2

Study on Protection of Image Designs
Indicated on the Display Screen

In the midst of IT advancement, image designs to be indicated on the display screen such as Graphic User
Interfaces (GUI) are considered as interface designs or communication designs, and have become importantfactors that can increase usability (easily viewable, usable and understandable) for users, just like device
designs.
Taking the actual conditions of design creation into account, this study investigates and analyzes thepossibility of protection of such image designs under the Design Law, Patent Law, Copyright Law and Unfair
Competition Prevention Law (including the Trademark Law) in Japan as well as the present situation ofprotection in Europe and the United States. Furthermore, it considers, from a legislative perspective, how theseimage designs should be protected in the future, mainly under the Design Law, in accordance with the opinionsfrom domestic and overseas users.

Ⅰ Actual Condition of Creation of
Image Designs Indicated on the
Display Screen
1

Present Situation of Development of
Image Designs

Though having a close relationship with thedesign of a device itself, an image design iscreated independently by a different creator fromthat of the device design. Most companies
recognize that GUI designers who create image
designs have different technical expertise fromthat of product designers who create device
designs. Image designs created by GUI designers
are often applied to multiple products. In otherwords, image designs are considered as fallingunder an independent category of designs at thescene of design creation.
In the future, the importance of image designs
is expected to increase along with further
computerization and IT processing for products,
and more image designs will be needed. For
example, in the field of home electric appliances,each product will perform more functions andintended uses as a network-based appliance.
Accordingly, the interface between devices andusers will be more important. Meanwhile, there
will come to be more image designers in proportion
to the increase of software developers. Although
only a few image designs will be needed in the caseof a device with a single function, several dozens or
hundreds of image designs will be needed if it isdeveloped into an IT device.
An image design used in a product also serves
as an important means to differentiate the productfrom those of other companies and to make clear its
characteristics. Furthermore, an image design is
not always incorporated into a device, and is often
created by a different creator in a different creation
process from that of device designs. For these

IIP Bulletin 2002

reasons, image designs should be protectedindependently from device designs.
2

Designing Artifacts Based on Words

With respect to rights to image designs andprotection thereof, designers argue as follows:
They create an image design aimed at “supporting
human activities”, and such design generates avariety of overlapping values. Therefore, not only
the “shape or look, and feel” of the final product are
valuable, but also the concept of the created designand “the new activity that users will start up using
the design” have significant value.
Consequently, it is not sufficient to evaluate adesign based on only its “shape”, and it is importantto recognize that “the new activity that users will
start up using the design” is the core of the value ofthe design. As a result, it would be possible toconsider protection of a design that has a function of“enabling users to start up a new activity by itsuse”.
To achieve this, designers will have to indicate
the “informative activity” that they create
understandably in the same manner as they havedescribed the “shape” of the design to others byusing a model or expressing it on drawings.
Furthermore, it will be necessary to put more
importance than ever on academic research on how
to describe the design of such “activity”.

Ⅱ History and Actual Condition ofProtection of Image Designs inJapan
1Protection under the Design Law

This section will report the history ofprotection of image designs under the Design Law
and the actual condition of such protection by● 10 ●

indicating specific examples of registered designs.
It was 1986 that image designs started toemerge as a problem in operation of the Design
Law and countermeasures were taken for the firsttime. At that time, the “Examination Guidelines on
Figures Indicated in an Indication Area of an Article(Buppin no Hyoujibu ni hyouji sareru Zukei tou ni
kansuru Shinsa-Kijun)” and the “Examination
Guidelines for Design concerning Pixels of Liquid
Crystal Display Panels (Ekishou-Hyoujiban no Gaso
ni kansuru Ishou no Shinsa-Kiju)” were published.
Later, the “Guidelines on the Written Description
in the Request for Design Registration andDrawings Attached Thereto (basic)”, the“Guidelines on Liquid Crystal Display, etc.” and the“Guidelines on Liquid Crystal Display, etc. (Partial
design applicable version)”(*1) were published in
1991, 1993 and 2002 respectively.
Protection of image designs was studied by
the Institute of Intellectual Property (IIP) in FY
1994 under the theme of “Subjects to be protectedindependently from articles (focusing on icons)”(*2).
In this study, icons were defined as “pictographic
characters indicated on the personal computer orthe display screen in the form of pictures that
express operating instructions”, and how to legally
protect icons under the Design Law, Copyright Law
and Unfair Competition Prevention Law wasconsidered. As a result, the conclusion was drawnthat “it is undesirable to grant absolutely exclusive
rights for icons without careful consideration”. The
report was generally negative with regard toprotection of icons based on absolutely exclusive
rights.
There were further discussions about thisissue at the JPO Round Table on the Design
System(*3), the Institute of Intellectual Poperty in
FY 1995(*4), and the Ad Hoc Committee on the
Design System at the Japan Design Protection
Association (JDPA) in FY 1996.(*5) In FY 1998, thedesign protection system was amended to introduce
the partial design registration system.
The report prepared by the JDPA in April 2001(*6)
addressed image designs for the first time after the
introduction of the partial design registration
system. However, it only posed problems on needs

for protection of image designs and proper
protection thereof.
As shown in specific examples of designs
registered in Japan(*7), it has become possible toprotect image designs to some degree as a type ofpartial designs.
The problem areas in the protection of image
designs under the Japanese Design Law stem fromthe history of protection of designs: therequirements that a design must be applied to anarticle and that a design must have a fixed form.
Therefore, in order to protect the substantial valueof image designs that are included in a new value
system, it seems essentially necessary to establish
a framework of protection based on a new concept,
independent from the relationship between designs
and the articles to which designs are applied andthe restrictions that are imposed by such
relationship.
As an alternative means, reconfirming or
reconsidering the relationship between an article towhich a design is applied and its form in accordancewith the interpretation of articles is also proposed.
Under the existing law, there is a category ofarticles that are abstractly and conceptually
recognized and fail to comply with the relationshipin which an article is indicated by its shape. In thisregard, if a design can be recognized as a partial
design that is applied to an article such as “a display
device for XX” or “a display panel for YY”, it will
not always be necessary to indicate the shape of thearticle as a whole and it will be possible even underthe existing law to protect an image design that isless relevant to the article to which it is applied.
2

