No.

_________
================================================================

In The
Supreme Court of the United States
------------------------------------------------------------------

BRUCE MUNRO and BRUCE MUNRO STUDIO,

Petitioners,
v.

LUCY ACTIVEWEAR, INC., LUCY APPAREL, LLC,

VF OUTDOOR, INC., and VF CORPORATION,

Respondents.

------------------------------------------------------------------

On Petition For Writ Of Certiorari

To The United States Court Of Appeals
For The Eighth Circuit

------------------------------------------------------------------

PETITION FOR A WRIT OF CERTIORARI

------------------------------------------------------------------

CARL F. SCHWENKER
LAW OFFICES OF
CARL F. SCHWENKER
The Parsons House
3807 Duval, Ste. E
Austin, TX 78751
Main – (512) 480-8427
Fax – (512) 857-1294
cfslaw@swbell.net
Counsel for Petitioners

================================================================
COCKLE LEGAL BRIEFS (800) 225-6964
WWW.COCKLELEGALBRIEFS.COM
 i

QUESTION PRESENTED

Does copyright preclude Lanham Act product de-

sign trade dress claims for physical products, and if so,
under what circumstance(s)?
 ii

PARTIES TO THE PROCEEDINGS BELOW

Petitioners, the Plaintiff-Appellants below, are Bruce

Munro and Bruce Munro Ltd. d/b/a Bruce Munro Stu-
dio (together, “Munro”). Pet. App. 1a, 15a, 55a.
Respondents, the Defendant-Appellees below, are
Lucy Activewear, Inc., Lucy Apparel, LLC, VF Outdoor,
Inc., and VF Corporation (together, “Lucy”). Pet. App.
1a-2a, 15a-16a, 56a, 70a.

RULE 29.6 STATEMENT

Bruce Munro Ltd. d/b/a Bruce Munro Studio has
no parent corporation, and no publicly held company
owns 10% or more of its stock.
 iii

TABLE OF CONTENTS
Page
Question Presented ................................................ i
Parties to the Proceedings Below ........................... ii
Rule 29.6 Statement ............................................... ii
Table of Contents .................................................... iii
Table of Authorities ................................................ v
Opinions Below ....................................................... 1
Jurisdiction ............................................................. 1
Statutory Provisions Involved................................ 1
Statement of the Case ............................................ 1
A. Statutory Framework .................................. 5
i. The Lanham Act .................................... 5
ii. The Copyright Act ................................. 9
Reasons For Granting the Petition ........................ 11
I. The establishment of boundaries between the
Lanham and Copyright Acts is a critical fed-
eral law issue best decided in this Court .... 11
II. The Court’s previous trade dress guidance
is in conflict .................................................. 12
III. The Copyright Act’s anti-preemption clause
prohibits Dastar’s preclusion of Munro’s
trade dress claims and creep into tradi-
tional Lanham Act areas ............................. 13
 iv

TABLE OF CONTENTS – Continued

Page
IV. The Eighth Circuit’s expansion of Dastar to
physically manifested trade dress imper-
missibly folds trade dress law into copy-
right .............................................................. 15
V. Federal courts disagree on Dastar’s reach
and the boundary lines between copyright
and the Lanham Act .................................... 16
VI. The Eighth Circuit erred ............................. 18
Conclusion ............................................................... 20

APPENDICES
Appendix A: Opinion of the United States
Court of Appeals for the Eighth Circuit,
Munro v. Lucy Activewear, Inc., No. 16-4483
(8th Cir. Aug. 9, 2018) .............................................1a
Appendix B: Memorandum Opinion and Order
Granting Motion to Dismiss by the United
States District Court for the District of Min-
nesota, Munro v. Lucy Activewear, Inc., No. 16-
cv-79 (D. Minn. Sept. 29, 2016) .............................15a
Appendix C: Statutory Provisions Involved ..........46a
Appendix D: Munro [Proposed] Amended Com-
plaint [ECF No. 51.1], Munro v. Lucy Active-
wear, Inc., No. 16-cv-79 (D. Minn. Mar. 10,
2016) ......................................................................55a
 v

