Sahara Lotti had built her artificial eyelash company Lashify Inc. out of little more than her own desired aesthetic and a heating iron when one of her biggest manufacturers in South Korea turned on her.
After patenting her easily applied artificial eyelashes and tools starting in 2018, the former screenwriter learned that her manufacturer had revealed the designs to competitors in the vicious $2.48 billion artificial eyelash market.
“It actually made me ill. These guys, I thought, were my friends,” said Lotti, whose products have been adorned by Salma Hayek, Reese Witherspoon, and Nicole Kidman. “I was new to the business. I didn’t realize it was that cutthroat.”
So she pivoted. Her obsession with the heat-resistant synthetic silks that built her company was reinforced by a dedication to using patents—at least 69 in the US and more overseas—to withstand attacks from rivals ripping off her products.
Beauty innovators face challenges when protecting their IP against foreign competitors with deeper pockets, forcing companies like Lashify to get creative. Without strategic action, these small inventors risk losing their innovations to copycats who can outspend them in the market and in court.
Lashify is currently battling manufacturer Interwork Korea Co. in a New York federal court over a contract dispute. Interwork alleged in April that Lashify didn’t pay its bill. But the lash company countered, accusing the manufacturer of breaking their 2020 supply agreement by creating similar products for competitors. Lashify discovered Interwork’s alleged misdeeds through trade records in December 2021, finding the manufacturer was helping American companies such as beauty giant Kiss Products Inc.
The case remains pending. Bloomberg Law couldn’t verify if Interwork is the same manufacturer Lotti accused in interviews of stealing her IP. Interwork and its counsel didn’t respond to requests for comment.
Over nearly a decade, Lotti has turned to social media, where she’s now educating the public on patents, and sliding into the DMs of reality stars and influencers to explain how she protects her business. She’s also enlisted third-party platforms to remove infringing products online, filing at least 10 complaints against competitors in federal court since 2020 and pursing an import ban at a federal trade agency.
But even after Lashify received a $34 million jury verdict win last year against Chinese supplier Worldbeauty for manufacturing knockoffs, the company’s fight to protect IP remains an uphill battle. Lashify last month asked a Texas federal judge for a permanent injunction, saying Worldbeauty is still selling the infringing products while working to hide its principals’ assets. Worldbeauty denied the allegations and didn’t respond to a request for comment.
It can be difficult to even reach that point. Plaintiffs must find their competitors in other countries to serve them, watch to see if the defendant will appear in court, and then sometimes watch the infringer shut down operations and reopen in another name to continue their infringement.
“It’s sort of like a game of whack-a-mole,” said Staci Trager of DLA Piper.
The Knockoff Precedent
Lotti’s aggressive approach was inspired by watching what happened to another lash innovator. Katy Stoka’s experience with magnetic artificial eyelashes provided a cautionary tale that shaped Lotti’s relentless IP strategy.
Stoka invented a method for magnetic artificial eyelashes in 2016, launching One Two Cosmetics LCC and receiving accolades in the beauty industry. Her patent application was so complex that she traveled to DC to meet a patent examiner.
“I dragged her into the ladies’ room, and I gave her a little lesson on how to apply them,” Stoka said.
Stoka eventually received seven patents, but as Lotti would learn, imitators were inevitable.
Knockoffs flooded the market, some even using Stoka’s face for marketing. Despite sending more than 400 cease and desist letters, infringers persisted.
When Stoka’s company’s investors finally chose to pursue litigation, they were too late.
Relentless Strategy
Watching Stoka fail to protect her innovations convinced Lotti she needed a more aggressive approach.
Lashify went after infringers on multiple fronts, filing lawsuits against Chinese manufacturers and American competitors in federal courts and a complaint with the US International Trade Commission.
Lashify filed its ITC complaint against three Chinese manufacturers, including Worldbeauty, in September 2020, seeking an import ban on eyelash extension products it said infringed its patents.
Robert S. Katz of Banner Witcoff said complaints before the ITC allows companies to pursue multiple alleged infringers at the same time without working to consolidate multiple cases in federal court.
“If you are able to get a successful outcome you can stop the importation in one fell swoop,” Katz said.
The ITC ruled in October 2022 Lashify didn’t have sufficient domestic investments to qualify for an import ban. The Federal Circuit overturned that ruling in March, ordering the ITC to reconsider whether Lashify’s US operations meet the domestic industry requirement.
Lashify dropped its ITC investigation in August after the last remaining manufacturer involved agreed in a Texas federal court dispute to stop making infringing DIY lash kits for Lashify’s competitors.
Fashion and beauty companies often share the same manufacturers, making nondisclosure agreements essential to IP protection. Some suppliers, especially those overseas, resist signing such contracts because they view design templates and other essential product information as their own. Even if they sign, Lotti said, it may not be enough.
“I had everyone sign a million NDAs, but it doesn’t really matter,” she said. “If they are going to copy, they are going to copy.”
Sean Wooden of Katten Muchin Rosenman LLP suggests inventors should obtain patents in countries where their manufacturing occurs to protect against competitors.
Social media’s also become a powerful weapon against competitors, allowing direct engagement with consumers about knockoffs. Lotti said her videos have helped customers become “vigilantes” by learning how to spot products similar to Lashify.
“This is a new era of business, and innovation does matter,” she said.
To contact the reporter on this story:
To contact the editors responsible for this story: