DCT
2:19-cv-10107
Deckers Outdoor Corp v. Minnetonka Moccasin Co Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Deckers Outdoor Corporation (Delaware)
- Defendant: Minnetonka Moccasin Company, Inc. (Minnesota)
- Plaintiff’s Counsel: Blakely Law Group
- Case Identification: 2:19-cv-10107, C.D. Cal., 11/26/2019
- Venue Allegations: Venue is alleged to be proper in the Central District of California because the defendant has committed acts of infringement in the district and the claims arise there.
- Core Dispute: Plaintiff alleges that Defendant’s footwear infringes a design patent and associated trade dress related to Plaintiff's "Bailey Button" boot style.
- Technical Context: The dispute concerns the ornamental design features of sheepskin-style boots, a significant segment of the casual and fashion footwear market.
- Key Procedural History: The complaint does not reference prior litigation between the parties. It does allege widespread popularity, extensive marketing, and celebrity use of its UGG® Bailey Button boot, which may be relevant to its claims of secondary meaning for the asserted trade dress and Defendant's alleged willfulness for the patent infringement claim.
Case Timeline
| Date | Event |
|---|---|
| 2008-10-27 | '999 Patent Priority Date (Application Filing) |
| 2009-09-15 | '999 Patent Issue Date |
| 2009 | Plaintiff introduced the UGG® Bailey Button boot |
| 2019-11-26 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. D599,999 - "Portion of a footwear upper"
The Invention Explained
As a design patent, the '999 Patent protects the ornamental appearance of an object, not its utilitarian function.
- Problem Addressed: Design patents do not solve technical problems; they protect a product's unique, non-functional appearance. The '999 Patent claims rights to a specific ornamental design for a boot upper.
- The Patented Solution (The Claimed Design): The patent claims the ornamental design for a portion of a footwear upper as shown in its figures ('999 Patent, Claim). The claimed design, depicted in solid lines, consists of the visual characteristics of the upper part of a boot shaft, including overlapping front and rear side panels with curved top edges, exposed fleece-type lining along the edges of the panels and the top of the boot shaft, and a button-and-loop-style closure on the side ('999 Patent, FIGS. 1-2, 6). The description clarifies that portions of the footwear shown in broken lines, such as the sole and main vamp, are for illustrative purposes only and form no part of the claimed design ('999 Patent, Description).
- Technical Importance: The complaint alleges that this particular boot design, embodied in its UGG® Bailey Button boot, achieved significant popularity and consumer recognition, cementing its status as a "high fashion luxury item" (Compl. ¶¶ 11, 21).
Key Claims at a Glance
- Design patents contain a single claim, which is for the ornamental design as shown in the drawings.
- The claim of the '999 Patent is for: "The ornamental design for a portion of a footwear upper, as shown and described" ('999 Patent, Claim).
- The key ornamental elements that constitute the design, as shown in solid lines in the patent figures, are:
- Overlapping front and rear panels on the lateral side of the boot shaft.
- Curved top edges on the overlapping panels.
- Exposed fleece-like lining visible along the top of the boot shaft and the edges of the overlapping panels.
- A single button and an elastic loop closure feature positioned on the overlapping front panel.
III. The Accused Instrumentality
Product Identification
The complaint identifies the "Accused Products" as footwear designed, manufactured, marketed, and sold by Defendant Minnetonka Moccasin Company, Inc. (Compl. ¶¶ 14-15).
Functionality and Market Context
The complaint provides an exemplar photograph of an accused boot, describing it as part of Defendant’s infringing activities (Compl. ¶ 15). The image shows a suede-style boot with an overlapping side panel, a button closure, and an exposed fleece-like lining. The complaint alleges that Defendant is a competitor that introduced the Accused Products to "exploit Deckers’ reputation in the market" established by the UGG® Bailey Button Boot (Compl. ¶¶ 16, 30). The image provided in the complaint shows a side view of a brown boot with a single button on an overlapping side flap (Compl. ¶ 15).
