William H. Rehnquist: We'll hear argument next in No. 99-150, Wal-Mart Stores, Inc.-- Mr. Coston.
William D. Coston: Mr. Chief Justice, and may it please the Court: This case raises the legal question of when a product design is inherently distinctive under the Lanham Act, but it also raises the more practical question of how high will we raise a trademark barrier to competition. The affluent consumer, the middle class consumer, and the low income consumer all want to wear clothes that are popular and stylish. Here, 25 dollar seersucker dress sold under the Samara label was also sold with a noticeably different quality by Wal-Mart for 3.88 dollars under different labels, Cuties by Judy and Small Steps. The effect of the court's injunction here is to deny consumers the opportunity to buy any seersucker dress with appliques which may or may not be found in the collar. Because of the tension in this case between trademark law and competition law, we submit there is a need for a new standard to measure when trade dress and product configuration is inherently distinctive.
Sandra Day O'Connor: Now, there were rather lengthy instructions given to the jury in this case. I think if I were a juror reading them, I'd be a little confused. But there... apparently Wal-Mart didn't object to those instructions, and we're not here being asked to find that the instructions that were given were faulty. And so, it's... it's... I don't think that the test that you propose would necessarily fit within the instructions that were given, and yet that's what went to the jury. And I wonder if we... we don't just say, well, okay--
William D. Coston: Well, Justice O'Connor--
Sandra Day O'Connor: --let it stand.
William D. Coston: --In... in this case, we, Wal-Mart, contended from day one that the trade dress was not inherently distinctive. We've never waived that point.
Sandra Day O'Connor: Right, but you submitted that question to the jury, and the jury, for whatever reason, has come back thinking it was inherently distinct.
William D. Coston: The case--
Sandra Day O'Connor: I mean, that's how it--
William D. Coston: --The case was submitted to the jury--
Sandra Day O'Connor: --came out.
William D. Coston: --under instructions that we suggest do not properly state the law.
Sandra Day O'Connor: Well--
William D. Coston: They... they were instruction on Abercrombie--
Sandra Day O'Connor: --But you didn't preserve any objection on that. We're not up here arguing about the validity of the instructions.
William D. Coston: --As this Court held in the Preponik case, Justice O'Connor, a rule 50 challenge to a judgment is tantamount to a challenge to the instructions. And in that case, there were many facts very similar to this case. A changing landscape that... and I use the word landscape pointedly.
William H. Rehnquist: Well, now, are you suggesting that if you simply challenge a judgment under rule 50, even though you made no objections to the instructions, that brings about a change... that brings about a challenge to each instruction?
William D. Coston: No, I wouldn't go that far, Your Honor.
William H. Rehnquist: Well, then what do you mean?
William D. Coston: In this case the legal landscape of the protectability of trade dress, particularly in product configuration, has been shifting since Two Pesos. Every case produces a different result, and we submit that it... it is unfair to litigants in that climate to have to predict with certainty what the standard would be. We tried at the district court level and the Second Circuit level to confine ourselves to Second Circuit law.
Sandra Day O'Connor: Well, it just... it's hard to know how to define inherently distinctive. It's... it's sort of like pornography: I know it when I see it. How... how are we supposed to define that term?
William D. Coston: Well, we submit, Justice O'Connor, that on closer inspection of the statute, that Congress has given us the answer to that, that Congress has said for product configuration trade dress, the old-fashioned rule works best. Go to secondary meaning. Rather than trying to predict how a consumer will view a new product design, let's wait for the market to determine if that design has earned any--
Sandra Day O'Connor: Where... where did Congress say that we had to find that secondary--
William D. Coston: --In 1946, Congress adopted section 23(c) of the Lanham Act, which lists, among a whole litany of possible marks, configuration of goods. That's the only spot in the Lanham Act that the term configuration of goods is found. And what is its significance? What--
Antonin Scalia: --Mr. Coston, before you get into that, I'm not completely clear on... on this first question about the instructions below. I had thought that what you're arguing here... and correct me if I'm wrong... is not that the instructions were wrong, but simply that there was not enough evidence under a proper criterion to go to the jury and that you were entitled to judgment as a matter of law--
William D. Coston: --That is correct, Justice Scalia.
Antonin Scalia: --regardless of your... you're not complaining about the instructions. You're just saying in this case, there was not enough evidence to go to the jury.
William D. Coston: That is correct, Justice Scalia.
Antonin Scalia: So, we not only have to agree with you about the standard, but we also have to agree that if we apply that standard, no reasonable jury could have come out finding your... your client liable.
William D. Coston: Or... or it should be remanded to the Second Circuit for that evaluation. We also believe that part of the reason the importance of taking a case like this is given the different standards in the various courts of appeals, there is a need for some certainty so that juries can be properly instructed. And that is what we submit should be an outcome here, that this jury was instructed on Abercrombie. It was instructed on partial Seabrook. It was instructed on partial Knitwaves. It was a very confusing set of instructions because, we submit, the law was very confusing at that time.
Sandra Day O'Connor: Well, this Court in that Two Pesos case basically said that we don't apply to a trade dress claim a general requirement of secondary meaning. I... I thought we crossed that bridge. And yet, you're here arguing that we have to go back and change that. I think your position would require us to basically review and... and reverse Two Pesos. That was a trade dress case.
William D. Coston: Yes. I... I submit not, Justice O'Connor. The holding of Two Pesos was simply that not all trade dress requires proof of secondary meaning. The Court allowed the possibility that some trade dress might require secondary meaning. Indeed, this Court in the Qualitex case held just that, that color as a form of trade dress always requires secondary meaning. We're submitting that the shape of a product is like color, never arbitrary, never inherently distinctive, but always requires secondary meaning.
Stephen G. Breyer: Well, why should it always? I mean, you could have a weird situation. Imagine you made a hair brush in the shape of a grape, you know, and they continuously... that was it. It's called the grape hairbrush, and that's it. I mean, that's so weird that I guess that people would pick it up.
William D. Coston: I submit, Justice Breyer, that... that unless it had bristles, it wouldn't be--
Stephen G. Breyer: It does. I mean, you know, that's not the point.
