aippi.orgaippi.org/...reports_pdf/...of_graphical_user_interfaces_2… · Web viewTomohiro NAKAMURA, Kozo YABE, Kan OTANI, Hiroko SUZUKI, Hideki TAKAISHI, Nobuyuki TANIGUCHI, Kiyoko

AIPPI 2017 - Study Question - Protection of graphical user interfaces

Study QuestionSubmission date: May 8, 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

Japan

Contributors name(s)

Tomohiro NAKAMURA, Kozo YABE, Kan OTANI, Hiroko SUZUKI, Hideki TAKAISHI, Nobuyuki TANIGUCHI, Kiyoko NAKAOKA, Chiyako NAKAJIMA,

Etsuko YOSHIDA, Kazuhiro YAMAGUCHI

e-Mail contact

[email protected]

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 NoPlease Explain

In Japan, GUIs cannot generally be protected by patents, but some types or aspects of GUIs are protectable by patents.

GUIs are implemented by using computer software.

With regard to computer software-related inventions, firstly based on the Examination Guidelines, Part III, Chapter 1 Eligibility for Patent and Industrial Applicability (hereinafter referred to as the "General Guidelines"), a claimed invention is found to be eligible if it is found that the claimed invention utilizes a law of nature as a whole, and thus is considered as a "creation of a technical idea utilizing a law of nature," irrespective of whether computer software is utilized, without needing to be examined from the viewpoint of computer software (we regard the term "patentability (patentable)" in the following questions as "eligibility (eligible)" in our answers below).

If eligibility of the claimed invention cannot be determined according to the General Guidelines, determination is to be made according to the ideas based on the standpoint of software as prescribed in the Examination Handbook for Patent and Utility Model in Japan, Annex B Application examples of the specific technical fields, Chapter 1 Computer software related Inventions (hereinafter referred to as the "Examination Handbook").* In this determination process, if "information processing by the software is specifically implemented by using hardware resources," or in other words, if "a specific information processor or an operation method thereof is constructed depending on the intended use through cooperation of the software and the hardware resources," or more specifically, if it is found that "based on the statement of the claims, a specific calculation or processing of information depending on the intended use is implemented by specific means or procedures on which software and hardware resources cooperate," the claimed invention is found to be eligible (Examination

Handbook, 2.1.1.2) and can be protected by a patent.

* https://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/files_handbook_sinsa_e/app_b1_e.pdf

We consider that GUIs would rarely be found to be eligible according to the General Guidelines. Meanwhile, courts have generally ruled that inventions intended exclusively for mental activities of humans are not eligible. Accordingly, GUIs would be found to be eligible if they meet the requirements mentioned above as prescribed in the Examination Handbook.

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

The answers to this question are described 1) together.

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? Same as our answers to 1) above.

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?YesPlease Explain

There are specific claim formats for patent protection required under the statutory provisions or case law or in judicial or administrative practice.

Not only for GUIs but in general, the subject matter to be claimed must be a "product" (including a computer program) or a "method" (Article 2(3) of the Patent Act).

If a software-related invention is to be claimed as an invention of a product, it can be recited in the claim as an "apparatus" and "system" and also as a "computer program" and a "computer readable recording medium in which a program is recorded" (Examination Handbook, 1.2.1.1).

If it is clear in consideration of the common general knowledge as of the filing that the claimed invention is a "program" even though the claim uses any word other than "program" as the main noun at the beginning of the claim, the claimed invention is treated as an invention of a "program" (Examination Handbook, 1.2.1.2).

In this connection, a claim of "program signal (array)," "data signal (array)," "program article" or "program product" fails to meet the clarity requirement (Examination Handbook, 1.2.1.2).

A claim of "program language" or "program list" is ineligible because these things are not a "creation of a technical idea utilizing a law of nature" (Examination Handbook, 2.1.1.2.).

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

It is not necessary to recite a physical feature in a claim as a prerequisite for the eligibility of GUI. As mentioned in 1), in order to be eligible, the claimed invention must be recited in a manner that persons skilled in the art can understand that "information processing by the software is specifically implemented by using hardware resources." However, hardware resource is not necessarily recited in a claim if it is possible to gain such understanding without a recitation of hardware resource. In the Examination Handbook, the term "hardware resource" is defined as follows: "a physical device or physical element that is used in the processing, operation, or implementation of a function; for example, this refers to a computer as a physical device, and a CPU, memory, input device, output device, or physical device connected to a computer, which are components thereof."

