Italian Courts and the protection of Graphical User Interfaces under copyright laws: some recent cases

In some recent cases (case “Trend for Trend Vs Pix Agency” dated 5.2.2016; case “DriveK Italia Vs Webbdone” dated 20.3.2016 and case “Esko Software Vs Beegraphic” dated 6.7.2012) the Court of Milan has ruled with regard to the legal protection of the Graphical User Interfaces (“GUI”) and more in detail on the protection of the overall aspect of the GUI (the so called “Look&Feel”). The GUI can be considered as an atypical and complex creative work based on a project that combines graphical and navigation elements allowing interaction between users and devices (both at software and hardware level).

The term “Look&Feel” is sometimes used in EU case law (AG Bot – C 309/09) and by Italian scholars (Giordano D., Software e grafica dei social network, AIDA 2011, 248) as a synonymous of GUI (see AG’s Conclusion – C 309/09: “The graphic user interface, commonly referred to as the ‘look and feel’, enables communication between the program and the user”). More precisely, some scholars (Hayes, What’s left of “look and feel”: a current analysis, in Comp. Lawyer, X 1993, n. 5) consider “Look” the combination of all the visual and/or audio elements of a computer program as presented in a GUI and “Feel” as the sequence, structure and organization of the non-literal elements into a GUI. It has been questioned whether the overall “look and feel” (i.e. the combination of visual elements and the organization of such elements for interaction with users) can be protected as a whole.

The overall “Look&Feel” and the individual elements in a GUI can be protected, under certain conditions (notably with an adequate level of creativity), by Italian copyright law (see Article 1.1 and Article 19 Italian Copyright Law). This conclusion should not be disputed in case of one-to-one copies of GUIs and/or individual elements in a GUI (i.e. in case of “literal copyright infringements”). More problematic is the case of non-literal copyright infringement of the overall “look and feel”, where it has to be clarified which elements in the overall “look and feel” are eligible for copyright protection.

An obstacle to the protection of the “Look&Feel” is represented by Article 1.2 Software Directive (2009/24/EC), according to which ideas and principles of a computer programs are not eligible for protection under copyright law (“Protection in accordance with this Directive shall apply to the expression in any form of a computer program. Ideas and principles which underlie any element of a computer program, including those which underlie its interfaces, are not protected by copyright under this Directive”). Such EU provision is implemented by Article 2 n.8 Italian Copyright Law. It could be argued that “Look&Feel” incorporates some basic ideas and principles of the computer program generating the GUI. According to the above, protection under Italian copyright law could be granted to the overall “Look&Feel ” without taking into consideration those elements in the GUI: (i) that are expression of technical ideas and principles at the basis of the computer program generating the GUI; and (ii) that are the necessary result of the functional organization of the GUI.

On the other hand, the “Look&Feel” of a GUI could imply a level of creativity in the sequence, structure and organization of the elements, eligible for copyright protection as “elaborated ideas”. A possibile confirmation of this type of protection can be found in a EU case related to the protection of a computer manual. The CJEU has stated that, with reference to a computer manual, also the choice, sequence and combinations of commands, options, defaults and iterations is expression of creativity and can result in an intellectual creation protected under copyright law (see CJEU case C-406/10 “[…] the keywords, syntax, commands and combinations of commands, options, defaults and iterations consist of words, figures or mathematical concepts which, considered in isolation, are not, as such, an intellectual creation of the author of the computer program. It is only through the choice, sequence and combination of those words, figures or mathematical concepts that the author may express his creativity in an original manner and achieve a result, namely the user manual for the computer program, which is an intellectual creation”).

Italian case law regarding the alleged copyright infringement of the GUI of a website has usually excluded the violation of copyright laws in case of non-literal infringement and has made in some cases application of the rules against unfair competition practice in the Italian Civil Code (namely article 2598 ICC). Nevertheless in their legal analysis the Courts have expressed their view on the protection of GUIs under copyright laws. The Court of Milan in the case Trend for Trend Vs Pix Agency dated 5.2.2016, regarding the alleged copyright infringement of the GUI of a website, held that the scope of copyright protection includes both the expression and the elaboration of ideas but found that the format of the allegedly infringed website (inclusive of a description of the GUI) filed with the SIAE was not eligible for protection and that a comparison of the GUI (without taking into consideration forms imposed by the technical nature of the services proposed by the websites) excluded any graphical coherence between the GUIs. In another case the Court of Milan dated 20.3.2016 (DriveK Italia Vs Webbdone), excluding copyright infringement of the GUI of a computer program, stated that it is on the claimant to prove the level of creativity of the GUI, also by offering a reconstruction of the state of the art in the sector of the software at stake and/or by offering a comparison with other comparable software. Finally, in a case before the Court of Milan dated 6.7.2012 (Esko Software Vs Beegraphic) the technical expert found that most of the elements of the GUIs under comparison were imposed by technical reasons and that the organization of the elements in the GUI of the defendant was sufficiently differentiated by the same elements in the GUI of the claimant.

Gianluca Campus

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