Case 2:20-cv-01079 Document 1 Filed 02/03/20 Page 1 of 17 Page ID #:1

1 Brent H. Blakely (SBN 157292)

bblakely@blakelylawgroup.com
2 Mark S. Zhai (SBN 287988)
mzhai@blakelylawgroup.com
3 BLAKELY LAW GROUP
1334 Parkview Avenue, Suite 280
4 Manhattan Beach, California 90266
Telephone: (310) 546-7400
5 Facsimile: (310) 546-7401
6 Tim Byron (SBN 277569)
tbyron@byronraphael.com
7 BYRON RAPHAEL LLP
100 Pine Street, Suite 1250
8 San Francisco, CA 94111
Telephone: (415) 839-8500
9
Jordan Raphael (SBN 252344)
10 jraphael@byronraphael.com
1055 West 7th Street, Suite 3300
11 Los Angeles, CA 90017
Telephone: (213) 291-9800
12
Attorneys for Plaintiff
13 Deckers Outdoor Corporation
14
UNITED STATES DISTRICT COURT
15
CENTRAL DISTRICT OF CALIFORNIA
16
17 DECKERS OUTDOOR ) CASE NO.
CORPORATION, a Delaware )
18 Corporation, ) COMPLAINT FOR DAMAGES AND
) EQUITABLE RELIEF: PATENT
19 Plaintiff, ) INFRINGEMENT - U.S. PATENT NO.
v. ) D599,999
20 )
ROMEO & JULIETTE, INC. a ) JURY TRIAL DEMANDED
21 California Corporation; and THOMAS )
ROMEO, an individual, and DOES 1-10, )
22 inclusive, )
)
23 )
Defendants. )
24 )
)
25 )
)
26 )
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COMPLAINT FOR DAMAGES AND EQUITABLE RELIEF
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1 Plaintiff Deckers Outdoor Corporation for its claims against Defendants

2 Romeo & Juliette, Inc. and Thomas Romeo (collectively “Defendants”) respectfully
3 alleges as follows:
4 JURISDICTION AND VENUE
5 1. Plaintiff files this action against Defendants for patent infringement
6 arising under the patent laws of the United States. This Court has subject matter
7 jurisdiction over the claims alleged in this action pursuant to 28 U.S.C. §§ 1331, 1338.
8 2. This Court has personal jurisdiction over Defendants because Defendants
9 are incorporated, domiciled, and/or do business within this judicial district.
10 3. This action arises out of wrongful acts by Defendants within this judicial
11 district and Plaintiff is located and has been injured in this judicial district by
12 Defendants’ alleged wrongful acts. Venue is proper in this district pursuant to 28
13 U.S.C. § 1391 because the claims asserted arise in this district.
14 THE PARTIES
15 4. Plaintiff Deckers Outdoor Corporation (“Deckers”) is a corporation
16 organized and existing under the laws of the state of Delaware with an office and
17 principal place of business in Goleta, California. Deckers designs and markets
18 footwear identified by its many famous trademarks including its UGG® trademark.
19 5. Upon information and belief, Defendant Romeo & Juliette, Inc. (“Romeo
20 & Juliette”) is a corporation organized and existing under the laws of the state of
21 California with an office and principal place of business located at 7524 Old Auburn
22 Road, Citrus Heights, California 95610.
23 6. Upon information and belief, Defendant Thomas Romeo is an individual
24 and an owner, officer, director, and/or managing agent of Romeo & Juliette.
25 7. Deckers is unaware of the names and true capacities of Defendants,
26 whether individual, corporate and/or partnership entities named herein as DOES 1
27 through 10, inclusive, and therefore sues them by their fictitious names. Deckers will
28 seek leave to amend this complaint when their true names and capacities are

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COMPLAINT FOR DAMAGES AND EQUITABLE RELIEF
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1 ascertained. Deckers is informed and believes and based thereon alleges that said
2 Defendants and DOES 1 through 10, inclusive, are in some manner responsible for the
3 wrongs alleged herein, and that at all times referenced each was the agent and servant
4 of the other Defendants and was acting within the course and scope of said agency and
5 employment.
6 8. Deckers is informed and believes, and based thereon alleges, that at all
7 relevant times herein, Defendants and DOES 1 through 10, inclusive, knew or
8 reasonably should have known of the acts and behavior alleged herein and the damages
9 caused thereby, and by their inaction ratified and encouraged such acts and behavior.
10 Deckers further alleges that Defendants and DOES 1 through 10, inclusive, have a
11 non-delegable duty to prevent or not further such acts and the behavior described
12 herein, which duty Defendants and DOES 1 through 10, inclusive, failed and/or
13 refused to perform.
14 ALLEGATIONS COMMON TO ALL CAUSES OF ACTION
15 A. Deckers’ UGG® Brand
16 9. Deckers has been engaged in the design, distribution, marketing, offering
17 for sale, and sale of footwear since 1975. Deckers owns several brands of footwear
18 including UGG®, Koolaburra®, Teva®, Sanuk®, and Hoka One One®.
19 10. Deckers’ UGG® brand remains one of the most recognized and relevant
20 comfort shoe brands in the industry. Since 1979, when the UGG® brand was founded,
21 the popularity of UGG® boots has steadily grown across the nation and even the
22 globe. The UGG® brand has always been and remains highly coveted by consumers.
23 This commitment to quality has helped to propel the UGG® brand to its current,
24 overwhelming level of popularity and cemented its status as a luxury brand.
25 11. In 2000, UGG® boots were first featured on Oprah’s Favorite Things®,
26 and Oprah emphatically declared on national television how much she “LOOOOOVES
27 her UGG boots.” The popularity of UGG® brand footwear has grown exponentially
28 since then with celebrities including Kate Hudson and Sarah Jessica Parker among a