TABLE OF AUTHORITIES
Page
CASES
Ashley Furniture Indus. v. Sangiacomo N.A., 187
F.3d 363 (4th Cir. 1999) ...........................................16
Bhd. of R.R. Trainmen v. Chicago River & Ind.
R. R. Co., 353 U.S. 30 (1957) ...................................14
Blue Nile, Inc. v. Ice.Com, Inc., 478 F.Supp.2d
1240 (W.D. Wash. 2007) ...........................................17
Branch v. Smith, 538 U.S. 254 (2003) ........................14
Cornelia I. Crowell GST Tr. v. Possis Med., Inc.,
519 F.3d 778 (8th Cir. 2008) ......................................3
Connecticut Nat. Bank v. Germain, 503 U.S. 249
(1992) .......................................................................13
Creative Co-op, Inc. v. The Elizabeth Lucas Co.,
No. 11-116-S-REB, 2012 WL 761736 (D. Idaho
Mar. 7, 2012) ............................................................17
Dastar Corp. v. Twentieth Century Fox Film
Corp., 539 U.S. 23 (2003) ................................. passim
Gurglepot, Inc. v. New Shreve, Crump & Low
LLC, 153 F.Supp.3d 441 (D. Mass. 2015) ...............16
In re Owens-Corning Fiberglass Corp., 774 F.2d
1116 (Fed. Cir. 1985) .................................................8
Laura Laaman & Associates, LLC v. Davis, No
3:16-cv-0595(MPS) (D. Conn. Nov. 17, 2017) ..........17
Mercado Latino, Inc. v. Indio Prods., No. 13-
57009, 649 Fed. App’x 633 (9th Cir. May 13,
2016) ........................................................................17
Morton v. Mancari, 417 U.S. 535 (1974) .....................14
 vi

TABLE OF AUTHORITIES – Continued

Page
Munro v. Lucy Activewear, Inc., No. 16-cv-79,
2016 WL 5660422 (D. Minn. Sept. 29, 2016) ............1
Nat’l Ass’n of Home Builders v. Defenders of
Wildlife, 551 U.S. 644 (2007) ...................................14
Oldcastle Precast, Inc. v. Granite Precasting &
Concrete, Inc., No. C10-322 MJP, 2010 WL
2217910 (W.D. Wash. June 1, 2010) ........................17
Park ‘N Fly, Inc. v. Dollar Park and Fly, Inc., 469
U.S. 189 (1985) ..........................................................6
Qualitex v. Jacobson Products Co., 514 U.S. 159
(1995) .........................................................................9
Through the Door, Inc. v. J.C. Penny Co., No. 06-
C-540-S, 2007 WL 2265781 (W.D. Wis. Mar. 28,
2008) ........................................................................16
TrafFix Devices, Inc. v. Marketing Displays, Inc.,
532 U.S. 23 (2001) ........................................... 6, 7, 12
Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763
(1992) ..................................................................... 7, 8
Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529
U.S. 205 (2000) .......................................... 7, 8, 16, 19

STATUTES
15 U.S.C. § 1116 ............................................................6
15 U.S.C. § 1117 ........................................................ 1, 6
15 U.S.C. § 1118 ............................................................6
15 U.S.C. § 1125 ........................................................ 2, 5
 vii

TABLE OF AUTHORITIES – Continued

Page
15 U.S.C. § 1125(a) .............................................. passim
15 U.S.C. § 1125(c) .............................................. passim
15 U.S.C. § 1127 ............................................................6
17 U.S.C. § 102 ..............................................................9
17 U.S.C. § 106 ..............................................................9
17 U.S.C. § 301(a) ..........................................................9
17 U.S.C. § 301(b) ..........................................................9
17 U.S.C. § 301(d) .............................................. 9, 12, 14
28 U.S.C. § 1254(1) ........................................................1

OTHER AUTHORITIES
Fed. R. Civ. P. 12(b)(6) ...................................................3
Pub. L. 94-553, 90 Stat. 2541 (1976) ............................9
Trademark Act of 1946, Ch. 540, §§ 1-50, 60
Stat. 427 (1946) .........................................................5
Trademark Law Revision Act of 1988, Pub. L.
100-667, sec. 132, § 43(a), 102 Stat. 3935
(1988) .........................................................................5
Federal Trademark Dilution Act of 1995, Pub. L.
104-98, § 3(a), 109 Stat. 985 (1996) ..........................6
Trademark Amendments Act of 1999, Pub. L.
106-43, §§ 3(a)(2), 5, 113 Stat. 219 (1999) ................6
Trademark Dilution Revision Act of 2006, Pub.
L. 109-312, § 2, 120 Stat. 1730 (2006) ......................6
 viii

TABLE OF AUTHORITIES – Continued

Page
H.R. Rep. No. 1478, 94th Cong., 2d Sess., 55
(1976) .........................................................................9
S.Rep. No. 1333, 79th Cong., 2d Sess., 5 (1946) ...........6
Joseph P. Bauer, Addressing the Incoherency of
the Preemption Provision of the Copyright Act
of 1976, 10 VAND. J. ENT. & TECH. L. 1 (2007-
2008) ........................................................................10
Leaffer, Marshall, A Twenty-Year Retrospective
on United States Trademark Law in Ten Cases,
23 FORDHAM INTELL. PROP. MEDIA & ENT. L.J.
655 (2013) ................................................................10
United States Patent & Trademark Office,
TRADEMARK MANUAL OF EXAMINING PROCE-
DURE, § 1202.02 (Oct. 2018) .......................................9
 1

OPINIONS BELOW
The opinion of the court of appeals, Pet. App. 1a-
14a, is not reported but is available at http://media.
ca8.uscourts.gov/opndir/18/08/164483P.pdf. The mem-
orandum opinion and order of the district court, Pet.
App. 15a-45a, is reported at 2016 WL 5660422 and
2016 U.S. Dist. LEXIS 135692.
------------------------------------------------------------------

