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Remixing Transformative Use: A Three-Part Proposal for Reform

Remixing Transformative Use: A Three-Part Proposal for Reform
By Liz Brown* Download a PDF version of this article here.  

Introduction

Art is big business. Worldwide, the global art market was valued at approximately $64 billion in 2012.[1] Institutional investors are also turning to art as an investment vehicle.[2] The assets in art investment funds worldwide rose 69% to $1.62 billion in 2012.[3] In May 2014, the auction house Christie’s brought in record sales of $744 million in a single evening, including sales of two Andy Warhol works for $100 million, $30 million more than their pre-sale estimate.[4] At the center of this high-stakes art world are appropriation artists, such as Richard Prince, whose work is built on the works of other artists.[5] These works command the highest prices for modern art sales. In Cariou v. Prince, for example, the Prince artworks at issue were marketed to A-list celebrities like Beyoncé, Tom Brady and Anna Wintour.[6] One series of these works sold at the Gagosian gallery for more than $10 million.[7] In Cariou, the Second Circuit held that Prince’s unlicensed appropriation of Patrick Cariou’s photographs, with what many consider to be only minor modifications, was fair use rather than copyright infringement, broadening the scope of copyright law’s fair use defense.[8] The Cariou decision resolved issues that are critical to appropriation art, but the Second Circuit’s ruling in that case—final now that the Supreme Court has denied certiorari—has troubling implications for the entire art market. By broadening the definition of “transformative,” the Second Circuit’s decision in Cariou may encourage other appropriation artists to use original images in ways that have never before been considered fair use. Without the revival or reaffirmation of limitations on how one artist can use another’s work, many creative artists—and the businesses that rely on their work—are likely to suffer severe economic loss. The Supreme Court has noted that the fair use doctrine “permits and requires courts to avoid rigid application of the copyright statute when, on occasion, it would stifle the very creativity which that law is designed to foster.”[9] After Cariou, one might question who is best suited to evaluate the creativity that the law is designed to foster. In its wake, lawyers, artists, and dealers face growing uncertainty as to what kind of copying is legal. The ruling has led to a new sense of unease, has uncovered a generational shift in the perception of artistic ownership rights, and reflects a dramatic reversal of the roles of artists and judges in evaluating art. The importance of appropriation art as a cultural element will grow exponentially in the future. The ubiquity of photo sharing sites like Pinterest, Flickr, Tumblr, 4Chan, and Instagram, together with new photography databases like Photogrammar, which catalogues FSA photographs, makes it easier to access other people’s images than ever before. This is the moment for a robust discussion of how law can protect photographers and other source artists without curtailing the continued development of appropriation art. It is only the privileged few major artists who can afford the kind of complex litigation defense mounted by Prince’s elite legal team. If we do not want to limit the making of appropriation art to those privileged few, we must adopt a more sensible and predictable approach to assessing the legality of this kind of art. This article proposes such an approach. In order to preserve the balance between protecting existing works and incentivizing the creation of new ones, in light of recent jurisprudence, this proposal calls for three critical, interdependent changes to copyright law as it applies to visual art. First, courts should clarify that meritorious appropriation art is per se transformative use. Adopting a transformative use presumption for appropriation art will reduce the current confusion as to how much variation between the original work and the new work is permissible and what role market value plays in visual art copyright infringement cases, providing much-needed clarity to the rights of all visual artists. Second, courts should encourage expert testimony from art scholars in order to guide judges as to whether the works in question are meritorious appropriation art or not, an intentionally unexacting standard. Judges should resume their historic reluctance to evaluate visual art, especially in light of the non-obvious meanings of appropriation art. Instead, courts should invite experts on the merits of art to guide judicial determinations of infringement. Finally, Congress should revise the Copyright Act to narrow the scope of fair use for visual artists to reproductions, eliminating the current confusion between the protected transformative use defense and the infringing transformation of original works within the scope of the artists’ derivative rights. These three recommendations work best when taken together. Clarifying the transformative use determination for visual art would be significantly more difficult without the adoption of expert testimony on merit and the concurrent statutory narrowing of visual artists’ derivative rights. Similarly, expert testimony would not be worth the trouble and expense without the focused point of contention that both the adoption of the transformative use per se standard and the limited derivative rights would provide. Unless these three critical changes are made, visual artists’ derivative rights under current copyright law will continue to collide regularly with appropriation art in untenable ways. This article explores the consequences of the current doctrinal chaos of fair use in the visual arts, particularly in the lucrative world of appropriation art, while also providing a tripartite remedy. It contends that reforms to the judicial standards for evaluating appropriation art in infringement cases, the use of expert testimony to support those determinations, and the derivative rights of source artists are needed to clarify the scope of the transformative use defense. Part I describes the origins of transformative use as an extension of the fair use defense to copyright infringement and explains how the Second Circuit’s ruling in Cariou and other recent decisions have expanded the scope of transformative fair use. Part II explores the impact of this expansion on the production and valuation of art, placing this legal development in the context of the modern art market. Part III reviews solutions proposed by other scholars to limit the over-expansion of the transformative use doctrine, and explores the benefits and drawbacks of each, concluding that none will be sufficient standing alone or in combination with each other. Part IV describes the benefits of adopting a transformative use per se standard for meritorious appropriation art, expanding the use of art experts, and reducing the scope of derivative rights for visual artists. Part V concludes. It is time to recognize that current copyright law cannot fairly and effectively resolve the tensions between the rights of source artists like Cariou and appropriation artists like Prince. There is a fundamental mismatch between appropriation art, a form of visual art central to the modern art market, and copyright law in the visual arts. While many scholars have offered piecemeal solutions to this problem,[10] a more comprehensive set of reforms like the ones proposed here is necessary. Appropriation art requires a unique approach to copyright infringement allegations, one that balances a limitation on the scope of derivative rights with a properly informed transformative use standard that limits judicial subjectivity on matters of artistic judgment. The current trend toward expansion of the fair use defense creates an uncertain legal environment because it lacks clarity and predictability, potentially chilling an increasingly valuable art market in future years. This growing market requires an effective legal solution to remain sustainable. The three reforms presented here, while perhaps controversial, provide a sound basis for the realignment of copyright law in the visual arts to accommodate art creation in the 21st century.

I. Cariou’s Impact on Transformative Use and the Art Market

The doctrinal confusion arising out of Cariou’s interpretation of transformative use is important because it concerns the application of copyright law to appropriation art, a critically and financially important form of modern art that depends on copying for its meaning and impact. While the doctrine of transformative use first entered the judicial lexicon in a case about songs, its subsequent expansion and application in art cases underscores the need for a more selective application. In short, transformative use in the visual arts requires a different set of standards than such use in other forms of copyrightable expression. The reasons for this selective application stem both from the nature of appropriation art, an established type of art that may not be well understood by judges and the general public, and from the consequences flowing from decisions like Cariou that threaten the future of the art market.

A. The Rise and Rise of Appropriation Art

Appropriation art is art made from other artists’ work, and can involve modifying that source work in a number of different ways. As defined by the Museum of Contemporary Art in Los Angeles, California:
Appropriation is the practice of creating a new work by taking a pre-existing image from another context—art history, advertising, the media—and combining that appropriated image with new ones. Or, a well-known artwork by someone else may be represented as the appropriator’s own. Such borrowings can be regarded as the two-dimensional equivalent of the found object. But instead of, say, incorporating that “found” image into a new collage, the postmodern appropriator redraws, repaints, or re-photographs it. This provocative act of taking possession flouts the modernist reverence for originality.[11]
Another definition of appropriation art posits that it “takes a (usually) recognizable object, text or image and recontextualizes it. In the new context, the associations that the reader/viewer has with the appropriated object are subverted, and he or she is forced to reexamine his/her relationship to it. Therefore appropriated art is often political, satirical and/or ironic.”[12] Most people have seen appropriation art without recognizing it as a genre. Shepard Fairey’s Hope poster depicting President Obama is perhaps the best known example of appropriation art that has been subject to a copyright challenge.[13] As a genre, however, appropriation art is at least a century old. It evolved in part from the Cubist practice of incorporating newspapers, musical scores, and drawing scraps in their work, creating new meaning from the displacement and combination of these materials.[14] Then, in a 1912 work titled “L.H.O.O.Q.,” Marcel Duchamp painted a moustache onto a postcard reproduction of Leonardo da Vinci’s Mona Lisa. He also wrote its title, which, in French, sounds like the phrase “elle a chaud au cul,” meaning “she’s got a hot ass,” underneath.[15] Appropriation art became more prominent in the 1970s, with the emergence of the “re-photographers” including Sherrie Levine, Cindy Sherman, and Barbara Kruger.[16] These artists created works largely incorporating the work of earlier photographers, and which are critical of the works that they reproduce.[17] As Monika Jasiewicz has noted, “[Levine’s] appropriation is a form of ‘criticism’ or ‘comment’–types of use that are supposed to be privileged in fair use analysis.”[18] What was once a fringe movement is now part of the art canon. Appropriation art is not only here to stay, it is primed to multiply. Aided by technological improvements to sourcing, sharing and manipulating images, it has become a springboard for a new generation of artists and art forms. It has never been so easy for appropriation artists to source and use existing material in all forms, including film, video and multi-media. As the website for an annual appropriation-based audio-visual media fest explains, “the past decade has witnessed the emergence of a wealth of new audiovisual elements available for appropriation into new works. In addition to official state and commercial archives, resources like vernacular collections, home movie repositories and digital archives now also provide fascinating material to repurpose in ways that lend it new meaning and resonance.”[19] Appropriation art has also evolved into new forms, many of which fall under the heading of remix, or the incorporation of source material into new works generally. The rise of remix culture and scholarship provides a new dimension to appropriation art, further signifying its permanent status. The variety of forms and purposes artists employ in remixing can be inferred from the introduction to Professor Mark Amerika’s Remix Culture seminar, which:
investigates the emergence of interdisciplinary media art practices that experiment with the art of remixing, including but not limited to literary cut-ups and procedural composition, image appropriation, Internet or net.art, sound art, glitch, collage film, installation art, live A/V performance (DJ, VJ, live coding), culture jamming / hactivism,[20] and other art forms that engage with renewable source material.[21]
While many of these terms may be unfamiliar to lawyers and judges, it is easier for them and the general public to appreciate the fact that billions of images are now available on the Internet and that the number is growing daily. Several technological developments including the ubiquity of the mobile phone camera, the rise of photo sharing sites including Flickr, Instagram, Pinterest and Tumblr, and the ability to attach pictures to most if not all general social media sites, have vastly increased the number of images available to the public. The numbers are staggering. By one estimate, 500 million photographs are shared every day, and the number is likely to rise.[22] Studies showing that Facebook posts containing photos are far more likely to generate “likes” also encourage the posting of pictures online.[23] Those developments make it much easier to use and adapt existing images than it was in 1990, when Hon. Pierre Leval wrote his influential article on transformative use, or, in 1994, when the Supreme Court first adopted the doctrine in Campbell. [24] The clash between appropriation art as a recognized artistic movement and current copyright law came to a head in Cariou. It began, however, with the development of transformative use as a kind of fair use defense to copyright infringement.

B. The Origins of Transformative Use

In most cases, the Copyright Act prevents one person from taking and using another’s protectable work without permission.[25] An accused copyright infringer can escape liability by showing that his use falls within the fair use exception, which allows for the use of copyrighted materials for certain limited purposes. The Copyright Act codifies the fair use defense in Section 107, setting out four factors for the court to consider in ruling on the defense:
(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.[26]
Although the Copyright Act defines the four factors clearly, it does not specify how each factor should be weighted. Limited by precedent, each court has some latitude in its interpretation and weighing of each factor. In an influential Harvard Law Review article, the Hon. Pierre Leval (then of the Southern District of New York) developed a theory of “transformative use,” which elaborates on the first fair use factor.[27] According to Leval, in order to be transformative, the second work must add something new, with a further purpose or different character, altering the first work with a new expression, meaning, or message.[28] A work’s commercial qualities are less significant when the work is extremely transformative and parodic.[29] The Supreme Court analyzed the fair use defense and adopted the doctrine of transformative use, citing Judge Leval’s article, in its 1994 decision in Campbell v. Acuff-Rose Music, Inc.[30] In that case, the Court was asked to decide whether 2 Live Crew’s song “Pretty Woman” infringed the copyright in Roy Orbison’s song “Oh Pretty Woman.”[31] In determining that the rap version was a parody, and therefore fair use, the Court noted that in evaluating a fair use defense, “[a]ll [of the four factors] are to be explored, and the results weighed together, in light of the purposes of copyright.”[32] In discussing the expansion of transformative use, it may be helpful to distinguish “appropriation artists,” as defined above, from “source artists.” The term “source artist” denotes the artist whose work is used by the “appropriation artist” in creating the newer work at issue. These terms are fluid, in the sense that they must be defined with reference to a particular work or series of works. The source for a work created by an appropriation artist may itself have relied on the work of another artist.[33] In that way, she would become an appropriation artist with respect to that new work. That said, some artists tend to be, and have developed reputations as, one or the other. Richard Prince, for example, is well known as an appropriation artist in the global art market, and his work played a central role in the recent expansion of the legal limits of appropriation.

C. The Expansion of Transformative Use in Cariou

On November 12, 2013, the Supreme Court denied certiorari in Cariou, letting stand a decision that has dangerous repercussions for the art business.[34] Cariou concerned the appropriation artist Richard Prince, who created a series of artworks using the photographs of another artist, Patrick Cariou, as his base materials.[35] In 2000, Cariou published a book of his photographs of Jamaican Rastafarians called Yes Rasta.[36] Cariou testified about the creative choices involved in composing his photographs, including the equipment, staging, and development techniques and processes involved.[37] Prince’s works are highly collectable and expensive. They have been the subject of major survey exhibitions at the Whitney Museum of American Art in New York, the San Francisco Museum of Modern Art, and the Serpentine Gallery in London, among other places.[38] In July 2008, a New York dealer paid $8.4 million at auction for Prince’s 2002 work Overseas Nurse.[39] Prince bought copies of Yes Rasta, and incorporated some of the photographs in works he displayed in St. Barth’s in 2007-2008.[40] Prince ultimately completed a series of twenty-nine paintings in what he called the “Canal Zone” series, twenty-eight of which incorporated Cariou’s Yes Rasta photographs.[41] The Gagosian Gallery, one of the most prominent art galleries in the United States, exhibited twenty-two of Prince’s Canal Zone paintings in November and December 2008 at one of its Manhattan galleries.[42] The gallery sold eight of the paintings for a total of $10,480,000, 60% of which went to Prince.[43] Although another New York gallery had approached Cariou about exhibiting his work, that gallery withdrew its offer when it became aware of the Canal Zone exhibit.[44] Cariou sued Prince and Gagosian for copyright infringement.[45]
1. The District Court’s Ruling
The facts of the Cariou case were largely undisputed, and the District Court ruled on cross-motions for summary judgment.[46] In evaluating the first fair use factor, the purpose and character of Prince’s use of Cariou’s photographs, the court considered three sub-factors: commerciality, bad faith, and the extent to which Prince’s art was “transformative.”[47] The three factors were not given equal weight: “the more transformative the new work, the less will be the significance of other factors, like commercialism, that may weigh against a finding of fair use.”[48] In order to be transformative, the court noted, the new work should “comment on, relate to the historical context of, or critically refer back to the original works.”[49] In light of that requirement, the court determined that Prince’s work is transformative “only to the extent that they comment on the [Cariou] Photos.”[50] Relying largely on Prince’s own testimony that he didn’t “really have a message” when making art, the court concluded that he “did not intend to comment on any aspects of the original works.”[51] Accordingly, it found that “the transformative content of Prince’s paintings [was] minimal at best.”[52] In doing so, the court suggested a negative view of Prince’s artistry. For example, it quoted Prince’s testimony that his message in collaging guitars onto Cariou’s portraits of Rastafarian men had to do with the fact that men played guitars: “He’s playing the guitar now, it looks like he’s playing the guitar, it looks as if he’s always played the guitar, that’s what my message was.”[53] The other two components of the first fair use factor, commerciality and bad faith, also weighed against Prince. In light of the Gagosian Gallery’s extensive marketing of the Canal Zone show and the sale prices of Prince’s works, the court determined that the “Defendants’ use and exploitation of the Photos was also substantially commercial.”[54] Prince’s failure to even attempt to license from Cariou sealed the court’s conclusion of bad faith.[55] The court interpreted the second fair use factor, the nature of the copyrighted work, to be more restrictive where the work at issue is “expressive or creative,” as opposed to “factual or informational.”[56] Without further explanation, the court found that Cariou’s photographs were “highly original,” weighing against a finding of fair use.[57] The court quickly disposed of the third factor, the amount used, noting that Prince had appropriated the “central figures depicted in portraits taken by Cariou” in most of the works at issue, weighing heavily against a finding of fair use.[58] The analysis of the final factor, the effect on potential market, is perhaps the most interesting. The court rejected Prince’s efforts to minimize the potential market for Cariou’s works even though Cariou had not aggressively marketed them.[59] The potential market, the court noted, could be larger than the actual market for the original works.[60] An author is “entitled to protect his opportunity to sell his [works]”[61] and may be entitled to judgment even when he “has evidenced little if any interest in exploiting this market for derivative works.”[62] A New York gallery owner, Cristiane Celle, had offered to show Cariou’s works, but later withdrew the offer in light of the Prince exhibit.[63] Celle testified that she cancelled the Cariou show because she “did not want to seem to be capitalizing on Prince’s success and notoriety,” fed by the Gagosian show.[64] She did not want to exhibit work which had been “done already” at another gallery.[65] Celle’s cancellation supported the court’s conclusion that the defendants usurped the market for Cariou’s works.[66] The District Court may have gone a step too far by permitting the destruction of the infringing artworks. The Court ordered the defendants to hand over all copies of the infringing works for “impounding, destruction, or other disposition, as Plaintiff determines,” among other remedies.[67] In its reversal, the Second Circuit described the lower court’s order as granting “sweeping injunctive relief.”[68] It is possible that what was perceived as too severe a remedy led in part to the reaction and the reversal that followed.
2. The Second Circuit’s Reversal
On appeal, Prince retained the firm of Boies, Schiller & Flexner.[69] Although the oral argument took place on May 21, 2012, the appellate decision did not issue until April 25, 2013, nearly a year later.[70] When it did issue, the Second Circuit’s reversal sent shock waves through the art world. Throughout the decision, the court assumed that Prince’s work differed in an important way from Cariou’s without explaining its rationale. For example, in describing Prince’s use of the Yes Rasta photographs, the court noted, “Prince altered those photographs significantly by among other things painting ‘lozenges’ over their subjects’ facial features and using only portions of some of the images.”[71] In general, placing an oval cut out over part of a photo does not necessarily alter the photo significantly and the basis for the court’s characterization of it as such is unclear. The court did interpret size differences as significant, however, noting that the Yes Rasta book measures “approximately 9.5” x 12”” while Prince’s artworks are “several times that size.”[72] What troubled the Second Circuit most about the lower court’s ruling, apparently, was the implication that a secondary work must “comment on the original or its author in order to be considered transformative.”[73] In order to qualify as fair use, a secondary work could “serve[ ] some purpose other than those (criticism, comment, news reporting, teaching, scholarship and research) identified in the preamble to the [fair use] statute.”[74] The secondary work only needs to “alter the original with new expression, meaning, or message.”[75] The court went on to declare that Prince’s works passed the “new expression, meaning or message” test, noting that “Prince’s composition, presentation, scale, color palette, and media are fundamentally different and new compared to the photographs, as is the expressive nature of Prince’s work.”[76] Rejecting Cariou’s arguments that Prince’s own failure to identify any substantial message or purpose in his work were fatal to his fair use defense, the court stated that “[w]hat is critical is how the work in question appears to the reasonable observer.”[77] The court found Prince’s works so transformative that the fact that they were also commercial – another first-factor element – was, effectively, irrelevant.[78] With regard to the effect of Prince’s copying on the market for Cariou’s work, the court found that Prince’s copying did not usurp that market.[79] The bases for that conclusion were that (1) Celle did not cancel her plans to show Cariou’s work “because it had already been done at Gagosian,” (2) Cariou had “not aggressively marketed his work,” and (3) wealthier people were more interested in Prince’s work than Cariou’s.[80] The court’s emphasis on the socioeconomic status of Prince collectors was striking. Observing that “Prince’s artwork appeals to an entirely different type of collector than Cariou’s,” the court went on to note that Prince’s works sold for millions of dollars.[81] It observed further that the invitation list for the opening dinner included:
Jay-Z and Beyonce Knowles, artists Damien Hirst and Jeff Koons, professional football player Tom Brady, model Gisele Bundchen, Vanity Fair editor Graydon Carter, Vogue editor Anna Wintour, authors Jonathan Franzen and Candace Bushnell, and actors Robert DeNiro, Angelina Jolie, and Brad Pitt.[82]
After comparing the Prince and Cariou works, the court determined that twenty-five of the thirty Prince works at issue were protected by the fair use doctrine.[83] It remanded for consideration another five works to the district court, deeming them too close to call.[84] In doing so, however, the court did not articulate any basis on which the district court could make such a determination. It is not clear why the appellate court believed the district court would be better able to determine whether the five remaining works were sufficiently transformative than the appellate court.[85]

