JLM Couture, Inc. v. Gutman

Filing 497

POST-REMAND MEMORANDUM OPINION AND ORDER MODIFYING THE PRELIMINARY INJUNCTION: For the foregoing reasons, and those set forth in the Court's earlier decisions and the Second Circuit Opinion regarding the Preliminary Injunction in this acti on, effective immediately, JLM is directed to provide the current username and password for each of the Disputed Accounts, as well as any other assistance necessary to access and gain sole control over the Disputed Accounts, to Ms. Gutman, through her counsel, by 5:00 p.m. Eastern Standard Time, on May 15, 2024, and the Court issues the following modified Preliminary Injunction Order, which supersedes the order issued on March 1, 2024 (docket entry no. 474): During the pendency of this action, Ms. Gutman, along with her officers, agents, servants, employees, and attorneys and all other persons who are in active concert or participation with her and them, are enjoined pursuant to Federal Rule of Civil Procedure 65 from taking any of the following actions: 1. Breaching the employment Contract, dated July 13, 2011, together with the amendments and extensions thereto, by: a. using, or authorizing others to use, "Hayley", "Paige", "Hayley Paige Gutman ", "Hayley Gutman", "Hayley Paige" or any derivative thereof, including misshayleypaige (collectively the "Designer's Name"), trademarks in the Designer's Name, including but not limited to the trademarks identified at Addendum 1 hereto (collectively, the "Trademarks"), or any confusingly similar marks or names in trade or commerce, without the express written permission of Plaintiff's chief executive officer; b. using or authorizing ot hers to use any Designs, or any of the Trademarks or any variations, versions, representations or confusingly similar facsimiles thereof, in trade or commerce without the express written permission of Plaintiff's chief executive officer; and c . through December 17, 2025, (i) being identified to the trade or consuming public as the designer of any goods in competition with goods manufactured and sold by JLM; or (ii) using, or authorizing others to use, Gutman's role as designer, to pr omote the sale, or any goods in competition with goods manufactured and sold by JLM; 2. Using, or authorizing others to use, any of the Designer's Names, Trademarks or any confusingly similar term, name, symbol or device, or any combination ther eof, in commerce in connection with any goods or services, including to endorse, advertise or promote the products and/or services of herself or others directly or indirectly, including but not limited to on socialmedia or in television or media app earances, without the express written permission of Plaintiff's chief executive officer. This case remains referred to Magistrate Judge Cave for general pretrial management. SO ORDERED. (Signed by Judge Laura Taylor Swain on 5/8/2024) (vfr)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
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JLM COUTURE, INC.,
Plaintiff,
-v-

No. 20-CV-10575-LTS-SLC

HAYLEY PAIGE GUTMAN, et al.,
Defendants.
-------------------------------------------------------x
POST-REMAND MEMORANDUM OPINION AND ORDER
MODIFYING THE PRELIMINARY INJUNCTION
This case is before the Court on remand from the United States Court of
Appeals for the Second Circuit. (See docket entry no. 471 (the “Second Circuit Opinion”).)
The Second Circuit “affirm[ed] in part and vacate[d] in part the district court’s March 14,
2023[,] order modifying its preliminary injunction and remand[ed] for further proceedings
consistent with [its] opinion.” (Id. at 25.) Following the issuance of the mandate, this Court
entered its Order Requesting Additional Briefing and Modifying the Preliminary Injunction
(docket entry no. 474), pursuant to which the parties have made additional submissions
addressing questions raised by the Second Circuit Opinion.
In making the determinations set forth in this decision, the Court has reviewed
carefully the entire record in this case: the Court heard testimony and received evidentiary
submissions in connection with the original application for, as well as prior modifications of,
the preliminary injunction, and received additional argumentative and evidentiary submissions
following the issuance of the Second Circuit Opinion. The Court also carefully considered its
observations as to the demeanor and credibility of witnesses and its prior factual determinations.
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In accordance with Federal Rules of Civil Procedure 52(a) and 65, this Memorandum Opinion
and Order constitutes the Court’s findings of fact and conclusions of law. To the extent any
finding of fact includes a conclusion of law it is deemed a conclusion of law, and vice versa.
For the following reasons and as set forth below, the Court dissolves in part and
modifies in part the Modified Preliminary Injunction entered on March 1, 2024.
FINDINGS OF FACT
The Court assumes the parties’ familiarity with the factual background and
procedural history of the case and adopts the findings of fact set forth in its March 4, 2021,
Memorandum Opinion and Order granting the Preliminary Injunction (docket entry no. 109);
June 2, 2021, Memorandum Opinion and Order clarifying the Preliminary Injunction (docket
entry no. 176); September 8, 2021, Memorandum Opinion and Order finding Ms. Gutman in
contempt of the Preliminary Injunction (docket entry no. 234); February 14, 2022,
Memorandum Opinion and Order modifying the Preliminary Injunction (docket entry no. 326);
and March 14, 2023, Amended Opinion and Order Modifying the Preliminary Injunction
(docket entry no. 431). 1 To the extent any previously made factual findings are repeated or
elaborated upon in this decision, it is for the purpose of clarity. Further factual findings are set
forth here and in connection with the Conclusions of Law presented below.
Ms. Gutman entered into an employment agreement (the “Contract” 2) dated July
13, 2011, under which she agreed to work for JLM Couture (“JLM”), a company in the luxury
1

The Second Circuit Opinion did not disturb these factual findings.

2

The “Contract,” as the term is used herein, comprises the 2011 employment agreement
(docket entry no. 14, Ex. 2), as amended by the 2014 amendment extending that
agreement through August 1, 2019 (id., Ex. 62), and the February 12, 2019, notice letter
exercising Plaintiff’s option to further extend Defendant’s employment term by three
years through August 1, 2022. (Id., Ex. 66.)

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bridal design and manufacturing industry, as a designer of brides’, bridesmaids’, and evening
wear and related apparel. (Docket entry no. 14 ¶¶ 3, 6; docket entry no. 106 (“P.I. Tr.”) 129:1924.) The employment term under the Contract, as extended from time to time, concluded on
August 1, 2022.
The Contract provisions that are material to this preliminary injunction motion
practice read in pertinent part as follows:
Section 9(a). Covenant not to Compete. Employee covenants and agrees that
during the period of her employment with the Company, Employee shall not
compete with the Company, directly or indirectly. For purposes of this Agreement,
Employee shall be deemed to compete with the Company if she engages in, or is
associated with (whether as an officer, director, shareholder, partner, employee,
independent contractor, agent or otherwise), any person, organization or enterprise
which engages in the design, manufacture, marketing or sale of: (i) bridal apparel,
including bridesmaids, mother of the bride and flower girls and related items;
(ii) bridal accessories and related items; (iii) evening wear and related items; and/or
(iv) any other category of goods designed, manufactured, marketed, licensed or sold
by the Company.
Section 9(c). The Employee covenants and agrees that she will not, directly or
indirectly, during or after the term of employment disclose to any person not
authorized by the Company to receive or use such information . . . any of
Company’s Confidential Information . . . . Confidential information means any
financial information, marketing plans, . . . customer lists or other proprietary
information of the Company or its affiliates.
Section 10(a). Exclusive Right to the Designer Name. The Employee hereby grants
to the Company the exclusive world-wide right and license to use her name
‘Hayley’, ‘Paige’, ‘Hayley Paige Gutman’, ‘Hayley Gutman’, ‘Hayley Paige’ or
any derivative thereof (collectively the ‘Designer’s Name’) in connection with the
design, manufacture, marketing and/or sale of bridal clothing, bridal accessories
and related bridal and wedding items, including any and all good will associated
therewith, throughout the Term (including any extension of the Term), plus a two
(2) year period following the Term or any extension thereof, provided Employee
has substantially participated in the design or creation of such clothing or related
items during her employment by the Company.
Section 10(b). [Trademark Rights.] The Employee hereby irrevocably sells,
assigns, and transfers all right, title and interest to the Company that now exists or

