DCT
1:24-cv-00371
Deckers Outdoor Corp v. Partnerships Unincorp Associations
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Deckers Outdoor Corporation (Delaware)
- Defendant: The Partnerships and Unincorporated Associations Identified on Schedule “A” (Jurisdictions Unknown, alleged to be China or other foreign jurisdictions)
- Plaintiff’s Counsel: Greer, Burns & Crain, Ltd.
- Case Identification: 1:24-cv-00371, N.D. Ill., 01/16/2024
- Venue Allegations: Venue is asserted based on allegations that Defendants operate e-commerce stores that directly target and make sales to consumers in Illinois.
- Core Dispute: Plaintiff alleges that numerous unidentified e-commerce operators are selling footwear that infringes its design patent for a footwear upper.
- Technical Context: The dispute is in the highly competitive consumer footwear market, specifically concerning the ornamental design of premium comfort-leisure boots.
- Key Procedural History: This case is a "Schedule A" action, a common procedural posture used by brand owners against numerous, often anonymous, online sellers of allegedly counterfeit or infringing goods. The complaint alleges Defendants use false identities and multiple storefronts to evade enforcement.
Case Timeline
| Date | Event |
|---|---|
| 2019-11-08 | U.S. Patent No. D927,161 Priority Date |
| 2021-08-10 | U.S. Patent No. D927,161 Issued |
| 2024-01-16 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D927,161 - “Footwear upper,” issued August 10, 2021
The Invention Explained
- Problem Addressed: In the field of fashion and apparel, there is a constant need for new, original, and ornamental designs to distinguish products and attract consumers. The patent does not articulate a functional problem but instead provides a novel aesthetic design for footwear.
- The Patented Solution: The patent claims a specific ornamental design for a "footwear upper." The visual characteristics of the design are defined by the illustrations in the patent, showing the overall shape, proportions, and seam placements of an ankle-height boot with a distinct collar and a rear pull tab (’D927,161 Patent, Figs. 1-6). The claim explicitly excludes portions of the footwear shown in broken lines, such as the outsole, which are included only for environmental context (’D927,161 Patent, DESCRIPTION).
- Technical Importance: The claimed design provides a unique visual appearance for a boot, which is a key driver of commercial value and brand identity in the footwear industry (Compl. ¶6).
Key Claims at a Glance
- The patent contains a single claim: Claim 1.
- The claim is for "The ornamental design for a footwear upper, as shown and described" (’D927,161 Patent, CLAIM). The scope of the claim is defined by the solid lines in Figures 1-7 of the patent.
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are footwear products referred to as the "Infringing Product" (Compl. ¶3). The complaint alleges these are unauthorized and unlicensed products sold through numerous e-commerce stores operating under various "Seller Aliases" on platforms such as Amazon, eBay, AliExpress, and Temu (Compl. ¶¶3, 11).
Functionality and Market Context
- The complaint alleges the accused products are footwear that embodies the patented design (Compl. ¶¶3, 7). They are marketed and sold in a manner designed to appear to consumers as authorized UGG products or to trade on the goodwill associated with Deckers' designs (Compl. ¶14). The complaint includes a table on page 4 with images from the D927,161 patent, which it terms the "UGG Design" (Compl. p. 4; ¶7). It alleges the "Infringing Product" shown in Exhibit 1 (not attached to the provided document) infringes this design (Compl. ¶3).
IV. Analysis of Infringement Allegations
Design patent infringement is determined by the "ordinary observer" test, which asks whether an ordinary observer, in the context of the prior art, would be deceived into purchasing the accused product believing it to be the patented design. The complaint does not provide a detailed element-by-element breakdown but makes a general allegation of infringement.
D927,161 Infringement Allegations
| Claim Element (from Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a footwear upper, as shown and described. | Defendants are accused of making, using, offering for sale, and selling "Infringing Products that infringe directly and/or indirectly the ornamental design claimed in the UGG Design." | ¶24 | CLAIM; Figs. 1-7 |
- Identified Points of Contention:
- Visual Similarity: The central question will be whether the accused products are "substantially the same" in visual appearance as the design claimed in the ’D927,161 patent. This will involve a side-by-side comparison of the overall ornamental aesthetic, including the shape, configuration, and surface ornamentation. The complaint alleges infringement but does not provide images of the accused products for direct comparison in the provided document.
- Scope Questions: The patent claims only the "footwear upper," with the sole depicted in broken lines and explicitly disclaimed (’D927,161 Patent, DESCRIPTION). The infringement analysis must therefore focus solely on the visual appearance of the upper, disregarding any similarities or differences in the sole of the accused products. The complaint's visual evidence on page 4 presents multiple views of the patented design, emphasizing its overall shape, rear pull-tab, and collar details (Compl. p. 4).
V. Key Claim Terms for Construction
In design patent cases, the "claim" is understood to be the design itself as depicted in the drawings. Formal construction of written terms is generally not the central focus of the dispute. The analysis is a visual one, guided by the figures. The primary legal question is not the meaning of a word, but the overall visual impression of the design. Therefore, the dispute will likely center on the application of the "ordinary observer" test rather than the construction of a specific term.
VI. Other Allegations
- Indirect Infringement: The complaint makes a passing allegation of indirect infringement (Compl. ¶24) and aiding and abetting (Prayer for Relief, ¶1.b). However, the factual allegations primarily focus on a theory of direct infringement by the Defendants who are alleged to be jointly making, offering for sale, and selling the accused products (Compl. ¶20).
- Willful Infringement: The complaint alleges that Defendants' infringement was willful (Compl. ¶21). This allegation is based on the assertion that Defendants are part of a network of online counterfeiters who knowingly and intentionally use false identities and other tactics to conceal their infringing activities and evade enforcement efforts (Compl. ¶¶15, 16, 18).
VII. Analyst’s Conclusion: Key Questions for the Case
- Identity and Joinder: A threshold issue, characteristic of "Schedule A" cases, will be whether Plaintiff can produce sufficient evidence to establish that the various anonymous "Seller Aliases" are in fact operated by an interrelated group of defendants who can be properly joined in a single action and held collectively liable.
- The "Ordinary Observer" Test: The substantive core of the case will be a question of visual comparison: would an ordinary observer, familiar with the prior art in footwear, be deceived by the overall visual appearance of the accused products into believing they are the same as Deckers' patented design? The outcome will depend on a holistic comparison of the designs, not on minor differences.
- Remedy Enforcement: Assuming Plaintiff prevails, a key practical question will be one of enforceability: can the court's orders, including potential injunctions and asset restraints, be effectively enforced against defendants who are alleged to be foreign entities operating through ephemeral online storefronts and offshore financial accounts? (Compl. ¶19).