Imagine that one of your employees or a friend tells you to look at competitor’s website. You bring up the site on your computer and the site looks very familiar, in fact too familiar. The graphics, layout and colors are just like your site. The look and feel of your website has obviously been copied by the competitor. This is infuriating, particularly given the time and money you expended developing your site, and the success you have had with it. The competitor was careful not to steal your content (photos, designs, copy), and isn’t using your trademarks. However, the competitor had its web developer copy the look and feel of your website.
What to do? Since the competitor did not steal any content, you can’t sue for copyright infringement, and there is no infringement of your trademarks. In the past, you might not be able to take legal action but a recent court decision now allows for legal action infringement of what is called trade dress for copying the graphics, colors and layout of a website or a computer application.
What is trade dress? Trade dress is a sub-class of trademark law. Most persons are familiar with trademarks which are the names and logos under which businesses sell their services or products. Trademarks can be registered. The use of a trademark that is likely to cause confusion with consumers is classic infringement. However, trademark law is broader is in its protections. Federal trademark law prohibits anyone from using symbols, devices, words and terms from giving a false designation of origin that will likely cause confusion to consumers.
Courts have interpreted “false designation of origin” to include the look and feel of product colors and places of business. This is trade dress. The U.S. Supreme Court held that a Mexican fast-food chain could sue another Mexican fast-food chain after the second chain copied the décor and colors of the first chain’s restaurants. Trade dress has been applied to such diverse things as the color of dry cleaning machine covers and purses.
In order to successfully bring a legal action for infringement of trade dress, the following must be true:
- The claimed trade dress is inherently distinctive.
- There is likelihood of confusion among consumers if the defendant uses the claimed trade dress.
- The claimed trade dress non-functional.
Trade dress is functional when it is essential to the purpose or use of the article or affects the cost or quality of the article. For instance, certain caps on pens have been found not be to trade dress.
Until recently, the courts were undecided as to whether or not the visual layout of a product or a website as seen on a computer screen could be considered trade dress. Last month, the Federal Ninth Circuit Court of Appeal, in the case Millenium Labs v. Ameritox determined that a visual layout of a digital report could be considered trade dress. The issue was whether or not the look and feel of digital report was functional.
The parties, Millennium and Ameritox, are direct competitors who both sell urinalysis services to healthcare providers. Between late 2010 and April 2012, both companies developed new graphical formats to report their test results. After Millennium released a sample of its new report design, Ameritox redesigned its report using graphical elements similar to Millenium, which it released in March 2012. Millenium filed suit against Ameritox the following month, alleging that Millenium had copied its design. Ameritox filed a motion to dismiss the complaint on the basis that the trade dress claimed by Millenium was not protectable because it was functional.
The court held that even when it is generally functional to use some system to display the test results, it is still a question of fact whether the particular design in question is functional. This ruling is significant because it allows a trade dress claim for the infringement for the look and feel of digital graphs, reports, layouts and designs.
The take-away for business owners and developers is to think about how to make website designs, digital reports, computer applications unique and distinctive. The more unique and distinctive, the greater the legal protection. Also, don’t use copy someone else’s design, particularly a competitor.
Eric Morton is Principal Attorney of Clear Sky Law Group in Carlsbad and Adjunct Professor of Trademark Law at California Western School of Law (firstname.lastname@example.org). Kellie Delaney is an Attorney with Clear Sky (email@example.com).