Difference in Protection of Image Designs
between Japan and the United States

In the United States, a design of an icon was
registered as a design patent for the first time in1988. After the temporary interruption in the trend
to protect icons due to an appeal board decision
made in 1992 that the application for design patent
for an icon was to be refused, the United States
Patent and Trademark Office (USPTO) publishedguidelines on protection of icons in 1996 and a wide(*1) “Ishou Touroku Shutsugann no Gasnsho Oyobi Zumen no Kisai ni kansuru guideliles - kihon hen- ekishou hyouji tou ni
kansuru guidelines [Bubun Ishou Taiouban]” (Japan Patent Office, 2002).
(*2) Institute of Intellectual Property, “Ishou ni kakaru Buppin to Ishou Hogo no Arikata ni kansuru Chousa Kenkyu
Houkokusho (Report of Research and Study on an Article to Which the Design Is Applied and Proper Protection of Designs” (IIP,
1995)(*3) Report of the JPO Round Table on the Design System “Miryoku aru Ishou Seido no Kakuritsu e mukete (Aiming at
Establishing an Attractive Design System)” (Japan Patent Office, August 22, 1995)(*4) “Design Katsudou no Jittai ni gacchisita Ishou Seido no Arikata ni kansuru Chousa Kenkyu Houkokusho (Report of Researchand Study on Proper Protection of Designs Suitable for the Actual Condition of Designing Activities)” (Institute of Intellectual
Property, 1996)(*5) “Kokusaika Jidai ni taiousita souzouteki Design no Hogo Kyouka Houkokusho (Report on Reinforcement of Protection ofCreative Designs Suitable for the Age of Globalization” (The Japan Design Protection Association, 1997)(*6) “Sousagamen Design no Bubun Ishou Hogo ni kansuru Chousa Kenkyu Houkokusho (Report of Research and Study on
Protection of Designs for Operating Display under the Part-Design System)” (The Japan Design Protection Association, 2001)● 11 ●IIP Bulletin 2002

range of image designs have been registered as
design patents since then.
There seems to be difference between the“Guidelines on Liquid Crystal Display, etc.” inJapan and the practices in the United States withrespect to the following points.
c In the examination in Japan, a figure that is to
be indicated on the display part of an article such asa liquid crystal panel is required to be indispensablefor the constitution of the article. For example, inthe case of an article that has a variety of display
functions, e.g. a mobile phone, at least thesummary page (initial menu page) that integrates
individual functional pages may satisfy therequirement of indispensability, but whether otherpages following the summary page are“indispensable” is not clear. In the United States,on the other hand, the registration of an icon isdetermined in consideration of whether it isembodied in an article. In this case, whether afigure indicated on an article is indispensable forconstituting the article or performing the intended
use of the article is not considered. Consequently,
the scope of protection is not limited to the initial
menu page.
d In the examination in Japan, a figure that is to
be indicated on the display part of an article such asa liquid crystal panel is required to be indicated bythe (display) function of the article itself without
being controlled by external signals from outside
the article. In the case of a page that is indicatedthrough an operation other than simple operations
performed by the user, it is not clear whether
protection is provided for such page. In the UnitedStates, on the other hand, protection is provided foran icon, irrespective of whether or not it isindicated by functions of the article itself (e.g. a
monitor or display).
e In the examination in Japan, if a figure that is
to be indicated on the display part of an article
varies, the appearance of the variation is required to
be specified. In order for an indicated figure to berecognized as a component of a design, there
should be relevance between the appearances ofthe figure before and after the variation. In the
United States, on the other hand, there is no suchprovision; however, there is a general requirement
for the registration of design patent that, where asingle application is filed for multiple forms of
embodiments, all these forms of embodiments
should be included in the same creative idea.
Therefore, it is not clear whether it is possible tofile a single application for images that change from
one to another in completely different shapes.
The above comparisons indicate the differencein the requirement concerning “an article” between
the guidelines in Japan and those in the UnitedStates.
3 Protection under the Patent Law

IIP Bulletin 2002

Even in the framework under the Japanese
Patent law, it is possible to “indirectly” protect
creations of image designs by focusing on theirfunctional and technical aspects and considering
them as software-related inventions.
Where a patent right has been granted for asoftware application for materializing a particularfunctional aspect that is to be indicated on thedisplay screen, the effect of the patent right may
extend to a wide range of software applications
for displaying other page designs that satisfy therequirements for constituting the patented
inventions, irrespective of the difference in designs
in terms of those details. Therefore, “indirect”
protection of image designs under the Patent Law
does not necessarily mean that only weakprotection can be obtained. Nevertheless, it isneedless to say that no matter how excellent thepage design is from the design aspect, it is notexpected to be protected under the Patent Law if
it is conventional and common from the functional
and technical aspects. In addition, under the
existing Patent Law, still there is room to discuss
whether a patent right may be obtained byclaiming the image design itself. Protection ofimage designs under the existing law in Japan is
insufficient in some aspects with respect to thescope of effect of a patent right for such design,compared with the United States where a GUI itself
may be claimed.
In summary, as long as protection is premised
upon the existing Patent Law, image designs willbasically be protected from the functional andtechnical aspects and it will therefore be difficult toprotect them squarely from the design aspect.
There are other issues to be considered in the
future concerning protection of creations related toimage designs under the Patent Law. They are as
follows: whether a creation that will bring any
action or effect by influencing the sensibilities of ahuman being via a design indicated on the display
screen may be construed as satisfying therequirement of “utilizing a law of nature” under the
Patent Law, and if it may be so construed, whether
legislative measures are required. These issues willlead to a larger issue to be considered: whether it isnecessary to recognize a clear change in the very
concept of “invention” under the Patent Law, or inother words, the scope of protection of information
property under the Patent Law.
Another issue to be considered in the future is
how to maintain balance with the scope ofprotection under the Design Law in accordancewith such change in the scope of protection under
the Patent Law. We should consider in the future
how we should segment between the area of“aesthetic impression on the sense of sight” underthe existing Design Law and the area protectedunder the Patent Law, or whether it is necessary toamend the Design Law itself.

