For finance teams, there are lessons to be learned that often happen in adjacent industries or professional disciplines. In the legal world, the outcome of the global intellectual property battle for the term “ugg” is one that finance chiefs — especially in a world of growing risk responsibility and the importance of IP integrity — should be paying attention to.
The case involving the trademark to the name UGG also highlights how brand identity, even when rooted in regional or cultural tradition, can evolve into a high-stakes legal and financial issue that spans the globe.
The trademark dispute
The UGG boot and its name are traced to Australia, where surfers and locals wore sheepskin boots out of practicality, not fashion. The term “ugg” was used to describe these boots and became a colloquial term for sheepskin footwear.
In 1978, Brian Smith, an Australian surfer and entrepreneur, brought the boot to California and launched the UGG Australia brand. In 1985, Smith trademarked UGG in the U.S., and 10 years later, he sold the company and its trademark to Deckers Outdoor Corporation for $14.5 million. Deckers transformed UGG into a billion-dollar global brand and trademarked the name in more than 130 countries. At the time, it was the largest acquisition in Deckers’ history. Today, the company is publicly traded, has a market cap of over $16 billion and owns other footwear brands, including HOKA, Sanuk, AHNU and Teva.
Australian companies that were also using the UGG name and branding, like UGG Since 1974, founded by Arthur Springthorpe, continued to make and sell similar boots, insisting that “ugg” is a generic term in their home country.
Springthorpe’s grandson, Todd Springthorpe, fought for nearly a decade and went viral on TikTok during his fight to keep the naming rights for his family’s business. Earlier this year, Springthorpe made a strategic compromise, partially retreating in his pursuit of the brand name. Though the company will use the UGG branding on products sold in Australia and New Zealand, products shipped anywhere else in the world will now carry the label “Since 1974.”
The proactive legal approach
In conversations with CFO.com, IP attorneys emphasized how the CFO’s role in litigation and IP protection can play into a fair or even favorable outcome — especially when going up against companies with more resources. This can help companies avoid situations such as the one Springthorpe’s business found itself in.
Hector Agdeppa, a partner at Dickinson Wright who specializes in intellectual property law and patent prosecution in fields such as electrical, mechanical and computer software, recommends CFOs take a proactive approach by working with legal teams to understand any risks certain elements of their IP may carry.
“Like any good doctor would say, prevention is the best medicine,” he said. “When you’re in it, you’re stuck with the resources you have. And if you’re the smaller player, you’re already at a disadvantage. You may not have the monetary resources to fight a larger company. So again, prevention is key.”
Agdeppa said this is common in the startups he works with. “Due to limited funds, they try to shortcut IP protection,” he said. “Maybe they just file a provisional patent application, but that might not reliably secure a priority date later. And sometimes, people view patents as a purely offensive tool, but they don’t realize that even filing a patent application, even if it never gets granted, can still serve as defensive prior art that could deter a would-be competitor from entering your market space.”
On the other hand, larger companies tend to invest more up front. “Some large companies build strategic patent portfolios not because they plan to litigate, but so they can countersue or negotiate from a stronger position if they’re ever targeted,” said Agdeppa. “Even if you never plan to litigate, having IP can still protect your turf. On the flip side, IP might not even make sense for your business. Maybe you’re better served just capturing the market, but you still have to go through the exercise and make an informed decision.”
Agdeppa said CFOs are critical in this process. “When I work with clients, I want to understand their business,” he said. “If I’m only focused on the tech and just filing patents, I might be generating paperwork that doesn’t add value. The same goes for the CFO. Should they be involved? Absolutely.”
“There’s always this inherent tension — companies want to save money, and legal is often viewed as an expense,” he continued. “Outside counsel, like me, are trying to generate revenue. But when more people are involved —especially the CFO — they can help prioritize: What IP is most important right now? What can we afford to protect? What can wait?”
How to litigate with leverage
Steven Stein, a litigation partner at Greenberg Glusker who focuses on media, IP, entertainment and business disputes, shared four strategies CFOs should keep in mind when litigation against an organization with more resources looms.
1. Hire counsel that provides value. “If you’re David going up against Goliath, you need a good slingshot,” Stein said. “Big law firms are great, but they’re expensive — junior associates are billing $800 an hour. There are smaller or mid-size firms with attorneys just as credentialed, many of whom left Big Law for a better lifestyle or more interesting work. That’s where you might find your value.”
2. Know what you’re getting into if you’re fighting on principle. “Clients often say they want to fight for what’s right, but litigation is slow and expensive,” Stein said. “After months or years, they lose steam. Fighting on principle is fine, but you need to be realistic about cost and outcome.”
3. Budget more than you expect. “Litigation is unpredictable, and you can’t always foresee motions, rulings or how a judge might handle things,” he said. “So whatever budget you get from legal, build in a cushion.”
4. Pick your battles. “If you’re under-resourced, don’t spend on unnecessary discovery or motions that won’t change the outcome,” he said. “Be strategic about where to engage. You want to get the most bang for your buck.”
Stein added that there’s no single formula for finding the right legal team but advised executives to rely on their networks.
“Ask people who’ve been in litigation who gave them value, and don’t just look at the Am Law 200,” he said. “There are great mid-sized and boutique firms that charge less but still provide top-tier service. Look at rankings in legal publications, Google boutique firms, and when you’re interviewing attorneys, make sure they’re both well-credentialed and competitively priced.”
Knowing when to walk away
Both Agdeppa and Stein emphasized that even when a company is in the right, settling — or walking away at the right time — can still be the smartest financial move.
“If you’re facing potential litigation or receive a cease and desist letter, keep a cool head,” Agdeppa said. “IP is personal. It’s your idea, your brand. But don’t let emotions take over. Sometimes, it’s smarter to settle or take a license than to fight. It could cost far less than full-blown litigation, even if you win, so treat it like a business decision, not a personal one.”
Stein agreed that compromise is sometimes the most viable option. “If both parties leave a settlement a little unhappy, that’s usually a sign it was fair,” he said. “If you’re the plaintiff, accepting less than you think you deserve might be smarter than paying even more and getting nothing. If you’re the defendant, you might have to pay more than you feel is fair just to stop the bleeding.”
He added, “That’s where a CFO can help; they can take the emotion out and look at the dollars and cents. Would you rather settle for $50,000 or spend $150,000 to fight a $10,000 claim and lose? From a financial perspective, that’s not a hard choice. And if you get an adverse ruling on a key issue, that can be a clear sign it may be time to settle or walk away.”
Stein added that businesses considering litigation on principle alone should be clear-eyed about what they’re stepping into. “If you decide to fight something on principle, really know what you’re getting into,” he said. “Clients regularly come to us and say they want to fight something on principle, but litigation is slow-moving and expensive. That’s where a CFO could be a voice of reason.”
