Court Rules on Copyright Preemption of Trade Dress Infringement and State Law Claims

Plaintiff Blue Nile, Inc. and Defendant both own and operate online diamond and fine jewelry retail sales businesses. Plaintiff alleged that Defendant copied both certain elements of Plaintiff’s website in violation of the Copyright Act and the “overall look and feel” of Plaintiff’s diamond search webpages. Under Fed. R. Civ. P. 12(b)(6), Defendant moved to dismiss Plaintiff’s claim of trade dress infringement under the Lanham Act and three state law claims—violation of Washington’s Consumer Protection Act, unfair competition, and unjust enrichment and restitution—on the grounds that these were preempted by Plaintiff’s copyright claims. The District Court for the Western District of Washington (i) denied Defendant’s motion to dismiss on Plaintiff’s trademark infringement claim but (ii) granted Defendant’s motion to dismiss on the three state law claims.
First, the court analyzed Defendant’s motion to dismiss Plaintiff’s trade dress infringement claim under § 1125(a) of the Lanham Act. Specifically, Plaintiff alleged that Defendant had copied the “look and feel” of its website, a claim characterized by the court as a novel legal theory. Defendant asserted that Plaintiff’s trade dress claims merely repeated its copyright claims; thus their copyright claims provided an adequate remedy. Plaintiff, on the other hand, countered that since the “look and feel” of Plaintiff’s website are not copyrightable, Plaintiff’s Lanham Act claim does not overlap with its copyright claims. The court refused dismissal, explaining that the novelty of Plaintiff’s trade dress claim required further factual development before the court could reach the Defendant’s conclusion. The court also noted the strong presumption against granting 12(b)(6) motions on claims involving novel legal theories.

Next, the court addressed Defendant’s motions to dismiss on Plaintiff’s state law claims on the basis of copyright preemption. Following the Ninth Circuit’s two-part test, the court asked (i) whether the work qualifies as copyrightable subject matter under 17 U.S.C. §§ 102-103 and (ii) whether the rights granted by the state law and 17 U.S.C. § 106 of the Copyright Act are equivalent. On the first inquiry, the court found Plaintiff’s insistence that its claim regarding infringement of the “look and feel” of its website problematic since Plaintiff expressly included copyright allegations within its state law claims. The court was also not persuaded by Plaintiff’s argument that a website’s “look and feel” is not copyrightable simply because it is not listed in 17 U.S.C. § 102(a). Furthermore, the court acknowledged that other circuits have held works to be both unprotected by 17 U.S.C. § 102(b) while still within the category of copyrightable subject matter for purposes of preemption.
Concluding that the “look and feel” of Plaintiff’s website is “within the subject of copyright,” for the purposes of a preemption analysis, the court then examined whether Plaintiff’s state law claims passed the second part of the Ninth Circuit’s test. To survive preemption, the rights protected under the state law must be “‘qualitatively different’” or “contain an ‘extra element’” from those granted by copyright protection. The court held that Plaintiff’s claims based on (i) Washington’s Consumer Protection Act (CPA), (ii) unfair competition, and (iii) unjust enrichment and restitution laws are all preempted by Plaintiff’s copyright claims. Citing the Ninth Circuit’s decision in Kodadek v. MTV Networks, Inc., 152 F.3d 1209 (9th Cir. 1998), the court explained that by incorporating its copyright claims by reference into its state law claims, Plaintiff relied only on the same allegations expressed in these copyright claims. Therefore, Plaintiff’s state law claims were preempted by its copyright claims.

In conclusion, the court (i) denied Defendant’s motion to dismiss Plainitff’s cause of action for trade dress infringement under 15 U.S.C. § 1125(a) of the Lanham Act and (ii) granted Defendant’s motion to dismiss Plaintiff’s Washington CPA, unfair competition, and unjust enrichment and restitution claims, all based in state law.

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