Preemption


The Copyright Act bars assertions of any “equivalent right in any such work un- der the common law or statutes of any State.”23


To determine whether there is


preemption courts consider whether “(1) the work upon which the non-copyright claim is based is protected by the Copy- right Act; (2) the non-copyright claim in- volves acts that violate federal copyright law, i.e., ‘acts of reproduction, adaptation, performance, distribution, or display’; and (3) the non-copyright claim does not con- tain any ‘extra elements that make it quali- tatively different from a copyright infringe- ment claim.’”24


While the Act does not ex-


pressly preempt other federal law, the U.S. Supreme Court has explained the distinc- tion between copyright claims and trade dress or false designation of origin claims under the Lanham Act, and held that the Lanham Act must not be used to assert a copyright claim.25


In other words, if the al-


legation is that an original and copyright- able work is illegally copied, the remedy lies exclusively with the Copyright Act.26 That is why any claim for protection of a website should begin with copyright law. If the subject matter falls within the purview of the Copyright Act, the claim must be brought under that Act.


Application of Copyright Protection to Websites


A threshold issue is the extent to which the Copyright Act protects websites. It is clear that the creative content of a web- site—i.e., sufficiently original text, photo- graphs, graphics, source code—is copy- rightable to the same extent that such ma- terial is published in any medium. Whether a website as a whole is copyrightable as a single work is another question. The U.S. Copyright Office has provided some (albeit sparse) guidance on this issue stating that copyright applications should not describe the work using terms that are not protect- ed by copyright or that are ambiguous


such as “website,” “interface,” “format,” “layout,” “design,” or “look of website.”27 This guidance suggests that the overall ap- pearance of a website or its “look and feel” is not protected.


Indeed, such an application was denied by the Copyright Office, resulting in a chal- lenge brought by the applicant in Darden v. Peters.28


There, the applicant sought pro- tection for a website, which he described “as a ‘technical drawing’ to which the au- thor had added ‘graphics, text, colors and arrangement.’”29


The Copyright Office de-


nied the registration as being too broad and lacking sufficient originality stating that “‘protection for the overall format of a webpage is inconsistent with copyrightabil- ity.’”30


It was further “explained that ‘the longstanding practice of the Copyright Of- fice is to deny registration of the arrange- ment of elements on the basis of physi- cal or directional layout in a given space, whether that space is a sheet of paper or a screen meant for information displayed digitally.’”31


The court upheld the decision


of the Copyright Office.32 Other courts have considered the issue in the context of infringement actions. In a 2003 case, the plaintiff in Crown Awards, Inc. v. Trophy Depot, argued that copyright protection extended to the “‘product line tabs at the top of the [web]page,’ a three- frame design that includes a ‘thumbnail’ picture of the free catalogue on the upper right hand side and the specific wording of the website.”33


The court disagreed hold-


ing that “[t]he mere use of a three frame design, the use of promotional language … are insufficient to create an ‘original’ com- pilation of elements that forms the basis for copyright protection.’”34


In 2004, the court


in Nautical Solutions Marketing, Inc. v. Boats.com likewise held that the only simi- larities between the two websites at issue involved unprotectable elements relating to the general layout and presentation of the websites.35


More recently, in 2010, the


court in Conference Archives, Inc., v. Sound Images, Inc., surveyed the landscape and


concluded that “[w]hile individual elements of the [] website may receive copyright protection, the website as a whole is be- yond the scope of the subject matter of the Copyright Act.”36 Based on the reported decisions thus far, a copyright claim concerning the overall layout and design of a website would be weak. However, creative content can be protected. Once it is established that cer- tain elements are protectable, courts must grapple with how to compare websites un- der the “substantial similarity” analysis giv- en that websites as a whole are not pro- tectable under the Copyright Act. To determine substantial similarity, courts apply the “ordinary observer test,” which asks whether “‘an average lay ob- server would recognize the alleged copy as having been appropriated from the copy- righted work.’”37


The difficulty in applying


this test to compare websites is that it may be difficult to separate what is protected from what is not: there is a risk that sites may be deemed substantially similar based on an overall view, which is not protected under copyright law. For example, popu- lar travel sites travelocity.com and expedia. com share many similarities. Across the top of each page, there are links to sections of the site for vacation packages, hotels, cars, flights, cruises, and activities. Each site also uses a similar search tool for flights and hotels. If the “ordinary observer” is asked whether the websites are substantially sim- ilar, the answer is most likely yes, but the similarities may well derive entirely from unprotectable elements. There are differing views among courts as to how this test is applied for works, such as websites, which have both protect- able and unprotectable elements. In the Ninth Circuit, courts apply a two-step pro- cess, which includes an extrinsic and an in- trinsic test.38


The extrinsic test first requires


that the court, “using analytical dissection, and, if necessary, expert testimony … de- termine whether any of the allegedly simi- lar features are protected by copyright.”39 The rationale for this approach is that “[a] comparison of protectable elements, as opposed to the work as a whole, ensures that unprotectable expression does not form the basis for a determination of sub- stantial similarity, thereby ‘confer[ring] a monopoly of the idea upon the copyright owner.’”40


The Second Circuit employs a slightly dif-


ferent approach. While the court has noted that a “more discerning” analysis should be used when applying the ordinary observer test to a work with both protectable and unprotectable elements, it has “disavowed any notion that ‘we are required to dis- sect [the works] into their separate compo- nents, and compare only those elements which are in themselves copyrightable.’”41


28 THE VERMONT BAR JOURNAL • WINTER 2012 www.vtbar.org


Protecting Your Company’s Website


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