5. To what extent does involvement of the user's mental activities in a GUI process affect the patentability of the GUI? As mentioned in 1), involvement of the user's mental activities in a GUI process does not affect the GUI's eligibility as long as the GUI meets the requirements explained in 1).

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 NoPlease Explain

GUIs per se cannot be protected by design rights.

If an image is a graphic image on a screen that is provided for use in the operation of an article (limited to the operations carried out in order to enable the article to perform its functions) and is displayed on the article itself or on another article that is used with the article in an integrated manner, such image is protected by a design right (Article 2(2) of the Design Act). In order for a GUI to constitute a graphic image as provided in Article 2(2) of the Design Act, the GUI must meet the following requirements: (1) the article to which the design including the GUI is applied is found to be a registrable subject matter under the Design Act; (2) the GUI is provided for use in the operation of the article in order to enable the article to perform its functions; (3) the GUI is displayed on the article itself or on another article that is used with the article in an integrated manner; and (4) the GUI has been recorded in the article (Examination Guidelines, Part VII, Chapter 4, 74.4.1.1.1.2).

Previously, a design applied to a computer was not eligible for registration. However, as a result of the revision to the Examination Guidelines for Designs in April 2016, if a computer acquires a specific function when it is integrated with software, it constitutes a new article (a computer with additional function) and a graphic image recorded in the computer is now registrable.

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

If an image is a graphic image on a screen that is provided for use in the operation of an article (limited to the operations carried out in order to enable the article to perform its functions) and is displayed on the article itself or on another article that is used with the article in an integrated manner, such image is protected by a design right (Article 2(2) of the Design Act). In order for a GUI to constitute a graphic image as provided in Article 2(2) of the Design Act, the GUI must meet the following requirements: (1) the article to which the design including the GUI is applied is found to be a registrable subject matter under the Design Act; (2) the GUI is provided for use in the operation of the article in order to enable the article to perform its functions; (3) the GUI is displayed on the article itself or on another article that is used with the article in an integrated manner; and (4) the GUI has been recorded in the article (Examination Guidelines, Part VII, Chapter 4, 74.4.1.1.1.2).

Previously, a design applied to a computer was not eligible for registration. However, as a result of the revision to the Examination Guidelines for Designs in April 2016, if a computer acquires a specific function when it is integrated with software, it constitutes a new article (a computer with additional function) and a graphic image recorded in the computer is now registrable.

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?

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

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

A GUI cannot be protected independently from the design applied to the article (including an electronic device).

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

Under the partial design system, elements in a GUI such as icons can be protected by design rights independently from the GUI as a whole if these elements are sought to be registered as partial designs.

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

YesPlease Explain

Movements or screen transitions in a GUI can be protected by design rights if they are shown in the drawings as plural graphic images that represent changes. However, in order for plural graphic images to be recognized as a single design, these images must be intended for the same function of the article and have relevance in form (Examination Guidelines, Part VII, Chapter 4, 74.7.1.4).

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

A graphic image other than one that is provided for use in the operation of an article may also be protected by a design right if the graphic image is found to be the shape, patterns or colors, or any combination thereof, of a part of an article (Article 2(1) of the Design Act). Specifically, such graphic image needs to be one used for making necessary indications for performing the functions of the article and recorded in the article (Examination Guidelines, Part VII, Chapter 4, 74.4.1.1.1.1).

For example, if the article to which the design is applied is a table clock, the function to indicate the time is the “function” of the article, and the graphic image by which the time is indicated on the display part of the article may be protected as a design defined in Article 2(1) of the Design Act.

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

Some types of GUIs can be protected by copyright as long as they are found to be creative, such as the following prescribed in the Copyright Act:

- Cinematographic works (Article 10(1)(vii)) (e.g. Dig Dug case, Tokyo District Court decision, 1984 (Wa) No.12619);

- Photographic works (Article 10(1)(viii));

- Works of computer programming (Article 10(1)(ix));

- Compilations (Article 12); and

- Database works (Article 12-2).

