MANHATTAN (CN) – Victoria”s Secret calls their push-up bras “the world”s best,” but a New Jersey designer claims in a federal lawsuit that the product is also a clear violation of patent laws.
Calling the push-ups sold by Victoria”s Secret “slavish copies” of its design, Zephyrs seeks royalties from the sale of the inserts and to reinstate Zephyrs principal Debra MacKinnon as the inventor of the product on design patents filed by Victoria”s Secret.
“They are selling same products in the same packaging for the same price,” said Manhattan attorney Joe Gioconda, who represents Zephyrs.
MacKinnon claims to have conceived of the idea for kidney-shaped, push-up bra inserts made of silicone at a 2008 international lingerie show in Paris.
Her “inventive concept was to develop a true anatomically correct push up insert to create lift and cleavage while maintaining a natural appearance underneath clothing,” the complaint filed Monday states.
Zephyrs says the lifts represented an upgrade over the “fairly generic” bra inserts on the market at the time.
After weeks of tinkering and 20 iterations of the insets, MacKinnon allegedly settled on a final plaster mold that she sent to a Chinese supplier in February 2008. Though MacKinnon had a March meeting set up with Victoria”s Secret executives to pitch the idea, she says her supplier was unable to develop the inserts in time because of Chinese New Year.
Zephyrs says MacKinnon pitched the idea to Victoria”s Secret without a prototype over the following months, after which she then notified the lingerie company in July 2008 that she intended to file a provisional patent application. She allegedly offered Victoria”s Secret an exclusive license for the lifetime of the product in exchange for patent fees, development costs, and minimum-purchase quotas.
While the U.S. Patent and Trademark Office reviewed the patent, according to the complaint, Zephyrs shared with Victoria”s Secret counsel its provisional patent application, as well as “tens of thousands of packages” of the prototype inserts, which Victoria”s Secret sold for as much as $58 per package.
Zephyrs says MacKinnon”s patent application included errors regarding the ratios of the inserts, however, rendering it unenforceable.
Victoria”s Secret eventually terminated its agreement with Zephyrs, citing disagreements with how Zephyrs complied with Victoria”s Secret”s brand standards. Gioconda said the dispute was raised by MacKinnon, who discovered Victoria”s Secret had breached its contract by contacting her manufacturers directly in an effort to replace her. Zephyrs and Victoria”s Secret later settled a contract action on that issue, but the settlement terms remain unknown.
During that case, however, Gioconda specifically recorded a statement that the settlement would exempt any future potential disputes regarding patents.
Over the last year, Gioconda says MacKinnon discovered that in 2010 Victoria”s Secret had 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. Neither Wrigler nor Naughton are developers but rather buyers, Gioconda said.
“It came to light for the first time that Victoria”s Secret had gone behind Ms. MacKinnon”s back,” Gioconda said. “They were stealing her idea.”
Naughton”s LinkedIn page lists her as senior merchant for Columbus, Ohio-based Cacique Intimates.
On Jan. 12, 2016, MacKinnon”s push-up inserts utility patent was clarified and reissued by the USPTO, giving her legal battle another life. “There”s really no question that Victoria”s Secret knew completely about the pending patent application,” Gioconda said. “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,” Gioconda said. “And they were placing orders for these products while they submitted those patents.”
Victoria”s Secret did not immediately respond to requests for comment. The company”s website advertises Style Secrets Shaping Inserts for $58 and claims they “maximize swell and cleavage with a new and improved design.”
Incorporated as Runberg, Zephyrs has been embroiled in several lawsuits related to Victoria”s Secret. In 2014, the Spring Lake, N.J.-based company sued its former lawyer for botching the 2012 patent application, seeking $6 million in damages. The suit settled for undisclosed terms.
Zephyrs also sued Victoria”s Secret in Ohio federal court 2012 for $15 million, alleging the company sold knock-off Italian-made hosiery and stockings that were created and supplied by Zephyrs. The lawsuit claimed that Victoria”s Secret simply changed the product but not the packaging or Zephyrs product pictures to sell the hosiery, merely stamping a “Made in Canada” sticker on the boxes.
The judge in that case tossed the false-advertising claims for lack of standing, and the breach-of-contract claims were settled. ‘