D. The Dubious Trend Toward Expanding Transformative Use

Cariou was not the only case to expand the fair use defense in 2013. Across the country, an appellate decision in the Ninth Circuit also expanded the scope of the transformative use defense in unpredictable and troubling ways. It concluded that a high-profile rock band’s unlicensed use of an artist’s original work as a concert backdrop qualified as transformative fair use. In Seltzer v. Green Day, Inc., the Ninth Circuit found that the rock band Green Day’s use of Derek Seltzer’s work in its concert backdrops was fair use.[86] Seltzer created an image called “Scream Icon,” which he sold on stickers and posters.[87] Green Day used a version of “Scream Icon” in a video that ran during its concerts during a multi-city tour in 2009.[88] Seltzer sued Green Day for copyright infringement.[89] Citing Cariou, among other precedents, and noting that “whether a work is transformative is a[n] often highly contentious topic,” the Ninth Circuit ruled in Green Day’s favor.[90] The court found that Green Day’s use of “Scream Icon” amounted to new creative expression because it juxtaposed the original image with religious imagery: “With the spray-painted cross, in the context of a song about the hypocrisy of religion, surrounded by religious iconography, Staub’s video backdrop using Scream Icon conveys ‘new information, new aesthetics, new insights and understandings’ that are plainly distinct from those of the original piece.”[91] This, the court ruled, was transformative, and therefore the first fair use factor weighed in Green Day’s favor. Green Day and Cariou are not the only indicia of transformative use’s expansion, although they are among the most newsworthy recent cases. Scholarly surveys underscore the conclusion that courts are expanding the scope of transformative use, and consequently fair use, across the country. Professor Sag examined more than 280 fair use cases from 1978 to 2011.[92] His research “reinforce[d] the dominance of transformative use over other factors” in determining case outcomes.[93] In another study, Professor Netanel looked at 79 opinions in fair use cases from 1996 through 2010.[94] He concluded that “the transformative use paradigm, as adopted in Campbell, overwhelmingly drives fair use analysis in courts today.”[95] The trend toward consideration of transformative use was significant. Netanel observed that courts’ use of the transformativeness analysis “increased measurably during the period 2006-2010, even if it was already quite high previous to that period.” [96] “[Eighty-five percent] of district court opinions and 93.75%, or all but one, of appellate opinions” analyzed whether the challenged use was transformative.[97] More importantly, Netanel’s research underscored the determinative nature of transformative use in the courts’ determinations. He noted that since 2005, “decisions that unequivocally characterize the defendant’s use as transformative almost universally find fair use.”[98] When a court found that the challenged use was transformative, there was a “sharp decline in the weight that courts say they are giving to whether a use is commercial.”[99] One interpretation of this data is that a finding of transformativeness effectively reinterprets fair use factors three and four toward inevitably favoring fair use.[100] Arguably, it also reinterprets the market analysis underlying the fourth factor. The driving concern changes from “whether the use falls within a conceivable licensing market for the copyright owner” to disregarding that potential market entirely.[101] Instead, it “effectively delimits the legally relevant market for the fourth factor. If a use is unequivocally transformative, then, by definition, it causes no market harm since the copyright holder does not have a right to exclude others from the market for transformative uses.”[102] The rise of transformative use as a guiding if not determinative factor in fair use analysis is exemplified in a pair of cases concerning another prominent artist, Jeff Koons. In the earlier case, Koons’ use of another artist’s work was held to be copyright infringement. In the later case, on similar facts, Koons’ use of another artist’s work was held to be transformative and fair use. The first case, Rogers v. Koons, concerned a Koons sculpture called String of Puppies exhibited at New York’s Sonnabend Gallery in 1988.[103] Koons based this work on a black and white photograph by Art Rogers called Puppies, which had been licensed by Museum Graphics for a notecard. Rogers sued Koons for copyright infringement in 1989. Although Koons argued that String of Puppies was fair use because it was a parody or satire, the court granted summary judgment in Rogers’ favor.[104] When Koons appealed, the court of appeals affirmed the district court’s decision.[105] The second case, Blanch v. Koons, concerned Koons’ appropriation of photographer Andrea Blanch’s work in Koons’ 2000 collage, Niagara.[106] Niagara consists of images of women’s lower legs and feet dangling above a tray of pastries.[107] One pair of feet was modeled on Blanch’s photograph, “Silk Sandals by Gucci.”[108] Blanch’s photograph showed the woman’s feet resting on a man’s lap in an airplane cabin.[109] For Niagara, Koons reproduced only the legs, feet, and shoes from Blanch’s photograph, adding a heel to one shoe, altering their orientation, and varying the coloring.[110] Blanch sued Koons for copyright infringement. The Supreme Court’s Campbell decision had issued in the years between Rogers and Blanch, and Koons now argued the defense of transformative and fair use instead of parody.[111] The district court agreed that Koons’ use of Blanch’s photograph was fair, and the court of appeals affirmed.[112] This is not to say that courts always find in favor of the appropriation artist when confronted with copyright infringement claims.[113] However, its influence on judicial decision-making in this area suggests that the precedent set by Cariou is here to stay, at least for the time being. Following the Supreme Court’s denial of certiorari, Cariou will stand as precedent in the Second Circuit, the home of one of the most influential art markets in the world. Given these rulings and the scholarly surveys of many other court rulings, we may expect circuit courts to continue to expand the scope of transformative use. The standards used in these cases are too often unclear and unpredictable. This trend makes it all the more important to impose sensible limitations on fair use in the making of 21st century art.

II. The Troubling Consequences of Expanding Transformative Use

The expansion of fair use illustrated by Cariou and its progeny raises several types of concerns: doctrinal, societal, and market-based. By blurring the line between transformative and derivative works, these decisions represent a significant shift in copyright law. The repercussions will affect the business relationships among artists, dealers, and investors, and will shift the legal boundaries of creativity.

A. The Doctrinal Impact

In the wake of Cariou, several observers have commented on the doctrinal shifts that the ruling represented.[114] Legal scholars were not the only critics of the opinion. Artists banded together to decry the Cariou ruling. When the Second Circuit remanded consideration of five works back to the district court, a coalition of professional associations and photographers filed a comprehensive amicus brief urging the court to reject the fair use defense as to those works.[115] The amici included the American Society of Media Photographers, the Picture Archive Council of America, Professional Photographers of America, the National Press Photographers Association, photographer Jeremy Sparig, the Graphic Artists Guild, American Photographic Artists, and the American Society of Journalists and Authors.[116] Perhaps the most disturbing aspect of Cariou is the lack of guidance offered as to how much difference is necessary for a reasonable observer to determine that the use is transformative. A balancing test based on unclear factors is easy to get wrong. If adapting one artist’s photographs by reprinting them in a different color and size and perhaps adding small decorative elements is fair use, then it is hard to imagine what kind of adaptive copying would not be permitted. A likely effect of this doctrinal vagueness is that whether one artist infringes the copyright of another will boil down to the aesthetic judgment of a particular judge or panel of judges. Subsequent decisions may therefore require lawyers and courts to parse the differences between copies of accused artworks, which may not be widely available, in order to make their best guess as to what is “different enough” to pass legal muster. A related danger of recent case law is the increasingly blurry line between derivative and transformative use. According to the Copyright Act,
A “derivative work” is a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted. A work consisting of editorial revisions, annotations, elaborations, or other modifications, which, as a whole, represent an original work of authorship, is a “derivative work.”[117]
A transformative work, by contrast, is one that adds “something new, with a further purpose or different character, altering the first with new expression, meaning or message.”[118] The definition of transformative use is comparatively vague, inviting a great deal of judicial creativity in its application. The difference between derivative use and transformative use is getting harder to detect: “[i]f a court finds that defendants’ use of an author’s work is ‘transformative’ because it reaches new markets or makes the work available to a new audience, that finding could risk usurping the author’s derivative work rights. Ultimately, those rights could hinge on a ‘race to the market’ for new and sometimes unanticipated uses.”[119] Arguably, that is what happened to Cariou. In his Canal Zone exhibit, Prince established a high-end market for what could be considered derivative works based on Cariou’s photographs, usurping that market and foreclosing the possibility of a Cariou exhibit like the one Celle had planned. A further danger of the current slide toward finding that all appropriation art is per se fair use may be a violation of the United States’ obligations under the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) and other international treaties.[120] For example, the TRIPS agreement requires that signatories’ copyright exceptions (for foreign works) meet a three-step test.[121] That test provides:
Members shall confine limitations or exceptions to exclusive rights to certain special cases which do not conflict with a normal exploitation of the work and do not unreasonably prejudice the legitimate interests of the right holder.[122]
The first of the three steps requires that any exceptions to copyright protection be limited in scope, according to the World Trade Organization’s dispute resolution panel.[123] “Normal exploitation” includes all ways in which the author would normally seek to exploit the work now or in the future.[124] In other words, an exception may not compromise a normal market for the work. The third step requires that the law protect authors from unreasonable loss of income.[125] Expanding the scope of transformative use without clearer boundaries may violate each of these three steps.

B. The Commercial Impact

In order to appreciate the impact of Cariou on the art industry, it is important to understand both the recent rise of appropriation as a means of making art and the central role of dealers and auction houses in the art market. Appropriation is a hot topic in the art world.[126] Some of the most sought after modern art is made by high-profile appropriation artists like Prince, who sold a piece at an auction for more than $3.7 million in May 2014.[127] A widely acclaimed, 24-hour long video made up of appropriated bits of film and television shows called “The Clock” has been touring major art venues around the world since its debut in 2010.[128] In recent years, appropriation art has been the focus of major exhibitions in New York, Chicago, and Los Angeles.[129] The Second Circuit’s emphasis on the socioeconomic strata and celebrity of the people who attended Prince’s opening gala correlates with an increasingly important characteristic of the art market. Dealers, collectors, museums, and auction houses all play significant roles in driving up the market prices of certain artists’ work. According to one economist, collectors describe contemporary art “in terms of innovation, investment value, and the artist being ‘hot,’ meaning a relative unknown where word-of-mouth reports make them suddenly sought-after.”[130] The valuation of any given work depends in large part on the investments that dealers, collectors, and museums make in certain emerging artists.[131] When museums exhibit an artists’ work, they add to the work’s exhibition and sale history, or provenance, thereby increasing the price that work can command in the future.[132] High-profile exhibitions like the Whitney Museum of American Art’s Biennial help create taste and add to an artists’ value.[133] So do exhibitions at certain galleries, including those of “superdealers” Larry Gagosian, who exhibited the Prince works at issue in Cariou.[134] The director of the Andy Warhol Museum observed that “[i]n many ways, having a show with [Gagosian] is synonymous with having a show at MoMA or the Tate Modern [in London].”[135] Given the increasing ubiquity of the practice, the legal scope of borrowing source material shapes both the artistic and ethical development of the profession. This is especially true for younger artists, whose attitude toward borrowing is significantly different from artists of earlier generations. As Stephen Frailey, the head of the undergraduate photography program at the School of Visual Arts in Manhattan, told the New York Times, “[t]hey feel that once an image goes into a shared digital space, it’s just there for them to change, to elaborate on, to add to, to improve, to do whatever they want with it. They don’t see this as a subversive act. They see the Internet as a collaborative community and everything on it as raw material.”[136] This sense of freedom among young artists is mirrored in the general public by the creation of apps such as Mixel, which facilitates the appropriation of images in new user-generated art.[137] The expansion of fair use will affect source artists as well. If the law permits appropriation artists like Prince to adapt materials without clear limits, it is easy to imagine that the sources such artists appropriate from may dry up for lack of commercial incentive.[138] That incentive is critical. Cariou’s investment of time and trust-building in creating his photographs was significant. He spent “some six years” with the Rastafarians he documented in Yes Rasta, “gaining their trust and taking their portraits.”[139] One could argue that that time and effort was necessary for Cariou to develop the kind of relationships with his subjects that would permit him to take the portraits in the first place. The Second Circuit’s decision undermines the importance of this kind of effort. In fact, photographers like Cariou may be more vulnerable to this expansion of fair use copying than painters, sculptors, and other visual artists. Some commentators have suggested that copyright law gives less protection to visual artists than to authors because it limits the right to copy, which isn’t as important to visual artists as it is to authors because of their different modes of profit.[140] While visual artists rely on a “single-copy business model,” selling one unique version of each work, authors, rely on a “multi-copies business model,” in which they expect to sell many copies of each original work. By focusing on the right to copy, as its name suggests, copyright law effectively discriminates against visual artists in comparison to authors.[141] This argument, however, ignores a key distinction of photography as a medium. It is easier and more common for photographers to sell copies of their work than for many other kinds of artists. Cariou primarily sold his work, for example, through a mass-produced book.[142] Appropriation artists, especially painters, primarily exhibit and sell single copies of their work, commanding higher prices in part because of their scarcity. Lastly, the expansion of fair use as illustrated by Cariou threatens the existence of the photographic licensing market. That market, which serves as a conduit between photographers and the publications or other entities that want to license their work, can be sidestepped entirely if stealing photos is fair use.[143] Indeed, the fact that there is currently an operational licensing market that Prince could have accessed makes it more difficult to justify his unlicensed use of Cariou’s photographs as fair.[144]

C. The Societal Impact

The Cariou case has important implications for the relationship between law and society as well. Prince’s business approach, like that of many appropriation artists, also raises ethical concerns. Even if courts determine that his adaptation of Cariou’s photographs was legal, was it ethical of him to use Cariou’s images without attribution? If Prince can make headlines, and millions of dollars, from taking another artists’ work, his success sends a message to younger artists that is not easily countered. It is difficult to expect art teachers to demand integrity of their students when the art world and/or the legal system discards its value.[145] The issue is especially acute for younger artists, who have come of age in an era that lauds appropriation art as much as entirely original compositions. Copyright law, like all intellectual property law, must strike a balance between the protection of original creative work and the common interest in access. If case law undermines the importance of original work, as Cariou arguably does, what is the counterweight against free-for-all use of visual works that are not yet in the public domain? Indeed, if current trends continue, the future of the “public domain” as a concept may change as well.

III. Evaluating Proposed Solutions to the Transformative Use Problem

Copyright scholars, art critics and general observers have been exchanging ideas about how to repair the damage done by Cariou since the Second Circuit’s decision issued. While many scholars have offered innovative solutions based on important insights into the nature of the problem, their proposals often suffer from a lack of practicality. However, the shortcomings of these proposals form, in part, the basis on which more workable solutions can be developed.

A. Proposed Statutory Amendments Paint With Too Broad a Brush

One potential remedy for the lack of clarity exposed by Cariou, Green Day, and similar cases might be to amend the Copyright Act to provide guidance for the proper scope and application of the transformative use defense. Congress could, for example, amend the Copyright Act to clarify the distinction between derivative use and transformative use, which is not codified in the statute.[146] Such an amendment, however, would likely do less to ease the interpretive burden on judges than the recommendations proposed in this article. No single definition of transformative use is likely to capture the fine but important distinctions inherent in the ways artists create meaning among the various types of copyrightable expression. Another scholar has proposed amending Section 101 of the Copyright Act to establish a precise list of uses that would qualify as transformative, to parallel the current statutory definition of derivative use that appears in 17 U.S.C. § 101.[147] Indeed, writers have suggested and courts have adopted a number of other more specific measures of transformative use across genres, none of them satisfactory. These include exemptions for “productive copying,”[148] copying for “socially laudable purposes,”[149] copying for “a different purpose from the original,”[150] and copying with “implied consent” which in turn would accord with the “prevailing understanding of the community” and/or “customary practice.”[151] Defining transformative use more precisely through amendment of the Copyright Act has some drawbacks. First, any illustrative list of transformative uses will, by nature, be limited in scope. A determination of fair use based on transformative use will still rely on the fact finder’s subjective analysis to some extent. The same can be said, however, for the interpretation of other kinds of fair use and, more generally, in any application of precedent. The open-ended nature of the fair use defense, and of transformative use in general, has long been recognized as a necessary condition.[152] Second, a more specific definition of transformative use may have the overall effect of narrowing the defense, thereby increasing the chances that appropriation artists will be held liable for copyright infringement. They may be discouraged, in turn, from producing work that the art market, media, and popular audiences value. Because appropriation artists’ work often commands such high prices, investors and collectors may claim that regulating appropriation art more closely will hurt the art market overall. Dealers and galleries may be more hesitant to sell and show such work if they perceive an increased risk of liability themselves. After all, Larry Gagosian, the owner and founder of the prestigious Gagosian Gallery was a named defendant in Cariou v. Prince.[153] Resistance from the intermediaries between artists and collectors may further depress the market for this lucrative type of art.

B. Compulsory Licensing for Visual Artists Is Untenable in the United States

Scholars have also proposed amending the Copyright Act to provide compulsory licensing for visual artists who incorporate copyright-protected works of others into their work.[154] Compulsory licensing already exists to some extent in music with regard to cover songs,[155] and some commentators have proposed expanding the scope of compulsory licensing to include digital sampling as well.[156] In the wake of Cariou, some commentators suggested that it might be time to revive that idea in the visual arts in order to ensure fair compensation for source artists.[157] Licensing is particularly inapt in this context because of the critical and transgressive nature of appropriation art as a movement, as described above.[158] The history of appropriation art reveals that the practice of appropriation is fundamentally aimed at challenging and departing from prior modes of representation.[159] As one scholar has put it, “[w]hile societal criticism is usually incidental to traditional parody, it is the avowed purpose of appropriationist visual art.”[160] Another difficulty inherent in a potential compulsory licensing scheme is the question of whether exhibited or published secondary works would be subject to a license fee, or whether the licensing scheme would be limited to actual sales. As noted above, appearing in an exhibit, especially at a premiere location such as the Whitney Museum or the Gagosian Gallery, can vastly increase the worth of an artist’s work.[161] A compulsory licensing scheme that addressed only the actual sale of art would address only part of the process by which art is valued, and increases in value, in the global art market. A greater challenge would be determining who might administer the licensing program. Since so many major art sales take place through galleries and auction houses, they would be the logical first choices. If galleries were compelled to direct a percentage of the sale price of an appropriation piece to a source artist(s), however, the galleries would bear the burden of identifying (or verifying, if the appropriation artist will assist in this task) the source artist(s) and the date of the source work in order to determine whether or not the work was in the public domain. If so, presumably no license fees would be due. If not, however, the gallery would then face the task of transferring payment to that person or those people. If the source artist does not know that a fee is owed to her, she has no incentive to verify the payment. That complication suggests that enforcement of the licensing scheme would be challenging as well. This would be especially difficult with regard to private sales. The difficulty of ensuring that the license fee extracted from the seller makes its way to the source artist multiplies when the seller is a private individual rather than a gallery or auction house. Increasingly, collectors and sellers are using private sales to transfer art rather than public auctions.[162] One reason is that private sales lessen the risk of failure in a prestigious market. As one New York gallery director explained, “If [a piece] doesn’t sell [privately], it’s not a public event. […] However, if your painting is on the cover of an auction catalog and it’s been marketed globally and then doesn’t sell – ouch!”[163] As more transactions are handled privately, a compulsory licensing scheme becomes harder to administer and enforce. Compulsory licensing may be easier to administer and enforce in the music business than it would be in the visual arts. Although the Supreme Court developed the transformative use defense in the context of a music case,[164] the differences between the music business and the art business help illustrate why licensing would be harder to administer in the latter. In the music industry, a few major organizations help consolidate the licensing process, including the Recording Industry Association of America (RIAA) and Broadcast Music Incorporated (BMI). In the visual arts, however, there is no comparable hegemony. Organizations such as VAGA and Artists’ Rights Society (ARS), which describes itself as the “preeminent copyright, licensing, and monitoring organization for visual artists in the United States,”[165] represent many visual artists’ interests. VAGA, for example, serves as a licensing clearinghouse for its member artists. When “any type of image user seeks to reproduce a work of art by one of our members, VAGA issues a license document, which details and limits the rights granted, contains clauses protecting the integrity of the licensed work, and ensures payment of a fee commensurate with the nature of the use.”[166] ARS, in contrast, “act[s] on behalf of [its] members to streamline the process for reviewing requests for reproduction” but does not license or sell their art on their behalf.[167] Perhaps the most intransigent difficulty in a general licensing scheme, however, has to do with the difficulty of pinpointing a single original work. As discussed above, it is difficult to pinpoint verbally what the “expression” of any artwork is, and therefore what elements can be protected by copyright, as a rule, in the same way that “expression” can be identified and quoted in written work.[168] The many problems inherent in a compulsory licensing scheme can be illustrated in part by analogy to the recent debate over the possible institution of a federal resale royalty structure.[169] A resale royalty provides that when a work of art is sold by someone other than the artist, some percentage of the sale price goes to the artist no matter how long it has been since the artist sold the work originally. Resale royalty laws are common in Europe and other parts of the world, but have been met with mixed success in the United States.[170] In 2013, however, the Copyright Office issued a report recommending that Congress consider adopting such rights.[171] In February 2014, a group of congresspersons introduced a bill which, if passed, would grant visual artists the right to collect resale royalties.[172] Critics of the bill pointed out that the logistical burden and administrative costs of such a scheme are likely to outweigh the benefits. They noted, for example, that the bill’s provisions making the collection of resale royalties transferable and retroactive would have done more harm than good.[173] Similar arguments can be made against a compulsory licensing scheme, and would likely arise if a compulsory licensing scheme were to be proposed in a more formal manner.

IV. A Three-Step Solution to Reforming Transformative Use in the Visual Arts

Resolving the current mismatch between 21st century appropriation art and copyright law requires at least three changes. First, courts should clarify that meritorious appropriation art is per se transformative use, thus reducing the current confusion as to how much variation between the original work and the new work is permissible. Second, courts should encourage expert testimony from art scholars on whether the works in question are meritorious appropriation art or not, allowing judges to resume their historic reluctance to evaluate visual art. Finally, Congress should revise the Copyright Act to narrow the scope of fair use for visual artists to reproductions, eliminating the current confusion between the protected transformative use defense and the infringing transformation of original works within the scope of the artists’ derivative rights. Taken together, these three changes will restore clarity to the question of how artists can create new works without infringing the rights of other artists. This increased clarity will allow artists to stop litigating and focus their attention on creating, a development that all parties should favor.

