsimile: 314-727-2101
Email: tblumenthal@pcblawfirm.com
jmichelman@pcblawfirm.com

Attorneys for Defendant Williams Pharmacy, Inc.

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CERTIFICATE OF SERVICE

The undersigned hereby states that on this 4th day of January, 2010, the foregoing was
electronically filed with the Clerk of Court via the Court’s electronic filing system to:

David A. Roodman
Bryan Cave LLP
One Metropolitan Square
211 North Broadway, Suite 3600
St. Louis, MO 63102-2750

Michael A. Kahn
Bryan Cave LLP
One Metropolitan Square
211 North Broadway, Suite 3600
St. Louis, MO 63102-2750

G. Roxanne Elings
Greenberg Traurig LLP
MetLife Building
200 Park Avenue, 34th Floor
New York, NY 10166

Heidi Garfield
Greenberg Traurig LLP
MetLife Building
200 Park Avenue, 34th Floor
New York, NY 10166

Albert S. Watkins
Kodner and Watkins
7800 Forsyth Boulevard
Clayton, MO 63105

Michael Schwade
Kodner and Watkins
7800 Forsyth Boulevard
Clayton, MO 63105

/s/ Thomas M. Blumenthal

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