East Coast Spotlight on Design Patents: Spanx v. Yummie Tummie

The National Law Review recently featured an article, East Coast Spotlight on Design Patents: Spanx v. Yummie Tummie, written by Michael A. Cicero with Womble Carlyle Sandridge & Rice, PLLC:

Womble Carlyle

 

Certainly the recent design patent litigation between Apple and Samsung in the Northern District of California garnered significant media attention.  Design patents now reside in the media spotlight once again, but this time through East Coast litigants.  The president of a New York-based maker of women’s control tops that is a named owner of several design patents openly declared that she hopes her Georgia-based competitor “is ready for war because [she] will not lie down.”  The accused infringer actually started the litigation following its receipt of a cease-and-desist letter from the New York company’s legal counsel.

On March 5, 2013, Spanx, Inc. (“Spanx”) filed a declaratory judgment complaint in the Northern District of Georgia against Times Three Clothier, LLC d/b/a Yummie Tummie (“Yummie Tummie”), requesting the court to declare that three Spanx products do not infringe seven design patentsclaimed to be owned by Yummie Tummie.  The lawsuit has already generated a considerable amount of media coverage, including sources cited below and NBC’s Today Show.

The lawsuit pits two prominent entrepreneurs against one another.  Heather Thomson, the president of Yummie Tummie, is not only the sole inventor named in each of the patents-in-suit (as Heather Thomson Schindler), but was also one of the “Real Housewives of New York.”[1]  Sara Blakely, according to ABC News, “founded Spanx in 2000, introducing what Spanx calls a shaping camisole in 2005,” and is “the youngest woman on Forbes’ billionaires list.”

Referring to an interview Thomson gave to the publication WWD (Women’s Wear Daily),lifeinc.today.com reports:

Thomson told WWD that she first learned of the product this past November when she received an anonymous package containing the Spanx Total Taming Tank and a note saying it was on sale at QVC.  “I immediately recognized it as my original Yummie Tummie tank,” Thomson told WWD.  The unsigned note said Spanx was selling it at QVC.  A spokeswoman for Thomson declined to comment further.

“The Patents-in-Suit are related to one another,” states Spanx’s complaint, “in that [six of the patents] all claim priority to the [oldest] Patent.”  Excerpts from two of these patents appear in Figure 1, below, for purposes of illustration.

The complaint alleges that Yummie Tummie’s counsel sent Spanx a cease-and-desist letter on or around January 18, 2013, identifying the accused products as Spanx’s “Total Taming Tank,” the “Top This Tank Style 1847,” and the “Top This Cami Style 1846.”  (See Figure 2 below, depicting two of those products.)  Spanx responded to that letter on or around February 14, 2013, according to the complaint, “describing in detail significant differences between the Accused Products and the Patents-in-Suit and stating, among other things, that it does not believe the Accused Products infringe the Patents-in-Suit.”

Figure 1: Depictions of Fig. 1 from Yummie Tummie’s U.S. Patents Nos. D606,285S (left) and D632,052S (right)
Figure 2: Two accused Spanx products as shown in its website: Styles Nos. 1846 (left) and 1847 (right)

Counsel for each party then communicated with one another several times but, states the complaint, Yummie Tummie “continued to maintain that the Accused Products infringe the Patents-in-Suit and expressed a willingness to enforce its patents against Spanx.”  Thus, Spanx alleges, it has grounds for seeking a declaratory judgment of noninfringement of the Patents-in-Suit.  The complaint requests such declaratory relief plus “costs, expenses, and reasonable attorneys’ fees as provided by law.”

As of the time of this writing, Yummie Tummie has not yet filed a formal answer to the complaint (its allotted time for doing so under procedural rules has not yet expired).  Yummie Tummie has, though, already  issued a public statement regarding the lawsuit.  In a March 14, 2013 letter addressed directly to Blakely and published on Yummie Tummie’s website, Thomson states, among other things: “We brought this to your attention expecting you to stop.  Instead you’ve chosen to sue us, no doubt thinking that your massive company could intimidate ours.  We have successfully enforced our design patents in the past and will continue to do so.”

