Case 2:06-cv-01002-RSL Document 40 Filed 01/18/07 Page 1 of 17
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`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF WASHINGTON
`AT SEATTLE
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`_______________________________________
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`BLUE NILE, INC., a Delaware corporation,
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`Plaintiff,
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`v.
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`ICE.COM, INC., a Delaware corporation; and )
`ODIMO INC., a Delaware corporation,
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`Defendants.
`_______________________________________)
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`No. C06-1002RSL
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`ORDER GRANTING IN PART
`AND DENYING IN PART
`DEFENDANT ICE.COM’S MOTION
`TO DISMISS CLAIMS PREEMPTED
`BY THE COPYRIGHT ACT
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`I. INTRODUCTION
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`This matter comes before the Court on “Defendant Ice.com’s Motion to Dismiss Claims
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`Preempted by the Copyright Act” (Dkt. #24). Defendant asserts that plaintiff’s claims for: (1)
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`trade dress infringement; (2) violation of the Washington Consumer Protection Act (“CPA”); (3)
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`unfair competition; and (4) unjust enrichment and restitution should be dismissed under Fed. R.
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`Civ. P. 12(b)(6) as limited and preempted by the Copyright Act. Plaintiff opposes dismissal of
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`these claims because it asserts that its trade dress and state law claims relate to defendants’
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`copying of “the overall look and feel” of its diamond search webpages which cannot be
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`remedied by copyright law. For the reasons set forth below, the Court grants in part and denies
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`in part defendant’s motion to dismiss.
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`26 ORDER GRANTING IN PART AND DENYING
`IN PART DEFENDANT ICE.COM’S
`MOTION TO DISMISS
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`

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`Case 2:06-cv-01002-RSL Document 40 Filed 01/18/07 Page 2 of 17
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`A.
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`Background
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`II. DISCUSSION
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`Plaintiff owns and operates an online diamond and fine jewelry retail sales business
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`through three websites: www.bluenile.com; www.bluenile.ca; and www.bluenile.co.uk.
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`Defendant Ice.com is also in the retail diamond and fine jewelry business and owns and operates
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`its own website at www.diamond.com. Defendant Odimo Inc. owned and operated the
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`www.diamond.com website until about May 11, 2006, when it was purchased by Ice.com.
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`Plaintiff alleges that defendants copied two distinct portions of its website. First, plaintiff
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`alleges that defendants copied certain elements of plaintiff’s website protected by the Copyright
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`Act. See Response at 1 (stating this action “arises from Ice.com’s and Odimo’s intentional
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`copying of specific copyrighted elements of Blue Nile’s website.”). Second, plaintiff alleges
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`that defendants copied the “overall look and feel” of plaintiff’s diamond search webpages. Id. at
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`2 (“This is a separate and distinct wrong for which Blue Nile is entitled to recover separate and
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`apart from infringement of limited elements of its website.”).
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` On July 25, 2006, plaintiff filed an amended complaint asserting eight causes of action
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`for: (1) copyright infringement of its “Blue Nile Diamond Search” webpages; (2) copyright
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`infringement of a “cushion-cut” diamond photograph; (3) trade dress infringement under the
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`Lanham Act; (4) violation of the Washington CPA; (5) unfair competition; (6) breach of
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`contract; (7) breach of the implied covenant of good faith and fair dealing; and (8) unjust
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`enrichment and restitution.
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`B.
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`Analysis
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`Defendant moves to dismiss only plaintiff’s Lanham Act claim and three state law claims
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`based on Fed. R. Civ. P. 12(b)(6) and principles of copyright preemption. For clarity, plaintiff’s
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`Lanham Act claim and the state law claims are discussed separately below.
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`26 ORDER GRANTING IN PART AND DENYING
`IN PART DEFENDANT ICE.COM’S
`MOTION TO DISMISS
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`Case 2:06-cv-01002-RSL Document 40 Filed 01/18/07 Page 3 of 17
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`1.
