On the heels of a recent resurgence of its ugly-yet-very popular during the early 2000’s boots, Ugg Australia’s parent company, Deckers Outdoor Corporation, has filed a number of multi-million dollar patent infringement lawsuits against retailers offering “substantially similar” boots. Named in the individual lawsuits: J.C. Penney, Target, and Gina Shoes (the entity tasked with manufacturing and marketing footwear for Rampage, RocaWear, and Nicole Miller), among others.
According to the lawsuits, which Deckers filed last week in U.S. District Court for the Central District of California, a federal court in Los Angeles, the aforementioned retailers are direct competitors of the famed boot maker and are stocking boots that intentionally infringe its patent-protected boots. Deckers alleges that J.C. Penney, in particular, has infringed its design patent protected (no. D661,080) Ellee boots, which include a folded upper and a decorative buckle affixed on the side. Target and Gina Shoes, on the other hand, have taken on Ugg’s Bailey Button boots, which include a button and elastic closure, which is also protected by a design patent (no. D599,999).
Deckers further claims that such infringement, as well as the related trade dress infringement, which is listed as a claim, was done “intentionally, fraudulently, maliciously, willfully, wantonly, and oppressively, with intent to injure Deckers in its business and with conscious disregard for Deckers' rights.” The company further alleges that in “an effort to exploit Decker’s reputation in the market,” the defendants have “deprived Deckers of the right to control the use of its intellectual property.”
As a result, Deckers is asking the court in each of the lawsuits to immediately and permanently prevent the defendants from selling infringing footwear. It is also seeking a recall of the products from distributors and retailers, and damages that include a disgorgement of the profits that the defendants earned in connection with the infringing footwear, as well as compensatory damages, treble damages for willful infringement and attorneys’ fees. Each of the individual lawsuits seeks upwards of $100 million.