Blue Nile, Inc. v Ice.com Inc.
Case Name: Blue Nile, Inc. v. Ice.com, Inc.
Citation: Blue Nile, Inc. v. Ice.Com, Inc., 478 F.Supp.2d 1240 (W.D. Wash. 2007)
Court: U.S. District Court – Western District of Washington
Coram: Honourable Robert S. Lasnik, United States District Judge, United States District Court for the Western district of Washington.
Abstract
This case note examines Blue Nile, Inc. v. Ice.com, an early decision regarding whether trade dress actions to protect the “look and feel” of a website are maintainable . The dispute arose from plaintiff Blue Nile’s allegations that Ice.com exactly replicated certain elements of their website. The court ultimately allowed the case to move forward due to its novel subject matter. The merits of their decision in the context of early digital environments and bearings on future cases are discussed here.
Introduction
The mid-2000s were a big time for the internet. It was prime Web 2.0 – the launch of smartphones, social networking platforms gaining steam, the boom of online advertising. Net users were shifting from being mere consumers of content to the ones interacting, posting and shaping it into its current form. Naturally, this created new dilemmas for the law. In intellectual property specifically, the questions involved mapping concepts like copyright, trademarks and patents onto intangible software. Blue Nile Inc. v Ice.com is a notable example. Trade dresses are the aggregate appearance of a product, potentially including size, shape, packaging, colour combinations and more, that distinguish it from other products. In this case, Blue Nile alleged that Ice.com had infringed its website’s trade dress. The court had to determine whether the overall look and feel of a website could warrant a trade dress.
Facts
Blue Nile, Inc v. Ice.com was decided by the U.S. District Court for the Western District of Washington on January 18, 2007. Plaintiffs Blue Nile Incorporated owned a business in which they sold jewellery and diamonds on various web domains. Defendant Ice.com was involved in the same field, and operated its website online on the domain www.diamond.com purchased from the second defendant, Odimo Inc. The plaintiffs alleged that Ice.com had copied the overall look and feel of the website, constituting trade dress infringement under the Lanham act, and filed seven additional causes of action. The defendants moved for all claims to be dismissed, citing there was no point in filing both trade dresses and copyrights to protect the same part of the product. The court granted and denied its motion in part. It’s worth noting that Blue Nile chose not to carry forward the litigation, and both parties privately settled the matter.
Issues
Was filing a claim for both trade dress and copyright infringement redundant? Does the “look and feel of a website” fall under the purview of the Copyright Act, or does it warrant protection from the Lanham Act as well? The novelty of this claim arose from its digital nature. Answering these questions was necessary to determine whether Ice.com had committed trade dress infringement and set the tone for future cases related to whether web designs were protected under a trade dress.
Reasoning
The court allowed the trade dress claim to proceed by denying the defendant’s motion to dismiss. They felt that the novelty of the claim warranted further inquiry before the suit could prevail or be disposed. Ice.com’s website did have similarities to that of Blue Nile. But the alleged similarities included frames, vertical sliders and search bars – which are standard to any website now. Distinctiveness and non-functionality are two essential features to claim a trade dress. It was challenging to apply these criteria to a relatively new form of media in the 2000s. Could distinctiveness include colour schemes, picture placement, fonts? And the search bars and sliders were simultaneously stylized and had a clear use. Could they be categorised as non-functional? Since all of these questions required a more thorough examination of facts to conclude, the court denied the motion to dismiss in part, allowing the claim to proceed.
Critique
There were glaring contradictions within the plaintiff’s case. Most notably, the plaintiffs did not elucidate the elements of its trade dress with specificity. Considering a distinctive look and feel must be clearly described, it would’ve been easy to dismiss the motion. The plaintiffs also argued that the court might consider their copyright claim non-maintainable since software was outside its purview. According to Johnson Controls, Inc. v. Phoenix Control Systems Inc, this is untrue, and software can be copyrighted contingent on the facts of the case. The judge’s decision to allow the motion despite these structural flaws demonstrates commendable foresight.
