Deckers v. Target - Complaint (Bailey Button)

Case 2:19-cv-06215 Document 1 Filed 07/18/19 Page 1 of 19 Page ID #:1
1 Brent H. Blakely (SBN 157292)

bblakely@blakelylawgroup.com
2 Jessica C. Covington (SBN 301816)
jcovington@blakelylawgroup.com
3 BLAKELY LAW GROUP
1334 Parkview Avenue, Suite 280
4 Manhattan Beach, California 90266
Telephone: (310) 546-7400
5 Facsimile: (310) 546-7401
6 Attorneys for Plaintiff
Deckers Outdoor Corporation
7
8
9 UNITED STATES DISTRICT COURT
10 CENTRAL DISTRICT OF CALIFORNIA
11
12 DECKERS OUTDOOR ) CASE NO.
CORPORATION, a Delaware )
13 Corporation, ) PLAINTIFF’S COMPLAINT FOR
) DAMAGES AND EQUITABLE
14 Plaintiff, ) RELIEF:
v. )
15 ) 1. FEDERAL TRADE DRESS
TARGET CORPORATION, a ) INFRINGEMENT – BAILEY
16 Minnesota Corporation; ICONIX ) BUTTON BOOT TRADE DRESS;
BRAND GROUP, a Delaware )
17 Corporation; and DOES 1-10, ) 2. FEDERAL TRADE DRESS
inclusive, ) INFRINGEMENT - YOGA SLING
18 ) TRADE DRESS;
)
19 Defendants. ) 3. TRADE DRESS INFRINGEMENT
) UNDER CALIFORNIA COMMON
20 ) LAW;
)
21 ) 4. UNFAIR COMPETITION
) CALIFORNIA UNFAIR BUSINESS
22 ) PRACTICES ACT, CAL. BUS. &
) PROF. CODE, § 17200, ET. SEQ.;
23 )
) 5. UNFAIR COMPETITION UNDER
24 ) CALIFORNIA COMMON LAW;
) AND
25 )
) 6. PATENT INFRINGEMENT – U.S
26 ) PAT. NO. D599,999.
)
27 )
) JURY TRIAL DEMANDED
28
1
COMPLAINT FOR DAMAGES AND EQUITABLE RELIEF
1 Plaintiff Deckers Outdoor Corporation for its claims against Defendants