The case is Spanx, Inc. v. Times Three Clothier, LLC d/b/a Yummie Tummie, No. 1:13-cv-0710-WSD,filed 03/05/13 in the U.S. District Court for the Northern District of Georgia, Atlanta Division, assigned to U.S. District Judge William S. Duffey, Jr.


[1] Coincidentally, the Northern District of Georgia is also the site of a legal battle between two “Real Housewives of Atlanta,” filed just one week after the Spanx lawsuit.  See prior post.

Copyright © 2013 Womble Carlyle Sandridge & Rice, PLLC

Internal Corporate Investigations and Forum for In-House Counsel – April 24-26, 2013

The National Law Review is pleased to bring you information regarding the upcoming Internal Corporate Investigations and Forum for In-House Counsel by the ABA:

Internal Corporate Investigations April 24-26 2013

April 24 – 26, 2013

Where

  • St. Regis
  • 923 16th St NW
  • Washington, DC 20006-1701
  • United States of America

This intensive National Institute remains incomparable in its examination of the demanding issues that define corporate internal investigations.   Our distinguished faculty is comprised of in-house & outside counsel, and government lawyers along with nationally-acclaimed forensic accountants and investigators.  These professionals, top in their field from years of corporate practice, will share key strategies for avoiding the pitfalls often faced by in-house counsel on a daily basis and particularly during corporate investigations.

Attendees of this advanced national curriculum will:

  • Learn strategies to avoid new challenges facing in-house counsel
  • Gain practical knowledge about the Responsible Corporate Officers Doctrine
  • Increase their proficiency in current compliance and fraud investigation procedures
  • Walk away with information that will address unique challenges and needs during daily practice

Locked Out of LinkedIn: A Federal Court Opens the Door To Employer Liability

Recently an article by Jessica A. Burt of Drinker Biddle & Reath LLP regarding LinkedIn was featured in The National Law Review:

DrinkerBiddle

 

The U.S. District Court for the Eastern District of Pennsylvania determined this week inEagle v. Morgan, et al., that a terminated employee who was locked out of her LinkedIn account by her employer suffered no legal damages despite successfully proving claims for unauthorized use of her name, invasion of privacy by misappropriation of identity, and misappropriation of publicity.  The district court previously dismissed Dr. Eagle’s federal claims under the Computer Fraud and Abuse Act and the Lanham Act, and retained jurisdiction over the remaining state law claims.

Dr. Linda Eagle, a former founder and executive of Edcomm, Inc., a banking education company that provides services to the banking community, created her LinkedIn account using her Edcomm e-mail address.  Edcomm did not require its employees to create LinkedIn accounts, nor did it pay for accounts if employees created them.  At the time of Eagle’s termination, Edcomm had no policy in place informing its employees that LinkedIn accounts were the property of the employer.  Eagle shared her LinkedIn password with several Edcomm employees to update her account and respond to invitations.  Following her termination, Edcomm employees accessed Eagle’s LinkedIn account, changed her password, and updated the account with her successor, Sandi Morgan’s picture and personal information.  However, Edcomm failed to change the homepage’s URL to remove Eagle’s name and likewise failed to remove Eagle’s honors and awards section.  Edcomm had full control of the account for approximately 16 days.  LinkedIn subsequently took over the account, and Eagle regained access approximately one month after Edcomm changed her password.  Eagle filed suit against Edcomm and several employees shortly thereafter alleging illegal use of her LinkedIn account.

With respect to Eagle’s claim for unauthorized use of her name, the Court stated that when Edcomm had control of Eagle’s account, an individual conducting a search on Google or LinkedIn for Dr. Eagle would be directed to a URL for a LinkedIn web page showing Sandi Morgan’s name, profile, and employment with Edcomm.  Specifically, the Court noted that when an individual searched for Eagle, he or she would unknowingly be put in contact with Edcomm despite the fact that Eagle didn’t work there anymore.  The name “Dr. Linda Eagle” had commercial value due to Eagle’s efforts to develop her reputation, and Edcomm therefore received the commercial benefit of using her name to promote the service of its business.

