ACT OF GUI: THE INDIAN DILEMMA
INTRODUCTION
In the current world, User Experience (UX) design is the bedrock part of software and website development companies and in turn, the reasom for their success. In the words of Don Norman, “User experience encompasses all aspects of the end-user’s interaction with the company, its services, and its products.” The ultimate purpose of UX design is to create easy, efficient, relevant, and all-round pleasant experiences for the user.
A key aspect of UX design is the graphical user interface ("GUI"; pronounced "gooey"), which is the point of interaction between the user and a digital device or product through graphical icons or other visual indicators, rather than command-line interfaces which required users to enter a command in the text box to complete a function.
Since its invention in the early 1970s by Xerox Corporation, GUI has progressed from being a research topic to becoming the cornerstone of most computer operating systems across the world.
USER EXPERIENCE (UX) AND GRAPHICAL USER INTERFACE (GUI) – INTERACTIONS WITH INTELLECTUAL PROPERTY
On analyzing WIPO’s Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications questionnaire[1] it is clear that GUIs and icons are usually protectable under a jurisdiction’s design rights scheme, however, the same can also be covered by a range of other Intellectual Property Rights, including Copyright, Designs and Trademark.
Copyright Law:
Copyright provides the first layer of protection since copyright automatically arises when a literary, dramatic, musical or artistic work is created. Original UX/UI design elements can be protected by copyright as ‘artistic works’. However, an alleged copyright infringer can avoid its liability by making modifications to the copyrighted design element as protection offered by copyright is limited to copying a substantial portion of the UX/UI design element.
Trademark Law:
Trademark registrations are not the best way to protect the GUI as a whole as the same is not a source identifier at the time of sale of goods or services. However, they are ideal to protect certain easily identifiable elements of the UX that are not likely to change; for example, Facebook’s ‘Like’ button.
Patent Law:
GUIs can be protected by way of design or utility patents. Individual patents can be written to protect the overall look and feel as well as individual design elements comprising a part of the UX.
Design patents are "issued for a new, original, and ornamental design embodied in or applied to an article of manufacture.". It is interesting to note that design patent protection also covers interactive UX/UI design elements, for example, "page turning" feature in Apple eBooks, is protected through U.S. design patent No. D670,713.
Utility patents are "issued for the invention of a new and useful process, machine, manufacture, or composition of matter, or a new and useful improvement thereof.”
In view of the above, it is clear that there is no single mechanism to achieve complete protection for UX/GUIs. Instead, each IP right provides a different form of protection for the different elements of the total UX.
INDIAN DILEMMA: Copyright versus Designs
In India, theoretically, GUIs can be protected under copyright as well as design law. In Maraekat Infotech Ltd. v. Naylesh V. Kothari[2], the Bombay High Court emphasized that copyright in computer programmes also extended to their ‘structure, sequence and organisation’, thereby indicating that the GUI of a programme would also be protected. This was further corroborated by the Ministry of Electronics & Information Technology which stated, ‘Copyright protects form of expression and can be used to protect source code and the object code of a computer programme. Furthermore, computer programme is protected as a literary work by the Indian Copyright Act and hence, the look and feel of Graphical User Interface (GUI) can be protected under the Copyrights.’
The Design protection in India is governed by the Designs Act, 2000 and the Designs Rules, 2001 as amended in 2008 to comply with the Locarno Classification system. The said amendment introduced Class 14-04 dedicated to ‘Screen Displays and Icons,’ amongst others. However, the same does not imply inherent design protection for GUIs in India.
Prior to 2009, Microsoft was granted registration over some of its designs under Class 14-99, which is the ‘Miscellaneous,’ category. However, in 2014, when Amazon sought to register a design for “graphical user interface for providing supplemental information of a digital work to a display screen” under Class 14-02 that deals with ‘Data Processing Equipment, Peripheral Apparatus & Devices’ the same was refused registration on account of not fulfilling the requirements of Section 2(a) and (d) of the Design Act[3] pertaining to ‘article’ and ‘design’, respectively. The said section postulates that design protection can be obtained for a new feature of shape, configuration, pattern, etc., that is applied to an article of manufacture, through any industrial process or means.
