In a rare second order list of the day, the Supreme Court
granted certiorari in one case of interest to the business community. Under a
special briefing schedule set by the Court, amicus briefs in support of the
petitioners are due on Thursday, November 18, 1999, and amicus briefs in support
of the respondents are due on December 20. In addition, the Court invited the
Solicitor General to express the views of the United States in three cases of
interest to the business community. Any questions about these cases should be
directed to Donald Falk (202-263-3245) or Evan Tager (202-263-3240) in our
Lanham Act — Trade-Dress Protection. Section 43(a) of
the Lanham Act prohibits the use in commerce of any product that is likely to
cause confusion among consumers as to its origin. 15 U.S.C.§ 1125(a). The Lanham
Act's protection extends to a product's "trade dress," which can include its
packaging or aspects of its design that consumers associate with its origin, if
that trade dress either is "inherently distinctive" or has acquired a "secondary
meaning" in the marketplace that renders it distinctive. The Court granted
certiorari in Wal-Mart Stores, Inc. v. Samara Brothers, Inc., No.
99-150, to determine what must be shown to establish that a product's design is
inherently distinctive for purposes of Lanham Act trade-dress protection.
Samara Brothers, Inc. manufactures children's clothing. The
core of its business is a line of seersucker children's garments. In 1995,
Wal-Mart contracted with another garment manufacturer to produce a large
quantity of children's seersucker garments for Wal-Mart to sell under its house
label. The samples on which Wal-Mart's buyers based the order were Samara
garments. As a result, the garments manufactured and offered for sale by
Wal-Mart bore a strong resemblance to Samara's line of garments.
Samara sued Wal-Mart, asserting (among other allegations)
trade-dress claims under the Lanham Act. After a jury found for Samara, Wal-Mart
moved for judgment as a matter of law, claiming that Samara's line of clothing
was not inherently distinctive. (Samara did not claim that its garments had
acquired a secondary meaning.) The district court denied the motion.
A divided panel of the Second Circuit affirmed. 165 F.3d 120
(1998). In addressing the distinctiveness issue, the majority asked only whether
consumers were likely to understand the design as an indicator of the product's
source. Id. at 125. Although the majority noted that even Samara's
witnesses at trial had difficulty constructing a coherent statement of the
"overall look" of the product line (id. at 127), the court of appeals
nevertheless held that several aspects of the line in combination provided a
sufficient basis for the jury's verdict. Id. at 126.
Judge Newman dissented, observing that the factors identified
by the majority were "far too general to constitute a protectable 'look'" and
appeared to give trade-dress protection to dress designs — an impermissible
result. Id. at 134. He also concluded that it was unreasonable to find
Samara's entire product line sufficiently distinctive to be entitled to
trade-dress protection under the Lanham Act. Although all courts require a
Lanham Act plaintiff to demonstrate that its claimed trade dress serves
primarily to designate the origin of the product, courts have disagreed on the
specific elements required for that showing. By contrast with the single-element
consumer-understanding test that the Second Circuit used in this case, the Third
Circuit requires a plaintiff to show that its trade dress is (1) unusual and
memorable; (2) conceptually separable from the product; and (3) likely to serve
primarily as a designator of the origin of the product. Duraco Products
v. Joy Plastic Enterprises, 40 F.3d 1431, 1448-1449 (1994). The
Eighth and Fifth Circuits have rejected the "unusual and memorable" element and
adopted a different version of the test based on Judge Friendly's decision in a
trademark case, Abercrombie & Fitch Co. v. Hunting World,
Inc., 537 F.2d 4 (2d Cir. 1976). See Stuart Hall Co. v. Ampad
Corp., 51 F.3d 780, 787 (8th Cir. 1995); Pebble Beach Co. v. Tour
18 Ltd., 155 F.3d 526, 540 (5th Cir. 1998). The Second Circuit, however, has
concluded that it does not make sense to apply the Abercrombie test to
product design or product configuration cases. Landscape Forms, Inc.
v. Columbia Cascade Co., 113 F.3d 373, 377-378 (1997).
This case is of substantial importance not only to the fashion
industry, but also to any industry in which a product's design (rather than its
packaging or advertising) may have a "look" that is identified with a particular
brand.* * * * *
The Court invited the Solicitor General to express the views of
the United States in the following cases of interest to the business
1. Buckman Co. v.
Plaintiffs' Legal Committee, No. 98-1768: The questions presented are
(1) whether common-law tort claims based on a "fraud on the agency" theory are
preempted by the Medical Device Amendments to the Food, Drug & Cosmetic Act,
21 U.S.C. §§ 360c-360k, and (2) whether the Amendments preempt any state
requirements imposed through tort laws of general applicability. Decision below:
159 F.3d 817 (3d Cir. 1998). Mayer, Brown & Platt represents the
2. United States Healthcare Systems of Pennsylvania, Inc.
v. Pennsylvania Hospital Insurance Co., No. 98-1836: The question
presented is whether Section 514(a) of the Employee Retirement Income Security
Act of 1974 (ERISA), 29 U.S.C. § 1144(a), preempts state law claims arising from
a health maintenance organization's alleged negligence in its administration of
benefits under an ERISA-governed plan. Decision below: 724 A.2d 889 (Pa. 1998).
Mayer, Brown & Platt represents the petitioner.
3. Robinson v. Administrative Committee of the Sea
Ray ESOP, No. 98-1971: The questions presented are (1) whether a
determination by the administrator of an ERISA-governed benefit plan that
certain layoffs did not effect a partial termination of the plan was entitled to
deference under Firestone Tire & Rubber Co. v. Bruch, 489
U.S. 101 (1989); (2) whether the district court improperly upheld the
administrator's decision on grounds other than those identified by the
administrator; and (3) whether the court of appeals properly applied the clearly
erroneous standard of review to certain conclusions made by the district court.
Decision below: 164 F.3d 981 (6th Cir. 1999). Mayer, Brown & Platt
represents the respondent.
This Mayer, Brown, Rowe & Maw Supreme Court Docket Report provides information and
comments on legal issues and developments of interest to our clients and
friends. The foregoing is not a comprehensive treatment of the subject matter
covered and is not intended to provide legal advice. Readers should seek
specific legal advice before taking any action with respect to the matters