Disclaimer: Used Claude AI to make stylistic changes to the post. Any mistakes made are all mine alone.
Calcutta High Court’s recent decision in NEC Corporation v. Controller (NEC Corp) opens up the option of design protection for Graphic User Interface (GUI) dismissing for the second time the subject matter objections raised by the IPO. The decision to expand design protection to GUIs, as we will see, creates doctrinal inconsistency, as the Delhi HC in two decisions (Hulm Entertainment and Sporta Technologies) recognised GUIs as artistic works. This is problematic because, under Section 2(d) of the Designs Act, a GUI cannot be both an artistic work and a design. This judicial inconsistency, I believe, exposes a deeper issue – the logic of IP expansionism, acting as a background condition, subtly influencing how the Courts exercise their power of legal interpretation, leading to such situations of doctrinal incoherence.
In this post, I will first explain the decision in NEC Corp, then discuss the doctrinal inconsistency it produces, discuss how the whole issue hinges on answering a policy question for which there are no easy answers and conclude by discussing possible disruptions that GenAI can bring to UI technology.
What’s the Lis?
The legal issues broadly concerned certain terms and phrases in S. 2(a) and 2(d). Do GUIs constitute “designs” or “artistic works”? Are GUIs “applied” to a display screen or display unit? Are GUIs “applied” via an “industrial process”? Does the fact that GUIs are not etched, engraved or applied to a display screen in a traditional sense take it out of the scope of design law? Should a design be permanently visible? Does India’s accession to the Locarno Convention indicate legislative intent that GUIs are now registrable? (I had previously argued it doesn’t)
To ease understanding for myself and for readers, I prepared a small table explaining how the Court has approached the legal questions mentioned above by contrasting it with the position taken by the IPO. This is relevant since most of the judgement involves the Court responding to the arguments advanced by the IPO.
| Issue | IPO’s arguments before the Court | Calcutta High Court’s final decision |
| Do GUIs constitute a Design? | No Design should be integral to the article to which it is applied, since the existence of a GUI depends on electronic circuitry and is not directly etched/engraved onto a screen; it does not constitute a design.* |
Yes GUIs, which contain icons, menus, colour schemes, and layouts, are capable of registration as designs when applied to a display screen or display unit, subject to other conditions of the Act. |
| Are GUIs applied to a display screen or display unit via an industrial process? | No The definition of an industrial process is limited to manual, mechanical or chemical and not to electronic circuitry/devices that make a GUI visible on a display screen. |
Yes The word “any” before the phrase “industrial process” in Section 2(d) expands the definition of industrial process to include electronic circuitry/devices that make a GUI visible on a display screen. |
| Should a design be permanently visible? | Yes | No Extra statutory requirement. |
| Does India’s accession to the Locarno Convention indicate legislative intent that GUIs are now registrable? | No The Locarno classification is administrative in character. |
Yes Wants us to think differently and argues that the incorporation of the Locarno convention signals legislative intent to make GUI registrable. |
| Is a GUI protected as an artistic work and hence ineligible for Design protection? | Yes | No Does not answer this clearly; instead, the judgment merely refers to Section 15(2) of the Copyright Act, suggesting that the statute itself resolves the issue. |
* The controller seems to draw on the distinction between a design displayed on an article and one etched, engraved or painted on the article. The distinction is this: there is a difference between applying a phone back cover with a particular design to a mobile device vs etching/engraving/painting the same design onto the phone itself. etching/engraving/painting a design onto an article is a more conventional way of understanding how a design is applied to an article, in contrast to a GUI that is made visible by electronics.
A Foregone Conclusion?
The decision in NEC Corp is not surprising; it was evident that the Calcutta High Court was moving towards registrability of GUIs post the UTS decision. In UTS, the Court indicated that GUIs are designs applied to an article by an industrial process, observing that the incorporation of the Locarno classification under the Design Rules 2008 further strengthened its conclusion, without making any binding order to that effect.
In my previous post, I argued that the Locarno Agreement and the classification are merely administrative in nature and do not affect the scope of subject matter covered by domestic design law. Secondly, I had argued how a proviso was added in the final rules, subjecting registration of any design applied to articles mentioned in the classification to the requirements of Sections 2(a) and 2(d). I was happy to see this argument also made before the Court, even though it was then dismissed, with the Court stating that we must look at it from a “different perspective” and concluding that the Designs (Amendment) Rules, 2008 and 2021, incorporating the Locarno classification with included GUIs as a sub-class, signaled legislative intent to protect GUIs under Design law.