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

At present, GUIs are regarded as being creative even if they are developed using computers as long as humans exercise their creative power in developing them.

However, in the future, if GUIs are generated spontaneously by AI without the involvement of human creative power, they may not be regarded as being creative and may not be eligible for copyright protection.

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?The types of works enumerated in 8) above can be protected by copyright as long as they are found to be creative.

The scope of subjects to be protected by copyright covers what is considered to be a "reproduction" or "adaptation" of the original work. According to the Supreme Court decision (1999 (Ju) No.922), the "adaptation" of a work means creating a new work based upon an existing work by maintaining the essential characteristics of its expression and altering its specific expressions.

* There is a case relating to business software in which the court, by examining the creativity of each of the images on the display screen, the sequence and relevance of these images, found the software to be copyrightable and upheld the claim for an injunction against copyright infringement (Cybozu case, 2001 (Yo) No. 22014).

* In another case relating to the user interfaces used both in the plaintiff's game (the plaintiff's work) and the defendant's game (the defendant's work), the court regarded the user interfaces as "ideas" not protectable under the Copyright Act and considered them to be "familiar expressions" used for fishing games, and held that the essential characteristics of the expressions in the plaintiff's work cannot be directly perceived from the defendant's work due to the differences in terms of the specific expressions, and therefore the defendants’ work cannot be regarded as an adaptation of the plaintiff’s work. Thus, contrary to the judgment in first instance, the court found no copyright infringement (Fishing Games case, 2012 (Ne) No.10027).

* There is also a case in which the court found no copyright infringement, holding that the defendant's user interface cannot be regarded as a copy of the plaintiff's user interface (Sekisan-kun case, 1998 (Wa) No.13577).

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

As mentioned in 10) above, even with regard to the types of GUIs that are protectable by copyright, the scope of protection is limited within the range of "adaptation."

The overall "look and feel" of GUIs can be protected by copyright if they regarded as an "adaptation" of the original works. Cybozu case (2001 (Yo) No. 22014) cited above is an

example case in which such protection was actually granted.

The overall "look and feel" of GUIs can also be protected under the Unfair Competition Prevention Act. There is a case in which the court found a close resemblance between the external appearances of the plaintiff's and defendant's coffee shops and issued a provisional disposition order prohibiting the defendant from using the building of the coffee shop as well as its photos, pictures and images (2015 (Yo) No.22042).

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

Trademarks

12. Can GUIs generally be protected as trademarks?

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

GUIs can generally be protected as trademarks.

GUIs, as a result of being used for goods or services, can be marks that meet the definition of "trademark" under the Trademark Act ("among those recognizable by human perception, any character(s), figure(s), sign(s) or three-dimensional shape(s) or colors, or any combination thereof, sounds, etc. provided by Cabinet Order" (Article 2(1)).

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? Not only the GUI as a whole but also a wide range of elements of a GUI, such as icons, can be protected as long as they are distinctive.

GUIs that are protectable as trademarks include movements and positions of characters, figures, etc. and colors of the goods, etc. (including those placed at a specific position). Therefore, a screen movement and transition in a GUI can be protected as a trademark.

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

The answers to this question are described above together.

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

Secondary meaning is not required, in principle.

However, among marks that fall within the scope of GUIs, those that are not originally distinctive must acquire secondary meaning through use in order to be protected as trademarks.

Most movements, positions and colors are in nature not originally distinctive, and they should acquire secondary meaning in order to be protectable. Since these factors have just become protectable in Japan on April 1, 2015, the JPO and courts have addressed them only in a limited number of cases in relation to GUIs so far.

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

GUIs may be protectable if they meet the requirements under the Unfair Competition Prevention Act.

16. If yes, what forms of protection are available, and under what conditions, and to what extent, are such other forms of protection available?Under the Unfair Competition Prevention Act, if (1) a GUI is well-known among consumers as an indication of a person's goods or business, and another person uses an indication of goods or business that is identical or similar to that well-known indication, and thereby caused confusion with the goods or business that is well-known among consumers (Article 2(1)(i)), or (2) a GUI is a famous indication of a person's goods or business, and another person uses an indication of goods or business that is identical or similar to that famous indication (Article 2(1)(ii)), the person who owns the well-known or famous indication can claim an injunction and damages for violation of the Unfair Competition Prevention Act

In order to protect a GUI as an "indication of goods or business," it is necessary that the GUI has a function to indicate the source of goods or services and a function to distinguish a person's goods from others. In addition, a GUI is required to be "well-known" or "famous." Therefore, only a limited range of GUIs are protectable.

