The law is failing computer interfaces (GUI) in China

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(Source: Rouse)

In the 1970s the first Graphic User Interface (GUI) was developed by the Xerox Palo Alto Research Center (PARC), beginning a new era for the interface of computer operating systems. A number of brilliant systems followed in the 1980s, such as the operating systems of Windows, OS/2, Macintosh, Linux, Symbian OS and others. Ever since, software systems have adopted GUIs as an effective intermediary between the operating system and its users. With the evolution of technology, a well-designed GUI today can attract users by providing convenient ways of controlling the software and creating a unique user experience.

But, like many other types of intellectual creations, the design of GUIs is vulnerable to piracy or imitation. Companies can spend large amount of time and money designing a GUI, only to find it pirated or imitated shortly after the launch of a product with that specific GUI. If that happens, under the legal regimes in China, one of the main forms of legal recourse is copyright.

Are GUIs protectable?

The TP-Link case

Chinese Copyright Law categorises works according to their nature. Theoretically GUIs may be regarded as “works of fine art”, or “compilation works”, depending on their constitution.

Works of fine art refer to two- or three-dimensional works created in lines, colours or other media which, when viewed, impart aesthetic effects, such as paintings, works of calligraphy or sculpture. Compilation works are the result of certain pieces, fragments or data or other materials not constituting a work, being put together, with the choice or layout of the contents being the original creation.

There have been no publicised, final court decisions upholding protection for GUIs as works of fine art or compilation works. But a well-known case, Shenzhen Jixiang Tengda Technology Company v Shenzhen Pulian (TP- Link) Technology Company, may infer that GUIs qualify as compilation works if they can satisfy the test of original creation for copyright.

The first instance Court (Shenzhen Intermediate Court) held that the GUI of the plaintiff’s product (a wireless router) was copyrightable as a compilation work and thus the copying of the plaintiff’s GUI by the defendant constituted copyright infringement. However, the second instance Court (Guangdong High Court) overturned the decision and ruled that the GUI could not meet the creativeness requirement for such compilation works, because the selection, arrangement and layout was fairly simple and they were not creative enough to distinguish themselves from other GUIs for wireless routers. Therefore, although the second instance decision may indicate that GUIs can be protected if they could meet the creativity requirement,copyright law was insufficient to protect that GUI from infringement because the Guangdong High Court found a rather broad exception to protection when the creativity of the design in question was deemed insufficient.

The big hurdle: independent creation

Works that qualify for copyright protection must be independent creations. However, a lack of clear criteria under Chinese copyright laws means there is great uncertainty in judicial practice as to the assessment criteria for independent creation. There are a number of reasons.

First, independent creation appears to be fairly subjective. In general, most Chinese courts deem that a work should present a certain level of creation. What level needs to be achieve, however, is rather uncertain. For instance, in Inter Ikea Systems v Taizhong Zhong Tian Plastic Company, (Shanghai No 2 Intermediate Court, 2008), though the children’s stool in question possessed a bit of creative design in its round stool legs, the court decided that the artistic aspect failed to meet a minimum requirement for creativity. That minimum level was not clarified.

In InterLego v Kegao (Tianjin) Toys Company & Beijing Fuxing Trade City (Beijing High Court, 2002), that court tried to cast some light on the problem by stating that the work must possess enough artistic creation for the general public to view it as a piece of art. However, a test based on the general public’s view is also subjective and difficult to apply.

The second problem is that since China is a civil law country rather than a case law country, a court is not obliged to follow established precedents. In an earlier GUI case decided in Shanghai in 2005, the court found the GUI at issue could not qualify as a compilation work and so be subject to copyright protection (Beijing Jiuqi Software Company v Shanghai Tianchen Computer Software Company, Shanghai No 2 Intermediate Court, 2004). Yet in the later TP-Link case as mentioned above, the first instance court found that the GUI could qualify as a compilation work. The freedom of courts in different areas of China to interpret the laws in different ways adds additional uncertainty to the application of the exception for independent creation.

Further hurdles

While independent creation remains the major hurdle, there are other limitations to copyright protection affordable to a GUI.

Functionality or separability

Given their designed purpose, GUIs can be functional in certain cases, as they need to quickly point the users to the associated functions. In turn, they may be regarded as useful articles. Chinese copyright laws do not necessarily exclude protection from useful articles. In a reply addressed to a query from the Switzerland Embassy with respect to the implementation of article 25.2 of the TRIPs Agreement in China, the National Copyright Bureau once stated that, Any industrial designs, including textile design, are protected by the Copyright Law, provided the designs fit the conditions for a ‘work of fine art’.

Although it was mainly addressed to textile products, this reply has often been cited as guidance that Chinese copyright protection can cover a useful article. However, since it does not specifically address the extent of that protection, it still needs to be reviewed and decided on a case-by-case basis. Although not explicitly set out under the copyright laws, the principle of functionality or separability has been adopted by certain courts in China, particularly for construing whether a subject of a useful article is an “original intellectual creation” and whether it may be afforded copyright protection.

