Thumbtack, Inc. v. Liaison, Inc.

• Court: District Court, N.D. California
• Decided: January 22, 2024
• Docket: 3:23-cv-02830
• Status: Unknown

Opinion

1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 7 THUMBTACK, INC., Case No. 23-cv-02830-WHO

8 Plaintiff, ORDER GRANTING MOTION TO 9 v. DISMISS IN PART

10 LIAISON, INC., Re: Dkt. No. 17 Defendant. 11

12 Defendant Liaison, Inc.’s motion to dismiss is granted in part and denied in part. Plaintiff 13 Thumbtack, Inc.’s claim for copyright infringement is dismissed in part because it lacks specificity 14 and needs clarification on the scope of the claim. Thumbtack’s trade dress and associated Unfair 15 Competition Law claims also lack specificity and are dismissed with leave to amend so that 16 Thumbtack can identify with particularity the elements on Liaison’s’s website that allegedly 17 violate its protected trade dress. 18 BACKGROUND 19 Thumbtack is the owner and operator of www.thumbtack.com (“Thumbtack Website”), a 20 website that connects consumers seeking services with industry professionals who offer a wide 21 range of services, e.g., painting, appliance repair, home cleaning, gardening, wedding planning, 22 and tax preparation. Compl. ¶¶ 3-4. It alleges that Liaison operates multiple websites that 23 compete with Thumbtack (e.g., www.tutors.com, www.lessons.com, www.fash.com, 24 www.thervo.com, and www.homeguide.com) and asserts that these “Infringing Sites” copy the 25 content of Thumbtack’s website, “unlawfully display Thumbtack’s exact copyrighted content and 26 then mimic the overall visual trade dress” of Thumbtack’s site on Liaison’s competing Infringing 27 Sites. Id. ¶¶ 5-8. Thumbtack specifically alleges that Liaison has copied the following copyrighted 1 a. The text displayed throughout the Thumbtack Website;

2 b. The Non-Discrimination Policy on the Thumbtack Website;

3 c. Safety Page on the Thumbtack Website;

4 d. Privacy Policy on the Thumbtack Website; and

5 e. The unique sequence of text and questions used by Thumbtack to facilitate the registration of professionals on the Thumbtack Website 6 Compl. ¶¶ 29-30. Thumbtack also alleges Liaison has copied elements of Thumbtack’s protected 7 trade dress from its website, including: 8 a. A unique font/typography that was created for Thumbtack’s 9 exclusive use

