ICONOCLASM
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The protection of Computer Icons in the New Design Regime
Debra Brown
Euan Cameron
De Montfort University
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Abstract
In this paper we investigate the humble computer icon as the perfect metaphor for the challenge of technology to IP analysis. Its features are multi-faceted and hence potentially confusing. It acts in both a functional and a decorative manner. It may be designed for its attractiveness as an element within a graphical user interface. Yet for it to achieve its role within the interface it must convey information as to its function. To the user, it may be the essential key to the interaction of the interface with the computer and its programs. Yet in computing terms, it is – usually – merely one non-essential means to get to the required functions. At best it is merely symbolic of the underlying program it represents. In legal analysis, what is more important –its functionality or its look?
The new design regime in the UK and Europe highlights these issues. We consider the rationale for the 1988 “settlement” of the relationship between Copyright, Registered Design and (unregistered) Design Right. for that settlement and ask whether that division has been maintained / destroyed in relation to Icons under the regime introduced by the European Design Directive.
Contents:
INTRODUCTION
CONTEXT
ICONS & BOUNDARIES
ICONS AND REGISTERED DESIGNS
THE FUTURE & UNREGISTERED DESIGNS
ICONOCLASM – INTRODUCTION
Impetus for this paper from EC design directive
Of the major types of IP applied in a computer law context, design right seems to have had a Cinderella role. It has been little noticed and little applied with the one notable exception of the Semi Conductor chip legislation. Perhaps the assimilation of that right to the U.K.’s unregistered design right had more to do with the period of protection offered by the right than any true belief that the subject matter was akin to designs. Obviously design has had a role to play in terms of aesthetics with the likes of the generations of the Apple Mac and various laptops. But that has not extended, in respect of academic comment and litigation, to the context of the programs and screen design. Much energy has been expended on how copyright might protect the ‘look and feel’ of displays and indirectly protect the screen layout but aren’t these phrases suggestive of design protection?
One problem is that the word ‘design’ itself carries at least two different meanings. As a verb, it is about the process whereby an item is put together and as the associated noun, it refers to the workings of the product, how it is functionally constructed, seeking the optimum layout for achieving its objective. As a simple noun it also carries a meaning more purely as to the look of the object, its aesthetic appeal. It’s true that there is some overlap between these meanings – we have the typical ‘arts and crafts’ notion of beauty existing in the design that best fits the purpose. But there is always a tension in legal terms between the protection of the aesthetic and the functional. We are now just over a year into the new regime introduced by the European Design Directive 1998. It appears to be an appropriate time to evaluate the impact of the new regime upon such tensions.
Computer Icons
The icon seems to encapsulate this dichotomy between function and appearance. The OED defines the computer icon as “a symbol or graphic representation on a VDU screen of a program, option or window esp. one of several for selection”
This is not an especially useful definition but the phrase ‘graphic representation’ and describing the icon as a ‘symbol’ tends to emphasise the functional over the aesthetic.
A description would look something like this: A computer icon is a small picture is a small picture about 1 sq. cm. which is displayed on a monitor. It can represent a document, folder, program or shortcut and by clicking on it the user will be taken to that destination or it will begin the relevant application. An icon is therefore a mnemonic device, designed to aid the memory by using a picture that most people will recognise and associate with that specific command. [Of course, not everyone will make the correct connection! One has only to play part games such as word association or ‘Pictionary’ to appreciate the difficulty.] for example, an icon depicting a folder takes you to a folder where files are kept, and an icon depicting a trashcan is used to delete files, programs etc.
A computer icon therefore acts in both a functional and a decorative manner. It may be designed for its attractiveness as an element within a graphical user interface (GUI), but to achieve this role it must convey information as to its function. Many people have spent hours designing pictures and symbols to indicate computer functions. Their creativity is being stretched increasingly thin as many functions no longer have a real-life equivalent.
For many people (the millions of children who use computers on a daily basis being an obvious example) the computer icon may be the essential key to the interaction of the interface with the computer and its programs. Yet in computing terms, it is usually merely one non-essential means to get to the required functions. Almost invariably there will be other commands to enable the program to perform the same function.
At the symbolic level, the icon represents the underlying program that performs a function within the program or suite of programs. Even at that symbolic level there is ambiguity as to what program is represented. Is it merely the routine that takes the user to the underlying program or is it the entire function represented by the symbol? So the humble computer icon is the perfect metaphor for the challenge of technology to IP analysis. In legal analysis, what is more important –its functionality or its look? Which is to be protected?
ICONOCLASM – CONTEXT
The duality of the icon
The icon does have a dual role: First as an integral element within a GUI. Each icon is potentially important as to the overall look of the design (potentially because it is often left to the choice of the user as to which icons s/he wishes to be displayed.) It needs to have visual utility giving information to the user as to its function and offering ease of navigation over the GUI as a whole.