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may exist during the Term (and any extensions thereof) and for a period of two
years thereafter, to register the Designer’s Name or any derivatives(s) thereof as
trademarks or service marks (the ‘Trademark’ or ‘Trademarks’) . . . . The
Trademarks shall in perpetuity be the exclusive property of the Company, the
Employee having consented to it being filed by the Company and the Employee
thereof shall have no right to the use of the Trademarks, Designer’s Name or any
confusingly similar marks or names in trade or commerce during the Term or any
time thereafter without the express written consent of the Company. The Company
shall be solely permitted to license the Trademarks to a third party.
Section 10(e). [Post Contractual-Term Covenant.] In the event that the Company
files an application to register the Trademark or Trademarks, Employee agrees that
for a period of five years following termination of her employment, she shall not
be identified to the trade or consuming public as the designer, and her role as
designer shall not be used to promote the sale, of any goods in competition with
goods manufactured and sold by the Company.
Section 11. Designs and Intellectual Property. The parties expressly agree that all
designs, drawings, notes, patterns, sketches, prototypes, samples, improvements to
existing works, and any other works conceived of or developed by Employee in
connection with her employment with the Company involving bridal clothing,
bridal accessories and related bridal or wedding items, either alone or with others,
from the commencement of her employment by the Company through the Term of
the Employment Agreement and any extensions thereof (collectively, the
‘Designs’), are works for hire, and ownership of any intellectual property arising
from or related to the Designs shall be the sole and exclusive property of the
Company . . . . If, for any reason the Designs, or any portion thereof, are deemed
not to be a work made for hire, then the Employee irrevocably, absolutely and
unconditionally assigns to the Company (a) all of right, title and interest in and to
the Designs and/or any portion thereof (whether arising under copyright law,
trademark law, or otherwise), including to the extent applicable, but not limited to,
the exclusive rights enumerated in l U.S.C. Section 106, and all extensions and
renewals thereof, and (b) all moral rights with respect to the Designs, including but
not limited to, any and all rights of identification of authorship and any and all rights
of approval, restriction or limitation on use or subsequent modifications relating to
the Designs.
On the same date that Ms. Gutman entered into the Contract, she also
signed a form stating that she understood, acknowledged, and accepted that the terms of
her employment at JLM were governed by JLM’s Employee Handbook. (Docket entry
nos. 60-22 (the “Employee Handbook”), 60-23 (the “Acknowledgment Form”).) The
Employee Handbook states, in pertinent part, that (i) “employees will use their time

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during the workday solely for Company business, not personal use” (Employee
Handbook § 4.10); (ii) “[a]ll internet usage is limited to job-related activities” (id.
§ 4.11); and (iii) “all Intellectual properties”—defined as “all designs, drawings, notes,
patterns, sketches, programs, spreadsheets, databases, prototypes, samples, improvements
to existing works, and any other works that an employee conceives or develops”—“shall
be and remain the property” of JLM (id. § 1.11).
After entering into the Contract, Ms. Gutman opened an account on Pinterest (the
“Pinterest Account”) on or about November 3, 2011, and an account on Instagram (the
“Instagram Account”) (together, the “Disputed Accounts”) on or about April 6, 2012, both
bearing the handle @misshayleypaige. (Docket entry no. 370 (“Gutman Decl.”) ¶ 45; docket
entry no. 361 (“Murphy Decl.”) ¶ 8.) Ms. Gutman proffers that “Miss Hayley Paige” is a term
of endearment for Defendant used by her mother. (Gutman Decl. ¶ 44.) “Miss Hayley Paige” is
also a version of the Designer’s Name. (Docket entry no. 109 (“March 4, 2021, Memorandum
Order and Opinion Granting Preliminary Injunction”) at 20 (explaining that “misshayleypaige”
and “@misshayleypaige” are derivatives of “Hayley Paige”).)
Ms. Gutman proffers that she was an “early adopter” of social media and opened
the Pinterest Account and Instagram Account on her own accord for her own personal reasons.
(Gutman Decl. ¶¶ 44, 46.) With respect to the Instagram Account, Ms. Gutman submits that she
opened the Account based on the suggestion of her friend, Cassidy Ozowara (née Willingham),
who told her about the platform, enthused about “how much she loved using it[,]” and sent Ms.
Gutman a link to download the Instagram Application so she could open her own account. (Id.
¶¶ 49-51; docket entry no. 375 (“Ozowara Decl.”) ¶¶ 3-5, Ex. 1.) Ms. Gutman linked the
Instagram Account that she created to her personal Gmail account, [e-mail],

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her personal cell phone number, and her personal Facebook page, and she created her own
password. (Gutman Decl. ¶¶ 52, 98 (“From approximately April 2012 to January 2016, I also
had my Personal Instagram linked to my Personal Facebook account . . . and content posted on
my Personal Instagram would be simultaneously posted on my Personal Facebook Account.”).)
Ms. Gutman also linked the Pinterest Account to her [e-mail] email address.
(Id. ¶ 54.) Ms. Gutman used her [e-mail] email address for business purposes,
including correspondence related to her work with JLM. (See
id. ¶ 52 n. 14 (“Due to various
---issues I had with [the JLM-provided] email account on my phone and difficulties sending large
artwork files, I had all my emails from my [e-mail] email forwarded to my personal
Gmail.”); Murphy Decl. ¶ 8 and Exs. 5, 7, 11 (showing emails from Hayley Paige to JLM
employees that were sent from Ms. Gutman’s Gmail account).)
Ms. Gutman proffers evidence that the earliest posts on the Instagram Account
were “purely personal in nature: (1) a photo that [she] took of the New York Skyline, (2) a
photo [she] took of bridal belts that [she] made while working at Priscilla of Boston, [a JLM
competitor], and (3) [her] favorite quote from Steve Jobs.” (Gutman Decl. ¶ 57.) The next two
posts on the Instagram Account were similarly personal: “a photo of [Ms. Gutman’s] apartment
living room” and “a picture of [her] best friend” with a dog. (Id. ¶ 58.) The next post was “a
photograph that [Ms. Gutman’s] mom took of [Ms. Gutman] in [her] work showroom” during a
visit to New York. (Id.)
While JLM did not direct Ms. Gutman to create the Instagram Account, the
evidence shows that the Instagram Account was utilized to showcase JLM’s products beginning
shortly after its creation. (Murphy Reply Decl. ¶ 21 (explaining that Accounts “were used by
JLM from the moment they were created”).) Ms. Gutman posted several photos of JLM bridal

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gowns within two weeks after the creation of the Instagram Account in April 2012, including
two photos of a bridal gown on April 19, 2012; one photo of a bridal gown on April 20, 2012;
and two photos of bridal gowns on April 21, 2012. (Docket entry no. 61, Ex. T, at 651-53.)
Indeed, Mr. Murphy, the President and CEO of JLM, proffered credible testimony that the
opening of the Instagram Account in April 2012 “was timed to coincide with the week of the
Fall 2012 New York bridal market, which is the largest and most important market in the
industry and to JLM,” where “brands showcase new collections to bridal retailers from around
the world.” (Id.;
see also Murphy Decl. ¶ 9 (“When the [Instagram] Account was first created,
-- -----in April of 2012, Gutman was working on her Fall 2012 collection.”).) Several of the first
photos posted to the Instagram Account were from photo shoots and trunk show events where
the Hayley Paige dresses were being sold. (Murphy Decl. ¶ 9.) JLM also proffers evidence that
the Pinterest Account was used as an advertising platform soon after it was created: one of the
first boards on the Pinterest Account—created on the same day as the Account—was entitled
“The Wedding Wardrobist – Revisited”, and the first pin created on the Pinterest Account—
created on May 1, 2012, six months after the Pinterest Account was created—is titled “Hayley
Paige Fall 2012—‘Lulu’ gown”. (Docket entry no. 485 (“Criccio Decl.”) ¶¶ 7, 9.)
The Instagram and Pinterest Accounts were utilized throughout the remainder of
Defendant’s employment relationship with Plaintiff as critical advertising platforms for JLM’s
products affiliated with the Hayley Paige brands (“HP brands”). (See March 4, 2021,
Memorandum Order and Opinion Granting Preliminary Injunction at 9 (“Plaintiff made social
media, including the Account itself, a part of its efforts to market the Hayley Paige brand.”);
docket entry no. 326 (“February 14, 2022, Memorandum Opinion and Order modifying the
Preliminary Injunction”) at 9 (“JLM promoted the HP brands across various social media

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platforms as an important part of its advertising efforts.”).) As the Court has already found, this
approach included featuring pictures of “‘behind-the-scenes’ activity at Plaintiff’s photo shoots
and events” and also displaying pictures of vendors selling or brides wearing Plaintiff’s gowns.
(March 4, 2021, Memorandum Order and Opinion Granting Preliminary Injunction at 7-8
(citing P.I. Tr. 17:10; id. 62:20-21; docket entry no. 15 ¶ 9).) The Pinterest Account includes
collections of pins showcasing particular collections, including Blush by Hayley Paige, as well
as collections focused on individual gown designs. (Gutman Decl., Ex. 23 (providing a current
copy of the Pinterest Account and reflecting Pinterest boards curated over multiple years,
including prior to the issuance of the TRO, focused on particular gowns and collections).) JLM
also identified its goods with reference to the Disputed Accounts by printing
“@misshayleypaige” on the hang tags of the physical garments and including social media
reference information in print advertisements. (March 4, 2021, Memorandum Order and
Opinion Granting Preliminary Injunction at 9-10 (citing docket entry no. 14 ¶ 10, Exs. 20-32,
42); ----see also Murphy Decl. ¶ 28.)
The biographical information displayed on the Instagram and Pinterest Accounts
has changed over time. The evidence of record shows that the Instagram Account has included
links to the following JLM-owned domains: www.hayleypaige.com, popuppaige.com,
www.heartsonfire.com, and www.jlmcouture.com/trunkshows. (Docket entry no. 14 ¶¶ 23-24,
Exs. 19, 56, 58-60; Gutman Decl. ¶¶ 106, 145.) The Instagram Account also “regularly
included references” to the JLM email address [e-mail] (Gutman Decl. ¶ 106; docket
entry no. 14, Ex. 58), was linked to JLM’s Facebook page for a period of time until Ms. Gutman
removed the link on April 28, 2020, during the period when JLM’s relationship with Ms.
Gutman began to break down (Murphy Decl. ¶¶ 28, 87; docket entry no. 394 (“Murphy Reply