10 b. A unique color scheme involving “Thumbtack blue” text and navigation buttons on white page background 11 c. Unique custom-made icons 12 d. Unique page layouts, diagrams, menus, and a distinct onboarding 13 flow for professional users. 14 Together “the unique font/typography, colors, icons, page layouts, diagrams, menus, and a distinct 15 onboarding flow for professional users make up design elements of Thumbtack’s Website [to] 16 consist of protectable trade dress (“Thumbtack Trade Dress”).” Id. ¶¶ 32-33. 17 In the Complaint, Thumbtack identified and attached examples of Liaison’s alleged use of 18 Thumbtack’s Copyrighted Materials and Trade Dress elements. Id. ¶¶ 57-58 & Exs. 3-4. Based 19 on the identified conduct, Thumbtack sued Liaison for: (a) copyright infringement, in violation of 20 the Copyright Act of 1796 (17 U.S.C. §§ 101 et seq.); (b) trademark infringement, false 21 designation of origin and unfair competition in violation of Section 43(a) of the Lanham Act (15 22 U.S.C. § 1125(a)); and (c) violation of California Business & Professions Code § 17200, et seq. 23 Liaison has moved to dismiss each of the claims, Dkt. No. 17, arguing that the claims fail because 24 Thumbtack cannot claim copyright over the language it identified and cannot protect as trade dress 25 “basic, functional website layouts and designs.” Mot. at 17.1 26 1 In support of its motion, and through the Declaration of Meng Zhong (Dkt. No. 17-1), Liaison 27 asks me to take judicial notice of Thumbtack’s copyright registration and current versions of the 1 LEGAL STANDARD 2 Under FRCP 12(b)(6), a district court must dismiss a complaint if it fails to state a claim 3 upon which relief can be granted. To survive a Rule 12(b)(6) motion to dismiss, the plaintiff must 4 allege “enough facts to state a claim to relief that is plausible on its face.” Bell Atl. Corp. v. 5 Twombly, 550 U.S. 544, 570 (2007). A claim is facially plausible when the plaintiff pleads facts 6 that “allow the court to draw the reasonable inference that the defendant is liable for the 7 misconduct alleged.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (citation omitted). There 8 must be “more than a sheer possibility that a defendant has acted unlawfully.” Id. While courts do 9 not require “heightened fact pleading of specifics,” a plaintiff must allege facts sufficient to “raise 10 a right to relief above the speculative level.” Twombly, 550 U.S. at 555, 570. 11 In deciding whether the plaintiff has stated a claim upon which relief can be granted, the 12 court accepts the plaintiff’s allegations as true and draws all reasonable inferences in favor of the 13 plaintiff. See Usher v. City of Los Angeles, 828 F.2d 556, 561 (9th Cir. 1987). However, the court 14 is not required to accept as true “allegations that are merely conclusory, unwarranted deductions of 15 fact, or unreasonable inferences.” In re Gilead Scis. Sec. Litig., 536 F.3d 1049, 1055 (9th Cir. 16 2008). If the court dismisses the complaint, it “should grant leave to amend even if 17 no request to amend the pleading was made, unless it determines that the pleading could not 18 possibly be cured by the allegation of other facts.” Lopez v. Smith, 203 F.3d 1122, 1127 (9th Cir. 19 2000). In making this determination, the court should consider factors such as “the presence or 20 absence of undue delay, bad faith, dilatory motive, repeated failure to cure deficiencies by 21 previous amendments, undue prejudice to the opposing party and futility of the proposed 22 amendment.” Moore v. Kayport Package Express, 885 F.2d 531, 538 (9th Cir. 1989). 23 24 Complaint. Khoja v. Orexigen Therapeutics, Inc., 899 F.3d 988, 1002 (9th Cir. 2018) (judicial 25 notice is appropriate if the complaint “refers extensively” to the document or the document forms “the basis” of the plaintiff’s claim). Thumbtack does object to judicial notice of the contents 26 “External Materials,” offered by Liaison, including other parties’ websites/results of google searches (Zhong Decl., Ex. 2), a screenshot from a Thumbtack website in 2018 (Zhong Decl., Ex. 27 6), and an archived version of a Liaison website from 2015 (Zhong Decl., Ex. 7). Oppo. at 6-8. I 1 DISCUSSION 2 I. COPYRIGHT 3 A. Legal Standard 4 “To prove copyright infringement, a plaintiff must demonstrate (1) ownership of the 5 allegedly infringed work and (2) copying of the protected elements of the work by the defendant.” 6 Pasillas v. McDonald’s Corp., 927 F.2d 440, 442 (9th Cir. 1991). If there is no direct evidence of 7 copying, a plaintiff may prove this element through circumstantial evidence that (1) the defendant 8 had access to the copyrighted work prior to the creation of defendant’s work and (2) there is 9 substantial similarity of the general ideas and expression between the copyrighted work and the 10 defendant’s work. Sid & Marty Krofft Television Prods., Inc., v. McDonald’s Corp., 562 F.2d 11 1157, 1162 (9th Cir. 1977), superseded on other grounds by 17 U.S.C. § 504(b). 12 B. Application 13 Thumbtack alleges Liaison violates it copyright when it copied:

14 a. The text displayed throughout the Thumbtack Website;

15 b. The Non-Discrimination Policy on the Thumbtack Website;

16 c. Safety Page on the Thumbtack Website;

