AIPPI 2017 - Study Question - Protection of graphical user interfaces

Study QuestionSubmission date: May 7, 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

France

Contributors name(s)

Catherine CASPAR, Axelle COLLIN, Charles DE HAAS, Blandine FINAS-TRONEL, Frédéric GLAIZE, Francis HAGEL, Corinne HUBERT-SAINTOT, Lauri

ne JANIN-REYNAUD, Charles-Antoine JOLY, Thibault LANCRENON, Anne LAURENT, Enrico PRIORI, Mathilde SUZÉ, Jérôme TASSI

e-Mail contact

glaize@plass.com

I. Current law and practice

Patents

1. Can GUIs generally be protected by patents?

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

However, only technical aspects or, more generally, aspects that contribute to obtaining a technical effect and therefore to a GUI’s technical character, may be eligible for patent protection[1]. Non-technical aspects (aesthetic aspects, for example) may only be protected in other appropriate way separate from patent law.

Footnotes1. ^

EPO examination guidelines, G-VII, 5.4; INPI examination guidelines, C-VII.1

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? In order to be eligible for patent protection, GUIs must meet the same criteria for patentability as all inventions (invention, novelty, inventive step and industrial application conditions). As will be examined hereafter, in practice, only the first (invention) and third (inventive step) conditions raise difficulties when applied to GUIs.

2.1 The invention condition

2.1.1. In France, in order to be considered as an invention, a GUI must produce an “additional technical effect” (i.e., that goes beyond the simple use of a classic computer); certain decisions also require there to be a technical contribution to prior art. Regarding GUIs in particular, such contribution must be independent from the system for presenting information[1].

In concrete terms, a GUI in which only technical elements are known will be considered as a presentation of information and/or a computer program which is per se not patentable.

As a result, a GUI consisting only of presented information or the organisation of such information does not appear to be patentable.

2.1.2 According to EPO case law, the presence of a technical feature, even if the feature is known, suffices for an invention to be patentable[2].

A GUI is intended to facilitate interaction between a user and a machine. Claims seeking to protect a GUI therefore always contain technical elements. A GUI will thus generally be considered as a patentable invention.

2.2 The inventive step

2.2.1. In France, the specificities of GUIs are taken into account when analysing the invention requirement and do not call for any clarification with respect to the inventive step.

2.2.2. According to the EPO, it is necessary that the GUI has a technical element, i.e., of a nature to “produce a technical effect serving a technical purpose”[3] .

The EPO focuses on the cognitive content of the exchanged information (A: “why”) and the manner in which the information is exchanged (B: “how”).

A. The cognitive content of the exchanged information is taken into account when such information has a technical character. This is notably the case of the display of information relating to the internal state of a dynamic technical system[4]. A more recent decision, which is stricter, requires that the GUI, along with the displayed cognitive information, credibly assists

the user in carrying out a technical task by means of a continuous and/or guided human-machine interaction process[5].

B. The manner in which the information is communicated may, in certain cases, be considered as technical. This is the case when a specific hardware device is used, but also when the arrangement of graphic elements allows for a conflict between contradictory technical requirements to be resolved (case of a football video game, characterised by the particular positioning of a marker indicating the passing of the ball, allowing to display an enlarged image all while retaining an overall view of a larger area).[6]

Likewise, a decrease in the user’s cognitive load may be recognised if it is obtained by technical means[7], for example image processing functionalities. This will not be the case if the decrease results only from the arrangement of graphic elements[8].

Footnotes1. ^

Paris Tribunal de Grande Instance, 7 June 2013 Starsight Telecast Inc. v. Numericable et al.2. ^

T258/03 (Hitachi)3. ^

Directives, G-VII, 5.4.4. ^

T362/905. ^

T336/146. ^

T928/037. ^

T643/00 (Canon)8. ^

T1741/08 (SAP AG)

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

Neither French law, the EPC, French or European examination guidelines, nor case law contain any provisions requiring a specific claim format for patent protection of GUIs.

In practice, GUIs are generally protected through claims of: process, apparatus/device/system, computer program product, computer readable storage medium storing code instructions, signal. However, a recent court decision refused to admit the principle of a “computer program product” claim[1].

Footnotes1. ^

18 June 2015, Paris Tribunal de Grand Instance (ORANGE / FREE)

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

Neither French law, French or European directives nor case law explicitly require the presence of physical features in a claim relating to a GUI.

5. To what extent does involvement of the user's mental activities in a GUI process affect the patentability of the GUI? This question is not directly addressed by French law or by the EPC.

The INPI’s guidelines do not address the question of the impact of a user’s mental activity on the patentability of GUIs.

However, EPO directives, based on the positioning of the Boards of Appeal, specify that the fact that an invention involves mental activities “does not on its own render the subject-matter non-technical” but that “a feature that solely addresses a user's subjective preferences does not solve a technical problem.”

In summary, the impact of the user’s mental activities on the GUI’s implementation/process is not, per se, a cause for exclusion of patentability in that it is inherent to the nature of the GUI, which precisely is to interact with the user.

