In late February, a U.S. court dealt Apple Inc. a blow in its smartphone patent war with Samsung when it found Apple's patents covering its "slide-to-unlock" feature to be invalid, reversing an earlier $120 million (USD) award. As illustrated by this latest patent battle between tech giants, protecting UX/UI design is a big deal.
In the emerging era of the Internet of Things (IoT), virtual/augmented reality, wearable technology and other non-traditional digital spaces (e.g. home appliances), effective user experience (UX) and user interface (UI) design will increasingly play a central role in customers' satisfaction with your product and services, as well as your brand identity.
Whether you are a start-up or an established tech company, protecting the results of your investment in developing effective UX/UI designs could give your products and services a significant competitive advantage.
User Interfaces Increasingly Important for Product Differentiation
A key aspect of UX/UI design is the graphical user interface ("GUI"; pronounced "gooey"), which allows users to interact with electronic devices through graphical icons or other visual indicators, rather than text-based interfaces. It is now, and will increasingly become, important to protect the "look and feel" of these GUIs, icons and other visual indicators, collectively the UX/UI design elements, in order to maintain your product's distinctiveness in the marketplace.
Copyright: Cost-effective but easily designed around
Traditionally, copyright has protected movies, works of art, music, etc. Original UX/UI design elements can also be protected by copyright as artistic works.
Advantages: Copyright is one of the most cost-effective intellectual property (IP) rights to obtain as there is no registration process required, unlike other IP rights, and the optional registration process is inexpensive and relatively simple to complete.
Disadvantages: The downside to copyright protection, however, is that the alleged infringer must have copied a substantial portion of the UX/UI design element. A competitor can also avoid liability by making modifications or "design-arounds" to the copyrighted design element. Despite some clear advantages, these disadvantages of copyright protection tend to make it less important to companies in the UX/UI design space.
Trademarks: Powerful if "used" correctly
Trademarks function to distinguish the goods and/or services of one entity from those of others. These can include words, designs (e.g. logos), sounds, and any other indicia that is arguably distinctive of the trademark owner. In the U.S. and Canada, trademark rights can arise from both use of the mark (referred to as "common law rights") and registration of the mark with the applicable intellectual property office (e.g. the Canadian Intellectual Property Office (CIPO) or the U.S. Patent and Trademark Office (USPTO)).
Advantages: Unlike for copyright, trademark infringement does not require the infringing UX/UI design element to have been copied directly. That is, the alleged infringer's use of the UX/UI design element need not be identical to the mark as used or registered; it merely requires the allegedly infringing UX/UI design element to be similar enough to cause a likelihood of confusion. Unlike other IP rights that have limited terms, trademarks can also last indefinitely provided the mark remains in use and distinctive of the owner.
Disadvantages: The UX/UI design element must function as a trademark to be recognized as such. With respect to goods, the UX/UI design element functions as a trademark if, at the time of the sale of the goods, it is marked on the goods, or on their packaging, or is in any other manner associated with the goods such that the person(s) receiving the goods is aware of the association between the trademark and the goods. The UX/UI design element functions as a trademark in association with services if it is used or displayed in the performance or advertising of those services. This will likely be an easier burden to meet with respect to services (i.e. cloud-based computing services), as the user accesses the services by tapping or clicking on the icon. If the UX/UI design element is registered or used in association with goods (e.g. software), it should be clearly visible to the user at the time the software is purchased or downloaded (e.g. iTunesTM or Google PlayTM stores).
Examples of Canadian trademark registrations for UX/UI design elements are set out below, many of which should be easily recognizable.
NUMBERS Icon (iOS) - Apple Inc.
Gmail Envelope Design - Google Inc.
g+ Design - Google Inc.
Patent Protection: Effective protection for functional designs
Unlike the other IP rights mentioned above, utility patents protect the functional aspects of the UX/UI design element(s).
Advantages: Patent protection provides patentees with the exclusive right to make, use or sell the patented invention. Unlike some other IP rights, patent rights can be used to stop third parties regardless of whether the third parties are aware of the existence of the patent.
Disadvantages: The UX/UI design element must have a novel and inventive function in order to be protected. This may not always be the case, particularly when the icon or other visual indicator merely provides a link to the applicable goods or services without performing any specific function. In order to obtain patent protection, an entrepreneur must describe the functioning of the UX/UI design element in a patent application that is filed with the applicable patent office (e.g. CIPO or the USPTO). As there is an examination process, it may also take several years to obtain patent protection at a significant cost.
A good example of a utility patent protecting a design element is Apple's "slide-to-unlock" feature incorporated in its iOS devices (e.g. iPadTM and iPhoneTM). Apple holds several patents related to the sliding locking/unlocking feature including U.S. Patent Nos. 7,657,849 and 8,046,721 (recently found to be invalid in Apple's battle with Samsung because the subject matter recited in this patent was obvious).
Industrial Designs & Design Patents: Protecting aesthetic elements
Since UX/UI design elements are predicated on design choices, protecting the purely aesthetic elements becomes significant. Industrial designs in Canada and design patents in the United States are becoming increasingly important to companies that develop UX/UI.
Advantages: Having an industrial design/design patent prevents a third party from making, selling or offering a product that uses the design. More importantly, industrial design/design patent protection is not limited to static elements; interactive UX/UI design elements are also fair game, such as the "page turning" in Apple eBooks, which is protected through U.S. design patent No. D670,713. Finally, the costs and time required to obtain design protection are significantly less than utility patent protection.
Disadvantages: To obtain industrial design/design patent protection for an icon or interface, the UX/UI design element must be novel and sufficiently distinct from other elements. This IP right can only be directed to the ornamental or aesthetic aspects of the design and not its function. Unlike copyright and trademarks, industrial designs must be registered to be enforceable, similar to patents.
Based on the above, it is clear that UX/UI design elements are protectable through a variety of different IP rights. Start-ups and established tech companies alike should consider adopting a strategy using all of the available IP rights noted above to protect key aspects of their products' UX/UI design elements. By adopting an effective strategy that incorporates all of the IP discussed herein, companies will be well-suited to take advantage of the opportunities ahead.