Deckers Outdoor Corp. v. Reed Sportswear Manufacturing Co.

          BRENT H. BLAKELY, CINDY CHAN, JESSICA C. COVINGTON BLAKELY LAW GROUP ATTORNEYS FOR PLAINTIFF DECKERS OUTDOOR CORPORATION

          ORDER RE CONSENT JUDGMENT INCLUDING PERMANENT INJUNCTION AND VOLUNTARY ACTION OF DISMISSAL WITH PREJUDICE

          HON. OTIS D. WRIGHT II UNITED STATES DISTRICT JUDGE

         WHEREAS Plaintiff Deckers Outdoor Corporation (“Deckers” or “Plaintiff”) having filed a Complaint in this action charging Defendant Reed Sportswear Manufacturing Co. (“Defendant”) with Trade Dress Infringement, Patent Infringement, and Unfair Competition arising from Defendant’s manufacture, distribution, promotion, advertisement, offering for sale, and/or sale of footwear, the design of which Deckers has alleged infringes upon its Bailey Button Boot Trade Dress (defined below) and ‘189 Patent (defined below). The “Accused Products” which Deckers has alleged infringe upon its trade dress and design patent are identified by the Style Name(s) “Shearling92”and/or “Sherling 92”) (hereinafter “Accused Products”), an example of which is shown below:

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         WHEREAS, Deckers is the owner of U.S. Patent No. D616, 189 for the “Bailey Button Triplet” boot (registered on May 25, 2010) (hereinafter “ ‘189 Patent”); and

         WHEREAS, Deckers is the owner of the “Bailey Button Boot Trade Dress, ” which is characterized by a combination of the following non-functional elements: (a) classic suede boot styling made famous by the UGG brand; (b) overlapping of front and rear panels on the lateral side of the boot shaft; (c) curved top edges on the overlapping panels; (d) exposed fleece-type lining edging the overlapping panels and top of the boot shaft; and (e) one or more buttons (depending on the height of the boot) prominently featured on the lateral side of the boot shaft adjacent the overlapping panels, and which characterization is accompanied by the following images:

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         WHEREAS, the parties hereto desiring to fully settle all of the claims in this action among the parties to this Final Consent Judgment; and

         WHEREAS, the parties herein have simultaneously entered into a Settlement Agreement and Mutual Release, WHEREAS Defendants have agreed to consent to the below judgment, IT IS HEREBY ORDERED THAT:

         1. This Court has jurisdiction over the parties to this Final Consent Judgment and has jurisdiction over the subject matter hereof pursuant to 15 U.S.C. § 1121.

         2. Defendant and its agents, servants, employees and all persons in active concert and participation with them who receive actual notice of this Final Consent Judgment are hereby permanently restrained and enjoined from:

(a) Challenging the validity, enforceability, or Deckers’ ownership of the Bailey Button Boot Trade Dress and/or ‘189 Patent;

(b) Manufacturing, purchasing, producing, distributing, circulating, selling, offering for sale, importing, exporting, advertising, promoting, displaying, shipping, marketing and/or incorporating in advertising or marketing the Accused Products and/or any products that infringe upon the Bailey Button Boot Trade Dress and/or ‘189 Patent;

(c) Committing any other act which falsely represents or which has the effect of falsely representing that the goods and services of Defendant are licensed by, authorized by, offered by, produced by, sponsored ...