DCT
2:20-cv-01079
Deckers Outdoor Corp v. Romeo Juliette Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Deckers Outdoor Corporation (Delaware)
- Defendant: Romeo & Juliette, Inc. (California); Thomas Romeo (individual)
- Plaintiff’s Counsel: Blakely Law Group
- Case Identification: 2:20-cv-01079, C.D. Cal., 02/03/2020
- Venue Allegations: Venue is alleged to be proper in the Central District of California because Defendants are incorporated, domiciled, or conduct business within the district, and the alleged infringing acts occurred there, causing injury to the Plaintiff.
- Core Dispute: Plaintiff alleges that footwear sold by Defendants under the "BearPaw" and "Attix" labels infringes a design patent covering the ornamental features of Plaintiff's UGG® brand "Bailey Button Boot."
- Technical Context: The dispute is in the fashion footwear sector, where the ornamental appearance and brand recognition of a product, such as the UGG® boot, are significant drivers of commercial value.
- Key Procedural History: The complaint alleges that Plaintiff has marked substantially all footwear products embodying the patented design in compliance with 35 U.S.C. § 287. It does not mention any prior litigation or post-grant proceedings involving the patent-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 2008-10-27 | D599,999 Patent Priority Date (Application Filing) |
| 2009-09-15 | D599999 Patent Issue Date |
| 2020-02-03 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. D599,999 - "Portion of a Footwear Upper"
- Patent Identification: U.S. Design Patent No. D599,999, titled "Portion of a Footwear Upper", issued September 15, 2009 (’999 Patent).
The Invention Explained
- Problem Addressed: Design patents protect the ornamental appearance of an article of manufacture rather than a functional solution to a technical problem. The objective is to create a new, original, and non-obvious aesthetic design for an article.
- The Patented Solution: The ’999 Patent claims the specific ornamental design for a "portion of a footwear upper" (Compl., Ex. A, p. 11). The design, as depicted in solid lines in the patent figures, consists of a mid-calf boot upper featuring an outer side placket that opens and is secured by a single, prominent button-and-loop closure. Key visual elements include the shape of the side opening, the exposed fleece or shearling trim along the top-line and the edge of the placket, and the specific proportions of these features (D599,999 Patent, FIGs. 1-2). The broken lines in the figures, such as those depicting the sole, explicitly denote subject matter that is not part of the claimed design (D599,999 Patent, col. 2:19-22).
- Technical Importance: The complaint alleges this design, embodied in the "Bailey Button Boot," is part of the UGG® brand, which has achieved an "overwhelming level of popularity" and is recognized as a "luxury brand" (Compl. ¶¶ 10, 23).
Key Claims at a Glance
- Design patents contain a single claim. The asserted claim is: "The ornamental design for a portion of a footwear upper, as shown and described."
- The essential elements of the claim are the visual characteristics of the boot upper depicted in the solid lines of Figures 1 through 7, including:
- The overall shape and height of the boot shaft.
- The side placket with its specific curvature.
- A single button-and-loop closure system.
- Exposed trim along the upper opening and side placket.
III. The Accused Instrumentality
Product Identification
The complaint identifies footwear sold by Defendants under the "BearPaw" and "Attix" labels as the Accused Products (Compl. ¶¶ 9, 13). A specific example is pictured and identified as "Defendants' Infringing Boot" (Compl. p. 5).
Functionality and Market Context
The complaint alleges that the Accused Products are direct competitors that incorporate a design "substantially similar" to the patented design (Compl. ¶¶ 16, 25). The core accused functionality is the ornamental appearance of the boots. The Plaintiff alleges that Defendants introduced these products in an "effort to exploit Deckers' reputation in the market established through its patented UGG® designs" (Compl. ¶ 16).
IV. Analysis of Infringement Allegations
The infringement test for a design patent is 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 overall appearance of the Accused Products is "substantially the same" as the patented design (Compl. ¶ 19). The complaint provides a visual comparison of a line drawing from the patent, a photograph of Plaintiff's UGG® Bailey Button Boot, and a photograph of "Defendants' Infringing Boot" (Compl. p. 5).
