What is your mobile phone brand; is it iPhone, HTC, Samsung or another brand? Regardless of the brand, it is most likely a smartphone. Several years ago, when media predicted the overwhelming future of smartphones, people did not have a clear vision of what that meant. However, now that these electronic products have taken over the global market, the problems they’ve raised are clear.

Fans of iPhone show no interest in HTC’s graphical user interface (GUI), while people who favor Samsung appreciate its unique GUI designs. Some people say that the GUIs of different brands are similar in function with each other and make no difference to general consumers even if the GUI designs are identical. However, GUI is crucial to enterprises because it is a powerful weapon in the war of taking control of the global smartphone market.

Clone GUI in e-world cause disputes

The battles caused by GUI have a long history. 30 years have passed since the first GUI operation system Windows 3.0 was published by Microsoft. There is no doubt that GUI is an amazing invention, but who on earth is the inventor? Apple, Microsoft and Xerox have a series of litigations on the patent right of GUI. Steve Jobs, co-founder of Apple, held that GUI was invented by Apple rather than Microsoft. Nathan Brookwood, a principal analyst at a semiconductor consulting firm Insight 64, once stated that Steve Jobs visited Xerox’s Palo Alto Research Center where he eyed the company’s GUI prototype, which he suggested led to Job’s earliest GUI.

Regardless the validity of the claim, Apple filed a lawsuit against Microsoft in federal court in 1988 alleging that Microsoft had infringed the patent right of Apple Mac’s operation system. Soon after, Xerox sued Apple, claiming that Apple had stolen its originality.

After six years of litigations and appeals, the Supreme Court of the United States made the final judgment, rejected both appeals of Apple and Xerox. It rejected Apple’s case on the grounds of insufficient evidence and dismissed Xerox’s case because the three-year statute of limitations had passed.

In recent years the patent wars between mobile terminals have caught the world’s attention. Apple, who is busy in filing IP lawsuits against its rivals, is especially eye-catching. In July of 2012, judge Colin Birss of the England and Wales Patents County Court ruled that Samsung Galaxy Tab did not infringe Apple’s iPad design, because even though the design of these two products are similar from the front, the overall impressions are different; Galaxy Tab is thinner but not as “cool” as Apple’s obtrusive design.

The mobile terminals are in an era of rapid development. The well developed Android platform and the overwhelming design enable the handset manufactures to introduce new products every few months. Therefore this is also an era of clone E world with the same consumer experience, even with the identical appearances.

Judicial conflicts in practice in China

In the computer GUI copyright infringement case Shenzhen TP-LINK Technologies Co., Ltd. (TPLINK) v. Shenzhen Tenda Technology Co., Ltd (Tenda). The plaintiff TP-LINK invented the GUI of TL-R460 router in July 2003. In March 2004, the plaintiff found that the GUI of three models of router TEI6616/6610/6607 produced by Tenda were similar with the GUI of TL-R460 router, and were sold in the store operated by Zhang Yabo. Therefore, TP-LINK sued Tenda in Shenzhen Intermediate People’s Court, claiming that Tenda and Zhang Yabo has infringed the GUI copyright of its routers.

By comparison, in the GUI of the products of both parties, the design of the frames and colors are identical, the contents in the frames of the products operate differently due to the function disparity, but the mode, font and color of the contents are mainly the same.

Tenda argued that for routers, the display of GUI is limited and that many other router developers use the same or similar GUI in their products.

Shenzhen Intermediate People’s Court held that the GUI of TL-R460 router is a compilation work, and its copyright belongs to TP-LINK. The user interface of routers produced by Tenda is partially different from the TL-R460 router produced by TP-LINK, but most of its designs are similar with the TL-R460 router in terms of the design mode, contents arrangement and tabular form, etc. The creation and publication date of the GUI of the TL-R460 router precedes the three modes of routers produced by Tenda. Therefore, the GUI of the Tenda routers infringed the copyright of TP-LINK. Tenda plagiarized TP-LINK’S products for business purposes without authorization and should take responsibility for the infringement. Tenda argued that the display of the GUI is limited and the alleged infringing GUI has been used commonly in the router industry. However, Tenda could not prove the generality. Therefore, Tenda’s claim was rejected by the Court.

While in the second instance, the Higher People’s Court of Guangdong Province held that whether the GUI can be protected by the Copyright Law of China should be determined on a case by case basis, i.e. the specific components of GUI. As for the GUIs of both parties’ routers, product identifications with their slogans are displayed on the left upper corner, function menus and buttons are displayed on the left which indicate the corresponding functions, they are all parts of the method of operation which have practical applications.

The method of operation cannot be protected under copyright according to the provisions of the Copyright Law of China. As for elements in the GUI, such as dialog boxes, windows appeared after performing the programs, which are common elements in the designing process without any originality, the Court ruled they should not be protected by the Copyright Law.

Accordingly, the Higher People’s Court of Guangdong Province ruled that the GUI of TL-R460 router does not meet the originality requirement of the Copyright Law of China, and therefore could not be protected. Thus the copyright infringement appeal of Tenda and Zhang Yabo by TP-LINK should be reversed.

