Intellectual property protection of typefaces
This article needs additional citations for verification. (November 2015) (Learn how and when to remove this template message)
|Sui generis rights|
Higher category: Property and Property law
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, the shapes of typefaces are not eligible for copyright, though the shapes may be protected by design patent (although these are rarely applied for, the first US design patent ever awarded was for a typeface). Typefaces can be protected in other countries, including the UK, Germany, and France, by industrial design protections that are similar to copyright or design patent in that they protect the abstract shapes. Additionally, in the US and in some other countries, computer fonts—the digital instantiation of the shapes as vector outlines—may be protected by copyright on the computer code that produces them. The name of a typeface may also be protected as a trademark.
In 1981, West-Germany passed the Gesetz zum Wiener Abkommen vom 12. Juni 1973 über den Schutz typographischer Schriftzeichen und ihre internationale Hinterlegung ("Law on the 1973 Vienna Agreement for the Protection of Type Faces and their International Deposit", also simply known as Schriftzeichengesetz or "Type Faces Law"), according to which a typeface is initially protected under German copyright law for 10 years from first publication on. After the end of this initial ten-year period, the rights holder may pay a fee to prolong copyright status for additional 15 years only once. According to German law, every typeface thus ends up in the public domain after no more than 25 years from first publication onwards, after which it is also free to be digitized into a computer font, which in itself holds a much higher copyright protection status by German law than analogue typefaces due to being legally classified as a computer program.
The name of a typeface can separately be registered as a trademark (Wortmarke) for a fee, which like a digital font also holds much higher copyright protection status than an analogue typeface itself. If a typeface's name is trademarked, no other typeface may bear the same name, not even digital clones of the analogue typeface.
Irish copyright law covers typefaces. Like the United Kingdom law (see below), it allows for using the typeface in the ordinary course of printing. The term of protection is 15 years from first publication.
In Japan, typefaces have been held not to be covered by copyright, on the ground that they function primarily as a means of communicating information, rather than an appeal to aesthetic appreciation.
In Russia the legal vacuum with soviet intellectual legacy combined with absence of specific law regulation of the fonts – created the opposite situation, where all typefaces have copyright and payments can be collected by current law. According to the Russian Yur'yev legal bureau, at least 99 legal threats by Lebedev's design studio have been about the use of studio made typefaces in Russia without payment.
In Switzerland, there is no specific law for the protection of typefaces. So far, the jurisdiction 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 1916, England recognized copyright in typefaces, but protected only the design 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.
Typefaces cannot be protected by copyright in the United States (Code of Federal Regulations, Ch 37, Sec. 202.1(e); Eltra Corp. vs. Ringer). The idea that typefaces (rather than fonts, which are computer software) cannot be copyrighted in the United States is black letter law. 37 C.F.R. § 202.1(e). Under U.S. law, typefaces and their letter forms or glyphs are considered utilitarian objects whose public utility outweighs any private interest in protecting their creative elements. However, there is a distinction between a font and a typeface. The machine code used to display a stylized typeface (called a font) is protectable as copyright. In 1992, the US Copyright Office determined that digital outline fonts 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 2017 lawsuit brought by Berthold LLC against Target Corporation for its alleged unlawful use of its fonts. Berthold v. Target, no. 1:17-cv-07180 (N.D. Ill.). It is also part of the basis for an unpublished 1998 opinion by Judge Whyte in Adobe Systems, Inc. v. Southern Software, Inc., finding that Adobe Software held a valid copyright for its Utopia font and that it had been infringed by the defendant(s) in that case.
Historically, the unavailability of protection for typefaces reaches back to at least 1976. In 1988, the Copyright Office published a report titled, Policy Decision on Copyrightability of Digitized Typefaces, which explains: "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 addition to rejecting copyright protection for typeface designs, Congress 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 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."
Typefaces may be protected by a design patent in many countries (either automatically, 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.
In 1981, Germany passed a special extension (Schriftzeichengesetz) to the design patent law (Geschmacksmustergesetz) for protecting typeface designs. This also permits typefaces to be registered as designs.
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 used on a computer, or in the case of businesses, one per entity. Under the license fonts are typically 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 authorized outlet.
Such licenses typically only apply to the font file itself (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 type founders' 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.
Adobe Systems, Inc. v. Southern Software, Inc. helped clear the distinction between intellectual property protection for a font versus a typeface. 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.
In 21 January 2016, Font Brothers filed a lawsuit against Hasbro, claiming that Hasbro used the “Generation B” font for its My Little Pony product without permission. Font Brothers claimed that Hasbro had refused to comply with their licensing request. They are also claiming substantial damages, from loss of revenue for this misuse, and requesting a jury trial to resolve this matter.
Most recently, Berthold LLC sued Target Corporation for its alleged breach of a font license agreement. Berthold LLC v. Target Corp., No. 1:17-cv-07180 (N.D. Ill.). Target recognized the distinction between a font and a typeface, and what is protectable under U.S. copyright laws. (See docket entry no. 21).
- "Patent #: US0D0000001". United States Patent and Trademark Office. United States Patent and Trademark Office. November 9, 1842. Retrieved November 23, 2014.
- Copyright and Related Rights Act, 2000 (Ireland), §§ 84-85. Irishstatutebook.ie, Accessed January 31, 2013.
- 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.
- "Юридическое бюро Юрьева - Шрифт как объект авторского права". Juryev.ru. Retrieved 2017-01-19.
- "Valentin Blank — Schriftschutz". Vblank.ch. Retrieved 2017-01-19.
- "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), Legislation.gov.uk
- "Registrability of Computer Programs that Generate Typefaces", 57 Fed. Reg. 6201 (Feb. 21, 1992), reproduced in U.S. Copyright Office announcement ML-443
- "Notice of Policy Decision on Copyrightability of Digitized Typefaces" (PDF). Copyright.gov. Retrieved 2017-01-19.
- The Copyright Office (29 September 1988). "Policy Decision on Copyrightability of Digitized Typefaces" (PDF). Federal Register. Office of the Federal Register. 53 (189): 38110–38113. ISSN 0097-6326. OCLC 436630761.
- "Compendium of U.S. Copyright Office Practices, § 906.4 ("Typeface, Typefont, Lettering, Calligraphy, and Typographic Ornamentation")" (PDF). United States Copyright Office. December 22, 2014. p. 13. Retrieved December 22, 2014.
The copyright law does not protect typeface or mere variations of typographic ornamentation or lettering.
- Gaultney, Victor (October 31, 2003). "Font Licensing and Protection Details". Sil International and UNESCO. Retrieved October 23, 2010.
-  Archived 2011-04-06 at the Wayback Machine
-  Archived 2011-04-06 at the Wayback Machine
- 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. Archived 2010-05-22 at the Wayback Machine, No. C 95-20710 1998 U.S. Dist. LEXIS 1941 (N.D. Cal. Feb. 2, 1998).
- "Font Brothers, Inc., v. Hasbro, Inc" (PDF). Torrentfreak.com. Retrieved 2017-01-19.<
- ""My Little Pony" Sued For Using a Pirated Font - TorrentFreak". TorrentFreak.