11 Dec
2017

Graphical user interfaces

McAndrews Held & Malloy

A graphical user interface (GUI) allows users to interact with graphics appearing on electronic devices (eg, smartphones, tablets and netbooks). The interaction will typically involve 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.

Introduction

What is a GUI?

A graphical user interface (GUI) allows users to interact with graphics appearing on electronic devices (eg, smartphones, tablets and netbooks). The interaction will typically involve 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.

GUIs and icons may be animated by comprising a series of different ‘states’. Unless called out separately, in the context of this chapter the term ‘GUI’ is sometimes used as shorthand to refer to icons, static GUIs and animated GUIs.

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 a rising number of electronic devices. Well-designed GUIs make it easy for anyone to use a device without the need for complicated training (less skill) and with a reduction in the time taken to complete tasks on the device (greater efficiency). To the extent that there is value in having a visually pleasing GUI, there is related value in protecting the visually pleasing aspects of GUIs. One way of protecting the visually pleasing aspects of a design is through design rights. Design rights are protected as ‘design patents’ in countries such as China and the United States and as ‘registered designs’ in many other jurisdictions, including the European Union, Canada and Australia.

Use with smartphones, tablets and netbooks

Modern smartphones, tablets and netbooks all heavily use GUIs. The widespread use of GUIs greatly enhances the user experience. Designers have become increasingly creative with the use of GUIs and associated software. 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 smartphones being anywhere near as ubiquitous as they have become without incorporating effective GUI design.

Global statistics on GUI filings

While the statistics for design filings shown in this section are specific to the United States, the general US trend is representative of worldwide trends. In the United States, 9,541 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, over 90% of the design patents (8,629) have been issued since January 1 2010.

Protection of GUIs

Which jurisdictions allow GUIs to be protected?

GUIs and icons are almost unanimously protected in some form, as illustrated by the results of a recent World Intellectual Property Organisation (WIPO) questionnaire regarding GUI, icon and typeface protection. More specifically, the WIPO Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications recently prepared and reported 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 of the survey 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 will have to 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 almost all 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 of this requirement, GUI designers in China are left with relatively narrow protection as infringers can take the GUI design but use it on a different device. However, it is understood that China is making efforts to permit partial designs and thus address this shortcoming. In other jurisdictions (eg, the European Union and the United States) a broken line border may be used to represent 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 of thumb, if the appearance of the design is dictated solely by functional considerations, it will not be accorded protection (although the AIPPI notably 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. In other words, 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 trash cans, 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, for example, it is theoretically possible that a particular icon can be protected by copyright, a trademark and design rights at the same time.

Means for claiming

Line drawings

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).

Colour versus black and white

In many jurisdictions GUIs may be protected in both colour as well as black and white. For example, the Apple home screen GUI design patent 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.

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 content and alpha-numeric 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 in time. 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.

Building on this different strategy, 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 the protected design.

Enforcement of GUI rights

Notable cases

At the heart of the Apple v Samsung litigation originating in the Northern District of California was the Apple home screen GUI design patent. The case has since reached the US Supreme Court, where the sole issue before the court concerned damages for design patent infringement.

In September 2016 the Beijing IP Court heard the first GUI infringement case in China. Plaintiffs Beijing Qihu Technology and Qizhi Software (Beijing) Co, Ltd sued defendant Beijing Jiangmin New Technology Co, Ltd for infringement of their design patents ZL201430329167.3 and ZL201430324283.6. The plaintiffs accused Jiangmin of patent infringement and requested an injunction as well as damages of Rmb10 million ($1.5 million). At the time of writing, it appears that the judgment has still not been rendered. However, this case may provide important indications for other Chinese GUI design patent owners seeking to enforce their rights.

Damages and injunctive relief

The question of damages in GUI cases has rarely, if ever, been addressed by courts. The monetary value associated with a GUI is typically extremely 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.

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).

A gaze to the future

As well-known product designer Scott Wilson famously said: “The future of design is under the glass.” Whether with smartphones, tablets, netbooks 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 in the space, the need for IP protection to safeguard this investment will grow. While protection is generally available around the globe, there are different drawing requirements which may be a trap for the unwary. Applicants are well advised to consult with counsel knowledgeable in this rapidly evolving speciality area of IP law.

Figure 1: Breakdown of GUI and icon filings in the United States in recent years

Table 1: Subset of results from WIPO questionnaire on GUIs, icons and typefaces

Jurisdiction

Design right

Trademark

Copyright

GUIs

Icons

Typefaces

GUIs

Icons

Typefaces

GUIs

Icons

Typefaces

Argentina

 

 

 

 

 

 

Australia

 

Brazil

 

 

 

 

 

Canada

 

 

 

China

 

 

Colombia

 

 

 

 

 

 

 

European Union1

 

 

 

Japan

 

 

 

 

Republic of Korea

 

 

Mexico

 

 

 

Russia

 

Singapore

 

 

 

United States

 

 

1 Although there is no pan-European copyright protection, individual EU countries may (and likely do) have some form of copyright protection available for GUIs, as well as additional country-specific design rights and trademark protection.

This data comes directly from WIPO Document Code SCT/36/2 entitled “Compilation of the Replies to the Questionnaire on Graphical User Interface (GUI), Icon and Typeface/Type Font Designs”, published August 31 2016. Available at www.wipo.int/meetings/en/doc_d....

Figure 2: EU Registered Community Design D087219-0001 (Samsung Electronics Co, Ltd)

Figure 3: US Patent D604,305 (Apple Inc)

Figure 4: One of Qihu and Qizhi’s design patents (left) compared with Jiangmin’s product (right)

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Christopher V Carani
Partner
[email protected]

Christopher V Carani is a partner at McAndrews Held & Malloy, Ltd. He practises in all areas of IP law, including patents, designs, trademarks and copyrights. He has significant experience leading litigations and managing global IP portfolios. He is a well-recognised authority in the field of design law, having published and lectured extensively on the topic. He is the editor of Design Rights: Functionality and Scope of Protection (Wolters Kluwer NV, 2017), chair of the International Association for the Protection of Intellectual Property design rights committee and an adjunct professor of IP law at Northwestern University School of Law. He earned a JD from the University of Chicago Law School and a BS in engineering from Marquette University.

Dunstan H Barnes
Associate
[email protected]

Dunstan H Barnes is an associate at McAndrews Held & Malloy, Ltd. Although he practises in all areas of IP law – including designs, utility patents, trademarks and copyrights – he specialises in design law, and has considerable experience in drafting and prosecuting design applications and conducting design-focused investigations. He graduated magna cum laude with a JD from IIT Chicago-Kent College of Law. He holds a MEng in materials science and metallurgy from the University of Oxford and a PhD in biomaterials science from the University of Cambridge. He currently serves as vice chair of the American Bar Association’s committee on design rights and chair of the international practice and policy subcommittee of the American Intellectual Property Law Association’s industrial design committee.