Review and History of Supreme Court Case titled
Wal-Mart Stores, Inc. v. Samara Brothers, Inc.
Prof. Michael Hanners
Before the Case
Ultimately, the goal of trade dress protection has always been to prevent other manufacturers from making one product look like another, therefore deceiving unaware consumers into purchasing goods from the wrong manufacturer. By the end of the 1990s, courts also began to protect product shapes and packaging. The broad label of unfair competition supplied product packaging and shapes with legal protection, known as trade dress. Trade dress was meant to make it easier for consumers to differentiate ...view middle of the document...
All of the defendants settled before trial except Wal-Mart.
The Jury of the Southern District Court of New York found Wal-Mart liable under all of Samara’s claims. Wal-Mart moved for judgment as a matter of law, but the district court judge denied this motion. The court found that even though not all of Samara’s designs were protectable, the combination of them was “distinctive,” and thus, I was protectable. Samara was awarded damages, interest, costs, and fees totaling nearly 1.6 million dollars. Wal-Mart appealed this decision to the Second Circuit Court.
Second Circuit Court
The Second Circuit Court upheld the denial of judgment as a matter of law regarding Samara’s claim. This court went a step farther in noting that there was no doubt that the “overall look of the product along with its distinctive combination of design elements” indicated the product’s source. The court found that Samara’s line of clothing involved a distinctive combination of design elements and this is what made it distinctive. Wal-Mart moved the case to the Supreme Court.
The Supreme Court unanimously found that unregistered product design trade dress could not be inherently distinctive since consumers do not typically associate design with the source of the product itself. Therefore, product designs can only be protected if a secondary meaning is shown.
The Supreme Court first compared product designs to color, finding that both designs and color were not inherently distinctive (this was held in Qualitex v. Jacobsen Products). Essentially, the court found that product designs, like colors, do not immediately cause a consumer to think of a brand. Thus, both colors and product design require a secondary meaning in order to acquire trade dress protection. The Court also explained that even a unique product design is not inherently distinctive since it is typically intended to make a product more appealing and not specifically to identify brand. In the Court’s opinion, applying the inherent distinctiveness principle to product designs might be harmful to consumers by depriving them of the chance to benefit from designs of competing brands. The Court stated that, “Consumers should not be deprived of competition by a rule of law that facilitates plausible threats of suit against new entrants based upon alleged inherent distinctiveness. Competition will be deterred by even the threat of a successful suit, so given the unlikelihood of inherently source-identifying design, the game of allowing suit based upon alleged inherent distinctiveness is not worth the candle.”
The Court also noted that the availability of other methods of protection, like patents and copyrights, offset any harm a producer may suffer by the requirement that secondary meaning be shown before product design can be protected under trade dress law.
The Court admitted recognizing that the lower courts may have some difficulty drawing lines between...