Intellectual Property

Make ‘Em Say 'UGG!' -- A Fashion Industry Design Patent Dispute Sees Trial

Your favorite basic boots aren't basic when it comes to design patent law.

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As the weather goes grey and we lose degrees from the thermometer like the besotted Lost Generation scribes lost their money — slowly at first and then all at once — it is not uncommon to turn one’s thoughts toward seasonal footwear. The brutal months of winter require equally aggressive footwear and that means boots. On the east coast, those boots are rugged with thick lug soles and waterproofed leather. On the west coast, especially down south a ways, those boots are of often of the UGG variety. Soft, pliable, and made of sheepskin with a furry wool lining, these polarizing fashion statements seem custom-made for those chilly 68-degree winter afternoons in Playa del Rey.

Made infamous by early-aughts media siren Paris Hilton and often paired with leggings and an oversized T-shirt or sweater, UGG boots have somehow held on in popular culture and tweens’ online shopping carts. Even in 2018 they are still sought after and as we know that can only mean one thing: knockoffs.

An interesting wrinkle in copyright law, though, excludes the shape and silhouette of a fashion item like UGG boots from protection, leaving UGG’s proprietors, a company named Deckers Outdoor Corporation, to rely on other forms of intellectual property to dissuade the copyists.

Enter the humble design patent. Lost in the shuffle of its higher-profile brethren, this mutant combination of copyright, trade dress, and patent law rambles along in relative obscurity. Though that changed recently with the high-profile showdown between Apple and Samsung over the design of their respective handheld phones and, more important for our purposes here, when Deckers squared off at trial over this past summer against rival Romeo & Juliette.

The trial was the culmination of a long-simmering dispute that began almost a decade ago when Deckers first sued R&J over certain of R&J’s “Bearclaw” boot designs. According to Deckers, the Bearclaws, aside from being named after the most delicious of the donut family, infringed upon a number of its design patents covering certain of its UGG models. The parties reached a settlement at some point back in the early 2010s but that ceasefire was torn asunder when additional UGG-look-alike R&J boots were discovered in the market and became the subject of this most recent design patent litigation.

The question of what exactly is a design patent may have crossed your mind by now. As the most excellent Justice Sonia Sotomayor recently decreed in her opinion in the Apple case, “patent protection is available for a new, original and ornamental design for an article of manufacture.” These include, Her Honor notes, a design that “gives a peculiar or distinctive appearance to the manufacture, or article to which it may be applied, or to which it gives form.” And, rights in a design patent are infringed “if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same.”

In looking at boots, of course, there will be a number of models with similarities. And R&J based a large part of its defense on this idea, arguing to the court and jury that the UGG patents were invalid due to “obviousness.” As the trial judge noted, in considering whether a patent fails because it is too obvi, the jury must consider: (1) the scope and content of prior art; (2) the level of ordinary skill in the art; (3) the differences between the claims invention and the prior art; and (4) any objective indicia such as commercial success or long-felt need.

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The term “prior art” itself is a wily one, but, as the judge that once presided over this case noted in a pre-trial ruling, it is typically understood as the “body of knowledge publicly available to a person skilled in the particular art or field of the invention at the time the invention was made or one year prior to the filing of the patent application.” And to be considered “prior art,” the art “generally must have been patented, described in a printed publication, in public use, or offered for sale during the relevant time period.”

Here, the judge employed an advisory jury to assist with the question of obviousness and they rejected the notion that the UGG boot was mad basic (at least as that term is used in design patent litigation). While there are certainly a number of other fur-lined boots, and other sheepskin boots in similar colors and dimensions, it was not shown that any of these other boots were sufficient to make the UGG obvious and marketed or sold before the UGG boot rose to dominance and received its design patents. As the accused infringer bears the burden of proving obviousness as a basis to invalidate a patent, R&J’s failure to establish the existence of compelling prior art doomed its defense.

The jury not only rejected this defense but found R&J to have willfully infringed two of Deckers design patents for its UGG boots. While Deckers won this battle, it appears that R&J has already filed an appeal with the Ninth Circuit, and the battle for the hearts and toes of boot shoppers will continue to amble on.

Scott Alan Burroughs, Esq. practices with Doniger / Burroughs, an art law firm based in Venice, California. He represents artists and content creators of all stripes and writes and speaks regularly on copyright issues. He can be reached at [email protected], and you can follow his law firm on Instagram: @veniceartlaw.

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