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In the exploding marketplace that is the World Wide Web, there have been scores of innovators, such as Amazon.com and Priceline.com, that have transformed, or attempted to transform, the way we shop and do business. These innovators have sought to protect themselves by seeking and obtaining business method patents that give them exclusive rights over such new ways of doing business and the ability to enjoin anyone that uses their innovations without authorization. [FOOTNOTE 1]Other Web site operators may enjoy copyright protection for the graphical user interfaces of their sites, but the scope of protection may be limited. [FOOTNOTE 2]Further, companies with protectable trademarks or service marks may have remedies against the use of domain names that infringe trademark rights [FOOTNOTE 3]or for trademark infringement or unfair competition in the operation of the Web site. [FOOTNOTE 4] But what of the Web site operator whose site is copied but who does not have patent protection, a strong copyright claim or a claim based on infringement of a specific word, mark or logo to fall back on? One option, which does not yet appear to have been tested, is trade dress protection of the overall appearance of a Web site. Section 43(a) of the United States Trademark Act (Lanham Act) provides a claim for relief against the use of “any word, term, name, symbol, or device” that is likely to cause confusion as to source or sponsorship.” [FOOTNOTE 5]This broad definition covers trade dress, which ” ‘involves the total image of the product and may include features such as size, shape, color or color combinations, texture [or] graphics.’ ” [FOOTNOTE 6]Trade dress may consist of packaging, the design or look of a product or even the environment in which a product or service is dispensed, such as the decor or architecture of a restaurant chain or the look of a retail store. [FOOTNOTE 7] In the context of a Web site, trade dress could consist of particular graphics, including animated graphics, or details of the user interface on the home page and other pages within the site that give the site (or a series of sites operated by the same owner) a distinctive appearance. Even distinctive sound features of a Web site could form a part of its trade dress. [FOOTNOTE 8] WHY TRADE DRESS? Why would one need trade dress protection for the look of the Web site? After all, each domain name is unique, and a customer or potential customer who enters a merchant’s domain name in his browser will wind up at the site he is looking for. Say, however, that the customer, although remembering the site, has not bookmarked it and does not recall the domain name. This customer will likely try to search for the site by using his browser to retrieve sites dealing with a particular category of goods or services and scrolling through the retrieved sites on a trial and error basis until he finds the site he believes he is looking for. [FOOTNOTE 9] A direct competitor, seeing the success of one merchant’s foray into electronic commerce, may replicate the look and feel of that site in an attempt to confuse customers into believing they have arrived at the senior user’s site. That competitor might also use similar keywords or metatags or place banner ads on other sites to try to direct Web traffic intended for the more established merchant to his site. There are many hurdles to securing trade dress protection for a Web site. The limits of the available technology may restrict the manner in which certain features of a site can be presented to the public consistent with the ability to function, i.e., the ability to display and describe goods or services, and to enable a prospective purchaser to use or obtain them. Thus, many aspects of the Web site may be considered functional and hence unprotectable. As for a showing that the Web site’s trade dress acts as an indication of source, the vast breadth of the Web makes it unlikely that any but the most famous sites will develop sufficient fame to establish broad secondary meaning, although specialized Web sites with a loyal following may merit protection against close competitors. Nevertheless, with the vast possibilities for graphic design available to a Web site operator, a creative and innovative site design may come to function as a trademark, just as the architecture of International House of Pancakes and White Castle restaurants [FOOTNOTE 10]function as trademarks, instantly recognizable to hungry travelers. By