IV. Analysis of Infringement Allegations
Design patent infringement is determined by the "ordinary observer" test, which asks whether an ordinary observer, familiar with the prior art, would be deceived into purchasing the accused product believing it to be the patented design. The complaint alleges that the Accused Products "bear a design that is substantially similar to the '999 Patent" (Compl. ¶ 58). The core allegations can be compared as follows.
D599,999 Infringement Allegations
| Claimed Design Feature (from '999 Patent) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a portion of a footwear upper, as shown and described, comprising overlapping panels on the side of the boot shaft. | The Accused Products feature an overlapping panel on the lateral side of the boot shaft. | ¶¶ 15, 21 | '999 Patent, FIG. 2 |
| The design includes curved top edges on the overlapping panels. | The Accused Products incorporate curved top edges on their overlapping panels, similar to Plaintiff's design. | ¶¶ 15, 21 | '999 Patent, FIG. 2 |
| The design includes an exposed fleece-type lining edging the overlapping panels and the top of the boot shaft. | The Accused Products display an exposed fleece-type lining that edges the overlapping panels and the top of the boot shaft. | ¶¶ 15, 21 | '999 Patent, FIG. 1 |
| The design includes a single button and loop closure prominently featured on the lateral side of the boot shaft. | The Accused Products feature a prominent button on the lateral side of the boot shaft adjacent to the overlapping panels. | ¶¶ 15, 21 | '999 Patent, FIG. 2 |
Identified Points of Contention
- Scope Questions: A central question for the fact-finder will be whether an ordinary observer, taking into account the prior art, would find the overall ornamental appearance of the accused boot to be substantially the same as the design claimed in the '999 Patent. The analysis will focus only on the elements shown in solid lines in the patent figures.
- Technical Questions: The court will need to compare the specific visual details of the accused boot (e.g., the shape of the panels, the size and style of the button, the texture of the lining) to the patented design as a whole to determine if the resemblance is close enough to cause confusion. The complaint's allegations regarding its "Bailey Button Boot Trade Dress" rely on the same features, creating an overlap between the patent and trade dress claims (Compl. ¶ 21).
V. Key Claim Terms for Construction
In design patent litigation, the "claim" is understood to be the design itself as depicted in the patent's figures. Formal claim construction of written terms is typically not a central issue, as the dispute revolves around a comparison of the visual appearance of the claimed design and the accused product.
VI. Other Allegations
- Indirect Infringement: The complaint alleges direct infringement under 35 U.S.C. § 271 but does not include specific counts or factual allegations for indirect (induced or contributory) infringement (Compl. ¶ 58).
- Willful Infringement: The complaint alleges that Defendant's infringement was willful. It bases this allegation on the "widespread popularity and recognition of Deckers' Bailey Button boot," which allegedly gave Defendant pre-suit knowledge of Deckers' rights (Compl. ¶ 63). The complaint further alleges that Deckers marked its own products with "Pat. No. 599,999," providing constructive notice, and that Defendant "intentionally copied" the design (Compl. ¶¶ 62-64).
VII. Analyst’s Conclusion: Key Questions for the Case
- A primary issue is one of visual similarity: will an ordinary observer, taking into account the prior art, find the overall ornamental design of Defendant's boot to be substantially the same as the specific design claimed in the '999 Patent, focusing only on the features shown in solid lines?
- A key evidentiary question will concern intent and knowledge: does the evidence of the Plaintiff's market presence and product marking support the allegation that Defendant intentionally copied the patented design with pre-suit knowledge, which is a prerequisite for a finding of willful infringement and potential enhanced damages?
- Finally, the case will explore the interplay between design patent and trade dress rights, as Plaintiff asserts both forms of intellectual property protection for the same set of visual features. This raises questions about how evidence of non-functionality and secondary meaning, critical for the trade dress claim, will influence the court's perception of both the patent and trade dress analyses.