William D. Coston: --Right. If it has--
Stephen G. Breyer: The point is why couldn't you... since we said you could in Two Pesos, why isn't Two Pesos basically right that it may require something special and rather unusual, but not impossible?
William D. Coston: --The... the grape brush I submit says nothing to the consumer about source.
Stephen G. Breyer: Oh, yes, it does after a while.
William D. Coston: After a while.
Stephen G. Breyer: I mean, sure... no, no, no. All the products are grape. I mean, you know, you wonder what's it... going on here with this grape, et cetera. I mean--
William D. Coston: Well, I... I agree--
Stephen G. Breyer: --It was like the--
William D. Coston: --that after a while the market would acknowledge that the grape hairbrush came from a certain company, but that's the point of secondary meaning, that it has to show to the consumer--
Stephen G. Breyer: --It's a whole line. It's a grape hairbrush, a grape comb, a grape hair curler, and a grape... you know, et cetera. And so, almost instantly when you see it there, you get the idea.
William D. Coston: --Well, without fighting the hypothetical, my assumption would be that there would be some packaging that would accompany it and probably a brand name that no one would launch a new product without any other indicia of source.
Stephen G. Breyer: I'm really saying I don't... I don't see why we have to... why should we overrule Two Pesos? It isn't really what you want us to... to narrow it to make sure that it really is an arbitrary kind of situation where source is pretty readily indicated.
William D. Coston: I think... I think the lower courts and certainly all trademark advocates are asking this Court to clarify Two Pesos. We are not asking that you overrule it, but we do think that... that 23(c) is some evidence that Congress felt that a configuration of goods was different than--
Ruth Bader Ginsburg: --that you're making that we should... we should confine Two Pesos to the packaging and... trade dress, as I understand it, covers both the... the package that the product comes in and the product itself. You are conceding that the product itself could have acquired distinctiveness.
William D. Coston: That is correct, Justice Ginsberg.
Ruth Bader Ginsburg: But Two Pesos doesn't seem to make a distinction between the packaging and the product. Do we even know what the decor of the rest are? Whether... whether that was... where that fit?
William D. Coston: Different courts have interpreted Two Pesos in different ways. I think the majority view is that Two Pesos was more of a packaging case, that it was a way of packaging restaurant services, a servicemark if you will, and restaurant food. We are asking you to... to clarify Two Pesos and to resolve a question really that wasn't resolved in that case. The court assumed, without deciding, that the dress was inherently distinctive. It was stipulated when it was presented--
Ruth Bader Ginsburg: Well, is the qualification that you're asking to confine Two Pesos to packaging cases as opposed to product cases?
William D. Coston: --That is correct, Justice Ginsburg, to non-product configuration trade dress.
Sandra Day O'Connor: But it's very--
David H. Souter: --You say that no--
Sandra Day O'Connor: --it's very difficult, frankly, to know whether it's product packaging or product configuration in many cases. Which was it in the restaurant?
William D. Coston: In the restaurant, I submit it was a... it was a package.
Sandra Day O'Connor: Well, it's not all that clear, and I think there are many cases where it wouldn't be clear. It sounds like... you... you know, you can say the words, but I think they blur at the margins--
William D. Coston: I--
Sandra Day O'Connor: --in knowing which is which.
William D. Coston: --I agree, Justice O'Connor, there are cases at the margin when you're not sure if it's a package or a product, but in that case you look at how it's being presented to the consumer. If the principal presentation to the consumer is this is a product, then secondary meaning would be required. If the principal presentation is don't look at the contents here, look at this good itself as a package, then the fact finder should find that it's a package. And even then it may not be inherently distinctive.
William H. Rehnquist: Well, but another way of avoiding the difficulty is to say don't try to separate them, that trade dress... that trade... the product and trade dress go the same way--
William D. Coston: And--
William H. Rehnquist: --and that Two Pesos would regulate both.
William D. Coston: --And, Mr. Chief Justice, our alternative argument does just that, as do most of the amicus briefs. They say let's start with the Seabrook test to determine what is unique trade dress with no distinction between packaging and product. The... the distinction we offered on packaging and product is in our first argument as representing the congressional intent. We think they drew the line. And we also think that if this Court were to follow the Abercrombie tests, which are word descriptive analysis tests, that a product configuration under Abercrombie is always merely descriptive--
William H. Rehnquist: Is that consistent with Two Pesos?
William D. Coston: --I believe it is, Mr. Chief Justice. The Two Pesos certainly went through an Abercrombie analysis and used the... the generic, descriptive, suggestive, fanciful classification--
Antonin Scalia: Mr.... Mr. Coston, whether I'm willing to accept your first argument, which is that configuration can never qualify as trade dress or... or your second one, which is... would apply a starchier test for configuration, depends for me largely upon whether aesthetics on a product, the shape of a product is pleasing, whether that is functionality or not. If it's... if... if that is functional, then... then it... you know, it can't... it can't constitute trade dress even if the other... even if the other conditions are met. And... and--
William D. Coston: --You are correct, Justice Scalia, that--
Antonin Scalia: --Do you think it's functional or not?
William D. Coston: --I... I think in this case... and we argued that the... the appearance of this good was merely aesthetically pleasing. It had an aesthetic functionality. Now, the... whether that doctrine exists in trademark law today is unclear.
Antonin Scalia: Well, you see, I see a big difference between let's... you know, kids like to... like to have brand name basketball shoes. And let's assume that a... a company comes out with a basketball shoe that has a big lump, just a big lump, over the big toe. It has no function whatever and it is ugly as sin. And... and the kids somehow... you know, they get on to this, and they... they want people to know that they are wearing that company's shoes, so they wear these shoes with the ugly, big lump on the toe. I have no problem with that. But I do have a problem with... with somebody who... who creates a beautiful dress and the beauty, it seems to me, may well be part of the functionality of... of the product. And you mean just because I'm the first one to have discovered this beautiful thing, nobody else can create beautiful things like that. That's--
William D. Coston: Well, I agree completely with you, Justice Scalia.
