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AIPPI 2017 - Study Question - Protection of graphical user interfaces Study Question Submission date: May 30, 2017 Sarah MATHESON, Reporter General Jonathan P. OSHA and Anne Marie VERSCHUUR, Deputy Reporters General Yusuke INUI, Ari LAAKKONEN and Ralph NACK, Assistants to the Reporter General Protection of graphical user interfaces Responsible Reporter: Yusuke INUI Nati onal / Regi onal Grou p Belg ium Cont ribu tors name (s) B. MICH AUX, P. CAMP OLIN I, S. DEPR EEUW , T. DUBU ISSO N, S. VAN DEN BRAN DE e- Mail cont act Sara h.va nden Bran

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AIPPI 2017 - Study Question - Protection of graphical user interfaces

Study QuestionSubmission date: May 30, 2017

Sarah MATHESON, Reporter GeneralJonathan P. OSHA and Anne Marie VERSCHUUR, Deputy Reporters GeneralYusuke INUI, Ari LAAKKONEN and Ralph NACK, Assistants to the Reporter GeneralProtection of graphical user interfaces

Responsible Reporter: Yusuke INUI

National/Regional Group

Belgium

Contributors name(s)

B. MICHAUX, P. CAMPOLINI, S. DEPREEUW, T. DUBUISSON, S. VAN DEN BRANDE

e-Mail contact

[email protected]

I. Current law and practice

Patents

1. Can GUIs generally be protected by patents?

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If no, please answer questions 1.1, if yes, please go to question 2 YesPlease Explain

GUIs are not generally excluded per se from patent protection in Belgium. Consequently, if they fulfil the legal requirements, they can be patented.

However, article XI.4, §1, 4), of the Belgian Code of Economic Law (“CEL”)[1] provides that the “presentations of information” shall not be regarded as inventions. This legal provision is identical to the one contained in article 52(2)(d) of the European Patent Convention (“EPC”). The Boards of appeal of the European Patent Office (“EPO”) consider that the layout of a GUI is as such non-technical, being a presentation of information in the meaning of article 52(2)(d) EPC[2]. The EPO’s Guidelines for examination go in the same direction, by stating that features concerning the graphic design of user interfaces do not have a technical effect, because their design is not based on technical considerations, but on general intellectual considerations as to which design is particularly appealing to a user[3]. For example, the colour[4], shape[5], size[6], layout[7], arrangement of items on the screen[8] or the information content of a message displayed is usually not a technical aspect of a graphical user interface[9]. An exception would be if these features contribute to achieving a particular technical effect[10] (see below).

The Belgian Group of the AIPPI (“BE-AIPPI”) is not aware of Belgian case law relevant to that specific question, but Belgian courts usually follow the solutions adopted by the EPO’s examination practise and case law[11].

Article XI.4, §1, 4), CEL and article 52(2)(d) EPC can also be relevant to some extent. These legal provisions both consider that “aesthetic creations” shall not be regarded as inventions either. The layout of GUIs can include aesthetic creations (such as an icon or a font) or be an aesthetic creation as a whole. These aspects of GUIs are thus also excluded from patent protection.

While the layout or graphic design of GUIs, or aesthetic creations included therein, are not patentable as such, other aspects of specific GUIs could nevertheless justify the grant of a patent. Article XI.4, §2, CEL and article 52(3) EPC provide that the above exclusions (presentations of information and aesthetic creations) shall exclude the patentability of the subject-matter or activities referred to therein only to the extent to which the patent application or patent at stake relates to such subject-matter or activities as such. Therefore, if a claim that relates to a GUI can be shown to produce a technical effect it should not be barred from patentability[12].

Footnotes1. ^

The CEL absorbed the former Belgian Patent Act of 28 March 1984 and now contains most of the material patent law provisions.2. ^

Case law of the EPO’s Boards of appeal, 8th Ed., July 2016, I.A.2.6 and I.D.9.1.6.a), referring to T 1143/06, T 1741/08 and T 1214/09.3. ^

EPO’s Guidelines for examination, November 2016, G-II, 3.7.1 ; see also Case law of the EPO’s Boards of appeal, 8th Ed., July 2016, I.D.9.1.6.a), referring to the Guidelines for examination.4. ^

Case law of the EPO’s Boards of appeal, 8th Ed., July 2016, I.D.9.1.6.a), referring to T 1567/05, T 726/07 and T1734/11.

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5. ^

Case law of the EPO’s Boards of appeal, 8th Ed., July 2016, I.D.9.1.6.a), referring to T 677/09.6. ^

Case law of the EPO’s Boards of appeal, 8th Ed., July 2016, I.D.9.1.6.a), referring to T 823/07 and T 1237/07.7. ^

Case law of the EPO’s Boards of appeal, 8th Ed., July 2016, I.D.9.1.6.a), referring to T 756/06, T 1741/08 and T 1214/09.8. ^

Case law of the EPO’s Boards of appeal, 8th Ed., July 2016, I.D.9.1.6.a), referring to T 643/00 and T 1237/10.9. ^

EPO’s Guidelines for examination, November 2016, G-II, 3.7.1.10. ^

Case law of the EPO’s Boards of appeal, 8th Ed., July 2016, I.D.9.1.6.a), referring to T 1741/08 and T 1143/06.11. ^

Most of the responses of the BE-AIPPI regarding the protection of GUIs under patent law are based on the examination practise of the EPO and on the case law of its Boards of appeal in the absence of relevant published Belgian case law.12. ^

Case law of the EPO’s Boards of appeal, 8th Ed., July 2016, I.A.2.6, referring to T 1143/06, T 125/04 and T 619/98.