2 Target Corporation and Iconix Brand Group respectfully alleges as follows:
3 JURISDICTION AND VENUE
4 1. Plaintiff Deckers Outdoor Corporation (“Plaintiff” or “Deckers”) files this
5 action against Defendants Target Corporation and Iconix Brand Group (collectively,
6 “Defendants”) for trade dress infringement and unfair competition under the Lanham
7 Trademark Act of 1946, 15 U.S.C. §1051 et seq. (the “Lanham Act”), patent
8 infringement arising under the patent laws of the United States, and for related claims
9 under the statutory and common law of the state of California. This Court has subject
10 matter jurisdiction over the claims alleged in this action pursuant to 28 U.S.C. §§ 1331,
11 1338.
12 2. This Court has personal jurisdiction over Defendants because Defendants
13 maintain multiple offices/store locations and regularly conduct business within this
14 judicial district.
15 3. This action arises out of wrongful acts by Defendants within this judicial
16 district and Plaintiff is located and has been injured in this judicial district by
17 Defendants’ alleged wrongful acts. Venue is proper in this district pursuant to 28
18 U.S.C. § 1391 because the claims asserted arise in this district.
19 THE PARTIES
20 4. Deckers is a corporation organized and existing under the laws of the state
21 of Delaware with an office and principal place of business in Goleta, California.
22 Deckers designs and markets footwear identified by its many famous trademarks
23 including its UGG® and Sanuk® trademarks.
24 5. Upon information and belief, Defendant Target Corporation (“Target”) is
25 a corporation organized and existing under the laws of the state of Minnesota with an
26 office and principal place of business located at 1000 Nicollet Mall, Minneapolis,
27 Minnesota 55403.
28 6. Upon information and belief, Defendant Iconix Brand Group, Inc.
2
1 (“Iconix”) is a corporation organized and existing under the laws of the state of
2 Delaware with an office and principle place of business at 1450 Broadway, 4th Floor,
3 New York, New York 10018.
4 7. Deckers is unaware of the names and true capacities of Defendants,
5 whether individual, corporate and/or partnership entities named herein as DOES 1
6 through 10, inclusive, and therefore sues them by their fictitious names. Deckers will
7 seek leave to amend this complaint when their true names and capacities are
8 ascertained. Deckers is informed and believes and based thereon alleges that said
9 Defendants and DOES 1 through 10, inclusive, are in some manner responsible for the
10 wrongs alleged herein, and that at all times referenced each was the agent and servant
11 of the other Defendants and was acting within the course and scope of said agency and
12 employment.
13 8. Deckers is informed and believes, and based thereon alleges, that at all
14 relevant times herein, Defendants and DOES 1 through 10, inclusive, knew or
15 reasonably should have known of the acts and behavior alleged herein and the damages
16 caused thereby, and by their inaction ratified and encouraged such acts and behavior.
17 Deckers further alleges that Defendants and DOES 1 through 10, inclusive, have a
18 non-delegable duty to prevent or not further such acts and the behavior described
19 herein, which duty Defendants and DOES 1 though 10, inclusive, failed and/or refused
20 to perform.
21 ALLEGATIONS COMMON TO ALL CAUSES OF ACTION
22 A. Deckers’ UGG® Brand
23 9. Deckers has been engaged in the design, distribution, marketing, offering
24 for sale, and sale of footwear since 1975. Deckers owns several brands of footwear
25 including UGG®, Koolaburra®, Teva®, Sanuk®, and Hoka One One®.
26 10. Deckers’ UGG® brand remains one of the most recognized and relevant
27 comfort shoe brands in the industry. Since 1979, when the UGG® brand was founded,
28 the popularity of UGG® boots has steadily grown across the nation and even the
3
1 globe. The UGG® brand has always been and remains highly coveted by consumers.
2 This commitment to quality has helped to propel the UGG® brand to its current,
3 overwhelming level of popularity and cemented its status as a luxury brand.
4 11. In 2000, UGG® boots were first featured on Oprah’s Favorite Things®
5 where Oprah emphatically declared on national television how much she
6 “LOOOOOVES her UGG boots.” The popularity of UGG® brand footwear has grown
7 exponentially since then with celebrities including Kate Hudson and Sarah Jessica
8 Parker among a myriad of others regularly donning them. UGG® sheepskin boots
9 have become a high fashion luxury item and can be found on fashion runways around
10 the world.
11 12. Deckers’ UGG® products are distributed and sold to consumers through
12 authorized retailers throughout the United States at point-of-sale and on the Internet,
13 including through its UGG® Concept Stores and its website www.ugg.com.
14 B. Deckers’ Sanuk® Brand and YOGA SLING Sandal
15 13. In July 2011, Deckers completed the acquisition of the Sanuk® brand, a
16 lifestyle footwear brand rooted in surf culture but embraced by an eclectic mix of
17 style-savvy optimists.
18 14. The Sanuk® brand is known for the its Yoga Sling sandal, which was
19 introduced in 2013 and combines comfort with a chic, unique style sandal made with
20 soft fabric sling straps.
21 15. The Yoga Sling sandal is one of the most well recognized and
22 commercially successful styles of Deckers’ Sanuk® brand of footwear. Additionally,
23 has been nominated for the past five years as a SIMA (Surf Industry Manufactures
24 Association) “Footwear Product of the Year.”
25 16. Deckers has spent substantial time, effort, and money in designing,
26 developing, advertising, promoting, and marketing the Sanuk® Yoga Sling sandal and
27 has sold over one hundred million dollars worth of said style of sandals.
28 17. Due to its long use, extensive sales, and significant advertising and
4
1 promotional activities, Deckers’ Yoga Sling trade dress has achieved widespread
2 acceptance and recognition among the consuming public and trade throughout the
3 United States.
4 C. Defendants’ Infringing Activities
5 18. Upon information and belief, Target is engaged in the retail sale of a wide
6 range of apparel and footwear. Target’s retail stores are located nationwide, including
7 within this judicial district. Target’s products can also be purchased online at
8 www.target.com, which is also available to consumers nationwide.
9 19. Upon information and belief, Iconix manufactures, designs, advertises,
10 markets, distributes, offers for sale, and/or sells apparel and footwear for men, women,
11 and children under various brand names, including but not limited to the “MOSSIMO
12 SUPPLY CO.” brand. Iconix offers apparel and footwear wholesale to various
13 retailers, including those within this judicial district.
14 20. The present lawsuit arises from Defendants’ design, manufacture,
15 distribution, advertisement, marketing, offering for sale, and sale of footwear that
16 infringes upon Deckers’ rights to the “Bailey Button Trade Dress,” “Yoga Sling Trade
17 Dress,” and/or D599,999 Patent (hereinafter, “Accused Products”).
18 21. Upon information and belief, Defendants have designed, manufactured,
19 advertised, marketed, distributed, offered for sale, and/or sold Accused Products that
20 bear designs almost identical to the Bailey Button Boot Trade Dress (defined below)
21 and the D599,999 Patent. An exemplar is shown below.
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26
27
28 Defendant’s Mossimo® “Daniah” Boot
5
1 22. Upon information and belief, Defendants have also designed,

