1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 7 DECKERS OUTDOOR CORPORATION, Case No. 23-cv-04850-AMO
8 Plaintiff, ORDER GRANTING IN PART 9 v. PLAINTIFF’S MOTION FOR VOLUNTARY PARTIAL DISMISSAL 10 LAST BRAND, INC., Re: Dkt. No. 257 Defendant. 11
12 13 This is a trademark and patent infringement case about shearling boots. Before the Court 14 is Plaintiff Deckers Outdoor Corporation’s motion for voluntary dismissal of its Bailey Button 15 trade dress claim (claim two) and attendant state law claims (claims four through six) to the extent 16 they are predicated on Deckers’ Bailey Button trade dress. The motion is fully briefed and 17 suitable for decision without oral argument. Accordingly, the hearing set for May 14, 2026, is 18 VACATED. See Civil L.R. 7-6; Fed. R. Civ. Pro. 78(b). Having read the parties’ papers and 19 carefully considered their arguments and the relevant legal authority, and good cause appearing, 20 the Court rules as follows. 21 I. LEGAL STANDARD 22 “Federal Rule of Civil Procedure 41(a)(2) allows a plaintiff, pursuant to an order of the 23 court, and subject to any terms and conditions the court deems proper, to dismiss an action without 24 prejudice at any time.” Westlands Water Dist. v. United States, 100 F.3d 94, 96 (9th Cir. 1996). 25 “The purpose of the rule is to permit a plaintiff to dismiss an action without prejudice so long as 26 the defendant will not be prejudiced . . . or unfairly affected by dismissal.” Stevedoring Servs. of 27 Am. v. Armilla Int’l, B.V., 889 F.2d 919, 921 (9th Cir. 1989). When a plaintiff moves for 1 work “not useful in continuing litigation between the parties.” Kamal v. Eden Creamery, LLC, 88 2 F.4th 1268, 1286-87 (9th Cir. 2023) (quoting Koch v. Hankins, 8 F.3d 650, 652 (9th Cir. 1993)). 3 In determining whether to award fees and costs, courts consider the following: (1) any excessive 4 or duplicative expense of a second litigation; (2) the effort and expense incurred by defendant 5 preparing for trial; (3) the extent to which the litigation has progressed; (4) the plaintiff’s diligence 6 in moving to dismiss; (5) whether awarding costs would discourage early dismissal; and (6) 7 whether fees would produce an anomalous result. DuFour v. Allen, No. 2:14–cv–05616–CAS–SS, 8 2015 WL 1285310, at *4 (C.D. Cal. Mar. 19, 2015); Gonzalez v. Procter & Gamble Co., No. 9 06cv869 WQH (WMC), 2008 WL 612746, at *3 (S.D. Cal. Mar. 4, 2008). 10 II. DISCUSSION 11 Deckers moves the Court to dismiss its Bailey Button trade dress claim (claim two) and 12 attendant state law claims (claims four through six) to the extent they are predicated on Deckers’ 13 Bailey Button trade dress. Dkt. No. 257 at 2. Deckers requests that the dismissal be without 14 prejudice and that the Court decline to award costs to Defendant Last Brand, Inc. Id. at 7-8. In 15 response, Last Brand asks the Court to dismiss the claims with fees and costs and with prejudice. 16 Dkt. No. 269 at 5-7. Hedging its bets, Deckers indicated that if the Court is inclined to grant fees 17 and costs to Last Brand, Deckers alternatively requests that the Court grant the dismissal with 18 prejudice, and without fees or costs. Dkt. No. 270 at 6. 19 Here, the Court finds that voluntary dismissal of the claims warrants fees and costs. The 20 first and second DuFour factors, DuFour, 2015 WL 1285310, at *4, are satisfied, as Last Brand 21 has incurred expenses in preparing to defend against Deckers’ trade dress claims for trial. See 22 Dkt. No. 269 at 5. If the Court dismisses Deckers’ Bailey Button trade dress claim, the parties 23 agree all trade dress causes of action fall away and only the patent infringement claim remains. 