In the modern era, rapid technological development and the widespread use of software in a variety of fields have created a growing need to protect unique software designs (UI). Protecting software designs through design registration is an important tool for software developers, not only to safeguard their exclusive rights but also as a commercial tool that can be used to prevent imitation and unfair competition.
In Israel, the Design Law (from 2017), regulates the subject of design registration and provides protection for new and unique designs. The law provides a legal framework for granting exclusive rights to designers and software developers, which allows them to control the commercial use of their designs and thus ensure the investments made in their development. However, registering a software design presents unique challenges, due to the abstract and dynamic nature of software as well as the rapid pace of change and innovation in this field.
In this article, we will review the basic principles and legal framework for registering software designs in Israel. We will discuss the criteria required for design registration, the administrative procedure involved, and the practical importance of protecting software designs in the modern world. In addition, we will also address the challenges that arise in this process and the legal implications that stem from them, focusing on the current legal status and the accompanying regulations.
Criteria for Registering a Software Design in Israel
Design registration in Israel is governed by the Design Law (from 2017), which defines a design as “the appearance of a product, in whole or in part, including line design, color design, shape design, material design, and texture design.”
A product for the purposes of this section is defined in Section 1 of the Design Law as “including a system of items, packaging, graphic symbol, screen display, and excluding typeface and computer software.”
The law states that computer software itself is not protected under the Design Law, but its UI component is protected under the Design Law.
A design is eligible for registration if it is “new or original” (novelty is an ornament or pattern that has not been previously published in Israel and originality is examined in the application of existing elements in a different way). In the software field, novelty means that the design has not been previously published anywhere in the world and uniqueness means that the design is not substantially similar to existing designs. In software, novelty and uniqueness can be expressed in the user interface (UI), in graphic elements, in interactive displays, but less so in the user experience (UX).
While the Design Law focuses on physical products, software design can be seen as a virtual product. Software developers can register designs for interfaces, icons, menus, landing pages, and other visual elements that are visible to the user.
In addition, for a software design to be eligible for registration, designers must ensure that the design has not been previously published in a way that would negate its novelty. Prior publication includes any form of public disclosure, whether on the internet, in print publications, or in any other medium. The new Design Law allows for the registration of a design that has been previously published by the owner of the right before its registration, provided that the publication took place within 12 months before the date of filing the application for registration.
Exception: Copyright law Does Not Protect If a Design Can Be Registered
A common question is why register a design in Israel when there is also copyright protection without the need for registration. The answer is that in Israel, as in many other countries, copyright law does not protect elements such as screen displays or icons if they can be registered as designs. Section 7 of the Copyright Law states:
“7. Notwithstanding the provisions of section 4, there shall be no copyright in a design as defined in the Designs Law-2017, unless the design does not serve and is not intended to serve for industrial production; the Minister may determine the conditions under which a design shall be deemed to serve for industrial production.“
The Israeli approach reflects a clear derogation from copyright in cases where the elements can be registered as designs, i.e., the two laws – the Copyright Law and the Designs Law – operate in parallel but do not overlap.
Thus, in Israel, the clear rule is that it is not possible to obtain double protection for a screen display or icon, both under the Copyright Law and the Designs Law. If the screen display or icon is eligible for registration as a design, it will not be entitled to copyright protection, while copyright law provides protection for the following elements in software:
- Source code;
- Illustrations and designs incorporated into the game;
- Music incorporated into the game;
- Texts incorporated into the game.
What Can Be Registered as a Design?
Two-Dimensional Design
Two-dimensional design protection covers the aesthetic aspect of a two-dimensional design, such as a software screen display or an icon. This protection focuses on the two-dimensional representation, as opposed to the three-dimensional product to which the design may belong.
Many design authorities have rules or guidelines regarding acceptable graphic representations of graphical user interfaces. The basic principle is that the illustration or photograph must clearly show the claimed/protected portion, and also clearly describe the disclaimed portion, usually by dashed lines or by coloring or blurring. For example, in 2009, Google filed a design registration application for its home screen on the internet. The term “Google” was explicitly disclaimed, using dashed lines, which means that the design would be infringed even if someone copied the entire layout but replaced the term “Google” with another term (US D599,372 S):
British Gas Trading Ltd., a leading energy company in the United Kingdom, has registered a design for its software screen display in the United States (USD851672S1):
LESSINGER GAMING LLC, a game developer, has registered a design for its game’s screen display in the United States (US D910,688 S):
KING.COM LTD, a developer of popular mobile games, has registered a design for its game’s screen display in the United States (US D910,041 S):
Registration of a Single GUI Element
In most countries, it is permissible to register a design for a single graphical user interface (GUI) element out of multiple elements that can make up the GUI, provided that the element (usually an icon) is identified by solid lines and is located in its environment (for example, on a screen display). In other countries, individual GUI elements can be protected by displaying the elements themselves, without the need to display contextual information such as other GUI elements and the physical product. And in other countries, such as Argentina, Japan, Korea, Mexico, and Saudi Arabia, individual GUI elements cannot be protected without being attached to the physical product. In China, GUI elements can be protected by displaying not only the elements themselves but also the contextual information in solid lines (i.e., the scope of protection will also include the environmental characteristics). For example USD921695S1:
