Xuan-Thao Nguyen, Should It be a Free for All? The Challenge of Extending Trade Dress Protection to the Look and Feel of Web Sites, 49 Am. U. L. Rev. 1233 (2001), https://digitalcommons.law.uw.edu/faculty-articles/899
domain name, web site, cross border commerce, e-commerce, website, trade dress, look and feel, design, unfair competition, trademark infringement, internet
In the e-commerce world, a company's web site becomes the primary communication center with the customer. The web site is where the company displays products, presents marketing materials, and provides sales and post-sales support. Increasingly, companies are spending valuable resources to build and maintain their web sites. With the rapid change in web technology, many web sites now feature more than just ordinary text. Color, clipart, graphics, designs, animations, and sounds are now part of the overall appearance of web sites. Yet copying an image from a web site is just one click away. What protection is available to the overall appearance of a web site? What protection do consumers of e-commerce expect to receive when they purchase a product from a web site? What if consumers are confused because two sites have the same appearance?
Consider a scenario where two innovative companies of modest size coexist in the network economy almost side-by-side without substantial friction. The first company's domain name is customdisc.com and the second company uses customdiscs.com for its domain name. It is perfectly legal for both companies to have such similar domain names. Both companies sell make-it-yourself music compact discs where visitors may create their own music compact discs containing their favorite songs. What if customdisc.com decided to adopt the overall appearance of customdiscs.com's web site? Would there be consumer confusion? Does customdisc.com's conduct result in an unfair competition? What legal rights does customdiscs.com have to protect itself from such unfair competition? Is this another “classic illustration of a new kind of litigation for which nothing in past experience comes even close to preparing trial judges and the advocates appearing before them?”
This Article analyzes the challenges created by the Internet environment, from the overall look and feel of web sites, to whether trade dress protection should be extended to web sites. An overview of trade dress law in Part I provides an understanding of the current expansion of trade dress protection. Part II discusses challenges to creating and maintaining the distinctive overall look and feel of a web site required for trade dress protection. A web site with an overall “look and feel” that overcomes the challenges of the Internet environment must pass the muster of trade dress law such as inherent distinctiveness, secondary meaning, and functionality. The inquiry, however, does not end there; the protectable “look and feel” of a web site is additionally subject to the likelihood of confusion test. Parts III, IV, V and VI discuss the four cornerstones of trade dress law, distinctiveness, secondary meaning, functionality, and likelihood of confusion, respectively, and apply these concepts to web sites and the Internet environment. The Article argues, in Parts IV and VI, that the traditional inquiries of secondary meaning and likelihood of confusion should be modified to be applicable within the Internet context. Part VII analyzes the harms and benefits of extending trade dress protection to web sites. The Article concludes that to encourage competition and protect both consumers and businesses on the Internet, trade dress protection should be extended to web sites with an inherently distinctive and non-functional overall look and feel.