the same token, travelers on the “information superhighway” may come to make similar associations with the distinctive architecture of the Web site. THE BASIC REQUIREMENTS To be protectable, a particular trade dress must be both “non-functional” and “distinctive.” A functional product feature is one which is the best, or one of a few superior ways to achieve the desired result, such that giving one party exclusive rights to it will hinder free and fair competition. Courts recognize two categories of distinctiveness — inherent distinctiveness and acquired distinctiveness, also known as “secondary meaning.” Inherent distinctiveness means, essentially, that the trade dress is of a unique or unusual type such that consumers will almost automatically understand it to be a source identifier, while the secondary meaning doctrine allows for protection of trade dress when, through advertising and sales success, consumers have come to associate the trade dress with a single, albeit unknown source. IS IT PACKAGE OR DESIGN? In determining whether a particular trade dress is distinctive, a court will try to determine whether the asserted trade dress functions as an indicator of source or origin, or whether its features are perceived simply as ornamental detail, the “bells and whistles” that make the Web site more inviting or aesthetically pleasing. As discussed above, a plaintiff can try to prove that its trade dress is either inherently distinctive or has developed secondary meaning. Under the Supreme Court’s recent decision in Wal-Mart Stores, Inc. v. Samara Brothers, Inc., [FOOTNOTE 11]however, only product packaging, not product design, can qualify for protection as inherently distinctive. Hence, it is essential to inquire whether Web sites will be classified as packaging or product design. This can be a complicated inquiry because, as with certain other types of trade dress, Web sites may not fall neatly into either category. For instance, restaurant decor may simply be considered the packaging in which the diner obtains a meal. Alternatively, it may be considered to be an integral part of the product, since it is part of the holistic dining experience that people seek, as opposed simply to the purchase of a meal. [FOOTNOTE 12] Web sites may present similar problems. To the extent that the user’s experience is an integral part of the service provided, such as with a search engine or an on-line casino, it could be argued that the site itself is the product, and that proof of secondary meaning should be required before the Web site can be afforded trade dress protection. If, however, the Web site can be characterized simply as a tool to obtain the desired product, whether it be goods, services or information, the look of the site is essentially virtual packaging for the retail services, which ought to be protectable upon a showing of either inherent distinctiveness or secondary meaning. If the trade dress qualifies as packaging, courts may attempt to determine whether the trade dress is inherently distinctive by inquiring whether it is arbitrary or suggestive [FOOTNOTE 13]and/or whether it meets the Federal Circuit’s Seabrooktest, which inquires “whether [the design] was a ‘common’ basic shape or design, whether it was unique or unusual in a particular field, whether it was a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods, or whether it was capable of creating a commercial impression distinct [from the products or services offered].” [FOOTNOTE 14]Consequently, the use of stock graphics on commercially available Web-building software programs will likely not suffice. To establish secondary meaning, “a manufacturer must show that, in the minds of the public, the primary significance of a product feature or term is to identify the source of the product rather than the product itself.” [FOOTNOTE 15]Factors that are considered by courts in evaluating secondary meaning include advertising expenditures, sales success, unsolicited media coverage that refers to the trade dress, attempts to plagiarize the trade dress, length and exclusivity of use of the trade dress, and consumer surveys linking the trade dress to a single source. [FOOTNOTE 16]Although it is often said that the burden of proof of secondary meaning is a difficult one, [FOOTNOTE 17]secondary meaning can often develop quite quickly, when a product becomes an “overnight sensation.” One technique commonly used to create consumer association of trade dress with the producer is through so-called “look