D599,999 Infringement Allegations
| Claim Element (from the design "as shown") | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design as a whole | The overall visual appearance of the accused boot is alleged to be substantially the same as the claimed design in the '999 Patent. | ¶19, ¶20 | col. 2:1-3 |
| Side placket with button-and-loop closure | The accused boot incorporates a side placket with a single button and an elastic loop closure, mimicking the patented design's key feature. | ¶25 (image) | col. 2:7 |
| Exposed trim along top-line and placket | The accused boot features exposed fleece-like trim along its top opening and the edge of the side placket, similar to the patented design. | ¶25 (image) | col. 2:6, col. 2:11 |
Identified Points of Contention
- Scope Questions: A central question will be how the fact-finder applies the "ordinary observer" test to a design for a portion of an article. The analysis should, in principle, disregard the unclaimed elements shown in broken lines (e.g., the sole). However, parties may dispute whether an ordinary observer can realistically separate the claimed upper from the unclaimed sole when perceiving the product's overall appearance.
- Technical Questions: The analysis will focus on visual, not technical, comparisons. A key question is whether any minor differences in the proportions, the shape of the placket's curve, the style of the button, or the texture of the materials are sufficient to differentiate the designs in the mind of an ordinary observer, or if the overall commercial impression remains substantially the same.
V. Key Claim Terms for Construction
In design patent litigation, formal claim construction is rare, as the figures themselves define the claim. However, the scope of what is claimed versus unclaimed is a critical determination.
- The Term: "portion of a footwear upper" (as defined by the solid vs. broken lines in the drawings)
- Context and Importance: The distinction between the claimed subject matter (solid lines) and the unclaimed environment (broken lines) is fundamental to the infringement analysis. Practitioners may focus on this distinction because it dictates what features the "ordinary observer" is supposed to compare. The outcome of the case may depend on whether the comparison is strictly limited to the claimed "portion" or considers the overall product as sold.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation (focus on the claimed portion): The patent title, "Portion of a Footwear Upper", and the explicit disclaimer language in the specification support an interpretation where infringement is determined by comparing only the claimed features of the upper, regardless of the style of the unclaimed sole or other elements. The specification states, "The broken lines in FIGS. 1-7 represent portions of the footwear that form no part of the claimed design" (’999 Patent, col. 2:19-21).
- Evidence for a Narrower Interpretation (focus on overall appearance): A defendant may argue that an ordinary observer does not dissect a product into claimed and unclaimed parts, but rather perceives the design as a whole. Therefore, differences in the unclaimed portions (e.g., a distinctively different sole on the accused product) could prevent the overall appearances from being "substantially the same," even if the claimed portions are similar.
VI. Other Allegations
- Indirect Infringement: The complaint does not allege indirect infringement.
- Willful Infringement: The complaint alleges willful infringement based on several grounds. It asserts that Defendants had "pre-suit knowledge" of the ’999 Patent due to the widespread popularity of Deckers' "Bailey Button Boot" and because Deckers marked its products with the patent number (Compl. ¶ 30). The complaint further alleges that Defendants acted in "bad faith," "intended to copy" the design, and that their infringing acts were "intentional, and deliberate" (Compl. ¶¶ 21, 26, 31).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of visual comparison: In the eye of an ordinary observer, is the ornamental design of the accused boot's upper "substantially the same" as the design claimed in the ’999 Patent? The case will likely turn on whether alleged subtle differences in shape, proportion, or materials are sufficient to distinguish the two designs, or if the overall aesthetic is legally equivalent.
- A second central question will be one of intent: Can Deckers prove its allegation that Defendants had pre-suit knowledge of the ’999 Patent and intentionally copied the protected design? The evidence regarding product marking, the commercial success of the UGG® boot, and the degree of similarity between the products will be critical to resolving the claim for willful infringement and potential enhanced damages.