In the case in which the plaintiff alleged that the software sold by the defendant was identical or similar to the plaintiff's groupware which was an aggregate of various application programs such as scheduling, address book and facility management (Tokyo District Court decision, 2001 (Wa) No.16440, 5 September 2002, Hanrei Times No.1121 page 229), the court stated that GUIs can be the subject to be protected under the Unfair Competition Prevention Act, but held that the individual display screen images contained in the plaintiff's software applications were no more than the components accompanying the functions of the plaintiff's groupware and that there is no evidence showing that these display screen images per se are widely known among consumers. In conclusion, the court dismissed the plaintiff's claim.

Also in accordance with the Unfair Competition Prevention Act, if (3) a GUI can be found to be the configuration of a person's goods, and within three years since the day on which the person first sold the goods in Japan, another person sells goods that imitate that

configuration (Article 2(1)(iii) and 19(1)(v)(a)), the person who owns the configuration thus imitated by another can claim an injunction and damages for violation of the Unfair Competition Prevention Act.

However, since a configuration that the relevant goods normally have is excluded from protection, icons and frame structures whose functions are expressed in familiar forms may not be protected. Furthermore, the protection is limited to protection against slavish imitations.

In the case in which the plaintiff sued the defendant for selling software having features that are substantially identical to those of the plaintiff's scheduling software (Tokyo District Court decision, 2002 (Wa) No.10893, 28 January 2003), while the defendant alleged that Article 2(1)(iii) of the Unfair Competition Prevention Act is not applicable to intangible property, the court did not reject the plaintiff's allegation that the screen display layout of its software falls within the scope of "configuration of goods” but found that the plaintiff's product as a whole and the defendant's product as a whole are not identical or substantially identical to each other and dismissed the plaintiff's claim.

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

GUIs can be protected by one or more type of IP rights depending on their specific content. For example, a GUI that is copyrightable and used as an interface for enabling the product to perform its function is eligible for cumulative protection under the Copyright Act and the Design Act.

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

The scope of protection for GUIs is sufficiently clear because the provisions of IP laws that define the respective subjects to be protected apply to GUIs depending on their specific content.

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

We find room for improvement. For example:

a. redesigning the Design Act to meet the demand for protection of GUIs, by such measures as establishing an examination process specific to GUIs which does not involve substantive examination, in consideration of the short product life of GUIs;

b. promoting the filing of applications under the Hague Agreement, because protection for GUIs is sought not for acquiring the exclusive right to use GUIs but primarily for preventing the acquisition of rights by third parties; and

c. enhancing protection of GUIs by amending the existing provisions of the Design Act or reforming the implementation thereof, rather than establishing an independent law specializing in GUI protection.

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 NoPlease Explain

GUIs should not generally be protectable by patents.

Aspects of GUIs that would be regarded as, for example, artificial arrangements, mental activities of humans, or presentation of information per se that is not eligible in every jurisdiction, should not be capable of protection by patents.

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

Aspects of GUIs in which a specific calculation or processing of information depending on the intended use is implemented by specific means or procedures on which software and hardware resources cooperate should be protectable by patents, because such GUIs are not artificial arrangements, mental activities of humans, or presentation of information per se, but a specific information processor or an operation method thereof depending on the intended use is specifically constructed.

It should be noted that it is difficult to assess inventive step with respect to a non-technical difference from prior art, for example, in the case in which a contrivance of a static layout in a GUI may be non-technical contrivance, Then, it would be necessary to develop an assessment method for inventive step in which, on one hand, the non-technical difference is not ignored, and on the other hand, it is found that there is inventive step, for example, only because there is a mere difference.

23.2. Please explain your reasons.The answers to this question are described above together.

24. Under what conditions, and to what extent, should GUIs fall within the scope of patentable subject matter? GUIs should not fall within the scope of patentable subject matter if they are regarded as, for example, artificial arrangements, mental activities of humans, or presentation of information per se that is not eligible in every jurisdiction.

