Buy Ugg Boots Australia
HOROWITZ-GHAZI: That's right. This story is all about Uggs which, if you haven't seen these boots, they're usually about calf high, sort of suede on the outside, wooly on the inside. And Eddie runs a leather goods business out of Sydney, Australia - been in the game for over 40 years. In addition to leather jackets and earmuffs, Eddie makes his daily bread from selling what he calls ugg boots. And I didn't understand this kind of key thing about these boots until Eddie explained it to me.
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HOROWITZ-GHAZI: This kind of blew my mind. For Australians, Ugg is not just a particular brand of boot. It is also a generic category of footwear - you know, like cowboy boots or flip-flops. And the problem at the center of Eddie's legal fight is what you're allowed to call these boots, how you're allowed to use the word ugg.
HOROWITZ-GHAZI: Deckers owns the American trademark for the Ugg brand. And apparently, they had evidence that Eddie's company had sold a few pairs of boots online to buyers in the United States - boots that were listed as uggs. And if you look at Ugg brand boots next to any generic Australian uggs, including the ones Eddie sold online, it can be kind of hard to tell the difference. Deckers claimed that what he had done was trademark infringement, and now they were hitting him with this big, menacing lawsuit.
HOROWITZ-GHAZI: Hello and welcome to PLANET MONEY. I'm Alexi Horowitz-Ghazi. Since the 1980s, Ugg boots went from a cozy niche in the world of footwear to a multibillion-dollar global market, warming the illustrious toes of Britney Spears and Sarah Jessica Parker. And along the way, the word ugg itself became this invaluable piece of intellectual property. Today on the show, Eddie Oygur's quest to free the humble ugg boot from the iron grip of the Deckers Outdoor Corporation, what it tells us about this system where everyday words can be fenced off as private property and the force threatening every trademark in existence. I don't know about you, but when somebody mentions the word Ugg these days, it makes me think of Lindsay Lohan circa "Mean Girls" or Tom Brady and Gisele snuggled up apres-ski in some snow-covered lodge. The boots have become a sort of icon of basic taste, along with the pumpkin spice latte or the live, laugh, love poster. But as Brian Smith will tell you, this was not always the case.
HOROWITZ-GHAZI: Brian says the ugg boot as a generic kind of footwear has been around Australia since the mid-20th century. And by the '70s, they'd become a kind of staple of the surf culture there. There are several apocryphal stories about how these woolly boots got their name. Some say it's simply short for ugly. Others chalk it up to a joke about what cavemen might have called their primitive sheepskin boots - you know, like uggs. But whatever the etymological origin, Brian says the story of how ugg went from an everyday word to a piece of international intellectual property goes back to a fall day in Malibu in the late 1970s. Brian had been studying to be an accountant in Australia, but his heart wasn't really in it. Most days, he'd rather be surfing or meditating.
SMITH: I was sitting on the beach after surfing. The water was really cold. And I was pulling on my sheepskin boots that I'd brought from Australia. And I went, oh, my God. And I got this massive dose of goosebumps. And I thought, there's no ugg boots in America.
HOROWITZ-GHAZI: It wasn't quite instant, but Brian started by doing two things. First, he imported an initial 500 pairs of boots from Australia. And second, he decided to look into getting a trademark in the U.S. He knew that all the most successful brands here were built around some particular name - you know, Tide, Marlboro, Coca-Cola. And if he was going to follow in their footsteps, he would need to own a distinctive word himself. He thought, well, the word ugg became a household name in Australia. Why fix what isn't broken? So he hired a lawyer to look into trademarking the word ugg, spelled U-G-G.
HOROWITZ-GHAZI: Brian knew the trademark would be an essential ingredient to growing the business. Most Americans had never heard of an ugg. It was going to take a lot of marketing work to put them on the map and to convince skeptical American buyers to put their unsocked (ph) feet into these woolly boots. Brian wanted to make sure that all that investment would be rewarded, that a wave of other ugg importers couldn't just swoop in and capitalize on his hard work. So he filed the paperwork, paid a few thousand bucks.
HOROWITZ-GHAZI: After he got the trademark, Brian says he filed it away in a drawer and kind of forgot about it for a while because the most pressing issue was actually making sales. Brian spent the first few years selling his boots out of the back of his van, going to swap meets and trade shows, working his way from the summer surfer set to the wintry, apres-ski crowd. And by the mid-'90s, Brian had grown Ugg into a decent-sized company, making millions of dollars in sales a year, by which point he was kind of ready to get out of the game, to sell the company.
JENKINS: If, you know, a whole bunch of people are using the word ugg with boots and Deckers doesn't stop them and it just, you know, goes on and on and on and on and on, then that could chip away at the protection that they enjoy.
HOROWITZ-GHAZI: In the years after they bought Ugg, Deckers expanded their web of trademark protection all around the world - except Australia. They lost their trademark there. So generic ugg makers in Australia can still domestically sell their uggs as uggs. But in most other countries, if someone were to use the word ugg to describe a sheepskin woolly boot they were selling, they would step right into Deckers' legal web, which brings us back to Eddie Oygur, the Australian businessman who was ensnared after selling some 12 pairs of generic Australian ugg boots online to American buyers because among those buyers was the Deckers Outdoor Corporation itself. Their investigators actually bought four pairs from Eddie's website, which they then used as evidence to bring charges against him.
Unlike many of the folks who'd been sued by Deckers and decided to settle and sell their boots under a different description, Eddie decided to fight back. Eddie says that what Deckers was demanding when they filed their lawsuit - that he destroy his stock and shut down his website - those things threatened the viability of his business. So he was going to respond in kind. He was going to try to destroy their business by going after one of the things that made it so valuable in the first place - their trademark on the word ugg.
HOROWITZ-GHAZI: What Eddie and his lawyers were arguing in their fight against Deckers was, look, you cannot trademark a generic term. Ugg was a generic term for sheepskin boots back when Brian Smith was granted a trademark in the mid-'80s. It should never have gotten that protection in the first place. And the U.S. courts should essentially rectify that earlier mistake by dissolving Deckers' grip on the word ugg. The problem with Eddie's argument, Jennifer explains, is that...
HOROWITZ-GHAZI: Eddie didn't have the money to fund his own linguistic survey, so he couldn't refute their evidence. But his legal team had a second argument. Basically, they said, fine. The word ugg may not invoke a generic category of boots in the minds of most American consumers, but there is a specific rule in U.S. trademark law forbidding the protection of generic words in other languages. It is a rule called...
HOROWITZ-GHAZI: Jennifer says it isn't clear sheepskin boots could even have a terroir. And more practically, the question of whether something gets designated as a geographical indication is more about political willpower than it is about legal reasoning. But the Australian government did not seem keen on expending its political capital to protect their domestic ugg industry. So Eddie's main avenue for justice was the U.S. courts and U.S. trademark law.
OYGUR: Yeah. Fined me 450,000 U.S. for breaching the trademark, plus all their fees for their lawyers, which worked around $3 million. So I have to pay equivalent to $4 million Australian dollars for selling 12 pairs of boots. Where's the justice in this?
HOROWITZ-GHAZI: Eddie says Deckers has yet to claim their legal fees. And to this day, he continues to sell the boots in question on his website. But here in the U.S. anyway, he calls them sheepskin boots. He does not call them uggs.
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