Intellectual property protection of typefaces
|Intellectual property law|
|Sui generis rights|
Typefaces, fonts and characters raise intellectual property considerations in copyright, trademark and design patent law. The copyright status of a typeface - and therefore the font file which describes it digitally - varies between jurisdictions. In the United States, typefaces, the typeface design - meaning that which is measured and recorded digitally within the typeface's corresponding font file - is unprotectable under U.S. copyright law. However, there are other forms of protection that are often available: 1) It's often possible to apply for and be granted a Design Patent for a new typeface. 2) Often, the typeface's trade name may be registrable as a Trademark. (And the trademark would apply, simultaneously, to the trade name of the thing which 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 tabular data.)
Under U.S. law, typefaces and the characters they contain 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 and copyright has remained unchanged and is as firmly in place today as it was since the first Copyright Act in 1790. As it was then, so it is now: typeface designs do not fall within the Copyright Act's definition of pictorial, graphic, or sculptural works that qualify for copyright protection.
Hence, the rule that typefaces cannot be copyrighted, is well-settled law with a very long history of more than two hundred years.
However, despite this, in an unpublished opinion from Adobe Systems, Inc. v. Southern Software, Inc. decided in 1998, the presiding judge nevertheless 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.
In Japan, typeface has been held not to be covered by copyright, on the ground that it functions primarily as a means of communicating information, rather than to appeal to aesthetic appreciation.
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.
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.
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 vs. 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.
- "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. 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