What’s in a Name? The Legal Battle Between Hayley Paige and JLM Couture
It’s not uncommon for brands to be named after their founder, but trademarking your name can lead to unforeseen consequences if a business relationship turns sour. The recent litigation between Hayley Paige Gutman and JLM Couture is illustrative of this issue. Hayley Paige Gutman is a well-known wedding dress designer who is frequently highlighted on the TLC Show “Say Yes to the Dress.”[1] Gutman entered into an employment agreement with JLM Couture in 2011 in which she granted an exclusive right to JLM to use her name.[2] This includes using just her first name, middle name, last name or using them all together in any derivative form.[3] Importantly, she also signed away the right to register and own any trademark in her name to JLM.[4] The central issue of the current litigation is Gutman’s continued use of her social media pages under the Hayley Paige name. JLM claims that this is trademark dilution and infringement and also that this account was something Gutman developed in the scope of her employment, and therefore they have the rights to the social media.[5]
JLM initially became concerned when Gutman began posting non-bridal content on the @MissHayleyPaige Instagram page and eventually when she posted advertisements for third parties.[6] Gutman officially left the company on December 17, 2020 after JLM filed suit against her.[7] This action has also opened her up to a claim of contract breach because she left the company before her contract term expires in 2022 and the terms of the contract agreement did not allow it to be terminated unilaterally.[8]
In their claim of trademark infringement, JLM argues that Gutman is improperly using a trademark that belongs to the corporation. The claim of dilution is concerned that the Hayley Paige brand and JLM Couture brand at large will be harmed by the irrelevant content posted by Gutman.[9] It also asserts a concern that consumers will be confused about whether endorsements on the social media account are coming from Gutman or JLM.[10] JLM offered several strong points of evidence in their favor in their original claim. The terms of the contract that Gutman signed onto plainly states that JLM would have control over the social media accounts under her name.[11] Additionally, prior to 2019 and 2020, Gutman typically deferred to JLM before posting and allowed JLM staff members to access the social media accounts at any time.[12] Importantly, in their complaint JLM Couture noted that they began including the @MissHayleyPaige name on the actual hang tags to their Hayley Paige clothing lines.[13] This is crucial to show just how important the social media accounts are to their brand. JLM Couture also raised concerns about Gutman’s use of a TikTok account under the Hayley Paige name that allegedly posted material that did not “properly represent” their brand.[14]
This suit is currently progressing and on March 4, 2021, JLM Couture was granted a temporary injunction that stops Gutman from continuing to use the aforementioned accounts. [15] Judge Swain does not fully rule on the merits of the case, but does state that Gutman “unambiguously” signed away her rights to the Hayley Paige name in the text of the contract with JLM.[16] The court also stated that consumer confusion is likely to result from Gutman’s use of the social media channels because they were being used for more than the originally intended purpose of promoting the Hayley Paige brand and JLM Couture at large.[17] In granting this temporary injunction, Judge Swain stated that JLM is likely to succeed on the merits of this case and additionally that it is likely the JLM owned trademarks at issue here could continue to be diluted and infringed by Gutman without this injunction.
Overall, this case should serve as a cautionary tale to young and burgeoning designers to read all terms of contracts closely and to hire counsel to represent them before signing onto long term contract arrangements such as this one. It is understandable that Gutman would want her name on her designs; they are beautiful and distinctive. However, the case against her for trademark infringement and dilution is strong because of the very terms she originally agreed to. In a long video posted to another one of her accounts (not belonging to JLM), Gutman stated that she would not remain “nameless and jobless” [18] Unfortunately, in signing away the trademark rights to the name Hayley Paige, it seems that Gutman may not be nameless, but will likely have to pursue a name change if she is to launch another brand.
Footnotes
