Touchpoint Communications, LLC v. DentalFone, LLC, No. 15-cv-05240 (W.D. Wash. Oct. 9, 2015)
Touchpoint and DentalFone are Internet dental marketing companies. Touchpoint filed a declaratory judgment action seeking a judgment of noninfringement of DentalFone’s copyrights and trade dress/lack of protectable rights. Touchpoint also alleged that DentalFone engaged in unfair trade practices by attempting to unfairly remove competition from the marketplace through its C&D letters, and also engaged in tortious interference. DentalFone responded with the expected claims.
Here, the court gets rid of the non-copyright claims. After incorporating its copyright allegations by reference in its Lanham Act claim, DentalFone alleged that “[Plaintiff’s] unauthorized use of a trade dress for its infringing mobile applications and websites that is confusingly similar to the trade dress in the [Defendant’s] Design constitutes trade dress infringement.” Beyond being a mere formulaic recitation of the elements of a cause of action, this was a specific problem in the trade dress infringement context.
A party claiming trade dress infringement “should clearly articulate its claimed trade dress to give a defendant sufficient notice.” An alleged “look and feel” that was “a unique and proprietary home page design developed by [defendant] that embodies a protectable trade dress” was just not enough. Though there might be cases in which a website trade dress claim could be protectable, the allegations of the complaint provided no explanation of what was being claimed other than an exact duplicate of the copyright claim. And exact duplication of the copyright claim creates a Dastar problem. (I’d say Dastar here stands in for a constellation of arguments—realistically, if the elements claimed as trade dress of the website are also the copyrighted work plaintiff claims to own, I doubt they could function as a mark; this isn’t a case of a distinct cartoon character allegedly being copied.) If defendant “intends to maintain an 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, [it] must plead a ‘look and feel’ that does not fall under the purview of the Copyright Act.”
Reading this might sound like an overextension of Dastar, but note defendant's concession that not all double claims are Dastar-barred. The court's conclusion makes a lot more sense when you look at the accusing and accused designs. Here are several examples of DentalFone's site designs:
Defendant contended that this was nothing more than standard "tiling" design. Here are examples of the accused design--the first from Touchpoint's website, the second from the threat letters from DentalFone:
NB: after examining these pictures, it would be surprising to me if the copyright claims had any more merit. Even assuming a wafer-thin copyright in the selection, coordination and arrangement of menu items, I don't see how infringing similarity could be shown. (Also, I'd want to know more about who exactly owns the copyright in each individual website--having the mobile service provider do so seems like a risky business for the individual dental offices. If they leave DentalFone, do they have to shut down their mobile sites?)
Unsurprisingly, the Dastar conclusion also proved fatal to the state law claims. Neither the Washington Consumer Protection Act nor the common-law claims evaded preemption just by alleging that there was an extra element of “deception or misrepresentation.” That isn’t an extra element when the deception allegedly comes just from the copying. The gravamen of the action here was copying.