Patent stories don’t normally make the evening news or the major outlets unless one of the antagonists is called Apple. That changed this week when news broke that Spanx, makers of shapewear undergarments for women, founded by Sara Blakely had filed an action for Declaratory Relief against Times Three Clothiers, doing business as Yummie Tummie, in the Northern District of Georgia.
This didn’t sit well with Heather Thomson, founder of Yummie Tummie, who on March 13th, in an interview with Women’s Wear Daily, channeled her inner Steve Jobs when she threatened to go to war over the issue. Her quote to WWD was “I hope [Spanx] is ready for war because I will not lie down.” The story was supposedly “broken” by the Atlanta Business Chronicle on March 12th but I wrote a blog post on the DJ after I found out about it on March 8th. I start the morning by spending a few minutes looking at the patent lawsuits filed the previous day and when I came across this case I figured it would be fun to use it as an example of patent litigation, Declaratory Judgements and MedImmune v. Genentech. Little did I know that on March 13th, the WWD story would be picked up by The Huffington Post and in their research on the story they found my blog post and added it to their story.
Once the story got to The Huffington Post, as they say, it was on, and quickly went viral being picked up by all of the major television networks, Forbes, Business Week and most of the major newspapers around the country. You have to give WWD and The Huffington Post credit for understanding that Spanx actually fired the first shot in the lawsuit battle even though Yummie Tummie started the issue by sending them a cease and desist letter in January. Thomson told her side of the story to WWD:
“I immediately recognized it as my original Yummie Tummie tank. We contacted Spanx by letter [through legal counsel] on Jan. 18 to notify them that they were infringing on my patent ideas and we asked them to cease and desist. Spanx then asked for a [one-month] extension to be able to do their own due diligence .…They responded on Feb. 14 saying they didn’t think there was any patent infringement and requested another extension.”
Taking advantage of this second extension, Spanx filed the DJ instead, in order to make sure that the issue was resolved in their own backyard, as opposed to the Southern District of New York where Yummie Tummie has filed design patent lawsuits in the past against Maidenform and LF USA. Both of those suits were concluded by settlement but in the case of the Maidenform suit, they paid Yummie Tummie $6.75M. A press release filed in August of 2011 also stated that Maidenform has agreed not to assist any third party that may seek to invalidate or render unenforceable the patents. Heather Thomson, the President of Times Three and the inventor of the Yummie Tummie three panel patented designs, stated that “We are delighted with this settlement and look forward to the continued growth and expansion of our innovative shapewear business based on our patented designs.”
So this is certainly not Heather Thomson’s first rodeo and she has demonstrated that she is willing to go to court to enforce her design patents but on March 13th she posted the following letter and launched a Twitter campaign against Sara Blakely and Spanx:
So while Yummie Tummie sent the cease and desist letter and was the first to cry patent infringement, Ms. Thomson is now playing the victim and accusing Spanx of being the bully and dragging the issue into court. She concludes by sharing with Sara that she ‘expected more of her as a fellow entrepreneur”.
Spanx for their part, in the Forbes story, refused to comment beyond the following:
Spanx didn’t immediately respond to Forbes’ request for comment, but issued a statement saying: “Spanx was making shaping camisoles long before Yummie Tummie. We have no further comment. The papers filed in court provide our position at this time.”
This is another case of design patents making news. In this case, Ms. Thomson mentions that Yummie Tummie has eleven patents on their tank top but the Spanx DJ only mentions seven of them. We hear more about them from the complaint:
Defendant Yummie Tummie claims to be the owner by assignment of U.S. Design Patent Nos. D606,285S (“the ‘285 Patent”), D616,627S (“the ‘627 Patent”), D632,051S (“the ‘051 Patent”), D632,052S (“the ‘052 Patent”), D632,053S (“the ‘053 Patent”), D622,477S (“the ‘477 Patent”), and D623,377S (“the ‘377 Patent”) (collectively, the “Patents-in-Suit”).
The Patents-in-Suit are related to one another in that the ‘627 Patent, the ‘051 Patent, the ‘052 Patent, the ‘053 Patent, the ‘477 Patent, and the ‘377 Patent all claim priority to the ‘285 Patent.
Each of the Patents-in-Suit identifies Heather Thompson Schindler as the sole inventor.
Those of us in the patent world know that all of the bluster and pandering to the media on this issue will likely be much ado about nothing since there is a high likelihood that Spanx and Yummie Tummie will quietly settle their differences out of court. In the mean time it has been fun watching the popular press and fashion world make a big deal out of something relatively common place and minor in the world of patent litigation. Personally, this case looks like the thousands of similar cases seen over the years on consumer products. The difference here is that on the one hand you have a self-made billionaire who specializes in women’s undergarments against a reality TV star who also happens to make women’s undergarments. So while design patent infringement may not be the most interesting topic in the world, when you combine it with larger than life personalities and the world of fashion you get an explosive mixture which brought this story to the front of the lifestyles page instead of the end of the business section.