Issue
In the case of Wal-Mart Stores Inc. v. Samara Brothers Inc., the petitioner reported a chain retail store for stealing its designs. Samara Brothers Inc., a fashion design company, created a trademark dress it intended to sell in the future ( Wal-Mart stores, Inc. v. Samara brothers, Inc., 529 U.S. 205 (2000) , n.d.) . Wal-Mart Stores Inc. accessed the mentioned dress design photographs and contracted a second party, other than Samara Brothers Inc., to manufacture dresses of the complainant’s designs for sale. Soon, Wal-Mart Stores Inc. influenced other stores to contract dress manufacturers to replicate the trade mark design from Samara Brother’s Inc.
Later, Samara Brothers Inc. were sensitized on Wal-Mart’s illegal use of its designs for retail purposes, yet the latter had not paid royalties as expected to the complainant. Samara Brothers Inc. filed a complaint at the local store and the case was argued in its favor. When Wal-Mart appealed the local court’s ruling by insisting Samara Brothers Inc. lacked enough evidence to prove they owned the trade mark dress designs under contention, the Second Circuit rejected its appeal. Instead, the Second Circuit court ruled that Wal-Mart had committed an offense by stealing dress designs from Samara Brothers Inc. and contracting a different manufacturer to replicate the controversial designs for sale. Therefore, the main issue of the Wal-Mart Stores Inc. v. Samara Brothers Inc. case was the unlawful use of the latter’s trademark dress designs to replicate the same for retail purposes without the original designers’ permission.
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Rule
In ruling for the Wal-Mart Stores Inc. v. Samara Brothers Inc. case, the court referenced inter alia , a legal term for the unlawful use of trademark designs. According to the case’s prosecutor, Wal-Mart Stores Inc. had violated the Lanham Act of 1964. The mentioned act stated that trademark designs for dresses are protected by law and infringement of the same would attract a legal action against the offender. Therefore, in ruling for the Wal-Mart Stores Inc. v. Samara Brothers Inc. case , the court used the inter alia rule, which was backed by the Lanham Act of 1964.
Analysis
When Wal-Mart Stores Inc. contracted a clothing manufacturer to replicate a trademark dress design by Samara Brothers Inc., it committed a legal offense punishable by law. Firstly, Wal-Mart Stores Inc. did not obtain the trademark dress design from Samara Brothers Inc. legally ( Basma, 2016) . If the mentioned giant retail store had consulted Samara Brothers Inc. and been permitted to access the contentious trademark dress design pictures, then it would have defended itself substantially in the local court. In the mentioned case, if Samara Brothers Inc. would later sue Wal-Mart Stores Inc. for using its trademark dress design pictures yet the former had granted permission, then it would be unfair and the case may have been dismissed by the local court. Secondly, Wal-Mart Stores Inc. refused to conduct a background check to evaluate for possible legal consequences for replicating trademark dress designs without consulting their original designer. Therefore, Wal-Mart Stores Inc. was on the offensive for requesting the manufacturing of dresses for retail that resembled the trademark dress design from Samara Brothers Inc. Thirdly, Wal-Mart Stores Inc. refused to alert Samara Brothers Inc. that it had started retailing dresses that were a replica of its trademark dress design. In consciously ignoring the need to inform Samara Brothers Inc. of its retailing the latter’s trademark dress design, Wal-Mart Stores Inc. committed an offense punishable by law.
According to the Lanham Act of 1964, any object or activity is protectable by law if it has a unique symbol that differentiates it from others in the market. Further, an object is protected by law if it is packaged uniquely from other products from competitors. Further, an object is a legal property if it is a “trademark dress”, a fact that Wal-Mart Stores Inc. overlooked when using Samara Brothers Inc. trademark dress designs to make actual replicas without seeking content from the original designer ( Chon, 2019) . However, after the local court ruled Wal-Mart Stores Inc. was subject to legal action for its wrongful use of Samara Brothers Inc.’s trademark dress design, it depended on a previous ruling issued for Two Pesos, Inc. v. Taco Cabana, Inc. , 505 U.S. 763 ( Wal-Mart stores, Inc. v. Samara brothers, Inc., 529 U.S. 205 (2000) , n.d.) . In the case, the complainant had sought legal redress for the defendant’s illegal use of their trademark restaurant décor designs. The defendants claimed they were innocent as according to them, restaurant décor was equated to packaging, and not an actual design. Therefore, the defendants of the mentioned case did not deem themselves punishable by law for violating the Lanham Act of 1964.
Wal-Mart Stores Inc. had claimed that Samara Brothers Inc. did not have adequate proof it was the real owner of the trademark dress design replicated by its contracted manufacturers. The giant retail store had hoped the court would rule in its favor, as perhaps Samara Brothers Inc. had not patented its trademark dress design, making it vulnerable to theft, such as that conducted by Wal-Mart Stores Inc. However, the United States-based retail store failed to acknowledge the element of “no need to report” included in the newly expanded Lanham Act of 1964. In ruling in favor of the Samara Brothers Inc., the Second Circuit court may have referenced the “no need to report” element of the Lanham Act of 1964, which Wal-Mart actively ignored. Samara Brothers Inc. deserved compensation from Wal-Mart for accessing its trademark dress designs unlawfully and contracting a separate manufacturer to replicate the same without consent. Worse off, Wal-Mart Stores Inc. influenced other retail stores to order the manufacturing of the Samara Brothers Inc.’s trademark dress design replicas for sale. The Samara Brothers Inc. may have lost thousands of dollars in deserved royalties, an issue that was engineered by Wal-Mart Stores Inc. Therefore, in analyzing the Wal -Mart Stores Inc. v. Samara Brothers Inc. case, the defendant violated the Lanham Act of 1964 and was liable to face legal action, as ruled by the Second Circuit court and local court on March 22, 2000.
Conclusion
When Samara Brothers Inc. presented its complaint on Wal-Mart Stores Inc.’s illegal use of its trademark design, the local court perceived the offense in light of inter alia. The local court also referenced the Lanham Act of 1964, which prohibited the illegal access of a trademark dress design from the original owner without their consent and subsequent replication of dresses of the same design ( Casey, 2016) . The local court ruled that Wal-Mart Stores Inc. had committed a legal offense and was subject to lawful punishment. Further, when Wal-Mart Stores Inc. attempted to appeal the local court’s decision mentioned, the Second Circuit court cited the “no need to report” aspect of the Lanham Act of 1964 and ruled for Samara Brothers Inc. Therefore in the case of Wal-Mart Stores Inc. v. Samara Brothers Inc. case, the local court and Second Circuit court ruled in favor of the complainant.
References
Basma, D. (2016). The Nature, Scope, and Limits of Modern Trademark Protection: A Luxury Fashion Industry Perspective [Unpublished doctoral dissertation]. University of Manchester. https://www.research.manchester.ac.uk/portal/files/54583181/FULL_TEXT.PDF
Casey, K. R. (2016). Trademark law update. Pennsylvania Bar Institute 10th Intellectual Property Law Institute , 1-17. https://www.stradley.com/-/media/files/publications/2016/pa-bar-institute-trademark-law-update-casey_2016.pdf
Chon, M. (2019). Kondo-ing1 Steele v. Bulova: The Lanham Act's extraterritorial reach via The Effects Test. https://www.bu.edu/jostl/files/2019/10/9.-Chon.pdf
Wal-Mart stores, Inc. v. Samara brothers, Inc., 529 U.S. 205 (2000) . (n.d.). Justia Law. https://supreme.justia.com/cases/federal/us/529/205/
