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Walmart Stores v Samara Brothers

Facts of the Case


Samara Brothers, Inc. designs and manufactures a line of children's clothing. Wal-Mart Stores, Inc.,
contracted with a supplier, Judy-Philippine, Inc. (JPI), to manufacture outfits based on photographs of
Samara garments and to be offered under Wal-Mart's house label, "Small Steps." When JPI
manufactured the clothes, it copied sixteen of Samara's garments with some small modifications to
produce the line of clothes required under its contract with Wal-Mart. After discovering that Wal-Mart and
other retailers were selling the so-called knockoffs, Samara brought an action for infringement of
unregistered trade dress under section 43(a) of the Trademark Act of 1946. The jury found for Samara
and awarded the company more than $1 million in damages. Wal-Mart then renewed a motion for
judgment as a matter of law, claiming that there was insufficient evidence to support a conclusion that
Samara's clothing designs could be legally protected as distinctive trade dress for purposes of section
43(a). The District Court denied the motion and awarded Samara relief. The Court of Appeals affirmed the
denial of the motion and concluded that "copyrights depicting familiar objects, such as the hearts, daisies,
and strawberries in Samara's copyrights are entitled to very narrow protection. It is only the virtually
identical copying...which will result in a successful claim of infringement of familiar objects."

Question
Is a product's design is distinctive, and therefore protectible, from "knockoffs" in an action for infringement
of unregistered trade dress under section 43(a) of the Trademark Act of 1946?
Conclusion
Decision: 9 votes for Wal-Mart Stores Inc., 0 vote(s) against
Legal provision: 15 U.S.C. 1125
No. In a unanimous opinion delivered by Justice Antonin Scalia, the Court held that "[i]n a section 43(a)
action for infringement of unregistered trade dress, a product's design is distinctive, and therefore
protectible, only upon a showing of secondary meaning. The fact that product design almost invariably
serves purposes other than source identification not only renders inherent distinctiveness problematic; it
also renders application of an inherent- distinctiveness principle more harmful to other consumer
interests," Justice Scalia wrote for the Court. "Consumers should not be deprived of the benefits of
competition with regard to the utilitarian and esthetic purposes that product design ordinarily serves by a
rule of law that facilitates plausible threats of suit against new entrants based upon alleged inherent
distinctiveness," Justice Scalia concluded.

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