● 12 ●

4

Protection under the Copyright Law

Generally, image designs may be evaluated as
creative expressions of ideas in the art or academic
field, and they are never excluded from the scope ofworks. In some cases, not only image designs
themselves but also the whole aggregation thereof
including the hierarchy (sequence, relevance) arerecognized as works (decision of Tokyo District
Court on June 13, 2001, Hanrei Jiho, No. 1761, P.
131 [Cybozu case]). Furthermore, a program that isexpressed as a combination of commands fordisplaying image designs on the liquid crystal
display part through operating a computer isseparately protected as a work under the CopyrightLaw.
It cannot be denied that the creation of animage design has a smaller portion of creative
expression than an artistic work, due to therestriction that the image design has to befunctional. On the other hand, it is generally
considered that in order for a work to be
copyrighted, the work is only required to becreative to the degree that the personality ororiginality of its author is displayed therein, and it is
not required to be objectively novel or involve
inventive steps (i.e. not easy to create) as
inventions, devices (utility models) and designs are
required under relevant laws. A copyright is also
advantageous in that it can be quickly exercised
because a copyright may be obtained without
examination or registration when a creation
satisfying the requirements for a work copyrighted
is completed. Conversely, it is undeniable that there
are the following defects in the copyright system.
The owner of a copyright would hesitate toexercise his/her right against products other thanthose considered as dead copies clearly infringing
the copyright, or the owner would have less
opportunities to settle disputes before instituting
lawsuits between parties concerned, because
callegedly infringing products must be based on
the original work, and d compared with registered
designs and other industrial property rights that are
granted after examination, it is not easy to define inadvance the scope of protection under copyright or
to judge in advance the possibility of infringement.
Furthermore, even when a copyright is attributed
to a person other than the author, the moral rightstill belongs to the author. In this case, the use of
the work would be restricted because it isnecessary to deal with the moral right in addition to
the copyright.
With respect to expressions as creations, theboundary between protection under the Copyright
Law and protection under the Design Law is notclearly defined. The Copyright Law provides that
“artistic works” include fine arts and crafts. The
purpose of this provision seems to limit the scopeof protection to unique individually-created works.
However, judicial precedents show a strong
tendency to provide protection under copyright toexpressions as industrially applicable creations, aslong as they are considered as being artistic andevaluated as works. In connection with the CopyrightLaw, the requirement of being industriallyapplicable means that works such as pure fine arts,
which are created not for the purpose of repeatedly
producing the same art on a massive scale but withthe essential aim of creating one individual work,
shall not be protected under the Design Law. Thisrequirement is not considered as a ground for
excluding the expressions as creations that are to
be protected under the Design Law from the scopeof works under the Copyright Law. Thus, it isdifficult to establish criteria that can clearlysegment the applicable areas of both laws: theselaws overlap in some areas.
5

Protection under the Unfair Competition
Prevention Law and the Trademark Law

In applying the provisions of the Unfair
Competition Prevention Law for preventing
confusion and for protecting famous indications to
an image design, there are various problems to beconsidered such as whether the image design canbe considered as “an indication of goods or otherindication”, whether it can be recognized to serve
as a “designator of the origin” and whether it is“famous”. Basically, an image design itself does nothave the function of designating the origin of goods
or business. Whether an image design itself can beconsidered as goods, i.e. property that can be
independently traded, also becomes a problem.
Though there is no judicial precedent that
addressed the above issues about image designs,
we can use precedents on games and typefaces aswell as a number of precedents on accounting
receipts as informative examples. In light of theseprecedents, image designs may not be so frequently
deemed to acquire the function of a source
designator of the origin because they are notoriginally applied as a designator of the origin.
However, some image designs may be deemed toserve as designators of the origin, if they arerecognized so by consumers based on theuniqueness of their forms and the history of actualuse.
Furthermore, where an image design itself orthe intangible software to which the design isapplied is independently traded, the design or thesoftware, including image designs for general
purposes, may be recognized as goods.
On the other hand, it would seem extremely
limited that image designs originally not aiming atserving as a designator of the origin are protectedunder the provision for protecting famous
indications.

● 13 ●IIP Bulletin 2002

In addition to the above provisions, the Unfair
Competition Prevention Law has the provision forprohibiting imitation of the configuration of goods.
The main point of issue regarding the protection ofimage designs under that provision is also whether
an image design is deemed to be a configuration of
goods. As an image design is itself visible, it seems
to satisfy the requirement of being a configuration.
However, there are pros and cons to the possibility
to recognize an image design itself as goods.
Theoretically, it is possible to evaluate an image
design as a configuration of goods. Nevertheless,some functional image designs such as operation
pages and icons may not be protected on the
grounds that they are considered as “common
configurations” of goods from the perspective ofstandardization.
The Trademark Law intends to protect
designator of the origin, as does the Unfair
Competition Prevention Law. Therefore, we should
consider whether it is possible to protect image
designs, which are not originally created as
designator of the origin, under the Trademark Law.
With respect to some image designs such as icons
that have the function of communicating
information, even if trademark registration is
obtained, it would be difficult to exercise thetrademark right.

