This is the first article in a planned series that will analyze available design protection strategies for various categories of products.

Now that the era of work-from-anywhere and software-for-any-service has fully arrived, obtaining proper legal protection for software is paramount for many companies.  However, due to an expansive interpretation by courts of the “abstract idea” exception to utility patent eligibility in recent years, protection for software-based systems and methods via utility patents has been made difficult.  Accordingly, companies in this space should look to employ design-related rights to protect their software.

In this post, we will address how design patent, copyright, and trademark laws can be employed  to provide protection for software-based designs.

Design Patents

While design patent protection in the United States has generally garnered more attention in the past decade than it had at any point in its history going back to the U.S. Supreme Court’s 19th Century decision in Gorham v. White, which defined the “Ordinary Observer” test for design patent infringement, no recent case or issue generated more attention than the landmark damages award in Apple v. Samsung, in which Apple, Inc. (“Apple”) was awarded $533 Million USD for infringement of three of its design patents by Samsung Electronics Co. Ltd. (“Samsung”).

In that case, Apple was awarded damages that were calculated based on the total profits that Samsung obtained for selling devices (i.e., smartphones) that infringed Apple’s three asserted design patents, one of which covered the design of the Graphical User Interface (“GUI”) used as the default home screen of the original iPhone.  A cursory analysis of the jury’s damages calculations (image provided below at left) confirms that the highest damages were awarded against Samsung phones that infringed Apple’s GUI design patent (an image of which is provided below at right).

             

Repeating Apple’s success in asserting a GUI design patent to obtain hundreds of millions of dollars in damages may be difficult, but the successful assertion of Apple’s GUI design patent demonstrates that companies that make or distribute software products can look to design patent protection as a safeguard to protect against infringement.

GUI design patents can capture static, unmoving icons or display screens (i.e., those that can be shown with a single figure), or animated icons or displays (i.e, those that are shown moving or changing via some sequence of figures).  Many well-known software companies have invested significant resources to protect both types of GUI displays, as shown in the examples below.

Static GUI Examples

Microsoft® Samsung® Google® Sony®
Netflix® Snapchat® Uber®

Apple® (Animated GUI Example)

FIG. 1 FIG. 2 FIG. 3 FIG. 4

Given the present difficulties associated with protecting software via utility patents, companies that invest resources in developing software products can and should lean on design patent protection to obtain robust IP that can be leveraged in an offensive or defensive capacity.

Copyrights

U.S. copyright law can also be used to obtain protection for software, via registration of the written source code with the U.S. Copyright Office.  Interestingly and importantly, copyright protection for a computer program extends to all of the copyrightable expression embodied in the program, which may include the screen displays (e.g., GUIs) that the written source code displays once the code has been compiled, even if a copyright application does not provide images of the screen displays or even specifically mention screen displays.  This filing strategy can be employed to simultaneously protect both the audiovisual and computer program elements of videogames and other mixed-media based in software code.

Further, the U.S. Copyright Office has very generous rules relating to the redaction of trade secret material from source code before it is submitted to the Office, and in most cases it is not required to submit the entirety of a source code to the Office in order to obtain a copyright registration that covers the entirety of that code and its contained copyrightable elements.

Used together with design patents, copyrights can provide powerful protection for written software and its associated display elements.

Trademarks

The software context may also give rise to special opportunities to develop and register trademark rights in motion, sound, or mixed-media marks, for example software load or splash screens.  One well-known example of such a software-based mark is the Netflix® load screen, which shows a standalone “N” followed by the full company name, accompanied by a low-pitched double-tone.

Finally, in certain scenarios, it is even possible for GUIs and other software-based representations appearing on products to obtain “secondary meaning” (i.e., source-identifying character) over time and thus become registrable as trademarks.

The Quarles & Brady design rights legal team is nationally-recognized for its extensive knowledge and practice experience in this complex and important field. For questions about this article or on how to incorporate design-related legal rights into your intellectual property portfolio, please contact the author(s) of this post directly or send a message to the team via our Contact page.

The United States Patent and Trademark Office (USPTO) published a notice in the Federal Register on December 21, 2020, requesting comments from the public related to the “article of manufacture” requirement for design patent eligibility appearing in Title 35, United States Code, Section 171. In particular, the USPTO asked whether the article of manufacture requirement should be revised to encompass “disembodied” designs made perceptible by new and emerging technologies. The comment period closed on February 04, 2021, with a total of 19 public comments received. Continue Reading Quick Take on Results of USPTO Request for Comments on Article of Manufacture Requirement for Designs

The Federal Circuit’s recent decision in Super-Sparkly Safety Stuff, LLC v. Skyline USA, Inc. reinforces best practices for design patent enforcement and procurement. An important takeaway from this decision is that when enforcing design patents in litigation, patent owners should develop record evidence from fact and expert witnesses to assist the court in the ordinary observer analysis to ensure that motions for summary judgment of non-infringement are decided with a sufficient record. Another important consideration for design patent holders is that when protecting designs, rights holders should consider robust filing strategies to protect iterative and varying aspects of important designs. These strategies may help companies avoid early judgment of non-infringement when they enforce their design patents by limiting the options of a defendant during the early stages of litigation. Continue Reading Pepper Spray Manufacturer’s Successful Self-Defense Reinforces Best Practices for Design Patents

The United Kingdom (UK) officially withdrew from the European Union (EU) in early 2020, which commenced a transitional period that expired on December 31, 2020. During this transitional period, the UK remained subject to the EU Design System and the design laws of the European Union Intellectual Property Office (EUIPO). However, as of January 1, 2021, the UK is no longer subject to the EUIPO design regime. Continue Reading Brexit’s Impact on European Design Registrations

The end-of-year shopping season started strong in 2020 due to the COVID-19 pandemic restrictions that kept many consumers in their homes and buying online. Brand owners and sellers should thus be mindful of the various options at their disposal to stop counterfeit goods from stealing legitimate e-sales and disappointing unsuspecting consumers who are unable to inspect goods when purchasing online. Continue Reading Tips and Tools for Sellers to Combat Online Counterfeits During the Holiday Shopping Season

Since April 1949, when legendary golfer Sam Snead took the top prize, the winner of the annual Masters Tournament has been awarded a green blazer with gold buttons on the front and sleeves.

Now, after more than 70 years of use, that color configuration as applied to a jacket—as shown in the mark image below—has become a federally-registered trademark. Continue Reading Augusta National Blazes a Trail to Registration of its Iconic Green Jacket 

Two recent decisions by the Patent Trial & Appeal Board (PTAB) highlight the nuances of allowable and impermissible drawing amendments during prosecution of U.S. design patent applications, and provide important guidance to design patent applicants on how to prepare their applications to ensure maximum flexibility during prosecution. Continue Reading Recent PTAB Guidance on Permissible Drawing Amendments for U.S. Design Applications 

Paisley Park Enterprises, Inc., the music publishing company founded by the late artist Prince, recently obtained a federal trademark registration for the purple color shown below known as “Love Symbol #2” in the Pantone Matching System.  The registration covers music, video, and motion picture-related recording goods in International Class 009.

Continue Reading Prince’s Estate Makes it Rain Purple on the USPTO 

China Flag

The China National Intellectual Property Administration (CNIPA) has recently published a Fourth Revision to the patent laws of the People’s Republic of China, and included in those revisions are several updates that help move Chinese design patent law towards harmonization with the laws of most other major markets. In particular, the following revisions—which will come into effect on June 1, 2021—are the most relevant for Chinese design patent applicants and design patent holders:

Continue Reading New Revisions to Chinese Patent Law Increase Design Patent Harmonization