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Decl.”) ¶ 25, Gutman Decl. ¶¶ 95, 98), and at times included links to “Free download @
holymatrimoji” (docket entry no. 14, Ex. 59), which referred to the “JLM-owned Holymatrimoji
App” (Gutman Decl. ¶ 137), and “Hayley Paige+@heartsonfireco” (Murphy Decl. Ex. 59),
which referred to a collaboration between JLM and the jewelry company, Hearts On Fire.
(Docket entry no. 14 ¶ 53; Gutman Decl. ¶ 23.) In or around November 2019, the Instagram
Account included the description, “Designer/Creator/Emoji-maker.” (Gutman Decl. ¶ 69;
Murphy Decl., Ex. 59.) In or around February and November 2020, the Instagram Account’s
description included the phrase, “Personal & Creative account of designer Hayley Paige”.
(Gutman Decl. ¶ 145; docket entry no. 14 ¶ 62, Ex. 60.) The Account was also verified by
Instagram as the account of a “Public Figure” in or around January 2017. (Murphy Reply Decl.
¶ 23, Ex. 83.) After the TRO was issued in December 2020, JLM removed Ms. Gutman’s
image from the profile picture of the Instagram Account (Murphy Reply Decl. ¶ 26, Gutman
Decl. ¶ 163), changed the biographical section of the Account by replacing the “Public Figure”
designation with “Clothing (Brand)” (Gutman Decl. ¶ 163; March 4, 2021, Memorandum Order
and Opinion Granting Preliminary Injunction at 13 (citing docket entry no. 75, Ex. 47)), deleted
Defendant’s self-description, and reinstated Plaintiff’s website and PR email address link.
(March 4, 2021, Memorandum Order and Opinion Granting Preliminary Injunction at 13
(citations omitted); Gutman Decl. ¶ 162.) JLM also changed the title of the Pinterest Account
from “Hayley Paige” to “Hayley Paige Bridal.” (Murphy Reply Decl. ¶ 41, Gutman Decl.
¶ 167.)
Ms. Gutman expressed a desire early on in her employment at JLM to assist in
leveraging social media to market the HP brands. On September 27, 2011, a little more than
two months after entering into the Contract, over one month before she opened the Pinterest

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Account, and several months before she opened the Instagram Account, Ms. Gutman sent an
email message to a JLM employee asking them to “let me know when I can start helping with
the FB and Twitter pages, as well as the bloggybloggin’ . . . .” (Murphy Decl. ¶ 7; docket entry
no. 60, Ex. 115.) In another email exchange between Ms. Gutman and Mr. Murphy, from
December 11, 2014, Ms. Gutman expressed her desire to “take a class in video editing[,]”
because “our generation is responding to people that really work the social media angle” and the
classes “could really give us a leg up on other bridal companies and help us drive more traffic to
our website/store in LA/Pinterest/Instagram pages.” (Murphy Decl., Ex. 3.) Ms. Gutman
explains that she decided to assist JLM in “in implementing a social media strategy because
JLM’s efforts were subpar and disorganized” and, through her efforts, they “would mutually
benefit from more exposure.” (Gutman Decl. ¶ 115.)
Ms. Gutman and JLM employees worked together to strategize as to how best to
leverage the social media platforms to market the HP brands. For example, Ms. Gutman
participated in discussions with JLM employees about how best to use social media to boost
sales, promote trunk shows for Hayley Paige dresses, and increase brand visibility. In one email
exchange from June 7, 2019, Ms. Gutman wrote to JLM employees: “In effort (sic) to help
sales, I would like to implement a more efficient method for aligning trunk shows and stock
hitting stores with our posts on Instagram” and expressed her views that (1) “our stores need a
little more help/boost on social for filling appointments and getting HP-specific brides to their
stores”; (2) an individual “on board [at JLM] . . . can coordinate with our sales team on a
weekly basis for things to post throughout the week”; and (3) “it’s important that we can
continue the current action of posting Trunk Shows on Tuesdays to the HP and Blush
instagrams[.]” (Murphy Decl., Ex. 8.) In other messages, Ms. Gutman discussed a strategy of

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changing the “standard trunk show post[s]” to potentially include a “swipe up link” on the
“instastories” “to our website to view the whole collection” (id. ¶ 17 and Ex. 7), and weighed in
on how “promo codes should be . . . used on Instagram for limited time periods” only. (Id. ¶ 22
and Ex. 12.) With respect to the Pinterest Account, Ms. Gutman discussed strategies for
“pinning . . . PR clips/mentions[,]” “pinning trunk show posts . . . on our @misshayleypaige and
@jlm Pinterest pages” while also “linking to the store directly for trunk show info[,]” and
“organizing [Pinterest] boards” including by “having the newest dresses toward the top.”
(Murphy Decl., Ex. 5.)
The Instagram Account, which permitted Account followers to send messages
about the Account’s content, was also utilized to communicate with actual and potential
customers. Followers saw pictures of dresses offered by JLM on the Instagram Account and
messaged the Account to inquire further about potential design changes, prices, and where they
could find JLM’s products. (See Gutman Decl. ¶ 120 (“After a trunk show or during bridal
market, I received a large number of sales related questions on my Personal Instagram . . . . [I]t
is simply the way many brides chose to reach out with sales questions.”); Murphy Decl. ¶ 27,
Ex. 74 (October 17, 2019 email thread in which Ms. Gutman wrote that a store representative
reached out to her via “Instagram” and “[t]he majority of questions are sales” including “[s]ales
stuff, gown stuff, bride stuff, and favors!”); id., Ex. 25 (November 4, 2019 email thread in
which Ms. Gutman asked JLM employee if they “have any interns this week? I would love if
they could go through my last 5 Insta posts and answer any necessary sales questions (there is a
lot asking about the names of gowns and where to find them!)”); id., Exs. 61-63 (showing
inquiries from followers including “What dress is this ?!”; “[C]an this be done without the
sleeves?!”; “I’m currently in NC and I’m wondering if you know any good stores with your

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dresses here?”).) In response, customers were provided with answers to their questions about
JLM’s products or directed to JLM resources, including the email addresses of JLM staff
members and links to JLM’s websites, such as a link showcasing JLM’s upcoming trunk shows.
(See id. (replying “Hennessy gown”; “Yassss”; and “Email [e-mail] for NC stores
near you!” respectively to inquiries above); see also Murphy Decl., Ex. 70 (Ms. Gutman
emailed JLM employees that she “answered 250 messages today alone . . . I actually sent this
bride to the hp email . . . . I’m only sending the best brides that seem serious about shopping or
want to order your way”).) Ms. Gutman also utilized the Instagram Account to garner customer
information and provide customer service. In one email exchange, Ms. Gutman reached out to
JLM employees about a “super unhappy instagrammer that ordered the Kandence sketch[,]”
which was “not correct and was damaged[.]” (Murphy Decl., Ex. 68.) Ms. Gutman reported
that she “need[ed] to do a new sketch[,]” asked “Whoa (sic) can help with address and make
sure it goes out tomorrow[,]” and noted that “[i]f we don’t have address on file, I can ask her via
instagram . . . .” (Id.)
Ms. Gutman, whose contractual duties as a JLM employee included “assisting
with advertising programs” (Contract § 2), “approached social media at JLM in an inclusive
way and often involved JLM employees in [her] decisions[.]” (Gutman Decl. ¶ 114; see also id.
¶ 119 (“I do not dispute that I occasionally sought JLM’s input on posts.”).) Ms. Gutman
proffers that she requested JLM’s “input and guidance” for content that was “either particularly
sensitive or directly impacted JLM” so that Ms. Gutman “could represent JLM’s needs and
wants in an agreeable way.” (Gutman Decl. ¶¶ 121, 123.) For instance, a JLM employee
emailed Ms. Gutman, directing her to a website and noting “they added a sash to the dress[,]” to
which Ms. Gutman replied, “WOW. Can I share on insta or is that too risky?” (Murphy Decl.,

