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” (Allegedly People's Republic of China or other foreign jurisdictions)
  • Plaintiff’s Counsel: Greer, Burns & Crain, Ltd.
• Case Identification: 1:24-cv-03845, N.D. Ill., 05/10/2024
• Venue Allegations: Venue is asserted based on Defendants allegedly targeting consumers in the United States and Illinois through interactive e-commerce stores, offering shipping to the district, and accepting payment in U.S. dollars.
• Core Dispute: Plaintiff alleges that numerous e-commerce store operators sell footwear that infringes its U.S. design patent for a footwear upper.
• Technical Context: The dispute involves an ornamental design patent within the consumer footwear industry, where distinctive visual appearance is a significant driver of brand recognition and commercial value.
• Key Procedural History: The complaint targets a large number of unidentified defendants, a common litigation strategy employed by brand owners against networks of online sellers of allegedly counterfeit or infringing goods. The complaint alleges these defendants operate under multiple aliases to conceal their identities.

Case Timeline

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: Design patents protect ornamental appearance rather than solving a technical problem. The patent protects a new, original, and ornamental design for footwear, which the complaint frames as one of the "distinctive patented designs" associated with the UGG brand that are "broadly recognized by consumers" (Compl. ¶7).
• The Patented Solution: The patent claims "the ornamental design for a footwear upper, as shown and described" (’161 Patent, Claim). The claimed design, depicted in solid lines across seven figures, consists of an ankle-height upper with a distinct low-cut profile, a prominent collar or cuff encircling the ankle opening, a vertical seam running up the center of the heel, and a fabric pull tab integrated into the top of that heel seam (’161 Patent, FIG. 1-7). The sole of the footwear is depicted in broken lines, indicating it is not part of the claimed design (’161 Patent, Description).
• Technical Importance: The complaint alleges that UGG products embodying its distinctive designs have become "enormously popular and even iconic" and that such designs are associated by the public with the quality of the UGG brand (Compl. ¶6).

Key Claims at a Glance

• The patent asserts a single claim for the ornamental design as depicted in the drawings.
• The essential visual elements of the claimed design include:
  • The overall ornamental appearance of a low-cut footwear upper.
  • A distinct collar element around the ankle opening.
  • A vertical rear seam culminating in an integrated pull tab.
  • The specific proportions and contours of these elements as a whole, as shown in the patent figures.

III. The Accused Instrumentality

Product Identification

• The accused instrumentalities are footwear products, referred to as "Infringing Product(s)," allegedly sold by Defendants through 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 Defendants operate e-commerce stores that are designed to appear as authorized retailers to "unknowing consumers" (Compl. ¶14). The complaint further alleges that the Defendants' business model relies on selling unauthorized products that trade on the reputation and goodwill of Deckers' UGG brand (Compl. ¶3). The complaint presents several figures from the '161 patent in a table to represent the patented "UGG Design." (Compl. p. 4).

IV. Analysis of Infringement Allegations

The standard for design patent infringement is the "ordinary observer" test, which asks whether an ordinary observer, in the context of the prior art, would believe the accused design to be the same as the patented design. The complaint alleges that the accused products infringe the design claimed in the '161 patent.

D927,161 Infringement Allegations

• Identified Points of Contention:
  • Evidentiary Question: The primary question will be a visual comparison. Since Exhibit 1, which allegedly depicts an "Infringing Product," is not included with the public complaint, the court's analysis will depend on evidence produced during the case showing the specific products sold by each defendant. The core issue is whether those products are "substantially the same" in overall visual appearance as the design claimed in the '161 Patent.
  • Procedural Question: A significant hurdle for the Plaintiff may be linking each anonymous "Seller Alias" to a specific legal entity and then proving that the products sold by that specific entity infringe the patented design. The complaint alleges that Defendants are interrelated and their products come from a common source (Compl. ¶17).

V. Key Claim Terms for Construction

In design patent cases, claim construction is less about defining words and more about determining the scope of the claimed design based on the drawings.

• The Term: "The ornamental design for a footwear upper"
• Context and Importance: The scope of protection is defined by what is shown in solid lines in the patent figures. The patent explicitly states that the "broken lines in FIGS. 1-7 represent portions of the footwear that form no part of the claimed design" (’161 Patent, Description). Therefore, the infringement analysis will focus exclusively on the visual appearance of the upper, not the sole. Practitioners may focus on this distinction, as it means an identical upper on a different sole could still infringe.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A party seeking a broader scope might argue that the claim covers any footwear upper that creates the same overall visual impression as the one depicted, focusing on the combination of the low-cut profile, collar, and heel-seam-with-tab, regardless of minor variations in contour or material.
  • Evidence for a Narrower Interpretation: A party seeking a narrower scope would point to the precise shapes, proportions, and curves of the solid-line features in the drawings (’161 Patent, FIG. 1-7). They could argue that any accused product that deviates from these specific visual details is not "substantially the same" and thus does not infringe. The title itself, "FOOTWEAR UPPER," reinforces that the claim is limited to that specific component (’161 Patent, Title).

VI. Other Allegations

• Indirect Infringement: The complaint alleges Defendants are "working in active concert" and "jointly and severally" infringing the patent (Compl. ¶20). The prayer for relief also seeks to enjoin aiding and abetting of infringement (Compl., Prayer for Relief ¶1(b)). These allegations suggest a theory of joint liability among the network of sellers.
• Willful Infringement: The complaint alleges that Defendants' infringement was "willful" (Compl. ¶21). This allegation appears to be based on the assertion that Defendants operate as a knowing network of infringers, using tactics like multiple aliases and offshore accounts to evade detection and enforcement (Compl. ¶16, ¶18, ¶19).

VII. Analyst’s Conclusion: Key Questions for the Case

1. The Core Visual Test: The central substantive issue is one of visual identity: would an ordinary observer, familiar with other footwear designs, be deceived into purchasing one of the Defendants' products believing it to be the design protected by the '161 patent? The outcome will depend on a side-by-side comparison of the accused products and the patent drawings.
2. The Enforcement Challenge: A key procedural and evidentiary question is whether the Plaintiff can successfully pierce the anonymity of the "Seller Aliases" to identify the responsible parties and present evidence that each one sold products embodying a design substantially the same as the one patented.
3. Scope of an Ornamental Design: The case will likely test the boundaries of what constitutes the "overall visual impression" of the claimed design. A critical question will be how much variation an accused product can have from the patent drawings before it is no longer considered "substantially the same" in the eyes of an ordinary observer.