17 d. Privacy Policy on the Thumbtack Website; and

18 e. The unique sequence of text and questions used by Thumbtack to facilitate the registration of professionals on the Thumbtack Website 19 Compl. ¶¶ 29-30. 20 As an initial matter, Thumbtack cannot base its copyright act claim on “text displayed 21 throughout” the Website (item a. above). It must identify actionable copying with specificity 22 under Rule 8. Similarly, Thumbtack cannot base this claim on copying of the “unique sequence of 23 text and questions used by Thumbtack” without identifying with specificity the specific sequences 24 – present on the registered version of Thumbtack’s website – that was used by Liaison on 25 specifically identified portions of the Liaison sites. See, e.g., Livingston v. Morgan, No. C-06-2389 26 MMC, 2006 WL 8459602, at *3 (N.D. Cal. July 31, 2006) (“A complaint for copyright 27 infringement fails to satisfy the requirements of Rule 8(a) if it does not allege the specific 1 copyrighted work that has been infringed.”). It may be that Thumbtack is claiming substantial 2 copying of its website in its entirety – and aims to prove that Liaison copied Thumbtack’s website 3 in its entirety or otherwise copied enough original text considering the entirety of Thumbtack’s 4 site to be liable for infringement. But it is not clear whether that is the basis of Thumbtack’s 5 copyright infringement claim or whether Thumbtack is alleging only that Liaison copied specific 6 portions (pages or chunks of pages) from its website. On amendment, Thumbtack shall make its 7 theory of copyright infringement clear; namely, whether it is claiming wholesale copying of its 8 website or simply copying of discrete portions.2 9 The Complaint, as noted above at items b. through e., identifies a few specific portions of 10 text from Thumbtack’s website that it claims Liaison copied almost verbatim: Thumbtack’s 11 “Safety Page,” “Non-Discrimination Policy,” and “Privacy Policy.” Compl. ¶ 57. Additional 12 examples are identified in Exhibit 3, including “Smart Hiring,” “Review the pro’s profile,” 13 “Information We Collect,” “When Thumbtack Discloses Your Information,” “Updating, Deleting 14 and Correcting Your Information,” and “Help for pro” and “Help for customer” pages. Dkt. No. 15 1-3. I will consider only these portions of Thumbtack’s website as falling under the copyright 16 claim. 17 As an initial matter, Thumbtack contends Liaison cannot – in its motion to dismiss – 18 challenge the copyrightability of the text that Thumbtack claims Liaison improperly copied 19 because copyrightability is a question of fact and usually not appropriate for determination at the 20 motion to dismiss stage. See, e.g., Tracy Anderson Mind & Body, LLC v. Roup, No. CV 22-4735- 21 RSWL-EX, 2022 WL 17670418, at *3 (C.D. Cal. Dec. 12, 2022) (“motion to dismiss arguments 22