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Ex. 30.) As the Court has previously found, Mr. Murphy suggested that Ms. Gutman “say
something about the Manchester event” in the aftermath of a terror attack in England, provided
a draft caption, and told Ms. Gutman to “wait on IG to do anymore posts till England wakes
up.” (March 4, 2021, Memorandum Order and Opinion Granting Preliminary Injunction at 9
(citing docket entry no. 98, Ex. P-192).)
During at least some periods prior to late 2019, JLM employees directly accessed
the Instagram and Pinterest Accounts and participated in the management of the Accounts.
Between approximately 2017 and 2019, Ms. Gutman granted access to the Instagram Account
to at least two JLM employees, Brittany Noe and Lisa Radwanski. (Gutman Decl. ¶¶ 102-103.)
Ms. Gutman emailed Ms. Noe and Ms. Radwanski, along with other JLM employees, to discuss
and delegate potential work leveraging the Instagram and Pinterest Accounts. (See,
e.g.,
-----Murphy Decl., Ex. 21 ( “Could we also have Lisa check in on all Instagram questions (in the
comments) AND log into my account for the messages . . . they are piling up again!”); id., Ex.
25 (“I’ve noticed we are STILL not utilizing our daily press mentions enough in our Instagram
stories . . . Brittany/Katie – do you think we can commit to just ONE a day in stories or if that’s
too much, at least 3 a week . . . . It would be amazing if we can do this on all designated
Instagram accounts . . . .”); id., Ex. 28 (discussing “Dropbox folders” and asking, “Brittany, do
you think we could do this for social media?! We could just add a folder to this that says
‘CONTENT FOR INSTAGRAM’ . . . we just need to make sure to include only the best images
(from Lana’s BTS stuff) and any necessary tags. It’s great to have the folders saved through
Instagram direct, but this can be stuff from our company or things we get from press people . . .
. Maybe even knew (sic) content posts and caption ideas that we have the interns work on!”).)
On at least one occasion, Ms. Gutman noted her preference that JLM employees send her draft

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posts for approval, but she ultimately gave them the discretion to go ahead and publish the posts
should she not respond timely. (See Murphy Decl., Ex. 25 (“Would LOVE if you could just
send me a quick text for approval . . . but if I don’t get back to you in time, feel free to post”).)
Ms. Gutman also expressed her preference that JLM employees manage
engagement with followers and content related to advertising her designs while she focused her
energy on creating posts reflecting her personality. (Murphy Decl. Ex. 26 (“The BIGGEST help
of all for me is staying on top of liking/commenting and engaging with our brides as much as
possible . . . . DM’s, comments/questions in our feedposts (sic) and also hunting for unique
content/images . . . .”).) Ms. Gutman asked for assistance with “informative posts” focused on
“helping out our stores when we can (more product, store, sales, and press driven content)” but
cautioned that she would like to “handle all the brand driven/personality posts[.]” (Id.) In 2019,
Ms. Gutman requested that JLM hire a social media director to assist her with the promotional
efforts on the Instagram and Pinterest accounts. In an email to Mr. Murphy, Ms. Gutman
explained her rationale, noting “I feel my effort @misshayleypaige gets distracted in having to
comment/respond/keep up with DM’s (which Brittany does help with),” when she “would like
to reserve my focus on the more ‘personalized face-to-camera posts’ that take a while to create.”
(Docket entry no. 14, Ex. 53.)
Ms. Gutman’s blending of her personality with the promotional efforts on the
Accounts was consistent with the overall marketing strategy for the HP brands. JLM’s
approach to the bridal industry is to work with designers to “build and promote namesake
collections.” (Murphy Reply Decl. ¶ 10.) This has been referred to by JLM as the “personal
glimpse” strategy in which social media accounts, “where a brand name is linked to an
individual, such as [Ms.] Gutman, often incorporate posts more personal in nature.” (Murphy

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Decl. ¶ 72.) As the Court previously found, Ms. Gutman and Mr. Murphy adopted this
approach and worked together to “combine the personality with the brand.” (March 4, 2021,
Memorandum Order and Opinion Granting Preliminary Injunction at 7 (citing P.I. Tr. 41:10-11
and docket entry no. 14, Exs. 45-51).) The Instagram and Pinterest Accounts reflected a
mixture of promotional content for JLM products and posts reflecting Ms. Gutman’s personality
and interests. (Id. at 6 (noting that Ms. Gutman “used the Account to display aspects of her life
and her personality, posting images, text, and videos that focused on her parents, her travels and
her hobbies”); Gutman Decl. ¶ 85 (noting that Pinterest Account contained images related to
“travel, architecture, color, design, food, and of course, bridal design”).) 3 In discussions about
the social media platforms, Ms. Gutman emphasized the importance of ensuring that the
Accounts were not focused solely on promotional material, but also reflected her personality.
(See Murphy Decl., Ex. 34 (“I think it is so important that we keep the content engaging,
unique, and not to[o] sales-y. The personality is key!”); docket entry no. 14, Ex. 53 (“I think
it’s important that we do not dilute this Instagram with too much promotion/advertisement so
that we can maintain the aesthetic and personality of the brand[.]”); Gutman Decl. ¶ 82 (“While
I am ecstatic that brides love my dresses, I believe that it is my personal approach that made my
Personal Instagram successful . . . I have received many direct messages from followers . . .
stating that is why they followed me. . . .”).)
The Court has previously detailed the breakdown in the parties’ relationship
throughout the course of contract negotiations in 2019 and 2020. (See, e.g., March 4, 2021,

3

Ms. Gutman proffers that, in addition to pinning content reflecting her personal interests
to “public boards[,]”she had “secret boards” that were hidden from public view related
to “everything from cooking, DIY hacks, fitness routines, and party planning tips.”
(Gutman Decl. ¶ 86.)

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Memorandum Order and Opinion Granting Preliminary Injunction at 12.) Ms. Gutman changed
the access credentials for the Instagram Account in November 2019 and did not share them with
JLM. (Id.
- - (citing docket entry no. 14 ¶¶ 42, 64).) At or around that time, Ms. Gutman also
changed the biography section of the Instagram Account to read “Personal & Creative Account”
and removed the references and links to JLM’s resources. (Docket entry no. 14 ¶ 62, Ex. 60;
Gutman Decl. ¶ 145.) On November 23, 2020, Ms. Gutman informed Plaintiff that she would
“not [be] posting any JLM related business” to the Instagram Account. (March 4, 2021,
Memorandum Order and Opinion Granting Preliminary Injunction at 12 (citing docket entry no.
14, Ex. 75).) Ms. Gutman also changed the password for the Pinterest Account, blocking JLM’s
access to it. (February 14, 2022, Memorandum Opinion and Order modifying the Preliminary
Injunction at 11-12 (citing docket entry no. 14 ¶ 21).) On December 17, 2020, Ms. Gutman
informed JLM that she was resigning; she has not performed any work for JLM since that date.
(Gutman Decl. ¶ 29.) Prior to the Court’s issuance of the TRO in December 2020, Ms. Gutman
deleted many JLM-related posts from the Instagram Account. (Docket entry no. 14 ¶ 70.)
After the Preliminary Injunction was issued, the parties’ relationship deteriorated
further and JLM requested that the Court hold Ms. Gutman in civil contempt of the Preliminary
Injunction Order. JLM’s request was based on Ms. Gutman’s activities on her Instagram
@allthatglittersonthegram account (the “ATG Account”), including her announcements that she
planned to reveal her “new brand name very soon” and reenter the bridal industry in August
2022. (Docket entry no. 234 (“September 8, 2021, Memorandum Opinion and Order finding
Ms. Gutman in contempt of the Preliminary Injunction”) at 4-6 (citation omitted).) The Court
found that JLM proffered clear and convincing evidence that Ms. Gutman failed to comply with
Paragraph 3(b) of the Preliminary Injunction Order, which incorporated Ms. Gutman’s

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contractual obligation not to compete with JLM during the Contractual term, by marketing her
future bridal brand and cultivating excitement about her return to the bridal industry among her
followers, who expressed their excitement and their willingness to wait until August 2022 to
purchase bridal wear from Ms. Gutman’s forthcoming collection. (Id. at 8-9.)
Shortly thereafter, the Court modified the Preliminary Injunction to give both
parties access to the Disputed Accounts through the term of the Contract and to prohibit Ms.
Gutman from using the Disputed Accounts for any “non-JLM promotional purposes.”
(February 14, 2022, Memorandum Opinion and Order modifying the Preliminary Injunction at
17.) Because the preliminary injunction terms giving JLM access to the Disputed Accounts
were based on JLM’s breach of contract claims, they were set to expire on August 1, 2022. (Id.
at 18.) Ms. Gutman moved for dissolution of the Preliminary Injunction, and JLM cross-moved
for several modifications to the Preliminary Injunction; the Court denied the motion to dissolve
the injunction and granted two of JLM’s requested modifications. (Docket entry no. 431 (the
“PI Order”).) The Court modified the preliminary injunction to give JLM exclusive control
over the Disputed Accounts based on its finding as to JLM’s likelihood of success on its claims
for conversion and trespass to chattels. (Id. at 35.) The Court also prohibited Ms. Gutman from
“identifying herself” to the public as a designer of competing goods for five years, based on
Paragraph 10(e) of the Contract, which the Court interpreted as a post-employment restrictive
covenant. (Id. at 51.)
Following Ms. Gutman’s appeal of the PI Order, the Second Circuit Opinion
vacated the PI Order in part, finding that that the Court (1) “erred by modifying its preliminary
injunction to give JLM exclusive control over the Disputed Accounts” and (2) “impermissibly
granted a preliminary injunction restricting [Ms. Gutman] from identifying herself as a designer