On the other hand, if a specific calculation or processing of information depending on the intended use is implemented by specific means or procedures on which the software and hardware resources cooperate, the GUI should fall within the scope of patentable subject matter, and there should be no more conditions, because such GUI is not artificial arrangements, mental activities of humans, or presentation of information per se, but a specific information processor or an operation method thereof is constructed depending on the intended use.

In particular, the involvement of user's mental activities in a GUI process should not affect the patentability of the GUI. GUIs, by nature, are supposed to be used for interaction with users and exert their effects by working on users' mental activities. If the patentability of GUIs is denied due to the involvement of user's mental activities, patent protection would rarely be available for GUIs. If GUIs are not protectable by patents despite their contributions to prior art and to industrial development, this would reduce incentives for the development of GUIs and impede industrial development.

It should be noted that it is difficult to assess inventive step with respect to a non-technical difference from prior art, for example, in the case in which a contrivance of a static layout in a GUI may be non-technical contrivance, Then, it would be necessary to develop an assessment method for inventive step in which, on one hand, the non-technical difference is not ignored, and on the other hand, it is found that there is inventive step, for example, only because there is a mere difference.

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


24.2. Please explain your reasons.The answers to this question are described 24) together.

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

We consider it desirable that a physical feature be recited in a claim in order to distinguish the GUI from any artificial arrangements, mental activities of humans or presentation of information per se. However, we consider that hardware resources are not necessarily recited in a claim as long as the claim is recited in a manner that persons skilled in the art can understand that "information processing by the software is specifically implemented by using hardware resources."

26. What claim formats should be available for protecting GUIs?Claims of "apparatus," "system," etc., and "computer program" and "computer readable recording medium in which a program is recorded" should be available as claim formats for GUIs.

It should be noted that regarding a claim of "interface, "a claim of "program" can be used as the substitute if a claim of "interface" is not available.

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

GUIs should be protectable by design rights, for the following reasons:

a) if the existence of rights for GUIs is apparent, third parties can investigate rights held by others and avoid infringing these rights;

b) the fact that design rights have gone through the examination of the substantive requirements (e.g. novelty) represents the validity of rights with high probability; and

c) the duration of rights is limited, for about 15 to 20 years, ensuring the use of GUIs by third parties after the expiration of the duration.

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


28. Under what conditions, and to what extent, should GUIs be protectable by design rights? GUIs should be protectable under the following conditions:

(1) the definition of the GUI to be protected, including whether the article to which the GUI is applied needs to meet the statutory definition of "article," should be made clear;

(2) whether the GUI should be necessary for enabling the article to perform its function should be made clear;

(3) in order to prevent the extended existence of a right, the GUI for which the design right expires should not be protectable by copyright unless it meets the requirements for protection under the Copyright Act and the definition of copyrightable work (creativity); and

(4) an invalidation procedures should be established to nullify a registered design rights grounded that, particularly the design rights lack creativeness in comparison to prior designs or arts in public domain.

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

Screen movements or transitions in a GUI should be protectable if they are found to be novel and creative.

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

This point is worth considering for the following reasons:

(1) GUIs can be applied to a wide variety of electronic devices, irrespective of the function or use of such devices; and

(2) in the jurisdictions that adopt the one design for one application rule, a design application is required to be filed for each type of electronic device on which a GUI is displayed.

If GUIs per se are made protectable by design rights, this could reduce third parties' opportunity to adopt GUIs, so it is necessary to design the protection system with due consideration to opinions from the industry. Furthermore, if protection by design rights is made available for GUIs per se, this could cause conflicts with copyrights, so it is necessary to consider setting rules for adjusting these rights in terms of the duration of rights, for example. In addition, as many jurisdictions have laws that regard a design as a combination of the configuration of the design and the configuration of the article to which the design is applied, it is necessary to consider a new basic framework of the Design Act under which a GUI is regarded as the article to be protected.

Copyright

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


Some types of GUIs should be protected by copyrights as long as they are found to be creative.

In the future, if GUIs are generated spontaneously by AI without the involvement of human creative power, they may not be regarded as being creative.

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


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

Said fact should not affect the eligibility of GUIs for copyright protection as long as human creativity is exerted in them.

