Protecting UI/UX Design Using Intellectual Property
In the current world, the design is everywhere, from our wardrobes to the websites you visit and thus, a unique design becomes an asset that needs to be protected. UI/UX (User Interface/User Experience) design is an essential part of any website and along with that, the on-screen controls you used to perform various functions on web apps, collectively make up GUI (Graphic User Interface). UI/UX is a critical part of the look and feel of any website and companies invest a lot in this as it has become an important differentiator in the marketplace and has also become a new form of intellectual property, which means that global IP protection remains fluid – and that is a major concern for companies that don’t want their designs to be copied.
US Laws for Protecting UI/UX Design
1. Copyright Law
Copyright automatically arises when a literary, dramatic, musical or artistic work is created. So, the original UI/UX design elements can be protected by copyright as ‘artistic works’. However, if an alleged copyright infringer makes modifications to the copyrighted design element, he/she can avoid its liability as the protection offered by copyright is limited to copying a substantial portion of the UI/UX design element.
2. Trademark Law
Trademark registrations are the ideal way to protect certain easily identifiable elements of the UX that are not likely to change; for example, Instagram’s ‘Comment’ button but not the best way to protect the GUI as a whole. Further, the Trade Dress which "refers to the characteristics of the visual appearance of a product or its packaging... that signify the source of the product to consumers." can be used to protect designs that are highly recognizable and well known by people (design of a coke can). Trade dress can be difficult to obtain, and trade dress protection interacts with copyright protection in complex ways.
Despite these drawbacks, trade dress may be used in some situations to supplement UI copyright, or alone if a UI element is not considered sufficiently original to be copyrighted. Trade dress, within its limitations, is also better suited to protecting the total appearance, compared to the protection of specific UI elements offered by copyright law.
3. 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 noteworthy that design patent protection also covers interactive UI/UX 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.”
According to the above mentioned pointers, it is clear that there is no single legislation to achieve complete protection for UI/UX. Instead, each IP right provides a different form of protection for the different elements of the total UX. In many ways, patents are the best tool for protecting UI/UX:
Legally, patents are much better suited to protecting things that perform a function.
The infringement threshold is lower. Copyright infringement requires copying, while patent infringement can be proven if a design is sufficiently similar but is not a copy.
Patents do not have a fair use provision. Fair use allows limited use of copyrighted material without asking for permission; for example, if someone directly quotes some sources in an article, that's permissible under fair use, but the same practice won’t apply for patented material.
Indian Laws for Protecting UI/UX Design
In India, GUIs can be protected under copyright as well as design law. In Maraekat Infotech Ltd. v. Naylesh V. Kothari (2016), the Bombay High Court stated that copyright in computer programs also covers their ‘structure, sequence and organisation’, indicating that the UI/UX related to the program would also be protected. This was further corroborated by the Ministry of Electronics & Information Technology which stated, ‘Copyright protects the form of expression and can be used to protect source code and the object code of a computer programme. Furthermore, computer programmes are 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 amendment introduced Class 14-04 dedicated to ‘Screen Displays and Icons,’ amongst others.
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 about ‘article’ and ‘design’, respectively. The said section states 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.
This decision received a lot of criticism, concerning Amazon’s application which argued that a GUI is a part of the display device such as a computer screen, which is an article of manufacture and is sold separately. Hence, a GUI meets the requirement of Section 2(a) of the Act. Further, the GUI is applied to the computer screen with the use of a mechanical industrial process and qualifies as a ‘finished article’ as GUI is included in 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.
After rejection of Amazon’s application, following GUIs 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 history of GUI Design Registration in India has led to an uncertain future of GUIs. The introduction of the Draft Designs (Amendment) Rules, 2019 has provided hope by resolving the uncertainties in the field of GUIs. The Draft Rules 2019 claim 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 latest amendment in the Draft Rules 2019 shows the intention of the legislature in making India a more GUI-friendly country.
How IP Protects UI/UX Design?
The range of global IP protection options is numerous, and the local oddities make the process even more frustrating. Acquiring protection for a UI/UX internationally requires a careful approach to filing across different countries with different eligibility requirements. Protecting IP is not something to take care of on your own rather it is something you should get expert help with, which is an important and smart move. Here are a few things to consider while deciding if additional help needs to be taken or not:
Patents are issued for novel ideas - that's the main criterion. If you think your UI implements something no one has ever done before, you probably want to consult with an expert to assess whether it truly is unique, and to guide you through the process of protecting it under intellectual property.
Those looking for venture capital funding should also investigate intellectual property protection, as investors will want some assurance that your ideas cannot be easily copied.
If you are concerned that you may have infringed on a patent or copyright, an expert can advise you on what is known as freedom to operate - how similar your design can be to another company's design and/or intellectual property without risking infringement.
However, if you copy someone else's design you may be at risk for copyright or patent infringement; for example, you can't download an image from Flickr and use it in a commercial product without permission. Similarly, if your user interface is substantially similar to another product (like Samsung’s designs were alleged to be substantially similar to Apple’s), you may be at risk. Again, an expert can advise you regarding freedom to operate.
Generally, big companies have more to worry about and are more at risk, than alone developer who writes an app. But small- to medium-size companies do face some risk.
Copperpod provides portfolio analysis services that help clients to make strategic decisions such as In-licensing/Out-Licensing of patents, new R&D investments, or pruning out less critical patents. Our team provides strength parameters for each patent in a portfolio based on their technical quality, enforceability, offensive/defensive strengths & business value.
Please contact us at email@example.com to know more about our services.