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of certain products based on Paragraph 10(e) of the Contract” because the Court had not made
an explicit determination regarding the reasonableness of the terms of the restriction. 4 (Second
Circuit Opinion at 15, 22.) Finding that the Court had erred by not analyzing the original
ownership of the Disputed Accounts as a predicate for giving JLM control of those Accounts,
and by not addressing the reasonableness of the scope of the restrictive covenant at issue, the
Second Circuit directed the Court to review JLM’s likelihood of success on the merits as to each
of the two issues. (See id. at 21 (remanding “to analyze ownership of the Disputed Accounts
under the framework discussed”), 24-25 (remanding to “consider” questions related to the
reasonableness under New York law of the restrictions imposed by Paragraph 10(e)).)
CONCLUSIONS OF LAW
A party seeking a preliminary injunction prohibiting a defendant from engaging
in conduct ordinarily must demonstrate: (1) “either (a) a likelihood of success on the merits or
(b) sufficiently serious questions going to the merits to make them a fair ground for litigation”;
(2) “that he is likely to suffer irreparable injury in the absence of an injunction”; (3) that “the
balance of hardships tips in the plaintiff’s favor;” and (4) that the “public interest would not be
disserved” by the issuance of a preliminary injunction. Salinger v. Colting, 607 F.3d 68, 79-80
(2d Cir. 2010) (internal quotations and citations omitted). A different, more demanding
standard applies where a proposed preliminary injunction would impose affirmative obligations

4

The Second Circuit did not disturb Paragraph 4 of the Preliminary Injunction, which
enjoined Ms. Gutman from “[u]sing, or authorizing others to use, any of the Designer’s
Names, Trademarks or any confusingly similar term, name, symbol or device, or any
combination thereof, in commerce in connection with any goods or services, including
to endorse, advertise or promote the products and/or services of herself or others directly
or indirectly, including but not limited to on social media or in television or media
appearances, without the express written permission of Plaintiff’s chief executive
officer, Joseph L. Murphy.” That aspect of the Preliminary Injunction remains in place.

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upon a defendant and/or would give the plaintiff substantially all of the relief that is sought in
the litigation. Such a mandatory injunction is warranted only upon a “clear showing that the
moving party is entitled to the relief requested, or where extreme or very serious damage will
result from a denial of preliminary relief.” Tom Doherty Assocs., Inc. v. Saban Ent., Inc., 60
F.3d 27, 34 (2d Cir. 1995) (citation omitted).
Control of the Disputed Accounts
JLM seeks an extension of the relief currently embodied in Paragraphs 1 and 2 of
the Preliminary Injunction, as set forth in the Order dated March 1, 2024 (docket entry no. 474)
and Paragraph 3, as set forth in the March 14, 2023, PI Order (docket entry no. 431). These
provisions enjoin Ms. Gutman from (1) “[m]aking any changes to the Instagram Account or
Pinterest Account[;]” (2) “[p]osting non-commercial personal content that disparages JLM or is
otherwise inconsistent with the JLM-promotional nature of the dominant content of the
Accounts;” and (3) “[t]aking any action. . . to gain control over the Instagram Account or
Pinterest Account[.]” (Order dated March 1, 2024 at 12-13.) JLM thus seeks sole control of or,
in the alternative, continued shared access to, the Disputed Accounts. Ms. Gutman, for her part,
requests sole control of the Disputed Accounts. “[T]he burden is on JLM to demonstrate a clear
or substantial likelihood of success” on its claims of conversion or trespass to chattels under the
mandatory injunction standard to receive the relief it seeks. (Second Circuit Opinion at 22
n.11.)
To state a claim of conversion under New York law, a plaintiff “must establish
that ‘[i] the property subject to conversion is a specific identifiable thing; [ii] plaintiff had
ownership, possession[,] or control over the property before its conversion; and [iii] defendant
exercised an unauthorized dominion over the thing in question, to the alteration of its condition

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or to the exclusion of the plaintiff’s rights.’” Brown v. Twitter, No. 19-CV-6328-KPF, 2021
WL 3887611, at *9 (S.D.N.Y. Aug. 31, 2021) (quoting Ellington Credit Fund, Ltd. v. Select
Portfolio Serv., Inc., 837 F. Supp. 2d 162, 204 (S.D.N.Y. 2011)). Neither party disputes that
“intangible property such as websites and account information can be the object of conversion
under New York law.” Id. at *10 (collecting cases); Salonclick LLC v. SuperEgo Mgmt. LLC,
No. 16-CV-2555-KMW, 2017 WL 239379, at *4 (S.D.N.Y. Jan. 18, 2017) (finding that plaintiff
stated a claim for “conversion of its domain name and social media accounts under New York
law”). Likewise, claims of trespass to intangible property, such as social media accounts, have
been treated as claims for trespass to chattels by courts applying New York law. See, e.g.,
Salonclick, 2017 WL 239379, at *4. To state a claim for trespass to chattels, Plaintiff must
allege that the Defendant’s actions “cause[d] harm to ‘the [owner’s] materially valuable interest
in the physical condition, quality, or value of the chattel, or [] the [owner] is deprived of the use
of the chattel for a substantial time.’” Id. (quotation omitted).
The Second Circuit Opinion provides clear direction that, to support continuation
of injunctive relief giving JLM control of the Disputed Accounts, JLM must establish its clear
or substantial likelihood of success on the merits of its conversion or trespass to chattels claim
by showing that it owned the Disputed Accounts, either from the time they were created or by
virtue of a transfer of ownership of the Disputed Accounts thereafter. The Second Circuit
Opinion frames the centrality of this issue to its analysis as follows:
[T]he analysis of social-media-account ownership begins where other propertyownership analyses usually begin—by determining the account’s original owner. The
next step is to determine whether ownership ever transferred to another party. If a
claimant is not the original owner and cannot locate their claim in a chain of valid
transfers, they do not own the account.

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(Id. at 21.) The panel further observed that, “[w]hen Gutman created the Disputed Accounts,
any associated property rights belonged to someone. And if she created them using her personal
information and for her personal use, then those rights belonged to her, no matter how the
Disputed Accounts may have been used later.” (Second Circuit Opinion at 17 (emphasis in
original).)
To determine the answer to the first question—whether Ms. Gutman was the
original owner of the Disputed Accounts—the Court must assess “whether [Ms.] Gutman had
access to the Disputed Accounts because they were her property or only because she was an
employee[.]” (Second Circuit Opinion at 22 n.11.) The proffered evidence does not support the
inference that Ms. Gutman “only” had access to the Disputed Accounts because she was a JLM
employee. Instead, the record makes clear that Ms. Gutman herself opened the accounts,
obtaining the rights to use the social media platforms to post information and communicate with
others, in her own name using the @misshayleypaige handle, and that she was at least partially
motivated to create the Disputed Accounts for her personal use even if she saw them as
potentially useful in promoting Hayley Paige merchandise manufactured by JLM. The
following evidence of record is particularly significant in this regard:
First, Ms. Gutman submits that she opened the Instagram Account based on the
suggestion of her friend, Cassidy Ozowara (née Willingham), who told her about the platform in
January 2012, enthused about “how much she loved using it[,]” and sent Ms. Gutman a link to
download the Instagram Application so that she could open her own account. (Gutman Decl.
¶¶ 49-51; Ozowara Decl. ¶¶ 3-5, Ex. 1.) While JLM correctly points out that Ms. Ozowara did
not work for JLM and was not privy to conversations between JLM and Ms. Gutman about
social media strategy (see docket entry no. 492 (“JLM Opp.”) at 19), her email is corroborative

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of Ms. Gutman’s contention that she was motivated to open an Instagram Account for her own
personal use.
Second, when Ms. Gutman first opened the Instagram Account, she linked it to
her personal Facebook account. (Gutman Decl. ¶ 98.) The fact that she did not link the
Instagram Account to JLM’s Facebook account until nearly four years later indicates that she
did not create the Instagram Account only in her capacity as a JLM employee.
Third, the initial posts on the Disputed Accounts primarily reflect Ms. Gutman’s
personal interests and activities. The first five posts on the Instagram Account were clearly
personal in nature: “(1) a photo that [she] took of the New York Skyline, (2) a photo [she] took
of bridal belts that [she] made while working at Priscilla of Boston, [a JLM competitor], . . .
(3) [her] favorite quote from Steve Jobs[,]” (4) “a photo of [Ms. Gutman’s] apartment living
room[,]” and (5) “a picture of [her] best friend” with a dog. (Gutman Decl. ¶¶ 57-58.)
Similarly, early pins in the Pinterest Account contained images related to “travel, architecture,
color, design, food, and of course, bridal design.” (Gutman Decl. ¶ 85.) While the majority of
these initial posts were also consistent with JLM’s “personal glimpse” marketing strategy (see
Murphy Decl. ¶ 72), posting a photo of bridal belts that Ms. Gutman designed for a JLM
competitor was not consistent with a goal of marketing JLM’s goods. Likewise, the private
nature of pins on “secret boards” that were hidden from public view on the Pinterest Account
and related to “everything from cooking, DIY hacks, fitness routines, and party planning tips”
indicate that Ms. Gutman had created the Pinterest Account, at least in part, for personal
reasons. (Gutman Decl. ¶ 86.) Taken together, these facts suggest that Ms. Gutman created the
Disputed Accounts for her personal use.

