A New York bridal dress designer has sued Lenexa-based Essense of Australia, claiming it copied patented designs so thoroughly as to confuse the public about whose dress bridesmaids were wearing.
Jenny Yoo Collection Inc. filed a patent infringement lawsuit against Essense of Australia, a company that started in Perth, Australia, and moved to the Kansas City area more than a decade ago.
At the center of the dispute is a “trade dress” design for bridesmaids that allows the wearer to convert one garment into several different styles. Jenny Yoo claims to have “revolutionized the bridal gown industry in 2012” with the development.
“Rather than innovate and develop its own bridesmaid dress designs, Essense chose to copy JY’s designs, including, most importantly, JY’s distinctive Trade Dress, and marketed and passed off these designs under its ‘Sorella Vita’ brand,” said the lawsuit, filed in U.S. District Court in Kansas City, Kan.
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The lawsuit said the patent infringement “is so pervasive” and the challenged dresses look so much like the New York designers’ that when “worn in public, there can be little doubt that they would be viewed” as Jenny Yoo dresses.
Jim Kernell, an attorney representing Essense of Australia, disputed the claims in the lawsuit.
“Our dress isn’t the same as what’s in the patent,” Kernell said.
He added that comparing the dresses in side-by-side photographs, which Jenny Yoo’s 45-page complaint does, draws attention to the wrong question.
“That’s not patent infringement,” Kernell said.
The dispute is an ongoing legal battle Jenny Yoo Collection has waged against Essense of Australia, David’s Bridal Inc. and Watters Design Inc. Jenny Yoo sued each in New York last year, but a U.S. Supreme Court decision in May this year required such lawsuits to be filed where the defendant resides.
A federal judge in New York dismissed Essense of Australia and Watters Design from the lawsuit there, and Jenny Yoo has filed new lawsuits where those companies are based.
In a 2016 interview with The Star, Essense of Australia co-founder Martine Harris said the company sold its designs in more than 1,200 stores worldwide, including 800 in the United States.
In the interview, Harris had cited educating consumers about knockoffs as one of the challenges facing designers like Essense of Australia. The company’s website also warns consumer about counterfeit wedding dresses and offers tips for spotting a fake.
Jenny Yoo’s lawsuit acknowledged original designs by Essense but claimed Essense competed against the patented Jenny Yoo design by copying it.
The lawsuit included photographs of women wearing an Essense of Australia dress alongside photographs of women in the Jenny Yoo dress. Each pose shows a different conversion of the dress.
One set of photos in the complaint shows 10 different ways to wear Essense of Australia’s Sorella Vita #8472 design and Jenny Yoo’s Aiden #1282 design. The Essense of Australia photos appear to have been taken from that company’s website.
Jenny Yoo claims in its lawsuit that Essense of Australia’s “marketing and sales personnel have deliberately played up the similarities” in the dresses and that this threatens Jenny Yoo’s ability to charge premium prices for its design.
The lawsuit seeks three times the profits that Essense of Australia has reaped from sales of the disputed design, or three times Jenny Yoo’s damages from lost sales, “whichever is greater.”
It also seeks unspecified compensatory damages and court orders to preliminarily and permanently stop Essense from infringing the patents.