In the last edition of Inside IP (Spring/Summer 2019), we looked at how graphical user interfaces (GUIs) could be protected under the UK copyright regime. In our latest article on this topic, we will explore the extent to which GUIs can be protected under the various design law systems covering the UK.

Background to the Law

The Community Design Regulation (Council Regulation No. 6/2002/EC) provides the legal framework for both registered and unregistered Community design protection. UK registered design protection is a separate right that has basis in the Registered Designs Act 1949, which is harmonised with the national registered design laws of Member States by the Community Design Directive (Directive 98/71/EC). Therefore, in the UK it is currently possible to obtain registered design protection via a UK Registered Design (UKRD) or a Registered Community Design (RCD) that covers the entire EU. Meanwhile, unregistered Community design protection subsists automatically, but with the significant drawbacks of a much shorter term of protection and also that the burden of proof is on the rights holder to show that an infringer copied the design.

In the event of Brexit (with or without a deal), then the current position is that all RCDs which have been successfully registered by the leaving date will be converted into an equivalent UKRD in order to avoid loss of protection to rights holders. Furthermore, UK applicants will continue to be able to apply for RCD protection. In addition, a new supplementary unregistered design right will be available in the UK offering the same protection as the existing unregistered Community design right.

Due to the harmonisation of the design law systems, the UK and Community registered design systems and the Community unregistered design right use the same definition of what constitutes a valid design and the same test for assessing whether an article produced by a third party falls within the scope of protection. For a design to be valid it must be novel and have ‘individual character’, meaning that the design produces a different ‘overall impression’ on a hypothetical ‘informed user’ than publically available prior designs (‘prior art’). Infringement is assessed in a similar manner by determining whether a third party design produces the same overall impression on the informed user as the registered design. Therefore, the points discussed below apply equally to UK and Community registered design systems and the Community unregistered design right. There are no immediate plans for UK registered design law to diverge upon exit from the EU.

A separate UK unregistered design right also exists (having basis in the Copyright, Designs and Patents Act 1988). The UK unregistered right is very different to the other design systems and, significantly, ‘surface decoration’ (i.e. two-dimensional designs) is excluded from protection. This makes the UK unregistered system unsuitable for protecting GUIs and therefore will not be discussed further in this article.

What is Protectable?

Section 1(2) Registered Designs Act 1949 (Article 3(a) of the Community Design Regulation) defines a ‘design’ as “the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture or materials of the product or its ornamentation”. The term ‘product’ is defined in section 1(3) of the Act (Article 3(b) of the Regulation) as “any industrial or handicraft item other than a computer program; and, in particular, includes packaging, get-up, graphic symbols, typographic type-faces and parts intended to be assembled into a complex product”.

It is therefore clear that registered design protection is not restricted to physical articles and instead also covers two-dimensional designs including ‘graphic symbols’ and ‘typographic type-faces’. The registered design system treats GUIs and app icons as ‘products’ that are eligible for protection. The exclusion of computer programs at first glance appears to preclude the protection of GUIs. However, this provision actually excludes the protection of the technical function and underlying software code of computer programs, which are instead protectable under the patent and copyright regimes.

The fact that two-dimensional designs are protectable means that it is possible to obtain protection to a GUI per se, without showing any hardware (e.g. a smartphone or tablet) in the design drawings. This is in contrast with registered design regimes in certain foreign jurisdictions, for example, China and the United States, wherein it is necessary to depict the GUI displayed on a device screen (although some jurisdictions, such as the United States, permit that the device is disclaimed by being shown in dashed lines).

Scope of protection

The scope of design protection is determined by the drawings filed with the design application. It is therefore important that the scope is not unintentionally limited to features that are shown in the drawings for context but do not actually form part of the design. In the case of GUIs, such features commonly include user content and information that varies with use of the GUI (for example, the temperature displayed in a weather app). One solution is to show such features using dashed lines, which are usually interpreted as not forming part of the scope of protection.