1.1. If GUIs cannot be protected by patents per se, are any types or aspects of GUIs protectable by patents?

2. If any type or aspect of GUIs are protectable by patents, under what conditions and to what extent are those types or aspects of GUIs considered to be within the scope of patentable subject matter? To be patentable, a GUI must be shown to produce a technical effect. When assessing this, the subject-matter of the claim has to be considered as a whole[1]. A GUI can only be shown to produce a technical effect if the claim directed to that GUI includes technical features (opposed to non-technical features such as mere presentations of information or aesthetic creations as such). A non-technical claim feature is a feature which does not interact with the technical features to produce a technical effect[2]. When deciding if a feature relating to the presentation of information is technical or not, what has to be considered is whether or not it contributes to solving a technical problem[3].

A feature which relates to the manner in which cognitive content is conveyed to the user on a screen normally does not contribute to a technical solution to a technical problem. An exception would be if the manner of presentation can be shown to have a credible technical effect[4].

Features aimed exclusively at improvements regarding the way information is perceived or processed by the human mind are regarded as non-technical[5].

A feature relating to the presentation of information can be considered technical if this feature is combined with steps of or means for interacting with a user or if the feature concern technical information (e.g. internal machine states)[6]. With regard to features relating to the presentation of information that are combined with steps of or means for interacting with a

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user, it is required that such features support a continued and guided human-machine interaction process[7].

In the context of automated systems, in particular computers, giving visual indications of an automatically detected event occurring in the system itself as a prompt for human interaction with the system, e.g. to avoid technical malfunctions, is usually regarded as making a technical contribution[8]. On the other hand, a visual indication aimed exclusively at the mental activities of the viewer, in particular at preparing the relevant data for a non-technical decision-making process by the user as the final addressee, is usually not regarded as making a technical contribution[9]. Presenting the state of some non-technical application executed on a computer is normally not considered to be technical, either[10].

If the claim is found to include technical features, it must be examined whether the claimed invention is novel and involves an inventive step. A non-technical claim feature cannot establish novelty nor inventive step[11]. When assessing the inventive step of mixed-type invention (i.e. an invention that comprises both technical and non-technical features), all those features which contribute to the technical character of the invention are taken into account[12]. These also include the features which, when taken in isolation, are non-technical, but do, in the context of the invention, contribute to producing a technical effect serving a technical purpose, thereby contributing to the technical character of the invention. However, features which do not contribute to the technical character of the invention cannot support the presence of an inventive step[13].

Footnotes1. ^

EPO’s Guidelines for examination, November 2016, G-II, 3.7.2. ^

Case law of the EPO’s Boards of appeal, 8th Ed., July 2016, I.A.2.6, referring to T 1143/06.3. ^

Case law of the EPO’s Boards of appeal, 8th Ed., July 2016, I.D.9.1.6 ; EPO’s Guidelines for examination, November 2016, G-II, 3.7.4. ^

Case law of the EPO’s Boards of appeal, 8th Ed., July 2016, I.A.2.6 and I.D.9.1.6.a), referring to T 1143/06, T 1575/07, T 1741/08 and T 1562/11 ; EPO’s Guidelines for examination, November 2016, G-II, 3.7, referring to T 1741/08 and T 1143/06.5. ^

Case law of the EPO’s Boards of appeal, 8th Ed., July 2016, I.D.9.1.6.a), referring to T 1567/05, T 125/04 and T 579/11.6. ^

Case law of the EPO’s Boards of appeal, 8th Ed., July 2016, I.A.2.6 ; EPO’s Guidelines for examination, November 2016, G-II, 3.7.1.7. ^

Case law of the EPO’s Boards of appeal, 8th Ed., July 2016, I.D.9.1.6.a), referring to T 336/14.8. ^

EPO’s Guidelines for examination, November 2016, G-II, 3.7.9. ^

EPO’s Guidelines for examination, November 2016, G-II, 3.7, referring to T 756/06.10. ^

EPO’s Guidelines for examination, November 2016, G-II, 3.7.11. ^

Case law of the EPO’s Boards of appeal, 8th Ed., July 2016, I.A.2.6, I.C.5.2.8 and I.D.9.1, referring to T 154/04.12. ^

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EPO’s Guidelines for examination, November 2016, G-VII, 5.4.13. ^

Case law of the EPO’s Boards of appeal, 8th Ed., July 2016, I.A.2.6, referring to T 125/04 and T 619/98 ; EPO’s Guidelines for examination, November 2016, G-VII, 5.4, referring to T 641/00.

3. If yes, do the statutory provisions, case law or judicial or administrative practice require specific claim formats for any patent protection? If yes, what claim formats are available for protecting GUIs?NoPlease Explain

4. Is any physical feature required in a claim as a pre-requisite for patentability of a GUI? NoPlease Explain

5. To what extent does involvement of the user's mental activities in a GUI process affect the patentability of the GUI? The fact that mental activities are involved does not on its own render the subject-matter non-technical[1]. However, a feature that solely addresses a user's subjective preferences does not solve a technical problem[2]. As already indicated above, a visual indication aimed exclusively at the mental activities of the viewer, in particular at preparing the relevant data for a non-technical decision-making process by the user as the final addressee, is usually not regarded as making a technical contribution[3].

Footnotes1. ^

Case law of the EPO’s Boards of appeal, 8th Ed., July 2016, I.D.9.1.6, referring to T 643/00 and T 336/14 ; EPO’s Guidelines for examination, November 2016, G-II, 3.7, referring to T 643/00.2. ^

Case law of the EPO’s Boards of appeal, 8th Ed., July 2016, I.D.9.1.6, referring to T 1567/05 ; EPO’s Guidelines for examination, November 2016, G-II, 3.7, referring to T 1567/05.3. ^

EPO’s Guidelines for examination, November 2016, G-II, 3.7, referring to T 756/06.

