McAndrews, Held & Malloy
What is a GUI?
A graphical user interface (GUI) allows users to interact with graphics appearing on electronic devices (eg, smartphones, tablets and netbooks). Typically, a user interacts with a GUI by pressing (with a finger or thumb) or clicking on (using a mouse or other input device) the graphics that appear on a display screen. In many situations, GUIs operate as virtual remote controls; rather than having physical buttons to press, a user manipulates virtual graphical buttons to achieve a desired result. GUIs tend to be more user friendly than command-line interfaces, which require commands to be typed on a keyboard (or other input device).
GUIs are often composed of one or more icons (which are pictorial representations or symbols that visually represent a desired object or action), as well as text (which will have a particular typeface or type font). Emojis – which are a type of icon – have become increasingly popular in recent years, particularly as smartphones have become practically ubiquitous.
Importance in the age of the Internet of Things
GUIs are more important than ever, particularly in the age of smartphones and the Internet of Things, where they are increasingly used to control an ever-increasing number of electronic devices. Well-designed GUIs make it easy for anyone to use a device without the need for complicated training and with a reduction in the time taken to complete tasks on the device. If there is value in interacting with a visually pleasing GUI, there is also related value in protecting the visually pleasing aspects. One way of protecting them is through design rights, which are protected as ‘design patents’ in countries such as China and the United States and as ‘registered designs’ or ‘industrial designs’ in the majority of other jurisdictions, including the European Union, Canada and Australia.
Use with smartphones, tablets and netbooks
Modern smartphones, tablets and netbooks all incorporate a vast number of GUIs. The widespread use of GUIs greatly enhances user experience. Designers have become increasingly creative with the use of GUIs and associated software, particularly in smartphone apps, which are typically designed to be more user-friendly and efficient than accessing the particular service through a web browser. Features such as scrolling through a page by swiping a finger across the screen or ‘pinching-to-zoom’ have become second nature to most users. It is difficult to imagine a smartphone today that does not incorporate effective and efficient GUI designs.
As we move into the future, a growing number of GUI designs are appearing as projected designs (ie, projected by a device onto a surface). These designs pose a new challenge with respect to existing design schemes – for example, in the United States (similar to many other jurisdictions where a design associated with a product is required) there is a statutory requirement that the design must be embodied in an ‘article of manufacture’. This requirement does not appear to fit with the established practice of claiming a GUI using the title of ‘display screen or portion thereof with graphical user interface’, since there is no display screen in the same way that there is for a projected design. It seems that either creative solutions or a change in existing law will be required to allow applicants to protect projected GUIs.
Global statistics on GUI filings
While the statistics for design filings described in this section are specific to the United States, the general US trend is representative of worldwide trends. In the United States, more than 10,000 design patents have been issued since 1990 with a title containing either the phrase ‘graphical user interface’ or the word ‘icon’ in combination with at least one of the words ‘display’, ‘screen’, ‘panel’, ‘mobile’ or ‘cellular’. Of these, nearly 92% of the design patents (10,026 of 10,928) have been issued since 1 January 2010. Although 2017 saw a dip in the number of GUI design patents issued in the United States as compared to 2016, the number has generally risen year on year in the past decade. The number of US icon and GUI patents issued since 2010 is shown in Figure 1.
Which jurisdictions allow GUIs to be protected?
GUIs and icons are almost unanimously protected in some form. In 2016 the World Intellectual Property Organisation (WIPO) Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications reported the results of a questionnaire that was completed by representatives of 59 member states, two intergovernmental organisations (the EU Intellectual Property Office and the African Intellectual Property Organisation) and five non-governmental organisations (the International Association for the Protection of Intellectual Property (AIPPI), the International Trademark Association, the International Federation of Intellectual Property Attorneys, the Japan Patent Attorneys Association and MARQUES). The results are revealing, thought provoking and informative. They show that GUIs and icons are usually protectable under a jurisdiction’s design rights scheme. In certain jurisdictions (eg, Russia) GUIs may be protected only in a static form (as a single figure) and not in an animated form; in others (eg, the United States) GUIs may additionally be protected in an animated form (represented by a series of transitional images). In Australia, although it is possible to register GUIs, icons and typefaces as registered designs, when it comes to enforcing the rights, the designs must undergo substantive examination and will likely be invalidated at that point, because protection of GUIs is limited to visual features that are visible when the product is ‘at rest’ (ie, turned off).
