Should WIPO Harmonize Design Protection for Graphical User Interfaces?

The United States and others have proposed that the World Intellectual Property Organization’s Standing Committee on the Law of Trademarks adopt a Joint Recommendation on Industrial Design Protection for Designs for Graphical User Interfaces. The core of the instrument would recommend “that Member States provide industrial design protection in relation to new or original designs for a graphical user interface (GUI),” and “that the acts considered by a Member State to infringe industrial design rights for a design for a GUI are the same as those considered to infringe industrial design rights for other products.” In considering this proposal, it is important for countries to consider the criticisms of using design law to protect GUIs. The core criticisms of using design law to project GUIs include that GUIs are functional, not merely aesthetic; that using design protection rather than copyright evades the limitations of copyright law that favors competition; that design protection favors larger companies and could reduce innovation by raising barriers to entry.

As the proposal notes, GUIs, such as the icon designs on screens of various kinds, are increasingly ubiquitous in many mobile technologies from smartphones to the navigation screens in cars. Where GUIs contain sufficient originality, they may be subject to copyright protection. But some countries, including the US, also make GUIs eligible for design protection, with important ramifications.

Flexibility in the RDLT

The recently adopted Riyadh Design Law Treaty permits, but does not require, countries to extend design law protection to graphical user interfaces. Article 2(1) of the DLT establishes that “[n]othing in this Treaty or the Regulations is intended to be construed as prescribing anything that would limit the freedom of a Contracting Party to prescribe such requirements of the applicable substantive law relating to industrial designs as it desires”. It does not define what constitutes an “industrial design,” nor does it limit the categories of designs that a Contracting Party may choose to protect. Consequently, a national decision to extend protection to virtual, animated, or non-physically embodied designs falls within the substantive autonomy expressly preserved by Article 2(1).

Functional Designs?

There is a threshold conceptual problem with applying design law to GUIs. Design law is intended to protect ornamental or aesthetic features, not functionality. Critics point out that in GUI design, aesthetics and function are often inseparable. If a layout is the most efficient way to achieve a task, granting protection could stifle innovation by preventing others from using effective user experience patterns. While design patents are intended to protect only “ornamental” (non-functional) appearances, user interfaces inherently incorporate significant functional elements, leading to a system where designers may gain a “functional equivalent” of a utility patent through the design patent system.¹

Evading Copyright Limitations

Expanding design protection to GUIs may allow applicants to evade the inherent limits of copyright law. These include the requirement for originality (not mere functionality) in the expression to gain protection, the requirement to prove copying to establish infringement, and the ability of an accused infringer to assert limitations and exceptions as a defense. In the US, scholars have criticized the granting of design patents that fail to meet the minimal originality required for copyright.

Competitive Effects

Applying design law to GUIs may dampen competition in technology markets. Shared conventions – like using similar icons for similar functions — increase interoperability and the ability to compete. Creators of competing products using GUIs often need to use similar icons to ensure usability for consumers. Examples include the gear symbol for settings, or the trash can icon for deletion. Some GUI designs are so constrained by usability, convention, technical architecture, and user expectations that they leave competitors with no meaningful alternative designs that are equally usable. Granting design protection for such elements — requiring their licensing by potential competitors — can lead to a reduced ability to create competing products in local markets.

Distributional Effects

The distributional effects of GUI design protection are highly asymmetric: under current systems, design rights are used predominantly by large corporations from industrialized economies rather than by local designers in most countries. Leading filers such as Samsung Electronics, Philips, and LG Corporation illustrate how firms with substantial internal legal capacity and global market strategies are best positioned to deploy GUI design protection aggressively, reinforcing existing technological and economic concentration rather than fostering local innovation.