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`Plaintiff’s Third Cause of Action for Trade Dress Infringement, 15 U.S.C. §
`1125(a) of the Lanham Act
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`Defendant asserts that plaintiff’s trade dress claim under § 1125(a) of the Lanham Act
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`should be dismissed because it overlaps with plaintiff’s copyright claims. The Court, however,
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`denies dismissal of the trade dress claim at this stage of the proceeding for two reasons.
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`First, given the novelty of plaintiff’s trade dress claim,1 greater factual development is
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`necessary before the Court can ascertain whether plaintiff’s copyright claims provide an
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`“adequate remedy” justifying dismissal of its trade dress claim. See Shaw v. Lindheim, 919
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`F.2d 1353, 1364-65 (9th Cir. 1990) (“We decline to expand the scope of the Lanham Act to
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`cover cases in which the Federal Copyright Act provides an adequate remedy.”); Van Buskirk v.
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`Cable News Network, Inc., 284 F.3d 977, 980 (9th Cir. 2002) (“[A] court may look only at the
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`face of the complaint to decide a motion to dismiss.”).
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`Section 301(a) of the Copyright Act preempts certain claims arising under state common
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`law or statutes. See 17 U.S.C. § 301(a) (“Thereafter, no person is entitled to any such right or
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`equivalent right in any such work under the common law or statutes of any State.”). Section
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`301, however, does not limit rights or remedies under other federal statutes. Id. § 301(d).
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`Despite this provision, “courts have long limited application of the Lanham Act so as not to
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`encroach on copyright interests.” 1 Melville B. Nimmer & David Nimmer, Nimmer on
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`Copyright § 1.01[D][2] at 1-83 (2005). Courts limit application of the Lanham Act in areas
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`traditionally occupied by copyright or where the copyright laws “provide[] an adequate remedy.”
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`See Shaw, 919 F.2d at 1365; Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23,
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`34 (2003) (“Thus, in construing the Lanham Act, we have been careful to caution against misuse
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`or over-extension of trademark and related protections into areas traditionally occupied by patent
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`or copyright.”) (internal quotation omitted). Parallel claims under the Copyright Act and
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`1 See infra note 8 and accompanying text.
`ORDER GRANTING IN PART AND DENYING
`IN PART DEFENDANT ICE.COM’S
`MOTION TO DISMISS
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`Case 2:06-cv-01002-RSL Document 40 Filed 01/18/07 Page 4 of 17
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`Lanham Act, however, are not per se impermissible. See Nintendo of Am., Inc. v. Dragon Pac.
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`Int’l, 40 F.3d 1007, 1011 (9th Cir. 1994) (“[W]hen a defendant violates both the Copyright Act
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`and the Lanham Act, an award of [statutory and actual] damages is appropriate.”).
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`Here, defendant alleges that plaintiff’s copyright claims provide it with an adequate
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`remedy because the trade dress claim “simply reiterates its copyright claims” since “[b]oth rest
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`on the same allegation that defendants copied specified portions of Blue Nile’s website.” See
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`Motion at 4. Plaintiff counters by claiming that its trade dress claim is not limited by the
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`Copyright Act because the “look and feel” of its website is not copyrightable. While defendant
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`claims that “[t]he Court will search in vain for this [“look and feel”] allegation in the complaint,”
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`on a motion to dismiss, the court must “read the complaint charitably . . . and . . . assume that all
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`general allegations embrace whatever specific facts might be necessary to support them.” See
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`Reply at 2; Peloza v. Capistrano Unified Sch. Dist., 37 F.3d 517, 521 (9th Cir. 1994).
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`Charitably read, the Court finds that plaintiff’s allegations in paragraph 52 of its amended
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`complaint relating to the “design and presentation of diamond search features” is sufficient to
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`support a claim that plaintiff is seeking to protect the “look and feel” of its website. See Dkt. #3.
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`While plaintiff’s failure to describe the elements of its trade dress with greater specificity in its
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`complaint might prove fatal during later stages of this litigation,2 at this point, defendant has
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`cited no authority for proposition that plaintiff cannot qualify its trade dress description as one
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`seeking protection for the “look and feel” of its website in response to a motion to dismiss.3
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`2 See Abercrombie & Fitch Stores, Inc. v. Am. Eagle Outfitters, 280 F.3d 619, 635 (6th Cir.