The Court similarly found that Eagle successfully proved her claim against Edcomm for invasion of privacy by misappropriation of identity because Edcomm maintained the LinkedIn homepage under a URL that contained Eagle’s name.  Despite the fact that Edcomm updated the LinkedIn homepage with Sandi Morgan’s profile information, the URL still contained Eagle’s name and the Court held that her name had the benefit of her reputation and commercial value.

Additionally, the Court entered judgment in Eagle’s favor on her claim for misappropriation of publicity because she maintained an exclusive right to control the commercial value of her name and to prevent others from exploiting it without permission.  The Court held that Edcomm deprived Eagle of the commercial benefit of her name when it entered her LinkedIn account, changed her password to prevent her from accessing it, and altered the account to display Sandi Morgan’s information.  The Court noted that Edcomm took these actions instead of creating a new account for Sandi Morgan.

Despite her success on three causes of action, the Court determined that Eagle was not entitled to any compensatory or punitive damages.  The Court was not persuaded that Eagle established with reasonable certainty she had lost any sales, contracts, deals, or clients during the period she could not access her LinkedIn account.  Eagle offered the testimony of Clifford Brody, the co-founder of Edcomm, to provide an analysis of her damages.  His calculation was based on Eagle’s average sales per year divided by the number of contacts she maintained on LinkedIn to arrive at a dollar figure per contact, per year.  The Court referred to this method as “creative guesswork” and highlighted the fact that there is a chance that even with full access to her LinkedIn account, she would not have made any deals or signed any contracts with her LinkedIn contacts.  In denying her claim for punitive damages, the Court stated that Eagle failed to call a single witness to offer evidence regarding Defendants’ state of mind or the circumstances surrounding these events.

The Court entered judgment in favor of Defendant Edcomm, Inc. with respect to Eagle’s claims for identity theft, conversion, tortious interference with her LinkedIn contract, civil conspiracy, and civil aiding and abetting.  Judgment was entered in favor of the individual defendants with respect to all of Eagle’s claims, including the claims mentioned above that she successfully proved against Edcomm.  In October 2012, the District Court dismissed Eagle’s federal claims under the Computer Fraud and Abuse Act and Lanham Act as to all defendants.

This case presents another stepping stone in the continuously changing world of social media law.  While employers do have legitimate  concerns about LinkedIn accounts with information that identifies clients’ key decision makers and a company’s strategic business relationships, preventing former employees from accessing their accounts without their consent exposes employers to damages if a former employee can proffer evidence of a lost or misdirected sale or deal. However, there is nothing in the Eagle v. Morgan opinion that restricts an employer’s ability to have employees remove customer names from their LinkedIn accounts before departing from the company.  In fact, courts have recognized that employers do have protectable rights in this information.  For example, in TEKsystems Inc. v. Hammernick, et al., the plaintiff alleged that its former employee’s use of LinkedIn to connect with former colleagues and clients violated the parties’ noncompete/nonsolicitation agreement. In that case, the Court entered a Consent Order for Permanent Injunction prohibiting the former employee from soliciting or contacting the company’s customers for a period of 12 months.  Also, in Coface Collections North America, Inc. v. Newton, the Third Circuit affirmed the district court’s entry of a preliminary injunction against the company’s former owner who, among other things, used LinkedIn to compete with his former company in violation of a restrictive covenant.   

©2013 Drinker Biddle & Reath LLP

2013 National Law Review Law Student Writing Competition

The National Law Review is pleased to announce their 2013 Law Student Writing Competition

NLR-Writing-Competition-2013

The National Law Review (NLR) consolidates practice-oriented legal analysis from a variety of sources for easy access by lawyers, paralegals, law students, business executives, insurance professionals, accountants, compliance officers, human resource managers, and other professionals who wish to better understand specific legal issues relevant to their work.

The NLR Law Student Writing Competition offers law students the opportunity to submit articles for publication consideration on the NLR Web site.  No entry fee is required. Applicants can submit an unlimited number of entries each month.

  • Winning submissions will be published according to specified dates.
  • Entries will be judged and the top two to four articles chosen will be featured on the NLR homepage for a month.  Up to 5 runner-up entries will also be posted in the NLR searchable database each month.
  • Each winning article will be displayed accompanied by the student’s photo, biography, contact information, law school logo, and any copyright disclosure.
  • All winning articles will remain in the NLR database for two years (subject to earlier removal upon request of the law school).

