Dressmaker can block designer Hayley Paige from using her own name trademark, court says

3 minute read

The Instagram application is seen on a phone screen August 3, 2017. REUTERS/Thomas White

Register now for FREE unlimited access to Reuters.com
  • 2nd Circ said Hayley Paige can't use mark without dressmaker's approval
  • Lower court to reconsider ownership of social media accounts
The company and law firm names shown above are generated automatically based on the text of the article. We are improving this feature as we continue to test and develop in beta. We welcome feedback, which you can provide using the feedback tab on the right of the page.

(Reuters) - A U.S. appeals court on Tuesday agreed with wedding dressmaker JLM Couture Inc that designer and influencer Hayley Paige Gutman is barred from using her own name for business purposes during her legal dispute with the company.

The 2nd U.S. Circuit Court of Appeals upheld a Manhattan federal court's order blocking Gutman from competing with JLM until the end of their contract term or using her name in advertising while JLM presses ahead with a lawsuit against her.

However, the appeals court vacated part of the order that gave JLM control over "Miss Hayley Paige" social media accounts and said the lower court should reconsider the question.

Register now for FREE unlimited access to Reuters.com

Gutman is known as the maker of "Hayley Paige" wedding dresses and as an influencer on platforms including Instagram, TikTok and Pinterest. She signed on to design dresses for New York-based JLM in 2011, in an agreement that was set to end in August 2022.

After contract negotiations broke down, JLM said Gutman locked it out of the "Miss Hayley Paige" Instagram account, promoted products from other companies on it without JLM's permission, and violated a noncompetition agreement by appearing at a bridal expo.

JLM sued Gutman in 2020, alleging she breached their contract and infringed its trademarks, among other things. U.S. District Judge Laura Swain granted JLM a preliminary injunction last year, finding it was likely to win on the claims.

On appeal, Gutman argued the order keeps her from earning a living and takes away her identity.

The 2nd Circuit affirmed that Gutman couldn't compete with JLM for the rest of the contract's term, and that the company could block her from using her name in advertising.

The language of their contract was clear, and it unambiguously prohibited Gutman from using her name as a trademark without JLM's permission, U.S. Circuit Judge Michael Park said.

However, the ruling said the district court erred in awarding JLM exclusive control over three "Miss Hayley Paige" social media accounts without analyzing who likely owns them.

The court also rejected Gutman's claims that JLM breached its contract by refusing to pay her after she resigned.

Gutman's attorney Joseph Lawlor of Haynes & Boone said they were pleased with the decision, which he said returns the social media accounts to Gutman's "rightful control."

A JLM spokesperson said the appeals court didn't order JLM to let Gutman access the accounts, and doesn't affect JLM's control of them. The company was pleased with the ruling, the spokesperson said.

Circuit Judges Jon Newman and Gerard Lynch joined parts of the majority opinion and dissented from others.

Newman disagreed with the decision to block Gutman's use of her name in commerce entirely.

Lynch said he would have given JLM control of Gutman's Instagram account.

The case is JLM Couture Inc v. Gutman, 2nd U.S. Circuit Court of Appeals, No. 21-870.

For Gutman: Richard Rochford and Joseph Lawlor of Haynes & Boone

For JLM: Sarah Matz and Gary Adelman of Adelman Matz

(NOTE: This story has been updated to say the parties dispute the decision's effect on who controls "Miss Hayley Paige" social media accounts and to clarify that aspect of the ruling.)

Register now for FREE unlimited access to Reuters.com

Our Standards: The Thomson Reuters Trust Principles.

Thomson Reuters

Blake Brittain reports on intellectual property law, including patents, trademarks, copyrights and trade secrets. Reach him at blake.brittain@thomsonreuters.com