Can a GUI be a Design and an Artistic Work at the Same Time?
The Calcutta HC in NEC Corp is now basically saying that S. 2(a) and (d) do not bar registration of Designs. Hence, it also follows that a GUI cannot constitute an “artistic work” under S. 2(c) of the Copyright Act, since if it were one, then it would be barred by Section 2(d).
Section 2(d):
“design … does not include … any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957.”
Adding a twist to this tale, the Delhi High Court in Hulm Entertainment v. Fantasy Sports and, more recently, in Sporta Technologies Private Limited vs Come Sports, recognised GUIs or mobile interfaces as artistic works under the Copyright Act.
Since GUIs are not standalone products that have an independent existence, they exist only as part of a digital/electronic device for which they are programmed, they are now registrable as a design under the Designs Act and not barred by Section 2(d) as per NEC Corp and are also an artistic work, and hence barred by Section 2(d)!
One can counterargue that in Hulm Entertainment, the plaintiff had copyrighted a concept note for a GUI and claimed copyright over the actual GUI as it appears on the screen as an adaptation of the concept note (a decision subsequently stayed by the DB), and that Sporta Technologies is an ex parte interim decision.
But after even taking this into account, there is a possibility that, with respect to GUIs, both the DHC and the Cal HC might be pushing in opposite, contradictory directions.
Clearing the Smoke Screen:
The contradictions emerging from these HC decisions are not merely technical inconsistencies awaiting appellate correction; they are symptoms of IP expansionism distorting legal doctrines and concepts from within. I had previously argued that IP-style regimes tend to embody an expansionary logic and that most Indian debates have focused on facilitating this expansion, without stopping to ask whether it is necessary in the first place. This is not unique to GUIs, for example, in the context of Section 3(k), I had discussed how when one strips off all the doctrinal jargon, one realises that the judicial interpretation has rendered Section 3(k) into a near formality, an objection without any actual teeth, leading to expansion of patentable subject matter mirroring the development taking place in the context of GUIs.
It’s easy to get lost in the important legal questions of what Section 2(a) and Section 2(d) mean. What does the word “applied” actually mean? What does the phrase “industrial process” mean? Is GUI a “design” being applied to an “article” and can it be both ? But these questions are playing proxy to a more important policy question that needs answering: proving the necessity and providing justification for state intervention to expand the scope of exclusionary rights over subject matter (GUI) that was not previously under such exclusionary rights. Any claim to ‘aligning with global practices’, ‘promoting innovation’, or that more than 90% of countries worldwide have such laws cannot substitute for a clear-eyed justification(s), which has been hard to come by for most IP expansionist claims.
I will finish this section by quoting the statement of objects and reasons of the Designs Act 2000:
“… The legal system of the protection of industrial designs requires to be made more efficient in order to ensure effective protection to registered designs … It is also intended to ensure that the law does not unnecessarily extend protection beyond what is necessary to create the required incentive for design activity while removing impediments to the free use of available designs … ”
Conclusion
As we grapple with GUI, a new technological paradigm called Generative UI is emerging. Google Research, in a recent paper titled “Generative UI: LLMs are Effective UI Generators” (summary here), discusses Generative UI and the possibility of generating user interfaces on the fly with just natural language prompts. All the doctrinal issues surrounding Generative AI and authorship in the context of copyright law can apply in toto to Design law, raising new subject-matter concerns and an opportunity for subject-matter expansion. It is surprising that there has not been a flood of articles, papers and blogs written on creating a satisfactory doctrinal template to accommodate these technological changes. If GenAI develops emergent capabilities to the extent that it can generate UIs on the fly based on a prompt, what does that mean for Indian Design law going forward? Does it take the wind out of expansionary IP claims as the cost of production has come down and creative machines produce new and original designs at a fraction of the cost with no incentives/compensation necessary? Or does it give renewed rigour to such claims, since now new information goods are ripe for private appropriation?
I wish to thank Swaraj for his input on the post!