Design rights

6. Can GUIs generally be protected by design rights?

If no, please answer questions 6.1, if yes, please go to question 7

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YesPlease Explain

Design rights are protected in Belgium under two legislative instruments: on the one hand the Benelux Convention on Intellectual Property[1] (comprising Belgium, the Netherlands and Luxembourg) (hereafter “BCIP”), and on the other hand by the Community Design Regulation (hereafter the “Regulation”).[2] Both the BCIP and the Regulation are similar in their material aspects and generally provide similar rights.

The main provisions on designs and drawings are contained in Title III, articles 3.1. to 3.29 BCIP.

According to article 3.1. BCIP:

“1. A design shall receive protection only insofar as the design is novel and has individual character.

2. The appearance of a product or a part of a product shall be regarded as a design.

3. The appearance of a product shall be imparted, in particular, through the characteristics of the lines, contours, colors, shape, texture or materials of the product itself or of its ornamentation.

4. A product shall mean any industrial or craft article including, inter alia, parts designed to be assembled into a complex product, packaging, presentation, graphic symbol or typographic character. Computer programs shall not be regarded as a product”.

From this definition, it can be seen that BCIP protects the “design” rather than the “product” itself. In other words, design law protects the visible appearance of the whole or a part of a product, as opposed to the way a product has been technically constructed[3]. Computer programs are still excluded from design protection, but their look and feel may be protected by copyright (See below question 11).

BCIP also defines and explains what is meant by “appearance” and “product”.

The appearance of a product results from certain features included in a non-exhaustive list of elements. This can include “lines, contours, colors, shape, texture or materials of the product itself or of its ornamentation” (Article 3.1.3 BCIP). Designs can be two- (drawing) or three-dimensional (design), or a combination of both. A drawing can include a graphic symbol, logo or typographic font, so long as it meets the requirements of registration (see below Question 7).

Although the above definition shows that what is registrable as a design is extremely wide, it is required to be applied to a “product” as defined in Article 3.1.4, BCIP. Graphical symbols and typographic character are explicitly included in the protection scope of a product and therefore providing legislation support for GUIs to qualify for design protection.

The second important piece of legislation for design law in the Benelux countries is the Regulation.

This Regulation does not only provide protection for registered Community designs (“RCD”) but also for unregistered Community designs (“UCD”). In contrast to RCDs, UCDs provide a right only to prevent the copying of the design. In other words, independent creative work by a second designer will not infringe the UCD. RCDs, on the other hand, are protected against both systematic copying and the independent development of similar designs. “In terms of GUIs, assuming that the design fulfils the same criteria for validity as for RCDs, UCD protection will come into existence automatically. However, considering the short period of

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protection and the requirement for the designer to prove that their design has been copied, it is advisable to obtain a RDC.”[4]

The BCIP and the EUIPO’s practices also allow registration of animated screen displays, screen displays, icons, and GUI. For such design protection, applicants should preferably use the wording in the Alphabetical List of International Classification referred to in the Locarno Agreement (see Class 14, Subclass 04).[5] For example, typefaces/Type fonts are in Class 18, Subclass 03.

If a design application is made at the BOIP without a claim of color(s), then it is necessary to provide black and white representations. If in an application color(s) are claimed, then it is necessary to mention the corresponding color(s) code and provide representations in color (Rule 2.1.1, BCIP Implementing Regulations[6]). The application may furthermore contain the following: a description not exceeding one hundred and fifty words of the characteristic features of the new appearance of the product (Rule 2.1.2, BCIP Implementing Regulations). A Benelux application may contain different designs, with a maximum of fifty. A different number should be given to each design for identification purposes (referred as “multiple filing”; see Rule 2.2, BCIP Implementing Regulations).

Footnotes1. ^

Adopted on February 25, 2005 at The Hague and entered into force on February 1, 2007.2. ^

Council Regulation (EC) No 6/2002 of 12th December 2001 on Community designs [2002] O.J., L 3, p. 1–24, as amended by Council Regulation (EC) No 1891/2006 of 18 December 2006 amending Regulations (EC) No 6/2002 and (EC) No 40/94 to give effect to the accession of the European Community to the Geneva Act of The Hague Agreement concerning the international registration of industrial designs O.J., L 386, 29.12.2006, p. 14–16.3. ^

See CJEU 18 June 2002, Philips / Remington, C-299/99, par. 80-84; CJEU 14 September 2010, Lego/OHIM, C?48/09, par. 46.4. ^

T. Dubuisson, “IP Protection for Graphical User Interface in the EU, U.S. and China”, Journal Of Intellectual Property Law and Practice (JIPLP) – Oxford Journal, September 2015, p.767-774.5. ^

Locarno Agreement Establishing an International Classification for Industrial Designs adopted on 8 October 1968.6. ^

Implementing Regulations under the BCIP (version 1 October 2016).

6.1. If not, are any types or aspects of GUIs protectable by design rights?

7. If any type or aspect of GUIs are protectable by design rights, under what conditions and to what extent are those types or aspects of GUIs protectable? The requirements to protect GUIs by design rights in the Benelux (but also in the European Union) are the same as for any other kind of design application.

l The application for a GUIs should be for a “design”.

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l The design must be “novel”; it will fail this test if an identical design has previously been made available to the public as of the date of filing or, if earlier, the priority date. Designs shall be deemed to be identical if their features differ only in immaterial details.[1]

l It must possess ‘individual character’; a design shall be considered to have an individual character if the overall impression[2] it produces on the informed user[3] differs from the overall impression produced on such a user by any design which has been made available to the public before the date of filing or the date of priority. In assessing individual character, the degree of freedom of the designer in developing the design shall be taken into consideration . [4]

Providing that the design fulfils these requirements, GUIs are protectable by design rights under the BCIP. Likewise, the statutory requirements for obtaining a Community registered design are novelty and individual character (Articles 4, 5, 6, Regulation).

