Wal-Mart Stores, Inc. v. Samara Brothers, Inc.
529 U.S. 205 (2000)
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Rule of Law:
In an action for infringement of unregistered trade dress under § 43(a) of the Lanham Act, a product's design is distinctive, and therefore protectable, only upon a showing of acquired secondary meaning.
Facts:
- Samara Brothers, Inc. designs and manufactures a distinctive line of children's seersucker clothing featuring appliques of hearts, flowers, and fruits.
- Samara sold this line of clothing through various chain stores, including JCPenney.
- In 1995, Wal-Mart Stores, Inc. contracted with a supplier, Judy-Philippine, Inc., to manufacture a competing line of children's apparel.
- Wal-Mart provided Judy-Philippine with photographs of Samara's garments to be used as the basis for the new line.
- Judy-Philippine proceeded to copy 16 of Samara's garments with only minor modifications.
- In 1996, Wal-Mart sold these copies, referred to as 'knockoffs,' generating over $1.15 million in profits.
- A buyer for JCPenney, seeing the knockoffs at Wal-Mart, contacted Samara under the mistaken belief that Samara was supplying Wal-Mart directly.
- Samara then discovered that Wal-Mart and several other major retailers were selling the unauthorized copies of its clothing.
Procedural Posture:
- Samara Brothers, Inc. sued Wal-Mart Stores, Inc. in the U.S. District Court for the Southern District of New York for infringement of unregistered trade dress under the Lanham Act, among other claims.
- Following a trial, a jury found in favor of Samara on all claims.
- Wal-Mart renewed a motion for judgment as a matter of law, arguing that Samara's clothing designs were not protectable trade dress, which the District Court denied.
- Wal-Mart (appellant) appealed the District Court's decision to the U.S. Court of Appeals for the Second Circuit.
- The Second Circuit (intermediate appellate court) affirmed the trial court's judgment, holding that the clothing designs could be protected as trade dress without a showing of secondary meaning.
- The U.S. Supreme Court granted certiorari to review the decision of the Second Circuit.
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Issue:
Is a product's design protectable from infringement as unregistered trade dress under § 43(a) of the Lanham Act without a showing that the design has acquired secondary meaning?
Opinions:
Majority - Justice Scalia
No. A product's design is not protectable as unregistered trade dress under § 43(a) of the Lanham Act unless it has acquired secondary meaning. Unlike word marks or product packaging, a product's design is not inherently distinctive because consumers are not predisposed to view a design feature as an indicator of source. Instead, consumers view design as serving a utilitarian or aesthetic purpose—to make the product more useful or appealing. The Court reasoned that protecting product design based on inherent distinctiveness would be anti-competitive, as it would allow plausible threats of lawsuits that could deter new entrants from creating competing products with similar aesthetic features. The Court distinguished its prior holding in Two Pesos, Inc. v. Taco Cabana, Inc., by classifying the restaurant décor at issue in that case as more akin to product packaging, which can be inherently distinctive, rather than product design. The existence of alternative protections like design patents and copyrights further justifies requiring a showing of secondary meaning for product design trade dress.
Analysis:
This decision establishes a critical distinction in trade dress law between product packaging and product design, creating a bright-line rule that product design can never be inherently distinctive. By requiring proof of secondary meaning for product design, the Supreme Court significantly raised the evidentiary bar for designers seeking to protect their creations under the Lanham Act. This ruling forces plaintiffs to demonstrate that consumers have come to associate the specific design with a single source, thereby preventing competitors from using trade dress law to monopolize functional or aesthetic features of products. The decision balances intellectual property rights with the public interest in robust competition, pushing designers to seek protection under patent or copyright law if they cannot meet the demanding secondary meaning standard.
