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Trade secret dispute muddies optics for hip glasses retailer

News and Notes Focused on the 3 Public Faces of IP Law

  • Brand Image Protection - Trademark Law
  • Visual Image Protection - Copyright Law
  • Personal Image Protection - Right of Publicity Law

The Image Protection Law blog has been created in order to share stories and information on the legal aspects of: 1) the marketplace reputation of a company or product captured in its trademark, 2) published or publicly-displayed artwork, photography, and any created visual design, and 3) use of a person's photograph or likeness for product promotion or other commercial purposes.

The "IP3" share at least one thing in common: Image is everything. In these posts let's look at what that means in the realm of intellectual property in the news, but let's also be prepared to explore if there's something more beyond "everything." Don't forget, the intellectual in "intellectual property" doesn't mean smart or brainy, although by nature true creators often are. The word is used to refer to any creation, i.e., a "product of the mind." While this blog will be regularly updated, you are encouraged to share your thoughts on these posts.

Never underestimate the power of inventorship. That could prove to be one moral of a story that is unfolding in a trade secret dispute in the optical industry. At the heart of the case is one telehealth company's claim that it's been the victim of trade secret theft by fast-growing glasses retailer Warby Parker.

For those who may be unaware, Warby Parker is a growing e-commerce giant in the eyewear world. Its main showroom is on line, but it also has brick and mortar showrooms around the country, including a few in the San Francisco area. A lawsuit by the company Opternative accuses Warby Parker of engaging in potential partnership talks, gaining access to Opternative proprietary information and then improperly capitalizing on that information to Opternative's financial detriment.

Compensation and correction of inventorship sought

Opternative, founded in 2013, offers an online eye test that allows users to get a recommended lens prescription without visiting the doctor's office. By using a phone and computer, a person can take the test and get a prescription from an eye doctor.

Also in 2013, the lawsuit says, Warby Parker opened discussions with Opternative about a possible partnership. As a precursor to that, Warby Parker reportedly signed non-disclosure agreements and Opternative provided Warby Parker some information on its technology. Then, in June 2015, Opternative says Warby Parker launched a very similar service based on a separate patent.

Opternative says the Warby Parker service amounts to a derivative of the original online service and that Warby Parker breached several non-disclosure agreements in obtaining its patent. In addition to seeking damages, Opternative suggests the patent Warby Parker received is invalid because it fails to include Opternative co-founder Dr. Steven Lee as the inventor.

As part of its claim to protect its financial interests, Opternative seeks to have the patent corrected to list Lee as the inventor, or at least added as a joint inventor of Warby Parker's technology.

For its part, Warby Parker denies Opternative's claims and says its online vision test is one that it developed independently, without the benefit of any Opternative information. Warby Parker has until Nov. 6, to respond formally to the suit.

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