You might recall our recent report that Mr. Porter was more than just a little concerned about the similarity between its website and Mr. Shirts’. Intellectual Property counsel from Richemont, Mr. Porter’s parent company, claim the “look and feel” and the "remarkably similar layout and content” of Mr. Porter’s site and Mr. Shirts’ site may be causing consumer confusion. While Chris Buchanan, founder of Mr. Shirts, doesn’t seem intimidated about his website’s design similarities to Mr. Porter’s, or the letter of concern regarding said similarities, we’re intrigued. What are the chances that Mr. Porter has a case?
A website is an online retailer’s storefront. A lot of time and money is put into the appearance of a virtual retail space, and thus it is not surprising that Mr. Porter’s legal counsel has made a call to arms. But investing time and money in something, especially when it comes to fashion and retail, does not necessarily equate to legal protection. In short, there’s no guarantee that Mr. Porter has a legitimate claim here.
There are two areas of law that apply to the overall design and concept – most often referred to as the “look and feel” – of a website: copyright law and trade dress.
Copyright protection may extend to certain original expressions that are made on a website. Original authorship on a web page, like writings or photographs, for example, will be protected under copyright law. And though the originality threshold necessary for copyright protection is fairly low, ideas, facts, and methods of operation are not protectable. Similarly, copyright law does not protect titles, names, short phrases, slogans, mere variations of typographic ornamentation, lettering, or coloring. So, at first blush, it doesn’t appear that copyright law would have much to offer in the way of protecting a website’s design. And while it’s true that trade dress is better suited for the task, additions to the Copyright Act, such as “computer program” as a definition in the Act and a section specifying what types of copying of computer programs is permitted, mean that a computer program is protectable under the Act.
But this doesn’t really mean anything as far as the visual appearance of a website goes, which is the only concern, as far as we can tell, that Mr. Porter has. When aspects of a website’s design are unoriginal or are purely functional, those items are not protectable. So, when a court is looking for substantial similarity, the standard for finding copyright infringement, he or she will only be comparing elements of a website that meet the originality standard and are more than just functional.
To sum it up, copyright protection is not likely to be the best area of law were the Mr. Porter team to decide to go to court. No disrespect to the work that went into the creation of the luxury men’s fashion site, but MrPorter.com is fairly simplistic. We’re talking about a white background, black lettering, and primarily navigational elements. As Buchanan pointed out in his response, a black font on a white background is hardly original: “I have conferred with my learned friends and I stand corrected. I thought 100% of websites used black fonts on white backgrounds, but they have informed me that it’s approximately 99.3%.” While the goal for the Mr. Porter website may have been clean and simple (and don’t worry, Mr. Porter’s web designers, you’ve achieved that goal), we aren’t sure it’s elaborate or creative enough to merit copyright protection. (Make no mistake, though, photos and content like that on Mr. Porter’s “The Journal”, which are not at issue here, are surely subject to copyright protection.)
So, let’s see if trade dress is any friendlier to the Mr. Porter cause. Trade dress, a form of trademark protection, protects the overall appearance and total image of a product. And, just like trademark law, trade dress is concerned with protecting consumers from confusion and enabling them to identify the source of a good. To be eligible for trade dress protection, the look and feel of a website must be inherently distinctive, or have secondary meaning, and it must be nonfunctional.
Distinctiveness basically means that when you see Mr. Porter’s web design, you are capable of identifying it as such without being told that it is Mr. Porter’s. I don’t know about you, but to us, this would be a tenuous argument to make. Many websites use “black fonts on white backgrounds” (as Buchanan so eloquently pointed out) with a “black horizontal line across the page”. Perhaps you’ve recently looked at similarly designed websites like The New York Times, The Washington Post, The Wall Street Journal, Bergdorf Goodman, or Bloomingdale’s. As for other elements in question, like a “sign-in link and search box at the top right”, a “large featured product advertisement”, and an “email subscription box” in the footer, we’re quite sure that these, even when taken all together, are not distinctive enough for trade dress protection.
images courtesy of mr porter
What’s more, even if it were deemed that taken as a whole, those elements were distinctive enough to identify Mr. Porter, it would be an uphill battle to convince a judge that they weren’t functional. Functionality with respect to trade dress is not the same as functionality with respect to copyright (which is primarily concerned with utility). Functional features here refer to those that are necessary to include on a website for competition. Something is typically deemed functional where there are few alternatives available. So, questions a court might consider would be: How many alternatives are there to a search bar at the top right or an email subscription box at the bottom? The options available for arranging a website are somewhat limited, which makes it unlikely that Mr. Porter has a persuasive argument.
All in all, it doesn’t seem like going to court would lead to a victorious end for Mr. Porter. If Mr. Shirts were instead using a variation of the Mr. Porter trademark, then there might be a valid legal claim. But as is, Mr. Shirts is probably in the clear to keep its current web design. Time will tell if Mr. Porter’s letter of concern was a real threat, and court is the next step, or if it was simply an attempt to browbeat.
JENNIFER WILLIAMS is a recent law student graduate who writes about fashion, the legal avenues available for protecting it, and the ways in which the laws are falling short. For more from Jennifer, follow her on Twitter.