Antonin Scalia: --I... it seems to me that if... if beauty is... is functional, then you should get a design patent for it and... and protect... protect your right to that particular beautiful thing, but only for what? 17 years, whatever.
William D. Coston: For 14 years on a design patent.
Antonin Scalia: Right.
William D. Coston: Just a couple of observations, Justice Scalia. The... the comment you made that our first argument says no protection for product configurations, in fact we do allow protection for product configurations on proof of secondary meaning. And I think you'll find in the Patent and Trademark Office that there is no reported decision that we can find that has ever allowed an inherently distinctive product configuration, but there are many cases which allow a product configuration to serve as a mark on proof of secondary meaning. With respect to the aesthetic functionality notion, we do find in the Qualitex case some notion that where color serves a function of... of beauty, that no one has the right to take that away from the marketplace and... and prohibit competition.
Stephen G. Breyer: Color is functional, and I think... color is functionality, which I think Qualitex came pretty close to saying, doesn't it?
William D. Coston: Yes.
Stephen G. Breyer: Then... then shape would be too.
William D. Coston: I agree.
Stephen G. Breyer: I mean, there's no basis for a distinction there. But... but then do we have to overrule Two Pesos? I mean, I think Justice Scalia is right. I agree with what--
Antonin Scalia: --Shape is not necessarily functional. You don't say it necessarily is--
Stephen G. Breyer: --No, no, no, no. Not--
Antonin Scalia: --It may be if... if its purpose is aesthetic as opposed to the lump on the toe. And that's your position.
William D. Coston: Yes, Justice Scalia.
David H. Souter: But isn't... do we then have the same difficulty that we have with the difference between product and packaging? I mean, it's easy to say that whenever a... a product is purchased at least primarily for or substantially for an aesthetic reason, which is easy to say, I guess, in the case of a dress or a car, that in fact at that point the... the aesthetics really is the... the function. But isn't that simply going to lead to a... a totally porous distinction? You know, I... I buy the comb. There... there are different shapes of combs. They all have teeth. Some have longer teeth, some have shorter teeth. Aren't we simply going to be met with the argument, well, there was... there was an aesthetic component there? And are we simply going to end up with a distinction which... which we can't maintain?
William D. Coston: I think not, Justice Souter. If we keep in mind the purpose of the Lanham Act is to protect consumers against confusion when they buy one good or another, and if there isn't that consumer protection notion in a choice between one thing of beauty and another, if they don't care who made it, but they buy it because it's beautiful, then the Lanham Act isn't even implicated. If I could reserve a few moments, Mr. Chief Justice.
William H. Rehnquist: Very well, Mr. Coston. Mr. Wallace, we'll hear from you.
Lawrence G. Wallace: Thank you, Mr. Chief Justice, and may it please the Court: If this Court had held in the Qualitex case that color is an inherently distinctive source identifying characteristic of products, the Patent and Trademark Office would have been flooded with applications for color marks and we would have been well on our way to having color-coded industries. And the expectations of consumers would, likewise, have been affected. They would have begun thinking of color as source identifying more than they had prior to the decision. Instead, the Court looked toward the traditional remedial role of finding that secondary meaning had been established for the use of color on a particular product in a particular industry and someone was appropriating the good will in a way that was deserving of protection. It's possible, in other words, for the courts to get too far out in front on these issues in interpreting the law, and there can be self-fulfilling prophecies of what becomes source identifying, and industries can become regimented into each producer having his own little niche. That... that is the danger of too receptive a standard of inherent distinctiveness.
Stephen G. Breyer: Right. So... so, are you saying now we should overrule Two Pesos--
Lawrence G. Wallace: Not at all.
Stephen G. Breyer: --or that we should--
Lawrence G. Wallace: What I was trying to lead up to is that that is the utility... the utility that has been found in applying the so-called Seabrook approach. It's not that it provides an intellectually satisfying abstract definition. It's very hard to come up with anything of that sort in this context, but that it... it requires the courts to ask a series of practical questions that appropriately distinguish what is a permissible protection for inherent distinctiveness without getting the courts out in front.
Sandra Day O'Connor: --I'm not sure that I know how it would apply in this very case, however. I'm not sure that it is clarifying. How do you trace it down here?
Lawrence G. Wallace: This is--
Sandra Day O'Connor: I... I look at that thing and it looks pretty amorphous to me.
Lawrence G. Wallace: --This is a very difficult case for that purpose. In a way it's a good case for that reason, but in a way it's a hard one to address. There... I mean, by a parity of reasoning, if the... the holding that there was inherent distinctiveness in this configuration alternately prevails, the holding of the court below, there... there would likely be some tendency of other manufacturers to come up with their own configurations of appliques to seersucker garments--
Anthony M. Kennedy: Well, I take it you think that a properly instructed jury could rule for Samara in this case?
Lawrence G. Wallace: --Well, what... what we suggest is that there is a responsibility on the courts to determine whether applying the Seabrook factors to the evidence that was before the jury, there is a basis for a finding--
Anthony M. Kennedy: Well, I know it's the responsibility of the courts.
Lawrence G. Wallace: --a reasonable basis. Right.
Anthony M. Kennedy: But I want to know your... your answer. Do you think a properly instructed jury could find for Samara, if I'm pronouncing it right, in this case?
Lawrence G. Wallace: Well, we haven't taken a position on that in the case--
William H. Rehnquist: You haven't taken a position. Just... I think you've answered Justice Kennedy. You come in here and say we should adopt these factors and let the court of appeals figure out what they mean. Well, that's just too easy a task. I mean, it seems to me if we're going to say these are the controlling factors, we've got to be able to apply them to this case. But you don't give us any hint as to how that should be done.
Lawrence G. Wallace: --Well, I... what... what we learned from the Patent Office in looking at this is that it would be difficult for them to conclude, in a registration process, that there was anything inherently distinctive about the individual garments that were at issue here. They used common elements that the Seabrook inquiry would not ordinarily allow protection for. The claim here was not a claim that any particular garment was entitled to protection or that any particular garment was infringed, but it was a claim about the... the overall appearance or look of a line of garments even though the garments held to infringe more closely resembled individual garments than they resembled this abstraction which was based on certain common characteristics that sometimes were variable and sometimes didn't even appear in certain garments.
