Victoria’s Secret is being hauled back in to court by Zephyrs, one of its suppliers, on patent infringement grounds. According to a lawsuit filed in New York federal court by the New Jersey-based Zephyrs, Victoria’s Secret is selling “slavish copies” of one of its bra designs, namely its Kidney-Shaped Push Up Inserts. Zephyrs’ principal Debra MacKinnon alleges in the complaint that she met with Laurie Jeannine Wirgler and Heather Naughton, buyers from Victoria’s Secret, with whom she discussed the bra inserts and packaging prototypes, ultimately offering them an exclusive license for the lifetime of the product in exchange for patent fees, development costs, and minimum-purchase quotas. All the while, Zephyrs’ patent application for the bra inserts was pending before the U.S. Patent and Trademark Office (USPTO), something Zephyrs alleges that VS was fully aware of.
In March 2010, roughly two years after Zephyrs’ principal MacKinnon met with VS buyers, VS’s defendant’s legal counsel applied for a design patent with the USPTO for a VS Push Up Design Patent. According to Zephyrs’ complaint, VS “erroneously named Laurie Jeannine Wirgler and Heather Naughton, (the VS employees MacKinnon disclosed her invention) as the inventors, which they assigned to Victoria’s Secret Brand Management, Inc., which erroneously omitted MacKinnon as the inventor.”
Meanwhile, Victoria’s Secret allegedly placed “significant purchase orders for supply” of Zephyrs’ bra inserts and received “tens of thousands of packages of the Kidney Shaped Push Up Inserts.” According to Zephyrs’ complaint, Victoria’s Secret terminated its agreement with Zephyrs for the supply of the bra inserts in 2012 and began selling its own “STYLE SECRETS SHAPING INSERTS” under the Victoria’s Secret brand name in its “approximately 1,000 retail stores in all fifty states.” The infringing products were also allegedly sold through “the Victoria’s Secret print catalog and online distribution through VictoriasSecret.com, [which] reach more than 390 million customers each year.”
At this point in time, Zephyrs (whose bra inserts patent was still pending before the USPTO) filed a $15 million suit against Victoria’s Secret, after MacKinnon discovered that Victoria’s Secret had breached its contract by contacting her manufacturers directly in an effort to replace her. In its complaint, Zephyrs alleged that the lingerie giant was falsely advertising hosiery (that VS did not make) with photos that appear on authentic Zephyrs products. In addition to monetary damages, Zephyrs also asked the court to order Victoria’s Secret to remove the misleading packaging and in-store displays, and issue a recall for its Lace Top Fish Net Stockings, Fish Net Thigh-Highs With Backseam, and Signature Stripe Thigh-High With Bows. The parties ultimately managed to settle this one between themselves and mutually agreed to dismiss the claims and counterclaims with prejudice.
Over the last year, Zephyrs’ lawyer, Joseph Gioconda says MacKinnon discovered that in 2010, Victoria’s Secret had gone behind her back and filed a design patent application in both the United States and Canada for its VS Push Ups, listing Laurie Jeannine Wirgler and Heather Naughton as the inventors. According to Zephyrs’ lawsuit, neither Wrigler nor Naughton are developers but rather buyers.
On January 12, 2016, the utility patent for MacKinnon’s push-up inserts was finally clarified and reissued by the USPTO (following the correction of errors regarding the ratios of the inserts, which, rendered it unenforceable for some time), thereby, allowing MacKinnon and Zephrys to file suit on patent infringement grounds against Victoria’s Secret.
According to Gioconda: “There’s really no question that Victoria’s Secret knew completely about the pending patent application. What is unknown is why Victoria’s Secret employees and its attorneys chose to go the route they did” and file independent design patents. They [falsely] claimed under oath they were the sole inventors of this design, and they were placing orders for these products while they submitted those patents.”
As a result, Zephyrs is seeking preliminary and permanent injunctive relief (which would immediately and permanently prohibit Victoria’s Secret from manufacturing, marketing, and selling the designs at issue), monetary damages, attorneys’ fees and costs for the VS’s defendants’ willful patent infringement. In addition, Zephyrs wants the USPTO to correct the “VS Push Up Design Patent” that was issued to Victoria’s Secret for its bra inserts (which lists Laurie Jeannine Wirgler and Heather Naughton as inventors) and to transfer ownership of that patent to Zephyrs.