23 2 Relatedly, Liaison argues repeatedly that Thumbtack cannot claim copyright protection over the selection and arrangement of the images and text on Thumbtack’s website because Thumbtack’s 24 copyright registration covered only the text of Thumbtack’s site and not, for example, “[s]election, coordination, and/or arrangement of” “text and photographs.” Mot. at 2, 7, 9 & Ex. 1 25 (registration); Reply 5-6; see also Compendium of U.S. Copyright Office Practices § 1009.6(A) (3d ed. 2021) (hereafter “Compendium”); VHT, Inc. v. Zillow Grp., Inc., 69 F.4th 983, 990 (9th 26 Cir. 2023) (the Compendium is “a non-binding administrative manual,” that can be followed to the “extent it has the ‘power to persuade.’” (quoting Georgia v. Public.Resource.Org, Inc., 140 S. Ct. 27 1498 (2020)). Thumbtack did not address this argument in its opposition or identify any caselaw 1 that copyrighted works do not qualify for copyright protection based on a ‘detailed factual 2 analysis’ of the works” are inappropriate). That is generally true, but the challenges brought by 3 Liaison are not based on “detailed” factual analyses to determine substantial similarities between 4 the two websites or to determine whether the general subject matters are copyrightable. See id. at 5 *3 (explaining that whether the “functional exercise movements” combining “routines combining 6 choreography, fitness, and cardiovascular movement” were ultimately “unprotectable ‘ideas’ or 7 ‘processes’” would require a “detailed factual analysis unfit for ruling on a motion to dismiss”); 8 see also Thomson v. HMC Grp., No. CV1303273DMGVBKX, 2014 WL 12589312, at *3 (C.D. 9 Cal. Feb. 18, 2014) (determining whether “technical drawings and architectural works” are 10 unprotected as “(1) functional, (2) designs of interior rooms, and (3) merely ideas and concepts” 11 not appropriate to determine on a motion to dismiss). 12 I will consider each of Liaison’s arguments below. 13 1. Non-Discrimination Policy 14 Liaison argues that it cannot be liable as a matter of law for alleged copying of 15 Thumbtack’s non-discrimination policy because only “thin” copyright protection extends to 16 copyrighted “policies or forms,” and infringement will be found only where the defendant used 17 “virtually identical text” or copied the “arrangement” and manner of presentation. Mot. at 6-7 18 (citing cases).3 Despite admitted similarities in what Liaison claims is “stock language” used in 19 the Non-Discrimination Policies on Liaison’s and Thumbtack’s sites, Liaison argues that the 20 presentation of its Non-Discrimination Policy was significantly different than the presentation on 21 Thumbtack’s site – e.g., Liaison used bullet points to present its information – making the 22 presentations on the different websites substantially dissimilar and defeating protection as a matter 23 of law. Whether the use of bullet points or other formatting differences means the policies are not 24