2 manufactured, advertised, marketed, distributed, offered for sale, and/or sold Accused
3 Products that bear a design almost identical to the “Yoga Sling Trade Dress” (defined
4 below). An exemplar is shown below.
5
6
7
8
9
10 Defendant’s Mossimo® “Dara Sling” Sandal
11 23. Deckers is informed and believes and herein alleges that Defendants are
12 competitors and have introduced Accused Products into the stream of commerce in an
13 effort to exploit Deckers’s reputation in the market established in the UGG® Bailey
14 Button boot and Sanuk® Yoga Sling sandal.
15 24. Upon information and belief, Defendants may have sold additional
16 products that infringe upon Deckers’s design patents and/or trade dresses. Deckers
17 may seek leave to amend as additional information becomes available through
18 discovery.
19 25. Deckers has not granted a license or any other form of permission to
20 Defendants with respect to its trademarks, design patents, trade dresses, or other
21 intellectual property.
22 26. Deckers is informed and believes and herein alleges that Defendants have
23 acted in bad faith and that Defendants’ acts have misled and confused and were
24 intended to cause confusion, or to cause mistake, or to deceive as to the affiliation,
25 connection, or association of the Accused Products with Deckers, or as to the origin,
26 sponsorship, or approval of the Accused Products by Deckers.
27 ///
28 ///
6
1 FIRST CLAIM FOR RELIEF