Antonin Scalia: What about the aesthetically pleasing element? I mean, what... what if people were buying these... these knock-offs just because they... they think it's pretty, this kind of design?
Lawrence G. Wallace: I--
Antonin Scalia: If... if that is a functional element, this case is over, isn't it?
Lawrence G. Wallace: --Well, that... functionality is a separate inquiry from whether a characteristic is source identifying to consumers. You can find that consumers actually think that a particularly pleasing item comes from a particular source. You can prove secondary meaning, but still it could be unprotectable because--
Antonin Scalia: I understand, but... but without proving secondary meaning, if it's functional, you're... you're home free. Isn't that right? I mean, the person who copies is home free. Now, is... is this... is the aesthetically pleasing nature of these clothes not a... not a functional element of... of the product?
Lawrence G. Wallace: --It can... it can be if... if the ability to compete in this market is impeded by denying access to competitors to a similarly pleasing combination of very familiar elements.
Antonin Scalia: Seersucker, watermelons, you know, collars, whatever.
Lawrence G. Wallace: One could easily view this case as one where the copyright protection that was afforded from direct and duplication suffices and otherwise the industry is being too impeded here.
David H. Souter: Don't we at least have to--
Ruth Bader Ginsburg: --Mr. Wallace--
David H. Souter: --Don't we at least have to say that the more important the aesthetic element is in the consumer's decision, the more difficult it is to prove inherent distinctiveness, the less likely that there is inherent distinctiveness?
Lawrence G. Wallace: I... I think that is correct, Justice Souter.
John Paul Stevens: It isn't quite that, is it? Could it not be the fact that the... a... the only thing inherently distinctive is itself functional? Then there would be no protection I take it.
Lawrence G. Wallace: Well, there certainly would be no protection but not because there isn't inherent distinctiveness.
John Paul Stevens: Correct. There could be some inherently distinctive feature that was a functional feature that would preclude protection without secondary meaning.
Lawrence G. Wallace: There's also--
Ruth Bader Ginsburg: Mr. Wallace--
Antonin Scalia: --Let's say a modern artist who... who comes up with the idea of, you know, putting a nose where... where the ear ought to be. You know, he's the first one to do it. No one has ever done it before. Now, if... if somebody else decides, gee, people like that, I'll do the same thing, I... I think even though it was totally distinctive, I don't think that would be a violation.
Lawrence G. Wallace: --I think that's right. There... of course, there could be copyright protection for a work of art.
Ruth Bader Ginsburg: May I ask you, Mr. Wallace, because you have so little time, but... to help us with the who decides question? You said Seabrook. That's a good formula. You didn't want to tell us how it would apply in this case. But who... who applies it? Does this case... can you tell us? Does this case go to the jury and is Seabrook the charge that you would recommend for the jury? Or does this case not go to the jury? I'm really troubled. In most of these cases, they go to a jury and the jury hasn't got a clue what that charge means.
Lawrence G. Wallace: Well, you know, there... there is much that we... we really think there's much wisdom in Judge Newman's dissenting remarks on this issue, that you can't cede so much authority to the juries that they're deciding what the scope of the law is. But this was a question presented in the petition that was excluded from the grant and we didn't brief it. So, I... I can't really say much beyond that question. We do think--
Ruth Bader Ginsburg: Well, if you ask us to... to adopt the Seabrook standard, do we adopt it as a charge for the jury or as a screen to see whether the case goes to the jury?
Lawrence G. Wallace: --I... I think that it... it really is a screen for judges, so far as... as I'm able to answer the question, although I don't know that it would be error to charge a jury. It's just a question we have not briefed. It was a question excluded from the grant. We go through a process in trying to arrive at an answer to questions of this sort. I do want to say that there is room for more skepticism about a claim of inherent distinctiveness when the inherent distinctiveness cannot be perceived in any one item, but can only be perceived by extracting characteristics from a line of items. That doesn't mean that it's... it's impossible to find it, but--
William H. Rehnquist: Thank you, Mr. Wallace.
Lawrence G. Wallace: --there's more reason for skepticism.
William H. Rehnquist: We'll hear now from you, Mr. Riback.
Stuart M. Riback: Mr. Chief Justice, may it please the Court: In terms of the legal standard that we're advocating, we have no substantive disagreement with the position of the United States in its brief about what must be shown to establish that a product's design is inherently distinctive under the Lanham Act. In the context of product design, Seabrook gives concrete definition to the Abercrombie standard that this Court endorsed in Two Pesos, carried forward in Qualitex. In other words, something that is commonly used on a product is associated with the product and thus descriptive, and something that is unique and unusual is not and, therefore, is inherently distinctive. Abercrombie, as focused by Seabrook, is consistent with this Court's precedents in Two Pesos and Qualitex. It is consistent with practice in the Patent and Trademark Office. It is consistent with how most circuits, irrespective of how they articulate their legal standard, in actual practice have been ruling on these cases.
Antonin Scalia: Well, that's because Seabrook is so vague, it's consistent with almost anything.
Speaker: [Laughter]
Antonin Scalia: I mean, you know, it doesn't prove anything.
Stuart M. Riback: Well, no, Seabrook I believe asks some concrete questions that enable you to give content to the question of how inherently distinctive something is.
Stephen G. Breyer: Well, in inherent... I know you're going to do that, but if it's... I just want to... Justice Scalia and the answer to my question have thrown me a little bit. And I... I'd like you to focus, when you go through this list, on the particular thing that they brought up, which is where you have a word, it's pretty easy to think of an arbitrary or fanciful word that clearly is meant to designate source.
Stuart M. Riback: That's right, Justice Breyer.
Stephen G. Breyer: So, why bother with the secondary meaning question?
Stuart M. Riback: Right.