JURISDICTION
The court of appeals entered judgment on August
9, 2018. This Court has jurisdiction under 28 U.S.C.
§ 1254(1).
------------------------------------------------------------------

STATUTORY PROVISIONS INVOLVED

Relevant provisions of Sections 35, 43(a), and 43(c)
of the Lanham Act, 15 U.S.C. § 1117, 1125(a), and
1125(c), and Section 301 of the Copyright Act, 17 U.S.C.
§ 301, are reproduced in the Appendix. Pet. App. 46a-
54a.
------------------------------------------------------------------

STATEMENT OF THE CASE

Munro produces and is the source of a famous
iterative series of distinctive large-scale light-based
installations known as Field of Light® and Forest of
Light™. Pet. App. 2a, 12a-14a, 16a-17a, 57a-59a, 60a-
70a. To widespread commercial and critical acclaim,
 2

for over a decade Munro has produced and exhibited

iterative versions of these installations at Munro exhi-
bitions and prime venues around the world, including
in the United States. Pet. App. 16a-17a, 60a, 64a-70a.
In connection with these installations, Munro
claims trademark protection in the Field of Light® and
Forest of Light™ terms, Pet. App. 2a-4a, 12a-14a, 17a,
24a, 57a-58a, and trade dress protection as to certain
consistent product design features uniformly displayed
across the various iterative versions of the installa-
tions:
(1) an outdoor exhibit; (2) of large scale; (3) a
light-based design; (4) thousands of short,
end-lighted stems or “stalks”; (5) in an array;
(6) arranged upon a predominantly green
space; (7) positioned off-kilter or splayed from
the perpendicular; and (8) topped with varia-
bly lit bulbs.
Pet. App. 17a, 25a, 60a-63a, 67a-68a. Due to Munro’s
efforts and as a result of widespread promotion, ac-
claim, and exposure, the product design trade dress
has acquired distinctiveness through secondary mean-
ing and is famous within the meaning of § 43 of the
Lanham Act, 15 U.S.C. § 1125. Pet. App. 60a-70a.
Lucy approached Munro in October 2012 to pro-
duce such an installation for a marketing campaign for
Lucy’s retail apparel business, but agreement was not
reached on the project. Pet. App. 2a, 15a-18a, 71a-73a.
Undeterred, Lucy produced and installed along Boston’s
Charles River Esplanade a strikingly and confusingly
 3

similar installation, making it the focus of a national

branding, advertising, and social media campaign. Pet.
App. 3a, 17a-19a, 42a, 73a-80a. Transposing the words
of Munro’s Forest of Light™ mark, Lucy adopted and
used the term “Light Forest” to promote their installa-
tion—which also contained all above-identified elements
of Munro’s trade dress. Pet. App. 12a, 18a, 74a-76a.
In August 2015, Munro sued Lucy for, inter alia,
intentional infringement and dilution of Munro’s un-
registered product design trade dress and false desig-
nation of origin in violation of § 43 of the Lanham Act,
15 U.S.C. § 1125(a) and (c). Pet. App. 2a-3a, 15a- 19a,
21a, 24a-25a, 57a, 80a-84a, 89a-90a, 92a. Following re-
moval and transfer to the district court below, Lucy
moved to dismiss the action, and Munro moved to
amend. Pet. App. 3a, 20a-21a.
On the motion to amend, the district court and the
Eighth Circuit rejected Munro’s trade dress claims as
“futile,”1 and dismissed them under Rule 12(b)(6), cit-
ing Dastar Corp. v. Twentieth Century Fox Film Corp.,
539 U.S. 23, 29 (2003). Pet. App. 4a-7a, 11a, 26a-
31a, 44a-45a. The Eighth Circuit held, however, that
Munro’s identical allegations stated plausible Lan-
ham Act trademark claims, as the marks served as

1
Munro appealed to the Eighth Circuit the denial of the mo-
tion to amend. Pet. App. 2a, 4a-5a. “[W]hen the court denies leave
[to amend under Rule 15] on the basis of futility, it means [it] has
reached the legal conclusion that the amended complaint could
not withstand a motion to dismiss under Rule 12(b)(6) of the Fed-
eral Rules of Civil Procedure.” Cornelia I. Crowell GST Tr. v. Possis
Med., Inc., 519 F.3d 778, 782 (8th Cir. 2008).
 4