Ⅲ Demand andProtection
1

NecessityforJapan Intellectual Property Association

The Japan Intellectual Property Association(JIPA) provided the following comments based on
the results of discussion at its Design Committee.
Along with the advancement of information
technology (IT), companies have been focusing
their efforts on hardware/software development anddevelopment of image designs to be indicated on
display screen. Image designs created by investinga lot of financial and human resources into theirdevelopment should be property protected as
products that have proprietary value.
An image design has the following threeproperties.
c It is applicable for a “general purpose”,
irrespective of the external shape of the device, thetype of device and the method for providing it.
d It embodies its own use, function and shape
only when “operation through electric conduction”
is performed.
e It needs multiple, different images that form ahierarchical structure in order to perform its use orfunction.
In protecting image designs that have theabove properties under the existing Design Law,
we would face the following problems or limits of

IIP Bulletin 2002

protection.
c Under the Design Law, “article” and “design”
are inseparably incorporated. In contrast, an image
design generally has a “general purpose” that is not
limited to an article.
d It is difficult to obtain prior art information forimage designs because the shape of an image
design is embodied only when “operation thoroughelectric conduction” is performed. Furthermore,
the Design Law has yet to introduce a system oflaying-open unexamined applications.
e Since the Design Law requires “oneapplication for one design”, there is a limit to the“method for filing an application” in properly
protecting a “hierarchical structure” and “movable
design” of an image design.
f The criteria for judgment in examinationor the
like have yet to sufficiently be developed tomaintain balance between “protection of icons” and“public interests” including standardization.
According to the above results of discussion,
the existing Design Law has its limits in protecting
the substance of an image design under an effective
right. Further measures including legal amendment
for expansion of protection should be considered.
2

Japan Electronics andTechnology
Industries(JEITA)

Information
Association

Whether an image design is to be protectedunder the existing Design Law depends on whether
it is subject to the “restriction of being applied to anarticle” or whether it goes beyond the restriction.
There are two options for providing protection
beyond the “restriction” under the Design Law:
additionally including “a screen” in the scope of“articles to which a design is applied” or abolishing
the requirement that a design must be applied to anarticle. This section will present questions about
the clearer option: abolishment of the requirementthat a design must be applied to an article.
c “The requirement that a design must be
applied to an article” has affect the basis of thedesign protection system. Wouldn’t its abolishment
go against the spirit of the legislation of the Design
Law for industrial development?
d Wouldn’t its abolishment lead to the collapseof the traditional system under the Design Law inreturn for protection of image design?
e If the requirement is abolished, what would be
the difference between design registration andcopyright?
f Would it be appropriate to grant an absolutely
exclusive right to an image design?
g Would it be possible for the JPO to examine
image designs? There might be problems incollecting prior art for examination because more
image designs would be found in actual products
than in publications.

● 14 ●

h Would it be possible for companies to conduct
search for rights on image designs in advance?
i How could registrations for moving image
designs be published?
j In the case of infringement, which would be
subject to the enforcement of right, themanufacturer of the product or the creator of theimage design?
k How could balance be maintained between themonopoly of icons and the standardization?
Considering that, as mentioned above, it isdifficult to examine image designs under the
existing Design Law, introducing a non-substantive
examination registration system would be anotherpotential measure. However, there would be thefollowing questions in such a system.
c How could the difference be handled between
a right granted for a design without examination
and a copyright?
d Wouldn ’t the non-substantive system be
unsuitable for Japanese companies? Since theamendment of the Utility Model Law to introduce
the non-substantive examination system, thenumber of utility model applications has been
decreasing.
e Wouldn’t it increase unnecessary lawsuits andcause abuse of rights?
In order to protect image designs that will
become more important in the future, it is desired
to resolve these problems and protect them in abalanced manner. To this end, it is necessary to
introduce a legal system to protect designs that arevery creative and worth protecting rather thanprotect image designs as exceptional designs.
3

Japan Patent Attorneys Association

The Japan Patent Attorneys Association(JPAA) has pointed out (1) the necessity to protect
image designs from the perspective of international
harmonization, and (2) various issues that would be
the basis of considering the necessity and the ideal
form of protection of image designs, which werediscussed at the Design Committee of the JPAA.
(1) With respect to the requirement that a design
must be applied to an article in connection withimage designs such as icons, whereas icons
themselves are recognized as products andregistrable in some countries such as Portugal, inother countries such as the United States, icons
that are not indicated on the computer display
screen are deemed to be mere surface ornaments
and unregistrable on the ground that they are notapplied to articles.
As for the scope of registrable designs, insome countries such as the United States, not only
individual icons that are indicated on the computer
display screen but also the total design indicated on

the entire display screen are registrable. On theother hand, in countries that comply with Design
Directive(*8) 98/71/EC, individual icons may beregistrable, but it is unclear whether the total
design indicated on the entire computer screen isregistrable. It is also unclear whether it is possible
under the U.S. design patent system to effectively
protect an image design having multiple pages in ahierarchical structure as such, and there is no
example of registration of such design in othercountries. Thus, no country seems to clearlyprotect image designs that have a hierarchicalstructure under the design protection system.
As mentioned above, there is no uniformity inthe international situation concerning protection ofimage designs at the present stage. Therefore, thisdoes not lead to the conclusion that the necessity ofinternational harmonization has arisen.
(2) To date, the First Section of the Design
Committee of the JPAA has yet to draw a final
conclusion on this issue. In the process of
discussion, it was proposed as an idea, according to
the analysis of the characteristics of image designs
for GUI, to establish a framework of protection in
the form of a deposit system that will not require
substantive examination. This proposal was basedon the following considerations; in the case ofprotection of an image design under copyright, it isunclear which portion of the image design iscovered by the copyright and this would be an
obstacle for development of designs; on the other
hand, in response to the needs for a system toclearly make a public notice on the existence ofright for image designs, it may be an option toprotect them under the existing Design Law.
However, considering that there are too many
restrictions under the current law, it would rather
be desirable to establish a new protection system.
The JPAA further commented on the following
points.
c Though members of the Design Committee
failed to present a wide range of realistic demands
for protection of image designs, needs for suchprotection will surely increase in the future.
d The variety of image designs is extremelywide.
e There is no physical restriction in creating
image designs unlike the case of tangible designs.
f It is necessary to consider what is to beprotected in an image design, the expression, theconfiguration based on its use or function, or the
combination of an idea and its expression, which isa new category.
g It is also necessary to consider whether toseek protection under the existing Design Law or
to realize design protection that are suitable for the
21st century through entire amendments of the
Design Law.

