Ugg's False Designation Claim Gets Boot; Design Patent Infringement Claim Survives

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By Tamlin Bason

Sept. 11 — The manufacturer of Ugg branded boots cannot maintain its Lanham Act false designation claim against J.C. Penney because the latter produced its own products, the Central District of California held Sept. 8.

The district court determined that the false designation claim—based on allegations that J.C. Penney boots infringed Ugg's protectable trade dress—failed as a matter of law under Dastar since the department store, as the manufacturer of the boots, was unquestionably “the origin of its own goods.”

Because there was no false designation of that origin, Ugg could not possibly prevail on its Section 43(a) claim, the court said.

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 Uggs Story Image 1

The court found unconvincing Ugg's attempt to distinguish Dastaron the grounds that this case concerned a passing-off claim, not the type of reverse passing-off claim that was subject to the Supreme Court's ruling in that case.

Under either scenario, Dastar prevents a plaintiff from using false designation claims to “attach Lanham Act liability to what is more properly the province of patent and copyright law,” the court said, dismissing the false designation claim. It, however, determined that Ugg's identification of an asserted design patent, coupled with an identification of the allegedly infringing product, constituted a well pleaded design patent infringement claim.

No Escaping Dastar

Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 66 U.S.P.Q.2d 1641 (2003), established when a plaintiff can maintain a Lanham Act false designation of origin claim under Section 43(a), 15 U.S.C. § 1125(a), when the underlying goods that the defendant is alleged to have falsely identified are—or were—protected by patent or copyright.

In such cases, a Section 43(a) claim can survive only if it is based on allegations that the defendant took the plaintiff's physical copyrighted or patented goods and then repackaged those unaltered goods and put its own name on it, the high court said. “To hold otherwise would be akin to finding that Section 43(a) created a species of perpetual patent and copyright, which Congress may not do,” Justice Antonin Scalia wrote on behalf of a unanimous court.

Here, Deckers Outdoor Corp., the maker of the popular Ugg boots, asserted design patent infringement, trade dress infringement and false designation of origin claims against J.C. Penney Co. based on the latter's sale of similar looking boots.

The complaint alleged that two design patents were infringed (U.S. Patent Nos. D599,999; D616,189). Those patents relate to the “Bailey Button” design, Deckers said. The trade dress infringement and false designation of origin claims were based on J.C. Penney's alleged misappropriation of the Bailey Button design. The court did not address the trade dress claim, but it determined that the false designation claim was clearly barred by Dastar. First, however, the court considered the argument that Dastar only blocks reverse passing-off claims, saying:

In a reverse passing-off scenario as in Dastar, a producer allegedly misrepresents itself as the origin of the goods of services made by someone else. And in a passing-off situation like this case, a person allegedly misrepresents another entity as the origin of goods or services it produces itself. But the operative issue remains the same: the false designation of origin—whatever origin that may be.

In this case, “it is crucial that the origin of the boots JC Penney has sold is JC Penney—not Deckers,” Judge Otis D. Wright II said. Accordingly, “Deckers may not use § 1125(a) as ‘a species of perpetual patent and copyright' to attach Lanham Act liability to what is more properly the province of patent and copyright law,” the court said, quoting Dastar. The court thus dismissed the false designation claim.

Design Infringement Claim Plausible

J.C. Penney also sought dismissal of a design patent infringement claim that was based on the '189 patent. The company argued that the design differences between its allegedly infringing product, the Arizona Carmen Girls Boot, and the Bailey Button design were so severe that the infringement claim was not plausible.

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“[A] comparison of the protected designs with the accused products demonstrates a sufficient visual similarity to at least render infringement of the '189 Patent plausible,” the court said. “Deckers had to do no more.” The court accordingly denied J.C. Penney's motion to dismiss the design patent infringement claim, although it did dismiss—with leave to amend—the claim for willful infringement.

Deckers was represented by Blakely Law Group. J.C. Penney was represented by Freeman Freeman and Smiley LLP.

To contact the reporter on this story: Tamlin Bason in Washington at

To contact the editor responsible for this story: Tom P. Taylor at

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