27 Nov Are you trade-dressed for success? Protect your website's “look and feel”
As online commerce increases, businesses are spending more time and money to enhance their websites. Businesses want sites that are not only easy to use, but also easy to recognize as that particular company’s site. But can a company protect its investment in a successful and distinctive website by preventing a competitor from launching a website with a nearly identical visual appearance and user experience?
Until recently, the answer generally has been “no.” However, a recent district court decision, BlueNile, Inc. v. Ice.com, Inc., 478 F. Supp. 2d 1240 (W.D. Wash. 2007) suggests that courts may be receptive to arguments that the “look and feel” of websites can be protected under trade dress law.
Trade-dressed for success
Websites bear an obvious similarity to the screens, or graphical user interfaces (GUIs), viewed by users of software programs. Copyright protection for GUIs, however, is limited and probably covers only certain specific elements of a GUI. Copyright protection for the look and feel of a website likely is no more expansive. Indeed, courts have upheld the United States Copyright Office’s denial of registrations for the overall format of a website. Instead, the Copyright Office will issue registrations only for original authorship appearing in a Website, such as writings or photographs.
Websites also share some similarities with magazine covers and book jackets, both of which can be protected by the trade dress branch of trademark law. Trade dress is the total image and overall appearance of an item, and courts broadly define it to include features such as size, shape, color, color combinations, and graphics. Just as a traditional trademark uses a word to identify the source of a product, trade dress uses a visual impression to create that source association.
To be protectable, trade dress must be:
1. Non-functional, meaning that the feature is not essential for the item to perform its intended function or for competitors to be able to compete.
2. Distinctive, either because it is inherently so or has acquired secondary meaning.
3. Unlikely to be confused by ordinary buyers with the competitor’s trade dress.
Trade dress law is long established, but website owners and their counsel are just beginning to explore how trade dress law’s focus on protecting consumers from confusion can be applied to websites.
Implications of BlueNile vs. Ice.com
Earlier this year, an Internet diamond retailer, who owns and operates the website bluenile.com, filed suit in federal court against a competitor, who owned and operated ice.com, claiming trade dress infringement for allegedly mimicking the look and feel of BlueNile’s website. BlueNile also alleged copyright infringement for specific elements of bluenile.com and other state law claims. Ice moved to dismiss the trade dress claim on the grounds that it overlapped with BlueNile’s copyright claim and thus was preempted by the Copyright Act of 1976.
The district court, however, refused to dismiss the trade dress claim. Describing BlueNile’s contention that the look and feel of its Website should be protected trade dress as a “novel legal theory” supported only by two unreported district court cases involving pro se defendants, the court held that it was too early in the case to determine whether BlueNile’s copyright claim afforded it an adequate remedy. The parties subsequently stipulated to dismissal of the case.
While this decision is not a green light to file suit whenever a competitor introduces a copycat feature to its website, it does indicate that courts may look favorably on an infringement claim for the look and feel of a website where requirements of non-functionality, distinctiveness, and confusion clearly have been met. Meeting those requirements may be difficult. For example, distinctiveness may be hard to establish for relatively unpopular or unoriginal websites. Nonetheless, each case will turn on its particular facts, and Website owners should consult with counsel in deciding whether to seek trade dress protection for the look and feel of their sites.
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