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Dyan Finguerra-DuCharme is counsel in the intellectual property litigation practice group of WilmerHale. WilmerHale has over 1,000 attorneys in 11 offices in the U.S., Europe and Asia. Its specialties include intellectual property, regulatory issues and appellate law.
This article originally appeared in GC New York, a publication aimed at corporate general counsel.
In today's e-commerce world, a company's Web site serves as its business storefront and, in many cases, its main link to customers and investors. Companies invest enormous resources in building and maintaining their Web sites and developing a distinctive design. Choosing the right layout, color scheme, graphics, text and other visual features are important decisions that distinguish one business' Web site from that of its competitors. These decisions also determine the ease with which consumers can navigate the Web site and whether they are more likely to return to the site. Consequently, the Web site itself has become a valuable piece of intellectual property worth protecting. But how?
As an initial matter, a client should register its Web site with the U.S. Copyright Office because many courts have held that information contained on a Web site is protectable under the U.S. Copyright Act. (By registering the Web site, the client will obtain the added benefit of statutory damages for each instance of infringement.) The bigger problem, however, is what to do when a competitor, in creating its Web site, copies the contents and design of your client's Web site.
Courts have analyzed these "Web site copying" claims under two main legal theories: (1) copyright infringement (for the copyrighted expression contained in the plaintiff's Web site); and/or (2) trade dress infringement (for the "look and feel" of the plaintiff's Web site). In these types of cases, courts apply traditional copyright infringement and trade dress infringement tests, focusing on a case-by-case, fact-intensive analysis of how closely the two Web sites resemble each other in terms of design and aesthetics. Generally, it seems that only if one site is a very clear imitation of the other will a court find infringement under either theory.
Copyright Infringement
The U.S. copyright law provides protection to original, creative expressions that are in a "fixed" medium (i.e., written down, tape-recorded, videotaped, etc.). The copyright law grants specific rights to a copyright owner and precludes others from infringing upon these rights. Courts have applied the same analysis to a copyright infringement claim in the context of Web site copying as that applied in a traditional copyright case. Namely, the plaintiff must establish that (1) it owns a copyright in the Web site, and (2) the defendant copied the Web site without authorization.
Meeting the first element varies from court to court. For works created within the United States, many courts require an actual registration as a jurisdictional prerequisite for a copyright infringement claim, while other courts have held that an application for registration fulfills the first requirement.
Establishing the second element -- the unauthorized copying -- is the more difficult challenge for the litigant. In most circuits, to establish copyright infringement, the owner must show that the defendant "actually copied the plaintiff's work; and (2) the copying is illegal because a substantial similarity exists between the defendant's work and the protectable elements of plaintiff's." Absent direct evidence of actual copying, the court will rely upon circumstantial evidence.
For both infringement requirements, courts undertake a side-by-side comparison of the Web sites, and consider whether the defendant copied protected expression from the plaintiff's Web site or whether it merely used the same underlying ideas (which is not protected). Courts focus on whether a side-by-side comparison prompts an ordinary observer to regard the aesthetic appeal of the Web sites as the same.
Meeting this standard for copyright infringement in a Web site copying case, however, is difficult for a plaintiff. To the extent that the court finds similarities (such as the use of similar tabs, tool bars, headers, colors, layouts, FAQs), the courts usually hold that these commonalities come from the unprotectable elements of the Web site rather than protectable elements. In some cases, the court has even held that headings are not protected at all due to the "merger doctrine," which provides that in some circumstances, there are so few ways of expressing an idea that the idea and its expression merge so as to not afford copyright protection.
On the other hand, courts have found copyright infringement where the defendant had copied the same exact pictures, layout and text, making the Web sites nearly identical. For example, in Peri Hall & Assoc, Inc. v. Elliot Inst. for Social Sciences Research, the court preliminarily enjoined the defendant, finding that the plaintiffs had established a prima facie case of copyright infringement by: (1) putting forth substantial evidence that they own copyrights to the code and graphic design of their Web site; (2) demonstrating that, even after a cursory examination by the court, that the defendant's Web site "simply copied the look and feel of the [plaintiff's] Web site, even to the extent of using the exact same pictures in the exact same layout on each page"; and (3) showing that defendants were using plaintiffs' trademarks, including one plaintiff organization's name, as metatags within its Web site to increase its own Internet traffic.
