[This post has been authored by Adhyasha Samal of the Hidayatullah National Law University, Raipur.]
Graphical User Interfaces (“GUIs”) refer to the visual elements of a user interface that facilitate interaction between the user and the system. GUIs are rapidly evolving and are applied in personal computers as well as phones, tablets, e-watches and other smart devices. Preceded by command-line interfaces which required users to enter a command in the text box to complete a function, GUIs came into existence when Xerox Corporation created the first personal computer, Alto, containing the first GUIin 1970. It was soon followed by Apple’s Macintosh and Microsoft’s MS Windows.
GUIs consist of diverse variations of colors, blocks and patterns combined together to create icons, menus, pointers, bars and screen displays that enhance the appeal of the device on which they function. As this raises commercial value of the device, developers of GUI seek intellectual property protection. Countries such as US and EU have moved on from granting copyright over GUIs towards a more favorable design protection system, with others following suit. However, India’s policy towards GUIs remains underdeveloped, vaguely tilting towards copyright protection. This article argues that the fundamental principles of copyright law make it an inadequate tool for GUIs and explores the looming question of Design protection, particularly in light of the Design (Amendment) Rules 2019.
Prior to the advent of GUIs, certain principles relating to the extent of copyright protection of software programs were developed in American courts. InWhelan v. Jaslow, a case of infringement of copyright in a Dental Lab’s customer-service management program, the court extended protection to the program‘s ‘structure, sequence and organization.’ It distinguished the function or purpose of a program which being the idea, could not be protected from non-literal elements of the program not necessary to that purpose/function, i.e., incidental or creative elements which formed the expression, and were thus copyrightable. These elements soon came to be recognized as the ‘concept and feel’ of a program. However, in Computer Associates International v. Altai, Inc the Whelan test was rejected in favour of an abstraction-filtration-comparison test where after abstracting the expression from the idea, it filtered elements which were either based on external factors, used for efficiency or were taken from public domain e.g., colors and basic building blocks, before comparing the residuary elements for infringement. This additional ‘filtration’ removed several elements which had previously enjoyed copyright, greatly narrowing the scope for protection.
In 1994, the first ever GUI case came to court when Apple sued Microsoft and HP for building their own versions of GUI combining elements licensed from Apple with non-licensed ones. Apple pleaded protection under the look and feel doctrine, but the court preferred the Altai rule. It observed that of the 189 elements in question, as many as 179 were within the scope of the license while the rest were filtered as non-copyrightable. This decision prompted developers to seek protection elsewhere, such as the design regime. Later, the CJEU ruled that copyright does not extend to the visual elements of a GUI.
It therefore comes as a surprise that India’s Ministry of Electronics and Information Technology in its website, promises copyright protection to the ‘look and feel’ of GUIs. In the absence of any provisions in the Copyright Act 1957, any detailed rules or FAQs from the Copyright Office, the nature and extent of this protection remains uncertain.
Is Design Protection the answer?
Countries with a developed technology sector such as US, Japan, South Korea, and EU states show a trend of increasing design registrations for GUIs. This comes as an obvious choice as the primary function of GUI is its aesthetic appeal.
In India too, Microsoft was granted registration over some of its designs prior to 2009 under Class 14-99, which is the ‘Miscellaneous,’ category. In 2008, the Design Rules 2001 were amended to comply with the Locarno Classification and thus Class 14-04 dedicated to ‘Screen Displays and Icons,’ was introduced.
Despite this, when Amazon sought design registration (Application No. 240305) for a ‘Graphic user interface for providing supplemental information of a digital work to a display screen,’ the Indian Design Office rejected the same, stating that GUIs did not fit within the meaning of ‘Article’ and ‘Design’ as contemplated in Sections 2(a) and 2(d) of the Design Act, 2000.
The Act lays down that Design:
- Includes only the features of shape, configuration, pattern, ornament or composition of lines or colors; and
- Has to be applied to an article of manufacture, whether in 2 or 3 dimensions
Focusing on these definitional limitations, the Office submitted several grounds for rejection of the design, of which the following were most pertinent:
- 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.
- It does not qualify as a ‘finished article’ that is manufactured by an industrial process.
- The design is not an integral part of the article but is purely functional or application based.
- Lastly, GUIs not being physically accessible cannot be sold separately as a commodity in the market.
It is to be noted that nowhere does the Design Act expressly prohibit registration of software. The Design Office questionably holds that GUI is purely functional and not integral. In reality, functions performed with the aid of GUI can still be performed without the specific aesthetic elements. It is in those aesthetically appealing elements that a GUI’s USP lies. 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 companies depend largely on technology, confining the meaning of ‘constant eye appeal’ to that which is visible 24*7 and interpreting ‘industrial process’ to exclude software industry stifles innovation and is harmful for India’s IT sector.
End of the road for Design?
Although the Amazon decision was a huge setback to the software industry in India, all is not lost. The recent Design (Amendment) Rules 2019 adopt the latest version of the Locarno Classification, harmonizing the law with WIPO standards. Significantly, this introduces to Indian Design law, the new Class 32 which envisions protection for Graphic symbols and logos, surface patterns, ornamentation. While this stands in contrast with the Amazon decision, making the situation all the more uncertain the very introduction of Class 32 is a ray of hope for GUIs.
Thus, although an amendment in the original act would be desirable to clear the clutter once and for all, a reinterpretation of Sections 2(a) and 2(d), supported by the new Class 32 cannot be ruled out.
Why Design is better than Copyright
The lack of clarity in policy, coupled with complete absence of jurisprudence on GUI protection has left developers in India in a fix, where it is unclear whether they are to seek protection for their GUIs under Copyright Act or Design Act. As international trends favor the latter, it is important to understand that Design protection offers certain inherent benefits over copyright protection to GUIs in particular.
For starters, the scope of protection provided by copyright is extremely narrow and discretionary. Icons, windows, transitions and synergies are made up of several elements taken from public domain and what the courts find to be non-protectable as ‘look and feel’ is largely unpredictable. With only exact or near-exact copying held as actionable, it is fairly simple for subsequent developers to get away with copying by meticulously avoiding exact imitations. Design on the other hand is intended to protect the very aesthetic elements of the GUI that make it marketable. Further, the term of copyright (the author’s life plus sixty years) is unsuitable for a GUI as innovations in the software industry occur at a breakneck speed. The monopoly lasts for multiple generations and by the time the work enters public domain, it is already obsolete. At ten years, design protection is more compatible with the pace of GUI development. From the developers’ perspective, design is also more profitable as unlike copyright, it does not provide fair dealing exceptions likely to bite off from the company’s profit. Lastly, another huge shortcoming is that Section 15 of the Copyright Act, while making protection under copyright and design law mutually exclusive goes on to state that copyright shall cease to exist in a work eligible for design protection if the article to which the design is applied is reproduced more than fifty times by an industrial process. This threatens to pose a major hurdle for companies if, in the light of the latest amendment to Design rules, GUIs are granted registration under the new Class 32. In such a case, the very act of mass production of the GUI will lead to forfeiture of copyright.
Based on GUI’s judicial experience with copyright protection and the above analysis, it can be gathered that design serves as a more effective tool to safeguard one’s rights in GUI than copyright. As it gains popularity in leading jurisdictions across the world, India grapples with an underdeveloped GUI policy. If India is to market itself as an investor-friendly economy, it must provide a robust protection policy for GUIs which secure for developers a competitive advantage as well as help them procure early-stage financing from investors.
 Design Act 2000, s 11.