For instance, in another Lego case, InterLego v Guangdong Xiaobailong Toys Industry, the court held that, If a work of fine art is adopted on a useful article, and the original and creative expression of the work of fine art is a result of the technical functions, and if the expressions for implementing the technical functions are limited, then others’ use does not constitute infringement of the copyright of the works of fine art. … because, if the use is found to be infringing, then the copyright protection afforded to the expression will objectively protect the technical functions entailed by the expression.

The court’s opinion adopted the principle of functionality or separability, as have the cases of Jean Paul Gaultier v Shantou Jiarou Fine Chemicals Company & Zhao Li Tin and Ouke Baobei (OK Baby) Company v Cixi Jiabao Children Appliances Company & Beijing Leyou Dakang Technology Company.

Moreover, in the TP-Link case, the second instance court addressed the functionality issue, saying that the menus and buttons in the GUI indicated corresponding functions that were part of operational methods and purely functional. In turn, since Chinese copyright laws protect creative expressions but not ideas or operational methods, these operational methods were not protected.

The merger doctrine and scènes à faire

Under the merger doctrine, if an idea may only be expressed in a very limited number of ways due to the nature of the subject matter, then one “independent” expression of such an idea cannot be afforded copyright protection. Similarly, under the scènes à faire doctrine, if the creative elements in a work are regarded as common practice or in the public domain, the work may also fail the independent creation test and thus be unprotectable.

In the second instance of the TP-Link case, the court held that, although there were a number of similarities between the GUIs for the two WLAN Router products at issue, the GUIs were designed in accordance with users’ requirements, and they must have referred to the common elements of existing GUIs due to similar functions that are rendered and similar user requirements. It seemed to suggest that the court had also adopted the merger doctrine or the principle of scènes à faire, which is not in favor of the GUI creator as shown in this case. Since the expressions could be limited due to the purpose of the design, the presentation of GUIs may be deemed as a limited expression of ideas, and thus unprotectable.

Public interest considerations coming to enforcement

Public interest always comes into play in the enforcement of copyright. It has been seen as a big, practical hurdle barring administrative enforcement for copyright owners. Assuming GUIs are afforded copyright protection and become the subject of enforcement actions, whether and how public interest is assessed would be uncertain. Arguably, giving no protection to copyrighted works would hurt society from a macro level; but it is unclear at which level public interest would be assessed.

In TP-Link, the second instance court considered that certain elements of a GUI fall into the scope of expressions in the public domain, and if Shenzhen Pulian (TP-Link) was allowed to prohibit others from using these expressions, it would be against the legislative purpose of encouraging the creation and spread of works and ultimately hurt the public interest. Arguably, this suggests that copyright affordable to GUIs may be more likely to fail the test of public interest. If a GUI is designed to satisfy a user’s frequent demands, it may be inevitable that the designs are familiar to the user and entail design limitations; the public interest may be more likely to outweigh the GUI designers’ individual rights.

Last but not least, as a concern of public interest, Chinese copyright laws provide for fair use exemptions, and a certain statutory licence, as a restriction on enforcing copyright.

Recent draft reform of Copyright Law

All may change with a new draft of the third revision of Chinese Copyright Law, which was released for public comment on March 31 2012. Among other things, its proposed revisions may have positive implications for GUIs.

Works of applied art – article 3(9)
The Draft tends to include useful articles under the category of works protectable under Copyright Law, as works of applied art. The specific inclusion of such works may help reduce some of the uncertainties that have existed around “works of fine art”. However, it still lacks clarification of the creativity or level of artistic sense required for the useful article to be subject to copyright protection, even as works of applied art.

Damages – article 72
This article introduces detailed provisions clarifying the damages available for copyright infringement. The statutory damages will double, from up to Rmb500,000 to Rmb1 million ($158,000) where compensation is difficult to be determined. However, in order to obtain these damages there is an additional requirement to record the copyright or relevant agreement, which will, in effect, make copyright recordal a compulsory procedure. Furthermore, for repeated copyright infringers, punitive damages one to three times higher will be introduced.

Administrative enforcement – articles 73 and 75
The enforcement power of administrative authorities will be increased. They will be entitled to seize or confiscate infringing products, and examine or force parties to reproduce sales invoices and contracts relevant to the infringing activities. Whereas previously the precondition to an administrative authority taking action was that the infringement should be “detrimental to the public interest”, now it is that the infringement is such as to “impair the order of socialist market economy” – a precondition that should be more easily satisfied.

Introduce design patent protection

It is quite clear from the limitations and exceptions described above that copyright law leaves important gaps in the protection of GUI designs, and therefore it would be risky to rely solely on copyright protection. While the improvements under the draft revision of Copyright Law look promising, even if finally adopted they may not help resolve these inherent limitations, especially the requirement of creativity or artistic sense.

Therefore, as copyright protection may remain the last resort for protecting GUIs, to provide appropriate incentives for investment and creation in GUI designs, China should explore the possibility of giving them design-patent protection, as in many other industrial countries.

(Courtesy: Rouse & Co, http://www.rouse.com/)

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