23 Apr 2015

New remedy for website imitation

'Trade dress' has usually referred to packaging but a recent court case extended its use to a website.

A Californian court found that the look and feel of a website was protectable trade dress Songquan Deng

The ‘look and feel’ of a website is protectable trade dress, a Californian court has ruled.  It is a decision which marks the emergence of a new field of law, according to Bobby Ghajar, partner at Pillsbury in Los Angeles. Trade dress – the overall look of a product or its packaging, which enables consumers to identify the product even if stripped of its brand name - has previously been recognised in regard to packaging design, restaurant décor, books and magazines.  But its use in protecting websites is new in law.

The judgment came from a federal court in the Northern District of California, in the case of Ingrid & Isabel LLC –v- Baby Be Mine LLC.  Both sell maternity clothes, and Ingrid & Isabel alleged that the defendants had copied the ‘look and feel’ of its website, pointing to similarities in the location of the logo, font, style, format and colour of the websites.  The court said that Ingrid had raised triable issues of fact.

Ingrid had to satisfy the court that the website has acquired ‘secondary meaning’ and is ‘non-functional’, and further that the defendant’s rival trade dress is likely to create consumer confusion. According to Ghajar, 'The court stated that evidence of intentional copying can in certain situations establish secondary meaning of the asserted website trade dress.  In other words, intentional copying can prove that consumers associate the look and feel of the website with the company or product itself. ' 

He said that the court seemed to suggest that 'evidence of intentional copying of a website, coupled with actual visible similarities in a website’s layout and design, is sufficient to maintain a trade dress claim at the pleading stage. Although these findings have no binding impact in other jurisdictions, it could influence courts in other areas to recognise that the claim exists, and other courts may look to these cases for guidance on how to assess these trade dress claims, Ghajar said.  It’s a development which could help to address the problem of website imitations which dog the luxury sector.

Further clarity

“Further clarity from the UK courts on the scope of the law of passing off to cover the ‘look and feel’ of a website would certainly be welcome,” says Alexandra McCready, associate at Schillings.  'One criticism of English law is that there is no specific law which deals with such sites – instead brands are forced to shoe-horn their claim into various legal tools,' she says.

Currently brand owners must resort to copyright or trademark laws, which have limited use in these circumstances.  “When it comes to imitation websites which are simply copying the ‘look or feel’ of a website, brand owners often struggle to show that a substantial part of a particular copyrighted work has been taken,” McCready says.

Passing off

The law of passing off - which prevents a trader from piggy-backing on another brand’s goodwill - goes beyond protection offered by trademarks, as it operates to protect the ‘goodwill’ of a business.  But it is difficult to bring a passing-off claim.  “They can be fairly expensive and time-consuming,” says McCready.  “A brand will be required to gather evidence that customers have been confused. For example, the imitation website could contain a confusingly similar trademark and it could also have copied the design, layout and/or ‘look and feel’ of the brand’s website.  Although it’s possible for a brand to bring a passing off action based solely on imitation of the ‘look or feel’ of a website, this is fairly unusual.” 

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