JLM Couture v Hailey Paige Gutman:

Second Circuit decision involving an intellectual property dispute between a high-profile influencer and her business partner.

Hayley Paige is a bridal gown designer.  She sold her business several years ago to JLM and in so doing assigned rights in her name –  she allowed the business to register her name as a trademark (meaning that the transaction was more than a mere license).

The relationship went sour and Paige resigned. The parties are now fighting over control and ownership of certain social media accounts created during the pendency of Ms. Paige’s relationship with JLM. From the decision:

“These Disputed Accounts, especially the Instagram account, are valuable assets. As of January 2022, the Instagram account had over a million followers (@misshayleypaige).  Control over the account comes with direct access to those followers and opportunities to monetize it. By one expert’s appraisal, a single post on the account, on average, is worth nearly $30,000.”

In this instance, the contracts between the parties seemed pretty clear that Ms. Paige, once she resigned, would not be able to use her name in connection with promoting goods and services for the duration of the contracts – and Ms. Paige may not use the social media accounts to do so.  However the court seemed to struggle with how it would ultimately decide ownership of the accounts in question, and reversed an order that Ms. Paige hand over control of the accounts to JLM for the duration of the dispute. She can now, in theory, use the disputed accounts for personal purposes

This case presents the (not original) questions that arise when an individual ‘sells their name’ to a business. A while back the designer Joseph Abboud was sued when he started a business under his name when he had sold his original line (he wound up calling his new business JA Apparel).  However, here, the court signaled this new sort of asset – the social media account – raises new questions when the account is in a sense shared between an individual and a business.

This case suggests that when an influencer enters into a contractual relationship with a partner, an employer, or even with their own business, there needs to be very precise drafting as to who owns what, and who will own what if the relationship fails – and who will retain trademark rights at that time.

Text of JLM v Hailey Paige Gutman: jlm v hailey paige 2d circuit

Class action targeting non-functional slack-fill, also known as empty space, in Annie’s Fruit Snacks, dismissed. There were no allegations that the packaging was deceptive with regard to the weight of the snacks – and thus the slack-fill was not materially misleading.

Media coverage of original complaint in Klausner v Annies here.

Background on slack-fill here.

Truth in advertising class-action tracker.

Text of Klausner v Annie’s: sdny kausner v annies slack fill gbl 349

Panavision Int’l, L.P. v. Toeppen, 141 F.3d 1316, 46 U.S.P.Q.2d (BNA) 1511 (9th Cir. 1998)

This case was brought before there was either ACPA or the UDRP. Toeppen obtained domains reflecting the trademarks of third parties such as panavision.com and panaflex.com, amercianstandard.com, and intermatic.com.  In the case of Panavision, he displayed an image of Pana, Illinois (a vision of Pana). He argued that he was not making trademark use in a way that would infringe Panavision’s rights.

The Ninth Circuit held that Toeppen’s attempts to sell the domain names constituted use in commerce, which use diluted Panavision’s famous trademarks.

This case may be thhttps://caselaw.findlaw.com/us-9th-circuit/1286135.htmlought of as a stop-gap measure against cybersquatting, as there was no effective federal statute directly on point, at that time. ACPA and the UDRP were approximately one year away. Professor McCarthy noted that dilution is targeted at use of a trademark that dilutes plaintiff’s mark – not activity that prevents plaintiff’s use in a specific mode (e.g. on the internet) or otherwise extorts value from the plaintiff. The dilution domain name cases resulted in several questionable holdings with regard to fame of the plaintiff’s marks.

Text of Panavision v Toeppen, 141 F.3d 1316 (9th Cir 1998)

We continue our Forward into the Past reconnoiter of Internet law with Zippo dot com, a WD of Pennsylvania decision which seemed to authoritatively resolve the question of what is the proper test for evaluating whether a defendant’s contacts with a forum over the internet are sufficient for asserting specific jurisdiction over that defendant.

The three-part active-to-passive Zippo Dot Com sliding scale:

“At one end of the spectrum are situations where a defendant clearly does business over the Internet, an active website.” . .  “If the defendant enters into contracts with residents of a foreign jurisdiction that involve the knowing and repeated transmission of computer files over the Internet, then personal jurisdiction is proper.”

“At the opposite end are situations where a defendant has simply posted information on an Internet website which is accessible to users in foreign jurisdictions.” . . .  “A passive website that does little more than make information available to those who are interested in it is not grounds for the exercise of personal jurisdiction.”

“The middle ground is occupied by interactive websites where a user can exchange information with the host computer.”. . . “In these cases, the exercise of jurisdiction is determined by examining the level of interactivity and commercial nature of the exchange of information that occurs on the website.”

Link to text of decision in Zippo Mfg v Zippo Dot Com

Wikipedia’s Personal Jurisdiction on the Internet Page

Facebook withstands motion to dismiss against allegedly related domain name companies.

Prior news coverage regarding Facebook lawsuit against OnlineNic here.

Link to complaint in Facebook vs. OnlineNic here.

Text of decision in Facebook v OnlineNic re motion to dismiss here:

facebook v onlinenic nd cal cybersquatting