(*8) Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs.
● 15 ●IIP Bulletin 2002

Ⅳ Results of Investigations
Japan and Abroad
1

inInterview Investigation in JapanAn interview investigation was carried out
targeting a total of nine companies including fivesoftware houses including a company which had
experience of litigation and four applicants for U.S.
design patent registration.
c Cases that their image designs were imitatedor counterfeited: 6 companies responded that there
was no such case or they had no knowledge of suchcase or they had never conducted investigation on
this matter.
d Creator of image designs: It depends on what
they intend to create; Average time for creation:
three months; Average cost for creation: ¥2-3
million per person per month.
e Number of in-house designers: Softwarehouses more frequently uses their own designers.
f Necessity to protect image designs: In generalterms, they thought that image designs should beprotected because they invested a lot of time andmoney into them. However, they have yet toconsider this matter specifically.
g Subject to be protected: An image design to beprotected under the existing law and the image
design itself independent from the article.
h Special efforts that they are making to protect
image designs: Most companies were making no
special effort.
i Reason for filing U.S. design patentapplications: Most companies had filed U.S.
application in order to learn what kind of image
designs would be registered.
j Possible enforcement: Most companies had
never imagined such cases specifically.
k Claiming priority right based on Japaneseapplication: They use drawings in original Japanese
patent application.
l Relation between design patents and ordinary
patents: Applications for design patent were
exceptionally filed, and only one company keeps
filing design patent applications.
Knowledge of U.S. design patent: Almost all⑪
companies know that image design is registrable as
design patent in the United States, but they do notknow the scope of design patent.
Knowledge of designs registration in Japan:⑫
They know designs registration for e.g. mobile
phone.
Gap between examples of U.S. design patent⑬
and Japanese design registrations: Most companies
had never felt much inconvenience.
Direction in which image design will change in⑭
the future: Combination of shape, color, movement,
and sound will provide more usability in userinterfaces.
Types and scope of image designs that can be⑮

IIP Bulletin 2002

legally protected: Most companies are not sure.
How image designs should be legally protected⑯
in the future: A new system for protection will beneeded, for example, a system similar to the
copyright system in which a work as a whole isregistrable and can be used for consideration.
2

Entrusted Survey in the United States(Legal Aspect)

The summary of the report of the survey on
the “Present Situation of Protection of Image
Designs in the United States” entrusted toFinnegan, Henderson, Farabow, Garrett & Dunner,
L.L.P. is as follows.
In general, design patents provide inexpensive
and effective protection for computer icon designs.
The USPTO now routinely issues design patents
for computer icons. Procedurally, it should be easy
to obtain design patent protection for computericons, if the as-filed application includes a claim, atitle, and drawings that describe or depict thedesign on an article of manufacture, such as an icon
or image on a computer screen or display panel.
While their research did not find any reported
cases that involved the litigation of a design patent
for a computer icon, a design patent on a computericon is an important defensive tool in protecting
such intellectual property. A design patentexcludes others from making, using, selling, oroffering to sell the claimed subject matter of thedesign patent and variations of the claimed designthat would be confused with the claimed design. If
infringement could be proved, an injunction
preventing further use, as well as money damages,
are available.
3

Entrusted Survey in the United States(Design Aspect)

The survey entrusted to Aaron Marcus andAssociates, Inc. (AM+M) was carried out toexplore the opinions of the design community about
the value, process, and future of user-interface
design patents. This survey investigated opinionsof designers and companies in the United States,
focusing on the following matters: specificexamples of image designs and the actual
condition of creation thereof; needs for protectionof image designs and reasons for such needs;
experience of suffering infringements; effectivenessof protection under design patents; efforts taken
for protection of image designs; evaluation ofprotection under design patent and other intellectual
property laws.
The results of this survey point to the needfor informing the design community further about
intellectual property protection and debating
carefully some key issues again that werediscussed five or ten years ago, when desktop● 16 ●

WIMPs(*9) ruled and the Web/mobile devices werein their respective infancies.
The results of this survey also point tosignificant challenges to the established concepts,
terminology, documents, and processes of current
design patent protection as user-interface designcontinues its inexorable advance toward new andmore comprehensive attributes that may not be as
easily describable or protectable in establishedintellectual property protections as past artifacts.
4

Entrusted
Aspect)SurveyinEurope(LegalIn the survey entrusted to Dr. Annette Kur ofthe Max Planck Institute for Intellectual Property,
Competition and Tax Law, a questionnaire was sent
to patent offices in all EU Member States and the
response from Germany, Portugal, Sweden andAustria as well as the report on the situation in the
United Kingdom were obtained. Portugal andGermany also provided specific examples ofregistration.
The topic to be investigated in this survey has
until now played a rather marginal role in European
literature and case law. It seems that at least for thetime being, there is little demand in practice fordesign protection of individual elements of GUI of
computer programs, in particular icons. Only very
few decisions of at least indirect relevance in thefield can be found. Furthermore, the question does
not seem to have given rise to problems anddebates in the framework of the registration
procedure, or to have resulted in the promulgationof specific rules or guidelines.
This impression has been confirmed to acertain extent in the second stage of this survey,
when an attempt was undertaken to investigate thecurrent practice of patent offices in Europe withregard to the registration of computer icons andother similar items. The questionnaire which wassent out to all European offices did not evoke much
response, and it was expressly stated in the answer
from the German Patent Office that design
protection of icons is an “undeveloped area”.
5

