Intellectual property protection of typefaces
|Intellectual property law|
|Sui generis rights|
Typefaces, fonts and their glyphs raise intellectual property considerations in copyright, trademark, design patent and related laws. The copyright status of a typeface – and any font file that describes it digitally – varies between jurisdictions. In the United States, typefaces, the abstract form of the design – meaning the data that is measured and recorded digitally within the typeface's corresponding font file – is unprotectable under U.S. copyright law.
However, the same abstract design is protectable by other means in the United States, such as design patent (indeed, the very first US design patent was for a typeface), and by similar industrial design protections in other countries, including the UK, Germany and France. Further, the form in which that typeface is often reproduced, a computer font file, is registrable for copyright in the United States (since 1992). Other forms of protection are also applicable: the typeface's trade name may be registrable as a Trademark. (And the trademark would apply, simultaneously, to the trade name of the thing that actually changes hands when the typeface is bought, sold, licensed, or in any way redistributed – that is, the digital font file within which the measurements of the typeface are recorded as data.)
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Under U.S. law, typefaces and the letter forms or glyphs they comprise are considered to be utilitarian objects whose utility outweighs any merit that may exist in protecting their creative elements. Typefaces are exempt from copyright protection in the United States (Code of Federal Regulations, Ch 37, Sec. 202.1(e); Eltra Corp. vs. Ringer).
Further, as was explained in the Policy Decision on Copyrightability of Digitized Typefaces published by the Copyright Office in 1988, "The decision in Eltra Corp. v. Ringer clearly comports with the intention of the Congress. Whether typeface designs should be protected by copyright was considered and specifically rejected by Congress in passing the Copyright Act of 1976. The 1976 House Report states: A "typeface" can be defined as a set of letters, numbers, or other symbolic characters, whose forms are related by repeating design elements consistently applied in a notational system and are intended to be embodied in articles whose intrinsic utilitarian function is for use in composing text or other cognizable combinations of characters. The Committee does not regard the design of typeface, as thus defined, to be a copyrightable "pictorial, graphic, or sculptural work" within the meaning of this bill and the application of the dividing line in section 101 [H.R. Reg. No. 1476, 94th Cong., 2nd Sess 5 (1976)].
In rejecting copyright protection for typeface designs, the Congress in addition deferred a decision on a more limited form of protection under proposed ornamental design legislation. Title II of the 1976 copyright revision bill as passed by the Senate could have protected typeface designs, but the House of Representatives had doubts about even this limited form of protection. Consequently, only copyright revision passed. H.R. Reg. No. 1476 at 50 and 55. Design legislation has yet to be enacted, and Congress has chosen not to include typeface designs within the Copyright Act's definition of pictorial, graphic or sculptural works."
Based upon the decision in Eltra v Ringer and the clear and explicit actions of Congress, the status quo regarding typeface copyright has remained unchanged. The idea that Typefaces cannot be copyrighted in the United States is well-settled law with a very long history.
However, in 1992, the US Copyright Office revisited its 1988 decision, and determined that the latest digital outline fonts in fact had elements that could be protected as software. Since that time, the Office has accepted registration of copyright for digital vector fonts, such as PostScript Type 1, TrueType and OpenType format files.
This is part of the basis of the unpublished opinion in Adobe Systems, Inc. v. Southern Software, Inc. decided in 1998, wherein Judge Whyte found that Adobe Software held a valid copyright for its Utopia font and that it had been infringed by the defendant(s) in that case.
England recognized copyright in typeface, in 1916, but protected only the design in its entirety, with all the letters in their particular order. The current United Kingdom copyright statute, enacted in 1989, expressly refers to copyrights in typeface designs. English law does consider that fonts are subject to copyright. However this only covers typefaces for 25 years from first publication, and does not cover their usage by typographers.
Irish copyright law also covers typeface. Like its United Kingdom counterpart, it excepts using the typeface in the ordinary course of printing from infringement. The term of protection is 15 years from first publication.
In Switzerland, there is no specific law for the protection of typefaces. The jurisdiction so far has been very reluctant in admitting legal protection of any sort to typefaces. However, the denied protection is not imperative: in theory typefaces could be protected based on both copyright and design law. Additionally, the name of a typeface can be protected by a trademark.
Typefaces as such may be protected by a design patent in many countries (either automatically, or by registration, or by some combination thereof). A design patent is the strongest system of protection but the most uncommon. It is the only US legal precedent that protects the actual design (the design of the individual shapes of the letters) of the font. A prominent example is the European Union, where the automatic protection (without registration) expires after three years and can be extended (by registration) up to 25 years.
Germany (in 1981) passed a special extension (Schriftzeichengesetz) to the design patent law (Geschmacksmustergesetz) for protecting typeface designs. This permits typefaces being registered as designs in Germany, too.