Footnotes1. ^

Article 3.3.1, BOIP.2. ^

See, e.g., CJUE, C-345/13, Karen Millen v. Dunnes Stores, 19 June 2014, ECLI:EU:C:2014:2013.3. ^

The concept of the informed user “may be understood as referring, not to a user of average attention, but to a particularly observant one, either because of his personal experience or his extensive knowledge of the sector in question”, see CJEU, C-281/10, Pepsico Inc / Grupo Promer Mon Graphic SA, 20 October 2011, ECLI:EU:C:2011:679.4. ^

Article 3.3.2, BOIP.

7.a. In particular is a GUI that temporarily appears on a screen of an electronic device considered a "design" that is protectable by design rights? YesPlease Explain

It should be noted that there is no apparent statutory basis in the BCIP for drawing a distinction between a product “at rest” and a product “in use” (as it may be the case in other countries).

But, starting from the postulate that “temporarily appears on a screen” means animated, it does not mean that GUI that temporarily appears on a screen of an electronic device cannot be considered as a design. Indeed, a single design application can include a multitude of display variations (sequence of snapshots). If the GUI that temporarily appears on a screen is part of the variations, such a protection may be granted to a temporary GUI.

In order to be accepted, two requirements have to be fulfilled:

l In principle, all views of an animated icon and graphical user interface need to be visually related, this means that they must have features in common;l It is the responsibility of the applicant to number the views in such a way so as to give a clear perception of the movement/progression.

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The same requirements apply at the EU level.

So far, due to technical constraints at the Benelux Office for Intellectual Property (“BOIP”) and at the EUIPO, as it is the case with trademarks (see below question 13), it is not possible to file design applications with such characteristics by electronic means (snapshots are still required).

7.b. In particular is a GUI protectable by design rights independently from the design of the electronic device itself? YesPlease Explain

Yes, GUIs are protectable by design rights independently from the design of the electronic device itself.

The CJEU in Case C-393/09[1] dealt with the question of whether GUIs are protectable under various EU Directives. The CJEU held that GUIs do not fall under "computer programs" protectable under article 1(2) of Directive 91/250/ECC.

In other words, the CJEU held that a GUI is not a computer program. And even if one may consider as one, computer programs are not considered as “products” for the purpose of the application of the BCIP and the Regulation. The reason for inserting this exclusion is explained in the explanatory memorandum to the first proposal of the Community Design Regulation; mainly to avoid interference with the European directive on computer programs.[2]

As a result, the Belgian Group believes that, although a GUI requires human interaction to tell the computer what the user wants from it and fulfils its function once it is displayed on an electronic device, it is also protectable by design rights independently from the design of the electronic device.

The Apple’s EU design application n° 002765396-0015 (filed on September 03, 2015) below is an example of a GUI related to the Apple Watch turn on and off buttons protectable by design rights independently from the design of the electronic device itself (i.e. the Apple Watch):

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Footnotes1. ^

Bezpe?nostní softwarová asociace – Svaz softwarové ochrany (Czech BSA). Judgement of the Court dated 22 December 2010.2. ^

Council Directive 91/250/EEC of 14 May 1991 on the legal protection of computer programs, O.J., L 122, 17/05/1991, p. 0042 – 0046.

7.c. In particular are smaller elements included in a GUI (e.g. icons, slide buttons) protectable by design rights independently from the GUI as a whole? YesPlease Explain

Yes, smaller elements included in a GUI are protectable by design rights independently from the GUI as a whole. Graphical symbols and typographic typefaces are expressly listed in the

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statutory definition as examples for such products (see Article 3.1.4, BCIP). Icons are also covered by the broad notion of graphical symbols.

A slide button, such as the “old” slide-to-unlock design of iPhone™ devices, may also be protected by designs rights. To reinforce the correct understanding of such a design, namely that the user needs to carry out a certain finger movement (swipe) on the contact surface (screen) along a predetermined path, it is recommended to apply for an animated design. It might also be helpful in the design application to show the design in the context in which it is meant to be used; broken lines are recommended for visual disclaimers if any.

Another example of elements included in a GUI protectable by design rights independently from the GUI as a whole are app shortcuts features (in Android Nougat or “3D Touch” in iOS). This GUI makes it easier to access certain portions of an app directly from the Homescreen0. When users press and hold on an app icon on the Homescreen, it displays a context menu of options (just like right-clicking on icons in Windows™).

See for example Apple’s EU design application n° 003019637 (filed on March 8, 2016) for an animated graphical user interfaces (part of -):

(1)(2)(3)

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(4)(5)(6)

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See also Apple’s EU design application n° 002888214-0004(filed on December 3, 2015):

(1)(2)(3)

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(4)(5)

Trademark rights are also a suitable protection for icons, if they are used to distinguish the goods or services of one source from those of others (See question III. A. 4).

7.d. In particular are movements or screen transitions in a GUI protectable by design rights? NoPlease Explain

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No, there aren’t any other types or aspects of GUIs protectable by design rights different than those already mentioned in points a) to d) of this question 7.

7.e. In particular are there any other types or aspects of GUIs protectable by design rights? If so, under what conditions and to what extent?YesPlease Explain

No, there aren’t any other types or aspects of GUIs protectable by design rights different than those already mentioned in points a) to d) of this question 7.

