Yummie Tummie holds three design patents for its camisole products and at the end of 2012 informed Spanx that it was infringing upon those patent. Correspondence and negotiations ensued, resulting in Spanx filing an injunctive action in its home court in Georgia to preemptively stop Yummie Tummie from enforcing its patents. Yummie Tummie brought a prior infringement action against Maidenform in the United Stated Federal Court for the Southern District of New York, which case has been settled.
The issue will likely surround whether the patents are valid or invalid and whether the camisole passes the obviousness test. There are two fundamental tests: (1) the invention must be novel, not just a variation, and (2) it must be unobvious, something that someone with ordinary skills, would not have imagined. This will surely be a very fact intensive battle and this preemptive strike by Spanx is an aggressive move by a larger player exerting their financial muscles in order to attempt to control the course of the litigation against Yummie Tummie.
Patents are generally enforced for twenty years, with infringement actions allowed to be commenced starting eighteen months after public filing (when the public gets notice of the filing). Trademarks, on the other hand, if enforced, can last forever.
While this looks like an ugly battle over control of the bulge, most cases do settle and it remains to be seen if Spanx’s move is a strong negotiation tactic. While fact specific, an interesting question will be whether Spanx filed patents on all their other products but not these, and why.
Malecki Law represents the commercial litigation needs of individuals and businesses, both local and nationwide, in New York Federal and State courts. The Spanx case will require a command of dispute resolution, namely the processes of litigation, arbitration, and mediation, as well as appeals. At Malecki Law, our seasoned staff of commercially-versed attorneys has the experience to successfully represent clients in litigation matters of banking, insurance, securities, real estate, antitrust, contract, partnership, product liability, employment and more. Our thorough knowledge of both litigation and alternative dispute resolution opportunities give our clients opportunities to gain the peace of mind and entitlement to justice that our legal system provides.
Ms. Malecki is a well-known New York securities and commercial litigation attorney and has been a FINRA arbitrator and Chairperson. In 2012 Ms. Malecki was named as a Top Attorney by Super Lawyers and the National Law Journal, being featured in the New York Times Magazine, New York Magazine, National Law Journal and other related publications. She appears regularly on TV, in the news and on the radio. She is a frequent bar association and law school speaker, as well as a seasoned authority on New York law.
Ms. Malecki is a member of and has been on the Board of Directors (and an Officer of) the Public Investors Arbitration Bar Association (PIABA), as well as has been a member of the Securities and Exchanges Committee at the New York City Bar Association, as well as the New York State Bar Association. She has spoken at the Practicing Law Institute (PLI) and New York County Lawyers Association on several panels, and at both Brooklyn Law School and New York Law School, in addition to speaking annually at PIABA’s year-end conference. Ms. Malecki has appeared on ABC Eyewitness News, Bloomberg Television, China TV, EBR TV and on other syndicated shows and networks. She also has appeared on Steve Forbes’ in-flight radio show “America’s Most Influential Women in Government, Technology, Business, and the Law”, as well as other nationally syndicated radio programs. She and her cases have been and continue to be cited in numerous industry publications, including The Wall Street Journal, The New York Times Forbes and Newsweek. Early in 2013, The Wall Street Journal will feature Ms. Malecki in an educational video clip about the arbitration process at FINRA, the Financial Industry Regulatory Authority.