Deckers v. Walmart - Complaint

Case 2:20-cv-09521 Document 1 Filed 10/16/20 Page 1 of 19 Page ID #:1
1 Brent H. Blakely (SBN 157292)

bblakely@blakelylawgroup.com
2 Mark S. Zhai (SBN 287988)
mzhai@blakelylawgroup.com
3 Colby A. Meagle (SBN 328594)
cmeagle@blakelylawgroup.com
4 BLAKELY LAW GROUP
1334 Parkview Avenue, Suite 280
5 Manhattan Beach, California 90266
Telephone: (310) 546-7400
6 Facsimile: (310) 546-7401
7 Attorneys for Plaintiff
Deckers Outdoor Corporation
8
9 UNITED STATES DISTRICT COURT
10 CENTRAL DISTRICT OF CALIFORNIA
11
DECKERS OUTDOOR ) CASE NO.:
12 CORPORATION, a Delaware )
Corporation, ) COMPLAINT FOR DAMAGES AND
13 ) EQUITABLE RELIEF:
Plaintiff, )
14 ) 1. TRADE DRESS INFRINGEMENT
) UNDER THE LANHAM ACT
15 v. )
) 2. TRADE DRESS INFRINGEMENT
16 ) UNDER CALIFORNIA COMMON
WAL-MART STORES, INC., a ) LAW
17 Delaware Corporation; and DOES 1-10, )
inclusive, ) 3. UNFAIR COMPETITION IN
18 ) VIOLATION OF CAL. BUS. &
) PROF. CODE § 17200 et seq.
19 Defendants. )
) 4. UNFAIR COMPETITION UNDER
20 ) CALIFORNIA COMMON LAW
)
21 ) 5. PATENT INFRINGEMENT OF
) U.S. PAT. NO. D866,941
22 )
)
23 ) JURY TRIAL DEMANDED
24
25 Plaintiff Deckers Outdoor Corporation (“Deckers” or “Plaintiff”) for its
26 Complaint against Defendant Wal-Mart Stores, Inc. (“Wal-Mart”) and DOES 1-
27 10 (collectively “Defendants”) alleges as follows:
28
1
COMPLAINT FOR DAMAGES AND EQUITABLE RELIEF
1 JURISDICTION AND VENUE