This is the EPO’s position in principle.

However, the EPO tempered the stated principle in the particularly interesting case where, as the EPO puts it, the technical chain is broken by the user’s mental activity such that a “credible technical effect” no longer exists, or that the technical effect is indirect as it depends on the user’s interactions with the GUI, which interactions notably result from the user’s mental processes as a reaction to what is displayed by the GUI.

According to decision T1741/08 of 2 August 2012 (“SAP AG”, relating to an improved presentation of information on a computer screen, which was intended to reduce the users’ cognitive load), the EPO Technical Board of Appeal considered that the invention in question did not produce any credible technical effect towards known technical effects of prior art, to the extent that the technical chain had been broken due to the involvement of the user’s mental process. This was the case because the invention primarily sought to decrease the user’s cognitive load, i.e., did not normally contribute to the technical resolution of a technical problem, even if, indirectly, the decrease in the cognitive load led to a more optimal utilisation of the machine’s resources.

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 YesPlease Explain

French design rights resulting from the transposition of Directive 98/71 of 13 October 1998 institute industrial property rights relating to “the appearance of a product or part of a product” (definition of “design”, article 1 a) of the Directive). The concept of “product” is defined in the following subparagraph (Article 1 b)) as being “any industrial or handicraft item, including, inter alia, parts intended to be assembled into a complex product, packaging, get-up, graphic symbols and topographic typefaces, but excluding computer programs”.

If we consider that an interface constitutes part of a computer program, the exclusion of computer programs in the above-referenced definition could lead one to believe that graphic interfaces are excluded from the concept of products to which designs apply.

For example, it was argued that the exclusion by the Directive and by Article L.511-1 of the French Intellectual Property Code of “‘computer programs’ from the definition of ‘product’ consequently makes it impossible to protect the ‘appearance’ of a computer program as a design. By this imperfect expression, the text refers to the software’s graphic interface (‘look and feel’)” (JurisClasseur Civil, annexes, booklet 1155).

However, to our knowledge, this interpretation is admired by few.

On the contrary, several authors have underscored that, in this context, it would be appropriate to distinguish computer programs from their interfaces, since interfaces “certainly do not constitute the appearance of the software and could, theoretically, be protected”, according to Jérôme Passa (Répertoire de droit commercial, Dalloz, §24, citing the thesis of F. Sardain, La propriété intellectuelle à l’épreuve du logiciel. L’exemple des interfaces. Poitiers 2002). According to Denis Cohen, while copyright protection of interfaces is allowed, to hold that the registration of designs cannot be similarly protected would constitute a breach of the principle of artistic unity (Le nouveau droit des dessins et modèles, Economica, 2002, §11).

In the preparatory works for the Regulation on Community designs, the Commission expressed a favourable position on design protection of interfaces. Regarding the definition of “products” and the exclusion of computer programs, the Commission indicated that such “exclusion may seem superfluous since computer programs as defined in the Directive on the legal protection of computer programs cannot be designed. It may be useful, however, to state explicitly that copyright protection provided under the umbrella of the aforementioned Directive cannot be supplemented or reinforced by a protection of the “look and feel” of a computer program by way of design protection. This does not exclude the protection of specific graphic designs as applied, for example, to icons or menus provided the normal requirements for protection are met” (Commission, Com(93) 342 final-COD 463, 3 December 1993, on the Draft Regulation of the European Parliament and the Council on Community designs, page 11 ; http://eur-lex.europa.eu/LexUriServ/LexUriServ.do?uri=COM:1993:0342:FIN:EN:PDF).

In practice, the INPI and the EUIPO accept the registration of designs for which the product indication is, for example, “icons [computer]” or “graphic user interfaces [computer screen layout]”, which the Locarno Classification explicitly provides for in Class 14.04. The EUIPO’s Guidelines confirm that “designs of screen displays and icons and other types of visible elements of a computer program are eligible for registration” (Guidelines for Examination of Applications for Registered Community Designs, version 1.0 dated 1 August 2016, §4.1.3. Icons).

For example, the following registrations were published under Class 14.04:

l No. 20161293 (INPI), described by the applicant as: “Graphic representation of a behavioural state. Graphic user interface (display on a computer screen)”: http://bases-modeles.inpi.fr/Typo3_INPI_Modeles/dessins_fiche_resultats.html?id=FR20161293-0001l No. 20164015-001 (INPI), described by the applicant as “Interface home page (ePack Hygiene V3). Graphic user interface”: http://bases-modeles.inpi.fr/Typo3_INPI_Modeles/dessins_fiche_resultats.html?id=FR20164015-0001l No. 20162161-001 (INPI), described by the applicant as “Site’s home page with worlds. Graphic user interface Jolydays home page”:

http://bases-modeles.inpi.fr/Typo3_INPI_Modeles/dessins_fiche_resultats.html?id=FR20162161-0001

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? See answers below.