However, in the future, if GUIs are generated spontaneously by AI without the involvement of human creative power, they may not be regarded as being creative, in which case it is inevitable that they are found to be ineligible for copyright protection.

32. Under what conditions, and to what extent, should GUIs protectable by copyright? GUIs should be protectable by copyright to the extent of those generated by adaptation (i.e. creating a new work based upon an existing work by maintaining the essential characteristics of its expression and altering its specific expressions).

There is no rational reason for giving special treatment to GUIs by protecting their overall "look and feel" beyond the scope of adaptation. Since GUIs can be protected by the law for preventing unfair competition, we found it unnecessary to expand the scope of copyright protection only with regard to GUIs.

32.1. For example, should the overall "look and feel" of a GUI be protectable by copyright? No

Please explain your reasons.


Trademarks

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


GUIs should generally be protectable as trademarks as long as they are distinctive as trademarks.

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

33.2. Please explain your reasonsThe answers to this question are described 33) together.

34. Under what conditions, and to what extent, should GUIs be protectable as trademarks? GUIs, due to their nature as interfaces that allow interaction between electronic devices and users, are inseparable from the functional characteristics of the electronic devices or the software that operates thereon. Trademarks consisting only of these functional characteristics are not suitable to be monopolized under the Trademark Act and therefore should not be protectable.

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

Screen movements and transitions in a GUI should be protectable if they are distinctive beyond the level of the functional characteristics as mentioned above, although there may not be many such GUIs. For example, there is no clear reason for denying protection for movements and transitions that produce the "look and feel" specific to software.

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

Generally, GUIs that are not originally distinctive must acquire secondary meaning through use in order to be protected as trademarks, and they should be protectable on this condition.

However, in the case of a GUI consisting only of the functional characteristics of the electronic device or the software that operates thereon, it would be appropriate to raise the level of the acquired secondary meaning or deny eligibility for protection despite the acquisition of secondary meaning, because the duration of protection by trademark is long.

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

As mentioned in 16), in Japan, well-known or famous GUIs are protected under the Unfair Competition Prevention Act. As it seems that there is a strong call for protection of well-known GUIs, we consider that the same form of protection should be provided under laws and regulations that prohibit unfair competition.

Also as mentioned in 16), the Unfair Competition Prevention Act of Japan restricts an act of making slavish imitations of GUIs within three years from the first release. Seeing that there is a strong call from the GUI design industry for means to prevent slavish imitations that may be made immediately after the release of GUIs, we consider that such act of making slavish imitations of GUIs within three years from the first release should be restricted under laws and regulations that prohibit unfair competition.

However, as mentioned in 16), under the current Unfair Competition Prevention Act of Japan, icons and frame structures whose functions are expressed in familiar forms may not be protected. Therefore, the scope of protectable GUIs is too small.

It may be possible to attain the balance by limiting the duration of protection and the scope of protection (by limiting protection to slavish imitations), even if the scope of protectable GUIs is slightly expanded. Therefore, we consider that GUIs in which some unique original designs are used should be protected against an act of making their slavish imitations within three years from the first release.

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

As mentioned above, in Japan, GUIs are protectable by IP laws under certain conditions, and deficiencies in protection can be fully made up for by enhancing protection under the Design Act, as explained in 27) to 30). As there is not much necessity to provide a sui generis right for the protection of GUI in addition to the currently available IP rights, we consider that the time is not yet ripe for establishing a sui generis right for the protection of GUIs.

On the other hand, GUIs are frequently imitated because they are intended to increase operability while maintaining high functionality, and there is a call for early protection of GUIs. In light of such properties of GUIs, it may be possible to provide appropriate protection for GUIs that are becoming diversified, by such means as introducing the system of registration

without substantive examination for GUIs and promoting the active use of the international design registration system under the Hague Agreement.

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 QuestionWill GUIs that are not indicated on a display screen, such as those projected by a projector, for example, and those that can be perceived by human visual sensation but not indicated on a display screen, be protectable in the future?

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.

Tomohiro NAKAMURA

aippi.orgaippi.org/...reports_pdf/...of_graphical_user_interfaces_2… · Web viewTomohiro NAKAMURA, Kozo YABE, Kan OTANI, Hiroko SUZUKI, Hideki TAKAISHI, Nobuyuki TANIGUCHI, Kiyoko

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