Legal Update: Olaplex Patent Litigation Victory
On Monday, June 11, 2018, a UK High Court Judge ruled that L’Oréal UK and its parent company, L’Oréal SA infringed an Olaplex patent by selling and using their Smartbond product. Many of our followers have asked for more information about the case, the victory, what it means for hairdressers, and what it means for Olaplex and their on-going US litigation. To help in answer your questions, below is a Q & A with Dean Christal, the CEO and Founder of Olaplex, and Tiffany Walden, Olaplex’s General Counsel.
Q: What does Olaplex have patented?
Tiffany: Olaplex has nearly a dozen patents around the world, and more than 100 additional patents pending. They cover a variety of technologies and inventions – some protecting our Olaplex products, some protecting compositions that perform similarly, and some covering new things we haven’t yet manufactured. The patent L’Oréal infringed is the use of maleic acid in bleaching mixtures to repair damage to hair.
Q: When did you first learn L’Oréal was infringing your patent?
Dean: A few months before the launch of their infringing products – we started hearing whispers in the industry that L’Oréal was going to launch three products that used maleic acid in bleach – something we had patented in the US, and had a patent pending in the UK. L’Oréal knew we had those patents, so we were shocked that they would brazenly infringe the patent. We didn’t want to get in a huge legal battle – it’s been incredibly costly and disruptive to our business and personal lives. But we didn’t have a choice. I had a phone call with Frederic Roze, the Executive Vice President of the Americas for L’Oréal; I informed him they would be infringing our patent and we would have no choice but to sue, but Frederic wasn’t interested in listening to me and ultimately they launched the infringing products.
Q: Why did you sue L’Oréal?
Dean: Truly, we felt like we didn’t have a choice. Once we informed them we had patents covering their products – and they told us they were not going to cancel the launch, we had to protect our technology and our investment. Olaplex spent millions creating and patenting our Step 1 technology – we couldn’t allow L’Oréal to steal it and then compete against us.
Tiffany: Legally, we have an obligation to enforce our patent rights. If you don’t take action when you find people infringing your rights, you are at risk to lose them. We also knew that if L’Oréal got away with patent infringement, every other manufacturer would think they could also infringe our patent.
Q: Are a lot of other people infringing your patent?
Tiffany: No. While there are a lot of knock-off products purporting to be “bond builders” – none of those products work – because they don’t use our patented chemistry. Most of the “bond builders” out there are really silicones, oils, and protein treatments – they might make the hair feel good in the short-term, but after a couple of washes, the damage becomes apparent.
Q: Was it scary for you to go up against L’Oréal – given how big and powerful they are in the industry?
Dean: The short answer is yes. From the beginning, we knew we were in the right, everyone knows that Olaplex created this category and we created the technology. L’Oréal is the biggest beauty company in the world and we knew that that they would pull all stops and spend tons of money not to get caught in their illegal acts. We didn’t want to go bankrupt protecting our intellectual property but we had no choice. In the US, they control a lot of our distribution through Salon Centric and we knew that once we sued them, we would risk our business at Salon Centric. Ultimately, I decided that the costs and risks were worth it and we needed to sue them to get L’Oréal to stop infringing.
Tiffany: At every stage of the process, we faced an uphill battle because of L’Oréal’s size and strength: we had law firms that wouldn’t work with us because they do work for L’Oréal. We had experts decline to partner with us because they rely on L’Oréal for consulting work and didn’t want to be adverse to them. A lot of times it felt – and it continues to feel – that they’re using their size and power to simply try and outspend us and force us into a position where we can no longer afford to litigate this case.
Dean: What they don’t seem to understand is that we can’t afford not to litigate this case. We’ve spent millions of dollars on this case – and we’ve had to slow down the growth of our business because of it – but if we wouldn’t have sued L’Oréal and wouldn’t have won – it would have had disastrous consequences long-term for the success of our company.
Q: What was the hardest part of the lawsuit?
Dean: Dealing with the personal attacks from their attorneys. In the UK litigation, their attorney spent hours calling me a liar and a dishonest person. He said the same thing about Dr. Pressly, one of the inventors of Olaplex, and Tracey Cunningham. To hear someone impugn your character, and to have to just sit there and listen to it- is not an easy thing.
Tiffany: Olaplex has about 4 attorneys working for us in each of our lawsuits. Combined, L’Oréal has more than twenty. As I mentioned before, I think one of their strategies is to try and overwhelm our small company by filing frivolous motions, and forcing us to spend a lot of money on legal fees. In the UK, early in the litigation they tried this strategy – they filed motions trying to dismiss L’Oréal SA (the French parent company) from the lawsuit. The day before the hearing, they withdrew the motion. The judge ordered L’Oréal to pay us nearly $70,000 for withdrawing the motion. So while their techniques aren’t always effective, it forces us to spend time and money to defend and oppose their motions and applications.
Q: Now that you’ve won, what happens next in the UK lawsuit?
Tiffany: In July, we are going to the court and asking for the court to order an injunction, award us our legal fees for winning the case, and to enjoin L’Oréal from continuing to sell the Smartbond Step 1 for use in bleach. L’Oréal has already publicly said they’re going to ask the court for permission to appeal.
Q: Can hairdressers in the UK keep using the L’Oréal Smartbond Step 1 product?
Tiffany: A judge has ruled that using Smartbond Step 1 in bleach/lightener to repair hair during the bleaching process infringes our patent. Anyone that uses Smartbond Step 1 in this way is infringing the patent – and could be liable for damages and may also be enjoined.
Dean: Olaplex supports hairdressers and we always have. We know L’Oréal is the bad-actor here, not the stylists, but if hairdressers continue to use Smartbond in a way that infringes our patent – we may be in a position where we’re forced to take legal action to get them to stop the infringement.
Q: Does the fact that the product infringes the patent mean that L’Oréal’s products are identical to Olaplex?
Tiffany: No. Olaplex owns a variety of patents that cover various inventions. Olaplex’s raw materials are far more expensive than L’Oréal’s and we believe provide a better product for stylists and colorists.
Q: Why does the judgment only mention the Smartbond product and not Redken pH Bonder or Matrix Bond Ultim8?
Tiffany: In the UK, L’Oréal sells only the Smartbond product – so that is what the Judge focused on.
Q: I know this is just a decision in the UK, does it impact the US or anywhere else in the world?
Tiffany: While the decision is not binding on a US court, we believe that a judge may consider this information when assessing the case. L’Oréal seems to agree with that logic, as they’ve cited to the UK litigation multiple times in our US proceeding.