In addition, the NLR sends links to targeted articles to specific professional groups via e-mail. The NLR also posts links to selected articles on the “Legal Issues” or “Research” sections of various professional organizations’ Web sites. (NLR, at its sole discretion, maydistribute any winning entry in such a manner, but does not make any such guarantees nor does NLR represent that this is part of the prize package.)

Congratulations to our 2012 and 2011 Law Student Writing Contest Winners

Fall 2012: October Contest

Spring 2012:

Winter 2012:

Fall 2011:

Why Students Should Submit Articles:

  • Students have the opportunity to publicly display their legal knowledge and skills.
  • The student’s photo, biography, and contact information will be posted with each article, allowing for professional recognition and exposure.
  • Winning articles are published alongside those written by respected attorneys from Am Law 200 and other prominent firms as well as from other respected professional associations.
  • Now more than ever, business development skills are expected from law firm associates earlier in their careers. NLR wants to give law students valuable experience generating consumer-friendly legal content of the sort which is included for publication in law firm client newsletters, law firm blogs, bar association journals and trade association publications.
  • Student postings will remain in the NLR online database for up to two years, easily accessed by potential employers.
  • For an example of  a contest winning student written article from Northwestern University, please click here or please review the winning submissions from Spring 2011.

Content Guidelines and Deadlines

Content Guidelines must be followed by all entrants to qualify. It is recommended that articles address the following monthly topic areas:

March 2013 Suggested Topic:

  1. Labor Law
  • Submission Deadline:  Monday, March 4, 2013

Articles covering current issues related to other areas of the law may also be submitted. Entries must be submitted via email to lawschools@natlawreview.com by 5:00 pm Central Standard Time on the dates indicated above.

Articles will be judged by NLR staff members on the basis of readability, clarity, organization, and timeliness. Tone should be authoritative, but not overly formal. Ideally, articles should be straightforward and practical, containing useful information of interest to legal and business professionals. Judges reserve the right not to award any prizes if it is determined that no entries merit selection for publication by NLR. All judges’ decisions are final. All submissions are subject to the NLR’s Terms of Use.

Students are not required to transfer copyright ownership of their winning articles to the NLR. However, all articles submitted must be clearly identified with any applicable copyright or other proprietary notices. The NLR will accept articles previously published by another publication, provided the author has the authority to grant the right to publish it on the NLR site. Do not submit any material that infringes upon the intellectual property or privacy rights of any third party, including a third party’s unlicensed copyrighted work.

Manuscript Requirements

  • Format – HTML (preferred) or Microsoft® Word
  • Length  Articles should be no more than 5,500 words, including endnotes.
  • Endnotes and citations – Any citations should be in endnote form and listed at the end of the article. Unreported cases should include docket number and court. Authors are responsible for the accuracy and proper format of related cites. In general, follow the Bluebook. Limit the number of endnotes to only those most essential. Authors are responsible for accuracy of all quoted material.
  • Author Biography/Law School Information – Please submit the following:
    1. Full name of author (First Middle Last)
    2. Contact information for author, including e-mail address and phone number
    3. Author photo (recommended but optional) in JPEG format with a maximum file size of 1 MB and in RGB color format. Image size must be at least 150 x 200 pixels.
    4. A brief professional biography of the author, running approximately 100 words or 1,200 characters including spaces.
    5. The law school’s logo in JPEG format with a maximum file size of 1 MB and in RGB color format. Image size must be at least 300 pixels high or 300 pixels wide.
    6. The law school mailing address, main phone number, contact e-mail address, school Web site address, and a brief description of the law school, running no more than 125 words or 2,100 characters including spaces.

To enter, an applicant and any co-authors must be enrolled in an accredited law school within the fifty United States. Employees of The National Law Review are not eligible. Entries must include ALL information listed above to be considered and must be submitted to the National Law Review at lawschools@natlawreview.com. 

