Deckers Outdoor Corporation v. Last Brand, Inc.

Background

Deckers designs and markets footwear, including products under the UGG brand. Quince offered three relevant products for sale through its website. Deckers alleged that those products infringed three unregistered trade dresses—the Classic Ultra Mini, Bailey Button Boot, and Tasman trade dresses—and U.S. Design Patent No. D927,161. Deckers’s amended complaint asserted federal trade-dress claims under the Lanham Act, California trade-dress claims, unfair-competition claims, and a patent-infringement claim.

Deckers moved for summary judgment on its federal and state trade-dress infringement claims. Quince moved for partial summary judgment, arguing that the Mini and Tasman trade dresses were generic, that related unfair-competition claims failed, that the design patent was invalid, and that Deckers could not pursue its lost-profits damages theory.

Deckers’s Motion

The court denied Deckers’s motion for summary judgment. To obtain protection for an unregistered trade dress, Deckers had to establish that the design was nonfunctional, had acquired secondary meaning, and was likely to cause confusion. The court focused on functionality, which can be utilitarian or aesthetic. Quince presented expert evidence and other facts supporting its argument that features of the products affected their cost or quality. The court concluded that those facts created a genuine dispute for trial about utilitarian functionality. Deckers also did not address aesthetic functionality sufficiently to carry its burden at summary judgment.

Because the parties agreed that the state-law trade-dress standard was substantially the same as the federal standard, the court also denied Deckers’s motion on the related state trade-dress and unfair-competition claims.

Quince’s Trade-Dress Arguments

The court granted Quince’s motion for summary judgment on its genericness defenses to Deckers’s trade-dress claims involving the Mini and Tasman trade dresses. A generic trade dress is not protected by the Lanham Act. The court considered Quince’s evidence of competitors selling similar ankle-high sheepskin boots and similar moccasin or clog slippers. It concluded that Deckers did not carry its burden of proving that the Mini and Tasman trade dresses were nongeneric.

The court also granted Quince summary judgment on the related state trade-dress infringement and unfair-competition claims because those claims were based on the same trade-dress allegations.

Patent-Infringement Motion

The court denied Quince’s motion for summary judgment on the patent-infringement claim. Quince argued that the design patent was invalid because it was primarily functional, indefinite, and non-enabling. The court found that Quince’s treatment of functionality did not satisfy the clear-and-convincing-evidence burden required to overcome the patent’s presumption of validity.

The court also rejected Quince’s indefiniteness argument. Although the patent drawings used lines that experts said could represent different features and contained other alleged inconsistencies, the court was not clearly convinced that the drawings prevented a reasonably skilled boot designer or manufacturer from determining the overall appearance of the claimed design. The court further concluded that Quince had not shown why a formal, detailed verbal claim construction was required.

Lost-Profits Damages

The court granted Quince’s motion for summary judgment on Deckers’s lost-profits theory for patent infringement. Deckers did not contest Quince’s argument that Deckers first identified lost profits as a damages theory in its opening expert report. The court therefore precluded Deckers from pursuing lost profits for the patent-infringement claim.

Disposition

The court denied Deckers’s motion for summary judgment. It granted in part Quince’s motion for partial summary judgment as to the trade-dress infringement claims and lost-profits theory of damages, and denied Quince’s motion for summary judgment as to the patent-infringement claim.