Is a Web Site's Look and Feel Protected?

Protectable trade dress under the Lanham Act can include a wide range of product design and packaging features: the color and shape of pill capsules; the look of a greeting card line; the layout of magazine covers and briefcases; commercial kiosk designs; sales techniques; the distinctive decor of a restaurant; and the colorful, tropical depictions on liquor bottles. Separate from a trademark, trade dress involves the total image of a product and the overall impression created that allows consumers to distinguish among competing producers.

In recent years, a growing debate has emerged over whether the overall look and feel of a Web site can be protected. To be sure, online content, videos, and other media are copyrightable, but the law remains unsettled when it comes to using trademark law to protect a site's distinctive interface and design elements.

This article discusses trade dress generally, the issue of copyright preemption, and recent decisions that have wrestled with the issue of Web site trade dress infringement.

Trade dress encompasses the design and appearance of the product, together with all the elements making up the overall image that serves to identify the product presented to the customer. See, Fun-Damental Too, Ltd. v. Gemmy Indus. Corp., 111 F.3d 993, 999 (2d Cir. 1997).

Trade dress protection for the “total image and overall appearance” of a product, like a trademarked name or logo, is meant to protect consumers from confusion between a product from an expected source and one from another, unexpected source.

'Look and Feel' of a Web Site

A Web site, however, is a multilayered, non-static “product” with both original and functional elements, thereby making a trade dress determination more difficult. The “look and feel” of a site is a concept that can be difficult to define.

In general, the “look” comprises aspects of a site's visual design, such as the colors, layouts, fonts and shapes ' items not so dissimilar from traditional trade dress.

The “feel” describes what lies beneath the “visual design,” that is, the “interface design.” These are the recognizable, familiar elements that help the user navigate the site, such as through the use of tabs, boxes, menus and hyperlinks.

The “look” and the “feel” of a site also include an “overall mood, style and impression.” All of these elements produce an intuitive association with a company's or brand's reputation. In summary, for trade dress infringement, the question is similar to trademark infringement: Does the public associate the look and feel of the plaintiff's site with the plaintiff or its products to the point that the defendant's site causes confusion as to the source of the site?

Section 301(a) of the Copyright Act pre-empts all claims that may arise under state common law or other statutory grounds, and courts have historically limited application of the Lanham Act to avoid encroaching on copyright law. Copyright infringement claims and trade dress claims are mutually exclusive and, if an adequate remedy lies under the Copyright Act, any remedy for trade dress infringement under the Lanham Act is pre-empted. When no copyright protection is available, a Lanham Act claim is not pre-empted.

Generally speaking, copyright law will not protect the overall format and layout of a Web page or site (though site text, software code and certain creative graphic elements may be protectable). See, Darden v. Peters, 488 F.3d 277, 288 (4th Cir. 2007). Yet, distinctive Web site design elements that are not copyrightable subject matter could constitute protectable trade dress.

In recent years, some courts have indicated a willingness to extend trademark law protections to distinctive Web site design and features. One of the leading reported cases that held that a site's look and feel may form the basis for trade dress infringement is Blue Nile, Inc. v. Ice.com, Inc., 478 F.Supp.2d 1240 (W.D. Wash. 2007). (Prior to Blue Nile, other courts also considered aspects of Web site trade dress infringement. See, e.g., Faegre & Benson LLP v. Prudy, 367 F.Supp.2d 1238 (D. Minn. 2004) (“overall dissimilarity” of the defendant's parodic Web page, which contained explicit disclaimers, “creates a low likelihood of confusion” to the plaintiff's law firm Web site and did not constitute trade dress infringement); SG Services, Inc. v. God's Girls, Inc., 2007 WL 2315437 (C.D. Cal. May 9, 2007) (plaintiff claimed that the defendant copied several features of its Web site, including the use of the color pink and several phrases; court found that the plaintiff failed to prove that the look and feel of its site was distinctive and that the defendant's use of similar colors would generate consumer confusion).) In Blue Nile, the court found that the plaintiff, an online retailer, could pursue a trade dress claim based on the defendant's alleged copying of the “overall look and feel” of the plaintiff's commercial Web site.

The court noted that trade dress protection rests in the overall features of a product, including its size, color or color combinations, texture, graphics, packaging or other visual features. In declining to dismiss the plaintiff's trademark claims based upon Copyright Act pre-emption, the court reasoned that greater factual development was needed for the court to address the overlap between the Lanham Act and the Copyright Act; namely, what elements of the plaintiff's site were subject to copyright protection, and what portions were related to the look and feel of the site that could form a trade dress claim.

Moreover, this past spring, two district courts waded into the emerging debate and ruled that a site's look and feel could be protectable trade dress that would not interfere with copyright law interests, albeit with varying results for the plaintiffs.