Stephen G. Breyer: But what they've suddenly got me thinking is... it's very hard to find an example of a shape or a configuration where you could say the same because of what Justice Scalia said because where you do have a weird shape or even a Coke bottle, you see, the classic, the Coke bottle... I mean, where you do have that, the natural human reaction is to think, well, they're trying to attract customers by the shape. They're not trying to indicate source. They're trying to... they're trying to... it's weird, a grape brush. It's... and even the Two Pesos, you see? So... so, if that's so, why not force people at least to prove secondary meaning so we don't get into all the rest of this case? I mean, there we've got... and that solves the problem that he brought up. It does force us either to change Two Pesos or to create a new, difficult distinction, the one between packaging and trade dress. But maybe now I'm thinking those are the lesser of the evils. So... so, I grant you those would be bad, either of those two, but maybe this... this new distinction would be the lesser evil. So, that's what I'd like you to address.
Stuart M. Riback: Well, if I... if I may, Justice Breyer, I think that something that you said was inaccurate, which is if you're trying to draw customers based on the shape, then that is an indicator of source.
Stephen G. Breyer: But what we don't want is to have the Lanham Act protecting a shape because it's an attractive shape or even a repellant shape that people would buy something because of the shape. That's just what you don't want. You want to give total freedom to do that and use the Copyright Act if they want to protect it. You don't want the Lanham Act to protect that even to 1 inch. All you want the Lanham Act to protect is the source, the fact that the customer thinks, oh, I see what that means, it's a Coke bottle. Coke produced it. But there was secondary meaning proved. So, why not always force them to that proof where you're dealing with a shape?
Stuart M. Riback: Because there's nothing in the Lanham Act that tells you that the same feature of a product can't serve more than one purpose. You don't want--
Stephen G. Breyer: Yes, but that's why we want to do it. I mean, the Lanham Act doesn't tell us this... I'm not saying they can't. I'm just saying that... that let's at least, before we start interfering with aesthetic and other purposes, force the plaintiff to the proof that people really do think this indicates a source rather than having a judge or a jury guess it.
Stuart M. Riback: --Well, there's a number of problems with that, if I may. I think what's been coming out in the lower courts, in terms of the advocating a separate test for product design or saying the product design should more likely have secondary meaning, is two things. One is this concern that was stated about protecting the item itself. The item itself is not what's being protected. If the item itself is what was being protected, we'd be running into the functionality doctrine. And I think this addresses Justice Scalia's point. What the functionality doctrine says is if you need something in order to compete, if there's something about the particular mark that's being claimed that is necessary so that competitors won't be foreclosed, then that feature is functional, and if that feature is functional, it makes no difference if it's inherently distinctive. You can't lock it up. That's how functionality shows up. But that means that then the item itself is what's being protected. We're not talking about that here. We're talking about non-functional arrangements of features that give the product the appearance it has. This is something that Judge Motz in the Ashley case in the Fourth Circuit pointed out. It is not the product itself. The other--
Antonin Scalia: Non-functional arrangement that... but you assume that... that aesthetics are separate from functionality.
Stuart M. Riback: --Aesthetics can be functional--
Antonin Scalia: I mean, it is a function of a dress is to look pretty. One of its... one of its functions is to cover the body, but certainly another function is to look pretty.
Stuart M. Riback: --Of course, and you wouldn't want to force someone who wants to use the design of the dress to indicate its source to make it ugly in order to get it to be source indicated.
Antonin Scalia: Right.
Stuart M. Riback: So, there's no necessary tension there.
Antonin Scalia: Nor would you want to prevent other people from copying a beautiful thing that one manufacturer has created. If... if it's beautiful, they ought to be free to copy it unless... unless it is misleading consumers into thinking that... that it's the product of somebody else. But I don't see you can say that just because they're copying beauty that... that was first created elsewhere.
Stuart M. Riback: Unless it is so unique and unusual that the customer would be warranted in inferring source.
Antonin Scalia: That's always going to be the case when... when the... a first person... the person first discovers a new manner of beauty such as the nose coming out of the ear, if one considers that beauty. I mean, you know, you would say, oh my God, that's Picasso, but it turns out it wasn't Picasso because other artists copied the same thing. Now, if Picasso wanted to, you know, copyright the nose coming out of the ear, I suppose he could have done that or maybe gotten a design patent. But I don't see why he should have had... had protection for it under the Lanham Act.
Stuart M. Riback: Well, I think... I think what you might be getting at, Justice Scalia, is the concern that people don't tend to perceive a product design to be a source indicator as readily as they might perceive a package. Okay. And that might be true. I don't know. I haven't seen a study. It may well be correct. But if it's true, that doesn't mean the test is different. What it means is if you apply the right test, you're going to get more negative answers on product design cases.
Stephen G. Breyer: But if we... if we think... if we think, see, as in color, you know, that there's risks of the kind, do we do any harm by saying... of course, we might in your case. I understand that, but in general--
Speaker: [Laughter]
Stuart M. Riback: Yes.
Stephen G. Breyer: I mean, in... in general, do... do we cause a problem for the lawyers who practice in this area or others if we were to say, look, all we're saying is show secondary meaning. That way we know that people really do associate this shape or dress with a source. That's all. We're just asking you don't let them go on a hunch. Just... just bring in some evidence.
Stuart M. Riback: Well, first of all, I would say if we follow the Court's precedent in Two Pesos, that forecloses that because Two Pesos says that one of the things that the Lanham Act says you do not need to do is require secondary meaning of someone who has an inherently distinctive trade dress.
David H. Souter: Okay, but let's assume for the... for the sake of answering Justice Breyer--
Stuart M. Riback: Yes.
David H. Souter: --because I want to ask the same question he wants to ask. Assume just for the sake of that answer that maybe we... we didn't get it right in Two Pesos. What's the right answer? Forget Two Pesos for a minute. Are there going to be so many negative answers that the sensible rule would be to require proof of secondary meaning in the meaning in the first place? Then everybody knows where he stands, and the likelihood that our answer is going to... that we do finally get is simply going to be on the basis of, you know, the hunch is going to be greatly reduced.
Stuart M. Riback: I think that--
David H. Souter: Is that a practical suggestion?
