Somewhere between a well-recognized website design like Google’s home page and a fledgling e-commerce venture built with free web building software lives most other websites.  Depending on the investment in the development and the operator’s design ethic, some websites may display unique, distinctive portals that are key to attracting and retaining customers.  For those with a unique look, it might be possible that the “trade dress” of their sites – the unique look and feel – could be protectable, and therefore useful in fending off competitors who copy their online presence.

This past August, a Louisiana district court joined courts in the Western District of Pennsylvania, the Western District of Washington, the Western District of Texas, and the Northern District of California in recognizing the viability of a trade dress infringement claim based on a website’s look and feel. Express Lien (“Zlien”) alleged that a competitor, National Association of Credit Management (“NACM”), a Maryland non-profit corporation, had mimicked the “look and feel” of its website and caused consumer confusion.  Express Lien Inc. v. National Ass’n of Credit Management Inc., 2013 WL 4517944 (E.D. La. August 23, 2013).

Generally speaking, the “trade dress” of a product concerns the total image of a product and may include features such as size, shape, color or color combinations, texture or graphics and it may be eligible for protection if it is nonfunctional and distinctive (or has acquired secondary meaning in the marketplace as being identified with its producer or source). To maintain an action for trade dress infringement, a plaintiff must allege that a competitor’s product design or packaging is likely to confuse consumers as to the product source. Most trade dress infringement actions involve the packaging or labeling of goods; however, in the last decade, courts have begun to entertain trade dress claims based upon website design or “look and feel.”

In this case, Zlien is an online business that provides information to the construction industry, such as legal forms and information on state lien statutes. Zlien alleged substantial investment in its website, including in the color, code elements and orientation. According to Zlien, the website design was widely recognized by consumers and helped drive sales. In its complaint, Zlien claimed that NACM copied Zlien’s stylistic choices of color, font, hyperlinks, and content, so much so that that the similarities were “likely to cause confusion” and caused Zlien to suffer damages to its profits, sales and business. Zlein also alleged copyright infringement, based on NACM’s use of content from the Zlien site’s pages.

In response, NACM filed a motion to dismiss Zlien’s complaint.

The court rejected NACM’s argument that Zlien failed to plead the necessary elements for trade dress infringement because it did not own a registered trademark in its website. The court held that trade dress protection is not dependent on registration. NACM’s argument that a comparison of the websites revealed no trade dress infringement also failed. The court found that alleging that there were some differences between the websites on corresponding pages was not significant enough to warrant dismissal at this early stage of the litigation.

The court also rejected NACM’s motion to dismiss Zlein’s copyright claims. NACM argued that the underlying information on Zlien’s website, state statutes, is not copyrightable, to which Zlien responded that the content of the website qualifies as a compilation. The court reasoned that NACM did not prove that the material at issue was not a compilation as a matter of law.

While this case is far from over, the Express Lien decision follows recent decisions that have allowed properly pleaded website related trade dress claims to survive dismissal.  See e.g., Sleep Science Partners v. Lieberman, 2010 WL 1881770 (N.D. Cal. May 10, 2010).

Meanwhile, if a company wants to preserve trade dress protection for a website it maintains or is building, the website trade dress needs to be distinctive and synonymous with the company or its products and services. Further, it is important that the trade dress elements are not functional or standard or essential to the operation of any website.

Once again, this is an example where the lawyers, designers and technologists in an organization should be in communication to ensure maximum protection for the online assets of the organization.