Tyrone Berger PhD candidate Monash University tyrone.berger@monash.edu Designing GUIs: Current treatment of virtual or non-physical designs in Australia Tyrone Berger PhD candidate Monash University tyrone.berger@monash.edu 2018 IP & Media Law Conference, Melbourne Law School, 5-6 April 2018

Designing GUIs What are virtual or non-physical designs (eg GUIs)? Past reviews – ALRC (1995), ACIP (2015) and PC (2016) Current treatment under Australian Designs Law Harmonisation

What are GUIs? Virtual or non-physical designs are screen displays or icons Visual features of GUIs are only present when device is powered Design protection for GUIs is now commonplace Technological designs among fastest growing types of new designs

Past reviews Australian Law Reform Commission (ALRC) 1995 - Recommended that screen displays not be protected - Screen display is not a product, rather ‘use of a product’ Advisory Council on Intellectual Property (ACIP) 2015 - Recommended that treatment of non-physical designs be ‘reconsidered’ - Product in its active state Productivity Commission (PC) 2016 - Endorsed ACIP’s position

Past reviews – some context ALRC summarised the ‘main objective’ of Australia’s design law: “… encourage innovation in Australian industry to Australia’s net economic benefit. Designs law can do this by preventing competitors free riding on design innovations and by providing investors in design with security for their investment.” ALRC report, ‘Overview’. ACIP endorsed this statement PC reiterated these views in its approach towards assessing the IP system

Current treatment under Australian designs law (1) Definition of a product – “manufactured or hand made”: Designs Act 2003 s 6(1) Non-examining design system (i) Registration (ii) Examined and certified

Current treatment under Australian designs law (2) GUIs examined when the product is ‘at rest’ (powered off) - “the base of a fountain could be protected but not the water jet”: ALRC, 4.9

Current treatment under Australian designs law (3) Apple Inc [2017] ADO 6 - visual feature of a product - ordinary reading - image not a “quality or attribute of a display screen”

Current treatment under Australian designs law (4) Representations - visual features - use of ‘dotted’ lines

Current treatment under Australian designs law (5) Locarno Agreement - Framework for indexation - IP Australia uses Locarno despite not being a member - ‘Screen displays and icons’ (Class 14, subclass 04) Asserting subject matter that can be classified does not constitute a test for registrability - Microsoft Corp [2008] ADO 2, [15]

Harmonisation Designs laws least harmonised of all IP regimes Desirable goal for governments? - promotes investment and technology transfer - prevents incidence of ‘free riding’ - facilitate administration of IP regimes

Concluding remarks Current treatment in conflict with rationale of a modern designs system? Less safeguards for innovators working in software environments Importance of ‘visual features’ – user perspective Influence on trade levels by differences in IP regimes

Thank you! tyrone.berger@monash.edu @tyrone_berger