The names of particular fonts may be protected by a trademark. This is the weakest form of protection because only the font name itself is being protected. For example, the letters that make up the trademarked font Palatino can be copied but the name must be changed.
URW++ was involved in a 1995 lawsuit with Monotype Corporation for cloning their fonts and naming them with a name starting with the same three letters. As typeface shapes themselves cannot be copyrighted in the United States, the lawsuit centered on trademark infringement. A US court decided that Monotype's trademarks were "fanciful" and did not have descriptive value of the actual products. However it also decided that URW was confusing the public deliberately because "the purloining of the first part of a well-known trademark and the appending of it to a worthless suffix is a method of trademark poaching long condemned by the courts." The court issued an injunction preventing URW from using their chosen names.
The basic standard for copyrighted digital font use is that a license is required for each individual font or typeface used on a computer or in the case of businesses 1 per entity. Under the license, typically, fonts are licensed only for use on one computer. These End User License Agreements (EULAs) generally state that fonts may only be used on machines that have a valid license. These fonts cannot be shared by multiple computers or given to others. These licenses can be obtained in three ways: directly from the font authors (e.g., Adobe), as part of a larger software package (e.g., Microsoft Office), or through purchasing or downloading the font from an authorised outlet.
Note that this license only applies to the font file (which is a computer program), and not to the shape of the typeface, which may be subject to a design patent.
From 1993 to 1995, Bitstream Inc. and four other type companies successfully sued SWFTE for copyright infringement. SWFTE was using special computer programs to take other typefounders' fonts, convert them and give them new names. The case focused on the fact that SWFTE had used Bitstream's software to create these new fonts.
A legal precedent was set in the case of Adobe Systems, Inc. v. Southern Software, Inc. (SSI). SSI had used the FontMonger program to copy and rename fonts from Adobe and others. They assumed safety from prosecution because, though they had directly copied the points that define the shapes from Adobe's fonts, they had made slight adjustments to all the points so they were not technically identical. Nevertheless, it was determined that the computer code had been copied.
- The Copyright Office (29 September 1988). "Policy Decision on Copyrightability of Digitized Typefaces". Federal Register (Office of the Federal Register) 53 (189): 38110–38113. ISSN 0097-6326. OCLC 436630761.
- "Registrability of Computer Programs that Generate Typefaces", 57 Fed. Reg. 6201 (Feb. 21, 1992), reproduced in U.S. Copyright Office announcement ML-443
- "Stephenson, Blake and Co. v. Grant, Legros & Co., 115 L.T.R. 666, 61 Sol. J. 55 (1916), reprinted in E.J. MacGillivray, Copyright Cases 1911-1916 326-329 (1969), aff'd 116 L.T.R. 268 (1917), noted in 13 Eng. and Empire Digest 68, 68-69. The court recognized that the typeface design was subject to copyright under the then-current Copyright Act of 1911, An Act to Amend and Consolidate the Law Relating to Copyright, 1911, 1 & 2 Geo. 5, ch. 46 (Eng.). However, the plaintiff's victory was hollow. The court held that the copyright protected only the design in its entirety, with all the letters in their particular order. The defendant's embodiment of them into a font of his own, as opposed to a reproduction of the design with the letters in the same order, was held not to infringe. MacGillivray , supra at 327-28." Terrence J. Carroll, Protection For Typeface Designs: A Copyright Proposal, 10 Santa Clara Computer & High Tech. L.J. 139, 169, n.181.
- Copyright, Designs and Patents Act 1988 (c. 48), § 54 (England)
- Copyright and Related Rights Act, 2000 (Ireland), §§ 84-85. Accessed January 31, 2013.
- Valentin Blank, Der Schutz typographischer Schriftzeichen und Schriften im Schweizer Recht, Bern 1999 (http://www.vblank.ch/articles/font-protection/index-g.html)
- Yagi v. Kashiwa Shobo K.K., II-1 Chosakuken Hanreishu 8 (9 Mar. 1979, Tokyo District Court) (the Typeface Design Case), cited in Karjala, Dennis S.; Sugiyama, Keiji (Autumn 1988). "Fundamental Concepts in Japanese and American Copyright Law". The American Journal of Comparative Law 36 (4): 613, 625–26. doi:10.2307/840277. JSTOR 840277.
- Gaultney, Victor (October 31, 2003). "Font Licensing and Protection Details". Sil International and UNESCO. Retrieved October 23, 2010.
- OAMI-ONLINE - The Community Design in Practice
- OAMI-ONLINE - The Community Design in Practice
- Lawrence D. Graham (1999). Legal Battles that Shaped the Computer Industry. Greenwood Publishing Group. pp. 47–48. ISBN 978-1-56720-178-9.
- Adobe Systems, Inc. v. Southern Software, Inc., No. C 95-20710 1998 U.S. Dist. LEXIS 1941 (N.D. Cal. Feb. 2, 1998).