2 (Infringement of the Bailey Button Boot Trade Dress - 15 U.S.C. § 1125(a))
3 27. Deckers incorporates herein by reference the averments of the preceding
4 paragraphs as though fully set forth herein.
5 28. The UGG® Bailey Button boot was introduced in 2009 and the “Bailey
6 Button Boot Trade Dress” is unique and distinctive, consisting of a combination of the
7 following non-functional elements:
8 • Classic suede boot styling made famous by the UGG® brand;
9 • Overlapping of front and rear panels on the lateral side of the boot shaft;
10 • Curved top edges on the overlapping panels;
11 • Exposed fleece-type lining edging the overlapping panels and top of the
12 boot shaft; and
13 • One or more buttons (depending on the height of the boot) prominently
14 featured on the lateral side of the boot shaft adjacent the overlapping panels, on the
15 front panel as illustrated by the photographs below (hereinafter “Bailey Button Boot
16 Trade Dress”).
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24 29. The Bailey Button Boot Trade Dress, which is a composite of the above-
25 referenced features, is non-functional in its entirety, visually distinctive, and is unique
26 in the footwear industry.
27 30. The design of the Bailey Button Boot Trade Dress is neither essential to
28 its use or purpose nor does it affect the cost or quality of the boot. There are numerous
7
1 other designs available that are equally feasible and efficient, none of which
2 necessitate copying or imitating the Bailey Button Boot Trade Dress. The aforesaid
3 combination of features provides no cost advantages to the manufacturer or utilitarian
4 advantages to the consumer. These features, in combination, serve only to render
5 Deckers’ UGG® Bailey Button boots distinct and recognizable as goods originating
6 from Deckers’ UGG® brand.
7 31. The Bailey Button Boot Trade Dress is an original design by Deckers and
8 has achieved a high degree of consumer recognition and secondary meaning, which
9 serves to identify Deckers as the source of footwear featuring said trade dress.
10 32. The Bailey Button Boot Trade Dress is one of the most well-recognized
11 and commercially successful styles of Deckers’ UGG® brand of footwear, having been
12 featured on Deckers’ advertising and promotional materials as well as in various trade
13 publications. Furthermore, the Bailey Button Boot Trade Dress has been featured in
14 connection with various celebrities, has received a large volume of unsolicited media
15 attention, and has graced the pages of many popular magazines nationwide and
16 internationally.
18 developing, advertising, promoting, and marketing the UGG® brand and its line of
19 footwear embodying the Bailey Button Boot Trade Dress. Deckers spends millions of
20 dollars annually on advertising of UGG® products, which include products bearing the
21 Bailey Button Boot Trade Dress.
22 34. Deckers has sold hundreds of millions of dollars worth of UGG®
23 products bearing the Bailey Button Boot Trade Dress.
25 promotional activities, Deckers’ Bailey Button Boot Trade Dress has achieved
26 widespread acceptance and recognition among the consuming public and trade
27 throughout the United States.
28 36. There are numerous other boot designs in the footwear industry, none of
8
1 which necessitate copying or imitating the Bailey Button Boot Trade Dress. However,
2 due to the popularity and consumer recognition achieved by the Bailey Button boot,
3 said design has often been the subject of infringement by third-parties, including
4 Defendants.
6 competitors and have introduced Accused Products into the stream of commerce in an
7 effort to exploit Deckers’s reputation in the market established in the UGG® Bailey
8 Button boot.
9 38. The Accused Products produced, distributed, advertised and offered for
10 sale by Defendants bear confusingly similar reproductions of the Bailey Button Boot
11 Trade Dress, such as to cause a likelihood of confusion as to the source, sponsorship or
12 approval by Deckers of Defendants’ products.
13 39. Defendants’ use of Deckers’s Bailey Button Boot Trade Dress is without
14 Deckers’ permission or authority and in total disregard of Deckers’ rights to control its
16 40. Defendants’ use of Deckers’s Bailey Button Boot Trade Dress is likely to
17 lead to and result in confusion, mistake or deception, and is likely to cause the public
18 to believe that Defendants’ products are produced, sponsored, authorized, or licensed
19 by or are otherwise connected or affiliated with Deckers, all to the detriment of
20 Deckers.
21 41. Deckers has no adequate remedy at law.
22 42. In light of the foregoing, Deckers is entitled to injunctive relief
23 prohibiting Defendants from using Deckers’ Bailey Button Boot Trade Dress, or any
24 designs confusingly similar thereto, and to recover all damages, including attorneys’
25 fees, that Deckers has sustained and will sustain, and all gains, profits and advantages
26 obtained by Defendants as a result of their infringing acts alleged above in an amount
27 not yet known, as well as the costs of this action.
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9
1 SECOND CLAIM FOR RELIEF

