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Wal-Mart Stores v. Samara Bros.

Supreme Court of the United States

January 19, 2000, Argued ; March 22, 2000, Decided

No. 99-150

Opinion

 [*207]  [***186]  [**1341]    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  [***187]  of 1946 (Lanham Act), 60 Stat. 441, as amended, 15 U.S.C. § 1125(a).

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. A number of chain stores, including JCPenney, sell this line of clothing under contract with Samara.

Petitioner Wal-Mart Stores, Inc., is one of the nation's best known retailers, selling among other things children's clothing. In 1995, Wal-Mart contracted with one of its suppliers, Judy-Philippine, Inc., to manufacture a line of children's outfits for sale in the 1996 spring/summer season. Wal-Mart [****6]  sent Judy-Philippine photographs of a number of garments from Samara's line, on which Judy-Philippine's garments were to be based; Judy-Philippine duly copied, with  [*208]  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 she had seen Samara garments [**1342]  on sale at Wal-Mart for a lower price than JCPenney was allowed to charge under its contract with Samara. The Samara representative told the buyer that Samara did not supply its clothing to Wal-Mart. Their suspicions aroused, however, Samara officials launched an investigation, which disclosed that Wal-Mart and several other major retailers -- Kmart, Caldor, Hills, and Goody's -- were selling the knockoffs of Samara's outfits produced by Judy-Philippine.

After sending cease-and-desist letters, Samara brought this action in the United States  [1067]  District Court for the Southern District of New York against Wal-Mart, Judy-Philippine, Kmart, Caldor, Hills, and Goody's for copyright infringement under federal law,  [****7]  consumer fraud and unfair competition under New York law, and -- most relevant for our purposes -- infringement of unregistered trade dress under § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). All of the defendants except Wal-Mart settled before trial.

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529 U.S. 205 *; 120 S. Ct. 1339 **; 146 L. Ed. 2d 182 ***; 2000 U.S. LEXIS 2197 ****; 54 U.S.P.Q.2D (BNA) 1065; 68 U.S.L.W. 4217; 2000 Cal. Daily Op. Service 2270; 2000 Daily Journal DAR 3057; 2000 Colo. J. C.A.R. 1481; 13 Fla. L. Weekly Fed. S 195

WAL-MART STORES, INC. v. SAMARA BROTHERS, INC.

Prior History:  [****1]  ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE SECOND CIRCUIT.

Disposition: 165 F.3d 120, reversed and remanded.

CORE TERMS

trade dress, marks, secondary meaning, consumer, product design, packaging, color, registration, symbol, infringement, producer, courts, Lanham Act, unregistered, registered, clothing, purposes, bottle, brand

Business & Corporate Compliance, Trademark Cancellation & Establishment, Incontestability, Continuing Use Requirement, Trademark Law, Federal Unfair Competition Law, False Advertising, General Overview, False Designation of Origin, Elements of False Designation of Origin, Lanham Act, Entertainment Industry Falsity & Performance Misattribution, Trade Dress Protection, Registration Procedures, Federal Registration, Federal Registration as Evidence, Federal Registration, Principal Register, Particular Subject Matter, Names, Causes of Action, Infringement Actions, Eligibility for Trademark Protection, Distinctiveness, Subject Matter of Trademarks, Terms Requiring Secondary Meaning