Impact
There was no clear resolution to the issues discussed because Blue Nile decided to privately settle with Ice.com instead of going to trial. But by being the first of its kind and stating that a trade dress infringement case could potentially apply to other cases, it still had an impact on similar actions that followed.
Later in the year came SG Services Inc. vs God’s Girls Inc, et al. The court denied trade dress protection for the plaintiff’s website through summary adjudication because of the plaintiff’s inability to provide solid evidence for distinctiveness and non-functionality. But echoing Blue Nile, a website could still potentially be considered a trade dress. In Lepton Labs LLC v W4 LLC, the appellant’s motion for infringing the look and feel of the website was granted. Blue Nile paved the path for serious consideration for trade dress infringement cases on websites.
Conclusion
It goes to show that the law often lags behind emerging cases, especially with the rise of technology. It’s not possible for courts to predict the evolution, its pace or all its consequences. What it can do is leave the door for the law to evolve open, to embrace changes as they come and know that more will, rather than sticking to what has been said before or defining how to respond to these changes too early.
References
Reese, ‘Defining the Elements of Trade Dress Infringement under Section 43(A) of the Lanham Act’ Texas Intellectual Property Law Journal (1994) https://tiplj.org/wp-content/uploads/Volumes/v2/v2p103.pdf
Viral Solutions, ‘History & Definition of Web 1.0, 2.0, and 3.0 – A Comprehensive Review’ (16 Mar 2022) https://viralsolutions.net/definition-of-web-1-0-2-0-and-3-0/
Cyber Cultural, ‘What the Internet was like in 2007’ (19 Jul 2024) https://cybercultural.com/p/internet-2007/
Pew Research, ‘Riding the Waves of Web 2.0’ (5 Oct 2006) https://www.pewresearch.org/internet/2006/10/05/riding-the-waves-of-web-2-0/
Blue Nile, Inc. v. Ice.com, Inc. (2007) 478 F. Supp. 2d 1240
Lepton Labs LLC et al v. W4 LLC (2014) 2:14-cv-04836
SG Services Inc v. God’s Girls Inc, et al (2007) WL 231543
Can Websites “Wear” a Trade Dress?
Siyona Shetty
Maharashtra National Law University, Mumbai
Blue Nile, Inc. v Ice.com Inc.
Case Name: Blue Nile, Inc. v. Ice.com, Inc.
Citation: Blue Nile, Inc. v. Ice.Com, Inc., 478 F.Supp.2d 1240 (W.D. Wash. 2007)
Court: U.S. District Court – Western District of Washington
Coram: Honourable Robert S. Lasnik, United States District Judge, United States District Court for the Western district of Washington.
Abstract
This case note examines Blue Nile, Inc. v. Ice.com, an early decision regarding whether trade dress actions to protect the “look and feel” of a website are maintainable . The dispute arose from plaintiff Blue Nile’s allegations that Ice.com exactly replicated certain elements of their website. The court ultimately allowed the case to move forward due to its novel subject matter. The merits of their decision in the context of early digital environments and bearings on future cases are discussed here.
Introduction
The mid-2000s were a big time for the internet. It was prime Web 2.0 – the launch of smartphones, social networking platforms gaining steam, the boom of online advertising. Net users were shifting from being mere consumers of content to the ones interacting, posting and shaping it into its current form. Naturally, this created new dilemmas for the law. In intellectual property specifically, the questions involved mapping concepts like copyright, trademarks and patents onto intangible software. Blue Nile Inc. v Ice.com is a notable example. Trade dresses are the aggregate appearance of a product, potentially including size, shape, packaging, colour combinations and more, that distinguish it from other products. In this case, Blue Nile alleged that Ice.com had infringed its website’s trade dress. The court had to determine whether the overall look and feel of a website could warrant a trade dress.
Facts
Blue Nile, Inc v. Ice.com was decided by the U.S. District Court for the Western District of Washington on January 18, 2007. Plaintiffs Blue Nile Incorporated owned a business in which they sold jewellery and diamonds on various web domains. Defendant Ice.com was involved in the same field, and operated its website online on the domain www.diamond.com purchased from the second defendant, Odimo Inc. The plaintiffs alleged that Ice.com had copied the overall look and feel of the website, constituting trade dress infringement under the Lanham act, and filed seven additional causes of action. The defendants moved for all claims to be dismissed, citing there was no point in filing both trade dresses and copyrights to protect the same part of the product. The court granted and denied its motion in part. It’s worth noting that Blue Nile chose not to carry forward the litigation, and both parties privately settled the matter.
