Brief Fact Summary
Samara Brothers is a manufacturer of children's clothes. Wal-Mart sent pictures of Samara's line of children's clothing to a manufacturer, had a line nearly identical to Samara's line produced, and sold the clothing through Wal-Mart stores.
Rule of Law and Holding
"In a [Section 43(a) of the Lanham Act] action for infringement of unregistered trade dress, a product's design is distinctive, and therefore protectible, only upon a showing of secondary meaning." Product packaging trade dress MAY BE inherently distinctive, and thus protectable without a showing of secondary meaning. Plaintiffs claiming rights in product feature trade dress under Sec. 43(a) must ALWAYS ...view middle of the document...
JUSTICE SCALIA delivered the opinion of the Court.
In this case, we decide under what circumstances a product's design is distinctive, and therefore protectible, in an action for infringement of unregistered trade dress under § 43(a) of the Trademark Act of 1946 (Lanham Act).
IWal-Mart Stores, Inc. v. Samara Brothers, Inc.
U.S. Supreme Court
529 U.S. 205 (2000)
Respondent Samara Brothers, Inc., designs and manufactures children’s clothing. Its
primary product is a line of spring/summer one-piece seersucker outfits decorated with
appliques of hearts, flowers, fruits, and the like. [C]hain stores, including JCPenney, sell this
line of clothing under contract with Samara.
…. [In 1995,] Wal-Mart sent Judy-Philippine photographs of a number of garments
from Samara’s line…; Judy-Philippine duly copied, with only minor modifications, 16 of
Samara’s garments, many of which contained copyrighted elements. In 1996, Wal-Mart
briskly sold the so-called knockoffs, generating more than $1.15 million in gross profits.
In June 1996, a buyer for JCPenney called a representative at Samara to complain
that… Wal-Mart [was charging less] than JCPenney was allowed to charge…. The Samara
representative told the buyer that Samara did not supply its clothing to Wal-Mart. Their
Limitations on Rights 4.25
suspicions aroused, however, Samara officials launched an investigation, which disclosed that
Wal-Mart and several other major retailers… were selling the knockoffs….
[Samara sued] for copyright infringement…, and — most relevant for our purposes —
infringement of unregistered trade dress under § 43(a) of the Lanham Act. ….
[Samara prevailed, and certiorari was granted.] ….
The text of § 43(a) provides little guidance as to the circumstances under which
unregistered trade dress may be protected. …. Nothing in § 43(a) explicitly requires a
producer to show that its trade dress is distinctive, but courts have universally imposed that
requirement, since without distinctiveness the trade dress would not “cause confusion… as to
the origin, sponsorship, or approval of [the] goods,” as the section requires. ….
[C]ourts have held that a mark can be distinctive in one of two ways. First, a mark is
inherently distinctive if “[its] intrinsic nature serves to identify a particular source.” In the
context of word marks, courts have applied the now-classic test originally formulated by
Judge Friendly, in which word marks that are “arbitrary” (“Camel” cigarettes), “fanciful”
(“Kodak” film), or “suggestive” (“Tide” laundry detergent) are held to be inherently
distinctive. See Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 10-11 (C.A.2
1976). Second, a mark has acquired distinctiveness, even if it is not inherently distinctive, if it
has developed secondary meaning, which occurs when, “in the minds of the public, the
primary significance of a...