In Conference Archives, Inc. v. Sound Images, Inc., 2010 WL 1626072 (W.D. Pa. Mar. 31, 2010), the parties' partnership broke down and the defendant copied a portion of the plaintiff's HTML/Javascript code to develop a new online product that would mimic the look and feel of the plaintiff's product. Among other intellectual property-related claims, the plaintiff brought trade dress claims under the Lanham Act.

The court denied the defendant's motion for summary judgment on the plaintiff's Lanham Act claim and found that the plaintiff stated a cognizable trade dress claim.

The district court first analyzed whether the trade dress infringement claim survived copyright pre-emption. While certain elements of a site would clearly fall within the subject matter of copyright, including the text of the page, software code, and certain creative graphical elements, the court found that the look and feel of the plaintiff's site fell outside the subject matter of the Copyright Act and thus escaped pre-emption.

Three-Factor Test

Following the pre-emption analysis, the court then applied the three-factor test for trade dress infringement: 1) the trade dress at issue is inherently distinctive or has acquired secondary meaning; 2) the trade dress is primarily nonfunctional; and 3) the trade dress of competing goods is confusingly similar.

After comparing several elements of the plaintiff's and defendant's sites, including the spacing between table cells, font, background colors and cell height (in pixels), none of which would be protectable under copyright, and then noting the defendant's admittedly willful copying of some elements of plaintiff's site, the court concluded that the plaintiff had adequately pleaded its trade dress claim.

A California district court also recognized the viability of a trade dress claim based upon the copying of a Web site's look and feel.

In Sleep Science Partners v. Lieberman, 2010 WL 1881770 (N.D. Cal. May 10, 2010), the plaintiff alleged that the defendant, its former business associate, started a competing medical enterprise and allegedly mimicked the format, design and feel of the plaintiff's site and related media.

The court found the plaintiff's claims were underdeveloped and vague: “Although it has cataloged several components of its Web site, Plaintiff has not clearly articulated which of them constitute its purported trade dress. ' Without an adequate definition of the elements comprising the Web site's 'look and feel,' [the defendant] is not given adequate notice.”

The court dismissed, among other claims, the plaintiff's trade dress infringement claim, with leave to amend to articulate its alleged trade dress with greater detail. Subsequently, the plaintiff filed an amended complaint.

Practical Concerns

' As the Conference Archives court stated, in order to withstand copyright pre-emption, trade dress elements should be “specifically identified and painstakingly selected.” Such a hurdle was the principal reason that the plaintiff's claim in Sleep Science Partners did not survive the defendant's dismissal motion. Thus, copyrightable elements such as text and creative graphic designs that have been copied should be pleaded in a copyright infringement claim, while a site trade dress claim should delineate the specific elements that compromise a distinct look and feel.

' A plaintiff should offer a comprehensive comparison of the sites in question and explain what trade dress elements have been copied, going beyond a mere conclusory statement that the defendant's site is “visually similar.” For example, in SG Services, Inc. v. God's Girls, Inc., 2007 WL 2315437 (C.D. Cal. May 9, 2007), the court dismissed the plaintiff's trade dress claim because, among other things, the plaintiff failed to indicate which pages were being infringed or otherwise provide any factual basis beyond plain statements that the defendant used similar phrases and colors that helped to “blur the line” between the sites.

' A complaint that merely annexes screen shots of the plaintiff's and competitor's allegedly similar sites without additional explanation will likely not survive dismissal. See, e.g., Nat'l Lighting v. Bridge Metal Indus., LLC, 601 F. Supp. 2d 556, 563 (SDNY 2009) (court could not “be expected to distill from a set of images those elements that are common to a line of products and both distinctive and non-functional”).

Conversely, in Conference Archives, the plaintiff produced a report that broke down the visual similarities arising from use of the same colors (noting identical hexadecimal color notations), screen orientations, arrangement of codes and tags in HTML language, and pixel heights for shaded areas.

' To succeed on a trade dress claim, a party must show that its design is distinctive and has attained secondary meaning. Generally speaking, a design has acquired secondary meaning if it has created “a mental recognition in buyers' and potential buyers' minds that products connected with the [mark] are associated with the same source.” Art Attacks Ink, LLC v. MGA Entm't Inc., 581 F.3d 1138, 1145 (9th Cir. 2009). Secondary meaning can be established in many ways, including, among other things, survey evidence on consumer confusion, testimony on the exclusivity and length of use of a mark, and the amount and manner of advertising.

' A trade dress infringement case can be bolstered by evidence that the defendant committed willful copying or copied the material for the express purpose of emulating the plaintiff's site. For example, in Conference Archives, the defendant openly admitted that it had copied the look and feel of the plaintiff's site and the court noted that “what Defendant sought to expropriate was the intuitive properties ensconced in the Plaintiff's design.” This fact certainly contributed to the viability of the trade dress claim, and more specifically, the likelihood of confusion analysis.

