Seattle Trademark Lawyer

Copyright Act preemption does not support a motion to dismiss a Lanham Act trade dress claim, though it does support dismissal of state Consumer Protection Act and unfair competition claims, the Western District decided January 18.

In Blue Nile, Inc. v. Ice.com, Inc., No. 06-1002RSL, 2007 WL 172613 (W.D. Wash.), Seattle-based Blue Nile, Inc., sued Ice.com for trade dress infringement on the alleged ground that Ice.com had copied the “overall look and feel” of Blue Nile’s diamond search Web pages. Both parties sell diamonds through the Internet.

Ice.com moved to dismiss Blue Nile’s trade dress claim on preemption grounds, arguing that it overlapped with Blue Nile’s copyright claims. Western District Judge Robert Lasnik denied the motion, finding it was too early to decide whether Blue Nile’s copyright claims would provide it with an adequate remedy. In the court’s words, “defendant’s 12(b)(6) motion to dismiss is not the appropriate procedural vehicle through which the Court should address the overlap between the Lanham Act and Copyright Act in the context of a claim attempting to protect a website’s ‘look and feel.’”

The court separately denied the request “in light of the presumption that Fed.R.Civ.P. 12(b)(6) motions should rarely be granted, especially when the claim involves a legal theory.” The court concluded:

“[P]laintiff seeks protection for the ‘look and feel’ of its website under the Lanham Act. This is a novel legal theory as evidenced by plaintiff’s resort to two unpublished district court cases to support its trade dress claim and the Court’s survey of recent scholarship regarding protection for the ‘look and feel’ of websites.”

However, the court granted Ice.com’s motion to dismiss as it applied to Blue Nile’s Consumer Protection Act and unfair competition claims because it found those claims were based on rights equivalent to those protected by copyright law.