`2002) (“A complaint is neither an injunction nor a judgment; it merely puts the defendant on notice of the
`plaintiff’s claims. . . . Had the case proceeded further, Abercrombie would have been expected to list the
`elements of the designs and the unique combinations it sought to protect[.]”).
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`3 See Maharishi Hardy Blechman Ltd. v. Abercrombie & Fitch Co., 292 F. Supp. 2d 535, 545
`(S.D.N.Y. 2003) (“It is unclear, however, whether a trade dress plaintiff must cling to the precise
`language of a trade dress as stated in a complaint, or whether a plaintiff may offer a revised formulation in
`another filing. There is at least some support for the proposition that a plaintiff may offer an updated
`ORDER GRANTING IN PART AND DENYING
`IN PART DEFENDANT ICE.COM’S
`MOTION TO DISMISS
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`Case 2:06-cv-01002-RSL Document 40 Filed 01/18/07 Page 5 of 17
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`Plaintiff also alleges that protection of “the look and feel of the website” is a subject
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`outside the purview of the Copyright Act. In reply, defendant has provided no legal support that
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`plaintiff has an adequate remedy in copyright law to protect the “look and feel” of its website.4
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`Determining the elements of plaintiff’s website that are subject to copyright protection, and what
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`portions of the website relate to the “look and feel” of its trade dress claim requires greater
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`factual development. Johnson Controls, Inc. v. Phoenix Control Sys., Inc., 886 F.2d 1173 (9th
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`Cir. 1989), a case dealing with computer software, is instructive on this point. The court defined
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`the “user interface,” or “look and feel” of a program, as generally referring to “the design of the
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`video screen and the manner in which information is presented to the user.” Id. at n.3. The
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`Court later concluded: “Whether the nonliteral components of a program, including . . . the user
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`interface [the “look and feel” of the program], are protected [by copyright] depends on whether,
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`on the particular facts of each case, the component in question qualifies as an expression of an
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`idea, or an idea itself.” Id. at 1175 (emphasis added). Because section 102(b) of the Copyright
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`Act states: “In no case does copyright protection for an original work of authorship extend to
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`any idea,” factual development is necessary here before the Court can determine what portions
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`of plaintiff’s website are protected. Accordingly, the Court concludes that defendant’s 12(b)(6)
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`motion to dismiss is not the appropriate procedural vehicle through which the Court should
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`formulation at a later stage in the litigation.”).
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`4 The Court notes, to the contrary, that the Copyright Office and at least one author have
`commented that copyright protection may not cover the overall format, or the look and feel, of a website.
`In Darden v. Peters, 402 F. Supp. 2d 638, 644 (E.D.N.C. 2005), plaintiff sought review of the Copyright
`Office’s denial of copyright registration for a website. In granting the Copyright Office’s motion for
`summary judgment, the court quoted the examiner’s determination that “‘protection for the overall
`format of a web page is inconsistent with copyrightability.’”). See Lisa M. Byerly, Comment, Look and
`Feel Protection of Web Site User Interfaces: Copyright or Trade Dress?, 14 Santa Clara Computer &
`High Tech. L.J. 221, 246 (1997) (“It is apparent that copyright protection will fall short of completely
`protecting a Web site owner from someone else using his creative Web site interface look and feel. . . .
`[E]ven if some copyright protection is afforded, it may not be for the entire look and feel of the Web site,
`and it is this total presentation that is so valuable for marketing purposes in cyberspace.”).