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COMPLAINT FOR DAMAGES AND EQUITABLE RELIEF
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1 myriad of others regularly donning them. UGG® sheepskin boots have become a high
2 fashion luxury item and can be found on fashion runways around the world.
3 12. Deckers’ UGG® products are distributed and sold to consumers via
4 authorized retailers throughout the United States at point-of-sale and on the Internet,
5 including through its UGG® Concept Stores and its website www.ugg.com.
6 B. Defendants’ Infringing Activities
7 13. Upon information and belief, Romeo & Juliette manufactures, designs,
8 advertises, markets, distributes, offers for sale, and/or sells footwear under the labels
9 “BearPaw” and “Attix.”
10 14. Upon information and belief, Defendant Thomas Romeo is an owner,
11 officer, and/or managing agent of Romeo & Juliette and is the active, moving,
12 conscious force behind the infringing activities alleged herein.
13 15. The present lawsuit arises from Defendants’ design, manufacture,
14 distribution, advertisement, marketing, offering for sale, and sale of footwear that
15 infringes upon Deckers’ rights in the D599,999 Patent (the “’999 Patent”) (“Accused
16 Products”).
17 16. Deckers is informed and believes and herein alleges that Defendants are a
18 competitor and have introduced Accused Products into the stream of commerce in an
19 effort to exploit Deckers’ reputation in the market established through its patented
20 UGG® designs.
21 17. Upon information and belief, Defendants may have sold additional
22 products that infringe upon Deckers’ design patents. Deckers may seek leave to
23 amend as additional information becomes available through discovery.
24 18. With regard to the infringing boot designs at issue in this lawsuit, Deckers
25 has not granted a license or any other form of permission to Defendants with respect to
26 its design patents.
27 19. The overall appearance of the claimed designs of the ’999 Patent and the
28 corresponding designs of the Accused Products are substantially the same.

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COMPLAINT FOR DAMAGES AND EQUITABLE RELIEF
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1 20. An ordinary observer will perceive the overall appearance of the claimed
2 designs of the ’999 Patent and the corresponding designs of the Accused Products to
3 be substantially the same.
4 21. Deckers is informed and believes and herein alleges that Defendants have
5 acted in bad faith and intended to copy the claimed designs of the ’999 Patent.
6 FIRST CLAIM FOR RELIEF
7 (Patent Infringement - U.S. Patent No. D599,999)
8 22. Deckers incorporates herein by reference the averments of the preceding
9 paragraphs as though fully set forth herein.
10 23. Deckers is the owner of numerous design patents to the various styles of
11 footwear it offers under its UGG® brand, including the “Bailey Button Boot” (U.S.
12 Patent No. D599,999 issued on September 15, 2009). Attached hereto and
13 incorporated herein as Exhibit A is a true and correct copy of U.S. Patent No.
14 D599,999.
15 24. Deckers is the owner by assignment of all right, title and interest in and to
16 the ’999 Patent.
17 25. Defendants have knowingly and intentionally imported, used, caused to
18 be produced, distributed, advertised, marketed, offered for sale, and/or sold footwear
19 that is substantially similar to the ’999 Patent in direct violation of 35 U.S.C. § 271.
20 An example of the Accused Products is shown below:
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UGG® Bailey Button Boot
UGG® Bailey Button Boot Defendants’ Infringing Boot
26 Design Patent D599,999

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COMPLAINT FOR DAMAGES AND EQUITABLE RELIEF
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1 26. Defendants’ aforesaid infringing acts are without Deckers’ permission or

