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Trade dress protection for 'look and feel' of the Website
Websites bear some similarities with screens, magazine covers and book jackets, both of which can be protected by the trade dress branch of trademark law. Trade dress is the total image and overall appearance of an item, and courts broadly define it to include features such as size, shape, colour, colour combinations, and graphics writes Purnima Kothe.

The Internet has changed the way the world does business. Today, millions of people from around the world do research, shop, communicate, make travel and entertainment plans, play games, and share information using the Internet.  A large number of individuals also maintain Web sites for personal and business reasons. As online commerce increases, businesses are spending more time and money to enhance their websites and businesses want sites that are not only easy to use, but also easy to recognize as that particular company's site. But can a company protect its investment in a successful and distinctive website by preventing a competitor from launching a website with a nearly identical visual appearance and user experience?

In one of a recent district court decision, BlueNile, Inc. v. Ice.com, Inc., 478 F. Supp. 2d 1240 (W.D. Wash. 2007) suggests that courts may be receptive to arguments that the “look and feel” of websites can be protected under trade dress law.

The Concept and its origin
Trade Dress is a trademark concept. Though the concept of trade dress originated in the U.S., law relating to trade dress can be traced to the common law doctrine prohibiting 'unfair competition'. Acting as a source identifier, trade dress is essentially an unregistered product trademark under Section 43(a) of the Lanham Act 15 U.S.C. 1125(a) of USA. Under the Act, the plaintiff in a trade dress action can seek trade dress protection for whatever products or packaging it sees fit. It is an expansive concept. In case of Wal-Mart Stores vs. Samara Bros. 529 U.S. 205, 120 S.Ct. 1339 (2000), trade dress has been defined as "...a category that originally included only the packaging, or 'dressing,' of a product, but in recent years has been expanded by many courts of appeals to encompass the design of a product." Thus, trade dress protects a product's image encompassing the total image or overall impression created by the product or its packaging.

The shape of a bottle containing shampoo can be trade dress. Similarly, the shape or ornamental features of a chair, its configuration, can constitute trade dress. Even the theme of a restaurant may be considered as a trade dress. Thus, in some instances the trade dress is reflected in the combination of packaging and labels and in another, it is the product configuration that constitutes the trade dress. Examples of trade dress include the shape of the Coca-Cola bottle, the front grill on the Rolls-Royce automobile, the shape of a classic Ferrari sports car, or the round wall-thermostat by Honeywell.

In order to be registered as a trademark or a service mark, the elements of the trade dress must be capable of being listed and defined so that the public knows the exact parameters of the claimed exclusive right. If the trade dress constituting a combination of elements is unique, unusual or unexpected, one can assume without evidence that it will be automatically perceived by customers of the goods or services in question as an indication of origin, as a trademark. However, if the trade dress is descriptive or inconspicuous, or not different from what others are using, it cannot be considered as inherently distinctive and can be protected only on proof of secondary meaning or acquired distinctiveness.

The test of deceptive similarity in case of trade dress is whether there is a likelihood of confusion resulting from the totality of image and impression created by the two trade dresses. The US Supreme Court has held that the test is one of likelihood of confusion to the 'ordinary purchaser in the exercise of ordinary care and caution in such matters'. It has been further held that it is the casual or ordinary non-discerning buyer who is to be protected and to such a buyer the test is one of general overall impression gained at a glance.

Application of the concept in India
In view of the recent developments in trading and commercial practices and to give effect to important judicial pronouncements, a need for simplification and harmonization of trademark management systems was felt. The new Trade Marks Act, 1999, which came into force in September 2003 remains a natural fall out of this realization.

To understand the new legal definition of what a trade mark may consist of, it is useful to read the new Trade Marks Act, where the shape of goods, packaging or combination of colours or any combination thereof have now come under preview of the definition of the Act. A package is now protected under the Act, which includes any case, box container, receptacle, vessel, casket, bottle, wrapper, label, band, ticket, reel, frame, capsule, cap, lid, stopper, and cork.

In addition, the "mark" has been defined to include a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof. Thus, the new definition of trademark in India broadly encompasses almost all the elements of trade dress under the US law.

Ingredient for Protection of Trade-dress
Websites bear some similarities with screens, magazine covers and book jackets, both of which can be protected by the trade dress branch of trademark law. Trade dress is the total image and overall appearance of an item, and courts broadly define it to include features such as size, shape, colour, colour combinations, and graphics. Just as a traditional trademark uses a word to identify the source of a product, trade dress uses a visual impression to create that source association.