25 3 See, e.g., Rassamni v. Fresno Auto Spa, Inc., 365 F. Supp. 3d 1039, 1046–47 (E.D. Cal. 2019) (“forms are sometimes characterized as a type of unprotectable functional work. . . . Works 26 containing strong functional elements are entitled only to ‘thin’ copyright protection.”); Digby Adler Grp. LLC v. Image Rent a Car, Inc., 79 F. Supp. 3d 1095, 1102 (N.D. Cal. 2015) (“It is 27 undisputed that Digby has a registered copyright for the text of the bandago.com website. . . . It is 1 otherwise sufficiently or substantially similar depends upon a weighing of the similarities between 2 the text and the differences in the formatting, and is generally not appropriate to resolve on a 3 motion to dismiss. See Zindel as Tr. for David Zindel Tr. v. Fox Searchlight Pictures, Inc., 815 F. 4 App'x 158, 159 (9th Cir. 2020) (noting courts should be “cautious” before dismissing cases for 5 lack of substantial similarity on a motion to dismiss, unless “the similarities between the two 6 works are only in uncopyrightable material or are de minimis.”); see also Changing World Films 7 LLC v. Parker, No. CV229021DMGPVCX, 2023 WL 8044348, at *5 (C.D. Cal. Sept. 12, 2023) 8 (same). 9 Thumbtack says that the text of its Non-Discrimination Policy allegedly copied by Liaison 10 (see Ex. 3, Dkt. No. 1-3; Compl. ¶ 39) is protectible as “original” content. Liaison argues that 11 Thumbtack simply used unprotectable “form” language that basic internet searches demonstrate is 12 routinely used by thousands of companies and, therefore, not protectible as original content. But 13 the internet searches Liaison relies on are not judicially noticeable. See supra. Whether the 14 content at issue is original, protectible content or unprotected form language must be assessed 15 based on evidence and cannot be resolved at this motion to dismiss stage. See, e.g., Pallen 16 Martial Arts, LLC v. Shir Martial Arts, LLC, No. 13-CV-05898-JST, 2014 WL 2191378, at *6 17 (N.D. Cal. May 23, 2014 (denying motion to dismiss, despite defendant allegation “that the 18 contract at issue here is cobbled together from other form contracts” because that determination 19 was inappropriate on motion to dismiss stage); see also Rassamni v. Fresno Auto Spa, Inc., 365 F. 20 Supp. 3d 1039, 1049 (E.D. Cal. 2019) (liability disclaimer was “still entitled to thin protection,” 21 and court could not determine “as a matter of law that thin protection would not bar the alleged 22 infringement,” given the alleged infringer’s use of “virtually identical” language that changes only 23 a few words and added additional text). 24 2. Smart Hiring Text 25 Thumbtack’s next example of copying is Liaison’s use of the phrase “Smart Hiring on 26 HomeGuide” superimposed on a stock image of someone making measurements where 27 Thumbtack’s copyrighted website uses the phrase “Smart Hiring on Thumbtack” superimposed on 1 to “text,” its copyright cannot extend to use of similar stock images on the competing sites. 2 Liaison also argues that the phrase “Smart Hiring” is not protectible because copyright protection 3 does not extend to use of “titles, short phrases, standard navigational text, or other insufficiently 4 creative or functional elements.” Mot. at 7 (citing Compendium § 1006.1); see also 37 C.F.R. § 5 202.1 (“examples of works not subject to copyright and applications for registration of such works 6 cannot be entertained [include] (a) Words and short phrases such as names, titles, and slogans; 7 familiar symbols or designs; mere variations of typographic ornamentation, lettering or coloring; 8 mere listing of ingredients or content.”). 9 In response, Thumbtack does not address the Compendium or whether “SmartHiring” is 10 not an unprotected short phrase, title, or slogan. Instead, Thumbtack argues that Liaison is 11 impermissibly attempting to “parse” discrete elements from “Thumbtack’s Copyrighted Material” 12 as a whole, which is inappropriate because Thumbtack is claiming copyright protection for the 13 “entirety of the content of its website, including the selection and arrangement of the images and 14 text displayed throughout.” Oppo. at 10; see also L.A. Printex Indus., Inc. v. Aeropostale, Inc., 15 676 F.3d 841, 849 (9th Cir. 2012), as amended (“Original selection, coordination, and 16 arrangement of unprotectible elements may be protectible expression.”). 17 There are two problems with this argument. First, while it may be possible to register the 18 selection and arrangement of uncopyrightable content for a website, in order to do that Thumbtack 19 would have had to disclose that intent in its application; there is no evidence Thumbtack did so. 20 See Compendium § 1009.6(A) (“If the applicant intends to register the authorship involved in 21 selecting, coordinating, and/or arranging the content that appears on a website, the applicant may 22 use any of the terms listed below . . . . Selection, coordination, and/or arrangement of [specify 23 material that has been selected, coordinated, and/or arranged, e.g. ‘selection and arrangement of 24 text and photographs’].”). 25 Second, “[e]xpressions that are standard, stock, or common to a particular subject matter or 26 medium are not protectable under copyright law.” Satava v. Lowry, 323 F.3d 805, 810 (9th 27 Cir.2003); see also Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435, 1444 (9th Cir. 1994) 1 standard, in the treatment of a given [idea],’ they are treated like ideas and are therefore not 2 protected by copyright”) (quoting Frybarger v. International Business Machines Corp., 812 F.2d 3 525, 530 (9th Cir.1987)). 4 Following Satava, a judge in the Central District rejected protection of an image displaying 5 graphics of named glasses juxtaposed with a photograph of the glasses being worn by a model. 6 Salt Optics, Inc. v. Jand, Inc., No. SACV10828DOCRNBX, 2011 WL 13055856, at *5 (C.D. Cal. 7 Mar. 4, 2011). Copyright protection was denied not because the elements were unprotectable (the 8 court recognized that “certain combinations of unprotectable elements may qualify for copyright 9 protection (e.g. music notes combined together to form a composition)”), but because 10 “‘commonplace’ or ‘typical’ combinations do not.” Id. at *5 (quoting Satava, 323 F.3d at 811– 11 12); see also id. (“Plaintiff’s alleged website display is one such “commonplace” combination of 12 elements. Plaintiff has asserted no allegations tending to show that Plaintiff organized these 13 typical elements of website sales in any sort of unique, creative way. Rather, Plaintiff's 14 organization, as alleged, strikes the court as “standard, stock [and] common,” [] and thus unworthy 15 of copyright protection.”). 