An Ugg by any other name? Battle brews over brand
Australians, including PM, say boots should be generic ‘uggs’
LIDCOMBE, AUSTRALIA— Three decades before Oprah Winfrey ignited a fashion firestorm by promoting the fleecy footwear known as Uggs, a surfer named Corky Carroll packed a pair of something very similar for what would turn out to be a fateful journey.
Carroll, a famous surfer in the 1960s and ’70s, discovered the boots while hitting the waves in Australia, where locals used them to keep their feet warm on cold days at the beach.
Carroll brought a pair back with him to California, he said, then asked a friend to send him a hundred to sell on consignment after other surfers began admiring them.
“I have always loved them, very comfortable and warm,” Carroll, who still owns a pair, said in an email from his Mexico home. “Also easy to get on and off.”
Carroll’s account is now part of a court dispute that is raising hackles in Australia over footwear that has sometimes been derided as unflattering and just plain ugly.
Though Australian by pedigree, the Uggs brand name in the United States is owned by a company based in California — and that firm is suing an Australian shoemaker for using it.
Australians — up to and including Malcolm Turnbull, the prime minister — say Uggs should simply be uggs.
In a letter dated to July, Turnbull said he had asked the Australian Embassy in Washington to get information from the U.S. government about the dispute and to “reiterate Australia’s view that ‘ugg’ is a generic term.” The argument may be tough to make in the United States, legal experts say. While uggs may be generic in Australia, Uggs are not in the United States.
“Trademark law tends to be very parochial when it comes to this sort of thing,” Barton Beebe, a professor of intellectual property law at New York University, said in an email. “It only cares about the perception of the relevant consumer population, and in the U.S., the relevant population was not likely and probably still isn’t likely influenced by Australian English.”
Uggs — the generic kind — might seem like an odd place for Australia to plant its cultural flag. But it comes as some in Australia fume about people outside the country appropriating Australian names and ideas. Winfrey, Kate Moss and Sarah Jessica Parker may have helped make the footwear famous around the world, but many Australians want to call Uggs their own.
“If the French can protect ‘Champagne’, the Portuguese ‘Port,’ the Spanish ‘Sherry’ and the Greeks ‘Feta,’ ” Nick Xenophon, an Australian senator, said in a recent statement, alluding to the brand protections that some famous names enjoy, “then surely Australia can protect the word ‘Ugg.’ ” (Xenophon on Friday said he would resign as a senator.)
Uggs came and went from public view in the United States since they were trademarked there, but they won a big boost from Winfrey, the talk-show host, who came out as a fan in the early 2000s.
Their roots are more humble. According to Australian trademark officials, they appeared as early as the 1970s in phone directory ads as ug, ugg, ugh boots, among many other variations.
“In Australian slang, ‘ughs’ are sheepskin booties, designed by surfers in the 1960s to coddle feet weary after ‘shooting the curl,’ ” the New York Times said in 1994.
The brand’s U.S. owner, the Deckers Outdoor Corp., argues that in the 1990s, it bought the U.S. registered name from an Australian entrepreneur, Brian Smith, fair and square. Australians violate the company’s intellectual property rights, it said, when they sell Ugg-like footwear in the United States.
Last year, it sued an Australian shoemaker owned by Eddie Oygur in a Chicago federal court, saying he sold ersatz Uggs in the United States. Oygur sold about $2,000 (U.S.) worth of lowercase ugg boots in the United States over a five-year period, his lawyer said, and believed he had every right to.
“I want to let the American people know what corporate bullies they are and what they’re trying to do — deplete my resources, ruin my business and the whole ugg boot industry,” Oygur said in his factory in Lidcombe, a Sydney suburb.
Oygur, 56, plans to take his argument to the court of American public opinion. On Sunday, he said, he plans to join Xenophon to drive a herd of sheep to Deckers’ headquarters, in Goleta, Calif.
“Certain words really belong in the public domain,” said Matthew Rimmer, an intellectual property and innovation professor at Queensland University of Technology’s law school. “There’s a certain Australian pride in the ugg boot, and a belief that it is a common article of clothing in Australia and resentment over it being claimed by a United States trademark holder.” Oygur’s company, Australian Leather, hopes to undercut Deckers’ argument by saying Uggs were once uggs in the United States too, before they were improperly registered as a trademark. To bolster its argument, it tapped Carroll and another famous surfer, John Arnold, who said he exported large volumes of ugg boots to the United States beginning in the late 1960s.
“My honest opinion is that the term ‘Ugg boot’ is not something that should be owned as it is a description,” said Carroll, who said he believed the name first came from Australian surfers who thought they were ugly.
“A boot that was ugly,” he said. “That is different from a brand name.”