`ORDER GRANTING IN PART AND DENYING
`IN PART DEFENDANT ICE.COM’S
`MOTION TO DISMISS
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`Case 2:06-cv-01002-RSL Document 40 Filed 01/18/07 Page 6 of 17
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`address the overlap between the Lanham Act and Copyright Act in the context of a claim
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`attempting to protect a website’s “look and feel.”5
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`Although defendant cites several cases in this jurisdiction and the Ninth Circuit involving
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`dismissal of Lanham Act claims overlapping with copyright claims, all of these cases were
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`decided with a developed factual background on summary judgment.6 See Motion at 4, citing
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`Corbis Corp. v. Amazon.com, Inc., 351 F. Supp. 2d 1090, 1115-16 (W.D. Wash. 2004) (decided
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`on a motion for summary judgment); Shaw, 919 F.2d at 1364-65 (9th Cir. 1990) (affirming
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`district court’s dismissal of plaintiff’s Lanham Act claim on summary judgment); and CD Law,
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`Inc. v. LawWorks, Inc., 1994 U.S. Dist. Lexis 20776, at *14 (W.D. Wash. Dec. 21, 1994)
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`(dismissing Lanham Act claim on a motion for summary judgment). Defendant has presented no
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`authority supporting Rule 12(b)(6) dismissal of a Lanham Act claim based on the availability of
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`an adequate remedy under copyright.7 Therefore, the Court denies defendant’s request for
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`dismissal of plaintiff’s trade dress claim at this early stage of the litigation.
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`Second, the Court denies defendant’s motion to dismiss the trade dress claim in light of
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`5 There are not yet enough facts for the Court to determine the similarities between plaintiff’s and
`defendants’ website, and defendant has not raised any argument that plaintiff has an adequate remedy in
`copyright for its “look and feel” claim. See Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435,
`1446 (9th Cir. 1994); 4 Nimmer on Copyright § 13.03[A][1][c] (discussing the “total concept and feel”
`test under substantial similarity).
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`6 The cases cited by defendant are also distinguishable because they addressed claims for reverse
`passing off under the Lanham Act, which is not at issue in this case.
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`7 The determination of whether the Lanham Act is limited by copyright is a narrower inquiry than
`the two-part test for preemption of state law claims under § 301 of the Copyright Act. The Lanham Act
`limitation is aimed at whether copyright provides an “adequate remedy.” There can be no “adequate
`remedy” if the work cannot be copyrighted. As discussed below, however, a work may be unprotected
`under § 102(b) of the Copyright Act and yet be within the subject matter of copyright for preemption
`purposes under § 301. Although the Ninth Circuit has not addressed this issue, most circuits have held
`that for preemption, the “scope of the Copyright Act’s subject matter is broader than the scope of the
`Act’s protections.” See Wrench LLC v. Taco Bell Corp., 256 F.3d 446, 455 (6th Cir. 2001).
`ORDER GRANTING IN PART AND DENYING
`IN PART DEFENDANT ICE.COM’S
`MOTION TO DISMISS
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`Case 2:06-cv-01002-RSL Document 40 Filed 01/18/07 Page 7 of 17
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`the presumption that Fed. R. Civ. P. 12(b)(6) motions should rarely be granted, especially when
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`the claim involves a novel legal theory. See McGary v. City of Portland, 386 F.3d 1259, 1270
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`(9th Cir. 2004) (“Rule 12(b)(6) dismissals are especially disfavored in cases where the complaint
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`sets forth a novel legal theory that can best be assessed after factual development” and “the court
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`should be especially reluctant to dismiss on the basis of the pleadings when the asserted theory
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`of liability is novel or extreme, since it is important that new legal theories be explored and
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`assayed in the light of actual facts rather than a pleader’s suppositions.”) (internal citations
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`omitted); Hall v. City of Santa Barbara, 833 F.2d 1270, 1274 (9th Cir. 1986) (“It is axiomatic
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`that the motion to dismiss for failure to state a claim is viewed with disfavor and is rarely
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`granted.”) (internal quotation and citation omitted).
