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.
I. Trade Dress
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.
A. Wal-Mart's Motion
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.
Wal-Mart's protectability argument is based primarily on Landscape Forms. There, the Second Circuit confirmed its holding in Knitwaves that in considering "inherent distinctiveness" in "product design or configuration" cases, the question is "whether the design was likely to be understood as an indicator of the product's source." 113 F.3d at 378 (citing Knitwaves, 71 F.3d 996 at 1008). Design cases -- where the trade dress involves the design of a product rather than its packaging or labelling -- are problematic, for the design of a particular product is less likely to be an indicator of source than packaging, labels, and trademarks. The Landscape Court cautioned that, in considering design cases, courts must remember that trade dress law is intended:
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 -- because they may show secondary meaning -- include, as the jury was charged, the plaintiff's advertising expenditures, sales success, and attempts to plagiarize the plaintiff's trade dress. (Tr. 669).
The jury's conclusion that Samara's trade dress was sufficiently distinctive to be protectable is supported by the following evidence in the record: (1) the efforts made by Samara over the years to develop "the Samara look," to produce garments that "look like [they] come out of our office," that have a "consistent feel" to them, to "build a brand loyalty and establish a customer base" (Tr. 209); (2) Samara's consistent use of seersucker, large appliques usually integrated into the construction of the garments, and garment designs, including scalloped collars, matching pockets, and the lack of excess ornamentation, to develop a clean, simple, uncluttered but elegant "look" -- a look of "simple sophistication" (Tr. 144-65); (3) Samara's advertising efforts, which include, for example, spending approximately $ 100,000 on advertising in 1996 (Tr. 63-65); (4) Samara's sales success; (5) Wal-Mart's efforts to plagiarize the Samara look; and (6) the garments themselves. The jury saw dozens of garments, not only Samara and Wal-Mart garments, but children's garments sold by many other companies as well. Thus, the jury saw for itself the designs of the Samara products, the Wal-Mart products, and other competing products. While it is true that certain elements of Samara's designs were not protectable, the jury reasonably could have found that the combination of these elements was distinctive and thus protectable.
Mr. Kleist himself -- Wal-Mart's buyer -- acknowledged that there was a "Samara look." He testified:
Q. Isn't it a fact, Mr. Kleist, that at least some of the samples that you saw you recognized as Samara garments because you had bought them when you were a buyer at Sears, isn't that right?