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JLM’s arguments that the “Accounts at Issue were created expressly for, and
were used to assist with, JLM’s advertising programs” (docket entry no. 487 (“JLM Mem.”), at
4) and its evidence of discussions and consultations concerning social media use for advertising
prior to and following the creation of the Accounts are insufficient to make the requisite clear or
substantial showing of a likelihood of success in proving that the Disputed Accounts were
created by Defendant solely as an agent for JLM and thus were JLM’s property from the
beginning. To be sure, JLM has proffered many examples of how the Disputed Accounts were
used—very successfully—as advertising tools. (See
id. at 11-14.) However, the Court’s task in
---light of the decision on appeal is to determine who owned the Disputed Accounts at their
creation and whether the ownership of the Accounts was ever transferred to JLM, if JLM was
not the original owner. The Second Circuit Opinion holds that “how the Disputed Accounts
may have been used” after the Disputed Accounts were initially created is not relevant to the
ownership of the Accounts at creation. (Second Circuit Opinion at 17.) While the evidence of
early discussions of use of social media in advertising and the use of a handle that is a derivative
of names to which Defendant had just sold JLM commercial rights under the Contract shows
that JLM’s contention that the Disputed Accounts were created for advertising purposes is not
frivolous, JLM has failed to demonstrate a clear or substantial likelihood of success on the
merits of its contention that Ms. Gutman created the Dispute Accounts for JLM only. JLM’s
evidence does demonstrate that Ms. Gutman used the Disputed Accounts to support JLM’s
advertising efforts, as she was responsible to do under Paragraph 2 of the Contract, but that later
use is not dispositive of the question of initial account ownership. Nor is it indicative of a legal
transfer of the ownership of the Disputed Accounts to JLM in the course of Defendant’s
employment with JLM. Indeed, Ms. Gutman’s use of the Disputed Accounts as a tool that she

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owned, but used for her duties as a JLM employee, is analogous to her use of a personal email
address for business purposes, including correspondence related to her work with JLM. (See
Gutman Decl. ¶ 52 n. 14.)
The Second Circuit Opinion recognizes the transfer of rights to Defendant’s
name and derivatives under the Contract, but rejects use of the “@misshayleypaige” handle as a
basis for a finding that JLM owned the Disputed Accounts at the time of their creation, stating
that, while Ms. “Gutman had licensed her name and its derivatives to JLM for use only in trade
or commerce[,] [s]he was entitled to continue using her name for noncommercial purposes,
including personal social media accounts.” (Second Circuit Opinion at 17 n.5 (citation
omitted)); see also Pirone v. MacMillan, Inc., 894 F.2d 579, 583 (2d Cir. 1990) (“The act of
registering a proper noun as a trademark, however, ‘does not withdraw it from the language, nor
reduce it to the exclusive possession of the registrant.’” (citations omitted)). This logic also
requires rejection of JLM’s argument that use of the handle to create the Disputed Accounts
necessarily violated Instagram’s terms of use requiring account holders to represent that they do
not “violate the privacy rights, publicity rights, copyrights, contract rights, intellectual property
rights or other rights of any person” by using Instagram. (See docket entry no. 484 (“Marcus
Decl.”), Exs. 12-13.) 5 That said, Ms. Gutman’s use of the handle—a derivative of the

5

JLM has proffered screenshots and a PDF printout of Instagram’s terms of use that were
in effect in April 2012, when the Instagram Account was created, using the Internet
Archive’s Wayback Machine. (Docket entry no. 484 (“Marcus Decl.”) ¶¶ 3-4.) Ms.
Gutman argues that this version of Instagram’s Terms of Service should not be
considered because “[n]either JLM nor its declarants have any firsthand knowledge
regarding whether the contents of those submissions are true and accurate.” (Docket
entry no. 488 (“Gutman Opp.”) at 12-13.) Federal courts regularly take judicial notice
of web pages made available using the WayBack Machine pursuant to Federal Rule of
Evidence 201. See Pohl v. MH Sub I, LLC, 332 F.R.D. 713, 716 (N.D. Fla. 2019)
(collecting cases from other districts); UL LLC v. Space Chariot, Inc., 250 F. Supp. 3d

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Designer’s Name for which she had assigned commercial rights to JLM, in connection with a
commercial endeavor, rather than simply for personal information and communications—
suggests that she had JLM’s permission to engage in commercial activity under those handles
on the Disputed Accounts. The Court notes that the work-for-hire provisions of the Contract
and the Employee Handbook are significant as to questions regarding the ownership of content
developed for and posted on the Disputed Accounts— although apparently not to questions of
ownership of the Disputed Accounts themselves. 6
JLM’s argument that the Disputed Accounts were its property ab initio as “works
for hire” is also insufficient to demonstrate a clear or substantial likelihood of success on its
trespass and conversion claims insofar as it is directed to ownership and control of the Disputed
Accounts themselves. The Second Circuit Opinion holds that Paragraph 11 of the Contract—
providing that all “designs, drawings, notes, patterns, sketches, prototypes, samples,
improvements to existing works, and any other works conceived of or developed by [Ms.
Gutman] in connection with her employment with the Company involving bridal clothing,
bridal accessories and related bridal or wedding items,” are works for hire and the exclusive
property of JLM—did not govern ownership of the Disputed Accounts. (Second Circuit
Opinion at 19-21.) This is, the panel explained, because social media accounts “share none of
[the] core attributes” of the specific terms in the work-for-hire list, which “describe steps in the

596, 604 n.2 (C.D. Cal. 2017) (rejecting argument that the declarant lacked personal
knowledge regarding the WayBack Machine and how the website at issue was archived).
6

See Second Circuit Opinion at 18 & n.7 (stating that “the fact that Gutman transferred
some or all of her rights in particular content posted on the Disputed Accounts does not
by itself support an inference that she transferred ownership of the Disputed Accounts
themselves” and that “[r]ights in the Disputed Accounts and rights in content posted on
them—including ancillary content like direct messages, captions, profile pictures, and
the like—need not be intertwined”).

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process of fashion design . . . and appear to be presumptively copyrightable.” (Id. at 20.) This
Court is not persuaded that the somewhat broader work-for-hire provision in JLM’s Employee
Handbook in effect at the time the accounts were created, covers the Disputed Accounts either. 7
While the work-for-hire list in the Employee Handbook also includes “programs, spreadsheets,
[and] databases” (Employee Handbook § 1.11), those terms are likewise references to
copyrightable material and do not appear to embrace the rights obtained when creating a social
media account, which consist principally of the ability to use the platform’s tools to display
content and communicate with others.
JLM also argues that the voluminous record evidence of Ms. Gutman’s activity
in creating and posting content to the Disputed Accounts during work hours demonstrates that
the accounts are JLM’s property because the Employee Handbook required that (i) “employees
. . . use their time during the workday solely for Company business, not personal business”
(Employee Handbook § 4.10) and (ii) that “[a]ll internet usage is limited to job-related
activities” (id. § 4.11). This evidence is also insufficient to demonstrate that the Disputed
Accounts themselves—the rights to use the Instagram and Pinterest platforms to post content
and communicate and receive information—are JLM’s property. As noted above, the Second

7

Ms. Gutman argues that the Court should not consider the Employee Handbook because
the Contract includes a merger clause. (Gutman Mem. at 14 (“JLM cannot unilaterally
enact an employee handbook to alter the terms of the parties’ contractual agreement, and
the merger/integration clause ‘precludes extrinsic proof to add to or vary’ the
agreement’s terms.” (quoting Primex Int’l Corp. v. Wal-Mart Stores, 89 N.Y.2d 594,
599-600 (1997)).) The merger clause, however, only precludes the Court from
considering pre-execution negotiations to interpret the Contract; it does not preclude the
Court from considering a written modification of an agreement or a new agreement. Cf.
Gedula 26, LLC v. Lightstone Acquisitions III LLC, 184 N.Y.S.3d 4, 6 (1st Dep’t 2023)
(“[A] merger clause will not ‘preclude a breach of contract claim based on a subsequent
additional agreement.’” (citations omitted)). The Court, therefore, considers JLM’s
arguments relating to the Employee Handbook, which JLM represents that Defendant
received and acknowledged on the day she signed the initial Contract document.