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`Here, plaintiff seeks protection for the “look and feel” of its website under the Lanham
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`Act. This is a novel legal theory as evidenced by plaintiff’s resort to two unpublished district
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`court cases to support its trade dress claim and the Court’s survey of recent scholarship
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`regarding protection for the “look and feel” of websites.8 See Response at 4-5, citing Peri Hall
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`8 As a novel theory legal, there are more articles supporting trade dress protection for the “look
`and feel” of websites than there are published cases deciding the merits of this theory. See G. Peter
`Albert, Jr. & Laff, Whitesel & Saret, Ltd., Intellectual Property Law in Cyberspace 198-99 (1999 &
`Supp. 2005) (“One of the next conflicts to arise between the Internet and trademark law is likely to be the
`question of whether a Web page contains elements protectable as trade dress. . . . Trade dress protection
`of Web pages has yet to be the central issue in an infringement claim.”); Xuan-Thao N. Nguyen, Should
`It Be a Free For All? The Challenge of Extending Trade Dress Protection to the Look and Feel of Web
`Sites in the Evolving Internet, 49 Am. U.L. Rev. 1233, 1276-77 (2000) (“The purpose of Section 43(a)
`of the Lanham Act is to protect consumers from being deceived as to the source of a product or service.
`To fulfill that purpose, it is logical to extend trade dress protection to the overall look and feel of web
`sites that are inherently distinctive or have acquired secondary meaning and are non-functional.”); Jason
`R. Berne, Comment, Court Intervention But Not In a Classic Form: A Survey of Remedies in Internet
`Trademark Cases, 43 St. Louis L.J. 1157, 1172 (1999) (“One as yet barely broached area of Internet
`trademark litigation involves trade dress of a website. In such a case, a plaintiff may claim that the
`defendant has in some way infringed on the ‘total image and overall appearance’ of a site, rather than one
`single trademark. Although no cases of trade dress infringement of a website have been reported, at least
`one claim has been filed on this basis.”).
`ORDER GRANTING IN PART AND DENYING
`IN PART DEFENDANT ICE.COM’S
`MOTION TO DISMISS
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`Case 2:06-cv-01002-RSL Document 40 Filed 01/18/07 Page 8 of 17
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`& Assoc., Inc. v. Elliot Inst. for Soc. Sci. Research, 2006 U.S. Dist. Lexis 26234, at *2 (W.D.
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`Mo. Mar. 20, 2006); Faegre & Benson LLP v. Purdy, 2004 U.S. Dist. Lexis 896, at *2 (D. Minn.
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`Jan. 5, 2004). Accordingly, the Court concludes that factual development of plaintiff’s novel
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`trade dress theory is necessary before the Court will consider conclusive disposition of this
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`claim. Defendant’s motion to dismiss plaintiff’s trade dress claim is therefore denied.
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`2. Plaintiff’s State Law Claims
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`Defendant also moves for dismissal of plaintiff’s state law claims for: (1) violation of the
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`Washington CPA; (2) unfair competition; and (3) unjust enrichment and restitution based on §
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`301(a) of the Copyright Act, which states:
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`On and after January 1, 1978, all legal or equitable rights that are equivalent to any
`of the exclusive rights within the general scope of copyright as specified by
`section 106 in works of authorship that are fixed in tangible medium of expression
`and come within the subject matter of copyright as specified by sections 102 and
`103 and, whether created before or after that date and whether published or
`unpublished, are governed exclusively by this title. Thereafter, no person is
`entitled to any such right or equivalent right in any such work under the common
`law or statutes of any State.
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`Under this section, “[c]opyright preemption is both explicit and broad[.]” G.S.
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`Rasmussen & Assoc., Inc. v. Kalitta Flying Serv., Inc., 958 F.2d 896, 904 (9th Cir. 1992). The
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`Ninth Circuit utilizes a two-part test to determine whether a state law claim is preempted. A
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`claim is preempted if: (1) the work at issue comes within the subject matter of copyright as
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`described in 17 U.S.C. §§ 102 and 103; and (2) the rights granted under the state law are
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`equivalent to the rights contained in 17 U.S.C. § 106. See Laws v. Sony Music Entm’t, Inc., 448
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`F.3d 1134, 1137-38 (9th Cir. 2006).