A. Recognize Appropriation Art as Transformative Use Per Se

As a first element of this tripartite solution, courts should accept meritorious appropriation art as transformative per se. In other words, courts should determine – preferably with the assistance of expert testimony, as described in the following section – whether the accused work is meritorious appropriation art. If so, the court should take that determination into account when evaluating the first of the fair use factors. The second, third and fourth factors should remain open to the court’s analysis, without a correlative presumption. In the past, courts have been reluctant to supplant the entire four-factor analysis with a broader presumption that appropriation art should be considered per se fair use. In Morris v. Guetta, for example, the Central District of California Appellate Court ruled that Guetta’s adjustments to photographs of Sid Vicious taken by Dennis Morris constituted copyright infringement.[174] The court rejected Guetta’s argument that appropriation art should be considered fair use per se: “[t]o permit one artist the right to use without consequence the original creative and copyrighted work of another artist simply because that artist wished to create an alternate work would eviscerate any protection by the Copyright Act.”[175] Prior to Cariou, a few scholars proposed unique fair use standards for appropriation art, but none were adopted. In 1988, for example, John Carlin suggested modifying fair use standards to better accommodate appropriation art.[176] Instead of the standard four-factor test, Carlin suggested focusing on the purpose of the copying and the nature of the work copied.[177] Carlin’s test, however, applied different standards depending on whether the copied image was recognizable to the average viewer.[178] Carlin also limited his proposed fair use determination to the appropriation of works whose creator was no longer living or actively exhibiting his work.[179] In 1993, E. Kenly Ames proposed a different approach to fair use in appropriation art cases.[180] Ames would have limited the presumption of fair use to works of visual art as defined under the Visual Artists’ Rights Act of 1990 (VARA), in part to “avoid any need to decide whether it is ‘good art,’ or even ‘art’ at all, or whether it is successful in getting its critical message across to the viewer.”[181] She further proposed a minimal standard of review for the appropriating work’s effect on the potential market for the original work, suggesting that such appropriation should be deemed fair so long as the secondary work cannot reasonably function as a market substitute for the original. [182] Both Carlin and Ames’ proposals recognized that appropriation art required different legal treatment from more traditional 19th century forms of image creation, but their standards would have been relatively difficult to implement. Carlin’s qualification that recognizable works deserved more protection introduces the unwieldy question of what an “average viewer” recognizes, and answering such a question is no easy task in a culture that is increasingly subdivided in terms of what people see and recognize. Ames’ proposal introduces the excellent notion of using the VARA standard to remove the subjective evaluation of art from the courts, but would apparently allow that determination to override the consideration of the other four fair use factors. However, a better approach would allow courts to deem appropriation art that falls under a minimal VARA standard to be transformative use, while retaining consideration of market impact and other important fair use considerations and without allowing any one of those considerations to dominate. A critical question is how much transformation of a source work is necessary to qualify as appropriation art, and therefore transformative use per se, under this proposal. This question plagued the Second Circuit in Cariou as well. In its decision, the majority determined that most of Prince’s work qualified as transformative use without specifying the standards used to reach that determination. While some of Prince’s works transformed Cariou’s photographs beyond judicial doubt, other works were too close to call. As Judge Parker noted with regard to one work, Graduation:
Prince did little more than paint blue lozenges over the subject’s eyes and mouth, and paste a picture of a guitar over the subject’s body… Where the photograph presents someone comfortably at home in nature, Graduation combines divergent elements to create a sense of discomfort. However, we cannot say for sure whether Graduation constitutes fair use or whether Prince has transformed Cariou’s work enough to render it transformative.[183]
The court remanded the question of whether Prince was entitled to the fair use defense for Graduation and four other works, but failed to provide any clear standards by which to make that determination. It is hard to see how the lower court would be any more qualified than the appellate court to make this determination, unless additional testimony was permitted on this point. Even so, it would have been difficult to introduce such testimony absent standards of proof. When a work is appropriation art, it is creative and progressive. It is “not premised on rote copying,” but is instead “about quotation, recontextualization, and criticism – the very building blocks of artistic progress.”[184] The Copyright Clause of the Constitution, after all, authorizes Congress to promote the Progress of Science and useful Arts.[185] Because genuine appropriation art represents artistic progress, it is “the sort of innovative criticism and reassessment of our environment that one might argue the Copyright Act is designed to protect.”[186] For that reason, it deserves at least per se protection as transformative use. One way to remove judges from their newly adopted and ill-suited role as art critics is to create a brighter line between what does and does not infringe a source artist’s copyright. Given the prominent role of appropriation art in the modern art canon, the time has come to recognize it explicitly in the context of copyright law. The simplest bright line to use is the term Congress has already adopted in another copyright statute designed to protect artists: VARA.[187] In adopting a relatively simple standard for basic protection, VARA relieves courts of the responsibility they are ill equipped to bear: making aesthetic judgments and determinations of artistic worth.

B. Broaden the Use of Expert Testimony by Art Scholars in Infringement Cases

Another way to restore the proper distance between judges and art evaluators is to expand the use of qualified expert testimony in visual art copyright infringement cases. Judges should not be in the business of judging art. The Second Circuit’s foray into artistic evaluation in Cariou appears to have been entirely subjective, since it did not specify any standards used to determine that twenty-five of the accused paintings were fair use and five were too close to call.[188] I propose instead that courts invite expert testimony on the issue of whether an accused work is meritorious appropriation art, mere copying without more, or something in between. Specifically, my proposal is that parties to copyright infringement cases involving appropriation art retain experts to testify as to whether the allegedly infringing work is meritorious appropriation art or not. Other scholars, most notably Monika Jasiewicz, have recently suggested inviting expert testimony on whether an artistic use is transformative so as to qualify for the fair use defense.[189] Although it is grounded in many of the same concerns, my proposal is narrower in that it calls for a parallel per se determination of transformativeness for appropriation art. Expert testimony is necessary in appropriation art cases because of its unique forms of expression, interpretation and meaning. It is harder for judges to evaluate the fair use of art than other kinds of copyrightable expression. This is especially true for appropriation art, which has its own canon and semiotics. While judges are likely to be familiar with the conventions of parody and jokes present in literary works, they are less likely to have a comparable understanding of the conventions of photography and appropriation art, because those conventions lay farther outside the popular discourse.[190] As Cariou illustrates, the current “new expression, meaning or message” test is difficult at best to implement without expert assistance. Any new depiction of a source work that varies even slightly from the original, for example, might qualify as “new expression” in that it differs from the original expression. Even if courts were to narrow the “expression” element of the current test, it is challenging to define transformative use in the visual art medium. It is significantly harder to define the “meaning or message” of a visual artwork than to define the “meaning or message” of a written work, in part because visual art is less literal by nature. There can be no single meaning of a work of art, as so much of the interpretation of a work rests with the observer.[191] Judicial opinions are also a poorer vehicle for conveying the bases of a transformative use determination in cases involving the visual arts than those involving written works. As Matthew Bunker and Clay Calvert have observed, the “perception of whether something constitutes a written parody may be more reasonably gleaned and more readily explained in a judicial opinion than the perception of whether image-based appropriation art is transformative.”[192] Indeed, judges’ willingness to engage in aesthetic judgments in the course of legal judgments is a relatively recent phenomenon. In Bleistein v. Donaldson Lithographing Co., Justice Holmes observed that
It would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of [works] … if they command the interest of any public, they have a commercial value – it would be bold to say that they have not an aesthetic and educational value, – and the taste of any public is not to be treated with contempt.[193]
Holmes’ statement underscores an important limitation on judges’ ability to interpret art in copyright cases. So, too, did Judge Wallace’s dissent in the Second Circuit’s Cariou ruling, belying his discomfort in the role of art critic. Citing a cautionary note from the Supreme Court in the Campbell case that “it would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of [a work], outside of the narrowest and most obvious limits,”[194] Judge Wallace wrote that “[i]t would be extremely uncomfortable for me to do so in my appellate capacity, let alone my limited art experience.”[195] His hesitation to engage in art criticism is well-reasoned, and should be instructive to courts in general. Nor should artists be in the business of judging their own art. Several observers have pointed out the difficulties inherent in asking artists to comment on their own intention in creating works at issue.[196] While an artist’s intent should not be viewed as dispositive, Cariou can be read to suggest that it is not even relevant. After all, in Cariou, the District Court interpreted Prince’s testimony to mean that he had no transformative intent.[197] But it is not artists’ potential inability to articulate their intent that is the problem. Indeed, any witness has the potential to be inarticulate. Dealing with that possibility is one of the trial lawyers’ responsibilities. The larger problem is that the artist’s perspective and intent is irrelevant to the commercial impact of the alleged copying, which is at the heart of the first and fourth factors of the fair use defense. [198] Scienter need not be part of a fair use determination. Whether an artist like Prince can articulate a transformative intent behind his work is not determinative of whether his work is appropriation art. As Caroline McEneaney has written, “[t]he creator often sees the work very differently from others and rarely has a true sense of the legal consequences of his own words … To rely so heavily on the testimony of the artist leaves society’s exposure to valuable cultural reference in the hands of art makers, who are not versed in the law, have very different perspectives than judges and lawyers, and may not realize the impact that their words can have.”[199] In many ways, the need for expert testimony in visual art copyright infringement cases can be compared to the need for expert testimony in patent cases, which have been standardized in claim construction hearings.[200] In such hearings, courts benefit from expert testimony from each side as to the proper construction of certain terms in the claims at issue. In patent infringement litigation, courts accept the need for expert testimony on the technical details of patented inventions because the technology is so specialized, as it must be to be patentable, that no judge can be expected to appreciate the perspective of “one of ordinary skill in the art” of the patent. This is true regardless of whether the judge sits in a court of general jurisdiction or a specialized court like the Federal Circuit. Judges are no more, or at least not much more, qualified to interpret appropriation art than they are to interpret the workings of a nonvolatile semiconductor memory device with an improved gate electrode. When courts use expert witnesses to help evaluate transformative use in the visual arts, it is critical to circumscribe their testimony. Such experts should testify only to whether the accused works meet a specific standard. This article proposes that the standard be whether the accused work is meritorious appropriation art, as described in the preceding section. There is a danger that expert testimony on transformative use will focus on the market value, if any, of the accused and original works. Indeed, the Second Circuit’s Cariou opinion included an extensive discussion of the market differences between Prince’s work and Cariou’s work.[201] This kind of testimony should be avoided. Indeed, such testimony might flow naturally from Section 107’s emphasis on the market. The first factor asks whether the accused work’s use of the original is “of a commercial nature or is for nonprofit educational purposes,” while the fourth factor focuses on “the effect of the use upon the potential market for or value of the copyrighted work.[202] Transformative use, however, is usually considered to affect the determination of the first fair use factor alone.[203] An important constraint of these proposals is that they allow the court to consider the other three factors of fair use independently. One danger of allowing marketability and market value to influence the determination of transformative use is the possibility of offering greater protection to expensive artists than to lesser known artists. While art can be big business, the price tag of a work should not influence the determination of whether it is either transformative or infringed. Given the shift in judicial attitudes evidenced in Cariou, this is a real concern. As noted above, the Second Circuit’s decision hinged in part on a finding that Cariou appealed to a different “sort of collector” than Prince. It observed that
Certain of the Canal Zone artworks have sold for two million or more dollars. The invitation list for a dinner that Gagosian hosted in conjunction with the opening of the Canal Zone show included a number of the wealthy and famous such as the musicians Jay-Z and Beyonce Knowles […] Vanity Fair editor Graydon Carter, Vogue editor Anna Wintour, […] and actors Robert DeNiro, Angelina Jolie and Brad Pitt […] Cariou on the other hand has not actively marketed his work or sold his work for significant sums, and nothing in the record suggests that anyone will not now purchase Cariou’s work, or derivative non-transformative works (whether Cariou’s own or licensed by him) as a result of the market space Prince’s work has taken up. This fair use factor therefore weighs in Prince’s favor.[204]
While the Court’s analysis is limited on its face to the fourth fair use factor, it is impossible to ignore the air of snobbery implicit in its assessment. Contrast this with the Second Circuit’s opinion in Rogers v. Koons, in which the court derided the arrogance implicit in the assumption that wealth insulates an artist from infringement allegations:
The copying was so deliberate as to suggest that defendants resolved so long as they were significant players in the art business, and the copies they produced bettered the price of the copied work by a thousand to one, their piracy of a less well-known artist’s work would escape being sullied by an accusation of plagiarism.[205]
The difference in these opinions indicates just how far the Second Circuit has slid toward accepting exactly the kind of privilege that it had derided in Rogers v. Koons. It also underscores the importance of eliminating (or at least minimizing) the effect of power and wealth on the scope of an artist’s rights. To allow market value to infect the transformativeness decision would be to perpetuate the danger that only the wealthy can afford justice. If only highly marketable artists can protect their work in court, then we as a society effectively will be determining that lesser-known artists have fewer rights. That is inapposite to copyright’s constitutional mandate “to promote the Progress of Science and useful Arts.” We should not equate artistic value with commercial value. What kind of experts should be employed? The experts testifying in transformative art cases could be art critics, art historians, or other professionals with expertise in the types of art at issue. One danger of employing gallerists and art dealers as experts instead is the possibility that their knowledge of the market and of relative value will unduly influence their opinion as to whether the accused work is meritorious appropriation art. While there need not be a bright-line exclusion of art market players from this kind of expert testimony, courts should guard against allowing market value to influence their opinions as the Second Circuit arguably did in Cariou.[206]

C. Limit Visual Artists’ Derivative Rights to Reproduction Rights

The third element of this proposal is to amend the Copyright Act to limit the scope of derivative rights for visual artists to reproductions of their work, within limits. Authors’ derivative rights in the characters they create make sense in ways that artists’ derivative rights in the particular work do not. The visual image is the creative work itself. Characters, on the other hand, exist independently of the specific words used to create them. Under the terms of this proposal, artists would retain derivative rights in reproductions of their works, including variations in size, format, materials and coloration. The reproduction of a work on a t-shirt, a poster, or a website would not qualify as transformative and, presumably, would not be fair use in most cases. Allowing for these minor differences in expression of the work is also consistent with the sensible outcomes of cases like Friedman v. Guetta.[207] In that case, Ron Friedman sued Thierry Guetta for copyright infringement based on Guetta’s use of Friedman’s photograph of the hip-hop group Run D.M.C. Guetta asserted the fair use defense, and lost. The court rejected the claim that Guetta’s adaptation of the photograph was “transformative” even though his work differed in minor ways from Friedman’s.[208] Put simply, this limitation would help bring copyright law into line with the reality of appropriation art. If courts continue to engage in subjective analyses of how much variation of an original work is transformative, the doctrinal chaos advanced by Cariou will continue to confuse artists and scholars. Only those artists wealthy enough to roll the legal dice will be able to risk an infringement decision (especially if their pockets are deep enough to afford appellate counsel). The majority of artists cannot afford to take those risks. The uncertainty caused by diffuse standards may chill the creation of new works, depriving society of the “progress of the … useful arts” that the Constitution seeks to protect.[209] It may also result in fewer source works for artists to appropriate in future years. Restoring a bright line, even one that is more conservative than that established by the current case law, will provide the certainty artists and art markets need. The scope of rights suggested here squares with case law, including Cariou, and has the benefit of being both simple and realistic. To be sure, some reproductions of copyrightable works will still be found to be fair use, for example, where the reproduction serves a different purpose from the original work.[210] And reproduction may still be found to misappropriate an image even where it is surrounded by original creative elements, as was the case in Hart v. Electronic Arts.[211] As a general principle, however, limiting the derivative rights of visual artists to reproductions with minimal variations will help restore the proper boundaries between derivative and transformative use in this sphere.