source identifiers. Pet. App. 12a-14a (“the names ‘Field

of Light’ and ‘Forest of Light’ are serving a source-
identifying function for the installations, distinguish-
ing them as unique products made by Munro and his
studio”).
In ruling Munro’s trade dress claims futile, the
Eighth Circuit did not identify any trade dress claim
element (i.e., acquired distinctiveness/secondary mean-
ing, non-functionality, likelihood of confusion, or (for di-
lution) famousness) absent from Munro’s amended
complaint,2 but held instead that:
Copyright law, not trademark law, protects
Munro’s creative works. . . . Munro’s installa-
tion is not a “mark” that the Lanham Act was
attempting to protect. Rather, the installation
is the product itself. Because the light in-
stallation is a product, not a mark, and
because copyright, not trademark, pro-
tects artistic and creative ideas and con-
cepts, see Dastar, 539 U.S., at 37, Munro’s
claim does not properly fall under the
Lanham Act. . . . Thus we find the district
court properly dismissed his motion to amend
his trade dress claim as futile.
Pet. App. 7a (emphasis added). The opinion confined its
analysis to Munro’s § 43(a) trade dress infringement
and false designation claims, but nonetheless dis-
missed all trade dress claims en masse—including

2
See infra at p. 8 (identifying trade dress claim elements);
compare Pet. App. 2a, 5a-6a, 12a-13a, 16a-19a, 24a, 57a, 59a-70a,
74a, 78a-84a, 89a-90a.
 5

dilution—as futile, even though it never separately ad-

dressed Munro’s distinct trade dress dilution claim
made under § 43(c) of the Lanham Act, 15 U.S.C.
§ 1125(c). Pet. App. 2a-7a, 14a.
On this reasoning, the Eighth Circuit reversed the
dismissal and denial of leave to amend as to the trade-
mark claims, but affirmed the denial of leave to amend
and dismissal with prejudice as to the trade dress
claims. Pet. App. 1a, 14a.
This petition challenges the rulings on the trade
dress claims. Absent relief from this Court, Munro is
now effectively barred from seeking relief allowed un-
der the Lanham Act to protect the installations’ fa-
mous product design trade dress against infringement
and dilution by Lucy (or others).

A. Statutory Framework
The Lanham and Copyright Acts and related prec-
edent inform this petition and bear on the issues at
hand.

i. The Lanham Act

First passed in 1946, the Lanham Act (including
§ 1125) was overhauled in 1988.3 Amendments in 1995,
1999, and 2006 first codified claims for dilution, trade
dress infringement, and dilution of unregistered trade
3
Trademark Act of 1946, Ch. 540, § 1-50, 60 Stat. 427 (1946);
Trademark Law Revision Act of 1988, Pub. L. 100-667, sec. 132,
§ 43(a), 102 Stat. 3935, 3946 (1988).
 6

dress.4 “[P]rotection for trade dress exists to promote

competition.” TrafFix Devices, Inc. v. Marketing Dis-
plays, Inc., 532 U.S. 23, 28 (2001).
To combat deceptive and misleading use of marks
and other unfair forms of competition,5 the Lanham
Act provides a civil action and remedies for infringe-
ment, dilution, and false designation of origin of source-
identifying marks and trade dress, whether registered
or unregistered. 15 U.S.C. § 1116-1118, 1125(a), (c);

4
Federal Trademark Dilution Act of 1995, Pub. L. 104-98,
§  3(a), 109 Stat. 985 (1996); Trademark Amendments Act of 1999,
Pub. L. 106-43, § 3(a)(2), 5, 113 Stat. 219, 220 (1999) (inserting
§ 43(a)(3)); Trademark Dilution Revision Act of 2006, Pub. L. 109-
312, § 2, 120 Stat. 1730-32 (2006).
5
Congress makes clear that:
The intent of [the Lanham Act] is to regulate commerce
within the control of Congress by making actionable
the deceptive and misleading use of marks in such com-
merce; . . . to protect persons engaged in such commerce
against unfair competition; to prevent fraud and decep-
tion in such commerce by the use of reproductions, cop-
ies, counterfeits, or colorable imitations of registered
marks; and to provide rights and remedies stipulated
by treaties and conventions respecting trademarks,
trade names, and unfair competition entered into be-
tween the United States and foreign nations.
15 U.S.C. § 1127; see Park ‘N Fly, Inc. v. Dollar Park and Fly, Inc.,
469 U.S. 189, 193 (1985) (“Because trademarks desirably promote
competition and the maintenance of product quality, Congress de-
termined that ‘a sound public policy requires that trademarks
should receive nationally the greatest protection that can be
given them.’ ”) (quoting S.Rep. No. 1333, 79th Cong., 2d Sess., 5
(1946)) (emphasis added).
 7

Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763

(1992). Section 43(c) prohibits dilution while § 43(a),
gives a producer a cause of action for the use
by any person of “any word, term, name, sym-
bol, or device, or any combination thereof . . .
which . . . is likely to cause confusion . . . as to
the origin, sponsorship, or approval of his or
her goods.”
Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S.
205, 209 (2000) (quoting 15 U.S.C. § 1125(a)); 15 U.S.C.
§ 1125(c).6
A product’s trade dress is “essentially [its] total
image and overall appearance,” Two Pesos, 505 U.S. at
764 n.1, and “constitutes a ‘symbol’ or ‘device’ for pur-
poses of the relevant [Lanham Act] sections.” Wal-Mart,
529 U.S. at 209. “It is well established that trade dress
can be protected under federal law,” TrafFix Devices,
532 U.S. at 28, including both product designs and
product packaging if “distinctive” and nonfunctional:
The design or packaging of a product may ac-
quire a distinctiveness which serves to iden-
tify the product with its manufacturer or source;
and a design or package which acquires
this secondary meaning, assuming other
requisites are met, is a trade dress which
may not be used in a manner likely to cause
confusion as to the origin, sponsorship, or ap-
proval of the goods.