Entrusted Survey in Europe (Design
Aspect)The survey entrusted to the International
Institute for Information Design (IIID) sought
opinions from designers and companies that are
involved in image designs in Europe.
The carried-out investigation made it clearthat the legal protection of image designs is a most
relevant and complex subject indeed. Even those
designers who sell “work for hire”, thustransferring all their rights together with theownership of their designs to their clients, realizethat they should review their position.
The low level of knowledge of legal design
protection coincides with the outcome of a recent
inquiry of an electronic newsletter of The
International
CouncilofGraphic
DesignAssociations (Icograda)(eNews), issue 48/01 of 9
December 2001 of which reports the results of an
opinion poll on the question “Should you comeacross your idea and/or concept being plagiarized,
how would you react to that?”. The answers of thereaders of Icograda eNews:－ Approach that designer and deal with it
personally: 33%－ Seek legal advice: 28%－ Ignore it: 30%
The responses seem to illustrate what wasreported in another Icograda eNews issue (3/02 of
20 January 2002). The respective question was:“How well does the legal system in your country
protect your authorship rights?”
The answers:－ Quite well: 13%－ It works sometimes: 8%－ It doesn’t really work in practice: 79%.
Improved protection requires a better
understanding of the features and criteria which
determine the value of image designs. Better
understanding will result in more adequate
definitions and more appropriate tools to
distinguish original designs from imitations.
Some of the opinions uttered and suggestions
made are listed in this report. They relate to theidea of information design as an emerging discipline
which brings together information technology,
copywriting, testing and marketing skills in supportof design solutions which the information designer
is expected to create.
Most of the mentioned skills are beyond thefocus of the given investigation, but two of them,
design and programming, have been indicated ofprime importance with regard to foreseeable
developments in graphic user interface design.
Their convergence might be of deciding relevanceto further considerations. Similarly, the value
designers adhere to “function” in comparison with“look” shows that the traditional thinking, that theresult of a creative process can be categorized
either as “design” or “function”, cannot be
maintained in the future. A new approach is neededwith regard to image designs which are both
uniquely shaped and functional.
Moreover, the concept that a display screen as
a medium for representing image designs should
govern new thinking concerning the legal
protection of such image designs has to bereviewed. With regard to the possibility to project
image designs straight onto the retina it might(*9) Window/Icon/Menu/Pointing device● 17 ●IIP Bulletin 2002

prove not being more relevant than regulations
which relate to the reproduction of image designs
on paper.
From the suggestions which point to new
directions the following might justify ingoing
considerations:c Classes of designs with regard to complexity:－ innovative “generic” designs (which stand out
because their function and their visual presentation
are inseparable) like interactive diagrams.
－ “concepts” of designs and design systems
which must build on shared conventions like muchof public information design.
－ image designs which visually represent a
general reference or function in a much more
appropriate way (possibly with the support ofsound) than envisaged before, e.g. an innovative
toolbar or an icon to indicate a basic function of asoftware program.
－ classes of designs with regard to function.
－ image designs which qualify for legal
protection but are offered for free use by theirdesigners (like freeware).
d Claiming authorship:－ explicit warnings.
－ electronic fingerprints / digital watermarks /implemented heritage proofs and data stamps.
－ collecting royalties from those who copy image
designs for use other than intended by the author.
－ categories of image designs which may be
dealt with like image designs reproduced in print
and therefore need no special precautions.
e “Use” aspects of legal instruments and theircost/effect ratio:－ cost of filing a patente.g. the planned revision of the European
Community Patent Convention might require thatall patents are translated into every EU language,
thus making it unlikely to be used even if
introduced.
－ time from application to approval
Dr. Elisabeth Vlasaty (Vienna), an expert
lawyer who was asked for comments on theoutcome of the investigation: “If designers thinkthat patent law is very ok they might not be awareof the fact that filing a patent under the alreadyexisting European Patent Convention on average
takes 4 years”.
－ Internet Service to evaluate and claim theprotection of image designs
Building on this survey to get insights into theprocess of image design creation and how image
designs serve various purposes in electronic visualcommunication tasks it became clear that thedevelopment of the new information and network
society leads up to new challenges information
designers must cope with. In doing socorresponding measures must be taken to secure

the legal protection of the resulting unique looks
and functions of innovative designs.

Ⅴ Proper Protection
Design Law
1the

Scope of Protection of Image Designs
under the Partial Design Registration
SystemWith respect to the needs for (1) protection ofimage designs with movable element and (2)protection of image designs without restrictionof
article, the committee for this study discussed
whether these needs would be satisfied under the
existing Design Law, taking the registered design
No. 1075910 concerning a mobile phone as an
example and considering the scope of protection ofpartial design in the following cases:c Where the shape of the portions indicated by
the broken lines in the drawings for the registered
design is completely altered;d Where the registered image design is placed ina different position;e Where the same image design is used for arefrigerator;
f Where the same image design is used for atelephone that is attached to a refrigerator;g Where the same image design is used for a“computer with a display screen”, which is a
general-purpose computer equipped with thetelephone function;h Where the data of the registered image design
is distributed and downloaded via the Internet to amobile phone which is not pre-installed with such
image data;i Where an element of the registered image
design is movable;
j Where design registration is obtained for theimage design with the movable element mentioned
in Case i.
Whether the image design is protected inthese cases was analyzed, in light of how to deal
with (a) a partial design that makes creative
contribution by the part itself such as a componentand (b) a partial design that makes creative
contribution in the arrangement (layout), as well asin accordance with the “Guidelines on Liquid Crystal
Display, etc. (Partial design applicable version)”(*10).
Whether image designs can be protected largely
depends on the determination of similarity ofdesigns. In this respect, there is a limit toprotection due to the restriction of an article
applied.
In Europe, the system for right to theunregistered community design came into force on
March 6, 2002 in accordance with the Community(*10) Guidelines in supra note 1.