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`a. Subject Matter of Copyright
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`Under the first part of the preemption test in this case, the Court must determine whether
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`the “look and feel” of plaintiff’s website is within the subject matter of copyright. Portions of
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`plaintiff’s website, including “Diamond Wire Frames, V 1”; “Blue Nile Diamond Search (Public
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`Beta Version) - Sliders Section”; “Blue Nile Diamond Search with Vertical Sliders (Public Beta
`26 ORDER GRANTING IN PART AND DENYING
`IN PART DEFENDANT ICE.COM’S
`MOTION TO DISMISS
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`Case 2:06-cv-01002-RSL Document 40 Filed 01/18/07 Page 9 of 17
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`Version)”; and “Blue Nile Diamond Search (Public Beta Version) - ‘How to Narrow Your
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`Search’ Section” are within the subject matter of copyright because plaintiff alleges it has
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`registered copyrights in these elements of its websites. See Dkt. #3; Exhibits A & B. Despite
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`this fact, plaintiff asserts that its state law claims are not preempted, because like its Lanham Act
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`claim, the state law claims at issue relate to the “look and feel” its website. See Response at 9
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`(“Blue Nile’s state law claims, like its trade dress claim, address Ice.com’s efforts to unfairly
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`and unlawfully profit from the success of Blue Nile’s industry-leading website. This is not a
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`matter within the subject of copyright, supra, Part II.A, and is therefore not preempted under the
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`Copyright Act.”). This assertion, however, is contrary to the allegations of the state law claims
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`that expressly include the copyright claim allegations. Paragraphs 33 - 50 of plaintiff’s first
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`amended complaint contain the copyright causes of action. Plaintiff’s claims for violation of the
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`Washington CPA, unfair competition, and unjust enrichment and restitution all incorporate these
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`paragraphs by reference. See Dkt. #3 (¶57 “Blue Nile realleges and incorporates by reference
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`the allegations in paragraphs 1 through 56 above as if fully set forth herein”; ¶61 “Blue Nile
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`realleges and incorporates by reference the allegations in paragraphs 1 though 60 above as if
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`fully set forth herein”; ¶75 “Blue Nile realleges and incorporates by reference the allegations in
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`paragraphs 1 through 74 above as if fully set forth herein.”). Plaintiff cannot both expressly rely
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`on the copyright allegations in all of its state law claims and assert that the state law claims are
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`outside copyright’s subject matter for purposes of avoiding preemption.
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`Plaintiff also argues that “[t]his is not a matter within the subject matter of copyright”
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`because a website’s “look and feel” is not among the enumerated works in 17 U.S.C. § 102(a).
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`See Response at 4, 9. This argument is neither persuasive nor dispositive, however, because
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`computer programs for example, are not identified in the eight categories of works listed in §
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`102(a) and yet the Ninth Circuit has held that they are within the subject matter of copyright.
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`See Johnson Controls, Inc., 886 F.2d at 1175 (“Computer software is subject to copyright
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`26 ORDER GRANTING IN PART AND DENYING
`IN PART DEFENDANT ICE.COM’S
`MOTION TO DISMISS
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`Case 2:06-cv-01002-RSL Document 40 Filed 01/18/07 Page 10 of 17
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`protection.”);1 Nimmer on Copyright § 2.04[C] (stating that the legislative history of the
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`Copyright Act itself shows that computer programs are within the subject matter of copyright
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`and that subsequent amendments to the Act dispelled any “lingering doubts as to the
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`copyrightability of computer programs”).
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`Finally, plaintiff suggests that its state law claims should not be preempted because
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`defendant Odimo asserted in its ninth affirmative defense and second counterclaim that the
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`subject matter of plaintiff’s copyright registrations is excluded from copyright protection. In
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`making these assertions, however, defendant Odimo relied on § 102(b) of the Copyright Act,
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`which states: “[i]n no case does copyright protection for an original work of authorship extend
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`to any idea, procedure, process, system, method of operation, concept, principle, or discovery,
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`regardless of the form in which it is described, explained, illustrated or embodied in such a
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`work.” Even if, as defendant Odimo asserts, plaintiff’s website or elements thereof are
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`unprotected under § 102(b), this does not mean that the website is outside copyright’s subject
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`matter for the preemption purposes under § 301.
