The opinion of the court was delivered by: CHIN
On January 10, 1997, a jury returned a verdict in this case in favor of plaintiff Samara Brothers, Inc. ("Samara") against defendant Wal-Mart Stores, Inc. ("Wal-Mart").
The jury found that Samara owned 13 valid copyrights, that Wal-Mart infringed all 13 of those copyrights, and that Wal-Mart did so wilfully. The jury awarded Samara $ 912,856.77 in profits that Wal-Mart had earned from selling infringing garments. The jury also found that Samara's trade dress was protectable, that Wal-Mart infringed Samara's trade dress, and that it did so wilfully. The jury awarded Samara $ 240,458.53 in profits that Wal-Mart had earned from selling infringing garments. The jury also found that Samara had engaged in deceptive trade practices and awarded $ 50 in damages on that claim. Finally, the jury found that Wal-Mart had misappropriated a commercial advantage that belonged to Samara in such a way as to cause confusion in the minds of consumers between Samara clothing and Wal-Mart's clothing and that Wal-Mart had done so in bad faith. It awarded Samara no damages on that claim.
Post-trial motions followed. I heard oral argument on the motions on July 14, 1997 and, for the reasons stated on the record, I granted the motions in part and denied them in part. I reserved decision on those portions of the motions relating to Samara's trade dress claim. Although I ruled that I intended to award Samara attorneys' fees, I reserved decision as to the amount of such an award.
I resolve the remaining issues now. Wal-Mart's motion for judgment as a matter of law or for a new trial with respect to Samara's trade dress claim is denied. Samara's motion for injunctive relief with respect to the trade dress claim is granted, but only to the limited extent set forth below. The amount of attorneys' fees to be awarded Samara is set at $ 275,000, with costs of $ 33,196.
To recover for trade dress infringement under section 43(a) of the Lanham Act, a plaintiff must prove two elements. First, the plaintiff must prove that its trade dress is protectable by showing that the trade dress is distinctive, i.e., that it is either "inherently distinctive" or has acquired distinctiveness through "secondary meaning." Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 769, 120 L. Ed. 2d 615, 112 S. Ct. 2753 (1992); Fun-Damental Too, Ltd. v. Gemmy Indus. Corp., 111 F.3d 993, 999 (2d Cir. 1997).
Second, the plaintiff must prove infringement, by showing that the defendant's trade dress has caused or is likely to cause consumer confusion. Landscape Forms, Inc. v. Columbia Cascade Co., 113 F.3d 373, 377 (2d Cir. 1997); Fun-Damental Too, 111 F.3d at 999; Resource Developers, Inc. v. Statue of Liberty-Ellis Island Foundation, Inc., 926 F.2d 134, 139-40 (2d Cir. 1991). In seeking injunctive relief, a plaintiff need only show a likelihood of consumer confusion. To recover monetary damages, however, a plaintiff must show actual consumer confusion, except that consumer confusion will be presumed if the plaintiff can prove deliberate deception by the defendant. George Basch Co., Inc. v. Blue Coral, Inc., 968 F.2d 1532, 1537 (2d Cir. 1992), cert. denied, 506 U.S. 991, 121 L. Ed. 2d 445, 113 S. Ct. 510 (1992). In that event, the burden shifts to the defendant to prove the absence of confusion. Resource Developers, Inc., 926 F.2d at 140.
Wal-Mart's motion raises two issues that warrant discussion. First, Wal-Mart contends that Samara's trade dress is not protectable because it is amorphous and contains non-distinctive features commonly and customarily used in children's clothing -- themes such as strawberries and sail boats and fabrics such as seersucker -- that are not sufficiently distinctive to indicate source. Second, Wal-Mart argues that even if Samara's trade dress is protectable, the record contains no evidence of consumer confusion or any intent on its part to mislead consumers into believing that they were buying Samara garments when they were actually buying Wal-Mart garments.
to accord protection to symbols consumers are likely to rely upon in distinguishing goods, while denying protection that would hamper efforts to market competitive goods.
113 F.3d at 380. The Court also noted that "when protection is sought for an entire line of products, [the] concern for protecting competition is acute." Id.
Here, Wal-Mart argues that the jury could not have reasonably found that Samara's trade dress was an indicator of source. According to Wal-Mart, the Samara "look" was so amorphous and used features so commonly found in children's clothing that it was not sufficiently distinctive to have identified Samara as being the source of the garments. While Wal-Mart's arguments have some merit, I am not persuaded that the jury's verdict should be set aside.
As the Second Circuit recognized in Landscape, "there is no question that trade dress may protect the 'overall look' of a product." 113 F.3d at 381; accord Krueger Int'l, Inc. v. Nightingale Inc., 915 F. Supp. 595, 607 (S.D.N.Y. 1996) (holding that plaintiff had a protectable trade dress in the "overall look" of its chair). Even if "'each element of a trade dress individually might not be inherently distinctive, . . . the combination of elements' may be indicative of source." Landscape, 113 F.3d at 381 (quoting Jeffrey Milstein, Inc. v. Greger, Lawlor, Roth, Inc., 58 F.3d 27, 32 (2d Cir. 1995)).
Landscape identifies a number of factors that may be considered in determining whether a "design was likely to be understood as an indicator of the product's source." 113 F.3d at 377 (citing Knitwaves, 71 F.3d at 1008). These include the manufacturer's subjective intentions, whether the design was a common basic shape or design, whether it was unique or unusual in a particular field, whether it was a mere refinement of a commonly adopted and well-known form of ornamentation for a particular class of goods, and the similarity of the product to others on the market. 113 F.3d at 378 n.3; see also Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342, 1344 (C.C.P.A. 1977). Other factors that may not directly shed light on whether a design is an indicator of source but that may be relevant indirectly ...