Any entry which does not meet the requirements and deadlines outlined herein will be disqualified from the competition. Winners will be notified via e-mail and/or telephone call at least one day prior to publication. Winners will be publicly announced on the NLR home page and via other media.  All prizes are contingent on recipient signing an Affidavit of Eligibility, Publicity Release and Liability Waiver. The National Law Review 2011 Law Student Writing Competition is sponsored by The National Law Forum, LLC, d/b/a The National Law Review, 4700 Gilbert, Suite 47 (#230), Western Springs, IL 60558, 708-357-3317. This contest is void where prohibited by law. All entries must be submitted in accordance with The National Law Review Contributor Guidelines per the terms of the contest rules. A list of winners may be obtained by writing to the address listed above. There is no fee to enter this contest.

Federal Trade Commission (FTC) Has Released New Guidance on the Use of Disclosures by Mobile and Online Advertisers

The National Law Review recently featured an article, Federal Trade Commission (FTC) Has Released New Guidance on the Use of Disclosures by Mobile and Online Advertisers, written by the  Retail Industry Group with Morgan, Lewis & Bockius LLP:

Morgan Lewis logo

 

Background

In 2000, the FTC issued the guidance “Dot Com Disclosures: Information about Online Advertising,”which emphasized that consumer protection laws applied equally across all mediums, including to computers and the Internet. The FTC counseled that, where a disclosure is needed to prevent an advertising claim from being misleading, the disclosure must be both “clear” and “conspicuous” and provided advice and examples on how the FTC would interpret and apply those terms.

With the rise of smartphones and tablets, which have smaller screens, and the prevalence of social media marketing, the FTC decided to update the guidance and began seeking public comment in May 2011. The FTC issued the new guidance, “.com Disclosures: How to Make Effective Disclosures in Digital Advertising,”on March 12, 2013.

The new “Dot Com Disclosures” guidance emphasizes that consumer protection laws apply to all mediums, including smartphones and tablets, and to all formats, such as social media platforms, regardless of the space constraints those particular mediums and formats may impose. Space constraints are not considered an excuse for failure to provide the disclosures necessary to prevent advertising from being misleading or unfair. The new guidance includes helpful advice on compliance and an appendix with illustrative examples of ads and related disclosures.

The New Guidance

In the new guidance, the FTC recommends that problems with disclosures in the context of mobile devices and social media are best resolved by incorporating the relevant limitations and qualifying information into the ad itself and thus avoiding the need for any disclosure.

Where a disclosure is necessary to prevent an ad from being misleading, the disclosure must be “clear and conspicuous.” This requirement applies to all devices and platforms on which an ad may be viewed by consumers. If disclosures cannot be made in a clear and conspicuous manner on a particular medium, the advertiser should not use that medium for advertising.

In order to ensure that a disclosure is clear and conspicuous, the guidance advises advertisers to consider the placement and proximity of the disclosure to the specific advertising claim it is related to. The FTC says that disclosures should be “as close as possible” to the triggering claim. Advertisements should also be designed so that “scrolling” is not necessary to find a disclosure. Where a website is lengthy or where there are multiple routes through a website, it may be necessary to repeat disclosures.

Disclosures should be displayed so they are noticeable to consumers. To that end, advertisers should evaluate the size, color, and graphic treatment of a disclosure in comparison to the triggering claim and other parts of the website. The disclosure should be viewed in the context of the entire ad and other elements, such as graphics, sound, or audio, to ensure that consumers are not distracted from the disclosure.

Like the earlier guidance, the new guidance advises advertisers to avoid hyperlinks for disclosures that involve either product cost or significant health and safety issues. Where hyperlinks are used, care should be taken to (a) make the links obvious, (b) label the links accurately and as specifically as possible, (c) use hyperlink styles consistently, and (d) place the link as close to the relevant claim as possible. Advertisers should be careful to consider how hyperlinks may function on certain devices and assess the effectiveness by monitoring click-through rates.

Placement of disclosures on pop-ups is discouraged since they are often blocked and may not be viewed on certain devices.

Practical Implications

The new guidance is a reminder of the importance of ensuring that advertising complies with consumer protection laws, even where ads are viewed on new devices and in novel formats. The guidance indicates how the FTC will exercise its own enforcement powers, and it will be a touchstone for how state regulators, courts, and plaintiffs’ attorneys evaluate retailers’ marketing. Although particular advertising claims must be evaluated on a case-bycase basis and compliance with the guidance will not eliminate the threat of enforcement actions or class action litigation, the new “Dot Com Disclosures” guidance provides some helpful direction to retailers seeking to stay on the right side of the line.


