Case 2:17-cv-07151 Document 1 Filed 09/27/17 Page 1 of 12 Page ID #:1

1 Brent H. Blakely (SBN 157292)

bblakely@blakelylawgroup.com
2 Cindy Chan (SBN 247495)
cchan@blakelylawgroup.com
3 Jessica C. Covington (SBN 301816)
jcovington@blakelylawgroup.com
4 BLAKELY LAW GROUP
1334 Parkview Avenue, Suite 280
5 Manhattan Beach, California 90266
Telephone: (310) 546-7400
6 Facsimile: (310) 546-7401
7 Attorneys for Plaintiff
Deckers Outdoor Corporation
8
9 UNITED STATES DISTRICT COURT
10 CENTRAL DISTRICT OF CALIFORNIA
11
12 DECKERS OUTDOOR ) CASE NO.:
CORPORATION, a Delaware )
13 Corporation, ) PLAINTIFFS COMPLAINT FOR
) DAMAGES AND EQUITABLE
14 Plaintiff, ) RELIEF:
v. )
15 ) 1. TRADE DRESS INFRINGEMENT;
SEARS, ROEBUCK AND CO., a New )
16 York Corporation; KMART ) 2. TRADE DRESS INFRINGEMENT
CORPORATION, a Delaware ) UNDER CALIFORNIA COMMON
17 Corporation; and DOES 1-10, inclusive, ) LAW;
)
18 ) 3. UNFAIR COMPETITION UNDER
Defendants. ) CALIFORNIA COMMON LAW
19 )
)
20 ) JURY TRIAL DEMANDED
)
21 )
22 Plaintiff Deckers Outdoor Corporation for its claims against Defendants
23 Sears, Roebuck and Co. and Kmart Corporation (collectively, Defendants)
24 respectfully alleges as follows:
25 JURISDICTION AND VENUE
26 1. Plaintiff files this action against Defendants for trade dress infringement
27 under the Lanham Trademark Act of 1946, 15 U.S.C. 1051 et seq. (the Lanham
28 Act) and for related claims under California common law. This Court has subject

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1 matter jurisdiction over the claims alleged in this action pursuant to 28 U.S.C. 1331,
2 1338.
3 2. This Court has personal jurisdiction over Defendants because Defendants
4 regularly conduct business within this judicial district.
5 3. This action arises out of wrongful acts by Defendants within this judicial
6 district and Plaintiff is located and has been injured in this judicial district by
7 Defendantsalleged wrongful acts. Venue is proper in this district pursuant to 28
8 U.S.C. 1391 because the claims asserted arise in this district.
9 THE PARTIES
10 4. Plaintiff Deckers Outdoor Corporation (Deckers) is a corporation
11 organized and existing under the laws of the state of Delaware with an office and
12 principal place of business in Goleta, California. Deckers has been engaged in the
13 design, distribution, marketing, offering for sale, and sale of footwear since 1975.
14 Deckers owns several brands of footwear including UGG, Koolaburra , Teva ,
15 Sanuk and Hoka One One
16 5. Upon information and belief Defendant Sears, Roebuck, and Co.
17 (Sears) is a corporation duly organized and existing under the laws of the state of
18 New York with an office and principal place of business at 3333 Beverly Road,
19 Hoffman Estates, Illinois, 60179.
20 6. Upon information and belief Defendant Kmart Corporation (Kmart) is a
21 corporation duly organized and existing under the laws of the state of Delaware with
22 an office and principal place of business at 3333 Beverly Road, Hoffman Estates,
23 Illinois, 60179.
24 7. Upon information and belief, Defendants Sears and Kmart are wholly-
25 owned subsidiaries of Sears Holdings Corporation.
26 8. Deckers is unaware of the names and true capacities of Defendants,
27 whether individual, corporate and/or partnership entities named herein as DOES 1
28 through 10, inclusive, and therefore sues them by their fictitious names. Deckers will