2 (Infringement of Yoga Sling Trade Dress - 15 U.S.C. § 1125)
3 43. The Sanuk Yoga Sling sandal was introduced in 2013 and its appearance
4 is unique and distinctive, consisting of a combination of the following non-functional
5 elements (“Yoga Sling Trade Dress”):
6 • Thong-type sandal with a generally flat sole;
7 • Foot bed is comprised of soft material;
8 • Sling strap formed by a loop of fabric extending from a toe post around
9 the heel and back to the toe post;
10 • An instep strap extending from the lateral side of the sole across the instep
11 to the medial side of the sole;
12 • The instep strap and the sling strap appear unconnected and the instep
13 strap overlaps the sling strap;
14 • Both the sling strap and the instep strap are formed of a soft fabric having
15 an exaggerated width; and
16 • Binding at the top of the toe post.
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22 44. The Yoga Sling Trade Dress, which is a composite of the above-
23 referenced features, is non-functional in its entirety, visually distinctive, and is unique
24 in the footwear industry.
25 45. The design of the Yoga Sling Trade Dress is neither essential to its use or
26 purpose nor does it affect the cost or quality of the sandal. There are numerous other
27 designs available that are equally feasible and efficient, none of which necessitate
28 copying or imitating the Yoga Sling Trade Dress. The aforesaid combination of
10
1 features provides no cost advantages to the manufacturer or utilitarian advantages to

2 the consumer. These features, in combination, serve only to render Deckers’ Sanuk®
3 Yoga Sling sandal distinct and recognizable as goods originating from Deckers’
4 Sanuk® brand.
5 46. The Yoga Sling Trade Dress has achieved a high degree of consumer
6 recognition and secondary meaning, which serves to identify Deckers as the source of
7 footwear featuring said trade dress.
9 developing, advertising, promoting, and marketing the Sanuk® Yoga Sling sandal and
10 has sold over one hundred million dollars worth of said style of sandals.
11 48. The Yoga Sling Trade Dress is one of the most well recognized and
12 commercially successful styles of Deckers’ Sanuk® brand of footwear.
14 promotional activities, Deckers’ Yoga Sling Trade Dress has achieved widespread
15 acceptance and recognition among the consuming public and trade throughout the
16 United States.
17 50. There are numerous other sandal designs in the footwear industry, none of
18 which necessitate copying or imitating the Yoga Sling Trade Dress. However, due to
19 the popularity and consumer recognition achieved by the Yoga Sling sandal, said
20 design has often been the subject of infringement by third-parties, including by
21 Defendants.
23 competitors and have copied Deckers’ Yoga Sling Trade Dress in an effort to exploit
24 Deckers’ reputation in the market.
25 52. The Accused Products produced, distributed, advertised and offered for
26 sale by Defendants bear nearly identical reproductions of the Yoga Sling Trade Dress,
27 such as to cause a likelihood of confusion as to the source, sponsorship or approval by
28 Deckers of Defendants’ products.
11
1 53. Defendants’ use of Deckers’ Yoga Sling Trade Dress is without Deckers’
2 permission or authority and in total disregard of Deckers’ rights to control its
4 54. Defendants’ use of Deckers’ Yoga Sling Trade Dress is likely to lead to
5 and result in confusion, mistake or deception, and is likely to cause the public to
6 believe that Defendants’ products are produced, sponsored, authorized, or licensed by
7 or are otherwise connected or affiliated with Deckers, all to the detriment of Deckers.
8 55. Deckers has no adequate remedy at law.
10 prohibiting Defendants from using Deckers’ Yoga Sling Trade Dress, or any designs
11 confusingly similar thereto, and to recover all damages, including attorneys’ fees, that
12 Deckers has sustained and will sustain, and all gains, profits and advantages obtained
13 by Defendants as a result of their infringing acts alleged above in an amount not yet
14 known, as well as the costs of this action.
15 THIRD CLAIM FOR RELIEF
16 (Trade Dress Infringement Under California Common Law)
19 58. Deckers has common law rights to the Bailey Button Boot and Yoga Sling
20 Trade Dresses (collectively, “Deckers Trade Dresses”) in the state of California due to
21 its extensive promotion and sales of products bearing said trade dresses within the state
22 of California.
23 59. The Deckers Trade Dresses have achieved a high degree of consumer
24 recognition and secondary meaning nationwide and within the state of California,
25 which serves to identify Deckers as the source of high-quality goods.
26 60. Defendants’ infringement of the Deckers Trade Dresses constitutes
27 common law trade dress infringement in violation of the common law of the State of
28 California.
12
1 61. Defendants’ unauthorized use of the Deckers Trade Dresses has caused
2 and is likely to cause confusion as to the source of Defendants’ products, all to the
3 detriment of Deckers.
4 62. Defendants’ acts are willful, deliberate, and intended to confuse the public
5 and to injure Deckers.
6 63. Deckers has no adequate remedy at law to compensate it fully for the
7 damages that have been caused and which will continue to be caused by Defendants’
8 infringing conduct, unless it is enjoined by this Court.
9 64. The conduct herein complained of was extreme, outrageous, and was
10 inflicted on Deckers in reckless disregard of Deckers’ rights. Said conduct was
11 despicable and harmful to Deckers and as such supports an award of exemplary and
12 punitive damages in an amount sufficient to punish and make an example of
13 Defendants, and to deter them from similar conduct in the future.
15 prohibiting Defendants from infringing the Deckers Trade Dresses, and to recover all
16 damages, including attorneys’ fees, that Deckers has sustained and will sustain, and all
17 gains, profits and advantages obtained by Defendants as a result of their infringing acts
18 alleged above in an amount not yet known, and the costs of this action.
19 FOURTH CLAIM FOR RELIEF
20 (Unfair Competition Under California Common Law)
23 67. Defendants’ infringement of the Deckers Trade Dresses constitutes unfair
24 competition in violation of the common law of the State of California.
25 68. Deckers has invested a substantial amount of time, skill and money in
26 developing its footwear styles.
27 69. Upon information and belief, Defendants are competitors of Deckers and
28 have copied Deckers’ footwear styles in an effort to exploit Deckers’ reputation in the
13
1 market. Defendants misappropriated and used Deckers’ footwear styles at little or no