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

The fact that the graphic interface appears only temporarily on a screen or electronic device does not prevent protection.

Directive 98/71, Regulation 6/2002 and Book V of the French Intellectual Property Code do not explicitly or implicitly condition design protection of a product’s appearance upon the permanence of such appearance.

Without a doubt, if the appearance of the GUI for which protection is sought was so fleeting that an informed user’s (or observer’s) brain would not have the time to become aware of it (for example, a subliminal image), there would be nothing to protect, due to the lack of a “global impression” of which an informed user would be truly aware.

In a decision dated 6 June 2013 (General Court of the European Union, matter T-68/11), the issue at hand was the validity of the registration of Community design no. 000602636-0003, views of which are included below. If the validity was disputed only with regard to prior rights, we may note that the contested Community design was qualified by the GCEU as “an uncomplicated form of a watch dial that changes colour” (§71).

In addition, if a graphic interface is, by its nature, intended to change depending on interactions with the user, the registration of a design cannot relate to the interactivity of the interface, that is to say, its operating principles. On this point, the above-referenced decision states that “the law relating to designs protects the appearance of the whole or a part of a product, but does not expressly protect the ideas that prevailed at the time of its conception. Therefore, [it is not possible to] seek to obtain, on the basis of the earlier designs, a protection for those designs’ underlying idea, that is, the idea of a watch dial that makes it possible to tell the time on the basis of the colours of the discs that compose it” (TUE 6 June 2013, §72).

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

The product to which the design applies can be directly considered as itself being an interface (or certain of its component parts) and not the electronic product that hosts it. In this vein, product indications contemplated by the Locarno Classification are explicit (see the examples provided in responses to Questions 6 and 7c).

Moreover, the scope of the protection is not intended to be limited by the product indication or the classification indicated at the time the design is filed.

Indeed, with respect to Community designs, the foregoing is expressed in Article 36 of the Regulation on Community Designs, which notably provides that:

“(…)

2. The application shall further contain an indication of the products in which the design is intended to be incorporated or to which it is intended to be applied.

3. In addition, the application may contain:

d) the classification of the products in which the design is intended to be incorporated or to which it is intended to be applied according to class;

(…)

6. The information contained in the elements mentioned in paragraph 2 and in paragraph 3(a) and (d) shall not affect the scope of protection of the design as such.”

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

Both the Directive and the Regulation accept the protectable nature of “graphic symbols and typographic characters”. All icons, slide buttons and other small elements of a graphic interface are composed of graphic elements or letters, such that they correspond to “graphic symbols and typographic characters” and, not being computer programs per se, therefore appear to be protectable by design rights.

In practice, the Locarno Classification expressly covers icons in Class 14.04.

Regarding icons, as an example, the following design was able to be registered:

No. 000748694-0015 (EUIPO) covering “Icons”: http://euipo.europa.eu/eSearch/#details/designs/000748694-0015

Regarding slide buttons, the following design was able to be registered:

No. 000171582-0017 (EUIPO) covering: “Icons”: http://euipo.europa.eu/eSearch/#details/designs/000171582-0017

Therefore, nothing excludes the protection of these elements so long as they also meet, as is the case with any design, the conditions of novelty and individual character and that their

appearance is not exclusively imposed by the interface’s technical function.

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

In its Guidelines (Examination of Applications for Registered Community Designs, version 1.0 of 1 August 2016), explicitly confirms that the same product may be represented in alternative positions (§5.2.1) and that sequences of snapshots (animated designs) (§5.2.6) may be registered. One of the examples illustrating the latter point is Registered Community Design No. 2085894-0014.

The Convergence program relating to the graphic representation of designs (CP6, 15 April 2016) implemented by the INPI also provides for the possibility of representing a sequence of snapshots for animated designs.

It is necessary that such unique design be represented at different moments, according to a clearly understandable progression. It is specified that the views must be visually linked among themselves in such a way that the graphic representation is a faithful one[1].

Regarding a design relating to a movement or a transition, and therefore whose appearance changes over a certain period of time, the overall impression must take into account the movement as a whole. Put otherwise, the appearance of a design in movement cannot be reduced to a single one of the stages that it assumes during the course of the movement or the transition.

In practice, the following movement was registered:

No. 002765396-009 (EUIPO) covering “animated graphic user interfaces”: http://euipo.europa.eu/eSearch/#details/designs/002765396-0009

The following design was also able to be registered:

N°001392781-0025 (EUIPO) covering “animated graphic user interfaces”: http://euipo.europa.eu/eSearch/#details/designs/001392781-0025

Footnotes1. ^

In the framework of assessing the individual nature of a design registered as “animated icons” and represented by three views, the lack of an easily understandable progression from one view to another led the EUIPO’s Third Board of Appeal to decide that the design in question “must be considered as consisting of the three views registered, which are to be perceived by the informed user individually and not at the same time.”, EUIPO, Third Board of Appeals, 1 December 2016, Matter R 1948/2015-3, §42). The solution adopted in this case may nonetheless appear to contradict the requirement that views be consistent (Guidelines for Examination of Applications for Registered Community Designs , §5.2 page 31).