6
Sections 1125(a) and (c) are appended at Pet. App. 47a-52a.
 8

Id. (emphasis added); see Wal-Mart, 529 U.S. at 215-16

(product design having “secondary meaning” eligible
for Lanham Act trade dress protection); Two Pesos, 505
U.S. at 769 (“eligibility for protection under § 43(a) de-
pends on nonfunctionality”). Proof of trade dress in-
fringement requires: (1) a primarily non-functional
trade dress; (2) a likelihood of confusion created by the
alleged infringement; and, (3) trade dress that is dis-
tinctive either (a) inherently, or (b) through acquired
secondary meaning. See Two Pesos, 505 U.S. at 769-70;
Wal-Mart, 529 U.S. at 215-16 (requiring secondary
meaning for claims based on product design).
Source identifiers eligible for Lanham Act trade-
mark and trade dress protection range from words and
symbols to color, packaging, designs/configurations,
sounds, and even restaurant layout/décor. Two Pesos,
505 U.S. 763 (affirming infringement of trade dress
restaurant décor and noting gamut of eligible source
identifiers); In re Owens-Corning Fiberglass Corp., 774
F.2d 1116 (Fed. Cir. 1985) (color pink functioned and
was registrable as a trademark for Owens-Corning’s fi-
berglass insulation product).7 Nowhere does the Lan-
ham Act exclude from protection source-identifying
product designs that may be copyrightable; instead,
“almost anything at all that is capable of car-
rying meaning” may be used as a “symbol” or

7
“Registration has been granted, for example, for containers,
product configurations, and packaging, even if subject to design
patent protection; for tabs having a particular location on a gar-
ment; slogans; sounds; ornamental labels; and goods which take
the form of the mark itself.” Id. (citations omitted).
 9

“device” and constitute trade dress that iden-

tifies the source or origin of a product.
United States Patent & Trademark Office (“USPTO”),
TRADEMARK MANUAL OF EXAMINING PROCEDURE,
§ 1202.02 (Oct. 2018) (quoting Qualitex v. Jacobson
Products Co., 514 U.S. 159, 162 (1995)).8

ii. The Copyright Act

The Copyright Act of 1976 protects certain exclu-
sive rights vested in the owner of a work of authorship
(e.g., reproduction). 17 U.S.C. § 102, 106.
The Act broadly preempts state law. 17 U.S.C.
§ 301(a)-(b).9 But Congress expressly prohibited any
preemption, preclusion, or limitation of any federal
law, stating, “Nothing in this title annuls or limits any
rights or remedies under any other Federal statute.”
17 U.S.C. § 301(d).10
“[T]he U.S. Supreme Court has never decided a
case under § 301” and the “hundreds of federal and
state decisions interpreting [§ 301] . . . can charitably
8
The USPTO applies this broad criteria when considering
trade dress for registration.
9
Congress noted, however, that “[s]ection 301 is not intended
to preempt common law protection in cases involving activities
such as false labeling, fraudulent representation, and passing off
even where the subject matter involved comes within the scope of
the copyright statute.” H.R. Rep. No. 1478, 94th Cong., 2d Sess.,
55 (1976).
10
The bulk of the Copyright Act, including the above-cited
provisions, became law in 1976. See Pub. L. 94-553, 90 Stat. 2541-
46, 2572 (1976).
 10

be described as inconsistent and even incoherent.”

Joseph P. Bauer, Addressing the Incoherency of the
Preemption Provision of the Copyright Act of 1976, 10
VAND. J. ENT. & TECH. L. 1, 2 (2007-2008).
Encroaching on that void—and exacerbating con-
fusion in the courts—is this Court’s Dastar decision
and its peculiar underlying facts. 539 U.S. 23 (2003).
There, by editing and repackaging a Fox video series
on which the copyright had already expired, Dastar
made and sold a set of video cassettes in which it cred-
ited itself as the producer but did not credit Fox or
Fox’s video series. Id., at 26-27. Fox sued Dastar for,
inter alia, reverse passing off 11 in violation of Lanham
Act § 43(a) for its unaccredited copying. Id., at 27-28.
The Dastar court concluded, however, that because
“Dastar was the ‘origin’ of the products that it sold as
its own, respondents [could] not prevail on their [re-
verse passing off § 43(a)(1)(A)] Lanham Act claims” for
false designation of origin, as the term “origin” under
the Lanham Act referred to the manufacturer or pro-
ducer of the goods, not to the underlying author or cre-
ator of (in that case) the video series’ content. Id., at