Conclusion

Reforming the determination of transformative use in this comprehensive manner is necessary to reign in the fragmentation of precedent that has left artists, scholars, and investors wondering what transformative use means now. The Cariou decision and other recent cases expanding the application of the fair use defense are cause for concern, not just in the multi-billion dollar global art market but for the preservation of the creative process in general. The explosion of images available on the internet feeds the development of appropriation art, demanding a legal treatment that fairly defines the rights of all players in this market. Copyright law (like all intellectual property law) seeks the right balance between rewarding the creators of new works and ensuring that those works can be used appropriately by the public, and it must adapt to evolving technology. By allowing appropriation artists apparently unfettered access to copyrighted materials, judicial decisions like Cariou threaten the incentives of more original artists to create the sources on which appropriation art depends. Left unchecked, it will continue to plague the art market, adversely affect lesser known artists, and entrust the legal boundaries of creative expression to the wide range of judicial discretion. Given the likely doctrinal, commercial and societal effects of these cases, there is a need for comprehensive reform. The proposals set forth in this article will clarify the rights of appropriation artists and source artists as well as the proper roles of judges and experts in 21st century art copyright cases. The first proposal, treating meritorious appropriation art as transformative use per se, removes the uncertain element of judicial subjectivity that currently makes it hard for artists to know a priori what their rights are when accusing someone or being accused of copyright infringement. It also allows courts to retain consideration of purpose, market impact, and other more easily determined elements of a fair use defense. The second proposal, encouraging the use of expert witnesses to determine whether the accused works meet the appropriation art test, acknowledges the limits of judges’ ability to evaluate the visual arts to the same extent that they can evaluate written works. It also dampens the likelihood that socioeconomic factors will play a large part in the court’s determination of what is and is not protectable, although the costs of litigation will always affect access to justice to some extent. The third proposal, limiting source artists’ copyright essentially to reproductions of their work, makes sense for the proper balance of rights in the visual arts context and is necessary for the first proposal to work well. This comprehensive set of reforms is necessary to restore much-needed clarity to the art world and to bring copyright jurisprudence into line with current ways of making and understanding art. As technology continues to multiply the images available for artists to work with and simultaneously fractures the viewing public into an infinite number of sub-communities, the tripartite reform proposed here is not only warranted but critical to align the interests of artists, consumers, copyright lawyers, and courts alike.
* Assistant Professor of Law, Bentley University, Waltham, Massachusetts. The author wishes to thank Sharon Patton for her assistance in preparing this article.
[1] See, e.g., Kyle Chayka, The Art Market was Worth $64 Billion in 2012, Hyperallergic (Jan. 2, 2013), http://hyperallergic.com/62911/the-art-market-was-worth-64-billion-in-2012/; see also TEFAF Art Market Report 2013, TEFAF Maastricht, (Mar. 13, 2013), http://www.tefaf.com/DesktopDefault.aspx?tabid=15&tabindex=14&pressrelease=14879&presslanguage=.
[2] See Kathryn Tully, Are Investors Bullish on the Art Market?, Forbes (Apr. 30, 2013, 7:13 PM), http://www.forbes.com/sites/kathryntully/2013/04/30/are-investors-bullish-on-the-art-market/.
[3] Id.
[4] Ben Beaumont-Thomas, Christie’s post-war sale reaches $744m via Warhol, Bacon and Newman, The Guardian, (May 14, 2014, 7:16 PM), www.theguardian.com/artanddesign/2014/may/14/christies-andy-warhol-francis-bacon-barnett-newman.
[6] Cariou v. Prince, 714 F.3d 694, 709 (2d Cir. 2013) cert. denied, 134 S. Ct. 618 (2013).
[7] Id.
[8] Cariou, 714 F.3d at 710.
[9] Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 577 (1994) (internal quotation marks omitted) (citing Stewart v. Abend, 495 U.S. 207, 236 (1990)).
[10] See, e.g., Matthew D. Bunker & Clay Calvert, The Jurisprudence of Transformation: Intellectual Incoherence And Doctrinal Murkiness Twenty Years After Campbell v. Acuff-Rose Music, 12 Duke L. & Tech. Rev. 92, 127 (2014) (suggesting inter alia that transformative use be limited to certain types of copyrightable expression); Deepa Varadarajan, Improvement Doctrines, 21 Geo. Mason L. Rev. 657, 682 (2014) (suggesting a “substantial improvement” limitation to the fair use defense); Monika Isia Jasiewicz, Note, “A Dangerous Undertaking”: The Problem of Intentionalism and Promise of Expert Testimony in Appropriation Art Infringement Cases, 26 Yale J.L. & Human. 143, 146 (2014) (proposing that courts invite expert testimony on whether an artistic use is “transformative” in a way that would qualify for the fair use defense).
[11] MOCA The Museum of Contemporary Art, Los Angeles, http://moca.org/pc/viewArtTerm.php?id=2 (last visited Sept. 2, 2014).
[12] Remixthebook, Appropriation, http://www.remixthebook.com/the-course/appropriation (last visited Oct. 29, 2014).
[13] Mike Masnick, AP and Shepard Fairey Settle Lawsuit over Obama Image; Fairey Agrees to Give up Fair Use Rights to AP Photos, Techdirt (Jan. 12, 2011, 11:22 AM), https://www.techdirt.com/articles/20110112/10170012637/ap-shepard-fairey-settle-lawsuit-over-obama-image-fairey-agrees-to-give-up-fair-use-rights-to-ap-photos.shtml.
[14] See Hal Foster et al., Art Since 1900: Modernism, Antimodernism, Postmodernism, Vol. 1: 1900 to 1944, at 112 (Thames & Hudson eds., 2004).
[15] See John Carlin, Culture Vultures: Artistic Appropriation and Intellectual Property Law, 13 Colum.-VLA J.L. & Arts 103, 109 (1988).
[16] For a more extensive discussion of the evolution of appropriation art, please see Jasiewicz, supra note 11, at 147-151.
[17] Id. at 150.
[18] Id. at 151.
[19] Festival of Inappropriation, About the Festival (Oct. 28, 2014), http://festivalofinappropriation.org.
[20] Hactivism is “a neologism that mashes up the creative use of digital tools associated with the computer hacker with the interventionist strategies of political activists. Cleverly inserting themselves into the networked space of flows, digitally inclined hactivists use whatever new media technologies they may have access to subvert the mainstream media discourse and tweak the way we construct meaning in the corporate media economy.” Remixthebook, Hactivism, http://www.remixthebook.com/the-course/hactivism (last visited Oct. 28, 2014).
[21] Remix Culture, http://altx.com/remix/ (last visited Oct. 28, 2014); Remixthebook, The Course, http://www.remixthebook.com/the-course (last visited Oct. 28, 2014).
[22] See, e.g., Seth Fiegerman, More than 500 Million Photos are Shared Every Day, Mashable (May 29, 2013), http://mashable.com/2013/05/29/mary-meeker-internet-trends-2013/.
[23] See, e.g., Rebecca Corliss, Photos on Facebook Generate 53% More Likes than the Average Post, Hubspot (Nov. 15, 2012, 9:00 AM), http://blog.hubspot.com/blog/tabid/6307/bid/ 33800/Photos-on-Facebook-Generate-53-More-Likes-Than-the-Average-Post-NEW-DATA.aspx.
[24] See Pierre N. Leval, Commentary, Toward a Fair Use Standard, 103 Harv. L. Rev. 1105 (1990); see also Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 579 (1994).
[25] See 17 U.S.C. § 107 (2012).
[26] Id.
[27] See Leval, supra note 25, at 1111.
[28] Id.
[29] Mattel, Inc. v. Walking Mountain Prods., 353 F.3d 792, 803 (9th Cir. 2003).
[30] Campbell, 510 U.S. at 579.
[31] Id. at 571.
[32] Id. at 578.
[33] The term “relied on” raises a host of issues itself, since almost all art derives in some way from previous works.
[34] Cariou v. Prince, 134 S. Ct. 618 (2013).
[35] Cariou v. Prince, 784 F. Supp. 2d 337, 343 (S.D.N.Y. 2011), rev’d in part, vacated in part, 714 F.3d 694 (2d Cir. 2013).
[36] Id.
[37] Id.
[38] Press Release, Gagosian Gallery, Richard Prince: Cowboys (Jan. 28, 2013), available at http://gagosian.vaesite.net/__data/ae1f26f3f3e95aad455dccf8ffea355a.pdf.
[39] Carol Vogel, Bacon is Again a Top Draw at Auction, N.Y. Times, (Jul. 2, 2008), http://www.nytimes.com/2008/07/02/arts/design/02auct.html.
[40] Cariou, 784 F. Supp. 2d at 343.
[41] Id. at 344.
[42] Id.
[43] Id. at 350.
[44] Id. at 344.
[45] Cariou, 714 F.3d at 704.
[46] Cariou, 784 F. Supp. 2d at 355.
[47] Id. at 347-51.
[48] Id. at 348 (citing Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 579 (1994)).
[49] Id.
[50] Id. at 349.
[51] Id.
[52] Cariou, 784 F. Supp. 2d at 350.
[53] Id. at 349 (internal quotation marks omitted).
[54] Id. at 350-51.
[55] Id. at 351.
[56] Id. at 352 (citing Howard B. Abrams, The Law of Copyright, § 15:52 (2006)).
[57] Id.
[58] Cariou, 784 F. Supp. 2d at 352.
[59] Id. at 353.
[60] Id.
[61] Id. (citing J.D. Salinger v. Random House, Inc., 811 F.2d 90, 99 (2d Cir. 1987)).
[62] Id. (citing Castle Rock Entm’t, Inc. v. Carol Pub. Grp, Inc., 150 F.3d 132, 145-46 (1998)).
[63] Cariou, 784 F. Supp. 2d at 344.
[64] Id.
[65] Id.
[66] Id. at 353.
[67] Id. at 355.
[68] Cariou, 714 F.3d at 704.
[69] Id. at 697.
[70] Id. at 695.
[71] Id. at 699.
[72] Id. at 700.
[73] Cariou, 714 F.3d at 706.
[74] Id.
[75] Id. (internal quotation marks omitted) (citing Campbell Acuff-Rose Music, Inc, 510 U.S. 569, 579 (1994)).
[76] Id. (citing Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 579 (1994)).
[77] Id. at 707.
[78] See Cariou, 714 F.3d at 708 (“Although there is no question that Prince’s artworks are commercial, we do not place much significance on that fact due to the transformative nature of the work.”).
[79] See id. at 709 (“Although certain of Prince’s artworks contain significant portions of certain of Cariou’s photographs, neither Prince nor the Canal Zone show usurped the market for those photographs.”).
[80] Id.
[81] Id.
[82] Id. Although the ruling did not so specify, it is reasonable to infer from both the elite nature of the Gagosian Gallery and the price point for Prince’s work that only the wealthiest collectors could afford to buy these pieces.
[83] Cariou, 714 F.3d at 712.
[84] Id.
[85] Prince’s response to the verdict was interesting. When the twenty-five paintings which had been held for five years pending the resolution of the case were finally returned to him after the Second Circuit’s ruling, he tweeted: “Canal Zone paintings finally back. Saw Em for the first time in 5 years. What they should of [sic] sued me for was making shitty paintings. XingEmOut.” Irina Tarsis, Photographs and Richard Prince: The Gifts That Keep on Giving, Center for Art Law, (Feb. 24, 2014), http://itsartlaw.com/2014/02/24/photogrpahs-and-richard-prince-the-gifts-that-keep-on-giving/.
[86] Seltzer v. Green Day, Inc., 725 F.3d 1170, 1179 (9th Cir. 2013).
[87] Id. at 1173.
[88] Id. at 1174.
[89] Id. at 1175.
[90] Id. at 1176.
[91] Id. at 1177.
[92] See Matthew Sag, Predicting Fair Use, 73 Ohio St. L.J. 47, 52 (2012).
[93] Id. at 84.
[95] Id. at 734.
[96] Id. at 736.
[97] Id.
[98] Id. at 740.
[99] Id. at 742.
[100] Kim J. Landsman, Does Cariou v. Prince Represent the Apogee or Burn-Out of Transformativeness in Fair Use Jurisprudence? A Plea for a Neo-Traditional Approach, 24 Fordham Intell. Prop. Media & Ent. L.J. 321, 354 (2014).
[101] Netanel, supra note 95, at 745.
[102] Id. at 744.
[103] Rogers v. Koons, 751 F. Supp. 474 (S.D.N.Y. 1990), aff’d, 960 F.2d 301 (2d Cir. 1992), cert. denied, 506 U.S. 934 (1992).
[104] See Rogers, 751 F. Supp. at 480.
[105] See Rogers, 960 F.2d at 306.
[106] Blanch v. Koons, 467 F.3d 244, 246-47 (2d Cir. 2006).
[107] See id. at 247.
[108] Id. at 247-248.
[109] Id. at 248.
[110] Id.
[111] Id. at 252-253.
[112] Id. at 259.
[113] See, e.g., Morris v. Guetta, No. LA CV12-00684 JAK (RZx), 2013 WL 440127, at *8 (C.D. Cal. Feb. 4, 2013) (rejecting defendant’s fair use defense to plaintiff photographer’s copyright infringement claims); Friedman v. Guetta, No. CV 10–00014 DDP (JCx), 2011 WL 3510890, at *7 (C.D. Cal. May 27, 2011) (finding infringement despite defendant’s claims that his use of plaintiff’s photograph was transformative).
[114] See, e.g., Elizabeth Winkowski, A Context-Sensitive Inquiry: The Interpretation of Meaning in Cases of Visual Appropriation Art, 12 J. Marshall Rev. Intell. Prop. L. 746, 760 (2013); Copyright Law – Fair Use – Second Circuit Holds That Appropriation Artwork Need Not Comment on the Original to Be Transformative. – Cariou v. Prince, 714 F.3d 694 (2d Cir. 2013), 127 Harv. L. Rev. 1228, 1229 (2014).
[115] Brief for The American Photographic Artists et al. as Amici Curiae Supporting Plaintiff, Cariou v. Prince, 784 F. Supp. 2d 337 (S.D.N.Y. 2011) (No. 08 CIV 11327), available at http://blogs.nppa.org/advocacy/files/2013/12/Cariou-v-Prince-Dist-Ct-Amicus-Brief-12-16-13.pdf.
[116] Id.
[117] 17 U.S.C. § 101 (2010).
[118] Campbell, 510 U.S. at 579.
[119] See Fair Use: Hearing Before the Subcomm. on Courts, Intellectual Property, and the Internet of the H. Comm. on the Judiciary, 113th Cong. 10 (2014) (statement of June M. Besek, Exec. Dir. of the Kernochan Center for Law, Media and the Arts and Lecturer-in-Law, Columbia Law School), available at http://judiciary.house.gov/_cache/files/83d5bf33-9587-4908-849f-e63edc1b49f5/012814-testimony—besek.pdf [hereinafter, Statement of June M. Besek].
[120] Id. at 12-13.
[121] Id.
[122] Agreement on Trade-Related Aspects of Intellectual Property Rights, Apr. 15, 1994, Marrakesh Agreement Establishing the World Trade Organization, Annex 1C, art. 13, 1869 U.N.T.S. 299 (1994).
[123] See Panel Report, United States – Section 110(5) of the US Copyright Act, WT/DS160/R (June 15, 2000), available at http://www.wto.org/english/tratop_e/dispu_e/1234da.pdf.
[124] See Statement of June M. Besek, supra note 120, at 12.
[125] Id.
[126] See, e.g., Kennedy, supra note 6.
[127] Richard Price, Untitled (Cowboy), Christie’s, http://www.christies.com/lotfinder/photographs/richard-prince-untitled-5792595-details.aspx (last visited May 27, 2014).
[128] See, e.g., Christian Marclay’s The Clock Makes Midwest Debut, Wexner Ctr. for the Arts, http://wexarts.org/press/christian-marclay-s-clock (last visited Sept. 2, 2014).
[129] See, e.g., Kennedy, supra note 6; Deborah Vankin, An Appropriate Time for Appropriation Art at Hammer, LATimes.com (Feb. 7, 2014), http://articles.latimes.com/2014/feb/07/entertainment/la-et-cm-hammer-art-appropriation-20140209; A Study in Midwestern Appropriation, Hyde Park Art Center, http://www.hydeparkart.org/exhibitions/ema-study-in-midwestern-appropriationem (last visited Sept. 2, 2014).
[130] Don Thompson, The $12 Million Stuffed Shark: The Curious Economics of Contemporary Art 12 (2008).
[131] See, e.g., Elizabeth M. Petty, Rauschenberg, Royalties and Artists’ Rights: Potential Droit de Suite Legislation in the United States, 22 Wm. & Mary Bill of Rts J. 977, 1005-1006 (2014).
[132] Id.
[133] Id.
[134] See Eric Konigsberg, The Trials of Art Superdealer Larry Gagosian, Vulture (Jan. 20, 2013, 9:10 PM), http://www.vulture.com/2013/01/art-superdealer-larry-gagosian.html.
[135] Id.
[136] See, e.g., Kennedy, supra note 6.
[137] See, e.g., Mixel, mixel.cc (last visited Sept. 2, 2014).
[138] This is not to suggest that all artists have a profit motive—indeed, Patrick Cariou did not commercialize his art extensively—but simply to recognize that commodifying art requires compensation.
[139] Cariou v. Prince, 784 F. Supp. 2d 337, 343 (S.D.N.Y. 2011) rev’d in part, vacated in part, 714 F.3d 694 (2d Cir. 2013).
[140] See, e.g., Guy A. Rub, The Unconvincing Case for Resale Royalties, 124 Yale L.J. F. 1 (April 25, 2014), http://yalelawjournal.com/forum/the-unconvincing-case-for-resale-royalties.
[141] See, e.g., U.S. Copyright Office, Resale Royalties: An Updated Analysis 2 (Dec. 2013), available at http://copyright.gov/docs/resaleroyalty/usco-resaleroyalty.pdf (“many visual artists [are placed] at a material disadvantage vis-à-vis other authors”); Rub, supra note 141 at 31 (“[C]opyright law has effectively discriminated against [visual artists] in many respects for centuries.”) (quoting Shira Perlmutter, Resale Royalties for Artists: An Analysis of the Register of Copyrights’ Report, 16 Colum.-VLA J. L. & Arts 395, 403 (1995)); see also Petty, supra note 132, at 986-987.
[142] Cariou v. Prince, 784 F. Supp. 2d at 343.
[143] See, e.g., Brief for The American Photographic Artists et al., supra note 116, at 18.
[144] See Harper & Row, Publishers, Inc. v. Nation Enters., 471 U.S. 539, 568 n.9 (1985) (“[here] there is a fully functioning market that encourages the creation and dissemination of memoirs of public figures. In the economists’ view, permitting ‘fair use’ to displace normal copyright channels disrupts the copyright market without a commensurate public benefit”); Am. Geophysical Union v. Texaco Inc., 60 F.3d 913, 931 (2d Cir. 1994) (“it is sensible that a particular unauthorized use should be considered ‘more fair’ when there is no ready market or means to pay for the use, while such an unauthorized use should be considered ‘less fair’ when there is a ready market or means to pay for the use”).
[145] Cariou can also be viewed as an example of the imbalance of power in the legal system. While the identity of counsel is not generally considered relevant to the outcome of the case, it would be disingenuous to ignore the fact that Prince’s appellate law firm was Boies, Schiller & Flexner LLP, one of the most expensive and prestigious law firms in the country. The dramatic reversal of the Second Circuit’s opinion must have resulted from a significant legal effort by appellate counsel, some of which was described in a New York Times article on the increasing prevalence of appropriation art. See Kennedy, supra note 6.
[146] In fact, the Judiciary Committee held a hearing on the proper scope of the fair use defense on January 28, 2014. The Scope of Fair Use: Hearing Before the Subcomm. on Courts, Intellectual Prop. and the Internet of the H. Comm. on the Judiciary, 113th Cong. (2014), available at http://judiciary.house.gov/index.cfm/2014/1/the-scope-of-fair-use.
[147] Michael A. Einhorn, Media, Technology and Copyright: Integrating Law and Economics, 33 (2004).
[148] Sony Corp. v. Universal City Studios, Inc., 464 U.S. 417, 455 n.40 (1984).
[149] Id. at 478-9 (Blackmun, J., dissenting).
[150] Am. Geophysical Union v. Texaco, 802 F. Supp. 1, 14-15 (S.D.N.Y. 1994), aff’d, 60 F.3d 913 (2d Cir. 1994).
[151] Lloyd L. Weinreb, Fair’s Fair: A Comment on the Fair Use Doctrine, 103 Harv. L. Rev. 1137, 1143-4, 1160 (1990).
[152] See, e,g., Matthew Sag, G-d in the Machine: A New Structural Analysis of Copyright’s Fair Use Doctrine, 11 Mich. Telecomm. & Tech. L. Rev. 2 (2005).
[153] See Cariou v. Prince, 784 F. Supp. 2d 337, 343 (S.D.N.Y. 2011), rev’d in part, vacated in part, 714 F.3d 694 (2d Cir. 2013).
[154] See, e.g., Judith Bresler, Begged, Borrowed or Stolen: Whose Art Is It, Anyway? An Alternative Solution of Fine Art Licensing, 50 J. Copyright Soc’y of the U.S.A. 15 (2002).
[155] Section 115 of the Copyright Act provides for compulsory licensing in order to perform or record someone else’s original song. 17 U.S.C. § 115(a)(1) (2012).
[156] See, e.g., Kenneth M. Achenbach, Grey Area: How Recent Developments in Digital Music Production Have Necessitated the Reexamination of Compulsory Licensing for Sample-Based Works, 6 N.C. J. L. & Tech. 187, 190-191 (2004); Chris Johnstone, Note, Underground Appeal: A Sample of the Chronic Questions In Copyright Law Pertaining to the Transformative Use of Digital Music in a Civil Society, 77 S. Cal. L. Rev. 397, 399-402 (2004); Lucille M. Ponte, The Emperor Has No Clothes: How Digital Sampling Infringement Cases Are Exposing Weaknesses In Traditional Copyright Law and the Need for Statutory Reform, 43 Am. Bus. L.J. 515, 547 (2006) (critiquing compulsory licensing proposals).
[157] See, e.g., Tarsis, supra note 86.
[158] See, e.g., Martha Buskirk, Commodification as Censor: Copyrights and Fair Use, 60 October MIT Press 82, 102 (1992) (explaining that Rogers v. Koons “raises a number of important and troubling questions about the legal status of artistic appropriation, and it may set an important precedent with respect to the appropriation of images in works of art…. The decision is particularly troubling given the way in which strategies of appropriation have often performed a critical function”).
[159] Jasiewicz, supra note 11, at 151.
[160] E. Kenly Ames, Note, Beyond Rogers v. Koons: A Fair Use Standard for Appropriation, 93 Colum. L. Rev. 1473, 1500 (1993). But cf. Darren Hudson Hick, Appropriation and Transformation, 23 Fordham Intell. Prop. Media & Ent. L.J. 1155, 1177 (2013) (rejecting the idea that “we [can] describe the contemporary category of appropriation art on the basis that it is essentially a form of social commentary.”).
[161] See, e.g., Petty, supra note 132, at 1006-7.
[162] Katya Kazakina, Bargain Warhols, Secrecy Bring Collectors to Private Art Sales, Bloomberg (July 27, 2009, 12:01AM), http://www.bloomberg.com/apps/news?pid=newsarchive&sid=apWHIzppllaM.
[163] Id.
[164] See Campbell, 510 U.S. at 569.
[165] History of ARS, Artists Rights Soc’y, http://www.arsny.com/about.html (last visited Oct 26, 2014).
[166] General Information and Services, Vaga Rights, http://vagarights.com/general-information-services/ (last visited Oct. 26, 2014).
[167] Services Provided, Artists Rights Soc’y, http://www.arsny.com/services.html (last visited Oct. 26, 2014).
[168] That said, it could be argued that determining whether an excerpt of a written work is the “heart” of the original, as fair use requires us to do when evaluating the use of quotes is a comparably difficult exercise. See, e.g., Campbell, 510 U.S. at 569.
[169] The concept of a resale royalty itself is not meant to redress the imbalance of power between a source artist and an appropriation artist. In other words, resale royalties would not compensate a source artist like Cariou when an appropriation artist like Prince uses his work.
[170] See, e.g., Petty, supra note 132, at 985 (noting that every European country other than Switzerland has a resale royalty law, as do several Latin and South American countries); see also Rub, supra note141.
[171] See, e.g., U.S. Copyright Office, supra note 142.
[172] The American Royalties Too Act of 2014, H.R. 4103, 113th Cong. (2014).
[173] See, e.g., Rub, supra note 141 at 2; Petty, supra note 132, at 1006-7.
[174] Morris v. Guetta, No. LA CV12-00684 JAK (RZx), 2013 WL 440127, at *8 (C.D. Cal. Feb. 4, 2013) (rejecting defendant’s fair use defense to plaintiff photographer’s copyright infringement claims).
[175] Id. at *13.
[176] Carlin, supra note 16, at 137-38.
[177] Id. at 139.
[178] Id.
[179] Id.
[180] See Ames, supra note 161, at 1515-1516.
[181] Id. at 1518-1519.
[182] Id. at 1523.
[183] Cariou v. Prince, 714 F.3d 694, 701-11 (2d Cir. 2013).
[184] Jasiewicz, supra note 11, at 147.
[185] U.S. Const. art 1, § 8.
[186] Jasiewicz, supra note 11, at 151.
[187] 17 U.S.C. § 106A (2006).
[188] Cariou, 714 F.3d at 708-711.
[189] See Jasiewicz, supra note 11, at 146.
[190] Bunker & Calvert, supra note 11, at 127.
[191] See, e.g., Alex Kiefer, The Intentional Model in Interpretation, 63 J. Aesthetics & Art Criticism 3, 271-281 (2005).
[192] Bunker & Calvert, supra note 11, at 127.
[193] Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 251-252 (1903).
[194] Cariou v. Prince, 714 F.3d at 714 (citing Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 582 (1994) (quoting Bleistein, 188 U.S. 239, 251 (1903))).
[195] Id.
[196] See, e.g., Caroline L. McEneaney, Transformative Use and Comment on the Original: Threats to Appropriation in Contemporary Visual Art, 78 Brook. L. Rev. 1521, 1543 (2013).
[197] Cariou v. Prince, 784 F. Supp. 2d 337, 349 (S.D.N.Y. 2011), rev’d in part, vacated in part, 714 F.3d 694 (2d Cir. 2013).
[198] See 17 U.S.C. § 107 (2006).
[199] McEneaney, supra note 197, at 1543.
[200] See Markman v. Westerview Instruments, Inc., 517 U.S. 370 (1996).
[201] Cariou v. Prince, 714 F.3d 694, 709 (2d Cir. 2013).
[202] See 17 U.S.C. § 107 (2006).
[203] See Blanch, 467 F.3d at 251; Campbell, 510 U.S. at 579; Cariou, 714 F.3d at 705-706.
[204] Cariou, 714 F.3d at 709.
[205] Rogers, 960 F.2d at 303.
[206] Cariou, 714 F.3d at 709.
[207] Friedman v. Guetta, No. CV 10-00014 DDP (JCx), 2011 WL 3510890 (C.D. Cal. May 27, 2011) at *7.
[208] Id. at *6.
[209] U.S. Const. art 1, §8.
[210] See, e.g., Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146 (9th Cir. 2007) (holding that framing and hyperlinking as part of image search engine constituted fair use of Perfect 10 images because the use was highly transformative).
[211] Hart v. Elec. Arts, Inc., 717 F.3d 141, 159-69 (3d Cir. 2013).

Bridging the Gap: Improving Intellectual Property Protection for the Look and Feel of Websites

Bridging the Gap: Improving Intellectual Property Protection for the Look and Feel of Websites
By Liz Brown* A pdf version of this article may be downloaded here.  

Introduction

Every company strives for a unique and memorable website. There is a growing threat, however, that this valuable investment in website design will be copied by competitors without effective legal remedy and with potentially devastating consequences. The “look and feel” of a website—the immediate impression that makes a website recognizable, easy to use, and deserving of consumer trust—is not adequately protected by copyright, trademark, or any other intellectual property doctrine. No intellectual property doctrine currently provides companies with a predictable way to ensure that a competitor does not copy their websites’ look and feel. Website look and feel protection falls into a chasm between copyright on one hand and trade dress on the other, neither of which adequately addresses this modern problem. While copyright protects fixed texts, it cannot offer the scope and fluidity of protection needed to capture the look and feel of entire websites. Trade dress falls short because existing law does not adequately address the blend of form and function essential to website protection. This article proposes the adoption of a multi-factor test adapted from trade dress law in order to secure more effective protection for websites and clarify that trade dress is the proper doctrinal home of “look and feel” protection. In evaluating the potential legal protections for web sites, it is important to distinguish the parts from the whole. Some website elements are relatively easy to protect. These elements include the array of fonts, text size, colors and spacing mainly controlled by a cascading style sheet, or CSS. Copyright may protect CSS, like other code, along with specific images or text on any particular web page.[1] The business name and logo qualify for trademark protection. While copyright law protects a website’s source code and fixed elements and trademark law can protect logos, intellectual property law does not protect the more fluid look and feel of the site overall. A competitor may copy a website’s look and feel without infringing the original site’s copyright in any particular text. A website’s look and feel is different from, but partly dependent on, the specific code that defines how the text and images appear on the website. It is the composite effect of the technical elements, together with design features, that creates a unique user experience. The lack of effective protection for the look and feel of websites presents a serious legal and economic problem. Websites are essential to modern business, the electronic bridge between companies and their customers and the basis of all e-commerce. As companies as large as Facebook are discovering, those vital assets are susceptible to outright copying without permission. Because of gaps in intellectual property law, competitors can copy the overall look and feel of a trusted website, tricking customers into patronizing a different website, with few clear repercussions. Unless this gap is filled, the problem is likely to get worse over the coming years with potentially severe commercial impact. The cost to businesses, in the forms of revenue, trust and goodwill, of such copying is vast. The cost to consumers, who provide confidential data and payments based on misimpression of commercial source, has sparked investigations by the Department of Homeland Security[2]. Although look and feel protection is not a particularly new issue, courts and scholars continue to struggle with it. Some courts have suggested that website look and feel protection should stem from copyright law, which protects the expression of ideas.[3] Others have adopted trade dress, with its emphasis on protecting a firm’s impression on consumers, as a more appropriate basis for protecting website look and feel.[4] Scholars have noted the doctrinal confusion in the few cases addressing look and feel protection but have not proposed a workable solution.[5] Recent case law and technological developments make it clear that a comprehensive solution must be found soon. The ubiquity of website copying, combined with the increasing commercial value of website look and feel, creates a significant but ineffectively regulated threat to online commerce. As no satisfactory judicial approach to the problem of website copying has yet emerged, the questions remain: What is the best way to protect the look and feel of websites from illicit copying? What is the proper doctrinal basis for such protection? What is the optimal mechanism for putting it in place? The underlying thematic differences between copyright and trade dress law—in essence, the difference between protecting a website owner’s expression and protecting consumer impression—suggest that trade dress is the more appropriate basis for look and feel protection. While copyright law protects the expression of ideas, trade dress law essentially protects the consumer’s association between a given product or place (or perhaps a website) and a particular source. The latter is more relevant to the harms posed by website look and feel infringement. courts across the country, however, continue to struggle with this issue. This article explains the nature of the problem, analyzes recent case law, explores the limits of copyright and trade dress as bases for protecting website look and feel, and proposes a multi-factor judicial test for look and feel infringement. Part I discusses why the gap in website look and feel protection exists and its potential impact on businesses and consumers. Part II explores why neither copyright nor trade dress protects the look and feel of websites well enough, and the ways in which recent cases expose the gaps in this area of the law. In Part III, I propose a new judicial approach in the form of a multi-factor test for look and feel infringement, adapted from trade dress law and modified to address technological realities. Part IV concludes by offering additional advice for addressing these issues under current law and suggesting possible next steps in resolving these and related issues.