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

It would be possible to consider the protectable nature of the noises, sounds or vibrations present in certain interfaces. However, these elements fall outside of the scope of this Study, which is limited to the graphic component of user interfaces.

In addition and more generally, the various elements featured on a graphic interface may be protectable if they meet the conditions of novelty and individual character and their appearance is not exclusively dictated by their function.

As an example, a keyboard appearing on a screen was registered:

002449074-0013 (EUIPO): http://euipo.europa.eu/eSearch/#details/designs/002449074-0013

The background appearing on the interface could also be protectable. Indeed, Article L.511-1 of the French Intellectual Property Code expressly refers to the product’s ornamentation: the background can therefore fall into this category.

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

In its illustrative list of works that are protectable by copyright, Article L.112-2 of the French Intellectual Property Code notably refers to “software” and “graphical works”, without expressly citing GUIs.

The copyright regimes applying respectively to these two categories of works being very different, the question was raised, particularly with respect to video games, of whether GUIs should be considered as software works, subject in that respect to the specific law on software that applies in the European Union, and/or as non-software works covered by general law.

In a decision dated 21 June 2000, the Criminal Chamber of the French Court of Cassation had seemed to want to connect graphic interfaces to the specific law applying to software, holding that “the computer programing of an electronic game being inseparable from the combination of sounds and images comprising the various phases of the game, the assessment of these elements allows the original nature of the counterfeited software to be determined” (French Court of Cassation, Criminal Chamber, 21 June 2000, 99-85154). However, in is Cryo decision dated 25 June 2009, the First Civil Chamber of the French Court of Cassation held on the contrary “that a video game is a complex work that cannot be reduced solely to its software dimension, irrespective of the significance of such dimension, such that each of its components is subject to the regime that applies to such component depending on its nature” (French Court of Cassation, First Civil Chamber, 25 June 2009, 07-20387).

This debate on the connecting GUIs to the specific law applying to software or to general copyright law was decided by the Court of Justice of the European Union (CJEU) in its

Bezpe?nostní softwarová asociace decision of 22 December 2010 (C-393/09).

After having noted that “interfaces are parts of a computer program which provide for interconnection and interaction of elements of software and hardware with other software and hardware and with users in all the ways in which they are intended to function” and, that as such, they do not enable “the reproduction of that computer program”, the CJEU ruled that a GUI “does not constitute a form of expression of a computer program within the meaning of Article 1(2) of Directive 91/250” of 14 May 1991 on the legal protection of computer programs and that, as a result, could not benefit from the specific protections applying to computer programs as a matter of law. In a decision dated 21 October 2016 (RG 15/17224), the Paris Court of Appeals recalled this solution.

The CJEU’s decision underscored, to the extent that the Ministry of Culture of the Czech Republic contested in the facts giving rise to the dispute, that a GUI “can, as a work, be protected by copyright if it is its author’s own intellectual creation”.

The same is true for its different elements taken individually, subject to complying with the criteria applying to general copyright law.

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? NoPlease Explain

If the GUI is only the result of the work of a machine, without human intervention (such as satellite images, for example), the GUI cannot be considered to be a creation that can qualify for copyright protection.

If, however, the interface results from creative choices implemented by a computer (creation assisted by a computer), the interface may be protected by copyright if it is original. For example the Paris Court of Appeals noted, in a decision dated 15 March 2016 that “recourse to instruments or tools for the creation does not prevent the protection of a work (…)” the creation of which was “assisted by a computer, so long as it involves (…) human intervention and the choices of the author leading to the creation of an original work and as such protectable, regardless of the assessment of its merits or its quality, which are without import (RG 14/17749).

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?10.1 Regarding the conditions for protection

The conditions for protection of graphic interfaces under copyright law are the same as for other types of works. To be protected, a graphic interface must meet the originality requirement. Failing a definition of this requirement in the French Intellectual Property Code, case law considers that originality results from the “author’s own intellectual creation” (according to the CJEU) or “expresses the author’s personality” (according to French case law).

In order to assess the originality of such a work, according to the CJEU, the judge must take into account in particular “the arrangement or specific configuration of all of the components

making up the graphic user interface in order to determine which of them meet the originality requirement” (decision of 22 December 2010 referred to above). In this regard, this requirement cannot be met by components of the GUI that are only characterised by their technical function.

Protection of graphic interfaces that are dictated solely by their technical function is therefore not possible. In a decision dated 20 October 2015 (RG 13/07491), the Rennes Court of Appeals held that the “protection conferred by copyright notably can apply to the form of an intellectual work only if the form can be separated from the function, if the ornamental or aesthetic characteristics can be separated from its functional characteristic, distinguishable from the technical result that it procures.”

10.2 Regarding the scope of the protection

Only original visual impressions (aesthetic in particular) that are separable from technical functions may therefore be directly protected by copyright law.