An example of this can be seen in the below RCD no. 001441638-0010, directed to a media player app. Certain features, including the media buttons and the square outline of the thumbnail image, are shown in solid lines and thus will be interpreted as limiting the scope of the design. However, the thumbnail image and the media information text (depicted by the word ‘CONTENT’) are displayed in dashed lines.

This clarifies that protection is not intended to be limited to these features, which instead provide context to the design. Otherwise, if all of the features were shown as solid lines, the design could be interpreted as being limited to the specific media information shown in the design (i.e. the design would only be infringed by an app showing the same media information).

A difference between the UK and Community design registration systems is that a UK design application can include a written disclaimer. This can prove useful for disclaiming content that is not intended to limit the scope of protection of the design. For instance, in the above example a written disclaimer could be used to clarify that protection is not limited to the particular media information and album art shown in the drawing.

Design Freedom

One aspect that is taken into account when assessing validity and infringement of a registered design is the degree of ‘design freedom’ available to the designer. If there are constraints on design freedom (for instance, a particular product has to be a certain shape in order to perform its function) then the informed user will notice more subtle differences between the registered design and a third party design. This means that third party designs are more likely to produce a different overall impression on the informed user and thus lead to a finding of non-infringement. As explained above, the test for validity mirrors the test for infringement, and therefore restrictions on the degree of design freedom would mean that the informed user is more likely to conclude that a registered design produces a different overall impression and thus has individual character over prior art designs.

It has been noted that (for example, by the Board of Appeal in the King.com case discussed below), in the case of computer graphics, design freedom is generally only limited to the extent that the graphics must be displayable on a computer screen and that certain graphics, such as icons, are generally of limited size. With regard to the appearance of most graphics, including the shape, pattern and colouring, the design freedom is essentially unlimited. This means that the scope of protection of registered designs to computer graphics is usually going to be interpreted relatively broadly given the large degree of design freedom. On the other hand, the informed user will be more likely to overlook small differences between the designs and prior art, resulting in a higher threshold to establish individual character of the design.

Animations

It is possible to protect the animations now commonly found within GUIs. The European Union Intellectual Property Office (EUIPO) Design Guidelines explain that this can be achieved by filing “a short sequence of views used to show a single animated design at different specific moments in time, in a clearly understandable progression”. The Guidelines provide the following example of an allowable ‘animated icon’:

The requirement for the sequence to show a “clearly understandable progression” can prove problematic, as can be seen in the case of TeamLava, LLC v King.com Limited (R 1948/2015-3). In this case, King.com obtained RCD no. 2216416-0049 to an animated icon from their popular ‘Candy Crush’ game:

TeamLava initiated an invalidity action, arguing that each of the views lacked novelty and individual character over items of confectionery disclosed in a catalogue, including a ‘Mint Humbug’ and ‘Uncle Joe’s Mint Ball’.

King.com argued that the RCD was to the animated appearance in succession of the three views and thus it would be inappropriate to compare the three views to the individual pieces of confectionery of the prior art. The Board of Appeal disagreed, finding that the drawings did not reveal any animation in a clearly understandable progression, and thus the Board construed the RCD as relating not to a single product but to three separate views of confectionery. In view of this, the Board held that the views of the design lacked individual character over the prior art and that therefore the RCD was invalid.

It is worth noting that under the UK system it is possible to file up to 12 drawings for each design, allowing for more complex animations to be depicted. In comparison, a RCD can only include up to seven views to each design.

Conclusion

As we have seen, it is possible to protect the visual elements of GUIs under the UK and Community registered design systems and also by utilising Community unregistered design protection. In the case of registered designs, it is important to ensure that the design drawings, and any written disclaimers in the case of a UK application, are prepared in a manner such that the scope of design protection is limited only to features that are intended to form part of the design, with purely contextual features disclaimed. Where protection for animations is sought, the sequence of progression of the animation must be clear from the design drawings. A carefully drafted registered design application can be a powerful tool for the protection of GUIs, complementing the protection afforded by the copyright and patent regimes.