Ingrid & Isabel, LLC v. Baby Be Mine, LLC
| Decision Date | 01 October 2014 |
| Docket Number | Case No. 13–cv–01806–JCS |
| Court | U.S. District Court — Northern District of California |
| Parties | Ingrid & Isabel, LLC, Plaintiff, v. Baby Be Mine, LLC, et al., Defendants. |
Robert Joseph Yorio, Ilene Hoffman Goldberg, Carr & Ferrell LLP, Menlo Park, CA, Christine S. Watson, Carr & Ferrell LLP, Palo Alto, CA, for Plaintiff.
Jeremy Joseph Sugerman, Kevin J. Holl, Aman Pradhan, Gordon-Creed, Kelley, Holl & Sugerman, LLP, Peter W. Craigie, Craigie McCarthy & Clow, San Francisco, CA, for Defendants.
Re: Dkt. Nos. 92, 98
On April 19, 2013, Plaintiff Ingrid & Isabel, LLC (“I & I,” “Plaintiff”) initiated this action against Defendants Baby Be Mine Maternity, LLC (“BBM”) and BBM's sole members and co-founders, Helen Tekce (“Tekce”) and Isabelle Gartner (“Gartner”) (collectively, “Defendants”). Plaintiff alleges multiple counts of breach of contract, one count of violation of the Lanham Act, and two California statutory and common counts of unfair competition. Defendants subsequently alleged counterclaims against Plaintiff for intentional interference with contractual relations, and intentional and negligent interference with prospective economic advantage. The parties brought cross-motions for summary judgment, which are presently before the Court and which collectively address all of the parties' claims and counterclaims. Plaintiff moved for partial summary judgment on its breach of contract claims and all of Defendants' counterclaims; Defendants moved for summary judgment, or in the alternative, partial summary judgment, on all of Plaintiff's claims and on Defendants' counterclaim for intentional interference with contractual relations.
The motions came on for hearing August 29, 2014 at 9:30am. For the reasons set forth below, I & I's summary judgment motion is GRANTED in part and DENIED in part. BBM's motion is GRANTED in part and DENIED in part.
Plaintiff and Defendants are in the business of selling belly bands, among other products. “A belly band is a cloth band worn around a pregnant woman's waist.” Dkt. No. 101 (Joint Statement In Support Of Parties' Motions For Summary Judgment) (“JSF”) at ¶ 1. Plaintiff markets its line of belly bands under the trade names “Bellaband®” and “BeBand®,” Dkt. No. 47 (First Amended Complaint) (“FAC”) at 31; Defendants currently market BBM's line of belly bands using the descriptor “Maternity Belly Band.” See JSF at ¶ 36.
A belly band may be functional, decorative, or both. See JSF at ¶¶ 10–11; Dkt. No. 98 at 2. One potential function of a belly band is to hold up the pants or skirts of the pregnant woman wearing the band. See JSF at ¶¶ 10–11. The elastic fabric holds in place pants or skirts that no longer fit during the pregnancy and which would otherwise fall or slip down. See, e.g., Dkt. Nos. 98 at 3; 96–1 at 12. Some belly bands are capable of holding up unbuttoned pants or skirts, and thus allow a pregnant woman to wear her existing clothes, as opposed to larger sizes or special “maternity” clothing, during at least the early phase of the pregnancy. See, e.g., Dkt. Nos. 92 at 12; 98 at 3; 96–1 at 12–13. The size, shape, and composition of the belly band may affect its ability to hold up the pregnant wearer's pants or skirts. Id. atBelly bands may also be worn for purposes other than holding up pants or skirts. See, e.g., Dkt. No. 98 at 2–3. They can be worn as a decorative item over or along with other clothing. Id. They can serve to cover undone buttons on a woman's clothing without functionally holding up the undone item. Id. Belly bands are also marketed to cover a pregnant women's exposed skin, bridging the gap that might be created between her pants or skirt and her shirt or blouse. Id.
This litigation stems directly from the settlement of two previous actions against Defendant by Plaintiff. The first was a trademark infringement claim, in which Plaintiff's predecessor-in-interest, Ingrid & Isabel Inc. (“I & I Inc.”) accused Defendants of infringing I & I Inc.'s common law trademark rights and of conduct in violation of 15 U.S.C. § 1125(a) (the Lanham Act). FAC at 32. Specifically, I & I Inc. alleged that Defendant's sale, offers for sale and advertising of maternity waist bands under the name “Belly Band” was confusingly similar to I & I Inc.'s “Bella Band” product. Id. at 32. That case was dismissed pursuant to a Trademark Settlement Agreement (the “TSA”) in 2006.