Courts have also found infringement where a defendant had used specific copyrighted images from the plaintiff's Web site without authorization. For example, in Bose Corp. v. Silonsonnic Corp., the court entered a preliminary injunction enjoining the defendant from using the plaintiff's copyright- and trademark-protected images on its Web site and its eBay listings. Although the defendant had since ceased using plaintiff's materials, the court granted plaintiff's request because the defendant had already admitted to the unauthorized use of plaintiff's images in the past and could possibly do so again in the future.
Trade Dress
Plaintiffs have also sought protection of the "look and feel" of their Web sites under a trade dress infringement theory, and courts have recognized the claim as separate and distinct from a plaintiff's copyright claim. In Blue Nile, Inc. v. Ice.Com, Inc., the plaintiff asserted copyright infringement and trade dress infringement claims to enjoin the defendant's purported copying of its Web site. The court denied the defendant's motion to dismiss the trade dress claim as duplicative of, and preempted by, plaintiff's copyright claim, finding that greater factual development was needed to determine which portions of the Web site comprise the "look and feel" of the Web site as opposed to copyrightable expression.
The U.S. Supreme Court first articulated the principle that a trade dress can consist of a "look and feel" in Two Pesos v. Taco Cabana, Inc. by ruling that the interior of a restaurant, with its festive eating atmosphere, bright colors, paintings and murals, was protectable. The Two Pesos decision opened the door to infringement claims either by showing that the trade dress was inherently distinctive or had acquired secondary meaning. The Supreme Court later narrowed this holding in Wal-Mart Stores, Inc. v. Samara Bros. by creating a distinction between the type of trade dress at issue.
According to Wal-Mart, a product's packaging could be inherently distinctive and proven to be so without a showing of secondary meaning, while a product's design could be protectable only upon a showing of secondary meaning.
While many types of trade dress can be fit neatly into these two categories (for example, the box for an iPhone is considered product packaging, while the iPhone itself is considered product design), a Web site is more ambiguous and arguments can be made that it serves as both. The Court in Wal-Mart took this possibility into account and noted that "to the extent there are close cases, we believe that the courts should err on the side of caution and classify ambiguous trade dress as product design, thereby requiring secondary meaning."
To establish that its trade dress has acquired "secondary meaning," a plaintiff must show that "in the minds of the public, the primary significance of a product feature or term is to identify the source of the product rather than the product itself." The most common ways in which to show acquired distinctiveness include a consumer survey (which costs tens of thousands of dollars), large sales figures, marketing expenditures, the product's renown in the marketplace, extent of advertising and unsolicited media attention. Where a trade dress is not registered, the plaintiff must also demonstrate that the claimed trade dress is not functional.
Like copyright claims, courts have imposed a high standard to maintain a trade dress infringement claim for Web site copying. As an initial matter, showing that the Web site is distinctive poses a serious challenge for most litigants. On the other hand, courts will allow a claim to go forward where a plaintiff can meet the traditional test. For example, in Calyx Technologies, Inc. v. Ellie Mae, Inc., the plaintiff used a distinctive screen image in connection with its loan processing software and brought a claim of trade dress infringement on the ground that the defendant's Web site used similar source images. The plaintiff established acquired distinctiveness through the millions of dollars it spent in promotional efforts and the renown of its screen images in the industry. The court found that the complaint sufficiently identified "specific screen images and elements that comprise the overall appearance that form the allegedly protected trade dress."
Conclusion
Courts are still developing a road map for a litigant to follow when it discovers that a competitor has copied distinctive elements of its Web site. A complaint based on claims of copyright and trade dress infringement can survive a motion to dismiss; however, the ultimate success of the case depends upon the extent of the copying. The courts tend to afford the defendant leeway with respect to similarities between the Web sites' format, layout and text. Where, however, the copying is indeed extensive, a plaintiff will have a higher likelihood of success under either theory.
Adapted from an article by Dyan Finguerra-DuCharme of WilmerHale that was originally
published in GC NewYork. To read the entire piece, click here.
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