2 cost to Defendant.
3 70. Defendants’ misappropriation and use of Deckers’ footwear style was
4 without the authorization or consent of Deckers; and Deckers has been injured by the
5 Defendants’ conduct.
6 71. Defendants’ infringing acts were intended to capitalize on Deckers’
7 goodwill associated therewith for Defendants’ own pecuniary gain. Deckers has
8 expended substantial time, resources and effort to obtain an excellent reputation for its
9 UGG® and Sanuk® brands of footwear. As a result of Deckers’ efforts, Defendants
10 are now unjustly enriched and are benefiting from property rights that rightfully belong
11 to Deckers.
12 72. Defendants’ acts are willful, deliberate, and intended to confuse the public
13 and to injure Deckers.
14 73. Deckers has no adequate remedy at law to compensate it fully for the
16 infringing conduct, unless they are enjoined by this Court.
17 74. Defendants’ infringing conduct was extreme, outrageous, and was
18 inflicted on Deckers in reckless disregard of Deckers’ rights. Said conduct was
19 despicable and harmful to Deckers and as such supports an award of exemplary and
20 punitive damages in an amount sufficient to punish and make an example of
21 Defendants, and to deter them from similar conduct in the future.
23 prohibiting Defendants from infringing the Deckers Trade Dresses, and to recover all
24 damages, including attorneys’ fees, that Deckers has sustained and will sustain, and all
25 gains, profits and advantages obtained by Defendants as a result of their infringing acts
26 alleged above in an amount not yet known, and the costs of this action.
27
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14
1 FIFTH CLAIM FOR RELIEF