2 1. This action arises out of Defendants’ complicit and unlawful acts
3 constituting trade dress infringement and unfair competition in violation of the
4 Lanham Trademark Act of 1946, 15 U.S.C. § 1051, et seq. (the “Lanham Act”), patent
5 infringement arising under the patent laws of the United States, 35 U.S.C. § 1, et seq.
6 and violations of statutory and common law of the state of California.
7 2. This Court has subject matter jurisdiction over the federal claims asserted
8 in this action under 28 U.S.C. §§ 1331 and 1338(a) and supplemental jurisdiction over
9 Plaintiff’s state law claims pursuant to 28 U.S.C. § 1367(a) because they are so related
10 to the federal claims that they form part of the same case or controversy.
11 3. This Court has personal jurisdiction over Defendants because Defendants
12 conduct continuous and systematic business in this district, placed infringing products
13 in the stream of commerce directed to residents of this district, derived commercial
14 benefits from the sale of infringing products and caused injuries to Plaintiff within the
15 Central District of California.
16 4. Venue is proper under 28 U.S.C. §§ 1391(b)-(c) because a substantial
17 part of the events or omissions giving rise to the claims alleged occurred in this
18 judicial district and Plaintiff is located and has been injured in this judicial district,
19 and 28 U.S.C. § 1400(b) because Defendants committed acts of infringement in this
20 judicial district.
21 THE PARTIES
22 5. Plaintiff Deckers Outdoor Corporation is a corporation organized and
23 existing under the laws of the state of Delaware with an office and principal place of
24 business located in Goleta, California. Deckers designs and markets footwear
25 products under a number of well-known brands, including UGG® products covered
26 by the intellectual property asserted in this Complaint.
27 6. Upon information and belief, Defendant Wal-Mart Stores, Inc. (“Wal-
28 Mart”) is a corporation organized and existing under the laws of the state of Delaware
2
1 and a registered foreign entity doing business in the state of California, with an office
2 and principal place of business located at 702 South West 8th Street, Bentonville,
3 Arkansas, 72716.
4 7. Deckers is informed and believes that, together with Wal-Mart, other
5 individuals and entities currently named as DOES 1-10 may also be responsible in one
6 manner or another for the wrongs alleged herein, in that at all relevant times, each one
7 (including Wal-Mart) was the agent and servant of the others and acting within the
8 course and scope of said agency and employment. These other individuals and entities
9 are sued under fictitious names DOES 1-10 because their true names and capacities
10 are currently unknown to Deckers. Deckers will seek leave to amend this Complaint
11 when the true names and capacities of DOES 1-10 are ascertained.
12 ALLEGATIONS COMMON TO ALL CAUSES OF ACTION
13 A. Deckers’ UGG® Brand
14 8. Deckers has been engaged in the design, distribution, marketing, offering
15 for sale, and sale of footwear since 1975. Deckers owns and markets its footwear
16 products under several distinctive trademarked brands, including UGG®,
17 Koolaburra®, Teva®, Sanuk®, and Hoka One One®.
18 9. Deckers’ UGG® brand is one of the most well-recognized premium
19 comfort-leisure shoe brands in the United States. Since 1979, when the UGG® brand
20 was founded, the popularity of UGG® footwear has steadily grown in the U.S. and
21 around the world. UGG® footwear has been and remains highly coveted today by
22 consumers as one of the most popular and recognizable symbols of luxury and style.
23 10. For example, in 2000, UGG® boots were featured on Oprah’s Favorite
24 Things® where Oprah emphatically declared on national television how much she
25 “LOOOOOVES her UGG boots.” Since then, the popularity of UGG® footwear has
26 grown exponentially, with celebrities such as Kate Hudson, Sarah Jessica Parker, and
27 Tom Brady among a myriad of others regularly seen wearing UGG® footwear,
28 including UGG® Fluff Yeah Slides.
3
1 11. The world-wide recognition as a “premium” brand and the overwhelming

2 popularity of the UGG® brand is due to Deckers’ continuous commitment to quality
3 and excellence. Today, Deckers’ footwear products under the UGG® brand are
4 widely available and sold to consumers in every state, including California, through
5 UGG® Concept Stores, authorized brick-and-mortar retailers, as well as on the
6 internet at www.ugg.com.
7 B. Defendants’ Infringing Activities
8 12. This lawsuit arises from Defendants’ design, manufacture, importation,
9 distribution, advertisement, marketing, offering for sale, and sale in the U.S. of certain
10 footwear products that infringe upon Deckers’ “Fluff Yeah Trade Dress” and U.S. Pat.
11 No. D866,941 (the “Accused Products”).
12 13. Upon information and belief, Defendant Wal-Mart Stores, Inc. (“Wal-
13 Mart”) is engaged in the retail sale of a wide range of apparel through its “brick and
14 mortar” retail stores located nationwide, including stores located within this judicial
15 district, as well as through its website (www.walmart.com) that is accessible to
16 customers nationwide, including to those within this judicial district.
17 14. Upon information and belief, Wal-Mart is a competitor of Deckers, and
18 Defendants introduced the Accused Products into the stream of commerce in an effort
19 to exploit Deckers’ goodwill and the reputation of the UGG® Fluff Yeah Slide.
20 15. Deckers has not granted Defendants a license to practice nor given
21 Defendants any form of permission to use Deckers’ trademarks, trade dresses, or
22 patents, including Deckers’ Fluff Yeah Trade Dress and U.S. Pat. No. D866,941.
23 16. Upon information and belief, Defendants imported into the U.S.,
24 advertised, marketed, offered for sale, and/or sold the Accused Products through Wal-
25 Mart’s retail stores and its website (www.walmart.com) to consumers nationwide,
26 including consumers located within this judicial district.
27 17. Upon information and belief, Defendants may have sold additional
28 products that infringe upon Deckers’ design patents and trade dresses. Deckers will
4
1 seek leave to amend as additional information becomes available through discovery.