Issues
Was filing a claim for both trade dress and copyright infringement redundant? Does the “look and feel of a website” fall under the purview of the Copyright Act, or does it warrant protection from the Lanham Act as well? The novelty of this claim arose from its digital nature. Answering these questions was necessary to determine whether Ice.com had committed trade dress infringement and set the tone for future cases related to whether web designs were protected under a trade dress.
Reasoning
The court allowed the trade dress claim to proceed by denying the defendant’s motion to dismiss. They felt that the novelty of the claim warranted further inquiry before the suit could prevail or be disposed. Ice.com’s website did have similarities to that of Blue Nile. But the alleged similarities included frames, vertical sliders and search bars – which are standard to any website now. Distinctiveness and non-functionality are two essential features to claim a trade dress. It was challenging to apply these criteria to a relatively new form of media in the 2000s. Could distinctiveness include colour schemes, picture placement, fonts? And the search bars and sliders were simultaneously stylized and had a clear use. Could they be categorised as non-functional? Since all of these questions required a more thorough examination of facts to conclude, the court denied the motion to dismiss in part, allowing the claim to proceed.
Critique
There were glaring contradictions within the plaintiff’s case. Most notably, the plaintiffs did not elucidate the elements of its trade dress with specificity. Considering a distinctive look and feel must be clearly described, it would’ve been easy to dismiss the motion. The plaintiffs also argued that the court might consider their copyright claim non-maintainable since software was outside its purview. According to Johnson Controls, Inc. v. Phoenix Control Systems Inc, this is untrue, and software can be copyrighted contingent on the facts of the case. The judge’s decision to allow the motion despite these structural flaws demonstrates commendable foresight.
Impact
There was no clear resolution to the issues discussed because Blue Nile decided to privately settle with Ice.com instead of going to trial. But by being the first of its kind and stating that a trade dress infringement case could potentially apply to other cases, it still had an impact on similar actions that followed.
Later in the year came SG Services Inc. vs God’s Girls Inc, et al. The court denied trade dress protection for the plaintiff’s website through summary adjudication because of the plaintiff’s inability to provide solid evidence for distinctiveness and non-functionality. But echoing Blue Nile, a website could still potentially be considered a trade dress. In Lepton Labs LLC v W4 LLC, the appellant’s motion for infringing the look and feel of the website was granted. Blue Nile paved the path for serious consideration for trade dress infringement cases on websites.
Conclusion
It goes to show that the law often lags behind emerging cases, especially with the rise of technology. It’s not possible for courts to predict the evolution, its pace or all its consequences. What it can do is leave the door for the law to evolve open, to embrace changes as they come and know that more will, rather than sticking to what has been said before or defining how to respond to these changes too early.
References
Reese, ‘Defining the Elements of Trade Dress Infringement under Section 43(A) of the Lanham Act’ Texas Intellectual Property Law Journal (1994) https://tiplj.org/wp-content/uploads/Volumes/v2/v2p103.pdf
Viral Solutions, ‘History & Definition of Web 1.0, 2.0, and 3.0 – A Comprehensive Review’ (16 Mar 2022) https://viralsolutions.net/definition-of-web-1-0-2-0-and-3-0/
Cyber Cultural, ‘What the Internet was like in 2007’ (19 Jul 2024) https://cybercultural.com/p/internet-2007/
Pew Research, ‘Riding the Waves of Web 2.0’ (5 Oct 2006) https://www.pewresearch.org/internet/2006/10/05/riding-the-waves-of-web-2-0/
Blue Nile, Inc. v. Ice.com, Inc. (2007) 478 F. Supp. 2d 1240
Lepton Labs LLC et al v. W4 LLC (2014) 2:14-cv-04836
SG Services Inc v. God’s Girls Inc, et al (2007) WL 231543
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