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TORT REPORT: Intellectual property law must get creative to protect e-commerce websites

By Michael Aiken

Michael Aiken

What seems like eons ago, we waited patiently to hear the modem signal, “eeeeee  oooooo eeeeee ghghghghgh,” to welcome us to cyberspace. Now Netscape and AOL are long gone and most people are too busy compulsively browsing the Internet on their smart phones to contemplate how profoundly Web access has changed our lives, including how we do business.

Consumers now routinely use computer networks to search for and identify sellers, evaluate products and services, compare prices, and make purchases.  As smart phones, tablets and other devices continue to soar in popularity, e-commerce will only increase as businesses transform their traditional business processes into e-commerce processes in an effort to lower costs, improve customer service and increase productivity.

The proliferation of e-commerce creates new issues, however, for courts trying to protect the intellectual property related to e-commerce websites.

Certain elements of an e-commerce web site clearly fall within the subject matter of the Copyright Act, such as the text of a page, software code and certain creative graphical elements.  The original text, the software code and underlying controls may be protected as literary works; whereas the original and creative graphics elements may be protected by copyright as a pictoral or graphic work.  Although a registered copyright is not needed to enforce a common law copyright, small businesses should consider registering their original content when developing their e-commerce website to qualify for attorney’s fees incurred while preventing infringers.

While copyright law certainly offers some protection, the overall concept and impression of the website may itself be innovative and unique.  Consider, for example, the ever-changing layout and elegant interface of google.com.

A leading case, however, noted that “the Copyright Office and at least one author have commented that copyright protection may not cover the overall format, or the look and feel, of a website.”  Blue Nile Inc. v. Ice.com Inc., 478 F.Supp.2d 1240 W.D. Wash 2007.

The “look” of a website corresponds to the design; including the colors, shapes, layouts and typecases.  These elements can be readily digested by existing trade dress law.

The “feel” of a website is harder to describe and where courts will struggle to make distinctions.  It corresponds to navigation elements, including buttons, boxes, menus and hyperlinks, as well as the location and interface of these elements, which creates the overall mood or impression of the website.  Like distinctive packaging, the “feel” of a website is what permits users to become engrossed in the process of making a purchase that is essential to a business’s competitive advantage.

A few courts have found protection for the “look and feel” of a website under the Lanham Act.  Trade dress is a form of trademark protection that refers to the total image and overall appearance of a product and the manner in which the goods or services are presented to prospective purchasers.  To qualify for trade dress protection, the “look and feel” of a website must be distinctive, but nonfunctional.  In other words, it cannot make viewing goods on the website or facilitate taking orders on the site more efficient.  The site’s interface will not be considered “functional,” however, as long as there are alternative ways to design the website.

The third element requires there to be a likelihood of confusion, as the doctrine of trade dress is likely to be applied where the products are very similar in nature and compete with one another.  Claims for copyright infringement under the Copyright Act and claims for trade dress infringement are mutually exclusive.  In order to withstand preemption, the trade dress elements must be pled with particularity.

In sum, the “look and feel” of an e-commerce website is necessary to prevent one business from ripping off the “soul” of a rival’s e-commerce website without directly infringing on any copyrights.

Protecting the “look and feel” under trade dress law provides courts with greater flexibility to fashion the scope of protection needed in the particular marketplace.  The problem is that “look and feel” of a website is inherently subjective, and lawyers and judges (who may not be overly familiar with technology) may struggle to verbalize these intangible qualities of e-commerce websites.

Until a useful body of case law emerges, judges will follow the test made famous by Justice Potter Stewart to distinguish between art and hard-core pornography: “I know it when I see it.”

Michael Aiken is an associate attorney at McCoy Law Group SC, Waukesha. He can be reached at maiken@mccoylawgroup.us.

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