Technical interaction functionalities are therefore not directly protected, it being noted, however, that the protection granted in addition to and separate from the software forms of expression may nevertheless acquire an indirect form of protection, in that it will force a person wishing to illegally copy or imitate a GUI to not do so by copying software forms of expression protected by specific copyright law.

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 NoPlease Explain

The notion of “look and feel” specific to GUIs is the subject matter of numerous definitions, most of which combine all at once GUIs’ attractive visual impressions and their ergonomic qualities (certain GUIs may even as such acquire an identity).

However, as we have seen, the visual impression (look) must be considered separately from the interactive functions in order to be protected by general copyright law, and everything relating to ergonomics appears too inseparable from interaction functionalities to be able to be protected on that basis, irrespective of whether the GUI is considered as a whole or on an element by element basis.

Finally, if “look and feel” winds up exercising an identification function due to its extensive use, the question of whether it can thus acquire a distinctive character to be protected as a trademark will be examined hereafter (see the response to Question 14).

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

See above and the answer to Question 8.

Trademarks

12. Can GUIs generally be protected as trademarks?

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

First, it should be noted that, to our knowledge, the question of whether GUIs are protected by trademark law has not been the subject of any debate in France, whether in case law or in doctrine. The responses provided to the questions relating to the protection of GUIs by trademark therefore reflect the interpretation of French and European legal texts as the French Group would apply them to GUIs.

Theoretically, and so long as the requirements for obtaining trademark protection are met, the GUIs appear to be able to be protectable by this protection regime.

However, the conditions of validity of trademarks, as discussed hereafter in response to Question 13, will, in theory, be particularly difficult to meet by a GUI taken as a whole, due to its interactive characteristics.

Certain elements of graphic interfaces may be protected as a trademark but then they are no longer considered as interactive elements of an interface but rather as the sign indicating the origin of a product, generally software or a software group, or even interfaces that are listed under Class 9 of the Nice Classification (no. 090603). This would notably be the case of icons, for example:

EUTM No.015442502 (Instagram icon) http://euipo.europa.eu/eSearch/#details/trademarks/015442502

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? Regarding protection requirements

As a reminder, Article L.711-1 of the French Intellectual Property Code, as well as Article 4 or Regulation (EC) no. 207/2009 set forth the eligibility criteria for trademark law protection. The following may be protected by trademark law:

l a sign (defined by the CJEU as “any message that may be perceived by one of the five physical senses”)

l that can be graphically represented, i.e., a visual representation using figures, lines or characters in a clear, precise, in itself complete, easily accessible, durable and objective (CJEU 12 December 2002, Sieckman judgment). This requirement has just been eliminated by the new Directive 2015/2436 (Article 3) and the new Regulation EU 2015/2424 (Article 4) of 16 December 2015. From now on, the sign must be “represented on 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”. This provision will enter into effect on 1 October 2017 with respect to European trademarks and 14 January 2019 at the latest with respect to French trademarks (once the Directive has been transposed into national law).l Capable of serving to distinguish an entity’s products or services from those of another entity (the so-called “independent” distinctiveness affirmative condition) and, in turn, not necessary, nor generic, common, descriptive or constituted by the form imposed by the

nature or the function of the product or giving it its substantial value.

In addition, Article L.711-2 c) of the French Intellectual Property Code, as well as Article 7.1.e) i) of Regulation (EC) no. 207/2009 exclude from trademark protection signs that are exclusively made up of the form imposed by the product’s function.

Thus, graphic elements that make up a graphic interface – such as icons, menus, scrollbars, windows or sign-in or transition systems – are, in principle, eligible for protection under trademark law. However, this will not be true of those whose form is imposed by their function or the nature of the product, or that contribute to the products substantial value and/or that do not have the required independent distinctive character, that is, the capacity of being perceived as an indicator of origin.

Regarding the scope of the protection

In practice, only abstract elements of interaction functions (for example, the arbitrary shapes of icons) may be protected as a trademark to fulfil the essential function of the indicator of origin of the designated goods or services. If, and only if, the designated goods are GUIs or software, indirect protection of the elements of the GUI constituting the registered trademark may result, but the scope of such protection will remain limited.

Indeed, the scope of such protection will always be limited by the principle of essential purpose: the sign constituted by such a graphic interface element will only be protected as a sign identifying the designated goods or services and not as an element of interfaces allowing for machine/user interaction.

We see, besides, that most often in practice, the sign registered as a trademark pre-exists and is only added in a separable manner to certain elements of the graphic interface, which could function without it. This is the case, for example, of the W logo in the icon of Word software, which was the subject of several trademark registrations, such as:

l International trademark no. 1305854l International trademark no. 1135748l International trademark no. 1024082l European Union trademark no. 5576161

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

EUIPO accepts to register an animation as a trademark.

