The Apple v. Samsung litigation illustrates the importance of identifying the exact visual features claimed in a design patent, including the front face of a smartphone and a grid of icons on its screen. The US Supreme Court’s 2016 decision addressed the relevant “article of manufacture” for calculating design-patent profits; it did not decide how all screen graphics should be protected under Israeli law.
A screen display or graphical user interface (GUI – Graphical User Interface) and icons allow users to interact with various electronic devices (such as smartphones, computers and tablets) through designed elements such as icons and menus. These components are essential and central components in the software and which have a great influence on the commercial success of the software.
In Israel, a screen display or individual icon may qualify for registered design protection under the Designs Law, 5777–2017, provided its appearance meets the statutory conditions. Copyright in original artistic material and source code requires a separate analysis, including the industrial-design exclusion in Section 7 of the Copyright Law.
Registered design protection concerns the claimed visual appearance, such as a screen layout or an icon, not the underlying computer program. The selection of solid and broken lines, views and other visual representations may determine the scope of the registration.
What is a graphical user interface?
A graphical user interface is a digital interface where the user interacts with graphical components such as icons, buttons and menus. Before the development of graphical user interfaces, users interacted with computers through the Character User Interface (CUI). In CUI users type text commands using the keyboard to perform actions on the device. Because of this, CUI was accessible only to IT experts and advanced users and not to the general public. In addition, CUI was also inefficient because it was necessary to memorize and type commands correctly each time.
In contrast to the CUI, Graphical User Interfaces (GUIs) help the user perform operations within the electronic device without the need to type commands or know the coding behind the operation. In graphical user interfaces, visual elements represent actions that users can perform, objects that users can manipulate, and other information relevant to users.
Some common visual elements are: the mouse cursor (which moves other elements), buttons (which can be clicked to start an action), icons/small images (which represent information or interactive components), menus and scroll bars.
When the user initiates an interaction, the graphical user interface usually responds with some signal such as a color or size change in the clicked element, a sound or other effect, and then the system performs the requested action.
The evolution of the graphical interface
The first graphical user interface was developed by the Xerox Palo Alto Research Laboratory. In 1973 Xerox created the Alto – the first personal computer that contained the first graphical user interface. His idea was based on mimicking the user’s desktop experience in the real world. A sort of file and folder metaphor used to organize content in a structured way. The graphical user interface turned the physical desktop into a virtual desktop on which there are icons, file folders and trash cans, which can be placed and manipulated. Xerox was unable to market the Alto GUI to the public largely due to differences in vision between its research lab and its corporate headquarters in New York.
In 1979, Xerox gave Steve Jobs, who had co-founded Apple three years earlier, a tour of its research lab and showed him the Alto graphical user interface. Jobs was so impressed with the graphical user interface that he asked his entire team of programmers for a tour.
In 1981, Xerox released to the public the first user interface marketed as a consumer product to the general public – the Xerox Star 8010 Document Processor (Star). The Star was slightly different from the Alto. It was a far cry from today’s graphical user interfaces but marked a change from the previous text-based interfaces. It included images, buttons and colors. As significant as the Star’s release was, it was too little too late for Xerox, which by then had lost most of its top researchers to other companies.
A few years later, in 1984, Apple released its first graphical user interface in the Macintosh operating system. A year later, Microsoft introduced its first graphical user interface in Windows 1.0. Both of these operating systems introduced icons to represent things like files, folders, applications, and buttons.
Protection of the registered design
A registered design is only issued after careful examination by the relevant design authority. According to the Israeli Designs Law (Designs Law, 2017-2017), a design will be eligible for registration if it is new and of a unique nature.
According to the law, a design will be considered new if a design identical to it or a design that differs from it only in non-essential details has not been published in public before the set date, in Israel or abroad.
A design will be considered to have a unique character if the general impression it creates on an informed user is different from the general impression created by another design, which was published to the public before the set date, on an informed user.
The scope of protection of a design is based on a drawing or set of drawings, which, through the use of dashed lines, solid lines and shading, can specifically claim protection of certain elements of a design. This tool allows design owners to prevent infringers from copying the most important aspects of their designs. In Israel, the maximum term of a registered design is 25 years from the filing date, subject to timely renewal and the prescribed fees.
Graphical user interface design protection
Under the Locarno Classification administered by WIPO, graphical user interfaces belong to class 14-04. Their representation in the application is a central consideration in design registration in Israel, and the filing approach for screen displays and icons is explained in the software GUI design registration guide. Indeed, in several countries, the graphical user interface itself can be registered independently of the physical product to which it is applied.
In other countries, it is necessary to show the relationship between the graphical user interface and the physical product in which it is integrated through a graphical representation. In these countries, the graphical user interface design is protected only when attached to the specific product described and not to other products.