11
“Passing off ” under § 43(a) “occurs when a producer mis-
represents his own goods or services as someone else’s”; reverse
passing off occurs where “the producer misrepresents someone
else’s goods or services as his own.” Dastar, 539 U.S. at 27, n.1; see
also Leaffer, Marshall, A Twenty-Year Retrospective on United
States Trademark Law in Ten Cases, 23 FORDHAM INTELL. PROP.
MEDIA & ENT. L.J. 655, 666 n.54 (2013) (“Passing off would occur
when X places the Coke label on its non-Coke beverage. Reverse
passing off occurs when X takes off the Coke label and replaces it
with its own mark.”).
 11

37-38 (“[R]eading the phrase ‘origin of goods’ in the

Lanham Act . . . , we conclude that the phrase refers to
the producer of the tangible goods that are offered for
sale, and not to the author of any idea, concept or com-
munication embodied in those goods.”).
Dastar’s unique circumstances justify, at most, a
narrow reading of the case, and of Justice Scalia’s ref-
erences therein to concepts of copyright and patent law
to interpret the meaning of terms in the Lanham Act.
Nevertheless, certain courts have sought to extend
Dastar (and Scalia’s dicta, id., at 31-35) to preclude
claims in addition to those for reverse passing off of in-
tangible goods, with the Eighth Circuit’s opinion below
being one of the most wide-sweeping attempts to brush
away a variety of Lanham Act claims related to physi-
cal manifestations of trade dress.
------------------------------------------------------------------

REASONS FOR GRANTING THE PETITION

Compelling reasons warrant a grant of this peti-
tion, and reversal of the opinion below.

I. The establishment of boundaries between

the Lanham and Copyright Acts is a critical
federal law issue best decided in this Court
This case presents an important question of fed-
eral law: where do the boundaries lie between the Lan-
ham Act and copyright, particularly as to physical
manifestations of product design trade dress?
 12

The issue has not been settled by this Court, but

should be, as it implicates core provisions of two foun-
dational federal intellectual property statutes (the
Lanham and Copyright Acts), each Act’s reach and lim-
itations, and the tension between this Court’s Dastar
opinion (as now extended by the Eighth Circuit to bar
most types of Lanham Act trade dress claims via copy-
right) and Congress’ contrary statutory directive that
“[n]othing in this title [the Copyright Act] annuls or
limits any rights or remedies under any other Federal
statute.” 17 U.S.C. § 301(d).
Fundamental intellectual property rights hang in
the balance as a result of the collision of these statu-
tory provisions and policies. Resolution of these mat-
ters stands to be outcome-determinative with respect
to issues of ownership, enforcement in court, and reg-
istration with the United States Patent & Trademark
Office of valuable trade dress rights, and the protection
and enforcement of principles of fair competition man-
dated by the Lanham Act.

II. The Court’s previous trade dress guidance

is in conflict
This case also presents an opportunity for the
Court to clarify previous guidance relating to the
boundary lines between types of intellectual property,
and to harmonize previously conflicting guidance re-
lating to product design trade dress.
As an example, TrafFix Devices permits trade
dress to subsist in virtually any nonfunctional product
 13

design if it has obtained secondary meaning. 532 U.S.

at 28.
Under Dastar, particularly as extended by the
Eighth Circuit in this action, the identical product de-
sign would arguably be foreclosed from such protection
if the design is plausibly subject to copyright—and in
a defendant’s eyes, what nonfunctional design would
not be? 539 U.S. 23; Pet. App. 5a-7a.
This Court is best suited to address, clarify, or har-
monize any inconsistencies in its prior opinions.

III. The Copyright Act’s anti-preemption clause

prohibits Dastar’s preclusion of Munro’s trade
dress claims and creep into traditional Lan-
ham Act areas
The Eighth Circuit’s expansion of Dastar to bar
Munro’s Lanham Act trade dress claims conflicts with
governing law. Reversal is warranted to revive Munro’s
trade dress protections and enforce clear policies en-
acted by Congress.
When considering a law, “courts must presume
that a legislature says in a statute what it means and
means in a statute what it says there. When the words
of a statute are unambiguous, . . . [the] judicial inquiry
is complete.” Connecticut Nat. Bank v. Germain, 503
U.S. 249, 253-54 (1992) (quotations omitted).
Here, Congress decreed in the Copyright Act’s
anti-preemption clause that: “Nothing in [the Copy-
right Act] annuls or limits any rights or remedies
 14

under any other Federal statute.” 17 U.S.C. § 301(d).