Copyright

8. Can GUIs generally be protected by copyright?

If no, please answer questions 8.1, if yes, please go to question 9 YesPlease Explain

Yes, GUIs can be protected under Belgian copyright. The Code of Economic law provides the common copyright rules (article XI.165 et s.) and the lex specialis for computer programs (article XI.294 et s.)[1]. It is required that the creation be expressed in a particular form (ideas are not protected) and that this expression be “original”.

The Court of Appeal of Gent decided that a GUI is protected under the lex specialis (copyright protection for computer programs)[2]. This decision was criticised by legal scholars, considering the decision of the CJEU in BSA[3] in which it was ruled that the GUI could be protected under the common copyright rules.

Footnotes1. ^

The EU Directives 2001/29 and 2009/24 have been transposed in Belgian law.2. ^

Gent 10 January 2011, Jaarboek Marktpraktijken 2011, 827, note by A. FIERENS.3. ^

CJEU 22 December 2010, Bezpe?nostní softwarová asociace - Svaz softwarové ochrany v Ministerstvo kultury, Case C-393/09, ECLI:EU:C:2010:816.

8.1. If not, are any types or aspects of GUIs protectable by copyright?

9. Does the fact that GUIs shown on screens are computer-generated affect the eligibility of GUIs for copyright protection? YesPlease Explain

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Considering that GUIs can be protected as literary works (CJEU in BSA), the originality condition applies to determine whether a particular GUI qualifies for common copyright protection (lex generalis). It is consequently required that the GUI is “its author’s own intellectual creation” (BSA, par. 45).

The originality requirement has first been described as the condition that the work be “the author’s own intellectual creation” (CJEU in Infopaq I, par. 37[1]) and thus reflect the author’s personality (CJEU in Painer, par. 88[2]). This supposes that “the author was able to express his creative abilities in the production of the work by making free and creative choices” – CJEU in Painer, par. 89).

This entails that creations that are entirely computer-generated without any substantial human contribution are not likely to qualify for copyright protection. Simple design can already be generated automatically[3].

Although assistive technology is developing rapidly (e.g. algorithm-driven design, use of artificial intelligence and machine learning[4], automatic testing of design variations, personalisation on the basis of big data), it seems that human designers are not superfluous just yet. Automation may help in generating variations of a design, testing the design with human users (A/B testing) but human designers will keep a role, e.g. in defining the objective (“intuitive interface”, “saving energy”,…), determining the rules to be applied (basic algorithm), adding relevant variables (numbers of users, context of the use, devices,…), rejecting the less attractive proposals and selecting the more pleasant ones. In this scenario the designer acts rather as a “curator of the algorithms”[5]. The designer will work together more intensely with other professionals, such as data scientists and programmers of the computer program that will ultimately shape the design of the interface. In that case, deciding which aspects are protected under copyright is a more delicate exercise. The designer, the data analyst and the programmer will have made a (more or less distant) contribution that leads to the ultimate form of the interface. It will have to be decided which contributors are sufficiently “close” to the production of the work for the contributors to be considered co-authors of the interface.

The design of some elements may be generated entirely automatically. For those cases, the question arises at which stage a human intervention is required in order to find that there is an “intellectual creation” that reflects the author’s personality: is it sufficient that the author was able to express her creative abilities in the creation of the algorithms or the computer program that ultimately led to the design that was then automatically generated? Or are “free and creative choices” directly related to the design itself required in order to consider the user interface as a copyright protected work?

Other elements may be based on automatic design but perfected by humans or a variety of elements may be selected by a human and brought together in a graphical user interface. The original selection of such elements may suffice for the subject matter to be protected under copyright (article 2(5) Berne Convention).

The circumstance that the GUI is displayed on screens (computer, handheld devices such as mobile phones or tables) does not affect the protection of the GUI. Copyright protects an immaterial subject-matter, regardless of the support on which it is subsequently displayed.

Footnotes1. ^

CJEU16 July 20109, Infopaq International A/S v Danske Dagblades Forening, C?5/08, ECLI:EU:C:2009:465.2. ^

CJEU 1 December 2011, Eva-Maria Painer v Standard VerlagsGmbH e.a., C-145/10,

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ECLI:EU:C:2011:798.3. ^

For example: https://www.logojoy.com; https://thegrid.io/; .4. ^

For example : https://www.fastcodesign.com/3060934/can-you-teach-ai-to-design-wix-is-trying.5. ^

https://www.smashingmagazine.com/2017/01/algorithm-driven-design-how-artificial-intelligence-changing-design/.

10. If any type or aspect of GUIs can be protected by copyright, under what conditions and to what extent are those types or aspects of GUIs protectable?GUIs can be protected if two conditions are met: (i) expression and (ii) originality. Inversely, ideas and functionality are not protected (for want of expression), neither are the formal aspects of the design that are exclusively determined by the technical function (for want of originality).

11. Can the overall "look and feel" of GUIs be protected by copyright?

If no, please answer questions 11.1, if yes, please go to question 12 YesPlease Explain

We understand “look and feel” as elements of style, fashion – as opposed to specific visual elements (or a combination of specific elements).

A GUI can be protected under copyright but depending on the degree of originality the scope of protection (under the rights of reproduction and communication to the public) is probably restricted to the specific expression and is not likely to extend to the “look and feel”. The formal aspects of the GUI can be protected but cannot be stretched to the “style” or “genre” of the GUI[1]. Another GUI will only be infringing if it takes over the original, copyright protected elements of the former GUI (cf. CJEU in Infopaq I). Even then, it should be verified whether the “essential element characterising the interface, that is to say, interaction with the user” is reproduced or communicated to the public (CJEU in BSA, par. 57).

Individual elements included in a GUI can be protected (cf. answers to questions 9 and 10).