In the 2008 litigation, I & I Inc. alleged claims for patent infringement and unfair competition against Defendants.2 I & I Inc. alleged violation of U.S. Patent No. 7,181,775 B2 (“the '775 Patent”), which includes claims for a belly band which “hold[s] the skirt or pants in place on the women's body” and which “retain[s] the pants or skirt in place.” That case was dismissed pursuant to a Patent Settlement Agreement (the “PSA”) in 2009. JSF ¶¶ 4, 8.
Paragraph 1 of the TSA states in relevant part:
“Defendants hereby represent, covenant, and warrant to plaintiffs that defendants will cease and desist from using the term “Bella” in connection with defendants' sale, distribution, or marketing of Maternity Bands.”
Paragraph 1 of the PSA states in relevant part:
Defendants' Future Advertising and Maternity Band Statements. Defendants and their Affiliates (as used herein, “Affiliates” means any corporation, partnership, joint venture, or other entity or person in which Defendants or any of them hold an equity position) shall include on their websites an express statement that Defendants' Maternity Bands are decorative and are to be used as a fashionable clothing accessory that is not intended to nor does it actually hold up skirts or pants while being worn in a comfortable, nonbinding fashion. Defendants agree to include an express statement on each webpage of any website that they control or in which they have an ownership interest and on which they advertise or sell their Maternity Bands that their Maternity Bands “are not intended to nor do they actually hold up skirts or pants.” Defendants agree to clearly communicate that the purpose of their Maternity Bands is decorative (and this obligation may be satisfied with respect to magazine or other media publication advertisements by the inclusion of a statement that the Maternity Bands “are for decorative use”) ... Defendants agree to include a statement that their Maternity Bands are not designed to hold up skirts or pants on all of their product packaging and in Defendants' product descriptions, provided that Defendants may continue to use their existing packaging without modification for a period not to exceed—120 days after the suit is dismissed. Failure to comply with any provision of Paragraph 1 shall constitute a material breach of this Agreement.
Paragraph 2.A of the PSA states in relevant part:
Function of Maternity Bands. Defendants agree that they will not ... offer to sell, sell, market, promote, distribute or advertise Maternity Bands that hold up pants or skirts.
Paragraph 2.B of the PSA states in relevant part:
Compliance by Defendants' Retailers, Vendors, Sales Representatives, and Agents. Defendants agree to provide written notification to all of their retailers, vendors, sales representatives, agents and any other individuals or companies acting for, on behalf of, or in concert with Defendants to comply with the provisions of this Paragraph 1. Defendants further agree to use commercially reasonable best efforts to insure that their retailers, vendors, sales representatives, agents, and any other individuals or companies acting for, on behalf of, or in concert with Defendants do not advertise, promote, sell or offer to sell its Maternity Bands for the purpose of holding up skirts or pants. However, Defendants will not be directly liable for the independent actions of those vendors, sales representatives, agents and any other individuals or companies that are not Affiliates of Defendants.
Paragraph 4 of the PSA states in relevant part:
Defendants' Agreement Regarding Defendants' Use, Offer to Sell, Sale, Promotion, Distribution or Marketing of Maternity Bands. Defendants hereby represent, covenant and warrant to Plaintiffs that, following the execution of this Agreement by all Parties, Defendants shall not copy any of Plaintiffs' advertising, marketing and promotional copy or layout elements and materials, copying statements, ideas, or expressions used in Plaintiffs' advertising, promotional and marketing materials.
Defendants continued to market and sell belly bands following the settlement agreements. Defendants marketed their belly bands on their website, www.babybeminematernity.com (the “BBM website”), JSF ¶ 26, as well as on a mobile website (the “mobile website”) JSF ¶ 29. “In August 2009, BBM instructed its web design[ ] [firm] to add a disclaimer to the website that ‘Baby Be Mine Maternity Bands are not intended to nor do they actually hold up skirts or pants.’ ” JSF ¶ 16. It is also undisputed that BBM launched a new website design in September 2012, and the new website contained a disclaimer that states, “Baby Be Mine Maternity Bands are not intended to nor do they actually hold up skirts or pants.” JSF ¶ 19. The disclaimer is located “at the bottom of the web pages under the copyright notice.” Id.
“BBM advertised the Maternity Bands on the mobile website, but did not have the Disclaimer on all of the mobile webpages.” Id. at ¶ 30. Id. at ¶ 31.
Defendants also had a page for BBM on Facebook.com. The parties do not agree as to how...
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