2 18. Upon information and belief, Defendants have acted in bad faith and
3 Defendants’ unlawful acts have misled and confused, and were intended to cause
4 confusion, or to cause mistake, or to deceive consumers as to the affiliation,
5 connection, or association of the Accused Products with Deckers, and/or the origin,
6 sponsorship, or approval of the Accused Products by Deckers.
7 FIRST CLAIM FOR RELIEF
8 (Trade Dress Infringement - 15 U.S.C. § 1125(a))
9 19. Deckers incorporates by reference each and every one of the preceding
10 paragraphs as though fully set forth herein.
11 20. In 2018, Deckers introduced the UGG® Fluff Yeah Slide, marketed and
12 featuring the design elements protected under the “Fluff Yeah Trade Dress.” The
13 Fluff Yeah Trade Dress is unique and inherently distinctive, and comprised of the
14 following non-functional elements:
15 a. A slipper and sandal combined into a statement shoe made famous
16 by the UGG® brand;
17 b. A platform, sling back slide;
18 c. A platform sole with a furry footbed and furry perimeter sides;
19 d. A wide vamp having a furry exterior;
20 e. An open toe; and
21 f. An elastic heel strap extending from one side of the vamp to the
22 other.
23 21. The Fluff Yeah Trade Dress, which is a composite of the above-
24 referenced features, is non-functional in its entirety, visually distinctive, and unique in
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1 the footwear industry; examples of its distinctive appearance as a whole are shown in
2 the photographs below:
3 22. The design of the Fluff Yeah Trade Dress is neither essential to its use or
4 purpose, nor does it affect the cost or quality of the shoe. There are numerous other
5 designs available that are equally feasible and efficient, none of which necessitate
6 copying or imitating the Fluff Yeah Trade Dress. The combination of features
7 comprising the Fluff Yeah Trade Dress provides no cost advantages to the
8 manufacturer or utilitarian advantages to the consumer. These features, in
9 combination, serve only to render UGG® Fluff Yeah Slides, the embodiment of the
10 Fluff Yeah Trade Dress, as a distinct product originating solely from Deckers.
11 23. UGG® Fluff Yeah Slides, the embodiment of the Fluff Yeah Trade
12 Dress, is one of the most well-recognized and commercially successful styles of
13 UGG® brand of footwear products, having been featured in many of Deckers’
14 advertising and promotional materials as well as in various trade publications. UGG®
15 Fluff Yeah Slides have received a large volume of unsolicited media attention, for
16 example, through various celebrities seen wearing UGG® Fluff Yeah Slides and
17 graced the pages of many popular magazines nationwide and internationally.
18 24. Deckers has spent substantial time, effort, and money in designing,
19 developing, advertising, promoting, and marketing the UGG® brand and its line of
20 footwear embodying the Fluff Yeah Trade Dress. Deckers spends millions of dollars
21 annually on advertising of UGG® products, including footwear embodying the Fluff
22 Yeah Trade Dress.
23 25. Due to its long use, extensive sales, and significant advertising and
24 promotional activities, Deckers’ Fluff Yeah Trade Dress has achieved widespread
25 acceptance and recognition among the consuming public and trade throughout the
26 United States. Indeed, Deckers has sold millions of dollars’ worth of UGG® Fluff
27 Yeah Slides, the embodiment of the Fluff Yeah Trade Dress. Accordingly, the Fluff
28 Yeah Trade Dress has achieved a high degree of consumer recognition and secondary
6
1 meaning, which serves to identify Deckers as the exclusive source of footwear