Footnotes1. ^

Several example are cited in this overview of case law: J. MUYLDERMANS, “De originaliteitstoets voor de auteursrechtelijke bescherming van gebruiksvoorwerpen”, IRDI 2013, afl. 1, 113-120.

11.1. If not, can individual elements included in a GUI be protected?

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Trademarks

12. Can GUIs generally be protected as trademarks?

If no, please answer questions 12.1, if yes, please go to question 13YesPlease Explain

Trademark protection in Belgium is based on both European legislation (European Trademark Directive[1] and European Trademark Regulation[2]) and Benelux legislation (BCIP).

None of these provide for any specific clause regarding trademark protection for GUIs. Hence, trademark protection for GUIs is subject to the same requirements as for trademark protection of any other sign. This means GUIs can be registered as a trademark with scope of protection in Belgium, provided it has a distinctive character and it can be represented in a clear and precise way.

l Article 3 European Trademark Directive and article 4 European Trademark Regulation stipulate in this respect:

“An [EU] trade mark may consist of any signs, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, provided that such signs are capable of: (a) distinguishing the goods or services of one undertaking from those of other undertakings; and (b) being represented on the Register [of European Union trade marks, (“the Register”)], in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.”

l Article 2.1 BCIP (to be amended in accordance with the European Trademark Directive) stipulates in this respect:

“The names, drawings, imprints, stamps, letters, numerals, shapes of goods or packaging and all other signs that can be represented graphically and that serve to distinguish the goods or services of an undertaking shall be considered as being individual trademarks.”

Since GUIs can be considered as signs pursuant to the definitions above, the general trademark principles apply. This means that all the other grounds of refusal equally apply to GUIs as to any other sign (e.g. availability, exclusion for the shape, or another characteristic, of goods which is necessary to obtain a technical result). Although a GUI can be protected as trademark when it conveys both commercial origin and functionality information, the mere functionalities of a GUI as such cannot be protected by trademarks.

As a consequence, only the verbal elements, sound and/or the visual aspects (e.g. icons, font, lay-out, colors…) of a GUI may be independently or cumulatively protected by trademark law under the same conditions as any other sign. Although both the EUIPO and the BOIP take preparatory measures to enable the technical filing of audio trademarks, we have been informed that no initiatives have been taken so far for the technical filing of animated trademarks. As a consequence, the only way to go today is to file several representations in standstill with a description.

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It can be expected from GUIs generally or generic icons that they might lack distinctiveness and, as a consequence, they will not qualify for trademark protection. The same goes for the icons or typefaces that are part of a GUI. Only the GUIs that can indicate the commercial origin of the goods and services concerned can be protected by trademarks.

To our knowledge, Belgian courts have not issued any judgment regarding the question whether or not GUIs qualify for trademark protection. Few Belgian scholars have published doctrine in this respect.

Noteworthy are the following registrations and decisions issued on European level:

l Decision of April 8, 2016 of the EUIPO Board of Appeal regarding the following icon, part of a GUI[3]:

This icon would appear on an electronic device and would serve to easily separate credit card information, travel tickets, camera applications and restaurant reservations and receipts. Trademark registration was applied for class 9 (a.o. computers) class 10 (a.o. sensors) class 14 (a.o. watches) and class 28 (a.o. handheld electronic game units).

The Board considered that this icon is distinctive and that “typical users of tablets and mobile phones are particularly ‘savvy’ when it comes to identifying an icon and its function. They are accustomed to distinguishing between two more software applications, performing the same or similar operation, simply on the particular get-up of the icon.”

With this decision, the EUIPO Board of Appeal overruled the examiner’s decision that the icon had the appearance of a “typical icon” which indicated “where to store and find information in the indicated areas”. The examiner was of the opinion that, since icons are easy-to-find and easy-to-use, the design and colour variations on icons would only be seen by the consumer as aesthetic choices and would not be given any indication of commercial origin.

The EUIPO also allowed trademark protection for two variations[4] of this icon, prior to above mentioned decision.

l Decisions of April 14, 2015 of the Benelux Office of Intellectual Property, in which trademark protection has been denied for being too descriptive for the word marks PlayMore[5] and Play[6] for classes 9, 38, 41.

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l Decision of January 31, 2017 of the EUIPO Board of Appeal in which trademark protection has been granted for the following icon, for classes 16, 35, 38 and 41[7]:

l Decision of April 5, 2016 of the EUIPO Board of Appeal in which trademark protection has been denied for being too descriptive for the following icon, part of a GUI, for classes 9 and 38[8]:

To the contrary, the following icons have been registered as a trademark for the same classes[9]:

Footnotes

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1. ^

Directive 2015/2436 of the European Parliament and the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks.2. ^

Council Regulation 207/2009 of 26 February 2009 on the European Union trade mark as amended by Regulation 2015/2424 of the European Parliament and the Council of 16 December 2015.3. ^

EUTM 13 734 777; EUIPO Board of Appeal, 8 April 2016 (R 2434/2015-2).4. ^

IR 1175031and IR No 1 241 607.5. ^

Benelux Office for Intellectual Property, April 14, 2015 and Brussels June 29, 2016 (2015/AR/1185).6. ^

Benelux Office for Intellectual Property, April 14, 2015 and Brussels June 29, 2016 (2015/AR/1184).7. ^

EUTM 1286011 and EUIPO Board of Appeal, 31 January 2017( R1348/2016-5).8. ^

IR 1251555 and EUIPO Board of Appeal, 5 April 2016 (R2256/2015-2).9. ^

EUTM 11560067 and EUTM 003815644.