Secondly, it has a computing role as a method of opening a program – a trigger for an outline leading to the performance of a function.
The Role of Design Right
This duality and tension as to the proper protection of computer icons and images is mirrored in debates as to the proper protection of designs. The Registered Design had its origins in the desire to protect the visual/aesthetic. The RDA 1949 granted an absolute monopoly to manufacturers of industrial products that had ‘eye appeal’ however the monopoly was limited to 15 years - similar to that available to patents. This left functional items that fell short of the requirements for patents to seek their protection in the Copyright system. Under the 1956 Act protection was given to design documents used to produce functional mass-produced articles. In addition, three-dimensional objects made from a drawing acquired similar protection. This enabled the manufacturer to acquire copyright length protection and monopoly over the production of such designs. A side effect of this – together with the arguably over strength protection, was that the registered system was little used. The inappropriateness of this relationship of industrial design to patent and copyright was a major source for concern especially as the cracks were merely papered over by the ‘convenient’ conclusion to British Leyland v Armstrong[1]. The CDPA 1988 sought to remove this unfortunate overlap between copyright and design right by seeking to draw the boundary between them more clearly and fill the perceived gap in the protection of functional items by introducing the unregistered design right. In simple terms one might characterise the 1988 settlement as distinguishing between the original, the aesthetic and the functional.
In such a system the duality of the icon presents a conundrum as to the most appropriate form of protection.
The chosen weapon for this division is s51 although it has the assistance of s52 in preventing copyright achieve an overlong protection of industrially produced designs.
ICONS & BOUNDARIES
Boundariesin IP Law
The 1988 settlement just discussed is a peculiarly British solution which sat ill with the schemes in other nations which may well depend on other devices – notably petit patents and fair trading provisions to fill the functional gap. This means that there is inevitably some tension between the 1988 settlement and the 1998 scheme introduced by the European Design Directive. The Directive partly modifies the national legislation but it also leaves in tact the peculiarly British unregistered design right and the boundary created by ss51/52 CDPA. The scheme thus created is replete with overlapping protection. The desire to give protection to all possible activity and to avoid gaps appears to be the main policy concern. The Courts and the Legislature have preferred overlap and overkill to the setting of boundaries and rationality.
Against this background there are some Judges who are concerned with the broad brush approach. In the Australian case of Telstra[2], Laddie J is quoted with approval from Autospin (Oil Seals) Ltd v Beehive Spinning[3]where he warned against ignoring the boundaries of protection even within a single category of work. The issue was whether the defendants, by manufacturing seals, had infringed the copyright in the plaintiff’s drawings of seals and in a compilation of measurements included in the plaintiff’s charts.Laddie J cautioned against the assumption that the question of “substantial reproduction” must be decided without regard to the nature of the copyright work allegedly infringed:
“When the court has to decide whether a particular act constitutes a substantial reproduction of a copyright work in my view it must have regard to the nature of the copyright work in issue. What amounts to a substantial reproduction of a particular type of artistic work may well not be a reproduction of a particular type of literary work. Indeed it should be remembered that the categories of copyright work created by copyright legislation are, in some cases, very broad and include materials which have little in common. Maps, charts and plans were protected as literary works under the 1911 Act but as artistic works under the 1956 and 1988 Acts. Therefore under the former Act they were treated as brethren to plays and novels while under the latter they are treated as being in the same category as paintings…. When considering what amounts to infringement of the copyright in, say, a compilation, there is no compelling reason why the courts should pretend that the works covered by literary and artistic copyright form a coherent whole. It should be borne in mind that it is not enough to say that the defendant has ‘used’ the plaintiff’s work. He must have reproduced it. In my view the court should ask the question ‘is it accurate to say that the alleged infringer’s article is, from a common sense point of view, a reproduction of this particular type of literary work?’”
Later in this paper, we will discuss the views of the same Judge that the attributes of literary and artistic copyright should not be taken as combined in a single work so as to over extend the protection granted to one type of work.
BoundariesinComputer Law
It is almost trite to point out that from the earliest, computer law and especially computer copyright law has been concerned with pushing the boundaries of IP law and, more important to the theme of this paper, exploring the boundaries within existing IP law. Again, it has been particularly true in relation to the many aspects of computer programs. At least in the U.S. there was concern at extending copyright protection towards the purely functional. A similar issue arose in exploring the boundary between idea and expression. In the early days the concern was played out at the boundary between object code and source code but later similar concerns emerged as to aspects of performance of a program and the function / appearance dichotomy in respect of Graphical User Interfaces. In these concerns there appears to have been some divergence between the UK and other jurisdictions such as the US and Australia. This divergence is discussed fully later. British judges have often attributed this divergence to differences in the legislation between the various countries but this often appears to be unconvincing.