IIP Bulletin 2002

under

● 18 ●

Design Regulation(*11), and acceptance of applications
for right to registered community design will startin January 2003. The U.K. Design Law was also
amended in accordance with the European Design
Directive(*12) and the amendment was put into
force on December 9, 2001. These amendments
introduced protection of graphic symbols including
icons.
According to the above results of consideration,
the following points should be noted in amending
the Japanese Design Law:
c It is desirable in Japan to protect image
designs under the Design Law as they areprotected in Europe and the United States;d In order to properly protect image designs
without being restricted by the requirement that adesign must be applied to an article, it isrecommended to introduce the concept of“product” that is found in the Community Design
Regulation;e Consistency between the requirements forregistration and the scope of protection is desired;f The substantive examination system should bemaintained and the introduction of the post grant
opposition system is desired;g Measures are required to enhance protectionof image design with movable element;h Adjustment with the Copyright Law is needed;
i The Unfair Competition Prevention Law
should be improved to protect image designs for ashort term, e.g. three years, in order to share theprotection with the Design Law.
2

Protectionof
Image
Designs
Interpretation and Legislative Proposals -The scopes and limits of protection of image
designs under the Patent Law, Copyright Law,
Unfair Competition Prevention Law, Civil Code andexisting Design Law are different, respectively.
According to the analysis of the possibility andlimit of expansion of the scope of protection
through interpretation of the existing Design Law,
it is possible to protect general-purpose image
designs as well as image designs with movableelement under the existing law by amending theclassification of articles and guidelines. However,
the existing law still has its limits in providing
effective protection because it is unclear whether
the use of an image design is construed as the“working of a design” in proving the existence of adirect or indirect infringement.
In this respect, image designs may beprotected based on unjustified interpretation of the
Design Law amended in the above manner.
Here, the following tentative proposal forfurther amendments to protect image designs will

be examined.
The substance of image design, especially GUI,
is instructions for the user to transmit particular
information to the computer that is expressed in
the form of image, and an image design may berecognized to have original creativity in theexpression itself. In this respect, creation of animage design shall be naturally distinguished fromcreation of technical ideas protected under the
Patent Law. Even if an image design with afunctional element, which is suitable for protection
as creation of a technical idea, shall be protectedunder the Patent Law, such protection would notcompletely secure the protection of the expression,
which is the substance of the image design.
On the other hand, an image design that hasoriginal creativity in its expression as such isincluded in the scope of protection under the
Copyright Law, a law to protect creative expressions.
In other words, not only individual images but also
the whole aggregation thereof including thehierarchy (sequence, relevance) may be protectedunder the Copyright Law as a work or a program
work that is expressed in the form of a combinationof commands to indicate image designs on a display
screen through operation of the computer.
Therefore, it is difficult to clearly define theboundary of the scopes of protection between the
Copyright Law and the Design Law.
Applied arts that are designed for practicaluses are often regarded being required to havehigh-level artistic creativity to be protected undercopyright. Based on such view, image designs
would rather be properly protected if they were
protected under the Design Law.
According to the amendment of the Patent
Law and the Trademark Law in 2002, information
property such as downloadable computer programs
have come to be included in the scope of protection
under both laws. Therefore, it is anticipated that theprovisions of the Unfair Competition Prevention Law
for protecting goods or other indications and theconfiguration of goods will also protect goods orother indications not only as tangible property but
also as intangible information property. Since animage design can be traded as information property
and the image thereof has a visible configuration,legal amendment should be made to clearly present
the interpretation that an image design may beprotected as the configuration of goods under the
Unfair Competition Prevention Law. For example, it
is recommended as the amendment of the law toclearly stipulate that image designs, especially GUIs,
are included in the scope of configuration of goods,
and to revise as “the provision via telecommunicationlines shall be included” within the act of assigningand leasing as well as to revise the term “the date(*11) Council Regulation (EC) No. 6/2002 of 12 December 2001 on Community designs.
(*12) Directive in supra note 8.
● 19 ●IIP Bulletin 2002

selling thereof first commenced” into “the earlier of
either the date selling thereof first commenced or
the date provision thereof first commenced via
telecommunication lines”.
Such amendment would provide prompt
protection against imitations of image designs. In
this case, an image design would be protected only
for a short term and against identical or substantially
identical design, not against similar designs.
Nevertheless, such protection would be more properfor image designs with short lifecycles because there
is no inevitable time constraint for the examination.
In order to meet the need for protection for a longer
term, it would be sufficient to leave measure toobtain a right to registered design through anapplication for registration of design.
Assuming that image designs may beprotected under laws other than the Design Law, it
would be a question whether it is necessary or
reasonable to protect them under the Design Law.
Some may argue that the requirement that a design
must be incorporated into an article is thesubstance of the design registration system andtherefore should be maintained.
However, as further advancement of IT iscurrently believed to be certain, we should rather
consider whether it is necessary or reasonable tocontinue to place image designs, which are valuable
information property, under the restraint that adesign must be applied to an article.
Despite lack of shape of an article, an image
design is equipped with elements to constitute adesign, “a shape, pattern or color or any combination
thereof ...... which produces an aesthetic impression
on the sense of sight” to be applied to an article. If
the restraint under the existing Design Law that adesign must be applied to an article were relaxed,
an image design could be protected under the law.
This requirement is not an essential one thatnecessarily arises from the nature of a design itself.
Therefore, there is no reason to exclude image
designs from the scope of protection under the
Design Law, and protecting the creation of image
designs under the Design Law would be suitable forthe actual condition of the creation as well as
reasonable from the perspective of the legal system.
In order to protect the creation of a figure to be
indicated without restriction of article or theconstitution itself of other image design applied to
article, it would be possible to establish a secondary
Design Law, an Image Design or the Like
Protection Law, as a legislative measure.
Next, the necessity to amend the definition of“design” will be examined.
As long as the existing Design Law considers
an indicated figure as a pattern that is represented
on a part of an article,(1) an image design by software that is voluntarily

