When Culture and Copyright Clash in an UGGly Lawsuit
The “Ugg” phenomena took North America by storm when Oprah Winfrey first endorsed the Ugg boots – furry, cozy, shaggy, and ‘ugly’ footwear. While these unique-looking booties were heckled for some time, the footwear eventually became mainstream and coveted by celebrities and the general public alike.
This UGGly bootie is so popular, in fact, that it has started a number of legal battles over copyright and trademark rights. The latest copyright lawsuit is by Deckers Outdoor Corp., a company based in California, United States, that owns the copyright and trademark to the brand name Uggs. The company is suing the Australian shoemaker, Australian Leather, for using it.
The lawsuit may seem like such a slap in the face to Australians (as some may describe it) because the words ‘uggs,’ ‘ugg,’ ‘ugh,’ and ‘ughs’ have been generically used to describe the unique-looking footwear ever since a surfer named Corky Carroll first sold the footwear in the 1960s and 1970s. This was long before the brand name Ugg was appropriated via copyright and trademark by Deckers.
In Australian slang ‘ughs’ means sheepskin booties designed by surfers says The New York Times.
Australian beach surfers wore them on bare feet because of their ability to wick moisture away and keep feet warm or cool.
According to Nick Xenophon, an Australian senator – who spoke to The New York Times – if France gets to protect ‘Champagne,’ Greece owns the rights to ‘Feta,’ and Portugal has the copyright to ‘Port.’ Surely Australia should be able to trademark the word ‘Ugg.’
Copyright and trademark intellectual property rights are all inventions of the 21st century, and there isn’t a consensus on what words should belong in the public domain.
There is growing resentment over that common names known well in Australia are being trademarked in the United States. For example, Bondi Wash, a Sydney-based company that makes natural baby lotions, soaps, and dog rinses, was denied trademark rights in the United States due to the similarity of the name ‘Bondi’ held by Abercrombie & Fitch. Even though Bondi Beach is one of Australia’s most famous beaches, an Australian-based company does not necessarily get dibs on copyright. The name was trademarked by a prominent U.S. company, presumably because they claimed it first.
In 2010, EMU Australia said it was ‘amused’ by allegations it had misled customers into believing they were buying a product by UGG Australia, which a U.S. company, Deckers Outdoor Corp, owns. The statement was issued as a response after it dismissed a lawsuit alleging it was misleading customers. It clarified that ‘ugg’ and ‘ugg boots’ are generic terms commonly used to describe particular boots.
UGG Australia alleged in the intellectual property lawsuit that EMU Australia, among others, ‘market their wares by deliberately confusing customers.’
The cultural clash and lack of understanding is because the word ‘ugg’ is uncommon in North America. Thus, locally based companies view the use of the word as copyright and trademark infringement.
However, according to EMU, the word ‘ugg’ is used in more than 70 registered trademarks in Australia and New Zealand.
The issue is a large one for Australia Xenophon reported ABC. Every other manufacturer in the country is being held back because of the American trademark protection and copyright laws. They cannot export Australian quality Ugg boots to the rest of the world, having the word “Ugg” associated with their goods. Of course, Xenophon hopes Australian Leather wins the copyright court action, which is expected to go to trial next year.
Copyright and trademark laws in the United States have also raised issues around the stalled manufacturing of Ugg boots; the sheer number of knock-off products from countries such as China overwhelms the market. Because Australian companies respect trademark and copyright laws and don’t sell their product overseas, knock-off products from countries such as China can gain an even bigger advantage by having ‘Made in China’ tags removed and labelled as being made in Australia.
The Ugg booties were developed even before wetsuits, said Kiwi White, a well-known Southern Australian west coast surfer. It is no wonder that Uggs are popular with surfers. Originally, White explained they would wear shorts and footy jumpers without any leg ropes. They would come in from the surf and sit in front of the fire to warm up, and Uggs were the perfect footwear for that. The convenience of slipping the booties on and off could not be beaten.
For many down south, “ugg” boots are synonymous with Australia and the surf culture. However, for companies, it’s a reminder of the importance and value that intellectual protection of your branding can bring locally and globally.
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**The information provided herein is a general background of contractual, technology and intellectual property law concepts. It does not constitute legal advice, and should not be relied upon as legal advice. Athena Innovation & Legal, nor the author, make no express or implied representations or warranties in respect of the information, including but not limited to the accuracy of the information.**
