A recent case involving two online providers of maternity clothing, Ingrid & Isabel, Inc. v. Baby Be Mine, LLC, gave rise to this question: are you allowed to copy the look & feel of a competitor’s website if you don’t directly copy elements protected by copyright and trademark, such as wording and logos? To answer this question, the court had to explore the concept of trade dress, a subset of trademark law.
I’ve written about trade dress from time to time. Here’s a post about a fake IKEA store; here’s one about In-N-Out Burger (yum). I summarized the topic in the IKEA story:
[Trade dress is] essentially the overall image and appearance of a business. Like trademarks, trade dress is protected by the federal Lanham Act. The U.S. Supreme Court laid out the legal requirements for trade dress protection in Two Pesos v. Taco Cabana, in which two Mexican-themed restaurants fought over whether South-of-the-Border taco shop decor was entitled to legal protection. In that case, the Court held that Taco Cabana’s “festive eating atmosphere, having interior dining and patio areas decorated with artifacts, bright colors, paintings and murals,” could be protected under the Lanham Act.
To qualify for trade dress protection, the claimant has to satisfy several legal elements…Ultimately, if a company establishes these elements in a trade dress dispute against a counterfeiter, they will be entitled to damages under the Lanham Act. These consequences may include an injunction (whereby a court requires the counterfeiter to stop “copying”), damages in form of the defendant’s profits or the plaintiff’s actual damages, and/or attorney fees.
In the current case, Ingrid & Isabel (“I&I”) claimed that the defendant, Baby Be Mine, LLC (“Baby”), had infringed on their rights by copying some elements of their website in order to imitate I&I and presumably draw customers away. The court reviewed relevant case law and found that
…the look and feel of a web site can constitute a trade dress protected by the Lanham Act [the Federal Law that protects trademarks.] Accordingly, to succeed in its claim Plaintiff must thus show “(1) that its trade dress is inherently distinctive or has acquired secondary meaning; (2) that its trade dress is nonfunctional; and (3) that defendant’s product creates a likelihood of consumer confusion.” (Citing a previous case.)
So there are three elements that must be satisfied when you’re asserting trade dress infringement:
- Your trade dress must be distinctive.
- Your trade dress can’t be functional.
- There has to be a likelihood that consumers will confuse the source of the goods or services.
Note that the court didn’t determine the ultimate outcome of this case; that’s still in dispute. This ruling merely allowed I&I’s claim on this point to proceed toward trial. Nonetheless, the court was obligated to test the three factors above against I&I’s claims in order to determine that they met the standards of disputable facts for a trial to resolve.
1. Distinctiveness
The court noted that the “Supreme Court has held that ‘design, like color is not inherently distinctive’ [citing a case involving Wal-Mart.] Given the conceptual similarity between ‘look and feel’ and ‘design,’ Wal-Mart suggests that Plaintiff must show that its website‘s ‘look and feel’ is distinctive through its secondary meaning.”
This is a complicated way of saying that the design of a website is not “inherently” distinct. Rather, the party claiming distinctiveness must show that the design has become distinct (“acquired distinctiveness”) through “secondary meaning.” Think of it this way – there’s nothing unusual about painting a van brown, but we all recognize the brown UPS vans when they drive down the street. The color brown for delivery trucks has acquired distinctiveness. Elements of a website’s look & feel can function like brown does for UPS. But the plaintiff will have to prove that it does so.
A twist here is that, per another previous case, “evidence of deliberate copying can support an inference of secondary meaning.” So if you can show that your competitor deliberately copied your website, that will help to support your claim for acquired distinctiveness. Here, the court determined that there was enough such evidence for I&I to proceed on this point.
2. Non-Functional
Functional elements can’t be protected as trade dress. The court noted that I&I…
…asserted that several elements of its website that are likely non-functional, including: the choice to use a “feminine script,” the use of “pastel pink-orange hue,” the use of “[p]ink and orange script,” the “[c]olor and pattern of wallpaper,” and the particular poses chosen for its models…Additionally, the placement and arrangement of functional elements can produce a non-functional aesthetic whole.
Again, this was enough to go on.
3. Likelihood of Confusion
Our old friend, likelihood of confusion, is the cornerstone of all trademark infringement claims. Courts have typically found this issue to be a question of fact to be decided at trial, and this court was no different.
All three factors having been satisfied – at least at the level required for this stage of the process – the court allowed I&I’s federal trade dress claim to proceed.
This case sends the strongest signal yet that the look and feel of a website will be treated no differently than other types of protectable trade dress. The lesson is easy to remember: don’t rip off your competitors’ websites.