12.1. If not, are any types or aspects of GUIs protectable by trademarks?

13. If any type or aspect of GUIs are protectable as trademarks, under what conditions and to what extent can those types or aspects of GUIs protectable? As stated above, in accordance with the general trademark principles, both the verbal elements, sound as well as the visual aspects (e.g. icons, font, lay-out, colors …) of GUIs may be independently or cumulatively protected by trademark law if they identify the origin of goods and services of one undertaking to differentiate them from those of other undertakings (see question 12).

As a consequence, many verbal elements, icons and lay-outs parts of GUIs are protected as trademarks[1].

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Footnotes1. ^

EUTM 000440727 (Microsoft sign), EUTM 13 734 777 (Internet explorer icon); IR 1024082 (Word icon); EUTM 009265588 (lay-out of iPhone and iPad).

13.1. For example, is a screen movement or transition in a GUI protectable as a trademark? YesPlease Explain

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From a legal point of view, a screen movement or transition in a GUI is in theory protectable as a trademark since animated trademarks (that are in movement) qualify for trademark protection. Nevertheless, neither the EUIPO nor the BOIP provide for a filing of a digital or video file in this respect. Animated trademarks need to be filed in several representations in standstill (that cannot contain more than a one page document), together with a description that must clearly explain the movement for which protection is applied for.

As a consequence, the applications for trademarks in movement are rather limited. Nevertheless, several verbal elements and icons in movement, although no GUIs as such but icons forming part of online screen lay-out, have been recently registered as animated trademarks[1]:

Footnotes1. ^

EUTM 13225107; EUTM 008553133; EUTM 015775885.

14. Does a GUI need to acquire secondary meaning through use in order to be protected as a trademark? YesPlease Explain

In accordance with the general trademark principles, only the verbal elements, sound or visual aspects of GUIs that lack distinctiveness will need to acquire secondary meaning through use in order to be protected as a trademark.

Other forms of protection

15. Does your Group's current law provide any other means for protecting GUIs that are similar in nature to traditional IP rights? YesPlease Explain

Yes, there are means for protecting GUIs that are similar in nature to traditional IP rights.

Both the verbal elements, sound as well as the visual aspects (e.g. icons, font, lay-out, colors …) of GUIs can be protected by the rules regarding unfair competition.

16. If yes, what forms of protection are available, and under what conditions, and to what extent, are such other forms of protection available? Apart from traditional IP rights, other forms of protection are available to protect GUIs.

If a third party identically reproduces a GUI similar to that claimed (in a design or trademark application) and the creator has evidence that the third party is seeking to harm him, to copy him and/or to take advantage of his efforts, the rules regarding unfair competition are at his disposal, among others:

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l Article VI.104 CEL, which prohibits any act contrary to fair market practices, which damages or could damage the professional interests of one or more businesses;l Article VI.105.1° CEL, which prohibits misleading advertising, including misrepresentation regarding the commercial origin (a)) and ownership of intellectual property rights (c)).l Article 1382 of the Civil Code regarding tort.

II. Policy considerations and proposals for improvements of your Group's current law17. Does your law provide sufficient IP rights protection for GUIs? If yes, is that by means of any one or more types of IP rights protection (and if so, which), or by means of combination of those types of IP rights protection?

If no, please answer questions 18, if yes, please go to question 19 YesPlease Explain

Yes, Belgian law provides enough protection but by means of combination of different IP rights. For instance, both industrial design rights as well as copyrights may be obtained in relation to new technological designs such as GUIs and icons.

Trademarks and registered Community designs (RCD) can be valuable forms of protection as long as the requirements for registration are fulfilled. “RCDs have the advantage that they are easy to obtain and last for 25 years, but their protection is limited as they only cover the appearance of a product and its static elements. The same observation can be made for unregistered Community designs which amount only to a right to prevent the copying of the design and do not provide protection against the independent development of similar designs. Trademarks may then be an alternative, as they cover animated icon and GUIs[1].

Footnotes1. ^

T. Dubuisson, “IP Protection for Graphical User Interface in the EU, U.S. and China”, Journal Of Intellectual Property Law and Practice (JIPLP) – Oxford Journal, September 2015 p.767-774.

18. If no, how is your law deficient?

19. Is your law sufficiently clear on whether and to what extent GUIs are protected by various IP rights?

If no, please answer questions 20, if yes, please go to question 21 YesPlease Explain

Generally speaking, more uniform rules with regard to the areas mentioned in question 7 a)

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and question 12 (filing animated design applications and trademarks in movement instead of snapshots) would be seen beneficial when applying for such designs and trademarks.

20. If no, how is your law deficient in this regard?

21. Are there any aspects of your law that could be improved (for example, by strengthening or reducing the extent to which GUIs may be protected)?YesPlease Explain

Apart from the above side note (question 19), no other aspects of the BCIP could be improved.

III. Proposals for harmonisation22. Does your Group consider that harmonisation in this area is desirable? If yes, please respond to the following questions without regard to your Group's current law. Even if no, please address the following questions to the extent your Group considers your Group's laws could be improved. YesPlease Explain

Yes, harmonisation in the implementation of the various intellectual property rights regarding GUIs is desirable. Uniform criteria lead to a uniform level of protection and thus more legal certainty.

Patents

23. Should GUIs generally be capable of protection by patents?

If no, please answer questions 23.1, if yes, please go to question 23.2 YesPlease Explain

The BE-AIPPI does not see any reason to exclude GUIs as such from patent protection if they can be shown to produce a technical effect. Such an exclusion would be contrary to Art. 27(1) of the TRIPS Agreement that provides that, subject to some exceptions, patents shall be available for any inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application (see also Art. 52(1) EPC).

23.1. If not, should at least some types or aspects of GUIs be protectable by patents?

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23.2. Please explain your reasons.See above.

24. Under what conditions, and to what extent, should GUIs fall within the scope of patentable subject matter? GUIs should fall within the scope of patentable subject matter as soon as they can be shown to produce a technical effect.