Stuart M. Riback: --I think the harm is this. You can go in today on January 19th, 2000 into a store with certain perceptions about what is and is not likely to be used by consumers to identify products. That's a secondary meaning argument. But you... you can use January 19, 2000 as your baseline. I don't know a month from now, a year from now, 10 years from now, what sort of products will be there, what sort of innovative methods of differentiating one product from another there will be, or--
David H. Souter: Yes, but why isn't this simply an argument to the effect that it's always... there's something ultimately time based about secondary meaning? That's going to be true in every secondary meaning situation.
Stuart M. Riback: --That would get rid of inherent distinctiveness altogether. I'm not... I'm not sure, in addition to that, that there is any principled way in which you could distinguish packaging from secondary meaning.
David H. Souter: Yes, you may well be right.
Stuart M. Riback: You're opening up another--
David H. Souter: Let's assume... let's assume--
Stuart M. Riback: --You're opening up another thicket with that. Yes. I'm sorry. What?
David H. Souter: --No. I... I'll make that assumption that I can't make that distinction. I don't know how to... I don't know how... frankly, I don't know how you apply it in Two Pesos.
Stuart M. Riback: I think in Two Pesos it would depend on whether you think the restaurant was serving food or serving a dining experience. If the restaurant is serving food, then it's a package. If it's serving a dining experience, then the ambiance and the layout are part of it.
David H. Souter: Right.
Stuart M. Riback: And it's a product design case. And I think restaurants do serve... do serve you with a dining experience.
John Paul Stevens: Yes, but I think the assumption in Two Pesos was that it was... it was not the dining experience because then it would have been part of the product, and I think it was treated as though it was part of the packaging.
Stuart M. Riback: Well, I--
John Paul Stevens: Maybe it was wrong, but I thought that was the assumption.
Stuart M. Riback: --I don't think the opinion bears that out because what the opinion talks about, if you look at Two Pesos, when they have the discussion of section 2, it talks about if a verbal or symbolic mark or the features of a product design may be registered under section 2. And I think the reason that Two Pesos is addressed toward product design very heavily is because when you look at the four Second Circuit cases that were disapproved in the Two Pesos case, every last one of those is a product design case. Now, I'm not saying that every one of the product design cases that was addressed there would necessarily be inherently distinctive, but Two Pesos says that you cannot exclude that possibility.
John Paul Stevens: It seems to me that one can draw a distinction... maybe it's pretty fine... between packaging and product, though, and one can interpret Two Pesos to just relate to packaging rather than product. And one can also, although there really is some tension in it, to say that in... in a line of clothing that appeals to the aesthetics of the... of the purchaser, that aesthetics in that context is functional and part of the... and therefore, distinctiveness would not qualify for Lanham Act protection but would qualify for copyright protection. It seems you could fit that scheme together I think. Maybe I'm wrong.
Stuart M. Riback: I... I'm not sure that's exactly right because the entire thrust of Two Pesos is that... first of all, it never mentions the word package I don't believe, other than in one of the concurrences. But--
John Paul Stevens: But that was the argument. I can't remember exactly how it was phrased, but that the... all the Mexican features of their restaurants had nothing... was not functional at least and, therefore, was more like a packaging... more like packaging than the product itself.
Stuart M. Riback: --Well, that only presumes that the product itself is what's being protected. We're not talking about that. We're talking about something that isn't necessarily part of the product where the product would still be the product even if you stripped the feature off, which would be certainly the case with what's at issue in this case. You could strip the features off. You could... the product would still be the product, and you could then put those features onto something else. Obviously, it would have to be made out of cloth, but you could use it for a curtain. You could use it, you know, for a drape or a bedspread.
Antonin Scalia: Well, I don't... you think the product would be a product? I mean, I--
Stuart M. Riback: Oh, sure. Something like that happened at the trial as a matter of fact.
Antonin Scalia: --A piece of cloth that... that can cover your body, and... and that's... that's all that goes into a dress.
Stuart M. Riback: That... well, actually that happened at the trial. At the trial, I took the collar of a dress, folded it up into the dress, and asked the Wal-Mart witness if she would buy it for Wal-Mart to put out on its shelves and sell and she said, absolutely, it's very cute. So, the record in this case absolutely supports that.
Stephen G. Breyer: Suppose that we take your preferred way of doing it, which is to leave the functionality question as a subsidiary question coming in at the end.
Stuart M. Riback: Well, no, it's... it's a preliminary question now by statute. It used to--
Stephen G. Breyer: All right, or the functionality question becomes a separate question.
Stuart M. Riback: --Yes.
Stephen G. Breyer: And say you could include aesthetic considerations as functionality. But then that's not this question. This question is do we get down the track by... by asking if this particular shape or design is meant to identify a source. That's the question before us. Right? And the... the issue is--
Stuart M. Riback: That's the ultimate question.
Stephen G. Breyer: --that sometimes it could be so unique that that's what it does. Suppose you took the Seabrook factors, those three questions, which basically say, look, if this is normal or it's just ornamentation, forget it, you're out the window. Right?
Stuart M. Riback: Right.
Stephen G. Breyer: Suppose you... could you add to that the very question we want to know? Suppose you also said and you must say to the jury, jury, do you believe that when you look at this, it's not only unique, this shape or dress, but the very way in which it's unique in this industry is likely to indicate to a person that why they've done it is to show a source, not just beauty, not just... I mean, could you ask... I could get a better formula--
Stuart M. Riback: I... I think what the question... I think what you're gliding past in the question is what we're trying to ascertain here is inherent distinctiveness. Think of what those words mean.
Stephen G. Breyer: --No, but it's different. But inherent is--
Stuart M. Riback: It has to be inherent in the product and it has to distinguish it from others.
Stephen G. Breyer: --But inherent distinguish... inherent distinctiveness of the source... of the sort that would tend to identify a source, not inherent distinctiveness of the sort that would lead a person to buy something for its beauty or shape.
Stuart M. Riback: Well, it's... the... the presumption under the Lanham Act and the case law, including out of this Court, is that if it's inherently distinctive, then it indicates source. That's the presumption.
