Canada’s Intellectual Property Firm

Computer icons: Multiple protection options, one valuable IP asset

Authored byJonas Gifford

As computing devices with graphical user interfaces become more and more popular, computer icons are increasingly in the eyes and minds of consumers. Although many are generic and primarily functional, some computer icons can embody trademarks, copyright, inventions, and other protectable intellectual property rights. In highly competitive fields such as the software, internet, and portable electronic device industries, computer icons can be important and valuable business assets.

Computer icons as trademarks. Trademarks are used to distinguish the goods or services of one source from those of others. They can include words and designs and often include logos. Thus, trademarks are a common form of protection for computer icons.

For example, in Canadian trademark registration no. TMA489896, Microsoft registered the now-familiar design for the WINDOWS™ “Start” button in association with computers and other goods.

Microsoft Windows Start button design trademark

More recently, in Canadian trademark registration no. TMA821048, Apple registered the settings icon design shown below in association with computer software for managing user system settings and preferences.

Apple Settings icon design trademark

Trademark protection can extend to a variety of designs, and the Canadian Trademark Register includes numerous registrations for icons that represent applications or other components of graphical user interfaces.

Trademark rights can be infringed if a competitor uses a mark that is likely to confuse consumers into believing that the competitor’s goods or services originated from the trademark owner. Therefore, where computer icons can distinguish one source of goods or services from another, trademark protection can be very valuable to prevent confusion with competitors.

Copyright in computer icons. Copyright can be used to protect original artistic works. Computer icons that include original artistic works can therefore be protected by copyright.

In the early days of graphical user interfaces, Apple sued Microsoft and Hewlett-Packard in a United States court for alleged infringement of copyright that Apple claimed in its Macintosh™ displays. In that litigation, United States courts recognized that Apple had copyright in a trash can icon in its Macintosh™ displays. However, copyright only protects original works, and infringing copyright requires copying a protected work. Therefore, competitors can often design around protected works to avoid infringement, and copyright has rarely been asserted in court cases involving computer icons.

Computer icons as industrial designs. Computer icons can also be protected under industrial design legislation. Unlike copyright, industrial designs can generally be considered infringed without proof of copying. However, industrial designs must be registered to be enforceable. In Canada, the Industrial Design Act allows registration of original designs that appeal to and are judged solely by the eye in a finished article. For example, in Canadian industrial design registration no. 122343, Apple Inc. registered a design, shown in solid lines in the drawings shown below, for the slide-to-unlock design of iPhone™ devices.

Apple Slide to Unlock industrial design mark

In Canada, industrial designs can only be protected for 10 years from the date that they are registered. However, given the rapid evolution of graphical user interfaces, such a term of protection may cover the valuable life of many computer icons. To date, over 1,000 industrial designs have been registered in Canada under the classification used for computer icons by the Canadian Intellectual Property Office.

Patents in computer icons. Trademark, copyright, and industrial design protection are all limited in the extent to which they can protect functional features — this is where patents come in. Patents protecting functional aspects of computer icons can be very valuable because their claims do not need to be limited to particular appearances.

For example, Canadian patent no. 1317678 was granted to IBM with claims to methods for using an icon to inform a user of the progress of a task on a computer system. An example of such an icon from that patent is shown below, but the claims of that patent extend to icons of many different appearances.

IBM Progress Bar patent drawing

As another example, although Apple registered the appearance of its slide-to-unlock design in an industrial design registration, a series of United States patents also claim the slide-to-unlock function — thereby illustrating that different forms of intellectual property can be used to protect the same computer icon.

Summary. A variety of forms of protection are available for computer icons, and some computer icons might benefit from the use of several forms in unison. Some forms of protection, such as patents and industrial designs, require close attention to filing deadlines to avoid jeopardizing rights by any public disclosure that may have occurred. Therefore, those interested in protecting computer icons should seek professional advice on the types of protection available and the potential consequences of disclosing computer icons to the public before filing appropriate applications.

The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.