Protection and exclusion
– Many design authorities have rules or guidelines regarding acceptable graphical representations of graphical user interfaces. The basic rule is that the illustration or photograph must clearly show the claimed/protected part, and also clearly describe the disclaimed part, usually by dashed lines or by coloring or blurring.
For example, in 2009 Google applied for a design registration for its home screen on the Internet. The term “Google” has been explicitly excluded, by using dashed lines, which means that the design will be violated even if someone copies the entire array but replaces the term “Google” with another term:
Scope of protection
– The scope of protection for a registered graphical user interface design is mainly determined by its graphic representation, shown by line drawings, photos and more (as in designs in general).
In most countries, the graphical representation alone defines the scope of protection of the graphical user interface design, but in some countries a description is also required. In China for example, it is required to state in the description the function of the graphical user interface, the type of product to which it belongs and whether the color is intended to be protected or not. In Argentina, Croatia, Japan, Romania and the United States, it is required to clarify the type of physical product in the description. Also, some countries allow to exclude in writing a part of the design that is not intended to be protected.
The scope of protection of a graphical user interface design can be expanded by submitting different versions of graphical user interface designs, either in a single application or in separate applications submitted at the same time (depending on the requirement in each country). It is also possible to change the scope of the claimed protection in each version by excluding different parts.
In addition, in order to avoid uncertainty regarding the scope of protection, it is recommended not to include text and patterns in the design application, especially if they can limit the scope of protection.
Protection of transitions between screens
– The subject eligible for registration in the design includes both static and animated computer graphics, such as computer-generated icons, icons that can be changed by computer and animations that can be defined in the design as a number of images displayed in sequence. Thus, the transitions between GUI screens can be protected by design, as long as the design description addresses the transitional nature of the sequence. However, the “intermediate” images are not included in the defendant’s design. for example:
Single component protection
– Registering a design on only one graphical user interface element out of several elements that can make up the graphical user interface is allowed in most countries, provided that the element (usually an icon) is identified by solid lines and placed in its environment (e.g. on a screen display). In other countries, individual GUI elements can be protected by displaying only the elements themselves, without the need to display environmental information such as the other GUI elements and the physical product. And in other countries, such as Argentina, Japan, Korea, Mexico and Saudi Arabia, individual GUI elements are not protectable without being attached to the physical product. In China, graphical user interface elements can be protected by displaying not only the elements themselves but also the environmental information in solid lines (i.e. the scope of protection will also include the environmental characteristics). for example:
Validity of the design
– In most countries there are no special requirements for determining the validity of a graphic user interface design compared to determining the validity of other designs. In most countries, a design is valid if it meets the requirement of novelty and the requirement of unique character.
When the examiner tries to determine the validity of the design, he is required to refer to prior knowledge, for which he must take into account both the place of early discovery and the product category of the relevant design.
In relation to the place of early discovery, many countries require absolute novelty, meaning that public disclosure of the design anywhere in the world prevents the registration of an identical or similar design due to lack of novelty. Some countries provide a grace period usually of six or twelve months.
Functional GUI designs, dictated solely by their function, may be excluded from design protection. The function of a graphical user interface is generally understood as allowing the user to interact with an electronic device. In order to avoid including the functionality, the technical steps that enable the interaction, the graphic user interface designs must have a strong visual impact.
Infringement
– In most countries, the determination of whether a graphic user interface design has been infringed refers to the principles and criteria that apply to design infringement in general. These principles and criteria include determining novelty and identifying distinctive features protected by the allegedly infringed design and evaluating the overall impression created by the allegedly infringing design in the eyes of the informed observer compared to prior designs.
Copyright and industrial design rights in Israel
Section 7 of the Israeli Copyright Law limits copyright protection for a design serving or intended for industrial production. Its application requires examining the particular visual work and its industrial purpose; it is not correct to assume that every icon or screen display loses copyright protection merely because it could be registered as a design. Original illustrations, software code and registered visual designs may involve different rights and different infringement tests.
Advantages of design registration over a graphical user interface
In Israel, the infringement test for a registered design focuses on the overall impression made on an informed user, taking account of the designer’s degree of freedom. This differs from a copyright infringement analysis, which asks whether protected expression was copied. Design protection does not extend to features dictated solely by technical function.
Disadvantages of design registration on a graphical user interface
Design registration involves filing and renewal costs, whereas copyright generally arises without registration in Israel. The registered design term can extend to 25 years from filing, subject to renewal; whether registration is commercially useful depends on the product’s life cycle and the value of protecting the claimed visual features.
The case of Apple v. Samsung
The conflict between the companies Apple and Samsung began already in 2010 when Apple began to claim that Samsung’s smartphones and tablets infringe Apple’s patents and designs. Apple offered Samsung a license under which Samsung would pay Apple $30 for each smartphone and $40 for each tablet, but Samsung rejected this offer.