Adopting a restrictive interpretation of Section 2(a) and (d) of the Act, the Controller General of Patents, Designs and Trademarks gave the following reasons for rejecting Amazon’s application:
A GUI cannot be considered as an article of manufacture under Section 2(a) of the Act, as it cannot be converted from physical input to physical output and does not have features of shape or configuration.
As a GUI is not physically accessible, it cannot be sold separately as a commodity item in the market. Hence it fails to meet the provisions of Section 2(a) of the Act.
A GUI is merely a function of a computer screen that is visible only when the computer turns on and thus lacks constant eye appeal as required under Section 2(d) of the Act.
It does not qualify as a ‘finished article’ that is manufactured by an industrial process.
The decision of the Controller is critiqued; as with respect to Amazon’s application, a GUI is applied to a display device such as a computer screen, which is an article of manufacture and capable of being sold separately. Hence, a GUI applied to the display panel of a device meets the requirement of Section 2(a) of the Act. Further, the GUI is applied to the computer screen using a mechanical industrial process and qualifies as a ‘finished article’ as the GUI forms a part of the article when the customer buys it and is visible once the device is switched on, thereby meeting the requirements of Section 2(d) of the Act as well..
It is noted that after rejection of Amazon’s application, some GUI’s have been registered in India under the Designs Act, 2000, such as, ‘Monitor with GUI’ registered under Class 14-02, a ‘Mobile Phone’ registered under Classes 14-03 and 14-04, and a ‘Display Screen with Graphical User Interface’ under Class 14-04. The conflicting decisions taken with respect to GUI Design Registration have created a situation of uncertainty with respect to the future of GUIs in India.
However, the introduction of the Draft Designs (Amendment) Rules, 2019[4] has provided hope with respect to clearing the uncertainties in the field of GUIs. The Draft Rules 2019 purport to fully comply with the Locarno Classification in creating a Class 32 which shall be dedicated to “graphic Symbols, and Logos, surface patterns and ornamentation”. The said much needed amendment in the Draft Rules 2019 shows the intention of the legislature in making India a more GUI-friendly regime.
CONCLUSION
The patent battle started between Apple and Samsung in 2011, ended in 2018 with Apple being awarded $539 million for Samsung’s infringement of its initial design. It is interesting to note that on analyzing the patents asserted by Apple - touchscreen interactions; using an API to scroll through documents; tap-to-zoom; general outline and ornamental design; general outline and ornamental design; ornamental design and GUI for a display screen - against Samsung, it is clear that Apple was intensely focused on protecting the ‘Total User Experience’ of the iPhone and related Apple iOS devices, as versus Samsung, which asserted patents like mobile phone 3G capabilities; MP3 playback on a mobile device; device that functions as a phone and a camera, amongst others that were broadly applicable to cellphone infrastructure.
It is pertinent to note that it is the total UX that drives commercial success of businesses, not any individual feature or GUI as presented in a single design/patent/trade mark/copyright registration. Well-designed GUIs are the need of the hour as the same boost the UX by making it easy for masses to use a device without complicated training and with greater efficiency.
[1] https://www.wipo.int/export/sites/www/sct/en/pdf/questionnaire_gui.pdf
[2] 2016 SCC Bom 2369
[3] Section 2(a) of the Act – ‘article’ means any article of manufacture and any substance, artificial, or partly artificial and partly natural and includes any part of an article capable of being made and sold separately.”
Section 2(d) of the Act - ‘design’ means only the features of shape, configuration, pattern, ornament or composition of lines or colors applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye …”
[4] http://www.ipindia.nic.in/writereaddata/Portal/Images/pdf/213355_1__Design.pdf
The article was originally published on www.lexology.com on October 16, 2020 and can be accessed here.