To be protectable, trade dress include

 (1) Distinctiveness
Like unregistered trademarks, an unregistered trade dress is entitled to protection if it is distinctive, either inherently or through an acquired distinctiveness (or secondary meaning). If an unregistered trade dress is inherently distinctive, there is no need to prove that the dress has a secondary meaning; if the dress is descriptive, it is protectable upon a showing of secondary meaning; and if it is generic, it is not entitled to protection.

(2) Non-functionality
In addition to being distinctive, in order to be entitled to protection, the trade dress cannot be functional. In the trade dress context, to be functional, a feature must be one that "is essential to the use or purpose of the article or that affects the cost or quality of the article." In the case of wood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844 (1982). "A design feature of a particular article is 'essential' only if the feature is dictated by the function to be performed; a feature that merely accommodates a useful function is not enough." In  Warner Brothers, Inc. v. Gay Toys, Inc.,724 F.2d 327, 331 (2d Cir. 1983) "The fact that a design feature performs a function does not make it essential to the performance of that function; it is instead the absence of alternative constructions performing the same function that renders the feature functional.” Depending upon the circuit in which a trade dress dispute is litigated, non-functionality may be part of the plaintiff's prima facie case.

(3) Registration Standards
The statutory requirements for registration of a trade dress are the same as those for traditional word or logo marks. As a practical matter, practitioners should expect descriptiveness rejections to all applications for trade dress. Functionality rejections are also common. The costs associated with overcoming these rejections, by proving secondary meaning (for a principal register registration) and non-functionality (typically by evidencing alternative designs), can be significant and therefore, must be weighed against the benefits of obtaining the required registration.

Trade dress law is long established, but website owners and their counsel are just beginning to explore how trade dress law's focus on protecting consumers from confusion can be applied to websites.

Facts of BlueNile vs. Ice.com
The plaintiff and defendant Ice.com Inc. were direct competitors, each of which sold diamonds and fine jewellery to the public over the Internet.  The Plaintiff sold its jewellery at three web sites, including the web site it operates at the domain bluenile.com.  Ice.com also sold its jewellery over the internet at a web site it operates at the domain diamond.com.  Defendant Odimo was a former owner and operator of the diamond.com web site. In this case, an owner and operator of website ice.com, mimicking the look and feel of BlueNile's website.

Trade Dress Look and Feel claim not preempted by Copyright Act
The plaintiff commenced this action, claiming that the defendants had copied portions of plaintiff's web site during the creation of their own.  Plaintiff asserted copyright infringement claims arising out of the alleged copying by defendants of portions of plaintiff's web site protected by copyright.

Blue Nile also asserted that defendants had copied the "look and feel" of plaintiff's web site and were accordingly guilty of trade dress infringement in violation of the Lanham Act. 

The defendants moved to dismiss the plaintiff's Lanham Act claim, arguing it was preempted by the Copyright Act.  According to the Court, "courts have limited the application of the Lanham Act in areas traditionally occupied by copyright, or where the copyright laws 'provide an adequate remedy.'"  The Court, at this stage of the proceeding, denied defendants' motion.  Based on the factual record before it, the Court held it could not determine if the Copyright Act provided a sufficient remedy for the alleged wrong at issue - namely copying the "look and feel" of plaintiff's website.  In reaching this conclusion, the Court noted that "the Copyright Office has commented that copyright protection may not cover the overall format, or the look and feel, of a web site." 

Cited in support of this proposition was Darden v. Peters, 402 F. Supp. 2d 638, 644 (E.D.N.C. 2005) where the Court upheld the Copyright Office's denial of copyright registration for a web site.  In reaching this result, the Darden court quoted the copyright examiner's determination that "protection for the overall format of a web page is inconsistent with copyrightability."  The court held that there was inadequate factual development to permit it to resolve the preemption question at this time, and accordingly denied defendants' motion to dismiss the trade dress claim.

A well recognized presence on the Internet has proven a very valuable commodity for individuals and businesses. Web site designers are typically charged with making the most appealing site they can create. Once a person or company has a distinctive Web site, it is natural to try to prevent others from copying it and thereby affecting the popularity or credibility of the first site. One way to protect the look of a web page is to bring a trade dress infringement suit. As in above case decision which indicates that courts may look favorably on trade dress infringement claim for the look and feel of a website where requirements of non-functionality, distinctiveness, and confusion clearly have been met. Meeting these requirements may be difficult. For example, distinctiveness may be hard to establish for relatively unpopular or unoriginal websites. Nonetheless, each case will turn on its particular facts. However, this is a very recent remedy, and courts are likely to have little experience in handling the claim.
PURNIMA KOTHE is a 4th year B.A.LL.B (Hons) student of National Law Institute University, Bhopal.

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