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Circuit Opinion observed that Ms. Gutman could have used her own personal property to
support JLM’s advertising efforts. (See Second Circuit Opinion at 17.) Such use would clearly
be consistent with the Employee Handbook’s requirements. But even if Ms. Gutman violated
the Employee Handbook in some way, neither it nor the Contract provides for the transfer of her
property to JLM as a consequence. The evidence regarding the creation of material posted to
the Disputed Accounts does, however, suggest strongly that JLM has legitimate claims of rights
under work-for-hire and other provisions of the Contract and Employee Handbook in content
created and posted to the Dispute Accounts by Ms. Gutman and other JLM employees in
connection with the marketing of goods sold under the Designer’s Name. 8 That said, the
Instagram and Pinterest terms of service take no position on whether the account holder owns
what is posted on the accounts; instead, the terms of service state only that the user represents
that it has rights or permission to post the material. (See docket entry nos. 484-2 (“Instagram
TOS”) at 3 (requiring users to represent and warrant that “you own the Content posted by you
on or through the Instagram Services or otherwise have the right to grant the license” to
Instagram); 490-1 (“Pinterest TOS”) at 3 (prohibiting users from posting conduct that
“infringes, misappropriates, or violates a third parties’” intellectual property rights).) For this
reason, evidence that Ms. Gutman assisted in advertising activity on the Disputed Accounts is
insufficient to carry JLM’s burden on this motion practice of showing a clear or substantial
likelihood of success on its claim of ownership of the Disputed Accounts.

8

Section 10(a) of the Contract defines the “Designer’s Name” as “‘Hayley’, ‘Paige’,
‘Hayley Paige Gutman’, ‘Hayley Gutman’, ‘Hayley Paige’ or any derivative thereof . . .
in connection with the design, manufacture, marketing and/or sale of bridal clothing,
bridal accessories and related bridal and wedding items, including any and all good will
associated therewith[.]”

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Because JLM has not pointed to evidence sufficient to establish a clear or
substantial likelihood that it owned the Disputed Accounts at their inception, JLM must locate
its claim in a chain of valid transfers in order to claim ownership of the Disputed Accounts.
(Second Circuit Opinion at 21.) This it has not done, and the record suggests that it cannot do
so. As an initial matter, Instagram’s current terms of service prohibits users from selling or
otherwise transferring any aspect of an account. (Instagram TOS at 3.) Moreover, JLM’s
argument that the Section 1.11 of the Employee Handbook contained an irrevocable assignment
of “programs” fails for the reasons stated above; moreover, the Second Circuit has already held
that the Disputed Accounts are not “Designs” created as works for hire.
Nor, in light of the analytical framework laid out in the Second Circuit Opinion,
does JLM’s evidence indicate a clear or substantial likelihood that JLM will be able to establish
that it has a superior possessory interest in the Disputed Accounts themselves. Specifically,
JLM argues that, because it owns the good will and customer lists associated with the Disputed
Accounts due to its investment in those Accounts, allowing Ms. Gutman to retain them would
constitute unjust enrichment. (JLM Mem. at 16-17.) However, JLM cites no cases, nor is the
Court aware of any, that recognize unjust enrichment as a potential source of superior
possessory rights to property within which another entity’s valuable property resides, or within
which the other entity has built goodwill. Likewise, JLM urges the Court to find that Ms.
Gutman is estopped from claiming ownership of the Disputed Accounts because JLM
reasonably relied on, and made investments in the maintenance and content of the Accounts
based on its understanding that it owned the Disputed Accounts, which in turn was based on
actions by Ms. Gutman that were consistent with her duties under her Contract, her requests for
company support of the accounts, and her references to the accounts as JLM’s or “ours”. (Id.
-- at

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17-20.) JLM’s argument fails, however, to identify “a clear and unambiguous promise” by Ms.
Gutman on which it relied; this element is required to establish promissory estoppel. Esquire
Radio & Elecs., Inc. v Montgomery Ward & Co., Inc., 804 F.2d 787, 793 (2d Cir. 1986). In any
event, because the Court is not aware of any court that has found that promissory estoppel can
create a possessory interest in property, the Court declines to do so here. (See Second Circuit
Opinion at 17 (“The Disputed Accounts should be treated in the first instance like any other
form of property.”).)
In sum, having used the framework outlined in the Second Circuit Opinion to
analyze JLM’s application for an injunction giving it control of the Disputed Accounts, the
Court concludes that JLM has failed to carry its burden of demonstrating a clear or substantial
likelihood of success in establishing that it was the original owner or transferee of the Accounts,
and thus it has failed to show a clear or substantial likelihood that it can establish a crucial
element of its conversion and trespass to chattels claims concerning the Accounts.
Paragraphs 1 and 2 of the Preliminary Injunction, as set forth in the Order dated
March 1, 2024 (docket entry no. 474) must therefore be dissolved.
The foregoing determinations concerning rights associated with ownership and
possession of the Disputed Accounts themselves are without prejudice to the parties’ positions
regarding ownership and permissible uses of the Accounts’ handles, content, “follower”
contacts and related goodwill.
Preliminary Injunction Enforcing Paragraph 10(e) of the Contract
JLM requests that the Court keep in place the preliminary injunctive relief
imposed by Paragraph 4(c) of the March 1, 2024, Order, which incorporates the obligations
imposed on Ms. Gutman by Paragraph 10(e) of the Contract. Paragraph 10(e) provides that, if

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the Company files an application to register the Trademark or
Trademarks, Employee agrees that for a period of five years following
termination of her employment, she shall not be identified to the trade or
consuming public as the designer, and her role as a designer shall not be
used to promote the sale, of any goods in competition with goods
manufactured and sold by the Company.
(Contract § 10(e).)
The Second Circuit’s determination that the Court had erred in enforcing this
provision centered on the Court’s failure to make an explicit analysis of the reasonableness,
under New York law, of the restriction, including as to its temporal and geographic scope.
(Second Circuit Opinion at 23.) Because the Second Circuit did not disturb the Court’s
conclusions regarding JLM’s sufficient showing of irreparable harm in the absence of an
injunction enforcing the provision, balance of the hardships, or public interest (see PI Order at
49-51), the Court need not reanalyze those issues here.
The Court turns now to the question of JLM’s likelihood of success in
establishing that the breadth and temporal scope of the restrictions imposed by Paragraph 10(e)
of the Contract are reasonable and therefore enforceable under New York law. Determining the
reasonableness of a covenant not to compete requires the Court to “apply a three prong test,”
assessing whether a “restraint . . . (1) is no greater than is required for the protection of the
legitimate interest of the employer, (2) does not impose undue hardship on the employee, and
(3) is not injurious to the public.” BDO Seidman v. Hirshberg, 93 N.Y.2d 382, 388-89 (1999)
(citations in original). The Second Circuit Opinion instructed the Court to consider, in
evaluating JLM’s likelihood of success on the merits, “(1) whether Paragraph 10(e)’s five-year
term is reasonable in duration; (2) whether JLM has made a sufficient showing that it has a
legitimate interest warranting enforcement of a restrictive covenant; and (3) whether its
interpretation of the prohibition in Paragraph 10(e) is reasonable in scope and not overly

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burdensome on Gutman.” (Second Circuit Opinion at 24-25 (footnotes omitted).)
Legitimacy of Interest to be Protected
JLM has demonstrated that it has at least two legitimate interests warranting
protection through enforcement of the covenant in Paragraph 10(e) of the Contract: (1) the
Company’s goodwill associated with the high-profile product lines that were built in
conjunction with Defendant during her employment around the Designer’s Name that she
transferred to JLM under the contract, and (2) its interest in a reasonable period of protection
against unfair competition by an employee whose services, including service as both designer
and public face of its main product line, were unique and extraordinary. The evidence of
collaborative sales and marketing activities during Ms. Gutman’s employment under the
Contract and the success of those efforts shows that JLM is likely to be able to establish that it
has a strong cognizable interest in enforcing the restrictive covenant because “the employer has
a legitimate interest in preventing former employees from exploiting or appropriating the
goodwill of a client or customer, which had been created and maintained at the employer’s
expense, to the employer’s competitive detriment.” BDO Seidman, 93 N.Y.2d at 392. The
evidence of record also shows that JLM is likely to be able to establish that Ms. Gutman, whose
creative talents, trademarked name and personal appeal were parlayed during the term of the
Contract into a successful and recognizable brand intimately intertwined with her image that
was JLM’s leading product line, was a unique and extraordinary employee who, unlike
anonymous designers or ordinary marketing personnel, could have an unfair competitive
advantage over JLM should she appeal to customers and prospective customers to abandon JLM
for another manufacturer in the immediate wake of the termination of her employment

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relationship with JLM.
Duration and Geographic Scope
“The ‘durational reasonableness of a non-compete agreement is judged by the
length of time for which the [legitimate interest the employer seeks to protect] will be
competitively valuable.” Flatiron Health, Inc. v. Carson, No. 19-CV-8999-VM, 2020 WL
1320867, at *22 (S.D.N.Y. Mar. 19, 2020) (quoting Estee Lauder Cos. v. Batra, 430 F. Supp. 2d
158, 180 (S.D.N.Y. 2006)).
There is no doubt that five years is a significant period of time; as Ms. Gutman
correctly points out, New York courts have often determined that non-competes of this length
are unreasonable when assessed against the facts of particular cases. See, e.g., Maxon v.
Franklin Traffic Serv., Inc., 261 A.D.2d 830, 832 (4th Dep’t 1999) (finding five-year noncompete unreasonable in duration). “The reasonableness of the clause must be measured by the
circumstances and the context in which enforcement is sought.” Bus. Intel. Servs., Inc. v.
Hudson, 580 F. Supp. 1068, 1072 (S.D.N.Y. 1984). As the Court found in granting the
modified PI:
JLM’s business model is to work with designers to “build and promote namesake
collections” . . ., and JLM adopted this approach to build multiple product lines featuring
Ms. Gutman as the “lead designer and face” of the Hayley Paige brand. . . In support of
this strategy, JLM worked “to build and promote [Ms. Gutman’s] designer persona”
including by obtaining placement for Ms. Gutman on television programming and
“magazine covers” and by “sen[ding] her as a brand representative to industry summits,
events, [and] trunk shows[.]”
(PI Order at 49 (citations omitted).) In this context, the Court concludes that five years from the
end of JLM’s employment relationship with Ms. Gutman is a reasonable amount of time, and no
greater than is necessary for JLM “to rebuild its brand, develop a new strategy and distance its
products from Ms. Gutman, whose persona was intimately tied to the eponymous brand. . . .”

