529 U.S. 205 (2000)
Samara Brothers, Inc., designs and manufactures children’s clothing, with its primary product being a line of spring/summer one-piece seersucker outfits decorated with appliques of hearts, flowers, fruits, and the like.1 Chain stores, including JCPenney, sell this line of clothing under contract with Samara.2
In 1995, Wal-Mart Stores, Inc., contracted with one of its suppliers, Judy-Philippine, Inc., to manufacture a line of children’s outfits for sale in the 1996 spring/summer season.3 Wal-Mart sent Judy-Philippine photographs of garments from Samara’s line, on which Judy-Philippine’s garments were to be based.4 Judy-Philippine duly copied, with only minor modifications, 16 of Samara’s garments, many of which contained copyrighted elements.5 In 1996, Wal-Mart briskly sold the so-called knockoffs, generating more than $1.15 million in gross profits.6
In June 1996, a buyer for JCPenney called a representative at Samara to complain that she had seen Samara garments on sale at Wal-Mart for a lower price than JCPenney was allowed to charge under its contract with Samara.7 The Samara representative told the buyer that Samara did not supply its clothing to Wal-Mart.8 Their suspicions aroused, Samara officials launched an investigation, which disclosed that Wal-Mart and several other major retailers—Kmart, Caldor, Hills, and Goody’s—were selling the knockoffs of Samara’s outfits produced by Judy-Philippine.9
After sending cease-and-desist letters, Samara brought this action in the United States District Court for the Southern District of New York against Wal-Mart, Judy-Philippine, Kmart, Caldor, Hills, and Goody’s for copyright infringement under federal law, consumer fraud and unfair competition under New York law, and infringement of unregistered trade dress under § 43(a) of the Lanham Act.10 All of the defendants except Wal-Mart settled before trial.11
After a weeklong trial, the jury found in favor of Samara on all of its claims.12 Wal-Mart then renewed a motion for judgment as a matter of law, claiming, inter alia, 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 § 43(a).13 The District Court denied the motion and awarded Samara damages, interest, costs, and fees totaling almost $1.6 million, together with injunctive relief.14 The Second Circuit affirmed the denial of the motion for judgment as a matter of law, and the Supreme Court granted certiorari.15
Whether a product’s design is distinctive, and therefore protectible, in an action for infringement of unregistered trade dress under § 43(a) of the Lanham Act?
Under the Lanham Act, a mark may be inherently distinctive or acquire distinctiveness through secondary meaning, but product design, like color, is never inherently distinctive because it does not serve a predominant source-identifying function and therefore requires secondary meaning to be protectible as unregistered trade dress under § 43(a).16
Yes. The established facts identify Samara Brothers' primary product as one-piece seersucker outfits decorated with appliques, which constitute the product design itself rather than packaging.17 Wal-Mart's transmission of photographs of those exact garments to its supplier for copying confirms that the dispute concerns design features intended to make the clothing more appealing, not source identification.18 Because consumers understand that even unusual product designs serve utilitarian or aesthetic purposes rather than indicating origin, the rule from the color precedent extends directly to bar inherent-distinctiveness protection for these outfits.19
The jury verdict and affirmance by the District Court and Second Circuit therefore cannot stand without a secondary-meaning showing, which the established facts do not supply.20
A product’s design is distinctive and therefore protectible under § 43(a) only upon a showing of secondary meaning.21