Case: 4:09-cv-02029-RWS Doc.

#: 74 Filed: 08/03/12 Page: 1 of 5 PageID #: 421

IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF MISSOURI EASTERN DIVISION THE NORTH FACE APPAREL CORP., Plaintiff, v. WILLIAMS PHARMACY, INC., et al., Defendants. ) ) ) ) ) Case No. 4:09-cv-02029-RWS ) ) ) )

MOTION FOR EXPEDITED ORDER TO SHOW CAUSE AND FOR FINDING OF CONTEMPT Plaintiff The North Face Apparel Corp., pursuant to Federal Rule of Civil Procedure 65, and the Courts equitable and contempt powers, respectfully moves this Court (a) To enter an expedited scheduling order requiring Defendant James A. Winkelmann, Jr., James A. Winkelmann and Why Climb Mountains, LLC (together, the Contempt Respondents) to show cause why they should not be held in contempt of the Courts Consent Injunction of April 12, 2010 (Doc. 71) (the Injunction), and (b) To ultimately hold the Contempt Respondents in contempt of Court for their violations of the Injunction. In support of this motion, Plaintiff states as follows: The Consent Injunction 1. Plaintiff commenced this action for trademark infringement, false designation of

origin, trademark dilution, unfair competition, and other violations of Plaintiffs registered and common law trademarks and service marks (collectively, THE NORTH FACE Trademarks) under the laws of the United States and the State of Missouri.

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2.

The Court duly ordered the matter to be set down for hearing on Plaintiffs

motion for preliminary injunction on April 12, 2010. (Doc. 49.) 3. Before the hearing was held, however, the parties negotiated a settlement and the

terms of the Injunction. The Court entered that Injunction of April 12, 2010. (Doc. 71.) 4. That Injunction prohibited The South Butt, LLC, its General Manager James A.

Winkelmann, Sr., and Defendant James A. Winkelmann, Jr. from, inter alia, using The South Butt Marks or any other reproduction, counterfeit, copy or colorable imitation of the THE NORTH FACE Trademarks, using any other designation that is confusingly similar . . . in any manner as to be likely to dilute, cause confusion, deception or mistake, from diluting and infringing the THE NORTH FACE Trademarks, and damaging The North Faces goodwill and from otherwise competing unfairly with The North Face in any manner. (Doc. 71). 5. The Injunction further stated that this Court shall retain jurisdiction to the extent

necessary to enforce this Injunction and the Settlement Agreement between the parties and to determine any issues that may arise under either. The Contempt Respondents Willful Violation of the Injunction 6. Since entry of the Injunction, as more fully set forth in the Memorandum of Law

and accompanying Declarations and Exhibits filed with this Motion, Mr. Winkelmann, Sr. created Why Climb Mountains, LLC, and the three Contempt Respondents have engaged in conduct in direct violation of the actions enjoined by the Injunction. 7. Among other things, they have marketed and sold products, including t-shirts,

caps, and sweatshirts, under THE BUTT FACE mark in a[] manner, in the words of the Injunction, as to be likely to dilute, cause confusion, deception or mistake on or in connection with the manufacturing, advertising, distributing, offering for sale or selling of any product not The

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North Faces, or not authorized by The North Face to be sold in connection with any of THE NORTH FACE Products. 8. Upon information and belief, the Contempt Respondents actions have been

undertaken knowingly and intentionally, in reckless disregard of the Injunction and with the intent to trade upon the fame of Plaintiff, its goodwill, THE NORTH FACE Trademarks, and THE NORTH FACE Products. The Need for an Expedited Proceeing 9. By violating the Injunction the Contempt Respondents are thereby infringing

THE NORTH FACE trademarks and causing irreparable harm to plaintiff, its trademarks, and its goodwill. Thus all the reasons for scheduling a prompt hearing on a motion for a TRO or preliminary injunction in a trademark case apply a fortiori here, where the infringement is occurring in violation of a court order. 10. So, too, as more fully set forth in the Memorandum of Law, the Winkelmanns

used the original lawsuit as a lucrative marketing device to promote sales of their infringing products through a media blitz. We assume they will attempt to same here. Thus the sooner this matter is heard and resolved, the better. 11. A proposed Order is attached.

WHEREFORE, Plaintiff prays the Court to enter an expedited order directing the Contempt Respondents to show cause whey they should not be held in contempt of the Injunction, ultimately finding the Contempt Respondents to be in civil contempt of the Injunction, and ordering the following remedial actions: a. Holding the Contempt Respondents in contempt of the Injunction for their unlawful acts of dilution, infringement, and unfair competition; b. Ordering that the Contempt Respondents pay Plaintiff coercive sanctions in an amount to be determined by the Court in order to ensure future compliance with the Courts 3

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orders; c. Ordering that the Contempt Respondents pay Plaintiff compensatory damages in amount to be determined by the Court, including but not limited to the Contempt Respondents profits, in order to compensate Plaintiff for losses sustained and expenses incurred; d. Awarding Plaintiff its investigative, expert and attorneys fees and costs as a result of the Contempt Respondents failure to comply with the Injunction, in an amount to be determined upon an appropriate showing by Plaintiff; e. Ordering that the Contempt Respondents abandon, with prejudice, all trademark applications filed in violation of the Injunction, and establishing deadlines for compliance with the terms of the Injunction, with imposition of additional monetary sanctions for each day of further non-compliance; f. Entering a permanent injunction prohibiting further violations of the Injunction; and g. Awarding Plaintiff such other and further relief as the Court deems just and proper. Respectfully submitted, /s/ Michael A. Kahn Michael A. Kahn, #35411MO BRICKHOUSE LAW GROUP 1006 Olive Street, Suite 303 St. Louis, MO 63101-2034 Telephone: (314) 932-1076 Facsimile: (314) 932-1078 [email protected] G. Roxanne Elings (pro hac vice) Charles A. LeGrand DAVIS WRIGHT TREMAINE LLP 1633 Broadway, 27th Floor New York, NY 10019-6708 Telephone: (212) 603-6416 Facsimile: (212) 379-5226 Attorneys for Plaintiff The North Face Apparel Corp.

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CERTIFICATE OF SERVICE The undersigned certifies that on this 3rd day of August, 2012, a true copy of this court filing was served: (a) via the Courts electronic filing system on all counsel of record, which includes Albert Watkins, who is counsel of record for Defendant James A. Winkelmann, Jr. and James A. Winkelmann, Sr. (who is a party to the Injunction and the Registered Agent of Why Climb Mountains, LLC) and who has informed Plaintiff in writing that he is the attorney for Why Climb Mountains, LLC; and (b) by hand delivery to the address of the Registered Agent of Why Climb Mountains, LLC, James A. Winkelmann, at 21 N. Meramec, 2nd Floor, Clayton, MO 63105. /s/ Michael A. Kahn