Stephen G. Breyer: But that isn't really true where you're talking about a shape or trade dress. Indeed, dress designers make their money out of making something that is unique and beautiful.
Stuart M. Riback: Well, you got to ask the other questions in Seabrook then if that's the case. There's no exclusion in the Lanham Act for clothing.
Stephen G. Breyer: No, no. I know.
Stuart M. Riback: So, there's certainly--
Stephen G. Breyer: And Seabrook doesn't distinguish between that which is unique and... and attracts customers because it's beautiful and unique and that which attracts customers only because it is unique and thereby indicates source. And my question to you is should this Court, in trying to list tests, take Seabrook and add to it a question that would make that very distinction?
Stuart M. Riback: --No, I don't think so because all of the formulations that I've seen about what might be added all require measures of consumer perception which in and of itself are secondary meaning tests. So, if you concede that you don't want to calcify the law by freezing current conceptions into place, and allow for development of the marketplace in the future with new products and new ways of differentiating them, then you have to maintain that there can be inherently distinctive anything. The question is how you ascertain it. Seabrook doesn't ask just is it unique and unusual. It also follows a couple of other... another couple of questions down the line. Is it merely a refinement of what's out there, even if it is somewhat different? Is it a commonly used shape? It adds more than just saying is it different. What it does is it gives content to the analysis by saying something will be descriptive for purposes of the usual Abercrombie analysis. Something will be descriptive if it's very common because ordinarily a feature of a product wouldn't have descriptive or suggestive capability. You would need to give content to that in this context, and I think Seabrook does that if you follow those questions down. But you would need to follow all of it.
Ruth Bader Ginsburg: Well, why are these dresses just inherently descriptive as opposed to distinctive? I mean, you expect to find children's clothes to be pretty, to have appliques, to be of washable material. And so, I... why would a juror think that there's anything about this that would be indicative of a source rather than just being a nice, decorative pattern?
Stuart M. Riback: There was extensive evidence on that at the trial. There were... and I'm sure you've noticed in the joint appendix... dozens of garments that were submitted. There was evidence submitted on what Samara is trying to accomplish by using this particular look. In terms of Seabrook, you line up the Samara dresses against what else was there, they're noticeably and markedly different. And given that--
Ruth Bader Ginsburg: Well, Judge Newman--
Stuart M. Riback: --I'm sorry.
Ruth Bader Ginsburg: --didn't think that because didn't he suggest that the Simplicity pattern looked like the Samara dress?
Stuart M. Riback: Well, two things I'd like to say about that. First of all, Judge Newman's dissent forgot one point, which is we're not saying that using a collar on clothing is inherently distinctive. That would be silly. We're not saying using appliques on clothing is inherently distinctive. That's almost as silly. What we are saying is not that any particular one of these features is unique and unusual, but the particular combination that is used is different from what is out there in the rest of the market and serves to indicate source as a result. In terms of the Simplicity pattern, that's a function of reduced copying and basically just not looking at what the record said about it. In terms of the Simplicity pattern, that was not a collar where the applique was made into the collar. That was just something printed right onto the face of the dress, and the testimony in the trial brings that out.
Antonin Scalia: So, the first person who comes up with a thing of beauty, a distinctive aspect of beauty, of course, since he's the first one to come up with it, he'll be identified with it. And he gets protection for that automatically not by reason of any copyright protection or design patent protection, but just because, since he's the first one to invent it, everyone will think that something that is just as pretty in the same way must come from him.
Stuart M. Riback: No. He also has to use it in commerce.
Antonin Scalia: Oh, sure, sure.
Stuart M. Riback: Right?
Antonin Scalia: The other things.
Stuart M. Riback: So... so, in and of itself, the commercial use distinguishes it somewhat from the other... from the other instances that you made. But the other thing is there isn't one single standard of beauty and there are a lot of ways to make things beautiful. One of the things that both Wal-Mart and Samara agreed on at the trial is that there is virtually infinite number of ways to make pretty or attractive, saleable children's clothing.
Antonin Scalia: Well, that's fine, but the... but the purpose of the Lanham Act is not to give him dibs on... on one particular way.
Stuart M. Riback: The purpose--
Antonin Scalia: Why shouldn't other people be able to... to use that same aspect of beauty?
Stuart M. Riback: --Because the purpose of the Lanham Act is twofold. It's, number one, to give consumers information so that when they see something, they recognize it. And number two, it's to protect producers, who come up with a way to differentiate their products, in their efforts to promote it and to protect their investment--
David H. Souter: Yes, but why don't they get protected? The... the producer who comes up with the... the first time with the nose in the ear. Why doesn't the producer get protected with a design patent? And if then, in the course of the... the life of the design patent, the producer can establish the... the identification of the... of the nose in the ear with him, he then will get Lanham Act protection. That way we don't calcify product design, but we do gain a greater assurance in the conclusion that we're supposed to draw for Lanham Act purposes.
Stuart M. Riback: --If I may, I think a design patent will look somewhere else. With a design patent, you're talking about novelty and non-obviousness. Unique and unusual isn't necessarily novel. It's a different concept. With design patents, you want to promote creativity. You want to promote something new, not necessarily in the Lanham Act. With the Lanham Act, it's simply the ability of whatever it is that you're using as the signifier to signify what's been--
David H. Souter: Okay, but if you're going to--
Sandra Day O'Connor: --Well, if--
Stuart M. Riback: --what's been signified.
David H. Souter: --May I ask just one more question on this? If you're going to have the Seabrook test--
Stuart M. Riback: Yes.
David H. Souter: --isn't the Seabrook test looking to the same kind really of novelty for purposes of differentiation which you're telling me the design patentee has got to show in order to get his design patent. So, isn't there a consistency then?
Stuart M. Riback: There's... there's some overlap of subject matter. I think the way the case law has shaken out almost unanimously in the lower courts has been that, although some of the same subject matter can be covered by both the design patent law and the Lanham Act, they are basically different inquiries, serving different... the statutes serve different functions, and aim at different things.