16 The use of the term Smart Hiring cannot itself be protected. Its placement over a stock 17 photograph of someone using design tools does not amount to anything more than a commonplace 18 combination that is not protectable as a matter of law. 19 3. Review the Pro’s Profile/Privacy Policy/Information We Collect/When [Company] Discloses Your Information and Updating/Deleting and 20 Correcting Your Information 21 As with the Non-Discrimination Policy, there are a few sentences within the Review the 22 Pro section that could be considered copied verbatim, but it does not appear that Liaison copied 23 the whole segment or even whole sections (although there are obvious similarities between the 24 headings used). The Privacy Policy, in the examples provided by Thumbtack, appears to copy 25 even more text from the Thumbtack site (assuming the truth of Thumbtack’s allegations), as 26 almost the whole section on Liaison’s cite appears to use materially identical language to 27 Thumbtack’s Privacy Policy. Finally, the Information We Collect, When [Company] Discloses 1 Liaison’s sites provided by Thumbtack are close to verbatim to the text segments on the 2 Thumbtack site. 3 As above, whether these segments are unprotected “stock language” that is routinely used 4 by many sites – and as a result, not protectible – or whether any true copying of “original 5 language” with minor differences is sufficient to show copyright violation, cannot be resolved on a 6 motion to dismiss. 7 4. Help Pages 8 Finally, Thumbtack alleges impermissible copying of its help pages, for the pros and for 9 the end-users. Those pages list icons, with three out of four identical titles on both sites. E.g., 10 “Getting started,” “Projects,” and “Messaging and Reviewing Pros.” Thumbtack alleges copying 11 only of the titles on those pages. As Liaison argues, under the Compendium the Copyright Office 12 has determined that certain elements of a website are not copyrightable, including: (1) 13 “[f]unctional design elements”; (2) “[t]he layout, format, or ‘look and feel’ of a website”; and (3) 14 “[c]ommon, unoriginal material, such as names, icons, or familiar symbols.” Compendium § 1007. 15 Liaison also notes that it uses different icons and different phrases for a few of the help topics. 16 Thumbtack wholly fails to address this argument in its opposition. If Thumbtack is only 17 alleging copying of the titles, that would appear to run afoul of the Compendium. If Thumbtack is 18 alleging impermissibly copying something more from these pages, that is not clear. 19 Therefore, the copyright claim regarding the SmartHiring text and the Help Pages is 20 DISMISSED. Thumbtack is given leave to amend to identify with more specificity whether it 21 claims copyright protection over the text of its website in its entirety. The copyright act claim 22 with respect to the policies (including the Non-Discrimination Policy, and the Review the Pro’s 23 Profile/Privacy Policy/Information We Collect/When [Company] Discloses Your Information and 24 Updating/Deleting and Correcting Your Information pages) remains. 25 II. TRADE DRESS 26 A. Legal Standard 27 “In addition to protecting registered marks, the Lanham Act, in § 43(a), gives a producer a 1 combination thereof ... which ... is likely to cause confusion ... as to the origin, sponsorship, or 2 approval of his or her goods....’” Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 209 3 (2000) (quoting 15 U.S.C. § 1125(a)). “Trade dress involves the total image of a product and may 4 include features such as size, shape, color, color combinations, texture, or graphics[,]” and 5 “protection is broader in scope than trademark protection, both because it protects aspects of 6 packaging and product design that cannot be registered for trademark protection and because 7 evaluation of trade dress infringement claims requires the court to focus on the plaintiff’s entire 8 selling image, rather than the narrower single facet of trademark.” Vision Sports, Inc. v. Melville 9 Corp., 888 F.2d 609, 613 (9th Cir. 1989). 10 To prove a trade dress infringement claim, plaintiff must prove: “(1) the trade dress is 11 inherently distinctive or has acquired distinctiveness through secondary meaning; (2) there is a 12 likelihood that the public will be confused by the infringing use; and (3) the trade dress is 13 nonfunctional.” Stephen W. Boney, Inc. v. Boney Servs., Inc., 127 F.3d 821, 828 (9th Cir. 1997). 14 In evaluating a trade dress claim, a court must not focus on individual elements, “but rather on the 15 overall visual impression that the combination and arrangement of those elements create.” Clicks 16 Billiards, Inc. v. Sixshooters, Inc., 251 F.3d 1252, 1259 (9th Cir.2001). “Trade dress is the 17 composite tapestry of visual effects.” Id. 18 B. Application 19 Liaison argues that Thumbtack fails to identify the protected aspects of its trade dress with 20 sufficient specificity. In Sleep Sci. Partners v. Lieberman, No. 09-04200 CW, 2010 WL 1881770, 21 at *3 (N.D. Cal. May 10, 2010), the court dismissed with leave to amend a website trade dress 22 claim based, as here, on the alleged misappropriation of the “look and feel” of a site “including, 23 but not limited to, the size and location of text, the size and location of graphics, the features that it 24 offers and the location of hyperlinks of those features.” Id. The court dismissed because 25 “[a]lthough [plaintiff] has cataloged several components of its website, Plaintiff has not clearly 26 articulated which of them constitute its purported trade dress. Notably, Plaintiff employs language 27 suggesting that these components are only some among many, which raises a question of whether 1 the elements comprising the website’s “look and feel,” [defendant] is not given adequate notice.” 2 Id. at *3; see also Salt Optics, Inc. v. Jand, Inc., No. SACV 10-0828 DOC, 2010 WL 4961702, at 3 *5 (C.D. Cal. Nov. 19, 2010) (dismissing website trade dress claim because while “Plaintiffs 4 describe these [allegedly protected trade dress] elements with a certain amount of detail, absent 5 from the FAC is any attempt to synthesize these elements in order to describe the way that the 6 listed elements, in conjunction, combine to create the website's protectible ‘look and feel.’ The 7 lack of any such synthesis, in conjunction with Plaintiff's expressly stated intention to incorporate 8 other elements of the website into the trade dress claim at a later stage, gives the Court pause.”); 9 Parker Waichman LLP v. Gilman L. LLP, No. 12-CV-4784 JS AKT, 2013 WL 3863928, at *4 10 (E.D.N.Y. July 24, 2013) (dismissing web site trade dress claim where plaintiff identified a few, 11 but not all, elements and failed to “synthesize” and explain how those features “combine to create 12 the website’s protectable ‘look and feel.’” (quoting Salt Optics, 2010 WL 4961702, at *5)). 13 Liaison contends that Thumbtack’s Complaint suffers from the same defects. In paragraph 14 32 of its Complaint, and Exhibit 4, Thumbtack provides “examples” of the unique design and 15 protected trade dress elements of its website, including:

