Font and Typeface Legal Tip Sheet

Font and Typeface Basics:

A typeface is a set of letters, numbers, and punctuation marks whose forms are related by repeating certain design elements that are consistently applied. Put more simply, typeface refers to the way a set of letters or numbers appears, whether on a page or a computer monitor. Something like “Times New Roman” or “Comic Sans MS” is a typeface.  A font, on the other hand, is the computer program that tells the printer or computer display how a letter or character is supposed to be shown. So what most people refer to as “fonts” are actually typefaces!

In the United States, fonts are protectable under copyright law. Typefaces, however, are not. The Code of Federal Regulations explicitly provides that “typeface as typeface” is not protectable. In Adobe Systems v. Southern Software, the U.S. District Court for the Northern District of California held that font programs are protectable by copyright. That court also held that typefaces are ineligible for copyright registration, but are eligible for patent protection through a design patent. The first-ever design patent was actually granted for a typeface. Finally, a font name can be trademarked—for example, the name of the commonly used typeface “Palatino” is a registered trademark. A trademark protects what a typeface is called, a copyright protects how a font program is written, and a design patent protects letter design—how the letters appear. All these legal distinctions have important consequences both for those who would like to use a typeface or font created by someone else, and for the designers who create them and would like to protect their work.

 

Font and Typeface Users:

When you use a font, whether it is in a logo, on a brochure, used to display film credits, or even in art, you may be inadvertently putting yourself at risk if you don’t have the rights to use that font. The law on fonts is complicated. However, there are some basic tips artists of all sorts can use to better protect themselves against claims of copyright infringement.

There are many free fonts available online for download—thousands of them, in fact. But for those who use typefaces professionally, whether as incorporated in works of art, as part of graphic designs on posters or other products, or through artistic web design, companies called “type foundries” are the biggest online source of typefaces. Type foundries are online warehouses containing many digital typefaces that are available for downloading, usually for a premium. A type foundry’s business model usually works by selling licensing rights to download and use a particular font program (and to display the typeface it produces), though some foundries offer typefaces for free download. If you do not want to create your own, licensing a typeface from a foundry can be a good way to go.

Typeface licenses are generally granted per computer or per user, and will explicitly state what the licensee can and cannot do with the typeface—for instance, whether the typeface can be used in advertising, on TV, in print, on merchandise, or online. Be sure to read your license agreement carefully, because it will often limit what you can and cannot do with the typeface and font you have licensed. This is particularly important if you have selected a free typeface, as those licenses are generally the most restrictive. Going beyond your license can lead to liability.

If you don’t go through a foundry, be very careful about downloading “free” fonts from other sites around the Internet. Often, well-known “free” fonts are actually just pirated versions—unauthorized copies of someone else’s design. Thus, it can be  very risky to download and use one of these fonts unless you personally know the creator and obtain permission. The best way to avoid liability is to seek out reputable font foundries, including Font Bureau, Fonts.com, Typotheque, Hoefler & Frere-Jones, MyFonts and FontShop. This is just a short list, as there are many other foundries online. It is good practice to always browse any font website to see if it seems like a legitimate source.

 

Font and Typeface Creators/Designers:

Designers who create typefaces have several options for protecting their work. Even if you are not primarily a type designer, creating your own typeface (especially if you want to make and use a logo) can be a great way to avoid licensing and fees associated with using someone else’s typeface or font.

First, if you have created a font program, you can get copyright protection for that program. Even though you cannot get copyright protection for the design of your typeface, it is still useful to get a copyright on the underlying program, so that no one else can use it. Computer programs are protectable as literary works, and a computer program does not lose copyrightability just because its output (including a typeface) is not copyrightable.  So the fact that a font program creates something that can’t be copyrighted (a typeface) does not mean the font program itself cannot be copyrighted.