2 (Unfair Competition – California Unfair Business Practices Act, Cal. Bus. &
3 Prof. Code, § 17200, et. seq.)
6 77. Defendants’ appropriation, adoption and use of the Deckers Trade Dresses
7 on their own footwear is likely to confuse or mislead consumers into believing that
8 Defendants’ goods are authorized, licensed, affiliated, sponsored, and/or approved by
9 Deckers, thus constituting a violation of the California Unfair Business Practices Act,
10 Cal. Bus. & Prof. Code, § 17200, et. seq.
11 78. The deceptive, unfair and fraudulent practices set forth herein have been
12 undertaken with knowledge by Defendants willfully with the intention of causing harm
13 to Deckers and for the calculated purpose of misappropriating Deckers’ goodwill and
14 business reputation.
15 79. Defendants’ acts have caused and will continue to cause irreparable injury
16 to Deckers. Deckers has no adequate remedy at law to compensate it fully for the
18 unlawful acts, unless they are enjoined by this Court.
19 80. In light of the foregoing, Deckers is entitled to all available relief
20 provided for in California Unfair Business Practices Act, Cal. Bus. & Prof. Code, §
21 17200, et. seq. including permanent injunctive relief.
22 SIXTH CLAIM FOR RELIEF
23 (Patent Infringement – U.S. Patent No. D599,999)
26 82. Deckers is the owner of numerous design patents to the various styles of
27 footwear it offers under its UGG® brand. These design patents include but are not
28 limited to the “Bailey Button” boot (U.S. Patent No. D599,999 issued on September
15
1 15, 2009), a true and correct copy of which is attached hereto and incorporated herein
2 as Exhibit A (“ ‘999 Patent”).
3 83. Deckers is the owner by assignment of all right, title and interest in and to
4 the ‘999 Patent.
5 84. The Accused Products that Defendants have caused to be produced,
6 distributed, advertised, marketed, offered for sale, and/or sold within the United States,
7 and/or have imported into the United States bear a design that is substantially similar
8 to the ‘999 Patent in direct violation of 35 U.S.C. § 271.
9 85. Defendants’ aforesaid infringing acts are without Deckers’ permission or
10 authority and are in total disregard of Deckers’ right to control its intellectual property.
11 86. As a direct and proximate result of Defendants’ infringing conduct,
12 Deckers has been injured and will continue to suffer injury to its business and
13 reputation unless Defendants are restrained by this Court from infringing Deckers’
14 ‘999 Patent.
15 87. Defendants’ acts have damaged and will continue to damage Deckers, and
16 Deckers has no adequate remedy at law.
17 88. Deckers has marked substantially all footwear products embodying the
18 design of the ‘999 Patent with “Pat. No. 599,999” on a product label in compliance
19 with 35 U.S.C. § 287.
20 89. Given the widespread popularity and recognition of Deckers’ Bailey
21 Button boot and the patent notice provided on the products themselves, Deckers avers
22 and hereon alleges that Defendants had pre-suit knowledge of Deckers’ rights to the
23 ‘999 Patent and intentionally copied said design on their own footwear products in an
24 effort to pass them off as if they originated, are associated with, are affiliated with, are
25 sponsored by, are authorized by, and/or are approved by Deckers.
26 90. On information and belief, Defendants’ acts herein complained of
27 constitute willful acts and intentional infringement of the ‘999 Patent.
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16