2 featuring said trade dress.
3 26. Upon information and belief, Defendants are competitors of Deckers and
4 Defendants introduced Accused Products into the stream of commerce in an effort to
5 exploit Deckers’ goodwill and the reputation of the UGG® Fluff Yeah Slide.
6 27. The Accused Products manufactured, imported, distributed, advertised,
7 offered for sale, and/or sold by Defendants bear confusingly similar reproductions of
8 the Fluff Yeah Trade Dress, such as to cause a likelihood of confusion as to the
9 source, sponsorship or approval by Deckers of the Accused Products.
10 28. Defendants’ use of the Fluff Yeah Trade Dress is without Deckers’
11 permission or authorization, and in total disregard of Deckers’ rights to control its
12 intellectual property. There are numerous other shoe designs in the footwear industry,
13 none of which necessitate copying or imitating the Fluff Yeah Trade Dress.
14 29. Defendants’ use of the Fluff Yeah Trade Dress is likely to lead to and
15 result in confusion, mistake or deception, and is likely to cause the public to believe
16 that Accused Products are produced, sponsored, authorized, or licensed by or are
17 otherwise connected or affiliated with Deckers.
18 30. As a direct and proximate result of the foregoing acts, Deckers has
19 suffered and will continue to suffer significant injuries in an amount to be determined
20 at trial. Deckers is entitled to recover all damages, including attorneys’ fees, that it
21 has sustained and will sustain, and all gains, profits and advantages obtained by
22 Defendants as a result of its infringing acts.
23 31. Furthermore, unless Defendants’ unlawful acts are enjoined by this
24 Court, there is no adequate remedy at law that can fully compensate Deckers for the
25 harm caused by Defendants’ infringement, which is ongoing. Accordingly, Deckers is
26 entitled to injunctive relief prohibiting Defendants from continuing to infringe the
27 Fluff Yeah Trade Dress, or any designs confusingly similar thereto.
28 ///
7
1 SECOND CLAIM FOR RELIEF

2 (Trade Dress Infringement – California Common Law)
5 33. Defendants’ infringement of the Fluff Yeah Trade Dress also constitutes
6 trade dress infringement under common law of the state of California.
7 34. The Accused Products manufactured, imported, distributed, advertised,
8 offered for sale, and/or sold by Defendants bear confusingly similar reproductions of
9 the Fluff Yeah Trade Dress, such as to cause a likelihood of confusion as to the
10 source, sponsorship or approval by Deckers of the Accused Products. Defendants’
11 unauthorized use of the Fluff Yeah Trade Dress has caused and is likely to cause
12 confusion as to the source of Accused Products among consumers.
15 at trial. Deckers is entitled to recover all damages, including attorneys’ fees, that it
16 has sustained on account of Defendants’ infringement, and all gains, profits and
17 advantages obtained by Defendants as a result of its unlawful acts.
18 36. Defendants’ unlawful acts were willful, deliberate, and intended to cause
19 confusion among the public, taken in reckless disregard of Deckers’ rights. As such,
20 an award of exemplary and punitive damages is necessary in an amount sufficient to
21 deter similar misconduct in the future.
24 damages caused by Defendants’ infringement, which is ongoing. Accordingly,
25 Deckers is entitled to injunctive relief prohibiting Defendants from continuing to
26 infringe the Fluff Yeah Trade Dress, or any designs confusingly similar thereto.
27 ///
28 ///
8
1 THIRD CLAIM FOR RELIEF

2 (Unfair Competition in Violation of Cal. Bus. & Prof. Code, § 17200 et. seq.)
5 39. Defendants’ misappropriation and unauthorized use of the Fluff Yeah
6 Trade Dress to promote the Accused Products is likely to confuse or mislead
7 consumers into believing that such products are authorized, licensed, affiliated,
8 sponsored, and/or approved by Deckers, constituting deceptive, unfair, and fraudulent
9 business practices and unfair competition in violation of the California Unfair
10 Business Practices Act, Cal. Bus. & Prof. Code, § 17200 et. seq.
11 40. Upon information and belief, Defendants’ deceptive, unfair, and
12 fraudulent business practices were willfully undertaken with full knowledge of the
13 Fluff Yeah Trade Dress and with the intent to misappropriate Deckers’ goodwill and
14 reputation established in the UGG® Fluff Yeah Slide.
17 at trial. Deckers is entitled to all available relief provided for under the California
18 Unfair Business Practices Act, Cal. Bus. & Prof. Code, § 17200 et. seq., including an
19 accounting and disgorgement of all illicit profits that Defendants made on account of
20 its deceptive, unfair, and fraudulent business practices. Furthermore, because Deckers
21 has no adequate remedy at law for Defendants’ ongoing unlawful conduct, Deckers is
22 entitled to injunctive relief prohibiting Defendants from unfair competition.
23 FOURTH CLAIM FOR RELIEF
24 (Unfair Competition – California Common Law)
27 43. Defendants’ misappropriation and unauthorized use of the Fluff Yeah
28 Trade Dress to promote the Accused Products also constitutes unfair competition in
9
1 violation of common law of the state of California.