installed via an external storage unit,(2) an image design on a website that is indicatedon a user terminal via communication lines, and(3) an image design by software that is downloaded
via telecommunication lines
shall not be considered as such the pattern, andtherefore it shall be excluded from the scope ofprotection as it dose not constitute “design” under
the Design Law.
In order to also protect these image designs
under the Design Law, it would be reasonable toremove the restraint that a design must be applied
to an article as an element to constitute “design”
and to redefine “design” for protection of “shape,
pattern or color or combination thereof” as such,
which is applied to an article and which produces anaesthetic impression on the sense of sight under
the Design Law.
The first proposal of such definition would be“shape, pattern or color or any combination thereof
that is applied to an article”. However, thisexpression would not be appropriate in light of thelegislative history in Japan, as mentioned before.
According to this definition, an image design would
be considered as a “pattern or color or any
combination thereof that is applied to an article”. In
this case, however, not only image designs but also
designs of water works or fire works would be
included in the framework of the definition. To
avoid expanding the scope of protection to suchextent, a provision of exceptions would be required.
The second proposal of the definition would beto redefine an “article” as “an article (including partof an article and a figure, etc. that is indicated on adisplay screen by electromagnetic means)”, withoutchanging the definition of “design” (“a shape,
pattern...that is applied to an “article”). In this case,not only a conventional “design” that isincorporated into an article but also the indicatedfigure itself that is independent from an article andsomething evaluated as equivalent would beconsidered as “design”.
Under the principle of one application for one
design, the existing Design Law shall not protect animage design composed of figures to be indicatedwith variation which are created as a united one,“where there is no relevance in form between theappearances of figures before and after thevariation”(*13) . From the interpretative perspective,
it is possible to make a subject of an application forsuch image design as one design.
In this case, it would be possible as a legislative
solution to revise the provision for a design with a
movable element from “where the shape, pattern orcolor of an article to which the design is appliedvaries according to the function that the article
possesses and where registration is sought for the
shape, pattern or color or a combination thereof as(*13) Guidelines in supra note 1, Requirement 3.

IIP Bulletin 2002

● 20 ●

it appears before, during and after the variationreferred to, the request shall contain a statement tothat effect as well as an explanation concerning thesaid function of the article”(*14) into “where theshape, pattern or color of a design varies and whereregistration is sought for the shape, pattern or color
or a combination thereof as it appears before,
during and after the variation referred to, therequest shall contain a statement to that effect,
specifying the appearance before, during and after
the variation”. By such revision, it would bepossible to stipulate in a single provision for boththe case where a design varies according to thefunction of the article as well as the case where it
varies independent of an article.
If the provision for a design with a movableelement is to be applicable to the case of
infringement of a part of a design, it would beappropriate to consider making a provision for an
indirect infringement under which the working of apart (or an important part) of a design with a
movable element should be deemed as the workingof the design. In this respect, such an opinion in theconventional view is dominant that in either
relationship between a set of articles and therespective articles or relationship between a designof a whole article and a design for a portion of anarticle, it is impossible to establish a right that canbe exercised both for the set or whole and the part.
According to this opinion, the design of the wholearticle is one design and the design for the portionof the article is another design, and therefore it
would be necessary to file separate applications
for these two designs in order to obtain protections
for both. With the aim of legislative solution for thisproblem, it might be necessary to carefully consider
the linkages with the relationship of use between adesign of a whole article and a design for a portionof the article, the related design registration system,and protection of designs for individual articles in adesign of a set of the articles. Looking this issue
from a different standpoint, it would be appropriate
to consider establishing a system that introduces anidea of the multiple-claiming system under the
Patent Law. This would enable an applicant to file asingle design application for designs chosen from awhole design with a movable element in the above
sense and its individual partial designs, and then
exercise respective right for each design.
If a design were independent from an article, itwould be necessary to revise the definition of“working” under the Design Law.
Under the above first proposal in which adesign is defined as a “shape, pattern or color or
any combination thereof” which is applied to anarticle and which produces an aesthetic impression
on the sense of sight, the act of working a design
would include any act of applying the design to anarticle. Therefore, any act of producing, using,assigning, etc. an article to which a design isapplied is considered as an act of working thedesign like under the existing law. Furthermore,
the provision regarding the act of assigning andleasing should be revised to stipulate “the provision
via telecommunication lines shall be included in thecase where a design consists of a figure, etc. that isindicated on the display screen by electromagnetic
means”.
In this respect, an act of producing an image
design within the scope of a registered design andassigning or leasing, etc. the produced image
design shall be considered as an indirect infringing
act.
Under the second proposal, applying an image
design to an article could be read as “act ofmanufacturing articles to which the design has been
applied”.
As to the provision for indirect infringement, it
would be appropriate to revise the statement “(tobe used) exclusively for the manufacture of thearticle to which the registered design has been
applied” into “(to be used) exclusively for theapplication of the registered design to the article
and the manufacture of the article to which thedesign has been applied”.
There are other matters to be considered as follows:c If the coverage of the respective classificationsof articles are expanded, there is a fear that prior
design search in the examination would be difficultand more designs that have reasons to beinvalidated would be registered. To avoid such asituation, it is necessary to make efforts toestablish and open to public an effective database bypositively ask for submission of information, or atleast to require an applicant to describe theinformation on prior designs relevant to the designconcerned in the application.
d In order to refine the Design Law as a law forprotection of creations so as to provide broadprotection to highly creative designs, it would not
be appropriate to maintain the concept of similarity
in the criteria for determining the scope ofprotection under registered design. Therefore, it isnecessary to delete the phrase “designs which aresimilar” from the requirements for registrability
and for protection under the existing law andprovide that “a registered design and designs that
could easily have been created by those skilled in
the art on the basis of the registered design” shallbe protected under the Design Law.
(Senior Researcher: Saburo Moriwaki)(*14) Article 6, Section 4 of the Japanese Design Law.
● 21 ●IIP Bulletin 2002