2 authority, in total disregard of Deckers’ right to control its intellectual property, and
3 have been willful, intentional, and deliberate.
4 27. As a direct and proximate result of Defendants’ infringing conduct,
5 Deckers has been injured and will continue to suffer injury to its business and
6 reputation unless Defendants are restrained by this Court from infringing Deckers’
7 ’999 Patent.
8 28. Defendants’ acts have damaged and will continue to damage Deckers, and
9 Deckers has no adequate remedy at law.
10 29. Deckers has marked substantially all footwear products embodying the
11 design of the ’999 Patent in compliance with 35 U.S.C. § 287.
12 30. Given the widespread popularity and recognition of Deckers’ Bailey
13 Button Boot and the patent notice provided on the products themselves, Deckers avers
14 and hereon alleges that Defendants had pre-suit knowledge of Deckers’ rights to the
15 ’999 Patent and has intentionally copied said design on their own products.
16 31. On information and belief, Defendants’ acts herein complained of
17 constitute willful acts and intentional infringement of the ’999 Patent.
18 32. In light of the foregoing, Deckers is entitled to injunctive relief
19 prohibiting Defendants from infringing the ’999 Patent and to recover damages
20 adequate to compensate for the infringement, including Defendants’ profits pursuant to
21 35 U.S.C. § 289. Deckers is also entitled to recover any other damages as appropriate
22 pursuant to 35 U.S.C. § 284.
23 PRAYER FOR RELIEF
24 WHEREFORE, Plaintiff Deckers Outdoor Corporation respectfully prays for
25 judgment against Defendants as follows:
26 1. A judgment and order that Defendants have infringed Deckers’ ’999
27 Patent and that said infringement was willful;
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COMPLAINT FOR DAMAGES AND EQUITABLE RELIEF
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1 2. A judgment and order granting temporary, preliminary and permanent

2 injunctive relief restraining and enjoining Defendants, their agents, servants,
3 employees, officers, associates, attorneys, and all persons acting by, through, or in
4 concert with any of them from using Deckers’ intellectual property, including, but not
5 limited to manufacturing, importing, advertising, marketing, promoting, supplying,
6 distributing, offering for sale, or selling the Accused Products or any other products
7 bearing designs that infringe upon the ’999 Patent and/or the overall appearance
8 thereof;
9 3. A judgment and order requiring Defendants to recall from any distributors
10 and retailers and to deliver to Deckers for destruction or other disposition all remaining
11 inventory of all Accused Products and related items, including all advertisements,
12 promotional and marketing materials therefore, as well as means of making same;
13 4. A judgment and order requiring Defendants to file with this Court and
14 serve on Deckers within thirty (30) days after entry of the injunction a report in
15 writing, under oath setting forth in detail the manner and form in which Defendants
16 have complied with the injunction;
17 5. A judgment and order requiring Defendants to pay Deckers damages
18 adequate to compensate Deckers for Defendants’ infringement of the ’999 Patent
19 pursuant to 35 U.S.C. § 284, or the total profit made by Defendants made from their
20 infringement of the ’999 Patent pursuant to 35 U.S.C. § 289.
21 6. A judgment and order awarding Deckers all of Defendants’ profits and all
22 damages sustained by Deckers as a result of Defendants’ wrongful acts, and such other
23 compensatory damages as the Court determines to be fair and appropriate;
24 7. A judgment and order requiring Defendants to pay increased damages up
25 to three times the amount found or assessed under 35 U.S.C. § 284;
26 8. A determination that this is an exceptional case under 35 U.S.C. § 285 and
27 awarding attorneys’ fees thereunder;
28 9. An award of applicable interest, costs, disbursements and attorneys’ fees;

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COMPLAINT FOR DAMAGES AND EQUITABLE RELIEF
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1 10. A judgment and order requiring Defendants to pay Deckers pre-judgment

2 and post-judgment interest on any damages or profits awarded; and
3 11. Such other relief as may be just and proper.
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5 Dated: February 3, 2020 BLAKELY LAW GROUP
6
7 By: /s/ Brent H. Blakely_________
Brent H. Blakely
8 Mark S. Zhai
Attorneys for Plaintiff
9 Deckers Outdoor Corporation
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COMPLAINT FOR DAMAGES AND EQUITABLE RELIEF
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1 DEMAND FOR JURY TRIAL

2 Pursuant to Rule 38(b) of the Federal Rules of Civil Procedure, Plaintiff Deckers
3 Outdoor Corporation hereby demands a trial by jury as to all claims in this litigation.
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5 Dated: February 3, 2020 BLAKELY LAW GROUP
6
7 By: /s/ Brent H. Blakely_________
Brent H. Blakely
8 Mark S. Zhai
Attorneys for Plaintiff
9 Deckers Outdoor Corporation
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COMPLAINT FOR DAMAGES AND EQUITABLE RELIEF
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EXHIBIT A
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==NU==
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==NV==
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==OM==
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==ON==
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==OO==
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==OP==
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==OQ==