Paula Dorf, the famed celebrity makeup artist, has filed suit against Paula Dorf Cosmetics, LLC for trademark infringement, claiming that the company has violated its use of her name and image in company products and materials.
Dorf became a well-known makeup artist in the ’80s and ’90s, doing makeup for celebrities as well as on music videos and films. In 1995, Dorf started her own makeup line, where she sold several ‘trick’ products including her famous ‘Transformer’ liquid which transforms eye shadow into liquid eyeliner as well as the Cleanup Stick, which erases makeup mistakes.The brand and her products became loved by many, including many celebrities and was carried in over 550 locations, all high end retailers such as Saks Fifth Avenue and Sephora. However, because of supplier problems, the company was unable to supply products to the retailers which significantly affected cash flow.
The brand was then forced to file bankruptcy in 2009 as a result of these internal problems. While the company had assets of $1.5 million, it owed $3.8 million to creditors. It emerged from bankruptcy with a new partner, Global Beauty Group, a New Jersey-based distribution and fulfillment center. In the new structure, GBG invested $175,000 for a 51% stake, while Dorf and her husband, Sandy Dekovnick retained 49% of the company. Under the new joint venture, the brand was given certain rights regarding the use of Dorf’s name and image.
Dorf was still working at the company until April 2012. The lawsuit alleges that after she left, the brand “unilaterally usurped rights, such as the right to use Paula Dorf’s life story, persona and image.” The complaint alleges that the brand purportedly exercised its “repurchase rights” and revocation of Dorf’s interest in the company around June 2013, and that the LLC is now producing products at a lower quality standard than when Dorf was at the firm.
Her chief complaint is that while she was at the brand, Dorf had “control” over the quality of the products that bear her name and image, but after she left, the brand has started to produce products that are subpar to what it used to sell. The crux of the case will be determined by the joint venture agreement. The agreement will show what rights were given to the brand concerning the use of Dorf’s name and image, and what control Dorf was given over the creation of products.
So many clothing and cosmetics lines are branded around the persona of the designer or creator. Things can get tricky when the designer no longer has control over the brand but the brand is still using the name and image of the designer. The question becomes when does a designer’s image become something that is personal to them and when does it become an asset to the brand?
It will be interesting to see what the joint venture agreement states concerning these rights and what the court will determine to what extent these rights have been used by both the brand and Dorf.
Dorf is asking for damages of $1 million as well as a permanent injunction and attorney’s fees.
“Paula Dorf-Dekovnick Files Lawsuit Against Namesake Beauty Firm“, Women’s Wear Daily
“Paula Dorf To Relaunch Makeup Brand“, Arizona Foothills Magazine