2 44. Deckers has expended substantial time, resources and effort in creating
3 and developing UGG® footwear, including the UGG® Fluff Yeah Slide, the
4 embodiment of the Fluff Yeah Trade Dress, which consumers recognize as originating
5 from Deckers.
6 45. Upon information and belief, Defendants introduced Accused Products
7 into the stream of commerce in order to exploit Deckers’ goodwill and the reputation
8 established in the UGG® Fluff Yeah Slide for Defendants’ own pecuniary gain.
9 Defendants’ unauthorized use of the Fluff Yeah Trade Dress resulted in Defendants
10 unfairly benefitting from Deckers’ goodwill and the reputation established in the
11 UGG® Fluff Yeah Slide.
12 46. Upon information and belief, Defendants’ unlawful acts are willful,
13 deliberate, and intended to cause confusion among the public and taken in reckless
14 disregard of Deckers’ rights. As such, an award of exemplary and punitive damages is
15 necessary in an amount sufficient to deter similar misconduct in the future.
18 at trial. Deckers is entitled to recover all damages, including attorneys’ fees, that
19 Deckers has sustained on account of Defendants’ unfair competition, and all gains,
20 profits and advantages obtained by Defendants as a result of its unlawful acts.
21 Furthermore, because Deckers has no adequate remedy at law for Defendants’
22 ongoing unlawful conduct, Deckers is entitled to injunctive relief prohibiting
23 Defendants from unfair competition.
24 FIFTH CLAIM FOR RELIEF
25 (Patent Infringement – U.S. Pat. No. D866,941)
28 49. In order to protect its valuable brands, Deckers owns a number of patents
10
1 covering various styles of footwear it markets, including the UGG® Fluff Yeah Slide
2 described herein. These patents include U.S. Pat. No. D866,941 (“the ’941 Patent”)
3 issued on November 19, 2019, a true and correct copy of which is attached hereto as
4 Exhibit A and incorporated herein.
5 50. Deckers is the owner by assignment of all rights, title and interest in and
6 to the ’941 Patent and Deckers has marked substantially all footwear products
7 embodying the design of the ’941 Patent with “patent pending” on a product label in
8 compliance with 35 U.S.C. § 287, putting Defendants on notice of the pending patent
9 application that issued as the ’941 Patent.
10 51. Defendants have produced, imported into the U.S., distributed,
11 advertised, marketed, offered for sale, and/or sold within the United States the
12 Accused Products which bear a design substantially similar to the ornamental design
13 of the ’941 Patent, in violation of 35 U.S.C. § 271.
14 52. Deckers has not granted a license or given Defendants any form of
15 permission to the ’941 Patent and Defendants’ infringement of the ’941 Patent is
16 without Deckers’ permission or authority and in total disregard of Deckers’
17 intellectual property rights.
20 at trial. Deckers is entitled to recover all damages sustained on account of
21 Defendants’ infringement, and all gains, profits and advantages obtained by
22 Defendants under 35 U.S.C. §§ 284 and 289.
23 54. Upon information and belief, Defendants’ infringing acts were willful,
24 deliberate, and taken in reckless disregard of the ’941 Patent despite having been put
25 on notice through Deckers’ pending patent marking. Defendants took these actions
26 knowing the objectively high likelihood that such actions constituted infringement of
27 the ’941 Patent. As Defendants’ willful acts render this an exceptional case, Deckers
28 is entitled to enhanced damages and reasonable attorney fees under 35 U.S.C. § 284.
11