Does it Matter? - Yes!
It is important to draw boundaries in IP law. Although one often has the impression that the growth of IP is entirely a matter of pragmatism, it is undoubtedly true that the law has been developed on the basis that different types of intellectual property are deserving of different treatment. This is most obvious in the length of protection given. In the area covered by the present paper, there is a vast difference between the period thought appropriate for the various design rights as opposed to copyright.
The scope of monopoly is determined by the acts that amount to infringement e.g. in the case of copyright what is meant by substantial taking. That scope varies greatly from one type to another. The quotation from Laddie J in Autospin (Oil Seals) Ltd v Beehive Spinning (above) shows that even between literary and artistic copyright the nature of infringement and hence the scope of monopoly is different. In the context of three dimensional objects, this is formalised by s 17(3) CDPA 1988.
In the design context that we are discussing here, ss 51 / 52 CDPA 1988 are intended to ensure that designs are dealt with within the design system. They can only succeed in that role if the boundaries between artistic and literary copyright are maintained.
To illustrate the importance of these boundaries there are two related areas that we particularly wish to consider. Firstly, in relation to circuit diagrams there has been a lively debate as to whether artistic and literary copyright are overlapping or accumulative. This debate especially impacts on the boundary between copyright and design right. Then, secondly, we consider the protection of icons in copyright. In the absence of direct authority, the Australian case of Powerflex Services Pty Ltd v Data Access Corporation[4]is especially instructive as to a possible analysis of such protection.
Circuit Diagrams
There was a series of cases in the 1990s concerning the copyright protection of circuit diagrams. In these cases there was a notable divergence of opinion between the decision of Laddie Jin Electronic Techniques (Anglia) Ltd v Critchley Components Ltd[5] and those of Jacob J in Anacon Corp Ltd v Environmental Research Technology Ltd[6] and Pumfrey J in Sandman v Panasonic UK Limited[7]. As the latter Judge commented “There is a surprising lack of (earlier) law relating to copyright in circuit diagrams”
Typical of these cases isSandman v Panasonic, wherethe circuit diagram allegedly infringed diagrams that had appeared in an article published in the Journal 'Wireless World.' It was accepted that there was little visual similarity between the diagrams and the circuits. It thus seems to be accepted that in such circumstances it would be difficult to sustain an action for infringement of artistic copyright. This had been one of the findings of Jacob J in the Anacon case where he had rejected a submission that “it does not matter if the defendant's circuit looks quite different from the plaintiff's diagram.” It might have been thought that such a view was in part based upon the notorious section 9(8) of the Copyright Act 1956 in which similarities between 2 dimensional and 3 dimensional artistic work had to be adjudged by the eye of a notional non-expert. The removal of the provision would thus have left the way open for a less restrictive view of infringement between the dimensions. However all these cases seem to accept that the very act of protecting artistic copyright involves some emphasis on visual similarity even if one no longer needs to be concerned with the artificiality of section 9(8). It is submitted that in reality this is one of the aspects of the derided “idea/expression” dichotomy. The point is made in a passage from the judgment of Buckley LJ in Catnic Components v Hill & Smith Ltd.[8] “If an 'artistic work' is designed to convey information, the importance of some part of it may fall to be judged by how far it contributes to conveying that information, but not, in my opinion, by how important the information may be which it conveys or helps to convey. What is protected is the skill and labour devoted to making the 'artistic work' itself, not the skill and labour devoted to developing some idea or invention communicated or depicted by the ‘artistic work.’
This difficulty in pursuing infringement of the artistic copyright is avoided in Anacon, and Panasonic v Sandman, by the suggestion that there is a literary copyright in existence in respect of the diagram. The reasoning of Jacob J in Anacon is based on the definition of literary work contained in s3(1) Copyright, Designs and Patents Act 1988 (CDPA) as anything which is “written” and the definition of “writing” in s178 as including “any form of notation or code”. Thus the conventional symbols used in a circuit diagram are seen as a form of notation or code used by practitioners in that field. The judgment of Jacob J is that essentially the same work - a circuit diagram - is simultaneously two different types of copyright work. This is also the view of Pumfrey J in Sandman v Panasonic . By contrast Laddie J in Electronic Techniques unequivocally states “although different copyrights can protect simultaneously a particular product …, it is quite another thing to say that a single piece of work by an author gives rise to two or more copyrights in respect of the same creative effort. … The categories of copyright work are, to some extent, arbitrarily defined. In the case of a borderline work, I think there are compelling arguments that the author must be confined to one or other of the possible categories. The proper category is that which most nearly suits the characteristics of the work in issue.”