law does not protect an idea, a concept, or a generalized type of appearance.62 Analysis of functionality requires a court to balance the policy of protecting con- sumers from confusion against that in favor of free competition.63


A feature is consid-


ered functional if it is essential to the use or purpose of the product or if it affects the cost or quality of the product, or is the ac- tual benefit that the consumer wishes to purchase.64


An aesthetic design is function-


al only if it confers a significant benefit that cannot practically be duplicated by the use of alternative designs.65


The purpose be-


hind the doctrine of functionality aims to encourage competition by preventing ad- vances in functional design from being mo- nopolized.66


Accordingly, if a feature or de-


sign is considered functional, trade dress provides no protection.


The test for likelihood of confusion is whether a “reasonably prudent consum- er in the marketplace is likely to be con- fused as to the origin of the good or ser- vice bearing one of the marks.”67


To deter-


mine likelihood of confusion, courts gener- ally consider the following eight factors: (1) the strength of the mark (trade dress); (2) the similarity between the two marks (trade dress); (3) proximity of products in the mar- ketplace; (4) quality and price of defen- dant’s products; (5) use of marketing chan- nels; (6) actual confusion; (7) defendant’s good faith and intent; and (8) sophistica- tion of the buyers.68


Likelihood of confu-


sion is “the core element of trademark in- fringement”69


able, not merely possible.70 and must be proven as prob-


In evaluating a trade dress claim, the court must not focus on individual elements (which may, in some instances, be afford- ed copyright protection), but rather on the overall visual impression that the combina- tion and arrangement of those elements create.71


However, the focus on the overall


look of a product or design does not per- mit a plaintiff to dispense with an articula- tion of the specific elements that comprise its distinct dress.72


Although trade dress


that is decorative or artistic in nature may be harder to capture in words, the parties seeking protection must nonetheless be able to point to the elements and features that distinguish the trade dress.73


must offer a precise expression of the char- acter and scope of the claimed dress.74


Plaintiff As


stated by the Second Circuit Court of Ap- peals:


Without such a precise expression of the character and scope of the claimed trade dress, litigation will be difficult, as courts will be unable to evaluate how unique and unexpected the de- sign elements are in the relevant mar- ket. Courts will also be unable to shape narrowly-tailored relief if they do not know what distinctive combination of ingredients deserves protection. More- over, a plaintiff’s inability to explain to a court exactly which aspects of its [de- sign] merit protection may indicate that its claim is pitched at an improper lev- el of generality, i.e., the claimant seeks protection for an unprotectable style, theme or idea.75


Application of Trade Dress Protection to Websites


The application of a trade dress claim to the look and feel of a website is novel and the subject of evolving law. The first report- ed case addressing Lanham Act protection for the “look and feel” of a website is Blue Nile, Inc., v. Ice.com, Inc., a 2007 decision out of the Western District of Washington.76 The court in Blue Nile declined to grant a motion to dismiss the trade dress claim in light of the presumption against granting such motions “especially when the claim in- volves a novel legal theory,” noting that a claim for protection of the “look and feel” of a website under the Lanham Act is in- deed novel.77


The importance of the deci-


sion is simply in recognizing the theory of the claim.


Even as late as 2010, in a decision out of the Central District of California, Salt Op- tics, Inc. v. Jand, Inc., et al., a trade dress claim over the look and feel of a website was described as “relatively novel.”78


That


case explored the challenges of demon- strating intellectual property protection for the overall design of a website. The court noted that historically, trade dress was ap- plied to static and unchanging items.79 However, “the elements comprising a web- site’s overall ‘look and feel’ can be more difficult to pin down.”80


The Plaintiff in Salt


Optics, a seller of eyewear, claimed that its website was mimicked by defendant’s site as follows: defendant identically offset text, used the same background border color scheme, organized their products similar- ly, used models to highlight the eye glass- es, used magnification tools, used two pos- es to show the eyewear, and featured lo- gos with similar placement. Ultimately, the court held that while “Plaintiffs describe these elements with a certain amount of detail, absent … is any attempt to synthe- size these elements in order to describe the way that the listed elements, in con- junction, combine to create the website’s protectable ‘look and feel.’”81 Similarly, the Northern District of Cali- fornia in Sleep Science Partners v. Lieber- man, et al. dismissed a trade dress claim for protection of a website’s “unique look and feel” because plaintiff failed to clear- ly articulate which components of the web- site, although catalogued, constituted the purported trade dress, particularly in light of language suggesting that other unspeci- fied elements might also constitute part of the claim.82 The Western District of Pennsylvania in


Conference Archives, Inc. v. Sound Images Inc., explored the availability of intellectu- al property protection over the “look and feel” of websites in great detail.83


The case


serves as a useful guide for a trade dress analysis. First, the court explained the tech-


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


Protecting Your Company’s Website


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