Monthly Archives: July 2014

Wal-Mart and Others Sued over Knockoff UGG Boots

The owner of the UGG footwear brand has sued Wal-Mart, JC Penney, and Sears for allegedly selling knockoffs of UGG boots.

Plaintiff Deckers Outdoor Co.’s suits include causes of actions for:

  • federal trademark infringement,
  • trade dress infringement
  • false designation of origin and false description,
  • federal trademark dilution,
  • patent infringement, and
  • common law trademark infringement and unfair competition.

The complaint noted that it has been 14 years since UGG boots were first featured on Oprah’s Favorite Things® and Oprah Winfrey declared that she “LOOOOOOOVES her UGG boots.”  The popularity of the fuzzy boots has since grown, according to the complaint, as they have been embraced by celebrities including Kate Hudson and Sarah Jessica Parker.

The “Bailey Button” style of UGG boots, introduced in 2009, is characterized by:

  • suede boot styling,
  • overlapping front and rear panels on the side of the boot shaft,
  • exposed fleece-type lining edging the overlapping panels and top of the boot shaft, and
  • one or more buttons on the side of the boot shaft near the overlapping panels.

The one-button and three-button versions of the boots are covered by US design patents, according to the complaints.

Deckers claims that the defendants knowingly and willfully copied the styles of its Bailey Button boots “in an effort to exploit Deckers’ reputation in the market.”

The complaint alleges that when consumers type “Ugg” into the Wal-Mart website search engine they are directed to boots that are confusingly similar or nearly identical to UGG boots.

According to the complaint,

Wal-Mart’s offering of products in connection with the UGG mark improperly trades off the goodwill Deckers has established in the UGG mark in order to improperly attract customers to Wal-Mart’s competitive products.

Deckers is seeking injunctions against sales of the allegedly infringing boots, along with treble damages based on the defendants’ profits.

Deckers has been active in pursuing UGG counterfeiters.  In 2010, its anti-counterfeiting efforts led to the seizure of more than 420,000 pairs of fake boots and the takedown of over 30,000 auction sites selling counterfeit UGG products.

If you have questions about trademark infringement or trade dress infringement, contact our office to arrange a free consultation with one of our trademark lawyers.

At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. Recognized as one of the country’s “Best Law Firms” by U.S. News and Best Lawyers, Sheldon Mak & Anderson was established in 1983 and is one of Pasadena’s oldest law firms. Our full-service IP firm provides local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.

Contact our knowledgeable intellectual property attorneys today TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) or email us at tri@usip.com to find out how we can provide powerful protection for your unique ideas.

We have offices conveniently located in Pasadena (626-796-4000, 100 Corson Street Third Floor, Pasadena, CA 91103-3842);  Riverside (951-787-7770, 5885 Brockton Avenue, Riverside, CA 92506-1863); Upland (909-946-3939, 222 N. Mountain Avenue, Suite 210, Upland, CA 91786-5714); and Orange County (855-874-3327, 2102 Business Center Drive, Suite 130, Irvine, CA 92612-1001).

Disclaimer: We fully comply with all laws related to attorney marketing and this posting is considered an advertisement.

Photo Attribution: “Ugg tag” by Tinton5 is licensed under CC BY 3.0

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Google and Viacom Settle YouTube Copyright Dispute

Google and Viacom have settled a seven-year-old lawsuit in which Viacom charged Google with copyright infringement for enabling the streaming of Viacom’s television programs via Google’s YouTube unit.

Viacom sued Google for $1 billion in 2007, after Google bought YouTube for about $1.65 billion in 2006.

Viacom owns the Paramount movie studio and cable networks such as MTV, Comedy Central, and Nickelodeon.

The dispute involved clips users had uploaded from shows like “The Daily Show with Jon Stewart,” “South Park,” and Sponge Bob Square Pants.”   YouTube was accused of illegally distributing 79,000 copyrighted videos on its website between 2005 and 2008.

The details of the settlement were not disclosed, but reportedly did not involve a monetary payment by either company.

In 2012, Google announced a licensing agreement with Paramount under which it obtained the rights to show 500 movies, including “The Godfather” trilogy and “Ferris Bueller’s Day Off” on YouTube and Google Play.

In April, 2013, a US district judge granted summary judgment for YouTube, on the grounds that there was no evidence that the site’s executives know about the specific Viacom-owned clips that Viacom claimed were infringing. The judge rejected Viacom’s argument that YouTube should actively monitor the content being uploaded to its site at the rate of more than 24 hours of video every minute.

The judge concluded that YouTube was protected by the “safe harbor” provisions of the Digital Millennium Copyright Act (DMCA).

Viacom appealed that decision to the Second Circuit, which has not yet heard oral arguments or issued an opinion.

Under the DMCA, copyright owners have the burden of identifying infringing material posted by end users on sites such as YouTube. The DMCA limits the liability of online service providers for copyright infringement by others, as long as the service providers comply with the DMCA’s “notice and takedown” procedures.

If you have questions about liability for copyrighted material posted by third parties on your website, and if you want to assure that you are complying with the DMCA, contact our office to arrange a free initial consultation with one of our copyright attorneys.

At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. Recognized as one of the country’s “Best Law Firms” by U.S. News and Best Lawyers, Sheldon Mak & Anderson was established in 1983 and is one of Pasadena’s oldest law firms. Our full-service IP firm provides local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.

Contact our knowledgeable intellectual property attorneys today TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) or email us at tri@usip.com to find out how we can provide powerful protection for your unique ideas.

We have offices conveniently located in Pasadena (626-796-4000, 100 Corson Street Third Floor, Pasadena, CA 91103-3842);  Riverside (951-787-7770, 5885 Brockton Avenue, Riverside, CA 92506-1863); Upland (909-946-3939, 222 N. Mountain Avenue, Suite 210, Upland, CA 91786-5714); and Orange County (855-874-3327, 2102 Business Center Drive, Suite 130, Irvine, CA 92612-1001).

Disclaimer: We fully comply with all laws related to attorney marketing and this posting is considered an advertisement.