The specific design elements of a software tool may be entitled to “look and feel” trade dress protection if it is nonfunctional. Fair Wind Sailing, Inc. v. Dempster, 764 F.3d 303, 309 (3d Cir. 2014).

But even if the tools' elements are functional, such non-protectable elements could still provide a plausible circumstantial basis to state a claim of actual copying for copyright infringement. See Tanksley v. Daniels, 902 F.3d 165, 173 (3rd Cir. 2018).

Design with Friends' Online Software Tool

In Design with Friends, Inc. v. Target Corp., No. 21-cv-01376-SB (D. Del. Sept. 23, 2022), the Court dismiss the trade dress claims, but allowed one claim of copyright infringement based on actual copying of the computer code to proceed.

The software at issue was “an online room-planning tool,” where users of Design with Friends “can add furniture and decorations, arrange them, and then buy the items they have added.”

Target has a similar online room-planning tool, and Design with Friends claimed that Target's engineers spent many hours reverse engineering the Design with Friends tool to build their own.

The Court began its decision with the following paragraph:

               A company may feel cheated if a competitor copies its product. But copying by itself can be legal. To win in court, the company must show that a law protects its product from copying.

Trade Dress and Functionality

Design with Friends listed fifteen elements that together form its tool's cohesive “look and feel” trade dress, and alleged that its tool has been used extensively, advertised widely, and praised in industry publications.

The Court found that notwithstanding this precision in defining the asserted trade dress, and showing of secondary meaning, Design with Friends did not show that its design is not functional.

Functional means useful: a design feature is nonfunctional only if it does not affect the tool's quality and serves only to identify its source. Ezaki Glico Kabushiki Kaisha v. Lotte Int'l Am. Corp., 986 F.3d 250, 255–58 (3d Cir. 2021); Fair Wind, 764 F.3d at 311. Most of the elements on Design with Friends' list are functional because they make the tool more sensible. For instance, making the walls facing the camera invisible lets users see the room. Putting the option to rotate beneath an item makes that option quicker to find. And automatically adding sheets to cribs makes the design more realistic.

Even when looking at the overall look-and-feel as a whole, the Court found that “[t]he whole, like its parts, is functional.” In particular, it is not a “composite tapestry of visual effects” that serves merely to identify the tool's source. Fair Wind, 764 F.3d at 311; see also Ezaki Glico, 986 F.3d at 259–60 (holding that a cookie stick's overall design is useful and therefore not protectable trade dress).

The tool's overall design makes it easy to use.

The Court also noted that no examples of “actual confusion were given in the complaint.

Accordingly, the Court concluded that Design with Friends' design was functional.

Copyright Infringement Based on Actual Copying

While the tool's function, look and feel, and “selection, arrangement and coordination” of visual elements could not state a claim for copyright infringement for the same functional reasons it could not for trade dress, the Court held that that Design with Friends plausibly alleged copying of its computer code.

In particular, Design with Friends alleged “extensive similarities in the tools' mechanics.”

Although these mechanics are functional, even such non-protectable elements can still be compared for evidence of actual copying.

And Design with Friends recorded Target repeatedly using its software-development applications to access and stress-test Design with Friends' tool.

Based on this circumstantial showing, the Court allowed the copyright-infringement claim to proceed on a theory of code copying.

No Contract Formed through Browsewrap Link

The Court also dismissed a browsewrap-based breach of contract claim because, notwithstanding the issue of copyright preemption, there was no contract formation. The browsewrap link to its terms was not conspicuous enough to satisfy the high standard for browsewrap terms. See Nguyen v. Barnes & Noble Inc., 763 F.3d 1171, 1175–79 (9th Cir. 2014).

The Court also held that although it is common knowledge that websites have terms of use, that does not mean someone manifests assent to be bound by them every time he uses a website. See 1 Timothy Murray, Corbin on Contracts § 2.12[2] (2022) (“Unless the [user] actually knows or is put on inquiry notice of the hyperlink and manifests assent to the terms of use … they are unenforceable.”).

Thus, the Court dismissed all of the claims except for one copyright infringement claim based on code copying.

The attorneys at Thomas P. Howard, LLC litigate trademark and copyright cases nationwide including in Colorado.