Intellectual property protection of typefaces

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 officially copyrightable, though they may be protected de facto by copyrights on computer code and trademarks on names. Occasionally, a design patent may be awarded, though this is uncommon. The first US design patent ever awarded was for a typeface.^[1] Typefaces can be covered by similar industrial design protections in other countries, including the UK, Germany, and France.

Copyright

United States

The idea that typefaces cannot be copyrighted in the United States is a well-settled law with a long history. Based upon the decision in Eltra Corp v. Ringer, and the clear and explicit actions of Congress, the status quo regarding typeface copyright has remained unchanged. Under U.S. law, typefaces and their letter forms or glyphs 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).

In 1988, the Copyright Office published a report titled, Policy Decision on Copyrightability of Digitized Typefaces,^[2] 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, the 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."^[3]

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.^[4] 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.

According to section 906.4 of the Compendium of U.S. Copyright Office Practices, typography and calligraphy are also not copyrightable in themselves.^[5]

Elsewhere

In 1916, England recognized copyright in typeface but protected only the design with all the letters in their particular order.^[6] The current United Kingdom copyright statute, enacted in 1989, expressly refers to copyrights in typeface designs.^[7] 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.^[7]

Irish copyright law also covers typeface. Like its United Kingdom counterpart, it allows for using the typeface in the ordinary course of printing. The term of protection is 15 years from first publication.^[8]

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.^[9] 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 an appeal to aesthetic appreciation.^[10]

Design patents

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.^[11] A prominent example is the European Union,^[12] where the automatic protection (without registration) expires after three years and can be extended (by registration) up to 25 years.^[13]

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.

Trademarks

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.^[11]

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.^[14]

Licensing

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.^[11] 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.^[11] 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.^[11]

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.

Open source font licenses include the General Public License with the Font Exception, the SIL Open Font License, and the Ubuntu Font License.

Lawsuits

From 1993 to 1995, Bitstream Inc. and four other type companies successfully sued SWFTE for copyright infringement.^[11] SWFTE was using special computer programs to take other type founders' fonts, convert them and give them new names.^[11] The case focused on the fact that SWFTE had used Bitstream's software to create these new fonts.^[11]

A legal precedent was set in the case of Adobe Systems, Inc. v. Southern Software, Inc. (SSI).^[11] SSI had used the FontMonger program to copy and rename fonts from Adobe and others.^[11] 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.^[11] Nevertheless, it was determined that the computer code had been copied.^[11][15]

In 21 Jan 2016,^[16] Font Brothers filed a lawsuit against Hasbro, claiming that Hasbro used “Generation B” font for its My Little Pony product without permission. Font Brothers claimed that Hasbro had refused to comply with their licencing request. They are also claiming substantial damages, from loss of revenue for this misuse, and requesting a jury trial to resolve this matter.^[17]

See also

• Legal aspects of computing
• Intellectual property

References