Updated Sept. 10: As it looks to escalate a legal battle with Deckers Outdoor Corp. to the Supreme Court, an Australian shoe company has tapped former US Solicitor General Seth Waxman to argue its case, The New York Post reported.
Waxman was previously an administration official for Bill Clinton when he was president. If the case is accepted by the Supreme Court, Waxman will argue on behalf of Australian Leather owner Eddie Oygur against Deckers’ ability to trademark the word “Ugg.”
In 2019, Oygur was ordered to pay $450,000 after a ruling from the District Court for the Northern District of Illinois that determined that he infringed on Deckers’ trademark of the word “Ugg.” In May, the United States Court of Appeals for the Federal Circuit affirmed the decision made in 2019.
Oygur told media outlets that he planned to take the case to the Supreme Court after the most recent ruling in May.
“We look forward to presenting the important issues in this case to the U.S. Supreme Court,” Waxman told FN in a statement. “While the case is particularly critical to Australian manufacturers, the legal questions have broad implications for commerce and the use of generic terms across borders.”
In a statement to FN in May, Deckers wrote, “We are extremely pleased with this ruling and are glad to put an end to confusion in the market that has been caused by these products … Deckers welcomes fair competition. This case was always about protecting American consumers from being deceived into buying counterfeited product offered for sale and sold online into the United States. Deckers is committed to vigorously enforcing its intellectual property rights.”
The word “ugg” is commonly used in Australia as a catchall term for sheepskin boots lined with fleece. However, in the U.S., Australian entrepreneur Brian Smith registered the name as a brand in the 1980s, with court documents revealing that Deckers had bought the name from Smith and trademarked “Ugg Australia” in 1995. (It currently holds the trademark in more than 130 countries.) The case could also have wide-ranging ramifications for sheepskin boot makers in Australia that are looking to sell and distribute their products around the world.
A number of Australian media outlets referred to the legal conflict as a “David vs. Goliath” battle. The case dates back to 2016, when the California-based retail group sued Oygur and Australian Leather for selling more than a dozen pairs of ugg boots in the U.S. through his website.
The district court found that, while “ugg” was a generic term in Australia, it did not hold the same meaning in the U.S. It added that the word was not subject to the “doctrine of foreign equivalents” — a general guideline that requires courts and the Trademark Trial and Appeal Board to see whether translated foreign words are registrable as trademarks or confusingly similar with existing trademarks.
Oygur challenged the decision in appeals court and argued that the district court had used the wrong standards to determine whether an item was considered generic. The court upheld Ugg owner Deckers Brands’ $450,000 jury trial win and did not offer any additional reasons.
Ugg recorded a 70.8% jump in sales to $213.0 million in Deckers’ most recent earnings report. Ugg continues to yield a strong base of revenue for Deckers, as its appeal as a year-round brand increases.
FN has reached out to Deckers for a comment on the most recent update.
This story has been updated.