Benita Lau and Wai Yeng Chan look at Snapchat as they discuss how to protect your graphical user interface

Protecting your Graphical User Interface (GUI) – what are your options?

Whether in relation to gaming, communication, payment, or even an amalgamation of multiple functions, technology companies are leveraging on the use of mobile applications (“apps”) to reach a massive audience of smartphone users. A critical factor determining public reception to an app is its graphical user interface (“GUI”), which refers to the visual cues used to operate electronic devices and systems. In practice, this can include the layout of different keys, the transition between different screens, and more.

If GUIs are so potentially important to an app’s success, what options does a designer of a great GUI have to protect his or her work?

This article uses the example of Snap Inc.’s Snapchat to assess the key role of GUIs in building consumer recognition for technology-intensive brands and proposes possible strategies for protection under Singapore’s various intellectual property laws.

Case Study: The Battle of the Stories

Since 2011, Snapchat has made a name for itself in the domain of social messaging apps because of its focus on “ephemeral messaging”. A primary feature is the Snapchat Stories function launched in 2013 – a compilation of a user’s Snaps which friends can view for up to 24 hours only. Then in April 2016, Instagram Stories was launched and marketed as a compilation of photos and videos which “will disappear after 24 hours”. In March 2017, Facebook Stories was launched too.

Facebook and Instagram’s incorporation of the Stories concept did not go unnoticed, leading to a degree of public indignation of how the former could “copy” Snapchat so blatantly.

However, what Facebook and Instagram picked up on is only the idea of posting an impermanent compilation of photo and video-based messages. While this idea was popularized by Snapchat, it is not unique to Snapchat or protectable under intellectual property law. If one entity or person were allowed to claim exclusive use over an idea per se, innovation could be stifled. As such, intellectual property law generally only protects how the idea is expressed or implemented. GUIs are one facet in the expression or execution of those ideas.

In comparison to Facebook and Instagram, Snapchat has a significantly different approach to its GUI. Facebook and Instagram cater to clarity and accessibility with clearly designated navigation tools, and this is also reflected in their Stories features.

On the other hand, Snapchat offers a somewhat counter-intuitive GUI that propels you directly to camera mode instead of a menu or home page. It requires navigation by swiping in all four directions. Its facial-recognition augmented reality filters are also only accessible by tapping and holding the screen while your camera function is adjusted to front-facing. At best, this GUI has been described as unorthodox, and at worst, chaotic.

However, all this comes together as what experts call a “shareable GUI”. The inability of new users to decipher Snapchat’s “hidden” functions compels them to talk to their friends, while users who have made a discovery or “hack” are excited to share it with others. In a sense, there is a kind of exclusive knowledge required that gels the community of Snapchat users and entices new users to become involved.

Arguably, this non-conventional GUI contributes to Snapchat’s professed brand identity as a progressive social media platform that promotes candid self-expression and does not conform to structural norms. It is this robust brand identity which may continue to engender loyalty from users who feel that they can relate more to Snapchat in spite of the advantages offered by Facebook and Instagram’s versions, and has enabled Snapchat to put up some resistance against its bigger rivals.

Given the value of GUIs in relation to an overall brand, there is definitely an advantage to seeking protection under intellectual property laws. The following sections analyze Singapore’s various intellectual property regimes and how brands can benefit from the complementary protection offered by each.

Registered Design — a straightforward way to protect graphical user interface

One of the most straightforward ways of protecting the design of your GUI in Singapore is applying for registration under the Registered Designs Act. The Ministry of Law clarified in 2016 that even animated GUIs can be protected as a series of images moving in a sequence. If registration is granted, a design can be protected for a 15-year duration.

In Singapore, Apple Inc. is one of the industry leaders in filing for Registered Design protection, with 375 registrations as of the date of this article, 29 of which relate to their products’ GUI.

An excerpt from Apple Inc.’s registration for the design of the Exercise Ring on its Apple Watch (Application No. 30201500565Y)

A corollary of Singapore’s industrial designs regime is the “design patent” in the United States, which covers the configuration or shape of an article, the surface ornamentation applied to an article or a combination. Design patents have been granted for various elements of the Snapchat GUI, including the design of a simple main button which users tap to take a photo and hold to take a video.

Obtaining a Patent is Possible, but Difficult to prove that the Invention is New

If “design patents” in the United States cover similar subject matter as Singapore’s industrial designs, what then does patent law protect in Singapore? Singapore’s Patents Act allows for registration of “inventions”, which means products or processes that provide a new solution to a problem. This corresponds with the category of “utility patents” in the United States, otherwise known as “patents for invention”.