Feng Xiaoqing, professor from the Institute of Intellectual Property Law of China University of Political Science and Law, expressed his opinion on this case, “In China’s judicial practice, when judging whether a GUI could be considered as a piece of work, the basic approach is to determine according to individual the GUI. But in general, the following situations are excluded from the protection of the Copyright Law: (1) the function menu and button of the GUI indicating the corresponding function which are the method of operation; (2) the components of the GUI, such as the menu bar, dialog boxes, windows, scroll bars etc., which are the common elements lacking of creativity; (3) the explanation text of the button’s function which is a simple interpretation and is limited in mode. The remaining parts could be protected depending on whether they have originality.”

Knocking at the door of patent protection

In conclusion, there is no clear specific legal provision on GUI protection for electronic products in China. However, due to the perpetual development of IT in the last decade, an increasing number of electronic products with GUIs have emerged, and therefore the interface design has attracted more attention. Many countries have implement laws providing IP protection for these products. The United States began to grant patent protection on computer generated imagery and specified examination standards accordingly in 1996. Since March 31^st, 1993, Japan stipulated that LCD screens can apply for patent protection if they meet certain requirements. In February 2002, Japan further provided that some provisions and requirements for design patent applications could also be applied to LCD screens. As of 2006 patterns have been covered under design protections. The European Commission adopted the Community Design system in December 2001. While in South Korea, Korean Intellectual Property Office (KIPO) changed the examination standards of design patent on July 1st, 2003 to explicitly state that GUI may be protected as design patent.

However, reviewing the practice in China, the GUI of electronic product remains ineligible for design patent examination according to the Guidelines for Patent Examination, which was put into force in 2006. It clearly specifies that: “the pattern shown when the product is electrified, such as the pattern on the electronic watch dial, the pattern on the screen of the mobile phone, software interface, and so on” is one of the “subject matters ineligible for patent protection for design.” The provisions remained unchanged in 2010. The GUI of electronic products which we are familiar with often loads on the interface after being electrified, and may change dynamically during the display.

Zhang Peng, examiner of the Patent Reexamination Board of SIPO, said, “This provision has a close relationship with understandings of design held by some related departments. According to the Patent Law, ‘design’ means any new design of the shape, the pattern or their combination. As for a pattern, it should be a fixed image which is consistently visually perceptible and not a display which inconsistently appears under specific conditions. A GUI is not a design which has direct visibility. It cannot be displayed without being electrically activated, and the display requires electrical control under specific conditions. Therefore it is not covered under the patent protection for designs.”

As regulations published by China’s administrative departments, the Guidelines for Patent Examination has no legal force. The Patent Law does not stipulate whether the GUI of an electronic product can be included in the patent protection of design. It is mainly because of the controversy in defining the subject matters of patent protection for design: whether it is a “design” or a “product” that should be the subject of design patent protection?

In accordance with the provisions of Article 2.3 and Article 59.2 of the Patent Law, “Design means any new design of the shape, the pattern or their combination, or the combination of the color with shape or pattern, of a product, which creates an aesthetic feeling and is fit for industrial application.” “The scope of protection of the patent right for design shall be determined by the product incorporating the patented design as shown in the drawing or photographs.” This provision seems to indicate that the subject of patent protection for design is the design of the product which consists of design elements including shape, pattern, color and so on; the product is only the carrier of the design.

But according to Article 11.2 of the Patent Law, “After the design patent is granted, any unit or individual is forbidden from using the patent without authorization of the right holder, i.e. any unit or individual is forbidden from manufacturing or selling products with the granted design patent for business purposes.” This provision turns the focus to the product.

The view which holds that a “product” rather than “design” should be the subject of the protection is more welcomed in practice. This is also true in the patent examination administration. In the Guidelines for Patent Examination, “The carrier of a design must be a product.” Ma Yunpeng, judge of the Beijing Second Intermediate People’s Court gave his comments on this, “Even as the carrier of a design, a product is confined into a narrow scope in China compared with EU countries. It must have a fixed shape and any product which does not have a fixed shape, pattern or color because it contains a substance which has no fixed shape, such as gas, liquid or powder, is not eligible for patent protection as a design. But one characteristic of the GUI of electronic product is the unfixed shape. Because of this extraordinary characteristic, the GUI of an electronic product is not treated as the ordinary carrier of the product. Is it an attachment of the computer screen, a transient system, or other product? All these questions could be used as a justification to deny protection by administrations that are in favor of the ‘product’ view and refuse to grant design patent to GUI.”

A reporter of China IP magazine has researched for a “design” which is the closest to the classification of GUI in the Locarno Classification (LOC), i.e. Serial No.14-04 in Patent Search System of SIPO. 57 designs have been granted patent, but among them less than 10 patents are the GUIs of electronic products. Ma Yunpeng said: “Because China adopts formal examination system in design patent examination, it is not surprising that patent administrative departments have granted GUI design patents. But they believe in essence that a GUI is not the subject matter of patent protection for design.”

Throughout the history of seeking protection for GUIs, originality has been the key factor. The conflict between consumers’ use habits and designers’ originality has trapped mobile phone manufactures in a new dilemma, and therefore designers have to face higher challenges.

(Translated by Emily Tan)