Revisiting design protection for graphical user interfaces: More than meets the (GU)I?

For years, Graphical User Interfaces (“GUIs”) have driven a software industry bent on profit and competition, however, sometimes riddled with an inertia of innovation. This inertia of innovation appears to have been personified with the recent news surrounding the overwhelming similarity between Zoom and the initial interface of the new video-calling app JioMeet.

Much has been written about the legal remedies available to Zoom via copyright law. This article, however, strives to discuss the “what-if” by delving into India’s design protection regime: we will outline the law at present, and suggest possible changes to ensure more stringent protection to GUIs under design laws. Further, we will discuss the protection that Zoom’s GUI could have gained had it been registrable as a design in India.

GUIs allow interaction with a computer or electronic device through visual elements like icons, screen layouts, pull-down menus and more. Due to their massive commercial significance (ease of use and attractiveness are among the paramount considerations when using a software), protecting GUIs within an intellectual property framework assumes special importance.

Copyright or Design?

Theoretically, GUIs can be protected under copyright and design law in India. Copyright law is viable, but subject to several variables. The Bombay High Court in Maraekat Infotech Ltd. v. Naylesh Kothariwhile discussing the copyright of software in India, stated that the design features would be considered for determining infringement. This is in line with the oft-used “Look And Feel” test. However, it is to be noted that general ideas (such as “Join Meeting” or “Leave Meeting”, in the case of Zoom and JioMeet) cannot be protected, and only their unique expression can be. In this case, ‘unique expression’ refers to, for example, the screen layout of an application which uniquely depicts concepts such as “Join Meeting” in a manner differentiable from competing GUIs.

Indian Courts may then have to look to the American “Abstraction-Filtration-Comparison” test [“AFC Test”] to answer these questions and ensure that colours and other simple building blocks remain accessible in the public domain. The three prongs of the AFC Test provide for the (1) abstraction of a software’s components into literal and non-literal aspects, (2) filtering them to ascertain its protectable components, and (3) comparing the same with the purported software infringer. The stringency of the test ensures that only a near-exact copy would be protected. The fact nevertheless remains: ambiguities, such as the test that the court may choose to apply and the standard for infringement, require clarification through case law for copyright protection.

A clearer design protection regime, however, could avoid delving into the subjective legal complexities that copyright poses. Moreover, it would also help India align with international standards; GUIs are typically registered as design patents around the world which, according to a report by the International Chamber of Commerce,  is generally accepted as a more stringent form of protection.

Are GUIs registrable as Designs?

At present, design protection in India is governed by the Designs Act, 2000 and the Designs Rules, 2001. The Designs Rules were amended in 2008 to comply with the 10th Edition of the Locarno Classification system, which classifies goods and services for ease of registration of industrial designs. The amendment introduced, among others, Class 14-04 for ‘Screen Displays and Icons’. One would think that the existence of this Class implies that GUIs would be registrable as designs, but the actual position of law is not entirely clear.

Until 2009, the Indian Patent Office had been granting registrations for screen layouts and displays under the ‘Miscellaneous’ Class 14-99, however, these applications were all filed prior to the 2008 amendment to the Designs Rules.

Following the amendment, the Indian Patent Office received an application for GUI registration from Amazon [Design Application No. 240305 (2014)] under Class 14-02 (Data Processing Equipment, Peripheral Apparatus & Devices) of the Design Rules. The Indian Patent Office rejected this application, claiming that the proposed GUI did not fulfil the requirements of definition clauses Section 2(a) and (d) of the Design Act pertaining to “article” and “design”, respectively. Together, Section 2(a) and (d) postulate that design protection can be obtained for a new feature of shape, configuration, pattern, etc., that is applied to an article of manufacture in 2D or 3D form or both, through any industrial process or means.

The Controller General of Patents, Designs and Trademarks, in rejecting the application, assumed a restrictive interpretation of Section 2(a) and (d) by stating that since the GUI could not be converted into any output and did not have features of shape or configuration, it could not be considered an article of manufacture. Further, as it was purely functional, it fell beyond the scope of design protection. It also failed the test of a “consistent eye” as per Section 2(d), which requires the proposed design to be consistently visible, since the GUI was only visible when the computer screen was switched on.