for” advertisements, which make an express connection between the producer and the trade dress. Such advertising was very effective in persuading the Trademark Office to register the pink color of Owens-Corning fiberglass insulation, where the advertising featured the Pink Panther cartoon character and the phrase “Think Pink.” [FOOTNOTE 18]Also, consistency across different pages of the Web site, as well as in advertising and promotion thereof, may reinforce the site operator’s claims both that it adopted its trade dress for origin-indicating purposes and that consumers will naturally and automatically come to make this association. FUNCTIONALITY DOCTRINE The functionality doctrine, which is intended both to preserve competition and to avoid conflicts with patent law, provides that those features that are ” ‘essential to the use or purpose of the article or … affect[ ] the cost or quality of the article’ ” [FOOTNOTE 19]are not protectable under trademark law. Protection for such technological improvements is properly within the realm of patent law, which grants inventors a limited monopoly as an incentive to innovation, but ultimately dedicates the invention to the public domain, where it can be freely used by all competitors. As one court wrote, “overextension of trade dress protection can undermine restrictions in copyright and patent law that are designed to avoid monopolization of products and ideas.” [FOOTNOTE 20] Web site features likely to be found functional are those that are dictated by the available technology or that make the site easier to navigate, such as the various buttons that enable the user to select the goods or services that she wishes to purchase and to consummate the sale. However, a feature is not legally functional merely because it performs a function. So long as there are a number of equally effective alternative designs such that protection of the feature will not harm competition, it will be held nonfunctional. [FOOTNOTE 21]Further ” ‘a particular arbitrary combination of functional features, the combination of which is not functional, properly enjoys protection.’ ” [FOOTNOTE 22] A merchant seeking trade dress protection should avoid advertising that touts the utilitarian advantages of the features sought to be protected, such as ads stating that such features make the site more user-friendly. Courts generally credit such claims of functional superiority, [FOOTNOTE 23]although they can be overcome by a demonstration that such claims were mere puffery. [FOOTNOTE 24] LIKELIHOOD OF CONFUSION Once it is determined that the trade dress of the Web site is protectable, the plaintiff must still demonstrate a likelihood of confusion caused by the defendant’s Web site. The Internet environment will create certain unique issues for evaluating the traditional likelihood of confusion factors, which include the similarity of the trade dress, the proximity of the products, the channels of trade, the junior user’s lack of good faith, and the sophistication of the relevant consumer group. [FOOTNOTE 25] It can be argued the channels of trade are always identical and the products always proximate, because any user can access all sites simply by sitting at her computer. [FOOTNOTE 26]However, it is anticipated that a court will endeavor to determine the real likelihood that a typical user will encounter both sites in a similar context, i.e., whether a consumer is likely to retrieve both sites through the same or similar searches. Obviously, the more related the goods or services involved, the greater the likelihood that this will happen. Other aggravating factors would include the use of similar domain names or overlapping keywords or metatags, which could demonstrate the junior user’s wrongful intent. Conversely, even if defendant’s Web site is a virtual copy of plaintiff’s Web site, if the goods or services are disparate and users are unlikely to encounter them in a similar context, there will be no likelihood of confusion and no remedy under trade dress law. CONCLUSION A merchant seeking to protect its site against piracy by competitors would do well to heed the following words of advice. Endow your site with unique and distinctive features that are not merely cobbled together from a series of options presented by commercially available Web design software. Utilize these graphics consistently across your site [FOOTNOTE 27]and, to the extent commercially practicable, call particular attention to such graphics, not as possessing functional advantages, but