This is notably the case of EU trademark, no. 8581977 “Red liquid flowing in sequence of stills” relating to a colour animation filed by Sony (https://euipo.europa.eu/eSearch/#details/trademarks/008581977), which was registered with the following description:

"This is a motion trademark in colour. The motion is that of a trailing ribbon with a liquid-like appearance (the “ribbon”). The ribbon flows around and ultimately into a sphere design (the “sphere”). The duration of the motion lasts approximately 6 seconds. The stills in the sequence are spaced approximately 0.3

seconds apart. The stills are evenly spaced from the beginning to end of the sequence. The first still is the upper left still. The last still (20th) is the middle still in the bottom row. The stills follow a progression from left to right within each row, before moving down to the next row. The precise sequence of the stills is as follows: in the first still, the ribbon enters the frame in the upper edge of the frame and flows down the right edge of the frame, before flowing upward in the 2nd to 6th stills. During that phase of motion (in the 4th still) the end of the ribbon is shown, producing the effect of a trailing ribbon. In the 6th to 17th stills, the ribbon flows counter-clockwise around the frame. From the 9th still onwards, the sphere immediately moves into the centre of the frame. The interior of the sphere is the same colour as the ribbon. The ribbon flows around the sphere. In the 14th still, the ribbon enters the sphere, as if being pulled inside. In the 15th to 17th stills, the ribbon disappears inside the sphere. In the 19th and 20th stills, the sphere moves toward the viewer, gaining in size and ending the motion.

Colour

Red."

However, the EUIPO requires that the graphic representation of the animated trademark be accompanied by a description in order to make it clear, precise, intelligible and objective (decision of 23/09/2010, R 443/2010-2, RED LIQUID FLOWING IN SEQUENCE OF STILLS (al.), § 20).

Therefore, the description must clearly describe the movement that characterises the sign and such description must match the movement that results from the evolving graphical representation of the sign.

Certain members of the Group believe that in the case of a moving transition or, more generally, a graphic interface element having multiple and variable forms (such as those resulting from a “drag and drop”), the overall animation can be considered as being informational and functional and, consequently imposed by the nature or function of the interface and/or not likely to be perceived as a sign indicating origin, particularly since such moving forms often give designated products (software or interfaces) a substantial value.

Under these circumstances, such animations would therefore need to be separated from any graphic interface and should be used exclusively as trademarks identifying distinct goods or services, which, in the latter case, would however be of no interest in the perspective of GUIs.

However, transition animations whose form is not necessarily functional should be eligible for protection.

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

The acquisition of a distinctive character through use does not constitute an additional condition if the basic protection requirements are met.

Certain signs that are inherently excluded from protection may nevertheless merit protection under trademark law if their use leads them to acquire a distinctive character that was lacking in the first instance (Article 6 quinquies of the Paris Convention, paragraph 2 of Article L.711-2 of the French Intellectual Property Code and Article 7.3 of Regulation (EC) no. 207/2009).

In order to acquire this distinctive character, continued and extensive use for a long duration must be evidenced, such that the inherently non-distinctive sign nonetheless winds up being perceived as being a distinctive sign by consumers, which in practice is very rare.

In addition, the affirmative role of use is excluded with respect to signs whose form is imposed by the product’s nature or function (last paragraph of Article L.711-2 of the French Intellectual Property Code and Article 7.3 of Regulation (EC) no. 207/2009), such that the elements of graphic interfaces whose form is imposed by their function and that are not already inherently distinctive cannot acquire such distinctive character which they lacked at the outset.

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

Under positive French law, actions on the grounds of unfair competition or parasitism are so widely open that they could allow GUIs to be protected; not against everything, but only against a competitor or a specific operator whose conduct is unfair, or parasitic and prejudicial.

An action on the grounds of unfair competition and parasitism therefore does not punish an infringement of a property right that is enforceable against all persons, but rather conduct that is offending and prejudicial.

Such an action is therefore clearly distinguishable from an action on the grounds of infringing upon an intellectual property right. However, the effects of such an action resemble those of an action for infringement since such an action also seeks to obtain an injunction prohibiting from proceeding with the infringing acts and financial compensation. This form of protection may even reveal itself to be advantageous since it is not subject to the same restrictive conditions nor to the same limits on the scope of protection that are specific to each intellectual property right.

Such actions may be exercised independently from any action for infringement of an intellectual property right, or even in the alternative to an action for infringement in the context of a subsidiary action in the event the infringement claim is unsuccessful. (Com 4 February 2014, PIBD 2014, 1003, III, 318).

Applied to a GUI, such actions will seek to condemn and prohibit use of certain of the constituent elements of the GUI under conditions that will be explained hereafter.

16. If yes, what forms of protection are available, and under what conditions, and to what extent, are such other forms of protection available?Unfair conduct, such as the imitation of a graphic interface, may be treated under two legal bases, both of which arise from liability in tort (Article 1240 of the French Civil Code):

l

unfair competition, which in theory requires a fault and a risk of confusion between two interfaces;l

the theory of parasitic conduct, which is defined as the situation where “an enterprise slips itself into the wake of another in order to gain an advantage, without expenditure, from its effects and its know-how.” Contrary to the preceding basis of liability, a competitive situation is not required.The requirements to be met in order to warrant the protection afforded by an action on the grounds of unfair competition or parasitism are those of general tortious liability, even if certain adjustments are applied. Thus, the existence of a fault, a loss and a causal link must be established.