In the aftermath of the Amazon decision, it is evident that companies have been left in the lurch regarding the state of design protection in India. It is interesting to note,  nonetheless, that while the Amazon decision is most widely known (and criticised), the Indian Patent Office appears to have amended its position since 2014.

Records from published journals of the Indian Patent Office indicate that since the Amazon decision, a few other registrations have been granted for GUIs under Class 14-02 and 14-04 for mobile phones and monitors, hence fulfilling the article of manufacture requirement.

These records confuse the position of law all the more and beg the question: are GUIs registrable under the Designs Act? The ICC Report’s statement may be echoed in this regard: clearer guidelines are indeed awaited.

Change is on the Horizon

It appears that this question may finally be answered in the coming months with the introduction of the Draft Designs (Amendment) Rules, 2019, which purports to fully comply with the Locarno Classification in creating a Class 32 which is dedicated to “graphic Symbols, and Logos, surface patterns and ornamentation”.

The amendment clears the way for a possible re-interpretation of Class 14-04 and Class 32. While the status of the law would possibly still be unclear until decisions or guidelines are issued, it certainly shows the intention of the legislature in making India a more GUI-friendly regime.

Back to Zoom v. JioMeet

It was recently reported that Zoom was considering initiating legal action against JioMeet for copying its user interface. Since Zoom does not have a registered GUI design, the case would be fought on grounds of copyright infringement. The strength of the claim, however, depends entirely on the Court’s approach. But whether the Court chooses the Look-And-Feel test or the Abstraction-Filtration-Comparison and Deceptive Similarity tests for both literal and non-literal copying, the decision will shed light on the need for a comprehensive design protection regime. Note that copyright law entails protection for sixty years after the life of the author, whereas design law provides an apt ten years. The length of copyright protection is not conducive to the need to encourage innovation in the technology sector, which in turn is likely to provoke a shift towards design protection.

Had Zoom’s GUI been registrable as a design (pre-publication), the choice of test between Look-and Feel-and AFC would not need to be considered. By its very nature, design is meant to afford protection to both, the aesthetic and functional elements of a GUI.

Without delving into Zoom’s surface pattern and ornamentation, it is clear that one of the fundamental problems with India’s GUI protection regime is the discord between the law and practice vis-à-vis the understanding of “article”, as seen in the Amazon decision.

A Possible Solution

The introduction of Class 32 allows for the possibility of eliminating the need for a GUI’s design to be applicable to an article of manufacture to make it protectable. Albeit slightly radical, it can be argued that the requirement for application to an article of manufacture, especially in the way construed by the Amazon decision, leaves a limiting form of protection to GUIs. It is conceivable that a GUI if sold as a software, would not be registrable – however, a similar GUI if sold as software applied to hardware, would likely be protectable as a design in India.

In fact, several countries, including England, the EU, Singapore, do not require GUIs to be applied to a physical object,- rather, it can be registered independently. The argument for GUIs to be free from the restrictions of an article of manufacture grows stronger by the day.  With the coming of technology that does not apply to any particular article, such as virtual reality, holograms and more, it is clear that design law is in need of an overhaul greater than that being provided by the new amendment.

A possible solution is the introduction of a hybrid GUI protection regime, incorporating the benefits of both copyright and design law. This could involve bestowing the right of protection upon creation (such as in copyright), with a need for design registration and regular renewal of GUI registrations; hence, avoiding the inadvertent scène à faire that could take place due to the 10-year long protection afforded to GUIs under design currently. The design would have to fulfil the requirements of originality and surface pattern/ornamentation, but not the requirement of a “consistent eye”. Such a system could help build a robust GUI protection regime to make India a tech-friendly regime as it will also be instrumental in avoiding a second Zoom v. JioMeet type situation.

After all, as stated by Michael Hirsch, “every software creator is also a partial re-user of what came before.” The duty of the law, however, remains that creativity and competition must prevail.

This article has been authored by Sara D’Sousa and Vinayak Puri, students at NMIMS Kirit P. Mehta School of Law, Mumbai.

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