1. View the original guidance at http://www.ftc.gov/os/2000/05/0005dotcomstaffreport.pdf. 

2. View the new guidance at http://www.ftc.gov/os/2013/03/130312dotcomdisclosures.pdf.

Copyright © 2013 by Morgan, Lewis & Bockius LLP

Inside Counsel 13th Annual Super Conference – May 6-8, 2013

The National Law Review is pleased to bring you information about the upcoming Inside Counsel Super Conference:

Super Conference May 6-8 2013

SuperConference

No longer just providing legal counsel, in-house attorneys have become strategic business partners within their companies.They not only need to be influential in the boardroom, but must demonstrate the ability to make strategic decisions on both commercial and legal analysis.

  • Elevate your legal knowledge 
  • Create innovation within your legal department 
  • Change and evolve to become a better strategic partner 

InsideCounsel’s 13th Annual SuperConference is designed to provide senior-level legal professionals insights, ideas and solutions to help them meet their growing responsibilities and evolving needs.Developed by in-house counsel, for in-house counsel,SuperConference will provide you innovative resolutions essential to addressing your department’s business and legal needs.

The 2013 SuperConference will be held May 6th-8th, in Chicago, IL

Telecommuting—No Longer the Way of the Future?

McBrayer NEW logo 1-10-13

Marissa Mayer is making news. She may also be single-handedly changing employer policies across the country.    As Yahoo’s new CEO, Mayer already made headlines as the youngest female CEO in a Fortune 500 company. But now she is becoming known for what she does and not just who she is. Mayer recently instituted a ban on telecommuting for all Yahoo employees.  The decision was a massive shock to company employees who routinely worked from remote locations. After all, it seems paradoxical that a tech giant like Yahoo requires employees to be physically present in the office for work when technology permits otherwise.

The internal memorandum from Yahoo’s human resources department which announced the change cited a “spirit of collaboration” that can only be achieved when employees are physically together. In addition, Mayer wants to increase productivity for the struggling company and this, in her opinion, is best done when employees are in the actual workplace.

To many, flexible work schedules, condensed work weeks, and telecommuting is the way of the future. Such workplace flexibility, though, can leave employers and HR departments wondering if their policies reflect the best practices for these conditions. If your business decides to offer a telecommuting policy, there are some issues that must be addressed.

First, who will be eligible? You should define eligibility based on positions, and not individuals. For example, you may think Bob is too unmotivated to work from home, but Rhonda would have no problem with efficiency.  Yet distinguishing between the two could lead to a discrimination claim. A better policy may read, for example, “Non-support staff that have been with the business for at least two years are qualified to telecommute.”

Establish clear hours as to when the telecommuter should be working and reachable. The Fair Labor Standards Act and similar state laws apply to home-based worker, so employers need a system for tracking employee hours, including overtime.

Consider safety. While OSHA does not hold employers responsible for the safety of home offices, workers’ compensation laws do still apply. Employers will need coverage for employees who may never step foot in the office. There should also be reporting and investigation procedures in place, just as there are for workplace injuries. Claims arising from telecommute employees should be carefully scrutinized to determine if the injury is work-related.

One of the biggest concerns with flexible work schedules is how to achieve effective oversight. For that reason, consider what measurements you will use to measure successbefore allowing for telecommuting. Keep communication open. For instance, require telecommuters to send in a daily email detailing projects or assignments they are tackling for the day. Insist on a consistent schedule. Be certain that you are providing the same compensation, benefits, and opportunities for promotion to telecommuters that you give to non-telecommuters.

Lastly, and perhaps most importantly, consider the needs of your business. Mayer decided telecommuting no longer worked for Yahoo. Start-ups or businesses dependent on customer face time may take the same approach. For others, it can be a valuable program. Either way, it is important to address the issues discussed herein in your company policies and procedures. Regardless of the size of your business, do not just assume your employees understand.

© 2013 by McBrayer, McGinnis, Leslie & Kirkland, PLLC