as signs that, if a customer sees such graphics, she is in the right place. Glenn Mitchell is special counsel, and Kiersten Skog is an associate, at Stroock & Stroock & Lavan LLP. ::::FOOTNOTES:::: FN1See, e.g., Amazon.com, Inc. v. Barnesandnoble.com, Inc., 73 F. Supp. 2d 1228 (W.D. Wash. 1999). FN2See Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435 (9th Cir.), cert. denied, 513 U.S. 1184 (1995). FN3See 15 U.S.C. �1125(d) (the Anticybersquatting Consumer Protection Act) and the Uniform Dispute Resolution Policy promulgated by the Internet Corporation for Assigned Names and Numbers, www.icann.org. FN4See, e.g., Goto.com, Inc. v. The Walt Disney Co., 202 F.3d 1199 (9th Cir. 2000) (finding that the mark and logo used by Disney in connection with its “GO Network” search engine infringed the logo and mark used by plaintiff in connection with its GOTO.com search engine); Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999) (enjoining the use of confusingly similar domain name and metatags on the ground of “initial interest confusion”). FN515 U.S.C. � 1125(a)(1) (emphasis added). FN6 LeSportsac, Inc. v. K Mart Corp., 754 F.2d 71, 75 (2d Cir. 1985) (quoting John H. Harland Co. v. Clarke Cheeks, Inc., 711 F.2d 966, 980 (11th Cir. 1983). FN7See, e.g., Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992) (restaurant decor); Fuddruckers, Inc. v. Doc’s B.R. Others, Inc., 826 F.2d 837 (9th Cir. 1987) (same); BestCellars, Inc. v. Grapefinds at DuPont, Inc., 90 F. Supp. 2d 431 (S.D.N.Y. 2000) (interior design of wine store); Fotomat Corp. v. Cochran, 437 F. Supp. 1231 (D. Kan. 1977) (architecture of photo processing stores). FN8See, e.g., In re General Electric Broadcasting Co., 199 U.S.P.Q. 560, 563 (T.T.A.B. 1978) (granting registration for sound mark). FN9See Goto.com, 202 F.3d at 1206-1207 (discussing searching techniques). FN10See, e.g., White Tower System, Inc. v. White Castle System of Eating Houses Corporation, 90 F.2d 67 (6th Cir.), cert. denied, 302 U.S. 720 (1937). FN11 Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 , 120 S. Ct. 1339, 1346, (2000). FN12See Stuart Hall Co. v. Ampad Corp.,51 F.3d 780, 787-88 (8th Cir. 1995). But see Samara Bros., 529 U.S. at ___, 120 S. Ct. at 1346, in which Justice Antonin Scalia, without analysis, opined that restaurant decor constitutes packaging rather than product design. FN13In Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976), the Second Circuit articulated a text for determining whether word marks can be protectible without secondary meaning. Fanciful, arbitrary or suggestive marks are essentially inherently distinctive, while descriptive marks require secondary meaning and generic terms can never be protected. In dicta, the Court in Two Pesosendorsed the use of the Abercrombiespectrum in trade dress cases. 505 U.S. at 773. FN14 Seabrook Foods, Inc. v. Bar-Well Foods Ltd., 568 F.2d 1342, 1344 (C.C.P.A. 1977). The Trademark Trial and Appeal Board has recently held that the Seabrooktest still has vitality, at least in conjunction with Abercrombie. See In re Creative Beauty Innovations, Inc., 56 U.S.P.Q.2d 1203 (T.T.A.B. 1999). FN15 Inwood Labs, Inc. v. Ives Labs, Inc.,456 U.S. 844, 851 n.11 (1982). FN16See, e.g., Landscape Forms, Inc. v. Columbia Cascade Co., 117 F. Supp. 2d 360, 365-366 (S.D.N.Y. 2000). FN17See Tripledge Prod. v. Whitney Resources, Ltd., 735 F. Supp. 1154, 1161 (E.D.N.Y. 1990). FN18 In re Owens-Corning Fiberglass Corp., 774 F.2d 1116, 1125 (Fed. Cir. 1985). FN19 Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165 (1995), quoting Inwood Labs, Inc. v. Ives Labs, Inc.,456 U.S. 844, 850 n.10 (1982). FN20 Jeffrey Milstein, Inc. v. Greger, Lawlor, Roth, Inc., 58 F.3d 27, 32 (2d Cir. 1995). FN21 In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 1341-1342 (C.C.P.A. 1982). FN22 I.P. Lund Trading ApS v. Kohler Co., 163 F.3d 27, 37 (1st Cir. 1998) (citation omitted). FN23See In re I.P. Lund Trading ApS v. Kohler Co., 118 F. Supp. 2d 92, 112 (D. Mass 2000). FN24See In re Weber Stevens Products Co., 3 U.S.P.Q.2d 1659 (T.T.A.B. 1987). FN25See, e.g., Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492 (2d Cir.), cert. denied, 368 U.S. 820 (1961). FN26See Goto.com, 202 F.3d at 1207 (emphasizing this factor in internet context). FN27See, e.g., Regal Jewelry Co. v. Kingsbridge Int’l, Inc., 999 F. Supp. 477, 486 (S.D.N.Y. 1998) (rejecting trade dress claim in part because plaintiff did not make consistent use of claimed elements).

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