16 a. A unique font/typography that was created for Thumbtack’s exclusive use; 17 b. A unique color scheme involving “Thumbtack blue” text and 18 navigation buttons on white page background (depicted below); . . . 19 c. Unique custom-made icons (depicted below); and 20 d. Unique page layouts, diagrams, menus, and a distinct onboarding 21 flow for professional users. 22 Compl. ¶ 32. According to Thumbtack, together “the unique font/typography, colors, icons, page 23 layouts, diagrams, menus, and a distinct onboarding flow for professional users make up design 24 elements of Thumbtack’s Website consist of protectable trade dress (‘Thumbtack Trade Dress’).” 25 Id. ¶ 33. Examples, “including but not limited to,” are then provided in paragraphs 34, 48 & 58, as 26 well as Exhibits 1 & 4. The problem with the examples provided, in addition to not being 27 expressly limited (the main defect in Sleep Sci. Partners, supra) is that Thumbtack does not 1 “overall visual impression that the combination and arrangement of those elements create.” Clicks 2 Billiards, Inc., 251 F.3d at 1259. 3 I cannot decipher what, in the screen shots provided at paragraphs 34 & 58 of the 4 Complaint (that appear to come from different parts of the Thumbtack website), are the claimed 5 protected elements and why. Visual elements are circled without explanation. Are these examples 6 of “unique font/typography” or something else? Nowhere in the Complaint is the unique 7 font/typography used by Thumbtack identified by name or otherwise. Similarly, Thumbtack 8 claims “colors” are elements of its protected trade dress, but is that limited to its use of the 9 “Thumbtack blue” color scheme with blue text and navigation buttons on a white background or is 10 it broader? Compare Compl. ¶ 32b. with ¶ 34. Are the “custom-made icons” limited to the 11 examples at paragraph 32c.? And finally, what are the “unique page layouts, diagrams, menus, 12 and a distinct onboarding flow for professional users” Thumbtack claims Liaison is 13 misappropriating? See Compl. ¶ 32d. The issue is particularly problematic with the “distinct 14 onboarding flow” that is not described in the Complaint or identified whatsoever in Exhibits 1 or 15 4. 16 The Trade Dress claim is DISMISSED with leave to amend. On amendment, Thumbtack 17 must identify with specificity the elements of Trade Dress present on specifically identified pages 18 of Thumbtack’s and Liaison’s website that it claims are protected individually or as part of a 19 synthesized whole that create the look and feel that Liaison has allegedly misappropriated. All 20 protected elements must be identified, not just “examples.” Thumbtack can use screen shots from 21 its website to show the elements and how they are combined, but Thumbtack must describe what 22 each example or set of examples shows. 23 Liaison complains that some of the examples provided in the current Complaint (in 24 addition to being vague concerning the claimed elements represented in each example) are from 25 snippets of various pages or flows on the Thumbtack website. Liaison offers, as exhibits to its 26 Motion, full views of complete pages from the Thumbtack and Liaison sites to argue that the 27 websites have materially different looks and feels when considered in full. See Zhong Decl., Exs. 1 3-4, That type of analysis is rarely appropriate at the motion to dismiss stage.* And it is certainly 2 || premature until Thumbtack has provided a definitive list of the elements of Trade Dress that it 3 claims are protected and a written description with annotated examples of how those elements 4 synthesize into a protected whole.* 5 Thumbtack’s Trade Dress claim is DISMISSED with leave to amend. 6 || I. SECTION 17200 7 The parties agree that the viability of this claim depends on the viability of the Trade Dress 8 || claim. For the same reasons, plaintiffs’ California Business & Professions Code Section 17200 9 || claim is DISMISSED with leave to amend. 10 CONCLUSION 11 The motion to dismiss the Copyright Act claims is GRANTED for the copyright claims «= 12 || based on the “Smart Hiring” and Help Pages alleged but otherwise DENIED, except that on