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1 seek leave to amend this complaint when their true names and capacities are
2 ascertained. Deckers is informed and believes and based thereon alleges that said
3 Defendants and DOES 1 through 10, inclusive, are in some manner responsible for the
4 wrongs alleged herein, and that at all times referenced each was the agent and servant
5 of the other Defendants and was acting within the course and scope of said agency and
6 employment.
7 9. Deckers is informed and believes, and based thereon alleges, that at all
8 relevant times herein, Defendants and DOES 1 through 10, inclusive, knew or
9 reasonably should have known of the acts and behavior alleged herein and the damages
10 caused thereby, and by their inaction ratified and encouraged such acts and behavior.
11 Deckers further alleges that Defendants and DOES 1 through 10, inclusive, have a
12 non-delegable duty to prevent or not further such acts and the behavior described
13 herein, which duty Defendants and DOES 1 though 10, inclusive, failed and/or refused
14 to perform.
15 ALLEGATIONS COMMON TO ALL CAUSES OF ACTION
16 A. DeckersSanuk Brand and YOGA SLING Sandal
17 10. In July 2011, Deckers completed the acquisition of the Sanuk brand, a
18 lifestyle footwear brand rooted in surf culture but embraced by an eclectic mix of
19 style-savvy optimists.
20 11. The Sanuk brand is known for the its YOGA SLING sandal, which
21 combines comfort with a chic, unique style sandal made with soft fabric sling straps.
22 12. The Sanuk YOGA SLING was introduced in 2013 and its appearance is
23 unique and distinctive, consisting of a combination of the following non-functional
24 elements (YOGA SLING Trade Dress):
25 i Thong-type sandal with a generally flat sole;
26 i Foot bed is comprised of soft material;
27 i Sling strap formed by a loop of fabric extending from a toe post around
28 the heel and back to the toe post;

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1 i An instep strap extending from the lateral side of the sole across the instep
2 to the medial side of the sole;
3 i The instep strap and the sling strap appear unconnected and the instep
4 strap overlaps the sling strap;
5 i Both the sling strap and the instep strap are formed of a soft fabric having
6 an exaggerated width; and
7 i Binding at the top of the toe post.
8
9
10
11
12
13 13. The YOGA SLING Trade Dress, which is a composite of the above-
14 referenced features, is non-functional in its entirety, visually distinctive, and is unique
15 in the footwear industry.
16 14. The design of the YOGA SLING Trade Dress is neither essential to its
17 use or purpose nor does it affect the cost or quality of the sandal. There are numerous
18 other designs available that are equally feasible and efficient, none of which
19 necessitate copying or imitating the YOGA SLING Trade Dress. The aforesaid
20 combination of features provides no cost advantages to the manufacturer or utilitarian
21 advantages to the consumer. These features, in combination, serve only to render
22 DeckersYOGA SLING sandal distinct and recognizable as goods originating from
23 DeckersSanuk brand.
24 15. The YOGA SLING Trade Dress has achieved a high degree of consumer
25 recognition and secondary meaning, which serves to identify Deckers as the source of
26 footwear featuring said trade dress.
27 16. The YOGA SLING Trade Dress is one of the most well recognized and
28 commercially successful styles of DeckersSanuk brand of footwear. Additionally,

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1 it has been nominated for the past five years as a SIMA (Surf Industry Manufactures
2 Association) Footwear Product of the Year.
3 17. Deckers has spent substantial time, effort, and money in designing,
4 developing, advertising, promoting, and marketing the Sanuk YOGA SLING sandal
5 and has sold millions of dollars worth of said style of sandals.
6 18. Due to its long use, extensive sales, and significant advertising and
7 promotional activities, DeckersYOGA SLING trade dress has achieved widespread
8 acceptance and recognition among the consuming public and trade throughout the
9 United States.
10 B. DefendantsInfringement of DeckersYOGA SLING Trade Dress
11 19. Upon information and belief, Defendants are engaged in the retail sale of
12 a wide range of home merchandise, apparel and automotive products and services.
13 Defendantsretail stores are located nationwide, including within this judicial district.
14 Defendantsproducts can also be purchased online at www.sears.com and/or
15 www.kmart.com (DefendantsWebsites)
16 20. The present lawsuit arises from Defendantswillful infringement of
17 DeckersSanuk YOGA SLING Trade Dressby their BONGO and
18 ATHLETECH brand fabric thong sandals that bear a nearly identical design
19 (Accused Products). Accused Products were discovered and/or purchased from
20 DefendantsWebsites and were shipped to a location in this judicial district.
21
22
23
24
25 DeckersSanuk Yoga Bongo Athletech
SlingSandal WomensPapaya 2 Yoga Womens Camile Sling
26 MatSandal Sandal
27 21. Deckers has not granted a license or any other form of permission to
28 Defendants with respect to any of its trademarks, design patents, trade dress, or other