24.1. For example, should involvement of user's mental activities in a GUI process affect the patentability of the GUI? NoPlease Explain

The involvement of user's mental activities in a GUI process should not affect the patentability of the GUI. GUIs are described by the guidelines to this study question as means of interaction between a user and an apparatus with any form of display. This seems to mean that GUIs always involve user’s mental activities to some extent.

24.2. Please explain your reasons.See above.

25. Should a physical feature be required in a claim as a pre-requisite for patentability of GUIs? NoPlease explain your reasons

No. The presence of a physical feature is not and should not be a pre-requisite for patentability, be it in relation to GUIs or to other kinds of inventions.

26. What claim formats should be available for protecting GUIs?There should be no limitation as to the claim formats available for protecting GUIs.

Design rights

27. Should GUIs generally be capable of protection by design rights?

If no, please answer questions 27.1, if yes, please go to question 27.2 YesPlease Explain

Yes, GUIs should be capable of protection by design rights.

27.1. If not, should at least some types or aspects of GUIs be protectable by design

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rights?

27.2. Please explain your reasons.See above.

28. Under what conditions, and to what extent, should GUIs be protectable by design rights? See question III. A. 2 above.

28.1. For example, should screen movements or transitions in a GUI be protectable by design rights? YesPlease explain your reasons.

See question III. A. 2 above.

29. Should a GUI be protectable by design rights independently from the design of the electronic device itself? YesPlease explain your reasons.

See question III. A. 2 above.

Copyright

30. Should GUIs generally be capable of protection by copyright?

If no, please answer questions 30.1, if yes, please go to question 30.2 YesPlease Explain

With the CJEU’s decision in BSA, it has been clarified for the member states of the European Union that GUIs are indeed protected under copyright (albeit not the specific copyright regime protecting computer programs). The common conditions of (i) expression and (ii) originality apply.

However the criterion for finding infringement could be clarified. The CJEU in BSA stated that in relation to GUIs only those reproductions and communication to the public are protected as restricted acts, which allow the user to have “access to the essential element characterising the interface, that is to say, interaction with the user, there is no communication to the public of the graphic user interface within the meaning of Article 3(1) of Directive 2001/29” (BSA, par. 57). This criterion differs from the originality criterion for finding a partial reproduction in Infopaq I and should be clarified.

30.1. If not, should at least some types or aspects of GUIs be protectable by copyright?

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30.2. Please explain your reasons.See above.

31. Should the fact that GUIs shown on screens are computer-generated affect the eligibility of GUIs for copyright protection? YesPlease explain your reasons.

Considering the increasing importance of digital technologies for the final expression of graphical works (including aspects of GUIs), it can be expected that the human / machine contributions will be litigated in the years to come. Harmonisation may be achieved by case law of the CJEU or, less so, by interpretative guidelines or opinions or possibly new legislation (e.g. on machine-generated creations).

32. Under what conditions, and to what extent, should GUIs protectable by copyright?

32.1. For example, should the overall "look and feel" of a GUI be protectable by copyright? NoPlease explain your reasons.

It should be avoided that the exclusive rights of one author extend to the “look and feel” (i.e. style, fashion) of a GUI, in order to safeguard a sufficient creative margin for other designers to operate. As for other utilitarian objects, it should be avoided that a style or a fashion be monopolised

Trademarks

33. Should GUIs generally be capable of protection as trademarks?

If no, please answer questions 33.1, if yes, please go to question 33.2 YesPlease Explain

The Belgian group is of the opinion that the verbal elements, sound as well as the visual aspects (e.g. icons, lay-out, colors …) of GUIs should be independently or cumulatively capable of trademark protection subject to the requirements of trademark law.

The Belgian group considers that there should not be any additional requirements for GUIs, icons, or fonts than provided in the (international) existing trademark provisions.

33.1. If not, should at least some types or aspects of GUIs be protectable as trademarks?

33.2. Please explain your reasons

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See above.

34. Under what conditions, and to what extent, should GUIs be protectable as trademarks?

34.a. For example should screen movements or transitions in a GUI be protectable as trademarks? YesPlease Explain

The Belgian group is of the opinion that screen movements or transitions in a GUI should be capable of trademark protection and that the legislation is sufficient. However, the filing practices with the trademark offices should be updated: the offices should be able to accept digital and/or video files within appropriate and harmonized guidelines, as long as the representation accurately represents the visual aspects.

34.b. For example should a GUI be required to acquire secondary meaning through use, in order to be protected as a trademark?YesPlease Explain

The Belgian group is of the opinion that secondary meaning through use is not required for trademark protection unless the GUI lacks distinguishing character.

Other forms of protection

35. Should there by other forms of protection for GUIs? If so, what forms of protection should there be?NoPlease explain your reasons

36. Should there be a sui generis right for protection of GUIs? If so, what aspects of GUIs should be protected by such a right, to what extent, and under what conditions?

If yes, please answer questions 37, if no, please go to question 38 NoPlease Explain

Not applicable.

37. Should there be any exceptions or limitations to a sui generis right in order to ensure an innovative and competitive market? If so, what exceptions and limitations should there be and why?

38. Please comment on any additional issues concerning protection of GUIs that your

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Group considers relevant to this Study QuestionNot applicable.

Please indicate which industry sector views are included in part "III. Proposals of harmonization" on this form:Not applicable.

Please enter the name of your nominee for Study Committee representative for this Question (see Rule 12.8, Regulations of AIPPI). Study Committee leadership is chosen from amongst the nominated Study Committee representatives. Thus, persons not nominated as a Study Committee representative cannot be in the Study Committee leadership.

Benoit Michaux