The United States District Court for the Northern District of California, in Ingrid & Isabel, LLC v. Baby Be Mine, LLC, --- F. Supp. 3d ----, 2014 WL 4954656 (N.D. Cal. 2014), in reviewing the arguments before it, attempted to catalogue previous cases that confronted the question of whether the “look and feel” of a website constituted protectable trade dress. It found only six cases it deemed “instructive.” Five of those cases either deferred deciding the question or dismissed on technical grounds. One decided that it could, although in a context inapplicable to Baby Be Mine. In fact, as detailed below, the court in Baby Be Mine may have adopted a novel approach.

Facts

Ingrid & Isabel, LLC (I&I) and Baby Be Mine Maternity, LLC (Baby Be Mine) both sell belly bands, a cloth band worn around a pregnant woman’s waist to hold up clothes that no longer fit because of the pregnancy. Belly bands are also considered functional for decorative purposes.

I&I had sued Baby Be Mine on multiple occasions leading up to the instant case. I&I alleged that Baby Be Mine sold its maternity waist bands under the name “Belly Band,” a name that purports to be confusingly similar to the “Bella Band” name utilized by I&I, and therefore a violation of both common law trademark rights and the Lanham Act (15 U.S.C. §1125(a)). In a separate action, I&I alleged patent infringement and unfair competition against Baby Be Mine based on its patent that includes claims for a belly band which “hold[s] the skirt or pants in place on the women’s body and which retain[s] the pants or skirt in place.” Both the trademark and patent claims were dismissed pursuant to respective settlement agreements (the Agreements).

The relevant parts of the Agreements stipulated that Baby Be Mine would do as follows: (1) cease and desist from using the term “Bella” in connection with the sale of belly bands; (2) stop offering, marketing, distributing or promoting belly bands that hold up pants or skirts; and (3) refrain from copying any of I&I’s advertising, marketing, and promotional materials.

Legal Analysis/Conclusions

To sustain a valid claim under the Lanham Act, a plaintiff must show: (1) that it possesses a valid, protectable proprietary interest in the trademark or trade name; and (2) defendant’s use of the mark creates a ‘likelihood of confusion’ in the consuming public. See New W. Corp. v. NYM Co. of California, Inc., 595 F.2d 1194 (9th Cir. 1979). This cause of action has been extended to a product’s ‘trade dress’ – a category that has included packaging, design and shape of the product itself. Ultimately, a colorable claim under the Lanham Act requires that a likelihood of confusion or deception will result within the public based on the similarity of the marks.

Specifically, I&I alleged three bases for its Lanham Act claim: (1) Baby Be Mine’s use of purportedly “infringing” code words and phrases on its website; (2) Baby Be Mine’s alleged use of the word “Bella” in its marketing; and (3) Baby Be Mine’s alleged copying of I&I’s trade dress, and the look and feel of its website.

I&I averred that the infringing code words employed by Baby Be Mine in its advertising included, but were not limited to: “you don’t have to worry about that in between state when nothing fits …,” The Belly Band grows with you!,” and “Make your maternity clothing more comfortable instantly – just fold your waistband under your belly and cover with the belly band.” The court held that these ostensible “code words” neither would lead customers to reach the conclusion that the belly band would hold up pants or skirts (a conclusion that would have rendered Baby Be Mine in violation of one of the Agreements), nor were they protectable trademark or trade dress. Likewise, the second basis for the Lanham Act claim failed because I&I had not proffered admissible evidence that Baby Be mine had used the term “Bella.”

Ergo, only the third basis for a Lanham Act claim, infringement of the trade dress on I&I’s website, “warrant[ed] significant discussion.” After reviewing the relevant cases that had either reserved judgment or dismissed on technical grounds, the court held that “the look and feel” of a website can constitute protectable trade dress under the Lanham Act. As applied to the I&I website, the “look and feel” had potentially acquired secondary meaning because the deliberate copying of the “look and feel,” as Baby Be Mine had arguably undertaken in this case, can buttress an inference of secondary meaning. The “look and feel” also contained sufficient non-functional elements so as to raise triable issues of fact. See Clicks Billiards, Inc. v. Sixshooters, Inc., 251 F.3d 1252 (noting that trade dress design protection only extends to aspects that are non-functional). Those likely non-functional elements of the website included: the use of feminine script, the particular poses chosen for its models, and the color and pattern of the wallpaper. Finally, the “look and feel” of I&I’s site could engender a likelihood of confusion when compared to Baby Be Mine’s site insofar as Baby Be Mine intentionally copied I&I’s site, and there existed (expectedly) substantial similarity between the two sites, as illustrated by screenshots entered into evidence. Therefore, the likelihood of confusion element constituted a triable issue of fact. See also Levi Strauss & Co. v. Blue Bell, Inc., 778 F.2d 1352 (9th Cir. 1985) (courts are disinclined to decide trademark cases at summary judgment because the ultimate issue is so intrinsically factual).

Accordingly, I&I had “presented sufficient evidence” to survive summary judgment with respect to the Lanham Act, and mirroring common law unfair competition claims. Notably, Baby Be Mine is one of the first cases in which, at least at this preliminary stage, a court has concluded that the “look and feel” of a website is protectable trade dress, even when the website is used to market a product and is not the product itself.