24 See generally Dkt. Nos. 257, 269. In preparing for trial, Quince developed defenses on secondary 25 meaning, likelihood of confusion, functionality, and trade dress damages – none of which are 26 elements of or defenses to the patent infringement claim. Dkt. No. 269 at 5. Thus, that work is 27 “not useful in continuing litigation between the parties.” Kamal, 88 F.4th at 1286-87 (quotation 1 stage, as trial is less than two months away, and Deckers was not diligent in moving to dismiss its 2 trade dress claims. DuFour, 2015 WL 1285310, at *4. Deckers moves to dismiss because “the 3 potential damages attributable to the Bailey Button Boot Trade Dress are disproportionately low 4 compared to the incremental time, expense, and resources required to present four additional 5 claims at trial.” Dkt. No. 257 at 4. But Deckers had all the accused products’ sales and profits 6 data by the close of fact discovery on September 27, 2024, and its damages expert issued his 7 opening report on November 15, 2024. Dkt. No. 257 at 6. Further, the Court issued its summary 8 judgment order, which dismissed all other trade dress claims, on October 2, 2025. Dkt. No. 203. 9 Thus, Deckers could have determined that the costs of trying its Bailey Button Boot trade dress 10 claims outweighed the potential recovery at that time. As to the fifth factor, awarding costs does 11 not discourage early dismissal because, had Deckers moved to dismiss these claims earlier in the 12 litigation, the Court may not have awarded costs and fees. Gonzalez, 2008 WL 612746, at *4 13 (“Awarding fees and costs would not discourage plaintiffs from seeking early dismissal in other 14 actions because the Motion for Voluntary Dismissal was not filed at an early stage of the 15 proceedings”.). Finally, awarding costs and fees would not produce an “anomalous” result 16 because the Lanham Act allows for fee-shifting in “exceptional cases.” See id. (“[T]he imposition 17 of attorneys’ fees would produce an ‘anomalous result’ where defendants could not recover fees if 18 they prevailed at trial.”); 15 U.S.C. § 1117(a). For these reasons, the Court finds it proper to 19 award fees and costs to Last Brand. 20 The Court next takes up Deckers’ alternative request that the dismissal be with prejudice, 21 and without fees or costs. Dkt. No. 270 at 6 (citing Gonzalez v. Procter & Gamble Co., No. 06- 22 cv-869, 2008 WL 612746, at *3 (S.D. Cal. Mar. 4, 2008) (recognizing that a plaintiff “faced with 23 the imposition of attorneys’ fees and costs as a condition of voluntary dismissal may request that 24 the action be dismissed with prejudice to avoid payment”)). Last Brand agrees that Deckers is 25 allowed to “make that election.” Dkt. No. 269 at 8. Because Deckers consents to dismissal with 26 prejudice in place of the imposition of fees and costs, the Court GRANTS the motion and 27 DISMISSES WITH PREJUDICE claim two and claims four through six to the extent they rely on 1 not award fees and costs to Last Brand. See Larsen v. King Arthur Flour Co., No. C 11–05495 2 CRB, 2012 WL 2590386, at *1 (N.D.Cal. July 3, 2012) (“Attorneys’ fees and costs will not be 3 imposed as a condition for voluntary dismissal with prejudice because there is no risk of future 4 litigation.”). 5 In its opposition brief, Last Brand additionally requests that the Court award it fees and 6 costs under the Lanham Act because Last Brand is the prevailing party and this is an “exceptional 7 case[.]” Dkt. No. 269 at 8 (quoting 15 U.S.C. § 1117(a)). Last Brand provides no authority to 8 suggest this request is properly made in opposition to Deckers’ motion for voluntary dismissal. 9 Accordingly, the Court declines Last Brand’s invitation to award fees under the Lanham Act at 10 this procedural stage. 11 III.