I. Copying Websites’ Look and Feel: A Growing Threat to E-Commerce

The “look and feel” of a website refers to the overall visual impression that allows a consumer to identify the website with a particular service provider or merchant, and confirms that the user is on the website she intended to visit.[6] As one court explained, “when a person visits a web site, she is comforted by the distinctive design, knowing that the look and feel is clearly associated with a specific brand name. This branding facilitates the association with a firm’s reputation.”[7] At least, it should. Website look and feel infringement disrupts the consumer’s trusted association of site with source, resulting in damage to both the merchant and the consumer.

A. The Nature of Look and Feel Copying

The following hypothetical illustrates the problem of copying look and feel. Assume there are two similarly worded websites: restaurant.com and restaurants.com. Although their domain names are similar, they have different business models. Restaurant.com offers discounted vouchers to a range of participating restaurants. Consumers can buy $25 vouchers for local restaurants at the discounted price of $10, or $5 during one of their frequent promotions. The main function of Restaurants.com, in contrast, is to aggregate customers’ restaurant reviews. It also offers some discounts, but vouchers are not the heart of its business. These websites’ patrons may not always remember the domain name of the website they want to visit. While some consumers bookmark a favorite website enabling their computer to recall the specific site, many others rely on a search engine. They can do so because they know that when they click on the “right” website, it will look familiar. Familiarity and past positive experience engender the trust necessary to encourage consumers to purchase a restaurant voucher and for the website to profit. When two similar domain names like restaurant.com and restaurants.com come up near each other in a web search, the visual distinctiveness of a website is especially important.[8] When websites look different from each other, and are viewed on a large enough screen, this works well. A problem arises, however, when one company decides to mimic the look and feel of a competitor’s website. If restaurants.com were struggling, it might consider a new business and marketing strategy, perhaps focusing more on voucher sales. It could then redesign its website to look more like restaurant.com, a leading competitor in that field. By changing its font to mimic the restaurant.com site, adjusting its spacing, changing its colors, rearranging its layout, and redesigning the search box, it can make its site looks more like restaurant.com. By doing so, it can siphon business from restaurant.com consumers who reached restaurants.com in error but do not realize their mistake before entering their credit card information.[9] If the copycat restaurants.com redesigns its website in this way, the original restaurant.com faces significant potential losses in what is, more or less, a zero-sum game. It loses customers, income, trust and good will. The original site, restaurant.com, can sue for infringement of the look and feel of its website. Restaurants.com will respond that it is competing legally because it has not infringed any of restaurant.com’s copyrights or trade dress rights. Who wins? There is no reliable answer to this question. No published case has established a claim for protecting the look and feel of websites. Although there is a growing body of case law on this issue, the few reported decisions do not form a coherent precedent. This problem, however, is far from hypothetical. It is something that even the largest websites face, including Facebook. In 2008, Facebook sued a German rival, StudiVZ, for infringement of its website look and feel.[10] StudiVZ had developed a website that looked and operated like Facebook, although it used a red background instead of blue. The StudiVZ site launched in Europe, where Facebook’s popularity had begun to grow.[11] Facebook brought suit in Northern California and Germany but retreated a year later, settling with StudiVZ in the United States because it could not succeed on its legal claims.[12] Athleta, a Gap-owned brand, faced a similar problem in 2012. One of its competitors, Pitbull, gradually changed its athletica.net website design over the course of three years to more closely resemble athleta.com. Athleta sued Pitbull for trademark infringement, unfair competition and false advertising, among other claims, in the Central District of California. It accused Pitbull of copying large parts of its website, misleading consumers into thinking that Athleta operated the athletica.net website. Pitbull’s copying included the adoption of athleta.com’s graphic layout and even extended to including consumer reviews “that were identical to the ones appearing on plaintiff’s site describing plaintiff’s products.”[13] As the court noted, the defendants were “generally adopting a similar look and feel to plaintiff’s website for their athletica.net website.”[14] The court granted Athleta’s motion for a preliminary injunction.[15]

B. The Economic Impact of Look and Feel Infringement

Businesses increasingly rely on websites as their calling cards and on e-commerce as their main source of income. As the commercial importance of website look and feel increases, so has the ease with which websites can be copied in their entirety. Many video tutorials demonstrate how to copy a website in five minutes or less.[16] Alternatively, several companies offer website copying services. One example is clonewebsite.com, which offers to copy a website for a flat fee of $49. As the frequency of look and feel copying has grown, entrepreneurs have created profitable businesses premised on look and feel infringement. Rocket, the company that created Facebook’s competitor StudiVZ, is a prime example. It has created successful knockoffs of well known websites including Fab, Priceline, and others. One journalist noted that Rocket’s clone of Zappos “now dominates six European markets and is estimated to be worth $1 billion by Financial Times Deutschland.”[17] The financial impact of website look and feel copying is potentially vast, as there is a lucrative market to capture. Websites are a powerful source of revenue. According to some scholars, “E-commerce in the United States is predicted to grow by over 40% between 2011 and 2015, reaching more than $270 billion in sales accounting for 15% of total retail sales excluding food products. In 2010, more than three-quarters of the North American industrial businesses that reported growth said that websites made a significant contribution to that growth. Overall, global e-commerce revenue is forecasted to hit $960 billion by 2013 and $1.4 trillion in 2015.”[18] Because e-commerce is growing so rapidly, the look and feel of a website provides a competitive advantage. The overall visual impression a website creates is the primary source identifier for businesses on the Internet.[19] The look and feel of a website increases in importance as people use smaller screens to access the Internet. In 2013, the Pew Research Center reported that 63% of mobile phone owners use their phones to access the Internet, and 34% of them use their phones, rather than a laptop or home computer, as their primary Internet device.[20] Nearly half of respondents in the 18–29 age group said that their mobile phone is their primary device for the Internet.[21] As more consumers view websites on mobile devices, on which it is often impossible to read domain names, businesses and consumers rely increasingly on the website’s overall visual impression as a source identifier.[22] The rapid growth of consulting companies that specialize in designing mobile-friendly web sites, like Mobiquity, attest to the impact increased mobile usage is having on web site development.[23] The smaller the screen, the more important visual recognition of the website becomes to the user’s brand, because the domain name becomes illegible. Knockoff websites pose risks for consumers who are fooled into buying counterfeit goods from them. In July 2012, the Department of Homeland Security announced an investigation into 70 different knockoff websites that had sold counterfeit goods to American consumers. John Morton, director of the department’s U.S. Immigrations and Customs Enforcement unit, noted that the copycat websites were using increasingly sophisticated methods to pass themselves off as genuine. “The fake sites and the real sites are almost indistinguishable,” Morton said. “And the fake sites aren’t offering obvious knockoffs. They are trying to masquerade as the real deal.”[24] The fake web sites had confused consumers, who bought goods on the fake sites under the misimpression that they were legitimate businesses. When consumers lose money due to website copying, the original website owners suffer as well. When Athleta sued its competitor for mimicking the look and feel of its website, for example, the court noted that Athleta had established a likelihood of confusion by demonstrating actual consumer confusion.[25] Consumers who mistakenly paid for goods through a competitor’s knockoff website “have called or emailed Athleta with complaints that they have not received order status confirmation emails from Athleta, that products they ordered have not yet arrived, or that their Living Social discount codes that they purchased are not being accepted by Athleta’s website.”[26] The court agreed that it damaged Athleta in the form of lost goodwill and reputation. “These consumers have expressed frustration to plaintiff with regards to the untimely shipment of merchandise or the non-receipt of confirmation emails, when in fact these consumers have ordered from defendants’ website.”[27] The fact that Pitbull was selling poor quality copies of Athleta’s goods caused further damage. “[T]o the extent the parties’ goods differ in quality, consumers’ satisfaction with plaintiff’s products may decrease as a result of these consumers purchasing defendants’ products.” The resulting loss of goodwill and reputation in the marketplace led the court to rule that Athleta was being irreparably injured by the defendants’ copying.[28]

II. Using Copyright or Trade Dress to Protect Website Look and Feel

When victims of website copying have turned to the courts, they have brought claims under a variety of theories, including intellectual property infringement and unfair competition. The two most promising and commonly discussed intellectual property claims related to this kind of copying are copyright and trade dress. As described below, neither offers entirely effective protection.

A. The Ambiguous Nature of Look and Feel Protection

Although there is relatively little case law on look and feel infringement, a few key decisions illustrate the confusion often wrought. The lack of certainty as to which intellectual property doctrine best protects the look and feel of websites is obvious from the plaintiffs’ claims and the courts’ responses in these cases. In one of the most frequently cited look and feel cases, Blue Nile v. Ice.com, a 2007 case from the Western District of Washington, the court struggled with the legal nature of plaintiff’s look and feel infringement claim.[29] An initial problem was that the plaintiff’s claims were less than clear. Blue Nile had asserted copyright protection for certain elements of its website, including some search features, and had registered them with the Copyright Office. At the same time, Blue Nile alleged state law claims relating to the “look and feel” of the website, which it claimed were outside of the purview of copyright. In stating those claims, however, Blue Nile incorporated by reference its copyright claims. The court crossly pointed out that “Plaintiff cannot both expressly rely on the copyright allegations in all of its state law claims and assert that the state law claims are outside copyright’s subject matter for purposes of avoiding preemption.”[30] The ambiguity in the court’s own language is also striking. In some respects, the court’s reasoning is internally inconsistent. At one point, the court asserted that the look and feel of a website is a matter of copyright law rather than trade dress (“The look and feel of plaintiff’s website is within the subject matter of copyright.”).[31] At another point, the court allowed that the look and feel of a website might also be a matter of trade dress law rather than copyright (“[What] portions of the website relate to the look and feel of its trade dress claims require greater factual development”).[32] Had the litigation continued, presumably, the court could have evaluated more precise claims as to what specific elements comprised the “look and feel” of the websites at issue. Unfortunately for scholars, the Blue Nile litigation ended with dismissal two weeks after the court ruled on the motion to dismiss. [33] There was also confusion on both sides of the bench in Conference Archives, Inc. v. Sound Images, Inc., an unreported case from the Western District of Pennsylvania.[34] Although Sound Images admitted that it copied Conference Archives’ website and “the facts [were] largely uncontroverted,” the court denied both parties’ summary judgment motions.[35] The court acknowledged the unsettled nature of the issue it faced, noting that “while protection of source code and other electronic processes have found refuge in copyright or patent law, protection of the “look and feel” of a website remains unclear” and calling the matter “a case of first impression in this Circuit.”[36] The novelty of the issue apparently perplexed the plaintiff, too. The court observed that “Plaintiff’s motion for summary judgment is nebulous as to what ground of intellectual property law it relies on.”[37] In its complaint, Conference Archives referred to its claim as rooted in copyright law and yet acknowledged that “no federal copyright claim is asserted here.”[38] It stated that the “’look and feel’ of a web site can be ‘protected in multiple ways, such as by copyrights, trademark, [and] trade dress [sic].’”[39] Taking matters somewhat into its own hands, the court decided to consider the website copying claims under trademark, trade dress, trade secret and copyright theories.[40] The parties, however, apparently settled before trial. In addition to doctrinal uncertainty, another problem with existing case law is the number of decisions that have issued at a preliminary stage rather than after a full hearing on the merits. For example, the often-cited Blue Nile v. Ice.com decision resolved only the defendant’s motion to dismiss on preemption grounds.[41] In most cases, the courts have evaluated the claims under the relatively minimal standards of pleading sufficiency, or to resolve basic questions of preemption, instead of issuing a more complete evaluation of the issues after a trial. The preliminary stage at which these decisions are issued means that many of the critical issues have not yet been played out, including the extent to which functionality might bar a trade dress claim. In Salt Optics v. Jand, for example, the defendant had asserted that the plaintiff could not claim trade dress rights in the look and feel of its website because the website “is functional on its face and […] the “look and feel” of Plaintiff’s website has not acquired secondary meaning.”[42] While the court ruled that the Plaintiff had pled the elements of non-functionality and secondary meaning well enough to state a claim, it reserved “a more exacting factual analysis of these elements […] for a later stage of the case.”[43] The case settled, however, before the court could carry out such an analysis. While courts are slowly gaining more experience with look and feel claims there is still some confusion as to the proper nature of these claims. Website owners most frequently assert one of two kinds of claims: copyright and trade dress. The next sections address the viability of each.

B. The Limits of Copyright Law in Protecting Look and Feel

Because copyright law generally protects both legible text and software code, it is logical to start there as a potential basis for website protection.[44] Copyright law protects many components of a website, including the text an end user can read and the software code that specifies how that code will be displayed. Unlike more traditional art forms, the design features of a web page are controlled through a specific kind of code called a Cascading Style Sheet (CSS), which can be embedded in a website’s HTML. Like other kinds of software, CSS may be subject to copyright.[45][46] In order to bring a copyright claim for infringement of a website’s look and feel, however, the website owner must meet the threshold requirements of any copyright claim.[47] Specifically, the plaintiff must show (1) that it owns a valid copyright, (2) that the copyright has been registered with the Copyright Office, and (3) that the defendant has copied its protected work, which requires both copying-in-fact and substantially similar copying.[48] Applying these requirements in the context of website look and feel is not straightforward. Copying-in-fact can be demonstrated either by direct evidence or by showing access to the work and probative similarities.[49] Given the public nature of websites, it is hard to imagine a defendant successfully challenging the issue of access. While it is easier to establish access to the copied work, it may be more difficult to establish substantial similarity among websites, in part because of their interactivity. “An allegedly infringing work is considered substantially similar to a copyrighted work if ‘the ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them, and regard their aesthetic appeal as the same.'”[50] Some simple changes in a copied website design may lead a court to conclude that no such substantial similarity exists, even where there is direct evidence of intentional copying-in-fact. In the New York case of Crown Awards Inc. v. Trophydepot, for example, the defendant conceded that it had intentionally copied plaintiffs’ website. Because the defendants had changed some colors and added some text, however, the court found that the knockoff website was not “substantially similar” and denied plaintiff’s copyright claim on that basis.[51] Facebook, however, pursued claims against StudiVZ for look and feel infringement even though the knockoff site used red as its primary color instead of Facebook’s hallmark blue.[52]
1. The Copyright Office May Not Register “Look and Feel” Elements
The registration of a valid copyright is required to assert copyright claims.[53] While the Copyright Office will accept registration of the specific source code or text to be used in a website, it sends conflicting signals as to whether it will accept registration of the website’s look and feel overall. As at least one court has recognized, source code itself is not a proxy for the look and feel of the website. In Athleta v. Pitbull, the defendants argued that the court should compare the source code of their website with that of the plaintiffs’ website in order to evaluate their similarity.[54] The court rejected that argument, noting that any similarity between the source codes of the website was irrelevant to the main harm claimed, which was a likelihood of confusion by consumers who might mistake the defendants’ website for that of the plaintiffs. “The court does not see how the source code of the parties’ respective websites could create a likelihood of confusion as to the source of defendants’ goods or to defendants’ affiliation with plaintiff; it is the overall look and feel of defendants’ website vis-a-vis plaintiff’s that causes confusion.”[55] Stepping back from the source code, then, the questions remains as to whether the Copyright Office will register websites overall. Its own publications suggest that it will not register websites, website designs or website layouts. In Circular 66, the Copyright Office offers guidance for registering online works. It advises authors completing an application for registration to do the following:
Use terms that clearly refer to copyrightable authorship. Examples are “text,” “compilation,” “music,” “artwork,” […] Do not use terms that refer to elements that are not protected by copyright or may be ambiguous, for example, “website,” “interface,” “format,” “layout,” “design,” “look of website,” “lettering,” or “concept.”[56]
The Copyright Office’s inclusion of the terms “website” and “look of website” among the “elements that are not protected by copyright or may be ambiguous” dissuades companies wishing to copyright their websites as a whole. This language is somewhat vague, since it is not clear whether “website” and “look of website” fall into the category of ambiguous elements or unprotectable elements. Regardless, this language suggests that neither may be registered. The Copyright Office explains that while the code underlying a website may be registered for copyright protection, the resulting website content may not be included in that protection unless it can be described according to the Office’s requirements:
For a claim in a computer program that establishes the format of text and graphics on the computer screen when a website is viewed (such as a program written in html), registration will extend to the entire copyrightable content of the computer program code. It will not, however, extend to any website content generated by the program that is not present in the identifying material received and that is not described on the application.[57]
The Copyright Office also suggests that it will not register the spatial arrangement of individually registered elements or the appearance of the website. A prior version of Circular 66 stated that “in general, formatting of web pages is not copyrightable” and that its “longstanding practice … is to deny registration of the arrangement of elements on the basis of physical or directional layout in a given space, whether that space is a sheet of paper or a screen of space meant for information displayed digitally.”[58] The July 2012 revision of Circular 66 deleted that language, but did not replace it with any more specific or encouraging guidance for website creators. One reason for the Copyright Office’s reluctance to register websites is their mutability. The frequently changing nature of web sites may be fundamentally incompatible with the fixation requirement of copyrightable works. Copyright traditionally protects only texts that are fixed and unchanging.[59] Indeed, the Copyright Office requires that a web page’s source code and text be separately registered each time they are updated, revised or otherwise changed, unless they are databases, serials or newsletters. Again, Circular 66 provides the following guidance:
Many works transmitted online, such as websites, are revised or updated frequently. Generally, copyrightable revisions to online works that are published on separate days must each be registered individually, with a separate application and filing fee[.][60]
Characteristically, and increasingly, website texts are not fixed.[61] They must change frequently in order to fulfill one of their purposes: as a means of updated communication between the business and the consumer. Consumers expect websites to change often to reflect, for example, news that affects the company, daily or weekly sales or promotions, and any other element of a marketing campaign. A strict reading of Circular 66 suggests that a website owner would have to register new content with the Copyright Office on a daily basis to ensure protection since each change is likely to result in a new work, even if the overall look and feel of the website remains the same. The administrative burden of filing new paperwork daily with the Copyright Office is probably more than most website owners wish to expend.
2. Judicial Use of Copyright Claims in Look and Feel Cases
Given the Copyright Office’s directives, one might expect that copyright law would not protect the look and feel of websites effectively. While the Copyright Office may register both the individual elements of a website and the overall arrangement of those elements in theory, its advice to authors suggests that it is unlikely to do so in practice. That seemed to be the case after Darden v. Peters.[62] In Darden, the plaintiff had created a website designed to help users locate real estate appraisers nearby. The website consisted largely of maps taken from census sources, which were colored and labeled. When Darden tried to register its website with the Copyright Office, the clerk denied his request. The adaptation of the maps, the clerk reasoned, did not reflect an original work of authorship and therefore was not entitled to copyright registration. Darden sued to overturn the denial. The court sided with the Copyright Office, concluding that the website was primarily a compilation of maps rather than an original work. While certain creative compilations may be entitled to copyright protection, the court ruled, it upheld the denial because it did not find anything especially original about Darden’s compilation.[63] In a later case, Salt Optics v. Jand, the court again refused to allow copyright protection for either the specific elements of a website or its arrangement of them.[64] The case arose from competition between two online eyewear sellers. Plaintiff Salt Optics had created a distinctive, modern-looking website to sell its line of eyewear, featuring sparse white backgrounds and blocky black type. Defendant Jand operates the popular eyewear website Warby Parker. Salt Optics asserted that the Warby Parker website had an “overall look and feel” that was confusingly similar to Salt’s, and claimed both trade dress and copyright infringement.[65] The court granted Jand’s motion to dismiss Salt Optics’ claim for copyright protection in the specific elements of its website. It based its decision on its view that Salt Optics had not claimed anything particularly original about the basic elements or their layout. The court categorized the elements as “(1) eyeglasses bearing names (2) smaller images of products displayed on one side of a web page, (3) an image of a model wearing the product on the other side of the web page, (4) a close-up photograph of the product shown at a distinct angle (5) multiple smaller images of the product displaying color choices, and (6) two different views of a model wearing the product.”[66] The court saw nothing protectable about any of them, and deemed them all incidental to the sale of eyeglasses online. “Each of these elements, considered alone, are, on their face, commonplace expressions naturally associated with the idea of selling a fashion accessory over the Internet,” the court observed.[67] As such, none was eligible for copyright protection individually. In addition, the court saw no reason why Salt Optics’ arrangement of these elements might qualify for copyright protection. Nor, it pointed out, had Salt Optics alleged that its arrangement was creative enough to merit such protection. As the court stated, “[a]lthough certain combinations of unprotectable elements may qualify for copyright protection (e.g. music notes combined together to form a composition), “commonplace” or “typical” combinations do not.”[68] Implicit in that observation, however, was the possibility of copyright protection for a demonstrably original array of elements on a website. Unfortunately for Salt Optics, the court regarded its particular compilation of elements as “standard, stock and common” and therefore unworthy of protection.[69] In at least one case, however, a court denied copyright protection for individual elements of a website but upheld copyright protection for their arrangement. The case, Allen v. Ghoulish Gallery, concerned two competitors who “design, create, market and sell ‘changing portraits’ in the haunt industry.”[70] Both the plaintiff and defendant were artists who “take an antique photo and use lenticular technology to make the portrait ‘change’ into a haunted spirit, vampire or other spooky creature.”[71] The plaintiff alleged, among other things, that the defendant copied the look and feel of its website. Although the court found that there was nothing copyrightable about the individual elements of the plaintiff’s website, it held that he was entitled to copyright protection for “the selection, arrangement and presentation of the contents of his website.”[72] Two other federal courts have suggested that copyright law may protect website design and layout.[73] The Darden and Salt Optics courts’ refusals to allow copyright protection has not stopped other companies from alleging copyright infringement as a means of protecting their websites from illicit copying. Indeed, more recent decisions also suggest that the Copyright Office may be more willing to register website elements than its publications imply. In an unpublished 2011 case from the District of New Jersey, an educational organization sued its former webmaster for converting its website and copying it for another organization. The plaintiff brought a number of state law claims including conversion and trespass to chattel.[74] The court noted that the defendant “registered the website contents […] with the U.S. Copyright Office, effective July 1, 2009” and that the “registration application included text, software, code and graphical elements taken from the [plaintiff’s] website.”[75] The Copyright Act, the court ruled, preempted the state law claims, prompting the removal of the case to federal court.[76] The parties apparently settled before any ruling issued on the copyright claim. While the Copyright Office may be increasingly willing to register certain components of a web page, whether the Copyright Office will register the entire site as a unit is a separate question. Under Darden and Salt Optics, the protection will not extend to the entire web page unless that page is a particularly innovative composition of elements. Whether a website’s design is innovative, however, is a different inquiry from whether it has a distinctive look and feel. Darden led at least one commentator to conclude that “a copyright claim concerning the overall layout and design of a website would be weak.”[77] Even if the Copyright Office were willing to register the overall composition of a website, it is not clear that copyright would effectively protect the look and feel of the site. The user’s overall impression of the website depends on more than the static visual layout that copyright would protect. It depends in part, for example, on the user’s interaction with the menus and other functionality of the site. It transcends the specific colors used in one part of the website or another, although such minor changes might prevent a competing website from being similar enough for infringement. The limits of copyright law to protect look and feel are becoming more obvious. Even if a website owner copyrights every page of its website, it will need to bring trade dress claims for the look and feel of that site because the overall impression of a website is more than the sum of the appearance of its pages. In Express Lien v. National Association of Credit Management Inc., plaintiff Zlien did exactly that.[78] It alleged that defendant NACM violated copyright law by copying Zlien’s compilation of materials related to mechanics’ liens and bond claim laws, as it appeared on Zlien’s website.[79] It also alleged that NACM violated trade dress law by copying its “stylistic choices along with the content of the website, including the color, font, and hyperlinks, in a manner that is confusingly similar to Zlien’s website.”[80] Zlien’s decision to assert separate copyright claims to protect its pages and compilation and trade dress claims to protect the look and feel of its website reflects an evolving awareness of each doctrine’s proper use in website copying cases. In sum, copyright is a less effective basis for website look and feel protection. The Copyright Office’s guidance on what may be registered for copyright protection is somewhat at odds with at least some case law. The level of detail at which these cases are reported makes it difficult to parse exactly what makes an element of a website, or the composition of a website, sufficiently original to merit copyright protection. Even if a plaintiff could demonstrate originality, the formal requirements of copyright registration, including the obligation to register revised text on a daily basis, diminish the appeal of using copyright to protect websites’ look and feel. The uncertainty of copyright as protection for the look and feel of websites may explain why Facebook did not include a copyright claim with the eight other causes of action in its complaint against StudiVZ.[81]

