Blue Nile, Inc. v. Ice.Com, Inc.

• Decision Date: 18 January 2007
• Docket Number: No. C06-1002RSL.,C06-1002RSL.
• Citation: 478 F.Supp.2d 1240
• Parties: BLUE NILE, INC., a Delaware corporation, Plaintiff, v. ICE.COM, INC., a Delaware corporation; and Odimo Inc., a Delaware corporation, Defendants.
• Court: U.S. District Court — Western District of Washington

478 F.Supp.2d 1240

BLUE NILE, INC., a Delaware corporation, Plaintiff, v. ICE.COM, INC., a Delaware corporation; and Odimo Inc., a Delaware corporation, Defendants.

No. C06-1002RSL.

United States District Court, W.D. Washington, at Seattle.

January 18, 2007.

COPYRIGHT MATERIAL OMITTED

Breena Michelle Roos, Elizabeth L. McDougall-Tural, Rebecca S. Engrav, Perkins Coie, Jeffrey M. Thomas, Gordon Murray Tilden, Seattle, WA, for Plaintiff.

Angelo J. Calfo, Jeremy E. Roller, Lyle A. Tenpenny, Yarmuth Wilsdon Calfo, William David Shenk, Steven P. Fricke, Christensen O'Connor Johnson & Kindness, Seattle, WA, for Defendants.

ORDER GRANTING IN PART AND DENYING IN PART DEFENDANT ICE.COM'S MOTION TO DISMISS CLAIMS PREEMPTED BY THE COPYRIGHT ACT

LASNIK, District Judge.

I. INTRODUCTION

This matter comes before the Court on "Defendant Ice.com's Motion to Dismiss Claims Preempted by the Copyright Act" (Dkt.# 24). Defendant asserts that plaintiff s claims for: (1) trade dress infringement; (2) violation of the Washington Consumer Protection Act ("CPA"); (3) unfair competition; and (4) unjust enrichment and restitution should be dismissed under Fed.R.Civ.P. 12(b)(6) as limited and preempted by the Copyright Act. Plaintiff opposes dismissal of these claims because it asserts that its trade dress and state law claims relate to defendants' copying of "the overall look and feel" of its diamond search webpages which cannot be remedied by copyright law. For the reasons set forth below, the Court grants in part and denies in part defendant's motion to dismiss.

II. DISCUSSION

A. Background

Plaintiff owns and operates an online diamond and fine jewelry retail sales business through three websites: www. bluenile.com; www.bluenile.ca; and www. bluenile.co.uk. Defendant Ice.com is also in the retail diamond and fine jewelry business and owns and operates its own website at www.diamond.com. Defendant Odimo Inc. owned and operated the www. diamond.com website until about May 11, 2006, when it was purchased by Ice.com.

Plaintiff alleges that defendants copied two distinct portions of its website. First, plaintiff alleges that defendants copied certain elements of plaintiffs website protected by the Copyright Act. See Response at 1 (stating this action "arises from Ice.com's and Odimo's intentional copying of specific copyrighted elements of Blue Nile's website."). Second, plaintiff alleges that defendants copied the "overall look and feel" of plaintiffs diamond search webpages. Id. at 2 ("This is a separate and distinct wrong for which Blue Nile is entitled to recover separate and apart from infringement of limited elements of its website.").

On July 25, 2006, plaintiff filed an amended complaint asserting eight causes of action for: (1) copyright infringement of its "Blue Nile Diamond Search" webpages; (2) copyright infringement of a "cushioncut" diamond photograph; (3) trade dress infringement under the Lanham Act; (4) violation of the Washington CPA; (5) unfair competition; (6) breach of contract; (7) breach of the implied covenant of good faith and fair dealing; and (8) unjust enrichment and restitution.

B. Analysis

Defendant moves to dismiss only plaintiffs Lanham Act claim and three state law claims based on Fed.R.Civ.P. 12(b)(6) and principles of copyright preemption. For clarity, plaintiffs Lanham Act claim and the state law claims are discussed separately below.

1. Plaintiff's Third Cause of Action for Trade Dress Infringement, 15 U.S.C. § 1125(a) of the Lanham Act

Defendant asserts that plaintiffs trade dress claim under § 1125(a) of the Lanham Act should be dismissed because it overlaps with plaintiffs copyright claims. The Court, however, denies dismissal of the trade dress claim at this stage of the proceeding for two reasons.

First, given the novelty of plaintiffs trade dress claim¹ greater factual development is necessary before the Court can ascertain whether plaintiffs copyright claims provide an "adequate remedy" justifying dismissal of its trade dress claim. See Shaw v. Lindheim, 919 F.2d 1353, 1364-65 (9th Cir.1990) ("We decline to expand the scope of the Lanham Act to cover cases in which the Federal Copyright Act provides an adequate remedy."); Van Buskirk v. Cable News Network, Inc., 284 F.3d 977, 980 (9th Cir.2002) ("[A] court may look only at the face of the complaint to decide a motion to dismiss.").