2 prohibiting Defendants from infringing the ‘999 Patent and to recover damages
3 adequate to compensate for the infringement, including Defendants’ profits pursuant to
4 35 U.S.C. § 289. Deckers is also entitled to recover any other damages as appropriate
5 pursuant to 35 U.S.C. § 284.
6 PRAYER FOR RELIEF
7 WHEREFORE, Plaintiff Deckers Outdoor Corporation respectfully prays for
8 judgment against Defendants Target Corporation and Iconix Brand Group as follows:
9 1. A judgment that Defendants have infringed Deckers’ Bailey Button Boot
10 Trade Dress, Yoga Sling Trade Dress, and D599,999 Patent and that said infringement
11 was willful;
12 2. An order granting temporary, preliminary and permanent injunctive relief
13 restraining and enjoining Defendants, and their agents, servants, employees, officers,
14 associates, attorneys, and all persons acting by, through, or in concert with any of them
15 from using Deckers’ intellectual property, including, but not limited to:
16 a. manufacturing, importing, advertising, marketing, promoting,
17 supplying, distributing, offering for sale, or selling the Accused Products or any other
18 products which bear either of the Deckers Trade Dresses and/or any designs
19 confusingly similar thereto;
20 b. manufacturing, importing, advertising, marketing, promoting,
21 supplying, distributing, offering for sale, or selling the Accused Products or any other
22 products which infringe the D599,999 Patent and/or the overall appearance thereof;
23 c. engaging in any other activity constituting unfair competition with
24 Deckers, or acts and practices that deceive consumers, the public, and/or trade,
25 including without limitation, the use of designations and design elements used or
26 owned by or associated with Deckers; and
27 d. committing any other act which falsely represents or which has the
28 effect of falsely representing that the goods and services of Defendants are licensed by,
17
1 authorized by, offered by, produced by, sponsored by, or in any other way associated
2 with Deckers;
3 3. Ordering Defendants to recall from any distributors and retailers and to
4 deliver to Deckers for destruction or other disposition all remaining inventory of all
5 Accused Products and related items, including all advertisements, promotional and
6 marketing materials therefore, as well as means of making same;
7 4. Ordering Defendants to file with this Court and serve on Deckers within
8 thirty (30) days after entry of the injunction a report in writing, under oath setting forth
9 in detail the manner and form in which Defendants have complied with the injunction;
10 5. Ordering an accounting by Defendants of all gains, profits and advantages
11 derived from their wrongful acts pursuant to 15 U.S.C. § 1117(a) and 35 U.S.C. § 289;
12 6. Awarding Deckers all of Defendants’ profits and all damages sustained by
13 Deckers as a result of Defendants’ wrongful acts, and such other compensatory
14 damages as the Court determines to be fair and appropriate;
15 7. Awarding treble damages in the amount of Defendants’ profits or
16 Deckers’ damages, whichever is greater, for willful infringement;
17 8. Awarding applicable interest, costs, disbursements and attorneys’ fees;
18 9. Awarding Deckers punitive damages in connection with its claims under
19 California law; and
20 10. Such other relief as may be just and proper.
21
22 Dated: July 18, 2019 BLAKELY LAW GROUP
23
24 By: _______________________________
Brent H. Blakely
25 Jessica C. Covington
Attorneys for Plaintiff
26 Deckers Outdoor Corporation
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18
1 DEMAND FOR JURY TRIAL

2 Pursuant to Rule 38(b) of the Federal Rules of Civil Procedure, Plaintiff Deckers
3 Outdoor Corporation hereby demands a trial by jury as to all claims in this litigation.
4
5 Dated: July 18, 2019 BLAKELY LAW GROUP
6
7 By: _______________________________
Brent H. Blakely
8 Jessica C. Covington
Attorneys for Plaintiff
9 Deckers Outdoor Corporation
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Deckers v. Target - Complaint (Bailey Button)

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Deckers v. Target - Complaint (Bailey Button)

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Case 2:19-cv-06215 Document 1 Filed 07/18/19 Page 1 of 19 Page ID #:1

1 Brent H. Blakely (SBN 157292)

1 Plaintiff Deckers Outdoor Corporation for its claims against Defendants

1 22. Upon information and belief, Defendants have also designed,

1 FIRST CLAIM FOR RELIEF

1 SECOND CLAIM FOR RELIEF

1 features provides no cost advantages to the manufacturer or utilitarian advantages to

1 market. Defendants misappropriated and used Deckers’ footwear styles at little or no

1 FIFTH CLAIM FOR RELIEF

1 91. In light of the foregoing, Deckers is entitled to injunctive relief

1 DEMAND FOR JURY TRIAL

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