One
of
my
objectives
with
my
high
school
IP
class
is
to
impress
on
the
students
how
IP
disputes
can
often
mirror
what
happens
at
recess,
where
the
tables
can
be
turned
against
the
playground
bully
in
an
instant.
To
illustrate
this
phenomenon
with
a
recent
IP
litigation
example,
I
walked
my
class
through
the
recently
filed
complaint
by
the
owners
of
the
online
storefront
and
near-luxury
brand,
Quince,
against
Deckers
Footwear,
which
owns
the
popular
Uggs
footwear
line.
Quince’s
complaint
alleges
that
“Deckers
is
trying
to
prevent
lawful
competition
through
‘template’
lawsuits.”
Quince
goes
further
to
accuse
Deckers
of
operating
a
“litigation
assembly
line”
by
churning
out
template
complaints
asserting
exclusive
rights
over
basic
and
unprotectable
product
features,”
as
part
of
a
scheme
to
solidify
its
majority
position
in
the
“sheepskin
casual
footwear
market”
through
abusive
litigation
practices.
The
filing
is
quite
a
turnaround
from
a
few
years
ago,
when
it
was
Quince
being
sued
by
Deckers
for
trade
dress
and
design
patent
infringement
related
to
Quince’s
popular
dupes
of
certain
Uggs
models,
including
the
Classic
Ultra
Mini.
With
the
earlier
Deckers
lawsuit
heading
for
trial
with
respect
to
the
design
patent
claims,
it
makes
sense
that
Quince
would
try
to
leverage
its
earlier
win
on
the
trade
dress
issues
to
increase
the
pressure.
For
those
unfamiliar
with
the
prior
round
of
litigation
between
Quince
and
Deckers,
this
article
does
a
good
job
of
hitting
the
highlights.
In
that
case,
Deckers
called
out
Quince’s
approach
of
targeting
“high-revenue”
footwear
styles
for
copying.
In
support,
it
pointed
out
that
Quince
did
not
have
any
footwear
designers
on
staff,
even
as
it
offered
a
number
of
models
that
were
dupes
of
top-selling
Uggs
products.
For
its
part,
Quince
argued
that
Deckers’
design
patent
was
invalid
and
that
the
trade
dress
claims
failed
for
a
host
of
reasons,
including
genericness.
On
summary
judgment,
the
court
declined
to
invalidate
the
design
patent,
hence
the
upcoming
infringement
trial
with
respect
to
those
claims.
On
trade
dress,
however,
it
was
a
clean
sweep
in
Quince’s
favor,
with
the
court
finding
that
“the
designs
were
unprotectable
as
generic.”
This
was
true
even
when
there
was
no
evidence
that
the
competing
designs
predated
those
of
Uggs,
and
where
Quince
provided
no
evidence
demonstrating
that
those
competing
designs
were
not
knock-offs
themselves.
Barring
settlement,
the
court’s
trade
dress
decision
—
as
well
as
whatever
results
from
the
upcoming
design
patent
trial
—
almost
certainly
faces
appellate
review
in
the
future.
In
the
meantime,
however,
Quince
is
clearly
trying
to
press
its
newfound
advantage
with
its
new
filing
on
antitrust
grounds.
That
filing
puts
Deckers’
prior
trade
dress
litigation
strategy
in
the
crosshairs,
while
introducing
at
least
the
prospect
that
Deckers
will
face
monetary
consequences
for
its
monopolistic
overtures.
Definitely
a
case
to
watch
for
those
of
us
who
consult
with
clients
on
issues
around
dupes.
What
about
my
students,
many
of
whom
are
proud
Uggs
owners?
All
but
one
had
never
heard
of
Quince
—
and
when
I
showed
them
a
listing
on
Quince’s
website
for
the
“Australian
Shearling
Mini
Boot”
the
reaction
was
unanimous.
“Those
look
like
Uggs!”
When
I
pressed
them,
however,
about
what
specific
design
elements
led
them
to
that
exclamation,
some
doubt
about
whether
Quince’s
version
was
a
direct
copy
or
a
dupe
started
to
creep
in.
And
when
I
asked
whether
anyone
would
buy
the
Quince
product
thinking
that
it
was
an
Ugg
product,
the
response
was
unanimous
as
well
that
no
right-thinking
person
would.
As
an
exercise,
it
was
interesting
to
see
how
their
gut
reaction
as
to
whether
a
dupe
was
infringing
shifted
once
they
were
confronted
with
some
of
the
legal
background
on
what
commercial
harm
the
trademark
laws
are
really
designed
to
protect.
One
can
argue
that
these
students
were
perhaps
more
brand-focused
and
sophisticated
than
average
consumers.
Or
that
their
initial
reaction
was
tainted
by
the
fact
that
for
them
Uggs
was
a
brand
they
wore
themselves,
and
that
the
thought
of
wearing
a
Quince
dupe
was
not
appealing
to
them.
At
the
same
time,
they
applauded
Quince’s
new
filing,
at
least
from
the
perspective
of
trying
to
punish
Deckers
for
its
prior
bullying
behavior
against
less-resourced
erstwhile
competitors.
And
while
they
might
not
be
Quince’s
target
customer
for
the
foreseeable
future,
they
appreciated
Quince’s
efforts
to
promote
fair
competition
at
a
lower
price
point
that
might
be
more
accessible
for
certain
customers.
As
always,
I
left
the
class
impressed
with
the
capacity
of
the
students
to
appreciate
the
competing
narratives,
even
as
their
innate
senses
of
sympathizing
with
the
underdog
seemed
to
propel
them
in
Quince’s
direction
with
respect
to
a
rooting
interest
in
this
dispute.
Ultimately,
at
least
from
Quince’s
perspective,
its
new
filing
is
a
prime
example
of
the
bully
getting
their
due.
While
we
need
to
wait
and
see
how
both
the
new
case
and
the
case
heading
to
trial
turn
out,
I
am
sure
Quince
enjoys
being
on
the
distributing
end
of
a
litigation
punch,
after
absorbing
early
hits
from
Deckers’
end.
It
probably
also
helps
that
Quince
just
closed
on
a
$500
million
funding
round,
because
we
all
know
litigation
is
expensive
and
can
be
a
drain
on
corporate
resources.
For
now,
it
seems
like
Quince
absorbed
the
lesson
from
the
classic
Charles
Atlas
magazine
ads
—
one
shouldn’t
be
scared
of
confronting
bullies,
but
only
once
you
are
strong
enough
to
take
them
on.
Please
feel
free
to
send
comments
or
questions
to
me
at
[email protected]
or
via
Twitter:
@gkroub.
Any
topic
suggestions
or
thoughts
are
most
welcome.
Gaston
Kroub
lives
in
Brooklyn
and
is
a
founding
partner
of Kroub,
Silbersher
&
Kolmykov
PLLC,
an
intellectual
property
litigation
boutique,
and Markman
Advisors
LLC,
a
leading
consultancy
on
patent
issues
for
the
investment
community.
Gaston’s
practice
focuses
on
intellectual
property
litigation
and
related
counseling,
with
a
strong
focus
on
patent
matters.
You
can
reach
him
at [email protected] or
follow
him
on
Twitter: @gkroub.