Deckers Outdoor Corporation v. Syke Footwear Inc. et al

Filing 59

ORDER RE CONSENT JUDGMENT INCLUDING PERMANENT INJUNCTION AND VOLUNTARY ACTION OF DISMISSAL WITH PREJUDICE by Judge Dean D. Pregerson (SEE DOCUMENT FOR SPECIFICS) ( MD JS-6. Case Terminated ) (lc)

1
2
3
4
5
6
7
8

Brent H. Blakely (SBN 157292)
[e-mail]
Cindy Chan (SBN 247495)
[e-mail]
Jessica C. Covington (SBN 301816)
[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

9

UNITED STATES DISTRICT COURT

10

CENTRAL DISTRICT OF CALIFORNIA

11
12
13
14
15
16
17
18
19

DECKERS OUTDOOR CORPORATION, ) CASE NO. 2:14-cv-02650-DDP-MAN
a Delaware Corporation,
)
)
) ORDER RE CONSENT JUDGMENT
Plaintiffs,
) INCLUDING PERMANENT
) INJUNCTION AND VOLUNTARY
v.
) ACTION OF DISMISSAL WITH
) PREJUDICE
SYKE FOOTWEAR, INC., a California
Corporation; WEI JU, an individual; and )
)
DOES 1-10, inclusive,
)
)
Defendants.
)
)
)

20
21
22
23
24
25
26
27
28
1
[PROPOSED] ORDER

1

WHEREAS Plaintiff Deckers Outdoor Corporation (collectively “Plaintiff”

2

or “Deckers”) having filed a Complaint in this action charging Defendants Syke

3

Footwear and Wei Ju (collectively “Defendants”) with Trade Dress Infringement,

4

Patent Infringement, and Unfair Competition arising from Defendants’ manufacture,

5

distribution, promotion, advertisement, offering for sale, and/or sale of footwear, the

6

designs of which Deckers has alleged infringe upon its Bailey Button Boot Trade

7

Dress (defined below) and Bailey Button Design Patent (defined below), which are

8

identified by Style Names “Chestnut Shearling Button Boot” and “Black Shearling

9

Button Boot” and Style Nos. “I601” and “K601” (hereinafter “Accused Products”), an

10

example of which is shown below:

11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27

WHEREAS, Deckers is the owner of U.S. Patent No. D599,999 for the “Bailey
Button Single” boot (registered on September 15, 2009) (hereinafter “Bailey Button
Design 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

28
2
[PROPOSED] ORDER

1

top of the boot shaft; and (e) one or more buttons (depending on the height of the boot)

2

prominently featured on the lateral side of the boot shaft adjacent the overlapping

3

panels, and which characterization is accompanied by the following images:

4
5
6
7
8
9
10
11
12
13

WHEREAS, Deckers is the owner of the well-known and registered UGG®

14

trademark for footwear, and is the owner of common law rights in and to the “UGG

15

Classic Trade Dress” for boots, which consists substantially of the following primary

16

features in combination: An exaggerated, raised, and exposed circular stitch pattern in

17

vertical lines on the sides and back of the boot shaft and in a substantially horizontal

18

line at the intersection of the boot vamp and shaft; a license plate-type shape on the

19

heel; exposed fleece tufting, and foldable boot cuff; a raised and rounded dome-

20

shaped toe; a heel overlay on the boot’s exterior; brushed suede-like exterior; a thick

21

flat sole; and fabric binding on the top of the shaft and above the outsole (as illustrated

22

in the photos below).

23
24
25
26
27
28
3
[PROPOSED] ORDER

1
2
3
4
5
6
7
8
9

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.

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

10

concert and participation with them who receive actual notice of this Final Consent

11

Judgment are hereby permanently restrained and enjoined from infringing upon

12

Plaintiff’s Bailey Button Boot Trade Dress, UGG Classic Trade Dress and/or Bailey

13

Button Design Patent either directly or contributorily in any manner, including:

14

(a)

Challenging the validity, enforceability, or Deckers’ ownership of

15

the Bailey Button Boot Trade Dress, UGG Classic Trade Dress, and/or Bailey Button

16

Design Patent;

17

(b)

Manufacturing, purchasing, producing, distributing, circulating,

18

selling, offering for sale, importing, exporting, advertising, promoting, displaying,

19

shipping, marketing and/or incorporating in advertising or marketing the Accused

20

Products or products which infringe upon the Bailey Button Boot Trade Dress, UGG

21

Classic Trade Dress, and/or Bailey Button Design Patent;

22

(c)

Committing any other act which falsely represents or which has the

23

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

24

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

25

with Plaintiff;

26

(d)

Knowingly assisting, aiding or attempting to assist or aid any other

27

person or entity in performing any of the prohibited activities referred to in Paragraphs

28

2(a) to 2(c) above.
4
[PROPOSED] ORDER

1
2
3

3.

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

associated with this action.
4.

The execution of this Final Consent Judgment shall serve to bind and

4

obligate the parties hereto. However, dismissal with prejudice of this action shall not

5

have preclusive effect on those who are not a party to this action or who are not

6

specifically released in the parties’ written settlement agreement, all claims against

7

whom Plaintiff expressly reserves.

8
9

5.

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

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

10

Consent Judgment, the enforcement thereof and the punishment of any violations

11

thereof. Except as otherwise provided herein, this action is fully resolved with

12

prejudice.

13
14

IT IS SO ORDERED.

15
16
17

DATED: June 14, 2016

__________________________
Hon. Dean D. Pregerson
United States District Judge

18
19
20
21
22
23
24
25
26
27
28
5
[PROPOSED] ORDER