The good, the bad, and the Ugg-ly
Deckers Outdoor Corporation Inc v Farley (No 5)  FCA 1298
The dispute over liability for the sale of sheepskin boots featuring the “UGG” brand reached its final conclusion on 13 November 2009 when Justice Tracey handed down his decision on the last-remaining issues of copyright infringement, passing off and misleading and deceptive conduct in Deckers Outdoor Corporation Inc v Farley (No 5)  FCA 1298.
There had been a total of 23 respondents to the proceeding but a series of settlements and summary judgments had left Deckers Outdoor Corporation Inc to advance its claims only against Hepbourne Pty Ltd. Justice Tracey held that copyright subsisted in Deckers’ “UGG Logo” and its “sun device” and held that Hepbourne had both infringed and authorised the infringement of those copyright works on its “UGG” branded boots.
His Honour also found that, based on Deckers’ well-established reputation in the UGG brand, Hepbourne had engaged in passing off and misleading and deceptive conduct under ss52 and 53 of the Trade Practice Act 1974 (Cth) (“the TPA”). Compensatory damages were assessed at $3,000,000 and Justice Tracey ordered Hepbourne to pay $3,500,000 in additional damages for infringing conduct described as “one of the worst of its kind to come before the Court”.
For a full report on this decision, please refer to the next edition of the Davies Collison Cave eMag.