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1 intellectual property.
2 22. Deckers is informed and believes and herein alleges that Defendants are
3 competitors and have copied DeckersYOGA SLING Trade Dress in an effort to
4 exploit Deckersreputation in the market.
5 23. Deckers is informed and believes and herein alleges that Defendants have
6 acted in bad faith and that their infringing acts have misled and confused and were
7 intended to cause confusion, or to cause mistake, or to deceive as to the affiliation,
8 connection, or association of Defendantsproducts with Deckers, or as to the origin,
9 sponsorship, or approval of the Accused Products by Deckers.
10 FIRST CLAIM FOR RELIEF
11 (Trade Dress Infringement - 15 U.S.C. 1125)
12 24. Deckers incorporates herein by reference the averments of the preceding
13 paragraphs as though fully set forth herein.
14 25. The YOGA SLING Trade Dress is non-functional in its entirety, visually
15 distinctive, and is unique in the footwear industry.
16 26. The design of the YOGA SLING Trade Dress is neither essential to its
17 use or purpose nor does it affect the cost or quality of the sandal. There are numerous
18 other designs available that are equally feasible and efficient, none of which
19 necessitate copying or imitating the YOGA SLING Trade Dress. The aforesaid
20 combination of features provides no cost advantages to the manufacturer or utilitarian
21 advantages to the consumer. These features, in combination, serve only to render
22 DeckersSanuk YOGA SLING sandal distinct and recognizable as goods originating
23 from DeckersSanuk brand.
24 27. The YOGA SLING Trade Dress has achieved a high degree of consumer
25 recognition and secondary meaning, which serves to identify Deckers as the source of
26 footwear featuring said trade dress.
27 28. Deckers has spent substantial time, effort, and money in designing,
28 developing, advertising, promoting, and marketing the Sanuk YOGA SLING sandal

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1 and has sold millions of dollars worth of said style of sandal.

2 29. The YOGA SLING Trade Dress is one of the most well recognized and
3 commercially successful styles of DeckersSanuk brand of footwear.
4 30. Due to its long use, extensive sales, and significant advertising and
5 promotional activities, DeckersYOGA SLING Trade Dress has achieved widespread
6 acceptance and recognition among the consuming public and trade throughout the
7 United States.
8 31. There are numerous other sandal designs in the footwear industry, none of
9 which necessitate copying or imitating the YOGA SLING Trade Dress. However, due
10 to the popularity and consumer recognition achieved by the YOGA SLING sandal,
11 said design has often been the subject of infringement by third-parties, including by
12 Defendants.
13 32. Deckers is informed and believes and herein alleges that Defendants are
14 competitors and have copied DeckersYOGA SLING Trade Dress in an effort to
15 exploit Deckersreputation in the market.
16 33. The Accused Products produced, distributed, advertised and offered for
17 sale by Defendants bear nearly identical reproductions of the YOGA SLING Trade
18 Dress, such as to cause a likelihood of confusion as to the source, sponsorship or
19 approval by Deckers of Defendantsproducts.
20 34. Defendantsuse of DeckersYOGA SLING Trade Dress is without
21 Deckerspermission or authority and in total disregard of Deckersrights to control its
22 intellectual property.
23 35. Defendantsuse of DeckersYOGA SLING Trade Dress is likely to lead
24 to and result in confusion, mistake or deception, and is likely to cause the public to
25 believe that Defendantsproducts are produced, sponsored, authorized, licensed by or
26 otherwise connected or affiliated with Deckers, all to the detriment of Deckers.
27 36. Deckers has no adequate remedy at law.
28

