UGG boots have been popular women’s winter wear for more than a decade. For much of that time, UGG’s parent company Decker Outdoor Corporation (DOC) has spent considerable time and effort to protect its soft, moccasin-like boot made of sheepskin with a wooly lining against cheaper knockoffs. Unfortunately, the general appearance of the UGG boots has been challenging to protect, so DOC has recently tried to become more creative in fighting off encroachment.
According to recent reports, DOC has turned to design patents, which protect the ornamental appearance of product designs. Now, DOC is once again going up against its old nemesis Romeo & Juliette (R&J), whose Bearclaw look-alike allegedly infringes a number of DOC’s design patents. The two parties settled an earlier case, but R&J has a new line that once again has DOC taking umbrage.
How design patent protects
Justice Sonia Sotomayor recently wrote an opinion on the $540 million Apple vs. Samsung patent battle where the two giants squared off over digital device designs. In a paraphrase of her opinion, the details of design patent can protect the following:
- New, original or ornamental design for article manufacturing
- A distinctive or peculiar appearance of the product
In other words, if the eye of an ordinary purchaser cannot readily tell the difference within normal amount of time, the designs are essentially the same.
R&J defense based on prior art
To avoid infringement of a design patent, the infringer can try to show that the patented design was obvious in view of prior art designs, such that the design patent is invalid. In this case, the argument was that sheepskin-lined boots were commonplace before the UGG boot patents. The jury in the case rejected this assertion and found R&J guilty of infringement of the design patent.
R&J files appeal
R&J lost the battle, but it continues to fight the war. The next step is the Ninth Circuit Court of Appeals. While many believe that R&J does not have a boot to stand on, it is always crucial for companies to defend and challenge patents or other areas of intellectual property law. Winning these cases is a huge windfall for the winning party, but new rulings also help to better define patent law issues.
If a designer or company has questions about their own designs, a smart first step is speaking with an intellectual property attorney with experience to provide knowledgeable guidance on how to address a client’s concerns.