Protectable trade dress under the Lanham Act can include a wide range of product design and packaging features: the color and shape of pill capsules; the look of a greeting card line; the layout of magazine covers and briefcases; commercial kiosk designs; sales techniques; the distinctive decor of a restaurant; and the colorful, tropical depictions on liquor bottles. Separate from a trademark, trade dress involves the total image of a product and the overall impression created that allows consumers to distinguish among competing producers.

In recent years, a growing debate has emerged over whether the overall look and feel of a Web site can be protected. To be sure, online content, videos, and other media are copyrightable, but the law remains unsettled when it comes to using trademark law to protect a site's distinctive interface and design elements.

This article discusses trade dress generally, the issue of copyright preemption, and recent decisions that have wrestled with the issue of Web site trade dress infringement.

Trade dress encompasses the design and appearance of the product, together with all the elements making up the overall image that serves to identify the product presented to the customer. See , Fun-Damental Too, Ltd. v. Gemmy Indus. Corp. , 111 F.3d 993, 999 (2d Cir. 1997).

Trade dress protection for the “total image and overall appearance” of a product, like a trademarked name or logo, is meant to protect consumers from confusion between a product from an expected source and one from another, unexpected source.

'Look and Feel' of a Web Site

A Web site, however, is a multilayered, non-static “product” with both original and functional elements, thereby making a trade dress determination more difficult. The “look and feel” of a site is a concept that can be difficult to define.

In general, the “look” comprises aspects of a site's visual design, such as the colors, layouts, fonts and shapes ' items not so dissimilar from traditional trade dress.

The “feel” describes what lies beneath the “visual design,” that is, the “interface design.” These are the recognizable, familiar elements that help the user navigate the site, such as through the use of tabs, boxes, menus and hyperlinks.

The “look” and the “feel” of a site also include an “overall mood, style and impression.” All of these elements produce an intuitive association with a company's or brand's reputation. In summary, for trade dress infringement, the question is similar to trademark infringement: Does the public associate the look and feel of the plaintiff's site with the plaintiff or its products to the point that the defendant's site causes confusion as to the source of the site?

Section 301(a) of the Copyright Act pre-empts all claims that may arise under state common law or other statutory grounds, and courts have historically limited application of the Lanham Act to avoid encroaching on copyright law. Copyright infringement claims and trade dress claims are mutually exclusive and, if an adequate remedy lies under the Copyright Act, any remedy for trade dress infringement under the Lanham Act is pre-empted. When no copyright protection is available, a Lanham Act claim is not pre-empted.

Generally speaking, copyright law will not protect the overall format and layout of a Web page or site (though site text, software code and certain creative graphic elements may be protectable). See , Darden v. Peters , 488 F.3d 277, 288 (4th Cir. 2007). Yet, distinctive Web site design elements that are not copyrightable subject matter could constitute protectable trade dress.

In recent years, some courts have indicated a willingness to extend trademark law protections to distinctive Web site design and features. One of the leading reported cases that held that a site's look and feel may form the basis for trade dress infringement is Blue Nile, Inc. v. Ice.com, Inc. , 478 F.Supp.2d 1240 (W.D. Wash. 2007). (Prior to Blue Nile , other courts also considered aspects of Web site trade dress infringement. See , e.g. , Faegre & Benson LLP v. Prudy , 367 F.Supp.2d 1238 (D. Minn. 2004) (“overall dissimilarity” of the defendant's parodic Web page, which contained explicit disclaimers, “creates a low likelihood of confusion” to the plaintiff's law firm Web site and did not constitute trade dress infringement); SG Services, Inc. v. God's Girls, Inc., 2007 WL 2315437 (C.D. Cal. May 9, 2007) (plaintiff claimed that the defendant copied several features of its Web site, including the use of the color pink and several phrases; court found that the plaintiff failed to prove that the look and feel of its site was distinctive and that the defendant's use of similar colors would generate consumer confusion).) In Blue Nile, the court found that the plaintiff, an online retailer, could pursue a trade dress claim based on the defendant's alleged copying of the “overall look and feel” of the plaintiff's commercial Web site.

The court noted that trade dress protection rests in the overall features of a product, including its size, color or color combinations, texture, graphics, packaging or other visual features. In declining to dismiss the plaintiff's trademark claims based upon Copyright Act pre-emption, the court reasoned that greater factual development was needed for the court to address the overlap between the Lanham Act and the Copyright Act; namely, what elements of the plaintiff's site were subject to copyright protection, and what portions were related to the look and feel of the site that could form a trade dress claim.

Moreover, this past spring, two district courts waded into the emerging debate and ruled that a site's look and feel could be protectable trade dress that would not interfere with copyright law interests, albeit with varying results for the plaintiffs.