The ruling in the district court
After the offer was rejected, in 2011, Apple filed its first lawsuit against Samsung in the District Court for the Northern District of California, alleging that Samsung’s smartphones infringed on several designs embodied in the iPhone released in 2007. Apple claimed that Samsung infringed three of its designs (D618,677, D593,087 and -D604,305) that protect: (1) the minimalist face of the iPhone, the front speaker notch, and edge-to-edge glass of the front display; (2) the iPhone’s minimalist face, home button, and rounded corners; and (3) Apple’s graphical user interface, which includes sixteen home screen icons on a black screen with a strip of fixed apps at the bottom.
Here are Apple’s listed designs:
Samsung product:
Apple sought damages for all of Samsung’s profits from the sale of the infringing smartphones. Samsung argued that under “fundamental circumstantial principles” it should only be liable for profits attributable to the infringing design, as opposed to other features of the smartphones. Also, Samsung argued that the calculation of profits must be limited to the “articles of manufacture” to which the design applies, and that the relevant “articles of manufacture” in this case are components of the smartphones and not the smartphones themselves.
The district court rejected Samsung’s proffered jury instructions.
In August 2012, the first jury deliberated for just 21 hours and reached a verdict that several Samsung products infringed the aforementioned Apple designs. The jury awarded Apple $1,049,343,540 in damages for all profits Samsung received for the sale of the infringing smartphones and zero damages for Samsung’s counterclaims.
In 2013, the judge presiding over the first case found that the damages Samsung had to pay Apple were calculated incorrectly. The court reduced about $450 million from the total damages Samsung was ordered to pay Apple and ordered a retrial that began later that year.
In the retrial, a new set of jury was empaneled which awarded Apple additional damages of approximately $290.5 million, bringing the total amount Samsung was ordered to pay Apple to approximately $929 million.
Samsung then appealed the ruling.
Federal Court of Appeal
In March 2014, the Federal Court of Appeals upheld the jury’s finding of design infringement and awarded damages for Samsung’s total profit for the infringing smartphones.
The federal court rejected Samsung’s argument that damages should have been limited to profits attributable to the infringement and ruled that the plain language of the statute prevented the court from adopting a “circumstantial” rule as Samsung requests. The federal court also rejected Samsung’s argument that for the purpose of calculating the appropriate damages, the infringing “items of manufacture” are the outer covers of the smartphones and the array of icons displayed on the smartphone screens rather than the smartphones themselves as sold to the public. The federal court ruled that the entire smartphone is the “item of manufacture” for the purpose of calculating damages because consumers could not separately purchase components of the smartphones. Finally, the Federal Court confirmed the judgment of the District Court and determined that Apple is entitled to damages equal to the total profits of Samsung for the sale of the infringing smartphones.
Samsung appealed the Federal Court’s ruling to the Supreme Court.
Supreme Court
In October 2016, a hearing was held before the United States Supreme Court. The question before the Supreme Court was whether the “item of manufacture” to which the infringing design features were applied was the smartphone itself, as determined by the Federal Court, or whether it was a specific component of the smartphone as claimed by Samsung. Both parties agreed that Apple was entitled to all profits for the “item of production”, whatever that might be. Also, both sides agreed on two additional points. First, the federal court erred in adopting the blanket rule that the “item of manufacture” is the object sold to consumers. Second, the issue at hand is a question of fact.
In December 2016, in a unanimous decision, the Supreme Court refused to answer the question of the definition of what a “production item” is. However, the Supreme Court overturned the $400 million in damages awarded to Apple. The Supreme Court reversed the trial court’s decision and sent the case back to the federal court to define the legal standard for what constitutes an “item of manufacture.”
The court mainly relied on the fact that according to its dictionary definition, an “article of manufacture” is “a thing made by hand or by machine”. In accordance with this definition, the Supreme Court found that the term “item of production” is broad enough to include both the product sold to the consumer and a component of that product. The Supreme Court directed the Federal Court to establish a test under which the components of the smartphone can be treated as production items.
Back to the Federal Court of Appeal
In February 2017, the Federal Court of Appeals also refused in its decision to rule on the issue and returned the case to the district court for a rehearing and allowed it to include a new compensation trial. The federal court noted that the Supreme Court clarified that binding damages under US law involves two steps: (1) identifying the “item of manufacture” to which the infringing design was applied; and (2) calculating the infringer’s total profit for that “item of production”.
Back to the district court
In October 2017, District Court Judge Lucy Koh ordered a second retrial on the compensation issue based on the Supreme Court’s clarifications.
In May 2018, a jury awarded Apple approximately $539 million in the damages retrial, including an amount attributed to design patent infringement. The parties settled the remaining claims in June 2018, so the verdict should not be presented as a final payment determined after all appeals.
