Innovate Articles

Does This Web Dress Make My Site Look Distinctive?

Joe Schuler

The legal landscape for protecting website look and feel.

1. Introduction

    

   This article discusses the legal landscape surrounding liability under the Lanham Act and under the New York General Business Law for mimicking the trade dress of a competitor’s website. It also addresses the practicalities of acquiring jurisdiction over a defendant.

    

   1. Trade Dress Infringement: “Web Dress”

       

      1. Trade Dress Defined

          

         Trade dress claims have been analogized to the common law tort of unfair competition; a product’s trade dress has been called “essentially its total image and overall appearance.”[1] Trade dress can include such features as “size, shape, color or color combinations, texture, graphics, or even particular sales techniques.”[2]

          

         The protection of trade dress is derived from the core principles of trademark law, to protect source identifying characteristics that distinguish the source of the good or service from other sources in order to promote its sale.[3] Trade dress protection focuses on how an “arrangement of identifying characteristics or decoration connected to a product, whether by packaging or otherwise, [is] intended to make the source of the product distinguishable from another” product.[4] Trade dress protection has been extended beyond the product itself or even its packaging to include such concepts as the shape, appearance, and overall design of a restaurant[5] or retail establishment.[6] As one court recognized, extending trade dress protection to the “look and feel” of a website can help protect the “intellectual property from a ‘careful infringer’ who has merely copied the ‘essence’” of the site.[7]

          

         Today, with so much commerce occurring online through web-retailers and online marketplaces, a new frontier of trade dress protection is testing the boundaries of protection under the law, as well as the question of what law is applicable.

          

      2. Trade Dress protection under Copyright Law and Preemption

          

         While copyright has been used to protect computer code, photographs, and compilations, websites tend to fail the originality requirement for copyright protection particularly in the context of compilation protection.[8] Thus, plaintiffs have looked to trademark law to protect the “look and feel” of their websites, and courts have found that a trade dress claim for the look and feel of a website is not preempted by the historically broadly construed preemption of the Copyright Act.[9]

          

      3. Elements of a Trade Dress Claim and How to Plead

          

         Trade dress, even if unregistered, falls under the protection of § 43(a) of the Lanham Act.[10] “[T]he analysis for trade dress and [the analysis of] an unregistered trademark under section 43(a) of the Lanham Act is very similar.[11] To assert a claim for infringement of unregistered[12] trade dress, a Plaintiff must show (1) the trade dress is protected, meaning it is source identifying or “distinctive,” either inherently or by acquired distinctiveness, (2) that as a whole the trade dress is non-functional (3) and that the defendant’s use is confusingly similar, or, in other words, substantially similar to the plaintiff’s trade dress.[13] In addition to satisfying these three elements, in pleading a trade dress claim the plaintiff must (4) allege the specific elements which comprise its distinct, source identifying trade dress.[14]

          

         1. The Trade Dress Must have Source Identifying Distinctiveness

             

            Distinctiveness can be either inherent or acquired. Unfortunately, the design of a website is rarely inherently distinctive, leaving plaintiffs in the position of having to prove secondary, or acquired, distinctiveness. This is perhaps the biggest hurdle to asserting a “web dress” claim. The saving grace is that distinctiveness is a question of fact,[15] so the issue may survive a motion to dismiss if properly pled, and it may survive summary judgment if further substantiated in fact.[16] In cases where a plaintiff alleges distinct protectable elements rather than vague aesthetics or abstract ideas, success is more likely.[17] In discussing the trade dress, courts have come to refer to the design elements protected by the Lanham Act as the “look and feel” of a website.[18] A plaintiff may even lean on evidence that the defendant sought to copy their web dress; evidence of deliberate copying can support an inference that the web dress does indeed have secondary meaning, therefore satisfying the distinctiveness element on a motion to dismiss.[19] Along with “proof of intentional copying,” indirect evidence that may support finding secondary meaning includes “1) the length and manner of the use of the trade dress; 2) the nature and extent of advertising and promotion; 3) the efforts to promote a conscious connection between the public, the trade dress, and the source; [and] 4) the products’ established place in the market (possibly through continuous use in the market)”[20]

             

         2. The Trade Dress Must be Non-functional as a Whole

             

            Functional elements of a product are elements that are essential to the product’s use or that affect the product quality.[21] Elements are functional “if exclusive use of the feature would put competitors at a significant, non-reputation-related disadvantage.”[22] These are not protected because doing so would stifle innovation rather than protecting source identifying characteristics. When addressing functionality, it is important to note that trade dress is generally examined in its aggregate, and the functionality requirement is no exception to the rule. So, having some elements of the trade dress be functional does not preclude protecting the trade dress as a whole.[23] Functionality is also a question of fact, and courts have declined to issue summary judgment where a plaintiff articulates nonfunctional similarities between websites.[24] Typically, as “long as there are alternate ways to design a web site, beyond the arrangement protected by the trade dress, the site's interface should not be considered functional.”[25] Furthermore, “[c]ourts have held that the overall appearance created by a combination of colors and design features is not functional.” [26] Thus, functionality is commonly satisfied in a web dress claim, particularly when many elements are identified, making an alternative trade dress for the competitor more available.