Above all, demonstration of these three elements requires that the (prior) position of the plaintiff on the market be established, before demonstrating unfair competition or parasitism born of the appearance (subsequent) of the competitor. The burden of proof on both of these fronts is a heavy one.

With respect to unfair competition, simple imitation often suffices to characterise and evidence the fault, but such fault must be prejudicial, as is the case when it generates a risk of confusion in the minds of clientele.

With respect to parasitism, it must be demonstrated that substantial efforts or investments were made with respect to the design and/or promotion of the interface (Paris Com. Court, 28 September 2015 Sound Strategy v. Concepson), or a certain notoriety acquired by the interface in question in the wake of which the usurper sought to place itself must be demonstrated (Paris Court of Appeals, Division 5, ch. 4, 7 October 2015, Indus. Prop. 2016, comm. 83).

In the latter case, the Paris Court of Appeals held “that it results from the screen shots submitted into evidence by the parties that the home pages of both sites are practically similar, and that the layout, content, name and arrangement of the titles were nearly identical on both sites; that, thus, the “My journal” and “Follow this outing” functionalities were used on the “dailyfriends.com” site by M.R., who does not dispute being a member of the “onvasortir.com” site since 11 January 2009; […] Considering the notoriety and imitation of the “onvasortir.com” site, as well as M.R.’s intention to place himself in Netuneed’s wake are established; that, as such, M.R. committed acts of parasitism;”.

Finally, and above all, irrespective of whether the action is based upon unfair competition or parasitism, the reproduction or imitation of functional forms is not liable to sanction (on this point, see Jérôme Passa’s doctoral thesis published in the business law collection of the IRPI, no. 15, § 263 and 265, which cites early case law for unfair competition, and §365 for parasitism confirmed since then according to booklets 160 and 227 by the same author in JurisClasseur Concurrence – Consommation). However, certain members of the Group believe that, in certain additional situations characterising unfairness or parasitism, an action based on unfair competition or parasitism should always remain available.

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 NoPlease Explain

Title by title, protection of GUIs appears to be insufficient, but, for the most part, French law taken as a whole results in relatively satisfactory protection.

18. If no, how is your law deficient?Generally speaking, allocating protection among various legal basis, with exceptions specific to each of these basis, would be far too complex to implement in practice.

In particular, with respect to patents , the EPO’s practice with respect to inventions including both technical and non-technical elements, which consists of introducing non-technical problems in the statement of the objective technical problem when such non-technical problems are not disclosed in the closest state of the art, amounts to inappropriately reducing the inventive step and, in certain cases, amputates the examined object from certain of its characteristics in such way that its nature can be completely changed.

With respect to design rights, an improved definition of products (especially in light of the exclusion of computer programs) is recommended, as is an increase in the number of views (7) that may be filed with the EUIPO, so that animations are better protected.

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 NoPlease Explain

NO, as the legislature has not provided for the particular case of GUIs on any grounds whatsoever.

20. If no, how is your law deficient in this regard?Regarding patents, neither French law nor the European Patent Convention explicitly address the issue of the patentability of GUIs. There is scant French judicial case law relating to the patentability of GUIs. It is therefore insufficiently clear or established. The case law of the EPO Boards of Appeal is much more fulsome, but appears rather case-based and difficult to systemise. In addition, the EPO and French courts use very different approaches to assess the patentability of inventions such as GUIs (cf. response to Question 2). This eventually reduces legal certainty. Finally, only the characteristics of a GUI that contribute to its “technical character” can contribute to its patentability. Yet, the notion of “technical character” has never been precisely defined and seems particularly difficult to define in the case of GUIs. This is the principal cause of legal uncertainty.

Regarding designs, as we saw, the definition of the appearance of the product or part of the product that is protectable should be specified in the case of GUIs.

Regarding copyright law, case law (of the CJEU) has provided clarifications but they are extremely sophisticated and are not easily usable from a practical point of view.

Finally, with respect to trademark law as with unfair competition or parasitism, case law is not yet settled, and we can only try to apply general principles with a margin of error that cannot be reduced.

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

As regards patents, legal certainty would be improved if case law more clearly defined what is meant by the “technical character” of an invention. Optimally, a broad meaning, including progress in the area of ergonomics, should be retained.

With respect to the other bases of protection, the legislature should reduce the deficiencies that were raised in the response to the previous question (Question 20).

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

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

It would seem that patent protection should be limited to the technical aspects of GUIs.

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

23.2. Please explain your reasons.

24. Under what conditions, and to what extent, should GUIs fall within the scope of patentable subject matter? GUIs should be subject to the same patentability requirements as all other inventions. In particular, in order to be patentable, GUIs should resolve a technical problem.

