Thumbtack, Inc. v. Liaison, Inc.
- William Orrick
- 3:23-cv-02830
- U.S. District Court · Northern District of California
- 14
In Thumbtack v. Liaison, Judge Orrick granted in part and denied in part Liaison’s motion to dismiss, dismissing some claims and allowing others to continue.
Thumbtack’s copyright, trade dress, and California unfair competition claims were affected. Specified copyright allegations were dismissed or required clarification, while other identified copyright allegations remained; the trade dress and related unfair competition claims were dismissed with leave to amend. Liaison obtained only a partial ruling on its motion.
What happened
Thumbtack, Inc. v. Liaison, Inc. concerns allegations that Liaison copied content and visual design features from Thumbtack’s website on competing websites. Thumbtack asserted claims for copyright infringement, trade dress and trademark-related violations, and violations of California’s unfair competition law.
Judge Orrick found that some parts of Thumbtack’s copyright claim were not described specifically enough, including allegations involving the “Smart Hiring” text and Help Pages. He allowed other copyright allegations involving identified policy and website text to continue at this stage. He also found that Thumbtack had not identified its claimed trade dress and related unfair competition claim with enough detail.
Judge William H. Orrick granted in part and denied in part Liaison’s motion to dismiss. The trade dress and related unfair competition claims, and specified parts of the copyright claim, were dismissed with leave to amend; Thumbtack was given 21 days to file an amended complaint.
The detailed version
- Thumbtack, Inc. v. Liaison, Inc. · No. 3:23-cv-02830
- William Orrick
- Jan. 22, 2024
Background
Thumbtack operates a website connecting consumers seeking services with professionals. It alleged that Liaison operates competing websites that copied Thumbtack’s website content and mimicked its overall visual design. The alleged copyrighted material included website text, the Non-Discrimination Policy, Safety Page, Privacy Policy, and the sequence of text and questions used to register professionals. The alleged trade dress included a distinctive font or typography, a blue-and-white color scheme, custom icons, page layouts, diagrams, menus, and a professional-user onboarding flow.
Thumbtack sued for copyright infringement under the Copyright Act, trademark infringement and false designation of origin under Section 43(a) of the Lanham Act, and violation of California Business and Professions Code § 17200. Liaison moved to dismiss all claims under Rule 12(b)(6), which requires dismissal when a complaint does not state a legally sufficient claim for relief.
Copyright claim
To state a copyright-infringement claim, Thumbtack had to allege ownership of the copyrighted work and copying of protected elements. The court held that Thumbtack could not rely on the general allegation that Liaison copied “the text displayed throughout” the website. It also had to identify the specific sequences of text and questions allegedly copied and the portions of Liaison’s websites where they appeared. Thumbtack was required to clarify whether it alleged copying of the entire website or copying of specific pages or sections.
The court considered the specifically identified portions of the website, including the Non-Discrimination Policy, Privacy Policy, related information pages, Review the Pro’s Profile section, and Help Pages. It declined to decide on a motion to dismiss whether the policy and information-page text was unprotectable stock language or original language entitled to copyright protection. Those questions required evidence and could not be resolved at that stage.
The court held that the phrase “Smart Hiring” placed over a stock photograph was not protectable by itself because it was a commonplace combination of elements. It also dismissed the copyright allegations concerning the Help Pages because, as presented, they appeared to concern titles and other elements that were not copyrightable. Thumbtack was given leave to amend and clarify the scope and factual basis of its copyright claim. The remaining copyright allegations concerning the identified policies and information pages were not dismissed.
Trade dress and California unfair competition claim
Trade dress is the overall visual appearance of a product or service. A trade dress claim requires allegations that the claimed design is distinctive, that the defendant’s use is likely to confuse the public, and that the design is not functional. The court held that Thumbtack had not identified the protected trade-dress elements with enough specificity. It was unclear which features in the screenshots were claimed as protected, what font or typography Thumbtack claimed, the precise scope of the color scheme and icons, and what constituted the alleged onboarding flow.
The court dismissed the trade dress claim with leave to amend. It required Thumbtack to identify all protected elements on specifically identified pages of both websites and to explain whether those elements were protected individually or as a combined design creating a protectable overall appearance. The court also dismissed the related California Business and Professions Code § 17200 claim with leave to amend because the parties agreed that its viability depended on the trade dress claim.
Disposition
The court granted in part and denied in part Liaison’s motion to dismiss. The motion was granted as to the copyright allegations based on the “Smart Hiring” text and Help Pages, and otherwise denied as to the copyright claims subject to Thumbtack clarifying its theory. The motion was granted with leave to amend as to the trade dress and related Section 17200 claim. Thumbtack had 21 days from the date of the order to file an amended complaint.
Read the full 14-page opinion on CourtListener, the free public archive maintained by the Free Law Project.