DCT
1:24-cv-00805
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)
- Plaintiff’s Counsel: Greer, Burns & Crain, Ltd.
- Case Identification: 1:24-cv-00805, N.D. Ill., 01/30/2024
- Venue Allegations: Venue is based on allegations that Defendants operate interactive e-commerce stores that directly target and make sales to consumers in Illinois.
- Core Dispute: Plaintiff alleges that numerous e-commerce store operators are selling footwear that infringes a U.S. design patent for an ornamental footwear upper design.
- Technical Context: The dispute is situated in the consumer footwear industry, focusing on the protectability of a specific visual design for a casual boot.
- Key Procedural History: The complaint is structured as an action against a group of unidentified defendants, alleged to be operating in concert through various online seller aliases. The complaint notes that these defendants use tactics to conceal their identities, such as providing false registration information to e-commerce platforms, and suggests they are part of a larger, interrelated network of infringers.
Case Timeline
| Date | Event |
|---|---|
| 2019-11-08 | '161 Patent Priority Date (Application Filing) |
| 2021-08-10 | '161 Patent Issue Date |
| 2024-01-30 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. D927,161 - “Footwear Upper”
- Patent Identification: U.S. Patent No. D927,161, “Footwear Upper,” issued August 10, 2021.
The Invention Explained
- Problem Addressed: Design patents protect novel, non-obvious ornamental designs for articles of manufacture. The implicit problem addressed is the need for a new and distinctive aesthetic appearance for footwear to differentiate it in the marketplace (Compl. ¶¶ 6-7).
- The Patented Solution: The patent claims the specific ornamental design for a "footwear upper," as depicted in the patent's figures ('161 Patent, Claim). The claimed design, shown in solid lines, features a low-cut ankle boot silhouette with a rounded toe, a distinct raised collar encircling the ankle opening, and a vertical seam on the heel that incorporates a pull tab ('161 Patent, Figs. 1, 5, 6). The patent explicitly disclaims the outsole of the footwear by rendering it in broken lines, indicating it does not form part of the protected design ('161 Patent, Description).
- Technical Importance: The complaint asserts that Deckers' footwear designs, including the patented "UGG Design," are iconic, broadly recognized by consumers, and associated with the quality and innovation of the UGG brand (Compl. ¶¶ 6-7).
Key Claims at a Glance
- The single claim of the D'161 patent is for "The ornamental design for a footwear upper, as shown and described" ('161 Patent, Claim).
- The scope of the claim is defined by the visual appearance of the elements depicted in solid lines in the patent's seven figures, which include:
- A low-cut bootie-style upper.
- A distinct, raised collar or cuff feature around the shaft opening.
- A vertical rear seam with an integrated pull tab.
- The overall proportions and configuration of these elements.
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are footwear products referred to as the "Infringing Product" (Compl. ¶3). These products are allegedly sold by the unidentified Defendants through e-commerce stores operating under various "Seller Aliases" on platforms including Amazon, eBay, AliExpress, Walmart, and Temu (Compl. ¶11).
Functionality and Market Context
The complaint alleges that the accused products are unauthorized footwear that embody the design patented in the '161 Patent (Compl. ¶3). The Defendants are alleged to operate e-commerce stores that are designed to appear as sophisticated, authorized retailers to unknowing consumers, often including images and content that make them difficult to distinguish from genuine sales channels (Compl. ¶14).
IV. Analysis of Infringement Allegations
The complaint does not provide a formal claim chart. The infringement theory is based on the allegation that the accused products are visually substantially the same as the patented design. The complaint provides a table containing several views of the patented design from the D'161 Patent, including perspective, side, front, rear, and top-down views (Compl. p. 4).