             

         3. Substantial Similarity between Websites: Likelihood of Confusion

             

            Likelihood of confusion hinges on at least eight factors, which vary slightly in each federal judicial circuit: (i) the strength of plaintiff's mark; (ii) the similarity of the parties' marks; (iii) the proximity of the parties' products in the marketplace; (iv) the likelihood that the plaintiff will bridge the gap between the products; (v) actual confusion; (vi) the defendant's intent in adopting its mark; (vii) the quality of the defendant's product; and (viii) the sophistication of the relevant consumer group. No factor is dispositive, and analysis of each factor is a fact-heavy endeavor.

             

         4. Properly Articulating the Trade Dress to Survive Dispositive Motions

             

            A major challenge to protecting the trade dress of a web site (sometimes called “web dress”) is articulating exactly what the distinctive characteristics are that identify source and are thus subject to protection. Properly pleading and enumerating the elements of the web dress the plaintiff seeks to protect is essential to surviving a motion to dismiss.[27]

             

            First, the list must be complete. An open ended list will generally face dismissal because it does not give notice to the defendant or provide the court with the ability to fashion proper equitable relief.[28] Furthermore, it is important that in addition to listing the elements, the plaintiff provides some synthesis of the components and how they make up the look and feel of the site.[29] Alleging “the particularized combination of all of these elements” may serve that purpose in some cases.[30]

             

            Providing side by side photographs, in addition to listing the elements, can be persuasive, particularly when the sites are “essentially identical.”[31] Pointing to color scheme, layout, and similarly presented videos may be sufficient.[32] Illustratively, one unfair competition claim under the Lanham Act that survived summary judgment included the following list of web dress components:

             

            Logo in feminine script in pastel pink-orange hue in upper left corner of the page; Pink and orange script carried throughout the site; Close-up of model photos featured from head to mid-thigh, wearing white tanks with jeans, with long naturally wavy hair; Model photos feature mouse-over change of whimsical, casual poses to display all angles of the product; Featuring Model photos instead of product photos, throughout the site; Color and pattern of wallpaper; Category sliders; Dots for category sliders and similar colors of the dots; Placement of models to text in the sliders; The general fonts used; How the models are posing.[33]

             

            Ultimately, the ability to survive a motion to dismiss for failure to state a claim may be enough leverage to discourage bad actors. Fortunately, the blueprint for surviving such a motion is available. As with all motions to dismiss, courts will assess the factual allegations in the complaint to assess, if they are taken as true, whether relief is plausible on its face.[34] Courts routinely run through each of the trade dress elements on these motions.

             

                      The ease of pleading non-functionality is discussed above. Regarding distinctiveness, failing to allege facts showing inherent or acquired distinctiveness and relying on conclusory statements such as asserting that the website is “unique and distinct in the marketplace” will not be sufficient and may lead to dismissal.[35] However, in at least one instance, allegations bordering on conclusions were sufficient when a Plaintiff combined the identification of “a distinctive palette of colors and image/video filters featuring a clean, modern, and straightforward user interface highlighted by bright, vibrant colors set in an environment/backdrop of warm, baby tones” with allegations that the same was recognized by consumers as a symbol of Plaintiff, and that the website “incorporates a distinctive visual design, graphic treatment, and familiar interface that has become readily identifiable by the consuming public as originating from” Plaintiff.[36] In that case, the pleadings survived a motion to dismiss.[37]

             

            Some courts have looked to the extent of use of the trade dress elements by competitors to inform distinctiveness decisions. That is, they consider whether the particularized trade dress is unique or unusual in the field or if it is just a refinement of a common ornamentation for a class of goods. If the latter, it is not inherently distinctive. However, combinations of certain colors arranged in a certain design or printing style may create a distinct visual impression.[38] In contrast, where a design is simple and used by numerous competitors in the same field it is not inherently distinctive.[39] The key is to frame the protected features as a whole, focusing on protection of the particular combination of visual elements in relation to the product or source in a way that is not common throughout the industry.[40]

             

                      If the inherent distinctiveness angle fails, secondary meaning must be shown, and decorative or aesthetic features with no source identifying roles will not suffice.[41] While intentional copying can provide an inference of secondary meaning, such evidence is difficult to obtain, but imitation in conjunction with use of other elements not commonly used in the industry may persuade a court. In some cases, courts have granted leave to amend where the complaint was insufficient.[42] Of course, providing visuals of the trade dress to the court can be persuasive and put the defendant on notice of the trade dress plaintiff is looking to protect, but does not excuse the pleading requirement that the elements be listed.[43]

             

                      As to likelihood of confusion, illustrating the similarities between the aspects of the trade dress where the products are highly similar is strong supporting evidence, particularly where the advertisement and product is essentially identical.[44] In that case, obtaining a preliminary injunction may even be possible.[45] Alleging copying of “stylistic choices along with the content of the website, including the color, font, and hyperlinks, in a manner that is confusingly similar,” has been sufficient to survive a motion to dismiss.[46]

             

            In sum, non-functionality and similarity are easier to satisfy than distinctiveness. A focus on elements that are of uncommon usage but copied by a competitor will help, as will any evidence of intentional copying.

