Mayer Brown's


1999 Term, Number 3 / October 4, 1999

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 Washington office.

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.

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The Court invited the Solicitor General to express the views of the United States in the following cases of interest to the business community:

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 petitioner.

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.

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