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1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 7 DECKERS OUTDOOR CORPORATION, Case No. 23-cv-04850-AMO
8 Plaintiff, ORDER GRANTING IN PART 9 v. PLAINTIFF’S MOTION FOR VOLUNTARY PARTIAL DISMISSAL 10 LAST BRAND, INC., Re: Dkt. No. 257 Defendant. 11
12 13 This is a trademark and patent infringement case about shearling boots. Before the Court 14 is Plaintiff Deckers Outdoor Corporation’s motion for voluntary dismissal of its Bailey Button 15 trade dress claim (claim two) and attendant state law claims (claims four through six) to the extent 16 they are predicated on Deckers’ Bailey Button trade dress. The motion is fully briefed and 17 suitable for decision without oral argument. Accordingly, the hearing set for May 14, 2026, is 18 VACATED. See Civil L.R. 7-6; Fed. R. Civ. Pro. 78(b). Having read the parties’ papers and 19 carefully considered their arguments and the relevant legal authority, and good cause appearing, 20 the Court rules as follows. 21 I. LEGAL STANDARD 22 “Federal Rule of Civil Procedure 41(a)(2) allows a plaintiff, pursuant to an order of the 23 court, and subject to any terms and conditions the court deems proper, to dismiss an action without 24 prejudice at any time.” Westlands Water Dist. v. United States, 100 F.3d 94, 96 (9th Cir. 1996). 25 “The purpose of the rule is to permit a plaintiff to dismiss an action without prejudice so long as 26 the defendant will not be prejudiced . . . or unfairly affected by dismissal.” Stevedoring Servs. of 27 Am. v. Armilla Int’l, B.V., 889 F.2d 919, 921 (9th Cir. 1989). When a plaintiff moves for 1 work “not useful in continuing litigation between the parties.” Kamal v. Eden Creamery, LLC, 88 2 F.4th 1268, 1286-87 (9th Cir. 2023) (quoting Koch v. Hankins, 8 F.3d 650, 652 (9th Cir. 1993)). 3 In determining whether to award fees and costs, courts consider the following: (1) any excessive 4 or duplicative expense of a second litigation; (2) the effort and expense incurred by defendant 5 preparing for trial; (3) the extent to which the litigation has progressed; (4) the plaintiff’s diligence 6 in moving to dismiss; (5) whether awarding costs would discourage early dismissal; and (6) 7 whether fees would produce an anomalous result. DuFour v. Allen, No. 2:14–cv–05616–CAS–SS, 8 2015 WL 1285310, at *4 (C.D. Cal. Mar. 19, 2015); Gonzalez v. Procter & Gamble Co., No. 9 06cv869 WQH (WMC), 2008 WL 612746, at *3 (S.D. Cal. Mar. 4, 2008). 10 II. DISCUSSION 11 Deckers moves the Court to dismiss its Bailey Button trade dress claim (claim two) and 12 attendant state law claims (claims four through six) to the extent they are predicated on Deckers’ 13 Bailey Button trade dress. Dkt. No. 257 at 2. Deckers requests that the dismissal be without 14 prejudice and that the Court decline to award costs to Defendant Last Brand, Inc. Id. at 7-8. In 15 response, Last Brand asks the Court to dismiss the claims with fees and costs and with prejudice. 16 Dkt. No. 269 at 5-7. Hedging its bets, Deckers indicated that if the Court is inclined to grant fees 17 and costs to Last Brand, Deckers alternatively requests that the Court grant the dismissal with 18 prejudice, and without fees or costs. Dkt. No. 270 at 6. 19 Here, the Court finds that voluntary dismissal of the claims warrants fees and costs. The 20 first and second DuFour factors, DuFour, 2015 WL 1285310, at *4, are satisfied, as Last Brand 21 has incurred expenses in preparing to defend against Deckers’ trade dress claims for trial. See 22 Dkt. No. 269 at 5. If the Court dismisses Deckers’ Bailey Button trade dress claim, the parties 23 agree all trade dress causes of action fall away and only the patent infringement claim remains. 24 See generally Dkt. Nos. 257, 269. In preparing for trial, Quince developed defenses on secondary 25 meaning, likelihood of confusion, functionality, and trade dress damages – none of which are 26 elements of or defenses to the patent infringement claim. Dkt. No. 269 at 5. Thus, that work is 27 “not useful in continuing litigation between the parties.” Kamal, 88 F.4th at 1286-87 (quotation 1 stage, as trial is less than two months away, and Deckers was not diligent in moving to dismiss its 2 trade dress claims. DuFour, 2015 WL 1285310, at *4. Deckers moves to dismiss because “the 3 potential damages attributable to the Bailey Button Boot Trade Dress are disproportionately low 4 compared to the incremental time, expense, and resources required to present four additional 5 claims at trial.” Dkt. No. 257 at 4. But Deckers had all the accused products’ sales and profits 6 data by the close of fact discovery on September 27, 2024, and its damages expert issued his 7 opening report on November 15, 2024. Dkt. No. 257 at 6. Further, the Court issued its summary 8 judgment order, which dismissed all other trade dress claims, on October 2, 2025. Dkt. No. 203. 