3 harm caused by Defendants’ infringement of the ’941 Patent, which is ongoing.
4 Accordingly, Deckers is entitled to injunctive relief under 35 U.S.C. § 283 prohibiting
5 Defendants from continuing to infringe the ’941 Patent.
6 PRAYER FOR RELIEF
7 WHEREFORE, Plaintiff Deckers Outdoor Corporation respectfully prays for
8 judgment against Defendants Wal-Mart Stores, Inc. and DOES 1-10 as follows:
9 1. A judgment that Defendants infringed Deckers’ Fluff Yeah Trade Dress
10 and U.S. Pat. No. D866,941;
11 2. An order permanently enjoining and restraining Defendants, their agents,
12 servants, employees, officers, associates, and all persons acting in concert with any of
13 them from infringing Deckers’ intellectual property at issue, including but not limited
14 to infringing acts such as:
15 a. manufacturing, importing, advertising, marketing, promoting,
16 supplying, distributing, offering for sale, or selling Accused Products or any
17 other products that bear an identical or confusingly similar design as Deckers’
18 Fluff Yeah Trade Dress;
19 b. manufacturing, importing, advertising, marketing, promoting,
20 supplying, distributing, offering for sale, or selling Accused Products or any
21 other products that infringe the ’941 Patent;
22 c. engaging in any other activity constituting unfair competition with
23 Deckers, or acts and practices that deceive consumers, the public, and/or trade,
24 including without limitation, the use of designations and design elements used
25 or owned by or associated with Deckers; and
26 d. committing any other act which falsely represents or which has
27 the effect of falsely representing goods and services of Defendants are
28
12
1 licensed, authorized, offered, produced, sponsored, or in any other way

2 associated with Deckers;
3 3. An order requiring Defendants to recall from any distributors and
4 retailers and to deliver to Deckers for destruction any Accused Products, including the
5 means of making such products;
6 4. An order requiring Defendants to file with this Court and serve on
7 Deckers within thirty (30) days after entry of the injunction, a report in writing and
8 under oath setting forth the manner in which Defendants complied with the injunction;
9 5. An order for an accounting of all gains, profits and advantages derived by
10 Defendants on account of the unlawful acts complained of herein pursuant to 15
11 U.S.C. § 1117(a), Cal. Bus. & Prof. Code, § 17200 et. seq., and any other applicable
12 federal statute or California state and common law;
13 6. An award of damages equal to Defendants’ profits and all damages
14 sustained by Deckers as a result of Defendants’ wrongful acts;
15 7. An award of damages equal to treble Defendants’ profits or Deckers’
16 damages, whichever is greater, on account of Defendants’ willful infringement;
17 8. An award of punitive damages and Deckers’ costs, attorneys’ fees, and
18 interest as allowed under all applicable federal statutes and California state laws; and
19 9. All other relief that the Court may deem just and proper.
20
21 Dated: October 16, 2020 BLAKELY LAW GROUP
22
23 By: _/s/ Brent H. Blakely_________
Brent H. Blakely
24 Mark S. Zhai
Colby A. Meagle
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1 DEMAND FOR JURY TRIAL

2 Pursuant to Rule 38(b) of the Federal Rules of Civil Procedure, Plaintiff
3 Deckers Outdoor Corporation hereby demands a trial by jury as to all claims in this
4 Civil Action.
5
6 Dated: October 16, 2020 BLAKELY LAW GROUP
7
8 By: _/s/ Brent H. Blakely_________
Brent H. Blakely
9 Mark S. Zhai
Colby A. Meagle
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EXHIBIT A

Deckers v. Walmart - Complaint

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Deckers v. Walmart - Complaint

Uploaded by

Case 2:20-cv-09521 Document 1 Filed 10/16/20 Page 1 of 19 Page ID #:1

1 Brent H. Blakely (SBN 157292)

1 JURISDICTION AND VENUE

1 11. The world-wide recognition as a “premium” brand and the overwhelming

1 seek leave to amend as additional information becomes available through discovery.

1 meaning, which serves to identify Deckers as the exclusive source of footwear

1 SECOND CLAIM FOR RELIEF

1 THIRD CLAIM FOR RELIEF

1 violation of common law of the state of California.

1 55. Furthermore, unless Defendants’ unlawful acts are enjoined by this

1 licensed, authorized, offered, produced, sponsored, or in any other way

1 DEMAND FOR JURY TRIAL

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