The technical aspects of creations in the internet technology and cloud technology have been protected under the patent system, while designs of Web-page screens, the other aspects of creations in such new technologies, have not been sufficiently protected under the current Design law in Japan. Revision of the design law has been on agenda to protect “a web-page screen which is distributed from a server and displayed on a display screen (“web-page screen”)” under the Design Law. Such revision is expected to pave a new path to obtain a right for various aspects of the creations.
The following explains a current situation of screen design protection and movement for revision of the Design Law in Japan.
1. Current situation of screen design protection in Japan
1-1. Protected scope under the Design Law
(A) Protection under the provisions of the Design Law Section 2(1)
The Design Law Section 2(1) stipulates that “"design" shall mean the shape, patterns or colors, or any combination thereof, of an article (including a part of an article), which creates an aesthetic impression through the eye”, and design is regarded as being indivisible from the article. Accordingly, a screen design (“single item of an icon” etc.) independent from an article does not fall under the “design” stipulated in the Design Law.
Examination Guidelines for Design (Part 7, Chapter 4, 74.1) stipulates that an “image” which complies with the Design Law Section 2(1) should meet the two requirements below.
Therefore, for example, following images are not protected under the Design Law Section 2(1).
An image of a TV program
An image of the Internet
A displayed image which is read out from a storage medium which is connected to or inserted in an article, or which is read out from a recording medium in which the image is recorded ex post.
An image which is previously recorded (preinstalled) in the article but requires, to be displayed, installation of a business software (including an OS) and a game software etc. (including a game image which is displayed when a storage medium recording a game is inserted in an article) produced and sold independently from the article.
(B) Protection in accordance with the Design Law Section 2(2)
The Design Law Section 2(1) stipulates that “the shape, patterns or colors, or any combination thereof, of a part of an article as used in the Design Law 2(1) shall include those in a graphic image on a screen that is provided for use in the operation of the article (limited to the operations carried out in order to enable the article to perform its functions) and is displayed on the article itself or another article that is used with the article in an integrated manner.”
Examination Guidelines for Design (Part 7, Chapter 4, 74.2) stipulates that an “image” protected by the Design Law Section 2(2) as below.
An article to which a design including the image is applied must be an article covered by the Design Law.
The image must be an image for use in an operation which allows an article to be in a state in which the article is capable of performing its function (operation image).
The image must be an image displayed on an article or an article that is used in an integrated manner with the article.
Therefore, for example, the following images (images displayed in a state in which an article is performing its function) are not protected under the Design Law Section 2(2).
For example, in a mobile phone, an image displayed in a state of calling or sending a mail, or in a magnetic-disk recorder, an image displayed in a state of playing or recording.
An image displayed in using a software or in browsing on the Internet.
A game image
To summarize the above (A) and (B), the following two requirements need to be satisfied under the current Design Law in order to protect images and screen designs.
(i) An image must be integrated with an article throughout the creation, distribution and usage of the article (requirement for integrity with an article).
(ii) The image must be a “display image” or “operational image” (functional and operational requirement).
According to the above two requirements, under the current law, a “web-page screen” does not meet the requirement of the “requirement for integrity with an article” at the production and distribution of the article. Therefore, the “web-page screen” is not protected by the current Design Law.
2. Movement towards revision of Design Law for protecting screen design
The JPO is currently considering expanding the scope of the protection covered by the Design Law in order to protect screen designs including a "web-page screen" which are not protected under the current law. The cases under discussion are Cases 1 and 2 below. Please see the following URLs for detail.
"Items Under Discussion Regarding Protection of Screen Design"
"Alternatives for Cases where Protection of Screen Design is Expanded (Examples)"
Case 1: To protect a displayed image as a part of an article
In a case where the Design law is revised to protect displayed images by considering that the displayed image is a part of an article, while the "functional and operational requirement" is partially-relaxed or abolished by the revision, not only the "operational image" but also an image displayed in a state in which the article is already performing its function will be protected. In this case, images displayed in running software (business software, game software, etc.) will be protected.
When it comes to the "web-page screen", such web-page screen will be protected in a case where the law is relaxed as to the "requirement for integrity with an article" so as not to require that images to be added to an article after the distribution of the article should not be regarded as being part of the article because it has not integrally existed with the article at the time of distribution.
Note that, in a case where an image is protected as a part of an article and the "functional and operational requirement" is partially-relaxed or abolished, the Japanese Design law will provide almost the same scope of protection to screen designs as in the U.S.
Case 2: To regard a screen design itself as an article
In a case where the Design law is revised to regard a screen design itself as an article and to establish a new functional and operational requirement, "web-page screens " will be protected as well as images displayed in running business software and game software. Further, if the current "functional and operational requirement" is abolished, this also results in that the "web-page screens" will be protected.
The new functional and operational requirement is based on the assumption that the "display image" and the "operational image" are defined differently (see below) from those defined under the current law.
In a case where the Design law is revised to regard a screen design as an article itself and to abolish the current "functional and operational requirement", the Japanese Design law will provide almost the same scope of protection to screen designs as in the Europe.
Note also that, in China, a screen design is not granted a design right under the Chinese guidelines for patent examination. However, since no substantive examination is conducted on design application, a large number of applications for screen design are filed and granted in fact.
3. Protection of screen design by other laws
If the above-mentioned revisions are made, the "web-page screen" can be protected under the revised Design Law. Until the revisions are made, such protection may be sought under the other laws such as Copyright Law, Patent Law, Trademark Law, and Unfair Competition Prevention Law (Section 2(1)(i)to(iii)).
However, the other laws as mentioned above may not be capable of fully protecting the "web-page screen" for the following reasons.
Patent Law aims at protecting a creative technical idea. Accordingly, an appearance of a screen design itself is not protected directly.
Trademark Law and Unfair Competition Prevention Law (Section 2(1)(i)and (ii))
The scope of the protection covered by these laws and provisions is limited to a protection of a display of a form, product, etc. that function as a source indicator. Therefore, many of screen designs for use in operation are not protected.
Unfair Competition Prevention Law (Section 2(1)(iii))
The scope of the protection covered by the provision is limited to a protection from an activity to sell a "dead copy" (a whole and complete imitation). Therefore, it is quite rare that a screen design, which is only a constituent of a product, is protected by the provision.
Copyright Law protects a screen design itself (only a part containing an expression with creativity). However, unlike the Design Law, such protection is not provided as an absolute right.
Therefore, in order to seek for a full protection of a "web-page screen" in Japan, above-mentioned revisions of Design Law is awaited.