9 Thus, Deckers could have determined that the costs of trying its Bailey Button Boot trade dress 10 claims outweighed the potential recovery at that time. As to the fifth factor, awarding costs does 11 not discourage early dismissal because, had Deckers moved to dismiss these claims earlier in the 12 litigation, the Court may not have awarded costs and fees. Gonzalez, 2008 WL 612746, at *4 13 (“Awarding fees and costs would not discourage plaintiffs from seeking early dismissal in other 14 actions because the Motion for Voluntary Dismissal was not filed at an early stage of the 15 proceedings”.). Finally, awarding costs and fees would not produce an “anomalous” result 16 because the Lanham Act allows for fee-shifting in “exceptional cases.” See id. (“[T]he imposition 17 of attorneys’ fees would produce an ‘anomalous result’ where defendants could not recover fees if 18 they prevailed at trial.”); 15 U.S.C. § 1117(a). For these reasons, the Court finds it proper to 19 award fees and costs to Last Brand. 20 The Court next takes up Deckers’ alternative request that the dismissal be with prejudice, 21 and without fees or costs. Dkt. No. 270 at 6 (citing Gonzalez v. Procter & Gamble Co., No. 06- 22 cv-869, 2008 WL 612746, at *3 (S.D. Cal. Mar. 4, 2008) (recognizing that a plaintiff “faced with 23 the imposition of attorneys’ fees and costs as a condition of voluntary dismissal may request that 24 the action be dismissed with prejudice to avoid payment”)). Last Brand agrees that Deckers is 25 allowed to “make that election.” Dkt. No. 269 at 8. Because Deckers consents to dismissal with 26 prejudice in place of the imposition of fees and costs, the Court GRANTS the motion and 27 DISMISSES WITH PREJUDICE claim two and claims four through six to the extent they rely on 1 not award fees and costs to Last Brand. See Larsen v. King Arthur Flour Co., No. C 11–05495 2 CRB, 2012 WL 2590386, at *1 (N.D.Cal. July 3, 2012) (“Attorneys’ fees and costs will not be 3 imposed as a condition for voluntary dismissal with prejudice because there is no risk of future 4 litigation.”). 5 In its opposition brief, Last Brand additionally requests that the Court award it fees and 6 costs under the Lanham Act because Last Brand is the prevailing party and this is an “exceptional 7 case[.]” Dkt. No. 269 at 8 (quoting 15 U.S.C. § 1117(a)). Last Brand provides no authority to 8 suggest this request is properly made in opposition to Deckers’ motion for voluntary dismissal. 9 Accordingly, the Court declines Last Brand’s invitation to award fees under the Lanham Act at 10 this procedural stage. 11 III. CONCLUSION 12 For the foregoing reasons, the Court GRANTS the motion and DISMISSES WITH 13 PREJUDICE claim two and claims four through six to the extent they rely on Deckers’ Bailey 14 Button Boot trade dress. The parties agree that the only claim remaining for trial is claim 7 for 15 patent infringement. Because the parties’ pretrial submissions contain extensive discussion of 16 claims two and claims four through six, no later than May 4, 2026, the parties SHALL FILE 17 amended versions of the pretrial submissions filed on March 20, 2026, to remove what is mooted 18 by the dismissal of these claims. Two paper courtesy copies of the above documents SHALL be 19 delivered to the Court by NOON the day after filing. The Joint Proposed Final Pretrial Order, jury 20 instructions, and verdict form SHALL also be submitted as Word versions via e-mail as separate 21 attachments to AMOpo@cand.uscourts.gov. The Court requests that all hard-copy submissions be 22 three-hole-punched, double-sided, and in a binder with tabs indicating the name of the document 23 and corresponding docket number. For the avoidance of doubt, the parties SHALL NOT amend or 24 refile their motions in limine. 25 / / / 26 / / / 27 / / / ] The Court CONTINUES the pretrial conference and the hearing on the parties’ motions in 2 limine to May 27, 2026, at 11:00 a.m., at the Ronald V. Dellums Courthouse in Oakland, 3 California, Courtroom 5. 4 5 IT IS SO ORDERED. 6 || Dated: April 24, 2026 7 8 CELI MARTINEZ- 9 United States District Judge 10 11 a 12
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