13 amendment Thumbtack shall clarify whether it is claiming wholesale copying of its website or

14 simply copying of discrete portions. The motion to dismiss the Trade Dress and subsidiary 15 Section 17200 claim is GRANTED with leave to amend. An Amended Complaint shall be filed 16 || within twenty one (21) days of the date of this Order.

= 17 IT IS SO ORDERED.

18 || Dated: January 22, 2024 . \f CE 19 . illiam H. Orrick 20 United States District Judge 21 22 23 + See Lepton Labs, LLC v. Walker, 55 F. Supp. 3d 1230, 1240 (C.D. Cal. 2014) (“A court must test 94 || the legal merits of a plaintiff’s alleged trade dress at summary judgment or trial when the parties provide with all relevant, admissible evidence—not at the pleading stage when the court has little 95 || more than the plaintiff’s allegations and the defendant's summary denial of them.”). 26 > In its Motion, Liaison also addresses the examples Thumbtack included in Exhibit 4 to the Complaint to argue why the elements it suspects Thumbtack seeks Trade Dress protection of are 97 || unprotected functional elements or look too different on Liaison’s site to cause any confusion. Mot. at 15-22. Liaison provides no authority to support addressing the non-functional/functional 2g || and lack of confusion challenges at the motion to dismiss stage, but may do so again if it challenges the amended complaint.