UGG boots have been a part of the fashion landscape for longer than a decade. It has had to protect itself from infringement several times over the years, most notably against Romeo and Juliet’s (R&J) Bearclaw. UGG’s parent company Decker Outdoor Corporation (DOC) has used a series of design patents to protect its popular moccasin-like winter boot with sheepskin exterior and wool liners. The previous case was settled, but the two companies went back to court recently because of R&J’s new line of boots.
Standing on a design patent
Justice Sonia Sotomayor wrote an opinion recently on the Apple vs. Samsung battle over design patents. To sum up, a design patent protects the following:
- A distinctive or peculiar appearance
- An original, new or ornamental design for manufacturing
The rule essentially means that the average consumer must be able to tell the difference between the products without thinking too hard about it.
R&J uses prior art argument
Design patent’s strength hinges on the body of knowledge that is available to the public prior for at least one year before filing a design patent application. The current case argued that there were other boots that looked similar to the UGG elements patented by DOC. However, the jury again sided with UGG and found R&J guilty of two infringements of the patent design in the recent case.
R&J to appeal
R&J will appeal the case to the Ninth Circuit Court of Appeals. With millions of dollars resting on the ability to sell an item that is popular, it is in their interests to appeal. Just as it is in UGG’s best interests to protect its copyright and keep what it sees as knockoffs off the market.
If a designer, creator or manufacturer of a product has concerns or questions about their design, it is wise to speak with an attorney with experience handling intellectual property. Whether it is concerns about infringement or protection, attorneys can often address them before litigation even begins.