C. The Limits of Trade Dress Law to Protect Website Look and Feel

Given the limits of copyright, some plaintiffs turn to trade dress law instead to protect the look and feel of their websites. Trade dress, one of the less common forms of intellectual property, protects the overall image of a product, store, or potentially a website, which connotes a particular source, from illicit copying. Like trademark law, trade dress protection is primarily defined by the Lanham Act.[82] Perhaps the most famous example of such protected packaging is the iconic Coca-Cola bottle. Another well known example of trade dress protection is the size, shape and graphic design of National Geographic magazine. Its signature yellow border identifies the magazine with its source, regardless of whether one can read the “National Geographic” title on the cover. In August 2012, a jury in the Northern District of California found that Samsung had diluted Apple’s trade dress in the iPhone 3G because several of Samsung’s phones, including the Galaxy, had confusingly similar designs.[83] Trade dress protection is also available for retail stores, hotels and restaurants. This protection ensures that customers can reliably identify a particular business by the overall look and feel of the commercial interior. The characteristic white walls, floors, and fixtures of an Apple Store, together with other key design elements, are protectable as trade dress. So too is the combination of taupe walls, green accents and pale wood fixtures that tell a customer she is in Starbucks. In other words, it protects the affiliation in the consumer’s mind between a specific interior design scheme and a commercial source. Websites are in many ways the storefront equivalents of today’s commercial environment.[84] Trade dress therefore provides the most logical basis of intellectual property protection for the look and feel of a website. Yet the particular requirements of trade dress and the case law applying this type of protection to the look and feel of websites make its likelihood of success unclear. Indeed, even in July 2013, the District Court for the Eastern District of New York wrote that “the application of trade dress law to websites is a somewhat ‘novel’ concept” and an issue of “first impression in this Circuit.”[85]
1. Articulating the Elements of the Alleged Trade Dress
In order to bring a trade dress infringement claim for website copying, the plaintiff must first articulate the elements of the website that make up the trade dress at issue. Specificity and finality are both critical to the success of a trade dress infringement claim, especially for website copying. This point was underscored in Sleep Science Partners v. Lieberman, a 2010 decision from the Northern District of California.[86] Plaintiff Sleep Science made a mandibular repositioning (e.g., snore-reducing) device and sold it on its website. Sleep Science showed its product and website to Avery Lieberman. He showed them to two Vermont residents, who allegedly copied the website and launched a similar one under the corporate name Sleeping Well. Sleep Science alleged, among other things, that the Sleeping Well website “has the same format, design and feel as [its] website.”[87] It alleged trade dress infringement, and described its trade dress as the “unique look and feel of SSP’s website, including its user interface, telephone ordering system and television commercial[.]”[88] Sleep Science itemized various features of its website in its complaint, including the ability to view its commercial, user testimonials, a screening questionnaire and “the PureSleep method.”[89] Sleeping Well argued that this listing was too vague to give it sufficient notice of the trade dress claim.[90] The court agreed with Sleeping Well. “Although it has catalogued several components of its website, Plaintiff has not clearly articulated which of them constitute its purported trade dress,” the court observed.[91] The open-ended nature of the list also worried the court: “Notably, Plaintiff employs language suggesting that these components are only some among many . . . . Without an adequate definition of the elements comprising the website’s ‘look and feel,’ Sleeping Well is not given adequate notice.”[92] This decision underscored the importance of explaining both (1) the elements that give rise to a website’s look and feel and (2) the interaction among those elements clearly and specifically to the trier of fact.
2. Proving Distinctive Trade Dress
Articulating the elements of a claimed trade dress in the look and feel of a website is necessary but not sufficient. A plaintiff must also show that the alleged trade dress is distinctive and non-functional, and that there is a likelihood of consumer confusion between its alleged trade dress and that of the defendant.[93] Of these requirements, distinctiveness is the most elusive in the context of websites. Although Section 43(a) of the Lanham Act itself does not require distinctiveness, distinctiveness is required for registration under Section 2. As the Supreme Court has noted, “Nothing in § 43(a) explicitly requires a producer to show that its trade dress is distinctive, but courts have universally imposed that requirement, since without distinctiveness the trade dress would not ‘cause confusion . . . as to the origin, sponsorship, or approval of [the] goods,’ as the section requires.”[94] Two legal standards of distinctiveness in trade dress law have evolved in case law. This branching evolved in Wal-Mart Stores, Inc. v. Samara Brothers, Inc.[95] In Wal-Mart, the Supreme Court ruled that the distinctiveness of product design is measured differently from that of product packaging.[96] The difference between product packaging and product design is somewhat elusive. Product packaging refers to the appearance of the package a product comes in, as well as to interior design schemes found in stores, restaurants and hotels.[97] In order to be eligible for trade dress protection, the product packaging must meet the “inherently distinctive” standard, set in the Court’s 1992 ruling in Two Pesos, Inc. v. Taco Cabana Inc.[98] “Inherently distinctive” trade dress suggests a particular source to consumers without need for repeated association.[99] Product design, in contrast, refers to the way a product looks and feels. Product design can only be distinctive enough to warrant trade dress protection if it has acquired “secondary meaning.”[100] Secondary meaning refers to a level of distinctiveness acquired by longstanding use in the market, as opposed to the inherent design of the site.[101] In part because it must evolve over time, secondary meaning is intrinsically more difficult to demonstrate than inherent distinctiveness. Given the case law, it is unclear whether websites must be inherently distinctive or have acquired secondary meaning. One argument posits that because websites are more akin to storefronts than to tangible products, the inherent distinctiveness standard of Two Pesos is more appropriate. On the other hand, that standard may be hard to apply to website design in practice. In a commercial world where many different websites may have similar general layouts, as dictated by principles of efficient user experience, what should qualify as “inherently distinctive”? The few published decisions applying trade dress law to website copying suggest that the owners must demonstrate secondary meaning to state a trade dress claim, although no published decision has discussed whether this standard logically applies to websites in particular.[102]
3. Secondary Meaning in the Website Context
Courts consider several factors in order to determine whether secondary meaning exists, including:
i. Whether consumers in the relevant market associate the trade dress with the maker; ii. The degree and manner of advertising under the claimed trade dress; iii. The length and manner of use of the claimed trade dress; iv. Whether the use of the claimed trade dress has been exclusive; v. Evidence of sales, advertising, and promotional activities; vi. Unsolicited media coverage of the product; and vii. Attempts to plagiarize the trade dress.[103]
In Wal-Mart, Justice Scalia noted that it was entirely reasonable to require proof of secondary meaning in order to secure trade dress protection. Questioning the value of an “inherently distinctive” standard for product design, he observed that:
[T]he game of allowing suit based upon alleged inherent distinctiveness seems to us not worth the candle. That is especially so since the producer can ordinarily obtain protection for a design that is inherently source identifying (if any such exists), but that does not yet have secondary meaning, by securing a design patent or a copyright for the design . . . . [104]
In other words, the Court reasoned that any inherently distinctive design could be protected as well by copyright or by a design patent. The implication seems to be that manufacturers could seek relief from infringement of their allegedly proprietary product designs by resorting to copyright or patent law instead of or in addition to trade dress law. Unfortunately for website owners, as we have seen, copyright does not protect web sites effectively. It is also unlikely that a website would qualify for a design patent because it is not an “ornamental design for an article of manufacture” as 35 U.S.C. § 171 requires.[105] It is tempting to question the relevance of secondary meaning in today’s commercial context. One factor traditionally used to demonstrate secondary meaning is length of time the product design has been used in the market. Length of time in the modern marketplace, however, is not an efficient proxy for consumer identification. On the Internet, companies that have only been in business for a short time, and thus have only had operational web sites for a relatively short time, can develop stronger consumer associations than more established companies with less striking or resonant websites.
4. The Difficulty of Proving Non-Functionality
Protectable trade dress cannot be functional. The Ninth Circuit Court described the functionality test as follows:
“A product feature is functional if it is essential to the product’s use or if it affects the cost and quality of the product . . . . “Functional features of a product are features which ‘constitute the actual benefit that the consumer wishes to purchase, as distinguished from an assurance that a particular entity made, sponsored or endorsed a product.’”[106]
This raises a difficult set of issues for website protection. Every company wants its website to be functional, in that it encourages consumer use, but the overlap between website functionality and the “benefit the consumer wishes to purchase” can vary greatly. While some websites merely describe the product the customer wishes to purchase, other websites, such as search engines, review sites or booking sites, are the product the customer wishes to purchase. Accordingly, it is impossible to impose a single trade dress standard for all website look and feel cases with regard to their functionality. Courts have approached the non-functionality requirement in website cases in different ways. At least one court has denied trade dress protection for a website based on its functionality. In an unpublished 2008 opinion, the District Court of New Jersey analyzed whether visuals illustrating various features of the bond market on the plaintiff’s website were protectable under copyright or trade dress.[107] Because the visuals were inextricably linked to their function, the district court held that they could not meet the non-functionality requirement of trade dress. It found, however, that these functional features were entitled to copyright protection because of their creativity and “unique expression.” The decision did not extend copyright protection, however, to the look and feel of the website as a whole. Few cases discuss the functionality as a potential bar to trade dress protection of websites. In SG Services, Inc. v. God’s Girls, plaintiff (“SG”) owned an adult services web site and claimed that the defendant (“GG”) had copied various elements of SG’s web site.[108] Among other claims, SG asserted that GG had infringed its trade dress by using (1) the color pink and (2) certain stock phrases, including “they’re the girl next door” and “so you wanna be a suicide girl?” on its website. The SG Services court agreed with the plaintiff that the color and stock phrases were “merely adornment” and therefore eligible for trade dress protection.[109] Non-functionality is somewhat easier to assess in the context of a website promoting a physical product. In Card Tech International v. Provenzano, for example, the District Court for the Central District of California concluded that both the website for a cleaning card, which is used to clean the slots of credit card machines and other card readers, and the packaging of the card were nonfunctional and qualified as trade dress.[110] “There is nothing about the layout or overall appearance of the trade dress, both packaging and website, that enables the package or website, respectively, to function. […] The content of the website can be arranged differently; the package can have a different appearance. Neither the appearance of the packaging nor the website provides a benefit apart from identifying the source of the product.”[111] The court concluded on this basis that protecting the website as trade dress would not “impair competition in the industry.”[112] That said, courts have allowed trade dress claims to go forward where the copied website provided a service as well. In Conference Archives v. Sound Images, an unpublished case from the Western District of Pennsylvania, a competitor admitted copying a product that “displays recorded video within a web browser.”[113] The court ruled that the presence of some functional features in the website does not exclude the possibility of trade dress protection. The determination of functionality, the court held, should properly focus on the “look and feel” of the website overall than on the function of its individual elements. “Look and feel” could serve “several possible functions,” only some of which might bar trade dress protection: First, it can provide ‘branding, helping to identify a set of products from one company, [and s]econd, it [can] increase[] ease of use, since users will become familiar with how one product functions (looks, reads, etc.) and can translate their experience to other products with the same look and feel. If a ‘look and feel’ becomes functional, it can no longer avail itself of trade dress protection. Thus the look and feel must be distinctive, but nonfunctional. But, the mere presence of functional elements does not by necessity preclude trade dress protection. Rather, a web site may be protectable ‘as trade dress if the site as a whole identifies its owner as the creator or product source.’[114] The court’s observation that the look and feel of a website must be “distinctive, but non-functional” serves as a guide for other courts assessing the potential for trade dress protection.
5. Likelihood of Confusion in Look and Feel Cases
The last requirement for trade dress infringement is proof of likelihood of consumer confusion. While the specific factors vary among the circuit courts, the Ninth Circuit’s eight-factor test to assess this likelihood, including the following, is illustrative:
1. The similarity of the two trade dresses; 2. The relatedness of the two companies’ products or services; 3. The advertising or marketing channels each party uses; 4. The strength or distinctiveness of the plaintiff’s trade dress; 5. The defendant’s intent in selecting the mark, including evidence of intent to infringe; 6. Evidence of actual confusion; 7. The likelihood of expansion in product lines leading to more direct competition down the line; and 8. The degree of care that consumers are likely to use.[115]
Likelihood of confusion plays an important role in website look and feel cases. In Faegre & Benson LLP v. Purdy,[116] the plaintiff law firm sued a group that had copied its website, alleging trade dress infringement. Although the defendant had labeled every page of its website as a “parody,” the plaintiff alleged that the defendant’s website “feature[d] the same color scheme, layout, buttons, fonts and graphics” as its own.[117] The court concluded that the “overall dissimilarity” between the two sites, however, created a “low likelihood of confusion,” and the parody disclaimer further reduced that likelihood.[118] Consumer confusion on fake websites can cause real harm to the public as well as the website owners. As noted above, the Department of Homeland Security has launched an investigation into scores of knockoff websites because of the harm that results to defrauded consumers. One would expect state Attorneys General to investigate these knockoff websites as a matter of consumer protection. As more government agencies step up their investigations, it may become easier to develop proof of actual consumer confusion. Although trade dress is imperfectly suited to protect the look and feel of websites, it is the most sensible basis for an improved test for website look and feel infringement. The complexities inherent in proving secondary meaning, establishing non-functionality, and validating evidence of actual consumer confusion required by traditional trade dress law in the context of website claims suggest that a new solution is needed to address this unique form of infringement. The multi-factor test described in Part III will clarify many of these issues.

D. The Threat of Copyright Preemption in Look and Feel Cases

One problem resulting from the lack of clarity surrounding look and feel cases is the ongoing question of copyright preemption. Because neither copyright nor trade dress provides a sure basis for protecting the look and feel of websites, plaintiffs have asserted both claims at once. When they do so with insufficient clarity, they face the threat of copyright preemption. “Claims for copyright infringement under the Copyright Act and claims for Trade Dress Infringement under the Lanham Act are mutually exclusive,” one court explained. “Plaintiff[s] cannot receive a remedy for both.”[119] Whether or not a plaintiff claims copyright infringement, its claims may be preempted if the defendant can prove that the gist of its claims is within the scope of copyright law. Courts have “long limited application of the Lanham Act so as not to encroach on copyright interests.”[120] The preemption defense played a key role in Blue Nile v. Ice.com.[121] Blue Nile developed a unique website that allows consumers to search for a specific diamond from its inventory, and then select a setting for the diamond, resulting in a customized piece of diamond jewelry. The diamond search feature of Blue Nile’s website allowed consumers to perform a search using a number of preferences, including carat size, cut, and clarity, which are presented in a distinct layout. Blue Nile alleged that the defendant, Ice.com, copied its proprietary search tool and incorporated that tool it in its own website. It also alleged that Ice.com effectively infringed the “look and feel” of its website. While these were two distinct allegations, they are in some ways hard to separate in fact. The alleged copying of various elements was integral to copying the overall look and feel of the website. Blue Nile asserted both copyright and trade dress claims against Ice.com, in addition to a number of state law claims. Ice.com moved to dismiss the trade dress claims on the basis that relief for the gist of those claims was available under the Copyright Act. If there is an adequate relief for a claim under the Copyright Act, defendants argued, relief under the Lanham Act should be preempted. The court did not agree. It acknowledged that “[c]ourts limit application of the Lanham Act in areas traditionally occupied by copyright or where the copyright laws ‘provide an adequate remedy.’”[122] It also observed that “[p]arallel claims under the Copyright Act and Lanham Act, however, are not per se impermissible.”[123] That was not the end of the preemption analysis. “Although the Ninth Circuit has not addressed the issue of whether a website’s “look and feel” is protected under § 102, other circuits have held that a work may be unprotected by copyright under § 102(b) and yet be within copyright’s subject matter for preemption purposes.”[124] In effect, the court warned, certain elements might fall into a legal no-man’s land, where they could not be protected by either copyright or any other intellectual property law. A critical issue for the court, then, was whether allegations of copying the design and presentation of specific search features on a website should be analyzed under trade dress or copyright law. While the look and feel of a website might be protected by trade dress, the court reasoned, more evidence was needed to isolate exactly what constituted the look and feel of the website at issue.[125] The defendant also asserted copyright preemption as a basis for its motion to dismiss in Salt Optics v. Jand, but the court denied its motion. Relying in part on Darden v. Peters, and apparently in part on intuition, the court held that look and feel of a website as a whole cannot be copyrighted: “Although the Ninth Circuit has yet to rule on this issue, existing precedent and common sense indicates that, absent special circumstances, a website’s overall “look and feel” is not entitled to protection under the Copyright Act.”[126] Because it falls outside of the scope of copyright, the court ruled, there can be no preemption of that type of claim.[127] It was possible, the court observed, to obtain copyright and trade dress protection at the same time without running afoul of preemption standards. “Indeed, relevant to the present case, a website may contain original works that infringe another’s copyright and simultaneously present an overall “look and feel” that violates another’s trade dress.”[128] Adopting a multi-factor test for look and feel infringement rooted in trade dress law will mitigate the risk that a website owner’s look and feel claims will be preempted by copyright law. It will do so by dispelling the confusion that currently surrounds the proper judicial treatment of website infringement and clarifying the proper scope of any copyright claims the website owner may also assert. Until courts adopt some form of the multi-factor test, plaintiffs in look and feel infringement cases can best avoid dismissal based on copyright preemption by pleading their trade dress and copyright claims in the alternative. In Sleep Science Partners, for example, the “either/or” nature of the plaintiffs’ claims compounded the problem of determining preemption. “Plaintiff may have plead its trade dress claim in the alternative, accounting for a possibility that its website may not be copyrightable,” noted the court, but it did not. The court found it hard to tell where the trade dress claim ended and the copyright claim began. “[If] it intends to maintain a Lanham Act claim based on its website’s “look and feel,” in addition to articulating clearly the website features that comprise its alleged trade dress, Plaintiff must plead a “look and feel” that does not fall under the purview of the Copyright Act.”[129]

E. New Technology Requires a New Framework

Rather than offering a coherent precedent for litigants to follow, look and feel infringement cases offer inconsistent and incomplete reasoning on the best approach to website protection. In general, they compound rather than resolve the questions surrounding the legal protection of websites’ look and feel. Why has this issue been so difficult to resolve? One possible explanation is that websites represent a relatively new hybrid of product, text, service and marketing functions. They integrate decorative elements and functional ones in a way that is fundamentally novel and that has never required protection before. The appearance of a product used to be relatively straightforward and limited to two or three dimensions. Whether it was a can of soda or a motorcycle, each item looked more or less the same to everyone. Websites, however, are mutable. They often have multiple levels, and their specific appearance depends on the user’s interaction. Complicating this further is the fact that websites may look different depending on where and how they are viewed. Two consumers may see even the same page of a website differently if, for example, one of them is viewing the website on an iPad and the other is viewing it on an iPhone. The shape of the screen and its orientation (vertical or horizontal) will vary across devices. On tablets and phones, the view may change depending on how the device is held. The characteristic look and feel of a site may not be defined by a static screen, but by something that can be generalized across different devices.

III. Proposing a Trade Dress-Based Solution for Look and Feel Infringement

If the two most obvious doctrinal homes for a solution are copyright and trade dress law, as discussed above, the nature of the doctrines makes it clear that the latter is more appropriate. One productive way to think about these two areas is the difference between protecting expression, through copyright, and protecting impression, through trade dress. While websites express many things, the gravamen of this problem is protecting the user’s first impression of the source of the site. That is what the Lanham Act was written to protect. Trade dress, with its emphasis on impression rather than expression, source identification and consumer confusion, is inherently better suited to protect website look and feel. Grounding a new solution in trade dress law might happen in either of two ways. One option would be to amend the Lanham Act to address the infringement of website trade dress specifically. Laws do evolve to address changes in technology, although they generally move much more slowly than technology itself. In 1999, for example, Congress passed the Anti-Cybersquatting Consumer Protection Act, amending the Lanham Act to prohibit the registration and use of domain names based on another person’s trademark.[130] In 2003, Congress amended the Criminal Code to make computer hacking illegal.[131] While there may be a legitimate need for a Lanham Act amendment to protect website look and feel, the urgency of the problem demands another potential solution. An alternative idea is to encourage courts to adopt an infringement test that is well suited to the unique nature of websites and yet grounded in the traditional concerns of trade dress law. This test might resemble, in its basic form, the multi-factor test for likelihood of confusion that courts have developed based on the Polaroid Corp v. Polarad Electronics case.[132] One form of such a test follows.