24.1. For example, should involvement of user's mental activities in a GUI process affect the patentability of the GUI? No

Please Explain

The simple fact that a user’s mental activities are involved shouldn’t be, in itself, a cause for excluding patentability.

24.2. Please explain your reasons.Indeed, the involvement of mental activities is part of the very nature of GUIs, and more generally, all inventions that are intended to interact directly with human beings.

This position matches the positive law of the EPO.

However, we believe that reducing the user’s cognitive load – on the condition that the reality of such a reduction for a significant majority of users can be credibly proven – should be considered to be a technical problem. Thus, it should be taken into account in the assessment of the inventive step, even when it results only from the particular arrangement of certain graphic elements.

Indeed, ergonomics is a technical discipline that has scientific foundations, in the same way as do mechanical engineering and biotechnology.

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

It is advisable that the interaction principles in GUIs be able to be protected independently from the product (computer, watch, electronic display in a car, etc.) in which such a GUI may be included. In addition, patents should be able to cover embodiments relying on any possible technical evolution with remotes, remote interfaces, virtual screens, cerebral commands, augmented reality glasses, etc.

26. What claim formats should be available for protecting GUIs?In order for GUIs to be protected effectively and to allow effective legal actions against players involved in the various levels of the manufacture, sale and distribution of GUIs, all categories and forms of claims should be able to be used, particular those that currently apply to computer programs: process, apparatus/device/system, computer program product, storage media, signal.

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

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

rights?

27.2. Please explain your reasons.It would seem appropriate to allow the appearance of interfaces and interface elements to be protected by design rights.

However, protected forms should be not exclusively imposed by the interface’s technical functionalities.

28. Under what conditions, and to what extent, should GUIs be protectable by design rights? The conditions applying to protection of interfaces and interface elements should not differ from those of other types of designs.

Thus, the fact that an interface is intended to facilitate interactions with software does not exclude the protection of certain of its visual forms to the extent that they are not exclusively imposed by one or more technical functions.

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

Similarly, it seems advisable to favour design protection for animated elements of graphic interfaces to the extent that they are not exclusively imposed by one or more technical functions.

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

The protection of an interface or an interface element must not be linked to the appearance of the electronic device capable of making the interface work or that works thanks to the interface.

The “product” to which the design applies must be considered as being the interface itself, and not an electronic device that works thanks to software and software interfaces.

Moreover, it is frequently the case that an application or software be provided under different formats (for example: iOS / Android or Windows / Mac). Connecting the interface to the device would penalise the applicant by requiring it to accomplish multiple registration formalities. In addition, innovation cycles for electronic media (such as smartphones) are particularly short; linking an interface design to an electronic device would require applicants to make filings for any change in the device, which would create an excessive burden.

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

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

30.2. Please explain your reasons.It would seem opportune to consider expanding protection on this basis, particular if harmonisation does not manage to broaden protection under other grounds.

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

The fact that the manner of representing the interface uses computerised means must remain without impact, on the condition of being able to identify a human intervention responsible for the creation as access to protection must remain subject to conditions of originality, which is understood as the expression of the author’s personality.

32. Under what conditions, and to what extent, should GUIs protectable by copyright? In the vein of the response provided with respect to the preceding question, it does not seem appropriate to create copyright protection conditions specific to interfaces, that is to say, conditions that are different from the conditions on protection for other types of works.

The fact that an interface is intended to facilitate interactions with software must not lead to protection being granted, even roundabout protection, to forms that are dictated by technical functionalities. The same fundamental rule should all the more apply with respect to “look and feel”.

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

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

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

trademarks?

33.2. Please explain your reasonsIt would seem appropriate to allow protection of interface elements under trademark law when such elements play an indicator-of-origin function.

That said, elements whose form is exclusively dictated by the interface’s technical functionalities should not be protected by trademark

34. Under what conditions, and to what extent, should GUIs be protectable as trademarks? The state of positive law (as described in Question 13) appears to us to be sufficient.

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

The state of positive law seems to us to be sufficient to protect transition animations, so long as they do not exclusively respond to a functionality and that they are suitable for being perceived as indicators of origin (which should be the case when they designate products and services that are distinct from the graphic interfaces themselves).

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

The state of positive law seems to us to be sufficient, under the same conditions as those described in a) above, and if it is proven that the sign has been continuously and extensively used for a long period of time.

Other forms of protection

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

If harmonisation results in a significant improvement in the protection of GUIs, forms of protection that do not fall within the scope of intellectual property rights could be abandoned, as their limits are too unclear and variable to result in the legal certainty that is extremely desirable in this area.

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

The solution of a sui generis right should be envisaged only as a last resort, if, and only if, the desired harmonisation efforts are not successful.

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 Group considers relevant to this Study Question

Please indicate which industry sector views are included in part "III. Proposals of harmonization" on this form:

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.

Frédéric GLAIZE