             

   2. New York General Business Law § 349 Unfair Competition

       

      The essence of G.B.L. § 349 was well laid out in SmileDirectClub, LLC v. Jacqueline I. Fulop, D.M.D., P.C.[47]:

       

      N.Y. G.B.L. §§ 349 prohibits deceptive acts or practices . . . in the conduct of any business. The [statute] provide[s] a private right of action against businesses that injure them through deceptive acts or false advertising. To state a claim . . . a plaintiff must allege that (1) the defendant's deceptive acts were directed at consumers; (2) the acts are misleading in a material way; and (3) the plaintiff has been injured as a result. Although the statute “is, at its core, a consumer protection device, corporate competitors have standing to sue under §§ 349 . . . so long as some harm to the public at large is at issue. However, for a competitor to have standing under §§ 349 . . . , the gravamen of the complaint must be consumer injury or harm to the public interest, and the complaint must allege conduct that has significant ramifications for the public at large.

       

      General Business Law § 349 claims are often pled alongside trademark actions under the supplemental jurisdiction of the federal courts.[48] The New York Court of Appeals has recognized § 349’s breath and applicability to virtually all economic activity, but also the limitation that it is not applicable to private disputes and harms unique to the parties.[49] Fortunately, G.B.L. § 349 claims in Federal Court are subject to the less stringent pleading requirements of FRCP 8(a), and not 9(b).[50]  However, courts frequently require harm to the public beyond the simple risk of consumer confusion, such as a violation of FTC rules or a public health and safety risk.[51]

       

                It may be difficult to substantiate a public health and safety risk beyond confusion as to the source unless a court takes the narrow minority view that has only been taken in a handful of cases: that consumer confusion is sufficient harm to the public. [52]

       

2. Jurisdiction

    

   The subject matter jurisdiction of federal courts for federal claims under the Lanham Act is without question,[53] and the same goes for state claims arising out of the same nucleus of operative fact.[54] In contrast, personal jurisdiction in New York may be difficult to obtain if the defendant is outside of New York or outside the United States, as is often the case when web-dress is being knocked off. Personal jurisdiction must be specific in such a case, rather than general, because the prospective defendant may be headquartered out of state or overseas, and thus it depends on an application of New York’s long arm statute to a foreign retailer’s or manufacturer’s contacts with New York consumers.[55]

    

   Fortunately, the Second Circuit very recently addressed the issue on analogous claims in American Girl, LLC v. Zembrka, deciding personal jurisdiction existed over a foreign retailer for trademark infringement claims.[56] There, Plaintiff sufficiently alleged personal jurisdiction over a China-based retailer under the long arm statute by pointing to the sale of counterfeit dolls and use of the Plaintiff’s marks on the counterfeiter’s websites. Jurisdiction was proper based on transactions with New Yorkers alone, despite the dolls never actually being shipped into New York.[57] Simply allowing New York consumers to order and pay for the counterfeit dolls was enough.[58] The court relied on N.Y. C.P.L.R. § 302(a)(1), which provides for jurisdiction of any non-domiciliary who “transacts any business within the state or contracts anywhere to supply goods or services in the state.” Note that some jurisdictional discovery may be necessary to support this theory.

    

   Although the stream of commerce concept is a constitutional limit, and the New York long arm statute does not go as far as the constitutional limits allow for personal jurisdiction, the concept is embodied in both N.Y. C.P.L.R. §302(a)(1), discussed above, and N.Y. C.P.L.R. 302(a)(3). Section 302(a)(3)(ii), provides for personal jurisdiction over a non-domiciliary who “commits a tortious act without the state causing injury to person or property within the state. . . if he . . . expects or should reasonably expect the act to have consequences in the state and derives substantial revenue from interstate or international commerce.”[59] If jurisdiction is not satisfied under § 302(a)(1), then § 302(a)(3)(ii) may have support. Trademark infringement is a tort and trademarks must be used in commerce, so if the claim is in the realm of the Lanham Act there is going to be commercial activity going on. Again, jurisdictional discovery to substantiate revenue may be necessary.

    

3. Conclusion

In conclusion, as ecommerce grows, and as more customer interactions occur through websites, agentic AI, or web-based self-service channels, rather than in a store or over the phone, businesses should keep an eye toward protecting their web dress with the same diligence they have historically protected the rest of their brand identity.