By David M. Longo, Ph.D.
| February 16, 2018
A few years ago, I wrote an article (available here) about Deckers’ mixed success in a 2014 lawsuit against retailers JC Penney, Wal-Mart, Sears, and Dreams Footwear, for design patent infringement, trade dress infringement, and unfair competition, among other asserted causes of action, in the U.S. District Court, Central District of California. Since then, Deckers has tangled its laces with many other defendants over similar issues—the majority of which were before the same court.

Well, Deckers hiked back to court on Valentine’s Day to profess that there is no love for those who might tread on their design patents. Deckers laced up another five pronged Complaint—this time against Reliable Knitting Works, Wal-Mart Stores, Inc., and 10 other unnamed defendants—and filed suit in the Central District of California. See Deckers Outdoor Corp. v. Reliable Knitting Works and Wal-Mart Stores, Inc., C.D. Cal., Case No. 2:18-cv-01217 (Feb. 14, 2018).

For those not familiar with the high-stepping and seemingly fickle world of the U.S. footwear market, Deckers is known for its famous UGG® sheepskin and suede boots, among other products, sold throughout the U.S. As Deckers tells the story, its UGG® line of boots launched into low-earth orbit after being featured on Oprah Winfrey’s television show 18 years ago, when Oprah supposedly “emphatically declared … how much she ‘LOOOOOVES her UGG boots.’” Complaint, Doc. 1, ¶ 11. Many other well-heeled celebrities embraced the boots and were photographed wearing them. Branded with this mark of fashion approval, Deckers continues to keep a close eye on those who attempt to walk all over their intellectual property.

In this case, Deckers put its foot down on Reliable Knitting Works for allegedly selling a line of MUK LUKS® footwear that it believes is very similar to its Bailey Button boots and infringes U.S. Design Patent No. 599,999. Deckers didn’t pussyfoot around with Wal-Mart either, also accusing it of selling footwear that infringes the ’999 patent. (Notably, the ’999 patent was also asserted in the 2014 lawsuit, in which Wal-Mart was one of the named defendants.)

The heart and sole of the matter, according to Deckers, is that:
[g]iven the widespread popularity and recognition of Deckers’ Bailey Button boot and the patent notice provided on the products themselves, Deckers avers and hereon alleges that Defendants had pre-suit knowledge of Deckers’ rights to the ‘999 Patent and intentionally copied said design on their own footwear products in an effort to pass them off as if they originated, are associated with, are affiliated with, are sponsored by, are authorized by, and/or are approved by Deckers. Indeed, Deckers has previously filed suit against Defendant Wal-Mart for infringement of the ‘999 Patent and Bailey Button Boot Trade Dress. Complaint, Doc. 1, ¶ 52.

The following table illustrates a comparison of some drawings from the ’999 patent, representative UGG® boots (reproduced from the Complaint), accused MUK LUKS® footwear (reproduced from the Complaint), and other MUK LUKS® footwear (reproduced from www.walmart.com). Notably, the accused MUK LUKS® footwear depicted in the complaint does not appear to be available on Wal-Mart’s website, but does appear on other websites. Perhaps Deckers is tip-toeing around the possibility of amending the Complaint to identify one or more of the 10 unnamed defendants.

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 In the allegations arching over all the claims for relief, Deckers welts the Defendants’ allegedly “infringing acts [as being] without Deckers’ permission or authority and [being] in total disregard of Deckers’ right to control its intellectual property.” Complaint, Doc. 1, ¶ 48.

Regarding the ’999 patent, Deckers seeks injunctive relief and compensatory damages, including Defendants’ profits under 35 U.S.C. § 289, as well as “any other damages as appropriate pursuant to 35 U.S.C. § 284.” Complaint, Doc. 1, ¶ 54. Not to skip over the possibility of recovering additional damages, Deckers holds Defendants’ feet to the fire by asserting that it “marks all footwear products embodying the design of the ‘999 Patent with “Pat. No. 599,999”on a product label in compliance with 35 U.S.C. § 287” (the patent marking statute). Complaint, Doc. 1, ¶ 51. For further reference, see Tiny Print, Big Money: Using Patent Marking to Advantage (July 6, 2017).

And, not to be caught flat-footed on its prayer for trade dress relief, Deckers avoided a misstep by pointing out that “Bailey Button Boot Trade Dress … is non-functional in its entirety, visually distinctive, and is unique in the footwear industry.” See Complaint, Doc. 1, ¶ 23.

Given that the outcome of the 2014 lawsuit was mixed for Deckers, perhaps Deckers will seek leave to amend its Complaint to provide additional specificity and possibly name additional defendants. As Deckers continues its stride through the litigation landscape, we will continue to watch the footprints left behind as this case evolves.
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