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

2 prohibiting Defendants from using DeckersYOGA SLING Trade Dress, or any
3 designs confusingly similar thereto, and to recover all damages, including attorneys
4 fees, that Deckers has sustained and will sustain, and all gains, profits and advantages
5 obtained by Defendants as a result of their infringing acts alleged above in an amount
6 not yet known, as well as the costs of this action.
7 SECOND CLAIM FOR RELIEF
8 (Trade Dress Infringement Under California Common Law)
9 38. Deckers incorporates herein by reference the averments of the preceding
10 paragraphs as though fully set forth herein.
11 39. Deckers has common law rights to the YOGA SLING Trade Dress in the
12 state of California due to its extensive promotion and sales of products bearing said
13 trade dress within the state of California.
14 40. DeckersYOGA SLING Trade Dress has achieved a high degree of
15 consumer recognition and secondary meaning nationwide and within the state of
16 California, which serves to identify Deckers as the source of high-quality goods.
17 41. Defendantsinfringement of the YOGA SLING Trade Dress constitutes
18 common law trade dress infringement in violation of the common law of the State of
19 California.
20 42. Defendantsunauthorized use of DeckersYOGA SLING Trade Dress
21 has caused and is likely to cause confusion as to the source of Defendantsproducts,
22 all to the detriment of Deckers.
23 43. Defendantsacts are willful, deliberate, and intended to confuse the public
24 and to injure Deckers.
25 44. Deckers has no adequate remedy at law to compensate it fully for the
26 damages that have been caused and which will continue to be caused by Defendants
27 infringing conduct, unless they are enjoined by this Court.
28

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1 45. The conduct herein complained of was extreme, outrageous, and was
2 inflicted on Deckers in reckless disregard of Deckersrights. Said conduct was
3 despicable and harmful to Deckers and as such supports an award of exemplary and
4 punitive damages in an amount sufficient to punish and make an example of
5 Defendants, and to deter them from similar conduct in the future.
6 46. In light of the foregoing, Deckers is entitled to injunctive relief
7 prohibiting Defendants from infringing the YOGA SLING Trade Dress, and to recover
8 all damages, including attorneysfees, that Deckers has sustained and will sustain, and
9 all gains, profits and advantages obtained by Defendants as a result of their infringing
10 acts alleged above in an amount not yet known, and the costs of this action.
11 THIRD CLAIM FOR RELIEF
12 (Unfair Competition Under California Common Law)
13 47. Deckers incorporates herein by reference the averments of the preceding
14 paragraphs as though fully set forth herein.
15 48. Defendantsinfringement of the YOGA SLING Trade Dress constitutes
16 unfair competition in violation of the common law of the State of California.
17 49. Deckers has invested a substantial amount of time, skill and money in
18 developing its footwear styles.
19 50. Upon information and belief, Defendants are competitors of Deckers and
20 have copied Deckersfootwear styles in an effort to exploit Deckersreputation in the
21 market. Defendants misappropriated and used Deckersfootwear styles at little or no
22 cost to Defendants.
23 51. Defendantsmisappropriation and use of Deckersfootwear style was
24 without the authorization or consent of Deckers; and Deckers has been injured by the
25 Defendantsconduct.
26 52. Defendantsinfringing acts were intended to capitalize on Deckers
27 goodwill associated therewith for Defendantsown pecuniary gain. Deckers has
28 expended substantial time, resources and effort to obtain an excellent reputation for its

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1 Sanuk brand of footwear. As a result of Deckersefforts, Defendants are now