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`Although the Ninth Circuit has not addressed the issue of whether a website’s “look and
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`feel” is protected under § 102, other circuits have held that a work may be unprotected by
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`copyright under § 102(b) and yet be within copyright’s subject matter for preemption purposes.
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`See Wrench LLC, 256 F.3d at 455 (“the scope of the Copyright Act’s subject matter extends
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`beyond the tangible expressions that can be protected under the Act to elements of expression
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`which themselves cannot be protected.”). And, at least one district court in this Circuit has
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`concluded that a claim based on an unprotected work under § 102(b) may still be preempted:
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`When read together, subsections (a) and (b) of § 102 define what works fall
`within the subject matter of copyright. However, only works that meet the
`criteria articulated by subsection (a) are entitled to copyright protection.
`Therefore, an item listed in subsection (b), such as an idea, procedure, process,
`etc., does not receive copyright protection but is nevertheless within the subject
`matter of copyright for purposes of preemption.
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`Selby v. New Line Cinema Corp., 96 F. Supp. 2d 1053, 1058 (C.D. Cal. 2000) (relying on U.S.
`26 ORDER GRANTING IN PART AND DENYING
`IN PART DEFENDANT ICE.COM’S
`MOTION TO DISMISS
`
`-10-
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`

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`Case 2:06-cv-01002-RSL Document 40 Filed 01/18/07 Page 11 of 17
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`Ex Rel. Berge v. Board of Trustees of Univ. of Ala., 104 F.3d 1453, 1463 (4th Cir. 1997) and 4
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`Nimmer on Copyright § 16.04[C]). Therefore, plaintiff’s reference to defendant Odimo’s ninth
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`affirmative defense and second amended counterclaim is not a sufficient justification to exempt
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`plaintiff’s state law claims from preemption.
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`As alleged in its complaint, plaintiff’s state law claims rest expressly on the same
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`allegations as its copyright claims and plaintiff has failed to justify how the state law claims at
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`issue are exempt from the reach of § 301. Accordingly, for the limited purpose of preemption
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`analysis under § 301, the Court concludes that the “look and feel” of plaintiff’s website is within
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`the subject matter of copyright. Having made this determination, the Court must next determine
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`whether the rights granted under the state laws forming the basis of plaintiff’s claims are
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`equivalent to the rights contained in 17 U.S.C. § 106.
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`b.
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`Equivalent Rights
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`Under the second, or “equivalent rights” part the Ninth Circuit’s two-part test,
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`the state law claim must contain an “extra element” in order to survive preemption:
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`To satisfy the “equivalent rights” part of the preemption test . . . the . . . alleged
`misappropriation . . . must be equivalent to rights within the general scope of
`copyright as specified by section 106 of the Copyright Act. Section 106 provides
`a copyright owner with the exclusive rights of reproduction, preparation of
`derivative works, distribution, and display. 17 U.S.C. § 106. To survive
`preemption, the state cause of action must protect rights which are qualitatively
`different from the copyright rights. The state claim must have an “extra element”
`which changes the nature of the action.
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`Del Madera Props. v. Rhodes & Gardner, Inc., 820 F.2d 973, 977 (9th Cir. 1987) (internal
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`citation omitted) (overruled on other grounds). The three state law claims subject to preemption
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`are analyzed individually under this framework below.
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`1. Washington Consumer Protection Act Claim
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`Defendant argues that plaintiff’s fourth cause of action for violation of Washington’s
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`CPA is preempted “because there are no ‘extra elements’ of CPA claims that ‘makes the right
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`asserted qualitatively different from the rights protected under the Copyright Act.’” See Motion
`26 ORDER GRANTING IN PART AND DENYING
`IN PART DEFENDANT ICE.COM’S
`MOTION TO DISMISS
`
`-11-
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`

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`Case 2:06-cv-01002-RSL Document 40 Filed 01/18/07 Page 12 of 17
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`at 5 (citation omitted). Plaintiff’s CPA claim contains no distinct factual allegations. It simply
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`includes the “foregoing acts of Defendants” and “incorporates by reference the allegations” set
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`forth earlier in the amended complaint as constituting the violation of RCW 19.86 et seq. See
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`Dkt. #3 at 11. The allegations and claims expressly incorporated by reference into the CPA
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`claim include paragraphs 33 through 50, which set forth plaintiff’s copyright claims.