No ambiguity exists. Nor does the Copyright Act or the
Lanham Act exempt the protections afforded to trade
dress under § 43(a) and (c) of the Lanham Act, 15 U.S.C.
§ 1125(a) and (c), from § 301(d)’s anti-preemption
clause.
Thus, the Eighth Circuit’s decision to preclude
Munro’s Lanham Act trade dress claims on the basis of
copyright was in error, and must be reversed, as the
Copyright Act should have instead given way to the
Lanham Act and Munro’s trade dress claims in this in-
stance.
Common tenets of statutory construction12 yield the
identical result, as the statutes authorizing Munro’s
claims for infringement and dilution of trade dress,
15 U.S.C. § 1125(a)(3), (c)(3)(1), and (4), are more nar-
rowly-tailored than, and were first codified in the

12
See, e.g., Branch v. Smith, 538 U.S. 254, 273-75 (2003) (not-
ing when one statute speaks clearly to the issue at hand—as the
trade dress dilution and infringement statutes and copyright’s
anti-preemption clause do—another statute must yield where
that statute is ambiguous); Nat’l Ass’n of Home Builders v. De-
fenders of Wildlife, 551 U.S. 644, 662-63 (2007) (where statutes
cannot be harmonized, the later statute may override and repeal
by implication the earlier statute); Bhd. of R.R. Trainmen v. Chi-
cago River & Ind. R. R. Co., 353 U.S. 30, 42 (1957) (“the specific
provisions of [a statute] take precedence over the more general
provisions of [another statute]”); Morton v. Mancari, 417 U.S. 535,
551 (1974) (noting that when two federal statutes allegedly con-
flict, “it is the duty of the courts, absent a clearly expressed con-
gressional intention to the contrary,” to harmonize the statutes if
they are “capable of co-existence”).
 15

Lanham Act well after the passage of, the Copyright

Act of 1976. See supra, nn. 3, 4, 10.
Accordingly, the Eighth Circuit erred by rejecting
Munro’s Lanham Act trade dress claims under copy-
right via an expansive reading of Dastar.

IV. The Eighth Circuit’s expansion of Dastar to

physically manifested trade dress impermis-
sibly folds trade dress law into copyright
Importantly, writ should also issue so this Court
may avert trade dress collapsing into copyright—a re-
alistic probability if the Eighth Circuit’s trade dress
ruling is allowed to stand.
Expansion of Dastar beyond reverse passing off
claims and to physical manifestations of trade dress
(i.e., tangible objects), as advocated and advanced by
the Eighth Circuit, Pet. App. 5a-7a, vitiates Lanham
Act trade dress protections and collapses trade dress
law into copyright.
If trade dress is required to be both nonfunctional
and noncopyrightable to obtain Lanham Act protection
(i.e., to not be precluded by copyright under an ex-
panded view of Dastar), few scenarios would allow
trade dress to attach to a product design, since a mod-
icum of creativity goes into virtually all packaging and
product design. For example, Coca-Cola’s iconic and
distinctive bottle design would no longer be eligible for
trade dress protection. An odd Catch-22 would also re-
sult: the risk of trade dress forfeiture would climb both
 16

as the product design became more creative (due to

copyright preclusion), and also as it became less crea-
tive (due to potential genericness).
As a result, the Eighth Circuit’s opinion expanding
Dastar reduces the viability of trade dress (and con-
ceivably trademarks, too), strikes an improper balance,
and actually impedes competition. Consequently, Wal-
Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205
(2000) and its guiding principle of secondary consider-
ation should remain the criteria for physically mani-
fested product design trade dress.

V. Federal courts disagree on Dastar’s reach

and the boundary lines between copyright
and the Lanham Act
Discordant application of this Court’s precedent to
trade dress claims under § 43(a) and (c) of the Lanham
Act, 15 U.S.C. § 1125(a), (c), has also resulted in a fed-
eral court rift over whether and when copyright may
bar Lanham Act trade dress protection, including for
physical manifestations of trade dress.
Certain circuit and lower courts deem the Lanham
and Copyright Acts compatible.13 Others strike a

13
E.g., Ashley Furniture Indus. v. Sangiacomo N.A., 187 F.3d
363, 376-77 (4th Cir. 1999) (“trade dress protection for product
configuration poses no general threat to the copyright regime”);
Gurglepot, Inc. v. New Shreve, Crump & Low LLC, 153 F.Supp.3d
441 (D. Mass. 2015) (trade dress claims on “cod-shaped ceramic
pitcher” not barred by copyright); Through the Door, Inc. v. J.C.
Penny Co., No. 06-C-540-S, 2007 WL 2265781, at *2 (W.D. Wis.
 17

delicate but uncertain balance, citing Dastar, 539 U.S.

23 (2003) to permit trade dress claims other than for
reverse passing off of “communicative products” like
books and videos.14 Still others defer the issue pending
a developed factual record.15
The Eighth Circuit’s decision in this action, Pet.
App. 1a-14a—possibly the most extreme and restric-
tive federal court extension, yet, of Dastar from a Lan-
ham Act product design trade dress perspective—is
also at odds with the Ninth Circuit’s decision in Mer-
cado Latino, Inc. v. Indio Prods, 649 Fed. Appx. 633 (9th
Cir. May 13, 2006), which did not expand Dastar or pre-
clude via copyright claims for infringement, false des-
ignation, or dilution of physically manifested product
design trade dress.