In Conference Archives, Inc. v. Sound Images, Inc., 2010 WL 1626072 (W.D. Pa. Mar. 31, 2010), the parties' partnership broke down and the defendant copied a portion of the plaintiff's HTML/Javascript code to develop a new online product that would mimic the look and feel of the plaintiff's product. Among other intellectual property-related claims, the plaintiff brought trade dress claims under the Lanham Act.

The court denied the defendant's motion for summary judgment on the plaintiff's Lanham Act claim and found that the plaintiff stated a cognizable trade dress claim.

The district court first analyzed whether the trade dress infringement claim survived copyright pre-emption. While certain elements of a site would clearly fall within the subject matter of copyright, including the text of the page, software code, and certain creative graphical elements, the court found that the look and feel of the plaintiff's site fell outside the subject matter of the Copyright Act and thus escaped pre-emption.

Three-Factor Test

Following the pre-emption analysis, the court then applied the three-factor test for trade dress infringement: 1) the trade dress at issue is inherently distinctive or has acquired secondary meaning; 2) the trade dress is primarily nonfunctional; and 3) the trade dress of competing goods is confusingly similar.

After comparing several elements of the plaintiff's and defendant's sites, including the spacing between table cells, font, background colors and cell height (in pixels), none of which would be protectable under copyright, and then noting the defendant's admittedly willful copying of some elements of plaintiff's site, the court concluded that the plaintiff had adequately pleaded its trade dress claim.

A California district court also recognized the viability of a trade dress claim based upon the copying of a Web site's look and feel.

In Sleep Science Partners v. Lieberman, 2010 WL 1881770 (N.D. Cal. May 10, 2010), the plaintiff alleged that the defendant, its former business associate, started a competing medical enterprise and allegedly mimicked the format, design and feel of the plaintiff's site and related media.

The court found the plaintiff's claims were underdeveloped and vague: “Although it has cataloged several components of its Web site, Plaintiff has not clearly articulated which of them constitute its purported trade dress. ' Without an adequate definition of the elements comprising the Web site's 'look and feel,' [the defendant] is not given adequate notice.”

The court dismissed, among other claims, the plaintiff's trade dress infringement claim, with leave to amend to articulate its alleged trade dress with greater detail. Subsequently, the plaintiff filed an amended complaint.

Practical Concerns

' As the Conference Archives court stated, in order to withstand copyright pre-emption, trade dress elements should be “specifically identified and painstakingly selected.” Such a hurdle was the principal reason that the plaintiff's claim in Sleep Science Partners did not survive the defendant's dismissal motion. Thus, copyrightable elements such as text and creative graphic designs that have been copied should be pleaded in a copyright infringement claim, while a site trade dress claim should delineate the specific elements that compromise a distinct look and feel.

' A plaintiff should offer a comprehensive comparison of the sites in question and explain what trade dress elements have been copied, going beyond a mere conclusory statement that the defendant's site is “visually similar.” For example, in SG Services, Inc. v. God's Girls, Inc., 2007 WL 2315437 (C.D. Cal. May 9, 2007), the court dismissed the plaintiff's trade dress claim because, among other things, the plaintiff failed to indicate which pages were being infringed or otherwise provide any factual basis beyond plain statements that the defendant used similar phrases and colors that helped to “blur the line” between the sites.

' A complaint that merely annexes screen shots of the plaintiff's and competitor's allegedly similar sites without additional explanation will likely not survive dismissal. See , e.g. , Nat'l Lighting v. Bridge Metal Indus., LLC , 601 F. Supp. 2d 556, 563 (SDNY 2009) (court could not “be expected to distill from a set of images those elements that are common to a line of products and both distinctive and non-functional”).

Conversely, in Conference Archives, the plaintiff produced a report that broke down the visual similarities arising from use of the same colors (noting identical hexadecimal color notations), screen orientations, arrangement of codes and tags in HTML language, and pixel heights for shaded areas.

' To succeed on a trade dress claim, a party must show that its design is distinctive and has attained secondary meaning. Generally speaking, a design has acquired secondary meaning if it has created “a mental recognition in buyers' and potential buyers' minds that products connected with the [mark] are associated with the same source.” Art Attacks Ink, LLC v. MGA Entm't Inc. , 581 F.3d 1138, 1145 (9th Cir. 2009). Secondary meaning can be established in many ways, including, among other things, survey evidence on consumer confusion, testimony on the exclusivity and length of use of a mark, and the amount and manner of advertising.

' A trade dress infringement case can be bolstered by evidence that the defendant committed willful copying or copied the material for the express purpose of emulating the plaintiff's site. For example, in Conference Archives, the defendant openly admitted that it had copied the look and feel of the plaintiff's site and the court noted that “what Defendant sought to expropriate was the intuitive properties ensconced in the Plaintiff's design.” This fact certainly contributed to the viability of the trade dress claim, and more specifically, the likelihood of confusion analysis.