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`In Kodadek v. MTV Networks, Inc., 152 F.3d 1209 (9th Cir. 1998), plaintiff filed a
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`complaint alleging causes of action for copyright infringement and unfair competition.
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`Plaintiff’s unfair competition claim was dismissed on summary judgment as preempted by the
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`Copyright Act. The unfair competition claim “incorporate[d] by reference paragraphs from the
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`copyright infringement claim.” Id. at 1212. For this reason, the Ninth Circuit affirmed
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`dismissal of the unfair competition claim because it explicitly relied on the same allegations as
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`the copyright claim, and held:
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`Kodadek’s complaint expressly bases his unfair competition claim on rights
`granted by the Copyright Act. The Copyright Act grants rights “to reproduce the
`copyrighted work in copies,” “to prepare derivative works based upon the
`copyrighted work,” “to distribute copies to . . . to the public,” and “to display the
`copyrighted work publically.” 17 U.S.C. § 106, Del Madera Properties v. Rhodes
`& Gardner, Inc., 820 F.2d 973, 977 (9th Cir. 1987) (overruled on other grounds).
`Thus, it is clear that Kodadek’s state law unfair competition claim is based solely
`on rights equivalent to those protected by the federal copyright laws.
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`Id. at 1213 (emphasis added). It is the same here. Based on Kodadek’s holding,
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`plaintiff’s CPA claim is preempted because it incorporates the copyright claims by reference and
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`is therefore based on rights equivalent to those protected by copyright.
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`The CPA claim is also preempted because despite plaintiff’s assertion in its response that
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`the claim contains “essential elements of deception, misrepresentation, and public interest
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`impact,” this does not change the underlying nature of the action in this case. See Response at
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`7; Laws, 448 F.3d at 1144 (“The mere presence of an additional element (‘commercial use’) in
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`section 3344 is not enough to qualitatively distinguish Laws’s right of publicity claim from a
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`26 ORDER GRANTING IN PART AND DENYING
`IN PART DEFENDANT ICE.COM’S
`MOTION TO DISMISS
`
`-12-
`
`

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`Case 2:06-cv-01002-RSL Document 40 Filed 01/18/07 Page 13 of 17
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`claim in copyright. The extra element must transform the nature of the action.”) (emphasis
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`added). The gravamen of the action here is plaintiff’s claim that defendants copied portions of
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`plaintiff’s website. See Dkt. #3 at 1, ¶1 (“This action arises from Ice.com, Inc.’s and Odimo
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`Inc.’s knowing, willful and intentional copying of protected elements of Blue Nile’s website.”).
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`Under § 106(1) of the Copyright Act, a copyright owner has the exclusive right “to reproduce
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`the copyrighted work.” Therefore, while the elements of plaintiff’s CPA claim may not be
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`identical to the copyright claims, “the underlying nature of [Blue Nile’s] state law claims is part
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`and parcel of a copyright claim” for preemption purposes, and the Court finds that the additional
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`allegations of “deception, misrepresentation, and public impact” do “not change the underlying
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`nature of the action” of the CPA claim. See Laws, 448 F.3d at 1144. Accordingly, plaintiff’s
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`claim for violation of the Washington CPA is preempted and dismissed without prejudice with
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`leave to amend.9
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`2. Unfair Competition Claim
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`Plaintiff’s claim for unfair competition is preempted for the reasons set forth above in
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`section II.B.2(b)(1) justifying dismissal of the CPA claim. Plaintiff’s cause of action for unfair
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`competition simply alleges: “The foregoing acts of Defendants constitute unfair competition in
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`viola