Deckers Outdoor Corporation v. Jeans Warehouse Inc. et al

Filing 17

ORDER RE PERMANENT INJUNCTION AND VOLUNTARY DISMISSAL OF ACTION WITH PREJUDICE 16 by Judge S. James Otero: Defendants Jeans Warehouse Inc., Quinus Ceqin Chen andShoe Box Trading and their agents etc permanently restrained and enjoined from infringing upon Plaintiffs Bailey Button Boot Trade Dress and/or Bailey Button Design Patents. Plaintiff and Defendants shall bear their own costs and attorneys fees associated with this action. (MD JS-6. Case Terminated) (lc)

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Brent H. Blakely (SBN 157292)
[e-mail]
Cindy Chan (SBN 247495)
[e-mail]
BLAKELY LAW GROUP
1334 Parkview Avenue, Suite 280
Manhattan Beach, California 90266
Telephone: [phone]
Facsimile: [phone]

JS-6

Attorneys for Plaintiff
Deckers Outdoor Corporation

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UNITED STATES DISTRICT COURT

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CENTRAL DISTRICT OF CALIFORNIA

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DECKERS OUTDOOR CORPORATION, ) CASE NO. 2:14-CV-00706-SJO-PJW
)
a Delaware Corporation,
)
) ORDER RE PERMANENT
Plaintiff,
) INJUNCTION AND VOLUNTARY
v.
) DISMISSAL OF ACTION WITH
JEANS WAREHOUSE INC., a Hawaii, ) PREJUDICE
Corporation; QUINUS CEQIN CHEN, an )
)
individual; SHOE BOX TRADING, a
California Corporation; and DOES 1-10, )
)
inclusive,
)
)
Defendants.
)
)
WHEREAS Plaintiff Deckers Outdoor Corporation having filed a Complaint

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in this action charging Defendants Jeans Warehouse Inc., Quinus Ceqin Chen and

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Shoe Box Trading (collectively “Defendants”) have entered into a Settlement

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Agreement and Mutual Release as to the claims in the above referenced matter.

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Defendants, having stipulated to the below terms, IT IS HEREBY ORDERED that:

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1.

This Court has jurisdiction over the parties to this Stipulation for

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Permanent Injunction and has jurisdiction over the subject matter hereof pursuant to 15

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U.S.C. § 1121.

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2.

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Deckers is the owner of the Bailey Button Boot Trade Dress, which is

characterized, inter alia, by
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[PROPOSED] ORDER

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

Classic suede boot styling made famous by the UGG brand;

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

Overlapping of front and rear panels on the lateral side of the boot shaft;

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

Curved top edges on the overlapping panels;

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

Exposed fleece-type lining edging the overlapping panels and top of the

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boot shaft; and

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

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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.
Exemplars of Deckers’ UGG® boots that bear the Bailey Button Boot Trade
Dress are depicted below.

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3.

Many of Deckers’ UGG® footwear designs, including those with the

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Bailey Button Boot Trade Dress, are also protected by design patents issued by the

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United States Patent and Trademark Office. Design Patents for UGG® Bailey Button

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Boot styles include, but are not limited to, U.S. Patent Nos. D599,999 for the “Bailey

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Button Single” boot (registered on September 15, 2009) and D616,189 for the “Bailey

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Button Triplet” boot (registered on May 25, 2010) (hereinafter “Bailey Button Design

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Patents”).

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4.

The claims alleged by Plaintiff in the present lawsuit arise from

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Defendants’ manufacture, distribution, promotion, advertisement, offering for sale,

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and/or sale of footwear, the designs of which Deckers has alleged infringe upon its

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Bailey Button Boot Trade Dress and Bailey Button Design Patents (“Disputed

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Products”).
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[PROPOSED] ORDER

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5.

Defendants specifically deny and continue to deny each and every

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allegation of wrongdoing, violation of any law, statutes, regulation, agreement or

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policy, and any liability alleged by Deckers.

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6.

Defendants and their agents, servants, employees and all persons in active

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concert and participation with it who receive actual notice of this Stipulation for

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Permanent Injunction are hereby permanently restrained and enjoined from infringing

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upon Plaintiff’s Bailey Button Boot Trade Dress and/or Bailey Button Design Patents,

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either directly or contributorily in any manner, including:

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(a)

Manufacturing, importing, advertising, marketing, promoting,

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supplying, distributing, offering for sale, or selling the Disputed Products or any other

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products which bear Plaintiff’s Bailey Button Boot Trade Dress or any designs

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confusingly similar thereto and/or products bearing designs that infringe upon the

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Bailey Button Design Patents and/or the overall appearance thereof;

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(b)

Delivering, holding for sale, returning, transferring or otherwise

moving, storing or disposing in any manner the Disputed Products;

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(c)

Committing any other act which falsely represents or which has the

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effect of falsely representing that the goods and services of Defendants are licensed by,

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authorized by, offered by, produced by, sponsored by, or in any other way associated

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with Plaintiff;

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(d)

Assisting, aiding or attempting to assist or aid any other person or

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entity in performing any of the prohibited activities referred to in Paragraphs 5(a) to

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5(c) above.

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7.

Plaintiff and Defendants shall bear their own costs and attorneys’ fees

associated with this action.
8.

The execution of this Stipulation for Permanent Injunction shall serve to

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bind and obligate the parties hereto. However, dismissal with prejudice of this action

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shall not have preclusive effect on those who are not a party to this action, all claims

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against whom Plaintiff expressly reserves.
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[PROPOSED] ORDER

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9.

The jurisdiction of this Court is retained for the purpose of making any

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further orders necessary or proper for the construction or modification of this

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Stipulation for Permanent Injunction, the enforcement thereof and the punishment of

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any violations thereof. Except as otherwise provided herein, this action is fully

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resolved with prejudice.

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IT IS SO ORDERED.
DATED: April 9, 2014

__________________________
Hon. S. James Otero
United States District Judge

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[PROPOSED] ORDER