What are the substantive requirements for protection?
In most jurisdictions, GUIs, icons and typefaces may be illustrated in either black and white photographs, colour photographs or drawings (including technical drawings). In jurisdictions allowing protection for animated GUIs, there is generally a requirement to provide a series of static images to illustrate the animated sequence.
In several jurisdictions (eg, China and Japan) an actual product that incorporates the GUI or icon must be shown – for instance, in China, where broken line practice is not allowed, the product itself must be shown in solid lines. As a result, GUI designers in China are left with relatively narrow protection (demonstrated in Beijing Qihu Technology) because infringers can take the GUI design but use it on a different-looking device. However, it is understood that China continues to make efforts towards permitting partial designs which would address this shortcoming. In other jurisdictions (eg, the European Union and the United States) a broken line border may be used to illustrate a display screen (or portion thereof) in lieu of an actual product. Thus, the particular appearance of the device on which the GUI is presented is not a consideration when it comes to the scope of protection of the design right.
How does functionality affect protection?
While there is no formal international accord on functionality, as a general rule, if the appearance of the design is dictated solely by functional considerations, it will not be accorded protection. Notably, the AIPPI adopted a detailed resolution on the requirements for design protection, including those related to the issue of functionality, at its 2016 Milan World Congress. The central concern that the functionality doctrine seeks to guard against is the monopolisation of a particular technical function by way of design rights. For example, if a design right is given to the shape of a ball bearing, the underlying function of a ball bearing is also monopolised. In the GUI and icon context, there are typically many ways to depict a given design, thus it is rare that a GUI could monopolise a technical function. For example, even for commonly understood elements such as recycling bins, slide-to-unlock features or status bars, there are myriad ways to visually depict such functional features. Further, even though an appearance of a particular GUI or icon might become widely identified in the marketplace, such user reliance does not make the design dictated by functional considerations. If there are alternative appearances that can execute the same function, the design should not be considered to be dictated solely by technical function.
What overlap is there with other IP rights?
In many jurisdictions there is overlapping protection for GUIs. For example, some GUIs and icons may be protected by copyright or trademarks. These rights are typically not mutually exclusive. Thus it is theoretically possible that a particular icon can be protected simultaneously by copyright, trademark and design rights.
Means for claiming
GUIs may be claimed as line drawings. In most jurisdictions, the device that the GUI appears on must be shown; however, in many of these jurisdictions it is sufficient simply to show a broken line boundary around the GUI to ‘illustrate’ or ‘represent’ a device such as a display screen (or a portion thereof), rather than having to depict the device itself in solid lines. China remains a notable exception to this rule, where the device itself must be shown in solid lines.
Colour versus black and white
In many jurisdictions, GUIs may be protected in colour as well as black and white. For example, the Apple home screen GUI design patent (US Patent D604,305) that was involved in the Apple v Samsung litigation starting in the US District Court for the Northern District of California included both colour and greyscale images. The two figures from this US design patent can be seen in Figure 2.
MP4 and animation files
In South Korea, the Korean Intellectual Property Office (KIPO) allows applicants seeking to protect animated GUIs to submit digital animation files in formats such as .swf, .mpeg, .wmv and .gif as reference materials to facilitate the examiner’s understanding of the design that is being protected. This policy appears to have been well received by applicants and KIPO examiners. Whether other jurisdictions will follow suit remains to be seen.
Strategies for protecting variable, alpha-numeric and projected content
There are different strategies for protecting variable content and alpha-numeric content.
One strategy involves showing such content in broken lines so that it does not form part of the protected design. An advantage of this strategy is that it does not ‘lock’ the rights holder into a particular state. A disadvantage is that the variable content will not itself form part of the claimed design, which may be a downside when the variable content comprises the novel or interesting parts of the design.