A. A Multi-Factor Test for Website Look and Feel Infringement

A test to determine whether the look and feel of a website has been infringed should take a number of factors into account. The range of factors should be calibrated to ensure that a court does not restrict fair competition in the process of protecting and encouraging innovation in website development. An outline of the factors looks like this:
1. Overall Similarity

a. Fonts and Formatting

b. Color Scheme

c. Sounds, Animations, Visual Effects

d. Symbols, Logos and Marks

e. Layout and Arrangement

f. User Experience Design

2. Proximity of Products or Services in the Relevant Market(s) 3. Intentional Copying 4. Likelihood of Consumer Confusion
In taking all of these sub-factors into account, no single element should be dispositive. It is possible to have confusingly similar websites even when, for example, the colors of the two websites are somewhat different. The determination of overall similarity should be holistic. In addition, the trier of fact should be guided by expert testimony from user experience designers, as described in more detail below.
1. Overall Similarity
The first factor is the similarity of the overall impression between the two websites, when comparing views on similar devices. The look and feel of a website is the result of multiple elements working together in a complex way. The imperative, stated in cases like Sleep Science Partners, for plaintiffs alleging trade dress infringement to explain which elements of the website work together to create that proprietary look and feel reflects that fact.[133] In Salt Optics v. Jand, the court required the website owner to provide both a detailed list of the elements giving rise to its website’s distinctive look and feel and an explanation of how they work together.[134] The court granted Jand’s motion to dismiss the trade dress claims, with leave to amend, on the grounds that Salt Optics did not give sufficient notice as to what constituted the look and feel of the website. Although the plaintiff had listed some elements of its alleged trade dress, the court observed that “absent from the FAC is any attempt to synthesize these elements in order to describe the way that the listed elements, in conjunction, combine to create the website’s protectable ‘look and feel.’ The lack of any such synthesis, in conjunction with Plaintiff’s expressly stated intention to incorporate other elements of the website into the trade dress claim at a later stage, gives the court pause.”[135] When Salt filed an amended complaint, Jand moved to dismiss again.[136] This time, however, the court was satisfied with Salt’s amended claims.[137] It noted with approval that Salt had submitted a “fixed and finite” list of website elements, helpfully juxtaposing images from Salt’s website with images from the competing website so that the court could appreciate the overall similarities between the two. Because it is difficult to assess overall similarity without more specific points of comparison, the test should include several sub-factors to help the court assess similarity.
i. Fonts and Formatting
One such sub-factor concerns the fonts used on the senior website and the junior website. The court should compare the specific fonts used in each site, taking into account any customization of the fonts and any associated text formatting. Many corporations customize fonts for their marketing materials, [138] including website texts, often at great expense[139]. Examining the specific fonts used on each of two competitive websites can increase the granularity of the comparison process.
ii. Color Scheme
Another sub-factor that helps a trier of fact assess overall similarity is the website’s color scheme. As the court noted in Conference Archives, website colors can be ascribed precisely because they are determined in accordance with a specific hexadecimal notation system. That is, each color on a website has a six-digit code. Accordingly, when a court compares the color scheme of two websites, it can make a more specific comparison than “light blue vs. medium blue.” The court’s comparison should include not only the exact colors of each site but the predominance of each color on the websites. In Conference Archives, the court parsed the technology behind the look and feel of a website in more detail than any court had done before. The court noted that there are “three technical elements that determine how a web site appears: colors, orientation and code elements.”[140] It explained that the colors used on websites can be described more exactly than traditional paint colors because of their digital nature. Website colors are coded according to a hexadecimal notation system that converts every color into a six number code known as a hex triplet. As a result, the court noted, it was possible to reach a greater degree of specificity when comparing the colors of two websites. This greater specificity, the court noted, allowed a greater degree of certainty about potential copying: “While some colors are more common than others, if two products utilize the same exact hex triplet, there is a likelihood that the color was copied.”[141] An effective comparison of website colors will include not only their technical differences but also the resulting difference in user experience.[142] Website colors are chosen carefully, not only to reflect firm branding but also to improve user experience and maximize accessibility (for example, to color-blind users). Effective use of color is integral to good website design.[143] The impact of different colors on website users has been well documented, but the consequences of certain color changes may not be immediately obvious to a trier of fact.
iii. Sound Effects and Animation
A third sub-factor is the similarity of sounds, animations, and other effects associated with the two websites at issue. As an increasing number of websites incorporate unique sound effects, fixed animations, and embedded videos, these should be taken into account when comparing the overall look and feel of a website. Although none of these would be apparent from a singular screen shot of a website (or even a series of screen shots), they all contribute to the overall user experience and the likelihood of consumer confusion.
iv. Symbols, Logos and Other Marks
In addition to the sounds and animations, the comparison must also take into account the similarity of any symbols, logos, marks, motifs, or other non-textual visual elements on the site. The court need not resolve the question of trademark infringement to find that similarities between marks contribute to the overall similarity of two websites’ look and feel. In Athleta v. Pitbull, for example, the court compared the logos of the two sites.[144] In mid-2012, Pitbull had affixed an “athletic” logo to its goods that closely resembled that of Athleta.com:
Original Athletica Logo
By the time of the lawsuit, Pitbull had changed its logo to look somewhat more distinctive.
Later Athletica Logo
Even with the change in Athletica’s logo, the court found that the similarity between the two marks contributed to consumers’ likelihood of confusion. Importantly, the court ruled that the marks should be viewed in the larger context of the websites overall. “[T]he marks themselves are only part of the inquiry. These marks coexist in a marketplace that has changed as a result of defendants’ gradual encroachment on plaintiff’s marks. […] [T]his encroachment has taken many forms, including defendants’ … generally adopting a similar look and feel to plaintiff’s website for their athletica.net website.”[145] The court’s reasoning has merit. Whether a competitor’s mark infringes a trademark is a separate inquiry from whether the use of that competitor’s mark contributes to the overall similarity of the look and feel of the websites at issue. A competitor’s use of marks should play a role in the look and feel assessment, but as with every other factor, should not be dispositive in itself.
v. Layout and Arrangement
Moreover, the court should consider the layout and arrangement of all content on the website, including its menus, navigational elements and visual elements, even though many of those elements may themselves be functional. The fact that graphic layouts can be described by reference to the number of pixels between elements might allow the court to infer copying by comparing pixel distance instead of merely eyeballing similarities between layouts.[146] Importantly, the court’s comparison should ensure that the websites are viewed on comparable devices. Many websites are designed to adapt their appearance to the device that is being used to view them, like technological chameleons. This aspect of website development is called responsive design. Responsive design is an increasingly common element of website design. Its purpose is to ensure that users have a consistent, intuitive experience of the website, no matter what device it is viewed on. Responsive design also helps website owners address differences in detail across viewing platforms. Because laptop screens allow users to view a website in relatively greater detail than a smart phone, for example, a responsively designed website will display different but equivalent displays on each device. Although the specific display will differ from device to device, the overall look and feel of the website will be the same.
vi. User Experience Designer Testimony
The few issued look and feel decisions suggest that courts are not uniformly well equipped to assess the effect of these factors on the user’s experience of a website. Indeed, it can be difficult for any lay person to appreciate the ways in which graphic and interactive factors affect the overall user experience of a website. The interactivity of a website adds another dimension to what has traditionally been a fairly straightforward comparison of appearance in trade dress cases. In Sleep Science Partners v. Lieberman, the court suggested that the “look and feel” of a website is something more than, or different from, a rote list of the website’s constituent elements. This raises the possibility that courts would benefit from reliable evidence as to what, exactly, gives rise to the specific look and feel of a website. Plaintiffs may benefit from introducing, for example, expert testimony from user experience designers. These designers can testify about the impact of connections among specific website elements on the look and feel of a website from the user’s point of view.[147] They can also help the court assess usability as a potential element of the website’s overall look and feel. Such testimony would be more helpful to the trier of fact than the court’s own subjective impressions.[148] Just as courts consider expert testimony in assessing economic damages, it may be helpful for a trier of fact to receive testimony from an expert in website design. Such expert testimony should include (1) an exhaustive list of all website elements that give rise to the unique look and feel of the website and (2) a description of how each one of these elements affect user experience and contribute to the users’ ability to connect the website with its source. The list should be finite and final. It is important to avoid disclaimers that imply the possibility of later amendment, such as “by way of illustration, not limitation.” As Salt Optics v. Jand demonstrates, such open-ended claims provide an easy mark for the defendants’ motion to dismiss. A lack of finality in the list of alleged trade dress elements may well be read as a lack of sufficient notice for the defendant. While the defendant will submit its own supporting expert testimony, as in Markman hearings, the detailed descriptions provided by both sides will help the trier of fact reach a more informed decision.
i. Proximity of Products or Services in the Relevant Market(s)
In addition to overall visual similarity, several other indicia of likely copying should factor into the court’s analysis. One additional factor should be the proximity of the products and/or services offered on the senior and junior websites. As with trademarks, the likelihood of consumer confusion is heightened when the two competing websites are in the same field. Because similar products can be marketed in the same way, the extent of similarity among other websites in the same industry or field should be taken into account as well.
ii. Intentional Copying and Other Fraudulent Measures
Any evidence of intentional copying, including replication of HTML and/or CSS code, should play into the court’s analysis as well.[149].[150] Unlike traditional print media, websites can be replicated by copying code. As discussed above, there is a thriving website copying industry, and providers of such services are ubiquitous. While intent has been criticized as a factor in some kinds of IP infringement cases,[151] courts should consider it here because of the deterrent impact it would likely have on future infringement. Reviewing evidence of intentional copying would allow the court to consider the extent to which the website copying was strategic, as opposed to accidental. Fake websites can use a variety of strategies to lure consumers into providing their credit card information and other sensitive data. One common strategy is “typo-squatting,” in which the infringer registers the copycat website at a domain name that is a close misspelling of the original site, hoping that consumers who mistype the domain name will not notice the difference. [152] Another is the use of meta-tags, in programs such as Google AdWords, which drive traffic on search engines to a knockoff website instead of the original.[153]
iii. Likelihood of Confusion
As with more traditional Lanham Act claims, evidence of likely consumer confusion should play a central role in the court’s analysis. The court should consider evidence of actual consumer confusion, as indicated by customer surveys and other data, in addition to likely confusion. As with all such data, the weight accorded to these reports should depend in part on the methodology used. While evidence of actual confusion may be the best indicator of likely confusion, it may also be the hardest to prove. User comments tending to suggest that the users are confused about which website they have visited may be tempting to include in a complaint. Because so many people use fictitious or partial names when commenting on websites, however, it may be nearly impossible to verify their identity, let alone get them to sign sworn testimony. In order to prove likelihood of confusion, as required for trade dress infringement claims, plaintiffs should submit side-by-side comparisons of their original websites and the alleged infringing site. A comprehensive comparison of the two websites will help the court understand every point of similarity. Including technical details for each page of the website, including the hexadecimal notation of the colors used and the pixel distance between elements, will also support a finding of likelihood of confusion.[154] A side-by-side comparison, however, illustrates the effects of these technical details on the consumer and, in turn, the likelihood of confusion.
iv. Additional Considerations
One issue that should not play a role in the court’s decision is the proximity of competitor’s site in search engine results. Search results differ based on a variety of factors, including the skills of a coder in search engine optimization and the geographic location where the search is being performed. The fact that two websites come up next to or near each other in a search engine result should not be considered evidence of “look and feel” infringement or its absence.

B. Designing an Effective Damage Scheme

Designing a damages scheme that provides a sufficient deterrent to website copying is a particularly important issue for further study. Because it is so easy to copy another website, as we’ve seen, courts must ensure that their damages awards are severe enough to deter such copying. But what is the most effective and efficient form of penalty for copying the look and feel of a website? While a full answer to this question deserves greater study, some starting points are clear. Courts may adapt remedies for website infringement from notable trade dress cases. One noteworthy example is the trial court’s penalty in Taco Cabana v. Two Pesos. The Two Pesos restaurant chain, found guilty of willful trade dress infringement, was required to post a sign on the interior and exterior of each of its locations for one year, notifying customers that it had been found guilty of copying Taco Cabana’s concept.[155] Adapting this “sign of shame” remedy to websites, a court could require an infringing website to post a banner advertisement explaining the verdict and directing users to the original website. At least one court has issued a similar directive.[156] Some observers have characterized changing a website’s colors as a relatively simple process, and one that is less time consuming than redesigning a product or a store interior. On that basis, it is tempting to conclude that requiring a look and feel infringer to redesign a website, may not be as effective a deterrent as it might be in the retail context:
Losing a trade dress claim involving a tangible product like a children’s toy could cost the copycat millions in packaging redesign, withdrawing and destroying infringing packages, revising promotional materials, and retooling factories. By contrast, losing a web site trade dress case may mean little more than asking a junior IT consultant to spend a few hours changing the site’s design and color scheme.[157]
Although a website can be changed quickly, quick changes are not always effective from a marketing or user experience perspective. The perspective quoted above on the time it takes to revamp a website is too dismissive, and reflects a misperception that good website design is arbitrary. In fact, compelling website design is as much science as art. Most companies hire professional website designers who understand that the apparently simple act of “changing the site’s … color scheme” is not so simple. As noted above, for example, the choice of color can have a significant psychological effect on a user’s experience of the site, so a site-wide color change cannot be undertaken lightly without changing the potential effect on consumers.[158] Even so, changing a website’s colors may not be enough to distinguish its look and feel from a competitor if other graphic elements are identical. StudiVZ, the knockoff website that incited Facebook to sue, featured red as its predominant color instead of Facebook’s blue – yet Facebook still concluded that the similarities between the sites were troubling enough to merit a set of lawsuits. The scope of a proper remedy requires attention to the realities of website design. Some courts have issued injunctions that go too far in response to look and feel claims, without regard to these concerns. The Athleta v. Pitbull case, for example, suggests the dangers of an insufficiently specific injunction in remedy for look and feel infringement. In that case, Athleta successfully argued that it was suffering irreparable harm as a result of Pitbull’s look and feel infringement. The court issued a preliminary injunction forbidding Pitbull from, among other things, using “any graphic, textual or other design elements on athletica.net website that are similar to plaintiff’s website.”[159] The terms of that injunction are troublingly vague. What constitutes “graphic, textual or other design elements,” for example? Athleta’s website, like most, contains an elliptical search button, links to customer support information, and other graphic and textual elements that may not contribute to its distinctive look and feel but are essential to a legitimate consumer-facing website. Prohibiting another website from using any of those elements prevents that website from competing fairly in the online marketplace. Another example of courts’ overreaching in the definition of a protectable look and feel comes from the Conference Archives decision.[160] Unlike earlier decisions concerning the look and feel of a website, the court suggested that “look” and Feel’ be considered separately. In distinguishing a website’s “look” from its “feel,” the court noted that websites are unlike posters, in that they involve user interaction. It went on to describe a website as having a series of functional “layers.” One layer, it noted, was the visual design or appearance of the site on the screen. A second layer is the user’s interaction with the website, or the interface design. The court characterized the visual design as the “look” and the interface design as the “feel” of a website.[161] Functioning in harmony, the court noted, these elements can give rise to a protectable website “experience:” “Combined, the ‘look’ and ‘feel’ coalesce to form a protectable virtual experience that provides the user with ‘cognitive absorption’ […]. This interface promotes the efficient, predictable, and reliable use of a web site. The hallmark of a protectable “look and feel” trade dress is a graphical user interface that promotes the intuitive use of the web site.[162] This last statement reflects a troubling view of protectability. Extending protection to a graphical user interface because it “promotes the intuitive use” of a website is not in the best interests of consumers. In general, all web sites should be intuitive and easy to use. The professional fields of user experience design and computer-human interaction are dedicated in part to maximizing the intuitive use of websites. To be sure, two well designed websites that are not confusingly similar can both be easy to use. There should be no protection for this essentially functional aspect of a website. Ease of use is one aspect of website design that should be ubiquitous rather than proprietary.

IV. Additional Issues

There is a rich stream of issues related to the look and feel of websites that is beyond the scope of this article. Additional scholarship on these issues will improve our understanding of the best approach to protecting websites from illicit copying. One critical issue is the extent to which global intellectual property laws can protect U.S. companies against website look and feel copying abroad. As the Facebook vs. StudiVZ case demonstrates, the websites of U.S. companies may be copied overseas without an obvious, effective remedy. Even if U.S. law ultimately provides a satisfactory defense against website look and feel copying, the borderless nature of the Internet and global commerce in general demands a global response to the problem. Whether the problem can be remedied adequately through the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) binding on all WTO members, or requires protection through a different treaty or another form of intervention, bears further study. Given the borderless nature of the Internet, one critical area for further study might be a comparison of the legal protection available for the look and feel of websites in other countries and in the European Union. Facebook’s unsuccessful attempt to sue the creators of StudiVZ in Germany, their host country, invites questions as to how any United States corporation might protect the look and feel of its websites abroad. Another question is the extent to which the World Intellectual Property Organization is a proper venue for resolving look and feel claims. In at least one case, the WIPO agreed to transfer the domain name of a knock-off website to another party in response to a look and feel infringement claim.[163] The complainant owned LeSportsac, a trademark used on women’s handbags and luggage in use since 1974. In August 2012, the respondent, an Arizona resident, registered the name “Lesportsacaustralia.com” for a website carrying counterfeit LeSportsac goods. In evaluating LeSportsac’s claims, the arbitrator noted that “Respondent’s site shares many of the distinct elements of the ‘look and feel’ of Complainant’s website, including the prominent use of the LESPORTSAC mark at the top left and a vertical column on the left side of the home page in which LeSportsac products are divided by category.”[164] Finding that the respondent used the website in bad faith, the arbitrator ordered the transfer of the Lesportsacaustralia.com domain name to LeSportsac.[165] An additional area of research might be to compare the effectiveness of private law remedies, including breach of contract claims, with some intellectual property theories described in this article as a basis for protecting the look and feel of websites. The provision that “no part of this website may be reproduced or transmitted” is often included in a website’s “Terms and Conditions.”[166] Competitors who access websites for the purpose of copying them arguably subscribe to those terms. Website owners therefore may protect against illicit copying by asserting breach of contract claims against such competitors. A particularly interesting topic for smaller companies is the extent to which they may be liable for website copying based on their adaptation of a standard website template. Companies such as Hubspot and WordPress offer “one stop shopping” convenience for companies in need of a new website. While the range of basic website models they offer may be impressive, it is limited. It would seem to be only a matter of time before the owner of one website finds a competing website developed from the same professional source. While adopting a specific test can clarify the legal issues surrounding website look and feel infringement, it is an imperfect solution. The issue of copyright preemption, for example, is still troubling. The Copyright Act intended to provide an exclusive remedy for anything subject to copyright protection, and it may be difficult in practice to draw the line between copying several individually copyrightable web pages and copying the look and feel of a website. A more detailed trade dress law, no matter how carefully crafted, cannot encroach on that territory. If courts were to grant copyright protection for creative and original compilations on websites, it would be more difficult for website owners to argue that their trade dress claims were not preempted by the Copyright Act. As always, in matters of intellectual property protection, the legal system must strike a delicate balance. If the courts were to grant website designers too much protection, that practice could result in a monopoly of highly intuitive, useful website designs. On the other hand, too little protection could stifle innovative website design, increase the chances of consumers being defrauded by counterfeit websites, and impede the normal growth of e-commerce.