2 unjustly enriched and are benefiting from property rights that rightfully belong to
3 Deckers.
4 53. Defendantsacts are willful, deliberate, and intended to confuse the public
5 and to injure Deckers.
6 54. 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 they are enjoined by this Court.
9 55. Defendantsinfringing conduct was extreme, outrageous, and was
10 inflicted on Deckers in reckless disregard of Deckersrights. 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.
14 56. In light of the foregoing, Deckers is entitled to injunctive relief
15 prohibiting Defendants from infringing the YOGA SLING Trade Dress, and to recover
16 all damages, including attorneysfees, that Deckers has sustained and will sustain, and
17 all gains, profits and advantages obtained by Defendants as a result of their infringing
18 acts alleged above in an amount not yet known, and the costs of this action.
19 PRAYER FOR RELIEF
20 WHEREFORE, Plaintiff Deckers Outdoor Corporation respectfully prays for
21 judgment against Defendants Sears, Roebuck and Co. and Kmart Corporation, as
22 follows:
23 1. A judgment that Defendants have infringed DeckersYOGA SLING
24 Trade Dress in violation of 15 U.S.C. 1125 and that Defendantsinfringement was
25 willful;
26 2. An order granting temporary, preliminary and permanent injunctive relief
27 restraining and enjoining Defendants, their agents, servants, employees, officers,
28 associates, attorneys, and all persons acting by, through, or in concert with any of them

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1 from using infringing DeckersYOGA SLING Trade Dress, including, but not limited
2 to:
3 a. manufacturing, importing, advertising, marketing, promoting,
4 supplying, distributing, offering for sale, or selling the Accused Products or any other
5 products which bear DeckersYOGA SLING Trade Dress, or designs confusingly
6 similar thereto;
7 b. engaging in any other activity constituting unfair competition with
8 Deckers, or acts and practices that deceive consumers, the public, and/or trade,
9 including without limitation, the use of designations and design elements used or
10 owned by or associated with Deckers; and
11 c. committing any other act which falsely represents or which has the
12 effect of falsely representing that the goods and services of Defendants are licensed by,
13 authorized by, offered by, produced by, sponsored by, or in any other way associated
14 with Deckers;
15 3. Ordering Defendants to recall from any distributors and retailers and to
16 deliver to Deckers for destruction or other disposition all remaining inventory of all
17 Accused Products and related items, including all advertisements, promotional and
18 marketing materials therefore, as well as means of making same;
19 4. Ordering Defendants to file with this Court and serve on Deckers within
20 thirty (30) days after entry of the injunction a report in writing, under oath setting forth
21 in detail the manner and form in which Defendants have complied with the injunction;
22 5. Ordering an accounting by Defendants of all gains, profits and advantages
23 derived from their wrongful acts pursuant to 15 U.S.C. 1117(a);
24 6. Awarding Deckers all of Defendantsprofits and all damages sustained by
25 Deckers as a result of Defendantswrongful acts, and such other compensatory
26 damages as the Court determines to be fair and appropriate;
27 7. Awarding enhanced damages;
28

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1 8. Finding that this is an exceptional case under 15 U.S.C. 1117 and

2 awarding attorneysfees there under;
3 9. Awarding applicable interest, costs, disbursements and attorneysfees;
4 10. Awarding Deckers punitive damages in connection with its claims under
5 California law; and
6 11. Such other relief as may be just and proper.
7
8 Dated: September 27, 2017 BLAKELY LAW GROUP
9
10 By: _______________________________
Brent H. Blakely
11 Cindy Chan
Jessica C. Covington
12 Attorneys for Plaintiff
Deckers Outdoor Corporation
13
14
15
16
DEMAND FOR JURY TRIAL
17
Pursuant to Rule 38(b) of the Federal Rules of Civil Procedure, Plaintiff Deckers
18
Outdoor Corporation hereby demands a trial by jury as to all claims in this litigation.
19
20
Dated: September 27, 2017 BLAKELY LAW GROUP
21
22
By: _______________________________
23 Brent H. Blakely
Cindy Chan
24 Jessica C. Covington
Attorneys for Plaintiff
25 Deckers Outdoor Corporation
26
27
28

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