Design Protection of Graphical User Interfaces (GUIs)

GUI (Graphical User Interface) often pronounced as “gooey” is the interactive and visual component for computers and electronic devices. A GUI dictates and facilitates the use of icons, windows, menus, screen-layouts, drop-downs, and all sorts of interactive components of an operating system. Over the years, GUIs have driven the software industry with new attractions and innovations. Attractiveness and convenience of use are important factors for electronic gadgets and thus, GUIs have gained massive commercial significance. The rising prominence of GUIs has thus resulted in a discourse concerning the protection of GUIs within a proper Intellectual Property Regime.

Copyright vs. Design Protection

The debate around finding an Intellectual Property regime suitable for safeguarding the GUI’s designs dates back to the 1990s. However, there is an apparent lack of discussion regarding that in the Indian Courts. Recently, it was reported that Zoom, a video conferencing platform, was considering initiating legal action against JioMeet for allegedly having a similar user interface as that of the former. But, since Zoom did not have its GUI registered as a design in India, it was only contemplating a suit of copyright infringement[1].  Theoretically, both Copyright Law and Design Law can provide IP protection to GUIs. The Bombay High Court in Maraekat Infotech Ltd Naylesh V. Kothari[2] noted, “The Courts have, no doubt, in the matter of infringement of copyright in software considered not merely literal similarity, but also a similarity in program structure and design features.” The Court was of the opinion that copyright protection in computer programs shall also extend to the structure, sequence, and organization of the program. A similar interpretation can be found in the official website of the Ministry of Electronics & Information Technology which explicitly states that “the look and feel of the Graphical User Interface (GUI) can be protected under Copyrights.”[3] Regardless of the fact that Copyright protection can be extended to GUIs, several ambiguities concerning the extent of copyright protection still remain due to a lack of case law on the issue. Hence, a clear-cut design protection regime is favored over Copyright to get rid of legal complexities pertaining to Copyright Law, to provide stringent protection to GUIs, and to provide uniform protection in line with international standards.

Businesses around the world have started giving increasing importance to the value of GUIs as strategic assets and the relevance of design rights as a means to protect these GUIs. A survey by the International Chamber of Commerce done in 24 jurisdictions showed that as many as 20 jurisdictions including China, England & Wales, the US, European Union, Mexico, Romania, Russia, Argentina, Brazil, Japan, etc allowed design protection for GUIs. Chile, Ecuador, and the UAE did not provide design protection for GUIs, whereas in the case of India, design protection to GUIs could be granted but clear guidelines were awaited.[4]

GUI as Design in India

Protection of design rights in India is governed by the Designs Act, 2000 and Design Rules, 2001. It can be argued that by virtue of Class 14 of the Third Schedule of the Design Rules which provides protection to “Screen Displays and Icons”, GUIs can be rendered protection. This point (class 14-4) to Class 14 was added by way of an amendment in 2008 to align with the provisions of the Locarno Classification. Even before this amendment was effectuated, Microsoft and few other parties were notably provided design protection to its icons and screen displays under the “Miscellaneous” category (Class 14-99) of Class 14.[5] Despite the precedent set by the granting of registration to Microsoft and the 2008 amendments, Amazon’s application (Application No. 240305) pertaining to a “Graphic user interface for providing supplemental information of a digital work to a display screen” was infamously disallowed protection by the Indian Design Office. The stand taken by the Controller was that GUIs do not qualify as designs under Section 2(a) and (d) of the Designs Act and since the decision, this interpretation has been riddled with disputes.  The Controller’s objection was based on the reasons that the GUI was only operative when the computer was switched on and thus, it did not provide “consistent eye appeal”, GUI did not qualify as an article of manufacture, GUI was not physically accessible, and GUI design did not come under the ambit of the Act[6]. Since this impugned decision of the Controller, the fate of design protection for GUIs has remained uncertain. However, despite these uncertainties, a few GUIs have still found their way to the Register of Designs.[7]

GUI Design Patents in the US

The Strijland Case[8] paved the way for the design patent protection of GUI in the US. The USPTO Board of Patent Appeals and Interfaces had infamously rejected the applicant’s claim for registering GUI patent design. As a result of this decision, USPTO introduced the MPEP (Manual of Patent Examining Procedure) which contained guidelines to assist examiners in the evaluation of patent design applications for GUIs. A design cannot be inseparable from the article, and cannot exist alone. The Guidelines ensures compliance with the statutory requirements of “article of manufacture” by allowing the display of the article in broken lines. This was the very reason why the application was rejected in the Strijland Case, and the Guidelines have ensured that such unnecessary barriers are done away with.[9]

Since the adoption of the Guidelines, the law has developed and come a long way. Since then, there has been only one major decision regarding the GUI design patent. The decision came in the high-profile “Smartphone Patent Wars” involving Apple and Samsung. The jury found that Samsung infringed Apple’s GUI design patent and the Court of Appeals affirmed the decision[10].

GUI Community Design in EU

The EU Directive 98/71/EC on the Legal Protection of Designs and The Council Regulation (EC) No. 6/2002 on Community Design grants design protection in the EU. Both the laws give a clear definition of “product” and “design” and do not extend the scope of protection of a design to the product. However, though the scope of protection is quite wide, computer programs are excluded from getting protection. The current legislation is unclear, lacks simplicity, and is likely to cause ambiguities.

The legal protection accorded to GUIs in the EU depends upon the degree of its originality and depending upon that protection is granted under Copyright, or Registered or Unregistered Community Design. The regimes of protection may overlap and each of them has its own pros and cons.[11]

The Way Ahead

The Indian Design Office’s order on Amazon’s application has set an unwarranted deterrent and needs to be corrected. The problem of the statutory requirement of the design to be “applied to an article” can be solved by a clear demarcation of the GUI from the article/gadget to which it is applied; the GUI itself does not have to satisfy the condition of an article. Also, the Office needs to note that GUIs are not merely functional in nature, they also carry a substantial ornamental and aesthetic appeal. Furthermore, the reasoning is given by the controller that the “design has to be visible consistently and not only when the gadget is switched on” is inconsistent with the Manual of Design Practices & Procedure which states that “Design features which are internal but visible only during use, maybe the subject matter of registration.”[12] Furthermore, such a decision of the Office will render the 2008 amendment of extending protection to screen displays and icons absolutely ineffective.

In order to be in line with international standards, it is imperative that design protection to GUIs be granted independently and the rigid condition of its application to a physical object be done away with. A robust GUI protection regime is the need of the hour so that another Zoom vs JioMeet type of situation can be avoided.

Author: Aparthiba Debray, a 5th Year student of B.A. LL.B. (Hons.) of Institute of Law (Nirma University),  an intern at Khurana & Khurana, Advocates and IP Attorneys.  In case of any queries please contact/write back to us at aishani@khuranaandkhurana.com.

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