John Paul Stevens: May I ask this question just--
Stuart M. Riback: Yes.
John Paul Stevens: --Is it essential to your case that Wal-Mart copied these designs? Supposing they had independently come up with their line without copying but just came a little bit later than yours. Would the result of the case had been the same?
Stuart M. Riback: In terms of infringement?
David H. Souter: It wouldn't have been before the jury, but would it... it legally would have been the same.
Stuart M. Riback: In... in terms of infringement, I think the answer probably would be yes. The answer... the answer would be the same. In terms of the consequences, I think the answer would be no.
John Paul Stevens: May I--
Anthony M. Kennedy: --I don't understand.
Sandra Day O'Connor: But the jury shouldn't take into consideration, should it, in deciding this case that there was an intentional copying? Because it doesn't make any difference.
Stuart M. Riback: Insofar as inherent distinctiveness--
Sandra Day O'Connor: That's not the test.
Stuart M. Riback: --Insofar as inherent distinctiveness is concerned, I think that's probably right. Insofar as secondary meaning is concerned, no. Intentional copying is an indicator of secondary meaning.
Anthony M. Kennedy: But doesn't... doesn't intent indicate that the second manufacturer recognized the distinctiveness and that's why he wanted to do it? So, intent is... is relevant. You wouldn't say that intent is irrelevant.
Stuart M. Riback: No, it's not... it's not irrelevant, but it doesn't mean that you do have an infringement with intent and don't have an infringement without it, which... which is what I understood that question to be.
Sandra Day O'Connor: Would... could... could Wal-Mart have protected itself here by hanging a tag on every dress saying this is not a Samara dress?
Stuart M. Riback: No, it could not have for the same reason--
Sandra Day O'Connor: This is a Wal-Mart dress.
Stuart M. Riback: --It could not have, Justice O'Connor, for the same reason that Taco Cabana, by printing its name on its menus and putting a big sign on a pylon outside, couldn't have saved itself from infringing on Two Pesos' mark. Or I have that backwards. I'm sorry.
John Paul Stevens: May I ask one other... one other... I just want to be sure of your position. Assume no secondary meaning and assume inherent distinctiveness, but also assume that the quality that makes the product inherently distinctive is functional. Protection or no protection?
Stuart M. Riback: No protection. If it's functional... if... if it is functional, then under every authority that I'm aware of, it makes no difference whether it's inherently distinctive or not.
Stephen G. Breyer: But then why did you respond to Justice Scalia... I think it was Justice Scalia or Justice Souter's earlier question... no, or that there would... remember? I think their question was about somebody creates a beautiful design or a beautiful thing that does indicate the source, but it's also beautiful, and they don't take out copyright protection. And you said, well, then there would be Lanham Act protection.
Stuart M. Riback: There could be Lanham Act protection.
Stephen G. Breyer: Well, in other words... now, what would you have to show? You'd come in and say I agree it indicates that it's a Dior dress, but he didn't get his design copyright, and so I can go copy it. And now you... you assert now it's a Lanham Act violation, and the defendant says not at all. He says it's... because there it's serving a functional purpose, the purpose of beauty and--
Stuart M. Riback: No. I say that it can be a Lanham Act violation. You would need to go through the analysis prescribed under Seabrook and Abercrombie in order to ascertain where this comes out in the Lanham Act analysis. And then at a certain point, you may well be able to say that this is Lanham Act protected. I'm not saying it necessarily would be.
Stephen G. Breyer: --I see what the... the problem is going to be showing the harm to competition, and that's going to lead to a big argument.
Stuart M. Riback: If you can design around it... and this is... this is basically what the predecessor of the Federal circuit... the Court of Customs and Patent Appeals said. If you can design around it, if you need it in order to compete, then it's functional. But if you... I'm sorry. If you cannot design around it, if you need it in order to compete, then it's functional. But if you can design around it, if there's no reason for you to use specifically that, then it's not functional. There's a case in the Seventh Circuit that explains how the aesthetic functionality works, which is a cookbook case decided by Judge Posner, where he said, look, you want to have a cookbook big so that it opens up so you can read it. You want to have big pictures and big print so you can read it while you're working at a counter. So, of course, you're going to end up with a picture... you're going to end up with a cookbook with big pictures and print, and in order to prevent the pictures from bleeding out onto the edges, you're going to have gold... gold edging. So, of course, the cookbooks are going to look alike. Well, that's aesthetic functionality, but that's not what's involved in this case. This case is quite different. If I might go on. There hasn't been any contention here that the jury wasn't appropriately instructed. The district judge specifically mentioned Seabrook by name in his analysis in the judgment as a matter of law opinion. The Second Circuit said, among other things... it said a lot of things that it didn't need to in our view, but one of the things that it said was the task of the court is to evaluate how unique and unexpected the claimed trade dress is. It also said that the jury looked at the dozens of garments before it. It said that at least two or three times. In making that analysis, I submit that if you do apply the Seabrook test, you must come to the conclusion that an affirmance is necessary in this case. If there aren't any other questions, I'll conclude.
William H. Rehnquist: Thank you, Mr. Riback. Mr. Coston, you have 2 minutes remaining.
William D. Coston: Thank you, Mr. Chief Justice. The problem with an inherently distinctive test is... is that it is predictive. It attempts to determine in advance of the demonstration of secondary meaning what consumers would think, and we know from product configurations alone that they do not tell people source-indicating facts. Rather, they tell consumers I'm a product. It inherently describes the product. In this case, application of a secondary meaning rule would work no harm. Samara had had its products in the market for 5 or 6 years, the record evidence indicates. And what we're seeing with the amicus briefs proposing a very rigorous Seabrook test is that the same evidentiary burden is going to be put on mark owners, albeit it calling it a Seabrook burden, as has been done in the past with the secondary meaning test. But the Patent and Trademark Office has followed the secondary meaning test for many, many years. They've got it down to a science. Trademark practitioners know how to do it. We submit that's the right outcome here, that for product configurations, require secondary meaning. Thank you.
William H. Rehnquist: Thank you, Mr. Coston. The case is submitted.