A different strategy involves showing the content in one state in solid lines as part of the protected design. This approach may be effective for variable content that will be in that state at some point. For example, a GUI that displays a particular time of day could be shown at a specific time safe in the knowledge that anyone seeking to infringe the design would (presumably) also seek to display that specific time once or twice a day.
Another approach could involve showing several different states in solid lines. This may avoid a risk of locking the rights holder into a sole specific state. However, it could strengthen an argument that any specific states not shown are excluded from the scope of protection.
As for projected content, the protection strategy generally mirrors that for content appearing on the display screens of devices. However, applicants must be careful to claim the GUI in such a way that it comports with the requirements of the particular jurisdiction.
Enforcement of GUI rights
On 25 December 2017 the Beijing IP Court rendered a decision in the first GUI design patent infringement case in China. Plaintiffs Beijing Qihu Technology and Qizhi Software (Beijing) Co Ltd had sued defendant Beijing Jiangmin New Technology Co Ltd for infringement of their design patents ZL201430329167.3 and ZL201430324283.6, directed to GUIs (the latter of which is shown in Figure 3 (left)). Both the plaintiffs and the defendant are software companies producing anti-virus software (an example screenshot of defendant’s software is shown in Figure 3 (right)). The plaintiffs accused the defendant of patent infringement and requested an injunction and damages of Rmb10 million ($1.5 million). Crucially, under existing Chinese design law, plaintiffs were required to include in their design patent drawings the product on which their software GUIs appeared (in this case, a computer). The court held that the computer in the drawings on which the GUI appeared should be included when construing the scope of the design patents. Because the defendant, as a software company, did not produce products containing a computer, and the computer formed part of the scope of the claimed design, the court held that there was no infringement. As such, this case illustrates the need for an amendment to Chinese patent law to allow for partial design protection to allow applicants to protect GUIs without also claiming the particular device on which the GUIs appear. The current rule appears to be both unduly restrictive and unfair to applicants.
In February 2018 a jury in the Northern District of California held that Corel Corporation infringed four Microsoft Corporation GUI design patents. Corel had conceded both validity and infringement in the case. However, the jury found that Corel had no pre-suit notice of the design patents, and Microsoft was thus entitled to only $278,000 in damages.
At the heart of the Apple v Samsung litigation was the Apple home screen GUI design patent. The case reached the US Supreme Court, where the sole issue decided in December 2016 concerned damages for design patent infringement. The Supreme Court articulated (in general terms) the test for determining the relevant ‘article of manufacture’. In May 2018, on remand to the Northern District of California, a jury awarded Apple $533.3 million for Samsung’s infringement of Apple’s design patents (compared to $5.3 million for Samsung’s infringement of Apple’s utility patents). This award represented an increase in the damages originally awarded for design patent infringement by the jury in August 2012 (prior to appeals to the Federal Circuit and Supreme Court). In June 2018, before any further appeals could take place, the parties settled the case.
Damages and injunctive relief
The question of damages in GUI cases has rarely been addressed by courts. The monetary value associated with a GUI is typically difficult to measure. Most GUIs are not visible at all times of use with their associated product. However, even if only sporadically visible, many GUIs will provide users with considerable value in terms of ease of use and positive connection with the product. For example, infringement of the iconic Apple home screen GUI yielded an award of total disgorgement of profits on the entire phone.
Injunctive relief may be desirable as an alternative or in addition to monetary damages or profits. Determining whether an infringing GUI is being used will typically be easier than determining a specific monetary damage amount. However, in some jurisdictions (eg, the United States), injunctive relief is harder to obtain than in other jurisdictions (eg, China).
Gaze into the future
Whether with smartphones, tablets or even autonomous vehicles, controlling the visual landscape under the ‘glass’ of display screens is a central battleground for technology-driven companies. As companies rapidly innovate, the need for IP protection to safeguard investment will grow. While protection is generally available globally, there are different drawing requirements which may trap the unwary. Applicants are advised to consult with counsel knowledgeable in this rapidly evolving speciality area of IP law.