To the extent that this new solution takes the form of a GUI, it may also be possible to patent that GUI. For example, Singapore-based Creative Technology Ltd has a patent in the United States for its invention of a GUI that achieves the “automatic hierarchical categorization of music by metadata”. This means when a user selects the name of an artist, the interface will display a list of albums related to that artist. Selecting an album will then trigger the display of the tracks in that album.

In order to claim patent protection, however, the invention must be new. This is a very high threshold as the examining office will assess all prior inventions which had been made available to the public, anywhere in the world. For example, Apple’s patent for a GUI featuring the slide-to-unlock function had been invalidated by Courts in the Germany, simply because a similar system had been used before by a small company producing a touchscreen device called the “Neonode N1”.

In this example, the concept of a gallery of impermanent messages likely does not constitute a new invention. Snap Inc. has therefore patented technology relating to the execution of the idea, including the use of a server with processor and memory storing instructions to maintain this gallery of ephemeral messages (US Patent Publication No. 20160099901). To the extent that competitors are able to show that they developed their own technology to execute this idea, there likely would not be any infringement of this patent.

Moreover, this shows that while brand owners may apply to patent the technology or method of executing certain GUI, the visual appearance of the GUI may be more appropriately protected under other intellectual property regimes.

Trademark Law – indefinite protection but has limits to what can be trademarked

A number of technology companies have gone down the road of attempting to trademark aspects of their products’ GUIs. The benefit of trademark registration is that protection for the mark lasts indefinitely once registered.

In the context of GUI, this could include designs for icons used to launch an app.

An excerpt from Google’s Inc.’s registration for the Google Drive icon in Singapore (Trade Mark No. T1215442H)

It is also possible to apply to register dynamic images as a moving trademark. In the context of Snapchat, the animated Dancing Hot Dog featured in Snapchat’s revolving set of filters has quickly become an icon of the brand.

When designs like this can trigger instant recognition, there may be benefits in applying for registration as a moving trademark to further protect the brand.

As of the date of this article, only eight moving trademarks have been registered in Singapore with seven others pending registration, which is disproportionately low compared to the rising number of trademark registrations per year. One of these seven pending applications features the celebrity chef known as Salt Bae. If granted, the owner could prevent other traders from using a substantially similar moving image to market these goods or services. Further, the owner could negotiate for those other traders to require that they enter into licensing agreements to use the Salt Bae moving image, for a fee.

However, applicants may find themselves unable to claim protection for the entire GUI under a trademark, if aspects of the GUI’s visual appearance overlap with a functional purpose. A fundamental principle of trademark law is that protection cannot be claimed over functional designs, as this could permanently prevent other traders from using that technical solution. For example, Amazon Technologies, Inc. has amended its application to trademark the glowing ring on its voice-enabled Amazon Echo device with the United States Patent and Trademark Office, so that it only covers the glowing blue-purple light, and not the other colors.

Arguably, this is because the light ring communicates information to users when it flashes other colors, which could constitute a functional purpose. In Singapore, Amazon Technologies, Inc. has only resorted to applying for trademark registration for this stylized blue ring logo so far (Trade Mark No. 40201702981R).

It should also be noted that there must be “genuine use” of a trademark within 5 years from registration, otherwise, the registration may be revoked (Trade Marks Act, section 22(1)). This means the trademark must be applied to those goods or services registered for (or in relation to marketing material for those goods or services), for the purpose of providing information to consumers about the source of those goods or services. In other words, traders are not allowed to simply “hoard” words or images without using them as trademarks, just to deprive other traders the use of a similar word or image in relation to their business.

Copyright Law – no registration system for copyright in Singapore

Copyright can be treated as the default, first layer of protection since copyright automatically arises when a literary, dramatic, musical or artistic work is created, as well as sound recordings, cinematograph films, broadcasts, and cable programs. This means there can be copyright in designs incorporated in GUI, under the category of “artistic works”. Copyright may also be available for the source code which supports GUI or even non-graphical user interfaces (such as textual user interfaces) since Singapore’s Copyright Act provides that “literary works” include computer programs (Section 7A(1)(b) of the Copyright Act).

Source

However, there is presently no registration system for copyright in Singapore. Therefore, there is no option of proactively filing for registration to create the presumption of ownership, which would assist a brand owner in policing use of their works. In practice, disputes over ownership and infringement will usually have to be resolved by a dispute resolution body such as the Courts of Singapore. As such, brand owners should also consider applying for registration under the industrial designs, trademark, or patents regimes where applicable.

Protecting your graphical user interface can be a valuable strategic investment

With the growing convergence of key features and functions in the realm of apps, GUIs are highly valuable in distinguishing and building your brand from the very beginning. Whether you are a small technology start up or a big, established company, there is merit in making strategic investments to protect this important intellectual property asset for your app.

This article was first published by Asia Law Network.