Conclusion

There is a critical gap in the legal protection available for one of today’s most valuable business assets: the consumer-facing website. Although every company strives for a unique and memorable website, there is a growing threat that what makes a website memorable – its “look and feel” – may be copied wholesale by competitors without clear legal recourse for the website’s owners. Website look and feel protection falls into a chasm between copyright on one hand and trade dress on the other, neither of which adequately addresses this modern problem. The lack of effective protection for the look and feel of websites presents a serious legal and economic threat. The cost to businesses, in the forms of revenue, trust and goodwill, of such unlicensed copying is vast. The cost to consumers, who provide confidential data and payments based on misimpression of commercial source, has sparked investigations by the Department of Justice. This article has explained the nature of the problem, analyzed recent case law, explored the limits of copyright and trade dress as bases for protecting website look and feel, and proposed a multi-factor judicial test for assessing look and feel infringement. The underlying thematic differences between copyright and trade dress law – in essence, the difference between protecting commercial expression and protecting consumer impression – suggest that trade dress is the more appropriate basis for look and feel protection. Adopting a trade-dress based multi-factor test will increase the stability of intellectual property protection for the look and feel of websites and provide greater security for businesses and consumers alike.
* Assistant Professor of Business Law at Bentley University in Waltham, Massachusetts. The author gratefully acknowledges the assistance generously given by participants in the 2013 American Business Law Journal Invited Scholars Colloquium, who discussed a draft of this paper. The author can be reached at ebrown1@bentley.edu.
[1] See, e.g., H.R. Rep. No. 94-1476, at 54 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5667 (“The term ‘literary works’ . . . includes . . . computer programs to the extent that they incorporate authorship in the programmer’s expression of original ideas, as distinguished from the ideas themselves.”); accord Atari Games Corp. v. Nintendo of Am., Inc., 975 F.2d 832, 838 (Fed. Cir. 1992).
[2] See infra note 23.
[3] See, e.g., Allen v. Ghoulish Gallery, No. 06CV371 NLS, 2007 WL 4207923 (S.D. Cal. Nov. 20, 2007).
[4] See, e.g., Card Tech Int’l, LLLP v. Provenzano, No. CV 11-2434 DSF PLAX, 2012 WL 2135357 (C.D. Cal. June 7, 2012).
[5] See, e.g., Lisa M. Byerly, Look and Feel Protection of Web Site User Interfaces: Copyright or Trade Dress? Santa Clara Computer & High Tech. L.J. 221, 246 (1997); Xuan-Thao N. Nguyen, Should It Be a Free For all? The Challenge of Extending Trade Dress Protection to the Look and Feel of Web Sites in the Evolving Internet, 49 Am. U. L. Rev. 1233 (2000); Gary Franklin & Kevin Henry, Protecting Your Company’s Website: The Application of Intellectual Property to the Digital Marketplace, 37 Vt. B. J. 28 (2012).
[6] The term “look and feel” has evolved in the case law. See, e.g., Blue Nile, Inc. v. Ice.com, Inc., 478 F. Supp. 2d 1240, 1241-42 (W.D. Wash. 2007); Conference Archives, Inc. v. Sound Images, Inc., No. CivCiv. 3:2006-76, 2010 WL 1626072, at *11 (W.D. Pa. Mar. 31, 2010); Sleep Sci. Partners v. Lieberman, No. 09-04200 CW, 2010 WL 1881770, at *8 (N.D. Cal. May 10, 2010); Athleta, Inc. v. Pitbull Clothing Co., Inc., No. CV 12-10499-CAS FMOX, 2013 WL 142877 at *7 (C.D. Cal. Jan. 7,, 2013).
[7] Conference Archives, Inc., 2010 WL 1626072, at *1515.
[8] The issue of look and feel infringement is different from that of cybersquatting. Two websites legitimately may have similar domain names even if they have similar or identical business models. Unlike trademarks, domain name registration does not require a unique field of use. Look and feel infringers need not have similar domain names in order to confuse customers into false associations. Similarly, cybersquatters need not have visually similar websites to the websites from which they divert traffic.
[9] Purchasing Google Adwords or using other tagging strategies can maximize the success of this mimicking strategy. Scholars have debated whether doing so should support additional claims of trademark or copyright infringement. See, e.g., Rachel Friedman, No Confusion Here: Proposing a New Paradigm for the Litigation of Keyword Advertising Trademark Infringement Cases, 12 Vand. J. Ent. & Tech. L. 355 (2010), and Stephanie Lim, Can Google be Liable for Trademark Infringement? A Look at the Trademark Use Requirement as Applied to Google AdWords, 14 UCLA Ent. L. Rev. 265 (2007).
[10] See Complaint at 75-119, Facebook, Inc. v. Studivz Ltd., No. C08 03468., 2008 WL 2914576, at *1 (N.D. Cal. July 18, 2008).
[11] See Caroline Winter, How Three Germans are Cloning the Web, Businessweek (Feb. 29, 2012),), http://www.businessweek.com/articles/2012-02-29/the-germany-website-copy-machine.
[12] Facebook settled its Northern District of California case with StudiVZ in September 2009, three months after a German court ruled against Facebook in its German litigation, finding inter alia that StudiVZ’s actions did not constitute copyright infringement under German law. See Kevin D. Hughes & David E. Rosen, Screen Grabbing: The Marketplace, Rather than the Courthouse, May Determine the Ultimate Winner in Web Site Infringement Battles, 33 Los Angeles Lawyer 4, 40 (2010), http://www.lacba.org/Files/LAL/Vol33No4/2716.pdf.
[13] Athleta, Inc. v. Pitbull Clothing Co., Inc., No. CV 12-10499-CAS FMOX, 2013 WL 142877 at *3 (C.D. Cal. Jan. 7, 2013).
[14] Id. at *7.
[15] Id. at *13.
[16] See, e.g., Phentic Tutorials, How to Copy Any Website, YouTube (July 1, 2010), http://www.youtube.com/watch?v=OGM47jJm7Gs; Ilan Patao, Tutorial – How to Copy / Duplicate Web Sites, YouTube (May 19, 2008), http://www.youtube.com/watch?v=cue_uZWNfUY.
[17] Winter, supra note 12. Rocket also invested in copycat versions of Facebook and YouTube, which sold for $112 million and $36 million respectively. When Rocket cloned Groupon, the resulting site became Europe’s most popular deal-of-the-day site within five months of its launch. Id. Its success indicates that there is a lot of money to be made from knockoff websites, if the law permits. But see Katie Linsell, Facebook Wins Competition of Clones as Europeans Seek Global Network: Tech, Businessweek (Nov. 7, 2011), http://www.bloomberg.com/news/2011-11-07/facebook-wins-competition-of-clones-as-europeans-seek-global-network-tech.html
[18] Franklin & Henry, supra note 6.
[19] Cf. Peep Laja, First Impressions Matter: The Importance of Great Visual Design, Conversion XL (Nov. 15, 2012), http://conversionxl.com/first-impressions-matter-the-importance-of-great-visual-design/#.
[20] Pew Research Internet Project, Cell Internet Use 2013, http://www.pewinternet.org/2013/09/16/cell-internet-use-2013.
[21] Id.
[22] See Global Entertainment and Media Outlook: 2013-2017: Internet Access, PricewaterhouseCoopers, http://www.pwc.com/gx/en/global-entertainment-media-outlook/segment-insights/internet-access.jhtml (last accessed Feb. 23, 2014) (showing penetration of mobile-Internet services will reach 54% by year-end 2017 compared with 51% for fixed broadband); see also Chaitrali Amrukar et al., Measuring SSL Indicators on Mobile Browsers: Extended Life, or End of the Road?, In Proceedings of the 15th international conference on Information Security (ISC’12) 86, 91 (Dieter Gollmann & Felix C. Freiling eds. 2012) (describing mobile browser’s limitation on visibility of domain name when rendering screens).
[23] See Erika Morphy, What’s Ahead for the Net: Mary Meeker Explains It All, ECommerce Times (May 30, 2013), http://www.ecommercetimes.com/story/78166.html (predicting explosive growth of mobile technology and wearable computing); Dave Uhler, Catching the Mobile Commerce Wave, ECommerce Times (Apr. 7, 2012), http://www.ecommercetimes.com/story/74807.html (noting prediction that mobile commerce will grow at a compound annual rate of 39 percent through 2016 and advising that “[a]t this moment, every enterprise should be devising new strategies for reaching customers through mobile applications in addition to the web.”).
[24] Benny Evangelista, Feds Crackdown on 70 Fake Websites that “Copy Cat” Real Sites, SF Gate (July 12, 2012), http://blog.sfgate.com/techchron/2012/07/12/feds-crackdown-on-70-fake-websites-that-copy-cat-real-sites/.
[25] See Athleta, Inc. v. Pitbull Clothing Co., Inc., No. CV 12-10499-CAS FMOX, 2013 WL 142877 at *3 (C.D. Cal. Jan. 7, 2013).
[26] See id. at *3.
[27] See id. at *10.
[28] Id.
[29] Blue Nile, Inc. v. Ice.com, Inc., 478 F. Supp. 2d 1240, 1247 (W.D. Wash. 2007).
[30] Id.
[31] Id. at 1245.
[32] Id. at 1248.
[33] Blue Nile did succeed in asserting a copyright claim four years later, however, when another competitor copied images from the bluenile.com website and used them on its own website without permission. See Blue Nile, Inc. v. Ideal Diamond Solutions, Inc., No. C10-380Z, 2011 WL 3360664, at *3 (W.D. Wash. Aug. 3, 2011).
[34] See Conference Archives, Inc. v. Sound Images, Inc., No. Civ. 3:2006-76, 2010 WL 1626072, at *2 (W.D. Pa. Mar. 31, 2010).
[35] Id.
[36] Id. at *1.
[37] Id. at *9.
[38] Complaint at 3, Conferences Archives, Inc. v. Sound Images, Inc., Civil No. 3:2007-76, 2010 WL 1626072 (W.D. Pa. Mar. 21, 2006), 2006 WL 6495532.
[39] Conference Archives, Inc., 2010 WL 1626072, at*10.
[40] See id. at *10-11.
[41] See also Int’l Union of Operating Engineers, Local 150, AFL-CIO v. Team 150 Party, Inc., No. 07C3972, 2008 WL 4211561 (N.D. Ill. Sept. 5, 2008).
[42] Salt Optics, Inc. v. Jand, Inc., No. SACV 10-0828 DOC, 2010 WL 4961702 at *11 (C.D. Cal. Nov. 19, 2010).
[43] Id.
[44] See, e.g., Franklin & Henry, supra note 6.
[45] See, e.g., 1st Lake Mobile Website, Copyright TXu001885424 (2013-07-16).
[46] An author can register computer code with the Copyright Office under class TX.
[47] As an initial matter, only the author of a copyrightable work may sue for copyright infringement, unless the work is made “for hire.” Most corporations hire a website developer to create an online presence and the developer is the default author for copyright purposes. In order to sue for copyright infringement, the contract with the developer must include a specific work for hire provision. Without such a provision, there may be no basis for claiming rights to the website in the first place. See Cmty. for Creative Non-Violence v. Reid, 490 U.S. 730, 738 (1989) (stating that the work does not satisfy the copyright requirements for a work for hire because there was no written agreement). These provisions are relatively common, but not universal.
[48] See Kelly v. Arriba Soft Corp., 336 F.3d 811, 817 (9th Cir. 2003) (Stating that “the plaintiff must show ownership of the copyright and copying by the defendant”); see also LGS Architects, Inc. v. Concordia Homes of Nevada, 434 F.3d 1150, 1156 (9th Cir. 2006); 17 U.S.C. § 411 (2008) (“no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title”).
[49] See, e.g., La Resolana Architects, PA v. Reno, Inc., 555 F.3d 1171, 1178 (10th Cir. 2009).
[50] Boisson v. Banian, Ltd., 273 F.3d 262, 272 (2d Cir. 2001) (quoting Folio Impressions, Inc. v. Byer Cal., 937 F.2d 759, 763 (2d Cir. 1991)).
[51] See Crown Awards, Inc. v. Trophydepot, No. 2:03-CV-02448-DRH, 2003 WL 22208409, at *13 (E.D.N.Y. Sept. 3, 2003).
[52] See Complaint, Facebook, Inc. v. Studivz Ltd, supra note 11, at 7.
[53] See 17 U.S.C.§ 411(a).
[54] See Athleta, Inc. v. Pitbull Clothing Co., Inc., No. CV 12-10499-CAS FMOX, 2013 WL 142877, at n.6 (C.D. Cal. Jan. 7, 2013).
[55] Id.
[56] United States Copyright Office, Copyright Registration for Online Works (2002), available at http://www.copyright.gov/circs/circ66.pdf.
[57] Id. at 1.
[58] Darden v. Peters, 402 F. Supp. 2d 638, 643 (E.D.N.C. 2005) (quoting United States Copyright Office, Copyright Registration for Online Works 3 (2009)).
[59] The problems of requiring fixedness in online text are also apparent in the debate over fluid trademarks, an emerging area of concern. See, e.g., Johanna Pyhälä & Erkki Holmila, Are Fluid Trademarks Your Cup of Tea?, World Trademark Review, http://www.worldtrademarkreview.com/issues/article.ashx?g=d1b0a0a9-5bd2-411a-8d9a-781e47a2c019 (last accessed Feb. 23, 2014).
[60] United States Copyright Office, supra note 57, at 2.
[61] A work need not be entirely fixed to receive copyright protection, however. Video games, for example, satisfy copyright’s fixation requirement by having effects that can be “’reproduced, or otherwise communicated’ for more than a transitory period.” Williams Elecs., Inc. v. Artic Int’l, Inc., 685 F.2d 870, 874 (3d Cir. 1982) (citing Stern Elecs., Inc. v. Kaufman, 669 F.2d 852, 855-56 (2d Cir. 1982)).
[62] Darden v. Peters, 402 F. Supp. 2d 638, 643 (E.D.N.C. 2005).
[63] See id. at 487.
[64] See Salt Optics, Inc. v. Jand, Inc., No. SACV 10-828, 2010 WL 4961702 (C.D. Cal. Mar. 4, 2011).
[65] See id. at *1-2.
[66] Id. at *12-13.
[67] Id. at 13.
[68] Id.
[69] See id.
[70] Allen v. Ghoulish Gallery, No. 06CV371 NLS, 2007 WL 4207923, at *1 (S.D. Cal. Nov. 20, 2007).
[71] Id.
[72] Id. at *4. The Court did not find that there was copyright infringement, however, because there was no substantial similarity between the two websites. Id. at *6.
[73] See Kantemirov v. Goldine, No. C05-01362 HRL, 2005 WL 1593533 (N.D. Cal. June 29, 2005) (“[g]iven the flexible definition of works falling with the scope of the Copyright Act design and layout within the general subject matter of the Copyright Act”); Order, TheStreet.com, Inc. v. Wall St. Interactive Media Corp., No. 98 CIV. 6974 (LAP), 1998 WL 34194887 (S.D.N.Y. Nov. 9, 1998) (enjoining alleged infringer from copying design or layout of website).
[74] Infantry Div., World War II Living History Ass’n v. Oprendek, No. Civ.A.11–165, 2011 U.S. Dist. LEXIS 140014 (D. N.J. Aug. 4, 2011).
[75] Id. at *3-4.
[76] See Id. at *21-22.
[77] Franklin & Henry, supra note 6.
[78] Express Lien v. National Association of Credit Management Inc., Civil Action No. 13–3323, 2013 WL 4517944 (E.D. La. August 23, 2013).
[79] Id. at *1.
[80] Id. at *4.
[81] See Complaint, Facebook, Inc. v. Studivz Ltd., supra note 11, at 75-119.
[82] 15 U.S.C. § 1125 (2012).
[83] See Apple Inc. v. Samsung Elecs. Co., 888 F. Supp. 2d 976 (N.D. Cal. 2012).
[84] In fact, the terms “storefront” and “web storefront” are becoming synonymous with e-commerce retail websites.
[85] Parker Waichman LLP v. Gilman Law LLP, No. 12-CV-4784 JS AKT, 2013 WL 3863928, at *4 (E.D.N.Y. July 24, 2013).
[86] See Sleep Sci. Partners v. Lieberman, No. 09-04200 CW, 2010 WL 1881770 (N.D. Cal. May 10, 2010).
[87] Id. at *2.
[88] Id. at *6.
[89] Id. at *9.
[90] See id. at *6.
[91] Id. at *3.
[92] Id. at *8-9.
[93] 15 U.S.C. §§ 1125(a)(3), (c)(2)(B).
[94] Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 210 (2000).
[95] See id.
[96] See id. at 215.
[97] See, e.g., id. at 212-13.
[98] 505 U.S. 763, 768 (1992).
[99] Two Pesos, 505 U.S. at 768..
[100] See Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 215 (2000).
[101] See id. at 211; see also Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 163 (1995).
[102] See, e.g., SG Servs. Inc. v. God’s Girls Inc., No. CV 06-989 AHM, 2007 WL 2315437, at *9 (C.D. Cal. May 9, 2007); cf. Card Tech Int’l, LLLP v. Provenzano, No. CV 11-2434 DSF PLAX, 2012 WL 2135357, at *22 (C.D. Cal. June 7, 2012) (suggesting that either standard may apply to web sites).
[103] First Brands Corp. v. Fred Meyer, Inc., 809 F.2d 1378, 1383 (9th Cir. 1987).
[104] See Wal-Mart Stores, 529 U.S. at 214.
[105] See, e.g., Ex parte Tayama, 24 U.S.P.Q.2D (BNA) 1614, 1614 (B.P.A.I. 1992) (rejecting design patent for computer icon because it is not a design for an article of manufacture).
[106] Rachel v. Banana Republic Inc., 831 F.2d 1503, 1506 (9th Cir. 1987) (citation omitted).
[107] See Mortgage Mkt. Guide, LLC v. Freedman Report, LLC, No. CIV.A. 06-CV-140-FLW, 2008 WL 2991570, at *1 (D. N.J. July 28, 2008).
[108] See SG Servs. Inc. v. God’s Girls Inc., No. CV 06-989 AHM, 2007 WL 2315437 (C.D. Cal. May 9, 2007).
[109] See id. at *9. Even so, the court ruled in favor of the defendant on the trade dress infringement claim as a whole because the plaintiff failed to prove either distinctiveness or likelihood of confusion. In addition, plaintiff’s sole evidence in support of its infringement claim was a declaration that did not meet the federal evidentiary standards, as it was not signed under penalty of perjury, and was therefore inadmissible. See id. at *34.
[110] See Card Tech Int’l, LLLP v. Provenzano, No. CV 11-2434 DSF PLAX, 2012 WL 2135357 (C.D. Cal. June 7, 2012).
[111] Id. at *6.
[112] Id.
[113] See No. 3:2006-76, 2010 WL 1626072, at *1 (W.D. Pa. Mar. 31, 2010).
[114] Id. at *58-59 (citations omitted).
[115] AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 349 (9th Cir. 1979).
[116] 367 F. Supp. 2d 1238, 1240 (D. Minn. 2005).
[117] Id. at 1244.
[118] Id. at 1245.
[119] Conference Archives, Inc. v. Sound Images, Inc., No. 3:2006-76, 2010 WL 1626072, at *12 (W.D. Pa. Mar. 31, 2010)
[120] 1 Melvin B. Nimmer & David Nimmer, Nimmer on Copyright, § 1.01[D][2] (2013).
[121] 478 F. Supp. 2d 1240, 1243 (W.D. Wash. 2007).
[122] Id.
[123] Id.
[124] Id. at 1248.
[125] See id at 1245.
[126] Salt Optics, Inc. v. Jand, Inc., No. SACV 10-0828, at 4 (C.D. Cal. Mar. 4, 2011), available at http://www.americanbar.org/content/dam/aba/administrative/litigation/materials/2012_hot_topics_in_ip_lit/2012_aba_panel3_salt_optics_inc_v_jand_inc_et_a_doc_42.authcheckdam.pdf; Salt Optics, supra note 40, at *8.
[127] See id.
[128] Salt Optics, Inc. v. Jand, Inc., No. SACV 10-0828, at 9.
[129] Sleep Sci. Partners v. Lieberman, No. 09-04200 CW, 2010 WL 1881770, at *5 (N.D. Cal. May 10, 2010).
[130] See 15 U.S.C. § 1125(d)(1) (2008).
[131] See 18 U.S.C. § 1030 (2008) (criminalizing fraud and related activity in connection with computers); see also 18 U.S.C. § 2701 (proposed legislation criminalizing unlawful access to stored communications).
[132] See Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961); see also Conference Archives, Inc. v. Sound Images, Inc., No. 3:2006-76, 2010 WL 1626072, at *18 (W.D. Pa. Mar. 31, 2010).
[133] See, e.g., Sleep Sci. Partners, 2010 WL 1881770, at *7-9.
[134] See Salt Optics, Inc. v. Jand, Inc., No. SACV 10-0828, 2010 WL 4961702, at *5 (C.D. Cal. Nov. 19, 2010).
[135] Id.
[136] Mot. of Def. Jand, Inc. to Dismiss Pl.’s Second Am. Compl. for Failure to State a Claim, Salt Optics, Inc. v. Jand, Inc., No. SACV 10-0828, 2011 WL 1158953 (C.D. Cal. Jan. 3, 2011).
[138] Times New Roman, for example, originated as a proprietary font designed in 1931 for the British newspaper The Times. See A Brief History of Times New Roman, Practical Typography, http://practicaltypography.com/times-new-roman.html (last visited Feb. 23, 2014).
[139] See, e.g., Stefan Thiemert et al., A Digital Watermark for Vector-Based Fonts, Proceedings of the 8th Workshop on Multimedia & Security 120 (2006), http://dl.acm.org/ft_gateway.cfm?id=1161387&ftid=374839&dwn=1&CFID=453511040&CFTOKEN=12224932.
[140] Conference Archives, Inc. v. Sound Images, Inc., No. 3:2006-76, 2010 WL 1626072, at *4 (W.D. Pa. Mar. 31, 2010).
[141] Id. at *5.
[142] Traditional consumer surveys, such as those endorsed in Eveready, would be useful here. See Union Carbide Corp. v. Ever-Ready, Inc., 531 F.2d 366, 385-88 (7th Cir. 1976); see, e.g., 65 J. Thomas McCarthy, Trademarks and Unfair Competition § 32:175 (4th ed. 2007). In designing those surveys, however, comparison on similar devices is critical because of the potential effect of adaptive site design differences on user experience.
[143] See, e.g., Dianne Cyr et al., Colour Appeal in Website Design In and Across Cultures: A Multi-method Evaluation, 68 Int. J. Human-Computer Stud. 1-21 (2010); Christian Vasile, How Colors Help Make Websites Successful, 1st Web Designer, http://www.1stwebdesigner.com/design/colors-in-web-design-make-websites-successful/ (last visited Feb. 23, 2014); Vishal Verma, The Importance of Color Theory, Webdesign.org (Oct. 29, 2007), http://www.webdesign.org/web-design-basics/color-theory/the-importance-of-color-in-web-designing.12437.html.
[144] Athleta, Inc. v. Pitbull Clothing Co., Inc., No. CV 12-10499-CAS FMOX, 2013 WL 142877, at *2, *7 (C.D. Cal. Jan. 7, 2013).
[145] Id. at *7.
[146] Conference Archives, Inc. v. Sound Images, Inc., No. 3:2006-76, 2010 WL 1626072, at *19 (W.D. Pa. Mar. 31, 2010).
[147] See, e.g., Frank Guo, More Than Usability: The Four Elements of User Experience, Part I, UX Matters (Apr. 24, 2012), http://www.uxmatters.com/mt/archives/2012/04/more-than-usability-the-four-elements-of-user-experience-part-i.php.
[148] Whether the court ought to protect a website because it is more usable than another, however, is a difficult question. One could argue that usability is akin to functionality, in that enforcing protection of these qualities might have the unwanted effect of stifling competition and/or undercutting the overall goal of consumer protection.
[149] See, e.g., Sally Beauty Co. v. Beautyco, Inc., 304 F.3d 964, 973 (“Proof that a defendant chose a mark with the intent of copying the plaintiff’s mark may, standing alone, justify an inference of likelihood of confusion.”).
[150] See, e.g., Blake Tierney, Missing the Mark: The Misplaced Reliance on Intent in Modern Trademark Law, 19 Intell. Prop. L.J. 229 (2011); Soonbok Lee, Induced Infringement as a Strict Liability Claim: Abolishment of the Specific Intent Requirement, 4 Hastings Sci. & Tech. L.J. 381 (2012).
[151] In many cases, the website owner will bring claims of unfair competition alongside the infringement claims. See, e.g., Allen v. Ghoulish Gallery, No. 06CV371 NLS, 2007 WL 4207923 (S.D. Cal. Nov. 20, 2007); Card Tech Int’l, LLLP v. Provenzano, No. CV 11-2434 DSF PLAX, 2012 WL 2135357 (C.D. Cal. June 7, 2012). Whether the court’s consideration of intent, or scienter, in connection with these unfair competition claims is sufficient to accomplish the deterrent effect suggested here is subject to further debate.
[152] See Hughes & Rosen, supra note 13, at 44.
[153] See, e.g., FragranceNet.com, Inc. v. FragranceX.com, Inc., 679 F. Supp. 2d 312, 315 (E.D.N.Y. 2010) (plaintiff alleged trademark infringement, inter alia, when defendant used plaintiff’s trademarks as meta-tags for its own site).
[154] See Conference Archives, Inc. v. Sound Images, Inc., No. 3:2006-76, 2010 WL 1626072, at *19 (W.D. Pa. Mar. 31, 2010) (describing plaintiff’s exhibit comparing to website in great technical detail and characterizing it as “very instructive to the Court’s analysis.”).
[155] The sign was to read, in one-inch block letters: “Notice: TACO CABANA originated a restaurant concept which Two Pesos was found to have unfairly copied. A court order requires us to display this sign to inform our customers of this fact to eliminate the likelihood of confusion between our restaurant and those of TACO CABANA.” Hughes & Rosen, supra note 13, at 45.
[156] See Garden of Life, Inc. v. Letzer, 318 F. Supp. 2d 946, 968 (C.D. Cal. 2004).
[157] Hughes & Rosen, supra note 13, at 44.
[158] See generally, George A. Agoston, Color Theory and Its Application in Art and Design (Dr. Jay M. Enoch et al., eds., 1979); Wyszecki, Color In Business, Science, and Industry (Stanley S. Ballard ed., 3d ed. 1975); Bleicher, Contemporary Color Theory & Use (2005).
[159] Athleta, Inc. v. Pitbull Clothing Co., Inc., No. CV 12-10499-CAS FMOX, 2013 WL 142877, at *12 (C.D. Cal. Jan. 7, 2013). As of Apr. 27, 2014, athletica.net was no longer a functioning website.
[160] See Conference Archives, Inc. v. Sound Images, Inc., No. 3:2006-76, 2010 WL 1626072 (W.D. Pa. Mar. 31, 2010).
[161] See id. at *14.
[162] See id. at *15.
[163] Lesportsac, Inc. v. Kathy Clapp, No. D2012-2506, 2013 WL 1146701, at *6 (2013).
[164] Id. at *2.
[165] See id. at *6.
[166] See, e.g., Sleep Sci. Partners v. Lieberman, No. 09-04200 CW, 2010 WL 1881770, at *1 (N.D. Cal. May 10, 2010).