I’m happy to present another article from Joseph C. Gioconda, a fellow Fashion Lawyer. His bio appears at the end of the article.

“Ten years ago, at the dawn of the millennium, fashionistas would have looked to couture designers and the runways of New York, Paris and Milan to anticipate how fashion trends would unfold during subsequent decades.  Very few would have believed that the fashion world would be profoundly affected by a controversial line of affordable children’s clothing sold at Wal-Mart.

However, a little-known legal decision from a decade ago about one of Wal-Mart’s lines of children’s clothing is profoundly affecting fashion today, and its impact will likely continue to be felt for the decade to come.In the mid-1990’s, Samara Brothers had designed and manufactured a popular high-end children’s product line of Spring/Summer one-piece seersucker outfits decorated with appliqués of hearts, flowers, fruits, and the like.  In response to this intense popularity, Wal-Mart contracted with one of its suppliers to manufacture a similar line of children’s outfits for sale in the 1996 Spring/Summer season.  Wal-Mart sent its supplier numerous photographs of a number of garments from Samara’s line, which its supplier duly copied, with only minor modifications.  In 1996, Wal-Mart briskly sold the alleged “knockoffs,” generating more than $1.15 million in gross profits.  Samara filed a lawsuit in federal court for, among other things, infringement of its unregistered product configuration (“trade dress”) under Section 43(a) of the federal Lanham Act, arguing that its children’s clothing was inherently distinctive and protectable against Wal-Mart’s actions.

At the end of a prolonged battle, the U.S. Supreme Court sided with Wal-Mart, and definitively ruled in March 2000 that in an action for infringement of unregistered trade dress, a fashion product’s design cannot be “inherently distinctive.”  Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 (2000).  The Supreme Court held that a product’s design is distinctive, and therefore protectable under law, only upon the designer’s proof of “secondary meaning”; that is, once enough consumers have come to identify the design as emanating from a single source.  Designers typically prove secondary meaning by presenting evidence in the form of testimony, consumer surveys, and documentation of factual circumstances such as the length of time the design has been used exclusively by the manufacturer, the type and length of advertising, expenditures, the number of sales and popularity among customers.   For better or worse, the Samara ruling forced designers and their copiers to compete in the marketplace.

For the past decade, the Samara decision has increasingly affected the fashion world.  Designers have struggled to use scarce advertising and marketing dollars to promote their newest designs, only to witness these exact same designs knocked off by robust and powerful competitors weeks—even days—later.  Twitter, Web 2.0 and pervasive social networking sites provide venues where designers can instantaneously promote their products, but also put their brands at grave risk.  Congress has heard both sides of an intense debate over a proposed new law which would try to address this conundrum by granting fashion designs expansive copyright protection for several years, but has yet to decide on the proposed law.

The coming years will undoubtedly present us with exciting and novel fashion designs and legal challenges.  But the wise fashion lawyer knows that the age-old challenge to balance fashion innovation and copying has yet to be fully overcome, and that legal issues can affect couture and culture on a profound and unseen level, sometimes far more powerfully than the fashion designs that are actually seen on the runways.”

Joseph C. Gioconda is an attorney, counselor at law and founder of the Gioconda Law Group PLLC, an elite law firm in New York City providing brand protection litigation, investigations and strategy to clients in dynamic industries such as fashion, apparel and luxury goods.   www.GiocondaLaw.com