When businesses seek methods for protecting their websites from intellectual property infringement, most parties simply copyright their content and register trademark-able logos. Each can be done with the United States Copyright Office and United States Patent and Trademark Office (“USPTO”) respectively. But did you also know about an intellectual property tort called “trade dress” that can help protect from theft of the look and feel of a website?
The Differences Between Copyright, Trademark and Trade Dress
A copyright protects the artwork and original writing involved in a website, and a trademark protects the marks associated with goods or services. But, what if some unsavory character avoids using your logos, and avoids stealing your content, but copies your layout and your color schemes?
The answer to a “look and feel of a website” issue, “trade dress” is the tort to use.
Trade dress infringement in the United States involves two main elements:
- A person, “on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact.”
- The action in the first element must “likely […] cause confusion, or […] cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person.”
When Does Trade Dress Infringement Apply?
So when does trade dress infringement apply? Cases vary, but it is fair to say that when the manner of visually presenting an idea, product or service is so unique to a brand that it would likely cause confusion if someone else used that same manner of presentation, trade dress infringement comes into play.
For example, imagine if a fast food burger chain started using a golden “n” arch on its restaurants, and copying the architecture of McDonald’s restaurants. That chain might very well be committing a trade dress infringement, even though McDonald’s has not trademarked a golden “n,” and its architecture is not trademarked or copyrighted.
Functionality Plays A Role In Trade Dress Infringement Cases
To constitute trade dress infringement, the device in question cannot be “functional.” In other words, it cannot have a purpose beyond associating the good or service with its owner. For example, a plaintiff could not claim trade dress infringement simply because someone else happened to use the same tires on their company vehicles as the plaintiff.
Trade Dress and The Look and Feel of a Website
So how does this apply to websites?
When the look and feel of a website is copied by a competitor, and that look and feel results from something other than purely functional attributes of the website, the courts have permitted trade dress infringement cases to move forward.
For example, in the Blue Nile Inc. v. Ice.com and Odimo, Inc., 478 F. Supp. 2d 1240 (W.D. Wash. 2007), the plaintiff brought an action for trade dress infringement, accusing the defendant of copying their website’s “look and feel.” The defendant sought to have the claim thrown out, but failed.
A number of factors will determine whether a trade dress is inherently distinctive, permitting it to be protected by trademark law. The USPTO’s website advises its attorneys to consider whether the trade dress is:
- A “common” basic shape or design;
- Unique or unusual in the field in which it is used;
- A mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods;
- Capable of creating a commercial impression distinct from the accompanying words.
Speak With A Trade Dress Attorney
Trade dress infringement, particularly as it relates to the look and feel of a website, is a complicated issue. Special measures should be taken when initially designing the presentation of a product or service to avoid infringing on another person’s trade dress, and to ensure that it is unique enough. For more information on trade dress infringement and other issues surrounding your business’ intellectual property, contact a qualified trademark lawyer.