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(Id.) 9 The Court concludes that Paragraph 10(e)’s five-year term is reasonable in duration. The
worldwide scope of the restriction is also reasonable because JLM’s “business is worldwide.”
Hudson, 580 F. Supp. at 1073.
Scope of Paragraph 10(e) Restriction
New York courts must also determine that a covenant not to compete “does
not impose undue hardship on the employee” in connection with an order enforcing such a
covenant. BDO Seidman, 93 N.Y.2d at 388-89. The Court concludes that the prohibition in
Paragraph 10(e) is reasonable in scope and not overly burdensome on Ms. Gutman because it
permits “Ms. Gutman the ability to continue to use her talents as an uncredited designer of
competitive goods or the (new) name and face of non-competing goods during the restricted
period.” (PI Order at 50.) Contrary to Ms. Gutman’s assertions, enforcing Paragraph 10(e)
would not “lock [Ms. Gutman] out of her industry.” (Gutman Mem. at 13.) Nor would
enforcement prevent Ms. Gutman from using her “tastes, her voice, her vision, her face, and her

9

To the extent there is any ambiguity as to whether the restrictive covenant in Paragraph
10(e) runs from the end of the Contract term, which expired on August 1, 2022, or from
the actual cessation of Ms. Gutman’s services under the Contract, it is undisputed that
Ms. Gutman has not designed products or otherwise performed work for JLM since her
resignation on December 17, 2020. Because JLM was on notice of its need to rebuild its
brand, develop a new strategy, and distance its products from Ms. Gutman on that date,
it would not be reasonable to bind Ms. Gutman to the requirements of Paragraph 10(e)
for an additional year and five months beyond the five years the parties agreed to in the
Contract. (See docket entry no. 483 (“Gutman Mem.”) at 13.) Because “[c]ourts have
the power to ‘blue pencil’—shorten or amend—restrictive covenants to make them
enforceable[,]” the Court concludes that JLM has established a likelihood of success on
the merits to the extent that it would be reasonable to enforce Paragraph 10(e) until
December 17, 2025—five years after Ms. Gutman cease work under her Contract, and
grants the request for extension of injunctive relief through that date only. Frantic, LLC
v. Konfino, No. 13-CV-4516-AT, 2013 WL 5870211, *2 (S.D.N.Y. Oct. 30, 2013); see
also Estee Lauder Co., Inc. v. Batra, 430 F. Supp. 2d 158, 181-82 (S.D.N.Y. 2006)
(shortening the term of a non-compete from twelve to five months in order to render the
clause reasonable under New York law).

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mannerisms” for purposes that are unrelated to the promotion of competing products. (Id. at
16.) Paragraph 10(e) only prohibits Ms. Gutman from (i) being identified to the trade or
consuming public as the designer of any goods in competition with goods manufactured and
sold by JLM, or (ii) using, or authorizing others to use, Ms. Gutman’s role as designer, to
promote the sale, or any goods in competition with goods manufactured and sold by JLM.
These restrictions limit Ms. Gutman’s conduct in a narrow (albeit potentially lucrative) portion
of the clothing and accessories field and are tailored to protect JLM’s goodwill in the Designer’s
Name, which Ms. Gutman assigned to JLM for commercial purposes pursuant to Paragraph
10(a-b) of the Contract.
In sum, the evidentiary record and JLM’s legal arguments are sufficient, under
the analytical framework prescribed for these determinations by the Second Circuit Opinion, to
establish JLM’s likelihood of success on the merits of its claim under Paragraph 10(e) of the
Contract. Paragraph 4(c) of the Preliminary Injunction entered on March 1, 2024, is
accordingly modified such that its duration is through December 17, 2025, the fifth anniversary
of Ms. Gutman’s resignation from her employment by JLM.
CONCLUSION
For the foregoing reasons, and those set forth in the Court’s earlier decisions and
the Second Circuit Opinion regarding the Preliminary Injunction in this action, effective
immediately, JLM is directed to provide the current username and password for each of the
Disputed Accounts, as well as any other assistance necessary to access and gain sole control
over the Disputed Accounts, to Ms. Gutman, through her counsel, by 5:00 p.m. Eastern
Standard Time, on May 15, 2024, and the Court issues the following modified Preliminary

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Injunction Order, which supersedes the order issued on March 1, 2024 (docket entry no. 474):
During the pendency of this action, Ms. Gutman, along with her officers, agents,
servants, employees, and attorneys and all other persons who are in active concert or
participation with her and them, are enjoined pursuant to Federal Rule of Civil Procedure 65
from taking any of the following actions:
1. Breaching the employment Contract, dated July 13, 2011, together with the
amendments and extensions thereto, by:
a. using, or authorizing others to use, “Hayley”, “Paige”, “Hayley Paige
Gutman”, “Hayley Gutman”, “Hayley Paige” or any derivative
thereof, including misshayleypaige (collectively the “Designer’s
Name”), trademarks in the Designer’s Name, including but not
limited to the trademarks identified at Addendum 1 hereto
(collectively, the “Trademarks”), or any confusingly similar marks or
names in trade or commerce, without the express written permission
of Plaintiff’s chief executive officer;
b. using or authorizing others to use any Designs, 10 or any of the
Trademarks or any variations, versions, representations or
confusingly similar facsimiles thereof, in trade or commerce without

10

“Designs”, as used here, means designs, drawings, notes, patterns, sketches, prototypes,
samples, improvements to existing works, and any other works conceived of or
developed by Employee in connection with her employment with Plaintiff involving
bridal clothing, bridal accessories and related bridal or wedding items, either alone or
with others, from the commencement of her employment by Plaintiff through the Term
of the Contract. The term includes but is not limited to content created or compiled for
the JLM HP Social Media Accounts by JLM or its employees (including Defendant prior
to her resignation or the end of the Contract term) or agents.

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the express written permission of Plaintiff’s chief executive officer;
and
c. through December 17, 2025, (i) being identified to the trade or
consuming public as the designer of any goods in competition with
goods manufactured and sold by JLM; or (ii) using, or authorizing
others to use, Gutman’s role as designer, to promote the sale, or any
goods in competition with goods manufactured and sold by JLM;
2. Using, or authorizing others to use, any of the Designer’s Names,
Trademarks or any confusingly similar term, name, symbol or device, or any
combination thereof, in commerce in connection with any goods or services,
including to endorse, advertise or promote the products and/or services of
herself or others directly or indirectly, including but not limited to on social
media or in television or media appearances, without the express written
permission of Plaintiff’s chief executive officer.
This case remains referred to Magistrate Judge Cave for general pretrial
management.
SO ORDERED.
Dated: New York, New York
May 8, 2024

JLM – PI REMAND ORD

/s/ Laura Taylor Swain
LAURA TAYLOR SWAIN
Chief United States District Judge

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Addendum 1

Trademark
BLUSH BY HAYLEY PAIGE
HAYLEY PAIGE
HAYLEY PAIGE
HAYLEY PAIGE + DESIGN
HAYLEY PAIGE + DESIGN
HAYLEY PAIGE
OCCASIONS
JUST GOT PAIGED
LA PETITE HAYLEY PAIGE
LA PETITE HAYLEY PAIGE
+ DESIGN
OCCASSIONS BY HAYLEY
PAIGE

JLM – PI REMAND ORD

Country
USA
USA
USA
USA
USA
USA

Registration No.
6141381
5858534
4161091
5368112
5858703
5276982

Registration Date
09/01/2020
09/10/2019
06/19/2012
01/02/2018
09/10/2019
08/29/2017

Classes
25 Int.
14 Int.
25 Int.
25 Int.
14 Int.
25 Int.

USA
USA
USA

5728141
5698436
5698444

04/16/2019
03/19/2019
03/12/2019

41 Int.
25 Int.
25 Int.

USA

4914471

03/08/2016

25 Int.

VERSION MAY 8, 2024

37