Deckers Outdoor Corp. v. Australian Leather Pty. Ltd., No. 1:16-cv-03676, USDC N.D. Illinois

A federal jury in Illinois has found an Australian clothing company and its owner, Eddie Oygur, willfully infringed on trademarks registered to Deckers Outdoor Corp., maker of the popular UGG brand of boots, by selling similarly styled boots using the UGG name online to U.S. consumers.

Deckers filed a lawsuit against Australian Leather Pty. Ltd. for trademark and patent infringement based on Australian Leather’s sale of “ugg boots.” In response, Australian Leather argued that “ugg” is a generic term for a type of sheepskin boot, so Deckers could not enforce its UGG trademark registrations or prevent third parties from advertising or selling sheepskin boots under the name ugg.

In September 2018, the United States District Court of the Northern District of Illinois found that the evidence in the record did not support a conclusion that the term ugg “is or ever was” a generic word for sheepskin boots in the United States. (Read our Branded alert on the court’s decision here.)

After a four-day trial, the jury found that Australian Leather both willfully infringed Deckers’ marks and willfully used a counterfeit of at least one of the marks. The jury awarded $450,000 in damages on those claims.

The remaining issues in the case — including decisions on Deckers’ claims of infringement of its design patents and Australian Leather’s counterclaims based upon alleged fraudulent misuse of the ® symbol with the term UGG by Deckers’ predecessors — await Judge Shah’s decision following the bench trial held last week.