Next, if you plan to use a typeface design commercially, you can get a trademark on your typeface’s name. Trademarks protect words, names, symbols or devices that are used in commerce to identify the source of goods or products. Trademarks protect consumers by identifying the maker of what they are buying, and prevent others from wrongfully benefiting from the good reputation an original trademark owner has created. This can be a useful form of protection for a designer if you want to make sure that no one creates a typeface that is similar to yours and markets it under the same name.

Finally, if you are willing to invest significant  time and money, you can try to obtain a design patent to cover your typeface’s design—the way the letters look. A design patent is a type of patent that covers ornamental designs. The Patent and Trademark Office has specifically noted that it grants design patents, and has granted over 1,500 design patents, for typeface design. Adobe Systems v. Southern Software further confirmed that “Type fonts are [design] patentable subject matter.” To obtain a design patent, you will likely need an attorney to help you navigate the application process, called patent prosecution. The application will require a detailed drawing of your design and will include fees. A design patent is useful because it protects the actual design of your letters so that no one else can copy them. You will need to clear the same statutory hurdles that anyone applying for a patent must clear, most importantly novelty and non-obviousness. In short, this means that in order to successfully obtain a design patent, you must prove your design is new and would not have been obvious based on the designs that already exist.

In order to get full protection it is useful to combine several of the above forms of protection. For example, just getting a trademark on the name of your typeface will not prevent someone from copying your design. Simply getting a design patent on the typeface design means that someone can use a different font program to create a very similar looking typeface. And, just getting a copyright on the font program may pose the same problem as that created by trademark: It does not protect the letter design. Consult with an attorney to determine the best combinations and type of protection to meet your needs.

 

Why You Should Care

Typeface and font law are evolving slowly for a reason grounded in history. Until the invention of the desktop computer and the proliferation of Internet access, it took a very long time to copy a font or typeface, so there was no need for protection. Until they were digitized, typefaces were printed on carved metal blocks, or on celluloid strips, and it could take years to create just one set of letters. There was not much need to create laws to prohibit copying, because no one wanted to take the time to do it.

Now that typefaces and fonts can be created, copied and shared with the click of a button, more infringement has occurred. Thus, designers are beginning to better understand their rights, and the law is developing to provide increased protection as more lawsuits for illegal typeface use are brought. A few of the biggest cases have involved improper use of someone else’s font/typeface by well-known companies. For example, the television network NBC found itself in a legal battle due to its license to use the typefaces “Bureau Grotesque,” “Interstate,” and “Antenna.” Its license allowed the network to use the typefaces on only one computer. When NBC used the typefaces in marketing TV shows “Saturday Night Live” and “The Tonight Show with Jay Leno,” it exceeded this one-computer license. The suit, which sought damages of $2 million, eventually settled for an undisclosed amount. A similar suit sought $1.5 million from NBC Universal, Universal Studios, and several merchandisers on behalf of type foundry P22, alleging the companies used the “Cezanne” typeface on merchandise without a license to the underlying font program; this suit also settled for an undisclosed amount. Another recent lawsuit against Rick Santorum’s presidential campaign, on behalf of foundry Typotheque, demonstrates that these problems can worsen without license agreements. Among other causes of action, Typotheque alleged the campaign used and distributed unauthorized copies of the copyrighted font software “Fedra” on its campaign website, and sought over $2 million in damages. The case also settled for an undisclosed amount.

Though most cases involving font infringement against big companies settle, it is clear that type owners are putting more effort into protecting their intellectual property. Artists need to be concerned, particularly given the ease and speed with which people can download and use these typefaces and fonts. Everybody should be aware of the risks involved in using fonts, and those who create them should take advantage of growing protections to monetize their work.

 

Takeaway: Do’s and Don’t’s of Copyright and Fonts

  • DO NOT pirate fonts, or use fonts that have been pirated by someone else
  • DO read licenses if you download a font, whether free or paid
  • DO NOT download free fonts that are not from foundries without permission
  • DO seek to get fonts through foundries
  • DO NOT worry about getting protection for a typeface you create if you’re using it in a piece of art
  • DO worry about using a font without permission (or a license) if you’re selling anything

 

 

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