Section 301(a) of the Copyright Act preempts certain claims arising under state common law or statutes. See 17 U.S.C. § 301(a) ("Thereafter, no person is entitled to any such right or equivalent right in any such work under the common law or statutes of any State."). Section 301, however, does not limit rights or remedies under other federal statutes. Id. § 301(d). Despite this provision, "courts have long limited application of the Lanham Act so as not to encroach on copyright interests." 1 Melville B. Nimmer &amp David Nimmer, Nimmer on Copyright § 1.01[D][2] at 1-83 (2005). Courts limit application of the Lanham Act in areas traditionally occupied by copyright or where the copyright laws "provide[ ] an adequate remedy." See Shaw, 919 F.2d at 1365; Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 34, 123 S.Ct. 2041, 156 L.Ed.2d 18 (2003) ("Thus, in construing the Lanham Act, we have been careful to caution against misuse or overextension of trademark and related protections into areas traditionally occupied by patent or copyright.") (internal quotation omitted). Parallel claims under the Copyright Act and Lanham Act, however, are not per se impermissible. See Nintendo of Am., Inc. v. Dragon Pac. Int'l, 40 F.3d 1007, 1011 (9th Cir.1994) ("[W]hen a defendant violates both the Copyright Act and the Lanham Act, an award of [statutory and actual] damages is appropriate.").

Here, defendant alleges that plaintiffs copyright claims provide it with an adequate remedy because the trade dress claim "simply reiterates its copyright claims" since "[b]oth rest on the same allegation that defendants copied specified portions of Blue Nile's website." See Motion at 4. Plaintiff counters by claiming that its trade dress claim is not limited by the Copyright Act because the "look and feel" of its website is not copyrightable. While defendant claims that "[t]he Court will search in vain for this ["look and feel"] allegation in the complaint," on a motion to dismiss, the court must "read the complaint charitably ... and ... assume that all general allegations embrace whatever specific facts might be necessary to support them." See Reply at 2; Peloza v. Capistrano Unified Sch. Dist., 37 F.3d 517, 521 (9th Cir.1994).

Charitably read, the Court finds that plaintiffs allegations in paragraph 52 of its amended complaint relating to the "design and presentation of diamond search features" is sufficient to support a claim that plaintiff is seeking to protect the "look and feel" of its website. See Dkt. # 3. While plaintiffs failure to describe the elements of its trade dress with greater specificity in its complaint might prove fatal during later stages of this litigation,² at this point, defendant has cited no authority for proposition that plaintiff cannot qualify its trade dress description as one seeking protection for the "look and feel" of its website in response to a motion to dismiss.³

Plaintiff also alleges that protection of "the look and feel of the website" is a subject outside the purview of the Copyright Act. In reply, defendant has provided no legal support that plaintiff has an adequate remedy in copyright law to protect the "look and feel" of its website.⁴ Determining the elements of plaintiffs website that are subject to copyright protection and what portions of the website relate to the "look and feel" of its trade dress claim requires greater factual development. Johnson Controls, Inc. v. Phoenix Control Sys., Inc., 886 F.2d 1173 (9th Cir.1989), a case dealing with computer software, is instructive on this point. The court defined the "user interface," or "look and feel" of a program, as generally referring to "the design of the video screen and the manner in which information is presented to the user." Id. at 1175 n. 3. The Court later concluded: "Whether the nonliteral components of a program, including ... the user interface [the "look and feel" of the program], are protected [by copyright] depends on whether, on the particular facts of each case, the component in question qualifies as an expression of an idea, or an idea itself." Id. at 1175 (emphasis added). Because section 102(b) of the Copyright Act states: "In no case does copyright protection for an original work of authorship extend to any idea," factual development is necessary here before the Court can determine what portions of plaintiffs website are protected. Accordingly, the Court concludes that defendant's 12(b)(6) motion to dismiss is not the appropriate procedural vehicle through which the Court should address the overlap between the Lanham Act and Copyright Act in the context of a claim attempting to protect a website's "look and feel."⁵

Although defendant cites several cases in this jurisdiction and the Ninth Circuit involving dismissal of Lanham Act claims overlapping with copyright claims, all of these cases were decided with a developed factual background on summary judgment.⁶ See Motion at 4, citing Corbis Corp. v. Amazon.com, Inc., 351 F.Supp.2d 1090, 1115-16 (W.D.Wash.2004) (decided on a motion for summary judgment); Shaw, 919 F.2d at 1364-65 (9th Cir.1990) (affirming district court's dismissal of plaintiffs Lanham Act claim on summary judgment); and CD Law, Inc. v. Law-Works, Inc., 1994 WL 840929, *5, 1994 U.S. Dist. LEXIS 20776, at *14 (W.D.Wash. Dec. 21, 1994) (dismissing Lanham Act claim on a motion for summary judgment). Defendant has presented no authority supporting Rule 12(b)(6) dismissal of a Lanham Act claim based on the availability of an adequate remedy under copyright.⁷ Therefore, the Court denies...