Mar. 28, 2008) (trade dress claims on catalogue’s design upheld

over copyright objections).
14
E.g., Mercado Latino, Inc. v. Indio Prods., No. 13-57009, 649
Fed. App’x 633 (9th Cir. May 13, 2016). “The question of where to
draw the line between protected goods and unprotected ideas,
however, has divided courts in the aftermath of Dastar.” Laura
Laaman & Associates, LLC v. Davis, No 3:16-cv-0595(MPS) (D.
Conn. Nov. 17, 2017) (citing cases with divergent outcomes).
15
E.g., Blue Nile, Inc. v. Ice.Com, Inc., 478 F.Supp.2d 1240,
1244-45 (W.D. Wash. 2007); Creative Co-op, Inc. v. The Elizabeth
Lucas Co., No. 11-116-S-REB, 2012 WL 761736, at *2-3 (D. Idaho
Mar. 7, 2012); and Oldcastle Precast, Inc. v. Granite Precasting &
Concrete, Inc., No. C10-322 MJP, 2010 WL 2217910, at *2 (W.D.
Wash. June 1, 2010) (declining in favor of a developed factual
background motions to dismiss trade dress claims and acknowl-
edging parallel Copyright and Lanham Act claims are not per se
incompatible).
 18

Indeed, lower courts cannot agree if, much less

where, the boundary is to be enforced between the Lan-
ham Act and copyright, and whether one statute or the
other must prevail. Absent resolution of this issue by
this Court, further regionalized decisions will result
not only in a geographic patchwork of inconsistent in-
tellectual property protections, but confusion at the
United States Patent & Trademark Office as to regis-
trability of trade dress on the Principal Register, and
as to the standard to be applied when reviewing appli-
cations.

VI. The Eighth Circuit erred

Finally, the Eighth Circuit opinion also rests on
fundamental errors that constitute a wide departure
from ordinary judicial practice. Accordingly, the peti-
tion should also be granted to rectify plain error in the
Eighth Circuit’s opinion.
First, the court wholly failed to consider Munro’s
§ 43(c) trade dress dilution claim (Pet. App. 83a-84a),
but dismissed it nonetheless. Pet. App. 5a-7a, 14a (only
addressing claims under § 43(a)). At minimum, a re-
mand in part is warranted to permit the court of ap-
peals to properly consider whether Munro’s claim for
trademark dilution should proceed.
Second, Dastar cannot reach Munro’s trade dress
claims because none are for reverse passing off, the
claim at issue in Dastar. Munro instead brought the
aforementioned dilution claim under 43(c), and a tra-
ditional passing off claim under 43(a) for infringement
 19

and false designation. Pet. App. 80a-84a, 89a-90a.

Dastar itself notes that it does not extend to ordinary
passing off claims, Dastar, 539 U.S. 23 (2003), and
there is little reason to think that Dastar’s rationale
would impede a dilution claim, which does not have
likelihood of confusion as a claim element:
Subject to the principles of equity, the owner
of a famous mark that is distinctive, inher-
ently or through acquired distinctiveness,
shall be entitled to an injunction against an-
other person who, at any time after the
owner’s mark has become famous, commences
use of a mark or trade name in commerce that
is likely to cause dilution by blurring or dilu-
tion by tarnishment of the famous mark, re-
gardless of the presence or absence of
actual or likely confusion, of competition,
or of actual economic injury.
15 U.S.C. § 1125(c)(3)(1) (emphasis added).
Moreover, unlike the litigant in Dastar, here
Munro actually is the producer of the goods at issue,
and the “source of origin.” Pet. App. 1a-7a, 12a-15a. So
once again, Dastar’s rationale cannot apply to the
pending action.
Finally, the court’s suggestion that Munro’s prod-
uct design trade dress claims may be rejected because
the “product is the mark,” Pet. App. 5a-7a, is squarely
rejected by Wal-Mart Stores, Inc. v. Samara Bros., Inc.,
529 U.S. 205 (2000), which confirms that for a product
design claim, the product (or particular elements
thereof ) forms the mark.
 20

For these reasons, the petition should be granted

and the opinion below should be reversed as to Munro’s
claims for trade dress infringement, dilution, and false
designation of origin under § 43(a) and (c) of the Lan-
ham Act, 15 U.S.C. § 1125(a) and (c).
------------------------------------------------------------------

CONCLUSION
The petition for a writ of certiorari should be
granted.
Respectfully submitted,
CARL F. SCHWENKER
LAW OFFICES OF
CARL F. SCHWENKER
The Parsons House
3807 Duval, Ste. E
Austin, TX 78751
Main – (512) 480-8427
Fax – (512) 857-1294
cfslaw@swbell.net
Counsel for Petitioners
November 7, 2018