Navigating GUI Design Legalities: Design vs. Copyright Laws

Graphical User Interface: An Overview

Graphical User Interface (GUI) is an interface program that allows users to interact with electronic devices. Examples include the windows, icons, menus, and buttons seen on laptops, computers, and smartphones. Graphical User Interface provides visual representation of the available options and actions that a user can take, enabling interaction by clicking on these graphic elements. It is a powerful way to differentiate products and enhance user experience. Thus, companies invest significantly in GUI development, making appropriate IP protection essential.

Protection of GUI: Design or Copyright

The debate around finding an Intellectual Property suitable for safeguarding GUI designs dates back to the 1990s. Theoretically, both Copyright Law and Design Law can provide IP protection to GUIs. The scope of protection provided by copyright is limited as it protects only exact or near exact copies, allowing subsequent developers to avoid infringement by carefully avoiding exact imitations. On the other hand, Design protection focuses on the aesthetic appeal of the GUI that makes it marketable. Further, the term of copyright lasts for 60 years whereas design protection lasts for 10 years, making it more compatible with the rapid development of GUI.

Copyright law includes various fair dealing exceptions, such as those for research, study, criticism, review, and news reporting. Therefore, from the perspective of developers, design can be more profitable.

Section 15 of the Copyright Act specifies that copyright shall cease to exist on a work eligible for design protection if the article to which the design is applied is reproduced more than 50 times by an industrial process. This provision is a significant hurdle for companies if GUIs are granted registration under the new class 32, as per amendment to design rules. In such cases, GUI could lead to substantial forfeiture of copyright.

Companies striving to secure design protection for their GUIs often face a myriad of challenges and rejections, as evidenced by Amazon’s experience with its design application. This particular case sheds light on the complexities and hurdles involved in navigating the legal system to obtain GUI design protection, highlighting the need for a nuanced understanding of intellectual property law in the digital domain.

Amazon’s Design Application: Understanding the Rejection Grounds

Microsoft successfully registered several of its designs before 2009 under the miscellaneous category. In 2008, Design rules were amended to comply with the Locarno classification and introduced class 14-04 dedicated to ‘screen displays and icons’. Despite this precedent, Amazon’s application for registration of its GUI was refused by the controller.  The primary reason for refusal of registration is that the GUI failed to meet the requirements ‘article’ and ‘design’ as outlined in sections 2(a) and 2(d) of The Designs Act, 2000.

The Act specifies a design:

• Includes only the features of shape, configuration, pattern, ornament, or composition of lines or color.
• must pertain to an article, whether in two-dimensional or three-dimensional, or both

However, before a GUI can be included in the definition of a design, it must first qualify as an article.  An article includes 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. Due to this definitional limitation, the application was rejected on the following grounds:

1. GUI is only operative when hardware is switched on, and it does not provide “Constant eye appeal”.
2. GUI does not qualify as an article of manufacture and is not physically accessible. It cannot be called an article under section 2(a) of The Designs Act, 2001.
3. Thirdly, GUI is not considered an integral part of the article but it is purely functional. It cannot be sold as a commodity in the market.

It is important to know that the Design Act does not expressly prohibit registration of software. The Design Office claims that GUI is purely functional and not integral. In reality, functions performed with the help of GUI can still be performed without the special aesthetic elements.  The unique selling price of GUIs lies in those aesthetic appealing elements. Moreover, GUIs are in fact applied to computers and these computers, being ‘articles’ under Section 2(a) are capable of being sold separately. Their market value is then enhanced by the graphics, making them an integral part of the device. In an increasingly competitive world where businesses rely heavily on technology, limiting the definition of ‘continuous eye appeal’ to what is visible 24 hours a day, seven days a week, and interpreting ‘industrial process’ to exclude the software industry stifles innovation and harms India’s IT sector.

A New Hope: UST Global Case

Recently, Calcutta Court has given new hope for GUI registration as a design in India in the case of UST Global (Singapore) Pte Ltd. vs. The Controller of Patents and Designs. The court held that GUIs are eligible for registration under sections 2(a) and (d) of the Designs Act, 2000.

In this case, the appellant, UST Global, is a leading global provider of end-to-end IT services and provides services in areas like Advanced Analytics, Data Engineering Service, Industry, Data Management Cyber Security, Infrastructure etc. The Applicant had filed an Application in the Calcutta High Court on October 30, 2017, for registration of a design titled “Touch Screen” for a novel surface ornamentation which is a Graphical User Interface (GUI).

Grounds for Rejection

The controller had rejected this application on the following grounds:

1. Visibility only in on mode: GUI is not capable of design registration, it is only visible when it is in ‘ON’ mode and there can be no design when the product is in ‘OFF’ mode. Hence, GUI cannot be treated as a design of an article.
2. Non-Industrial Manufacturing: GUI/ICON does not follow the process of industrial manufacturing but is mainly created by software development processing.

The Decision of the Court

The High Court has decided the case in the favor of the appellant. The court held that the impugned order of the Design office is unsustainable and is liable to be set aside. Moreover, GUIs are eligible for registration under section 2(a) and (d) of the Designs Act, 2000 and directed the controller to reconsider his decision within three months from the date of communication and after giving the right of hearing to the appellant.

1. The Design’s office finding that GUI/ICON is incapable of registration is incorrect and ignores the amendments made to the Design Rules in 2019 and 2020. Class 14.02 and 14.04 of the Locarno Classification specifies articles under the category of “Screen Displays and Icons” introduced by the 2019 amendment. Additionally, the amendments made in 2021 introduced a new class 32, comprising graphic symbols, graphic designs, logos, ornamentation and surface patterns.
2. The concept of GUI contemplates visual representation of configuration of icons and several elements on a touch screen. GUI is also used as a differentiation of products and user experience with the ultimate aim of influencing customer decision when buying such products.
3. The findings that the GUI is only visible in ON or operational mode and thus incapable of registration is incorrect. The court observed that:
   • The GUI in the present case is in-built, and in-built ICONS are displayed in shops and advertisements.
   • Designs registered may be applied to any external or internal aspect and are eligible for registration if they are visually appealing and enhance the aesthetic value of the product.
4. The court observed that the design submitted by the appellant is a 2D design, a design which has dimensions of length and width but does not possess depth. The novelty of the same can be determined by the eye as soon as it is turned on. There is no need to touch the device in respect of the design. The process of application of the subject design i.e., GUI on the finished article is a mechanical and manual process which falls within the definition of “industrial process’ ‘ mentioned in section 2(d) of the Designs Act 2000. A software developer develops a source code that creates the GUI, this source code is then embedded in the microcontrollers and microprocessors and that is displayed on screen by illuminating pixels through electronic means.

This order gives hope of settlement of the law on the registrability of graphical user interfaces under industrial designs law in India. Once it is settled that GUIs can be registered under the design law, we might witness an increase in the applications for GUI registrations in India.

REFERENCES

1. The Designs Act, 2000 (Act 16 of 2000).
2. The Copyright Act, 1957 (Act 14 of 1957).
3. MANU/WB/0584/2023
4. Amazon’s Design Application No. 240305 (2014).
5. UST Global Design Application No. 298921 (2017).
6. https://www.britannica.com/technology/graphical-user-interface
7. https://www.barandbench.com/law-firms/view-point/a-hope-for-gui-registration-under-design-laws-in-india

 AUTHOR: Ms. Divyanshi Gautam, 4^th year law student at School of Law, ITM University,  Gwalior.