D'927,161 Infringement Allegations
| Claim Element (Visual Feature from D'927,161) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a footwear upper, as shown and described. | Defendants are making, using, offering for sale, selling, and/or importing... Infringing Products that infringe directly and/or indirectly the ornamental design claimed in the UGG Design. | ¶24 | col. 1:57-58 |
| The overall visual appearance of the low-cut boot upper, including its silhouette, rounded toe, and proportions as shown in the solid lines of the figures. | The complaint alleges that the "Infringing Product" embodies Deckers' patented design. | ¶3 | Figs. 1-3 |
| A distinct, raised collar feature circumscribing the ankle opening. | The complaint's general allegation of infringement encompasses all features of the patented design. | ¶24 | Figs. 1, 6 |
| A vertical rear seam culminating in a pull tab at the top of the boot shaft. | The complaint's general allegation of infringement encompasses all features of the patented design. | ¶24 | Fig. 5 |
- Identified Points of Contention:
- Scope Questions: A central question in design patent infringement is whether an ordinary observer, giving such attention as a purchaser usually gives, would be deceived into purchasing the accused article believing it to be the patented one. The analysis must focus only on the claimed "upper" (solid lines) and disregard the unclaimed "outsole" (broken lines). A dispute may arise over whether differences in the unclaimed outsole can affect the overall visual impression of the product, even if legally irrelevant to the infringement of the claimed design.
- Technical Questions: Without a side-by-side comparison in the complaint between the patented design and an exemplar accused product, a key factual question will be the degree of visual similarity. A defense may focus on any subtle differences in proportions, seam placement, material texture (if part of the design), or the shape of the pull-tab to argue that the accused products are not "substantially the same" as the patented design.
V. Key Claim Terms for Construction
In design patent cases, the "claim" is the visual drawing, so traditional term construction is rare. The central issue is the scope of the design as a whole.
- The Term: "The ornamental design for a footwear upper"
- Context and Importance: The scope of protection is defined by what is shown in solid versus broken lines in the patent drawings. Practitioners may focus on this distinction because the infringement analysis must be confined to the claimed elements (the upper). The defense may argue that because the outsole—a visually significant part of a shoe—is disclaimed, any similarity in that feature between the plaintiff's commercial product and the accused product is irrelevant, and the remaining claimed features are not similar enough to cause confusion.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim covers the design "as shown and described," suggesting the scope is the overall visual impression created by the combination of features in the drawings, not a mere checklist of elements ('161 Patent, Claim). Plaintiff may argue that the design's overall aesthetic is what is protected.
- Evidence for a Narrower Interpretation: The patent specification explicitly states: "The broken lines in FIGS. 1-7 represent portions of the footwear that form no part of the claimed design" ('161 Patent, Description). This language strictly limits the legally protected design to the upper, potentially narrowing the scope of what an ordinary observer compares during the infringement test.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendants are "working in active concert" and are "interrelated" (Compl. ¶¶ 17, 20). The prayer for relief seeks to enjoin aiding, abetting, or contributing to infringement (Compl., Prayer ¶1(b)). The factual basis for this is the alleged use of common e-commerce store templates, registration patterns, and payment methods, suggesting a coordinated operation (Compl. ¶17).
- Willful Infringement: Willfulness is explicitly alleged (Compl. ¶21). The claim is based on allegations that Defendants "knowingly and willfully" manufacture, import, and sell infringing products and engage in tactics to conceal their identities and evade enforcement, which may suggest knowledge of the infringing nature of their conduct (Compl. ¶¶ 15-16, 20).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of visual comparison: Applying the "ordinary observer" test, is the ornamental design of the accused products' uppers "substantially the same" as the design claimed in the '161 patent, such that a purchaser would be deceived? This analysis will depend heavily on the visual evidence presented for the accused products.
- A second key issue will be one of enforcement and proof: Given that the defendants are unidentified entities alleged to be operating from foreign jurisdictions, a central practical challenge will be for the plaintiff to prove the inter-relationship between the various "Seller Aliases" and to successfully enforce any resulting injunction or monetary judgment against them.
- Finally, a question of damages calculation will be prominent. Should infringement be found, a key issue will be determining the amount of the defendants' total profits to be disgorged under 35 U.S.C. § 289, a remedy specific to design patents, and the evidentiary hurdles in proving those profits from disparate and anonymous online sellers.