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Corporate Liability Alert – Copyright Infringement (Fonts) on Product Packaging, yes it’s happening.

Posted by Steve Vondran | Jul 19, 2018 | 0 Comments

Copyright Watchdog® – This is a general corporate advisory for companies that make and distribute products in the United States.  MAKE SURE YOU HAVE PROPER FONT LICENSING FOR YOUR PRODUCT PACKAGING, BROCHURES, NEWSLETTERS, AND OTHER PROMOTIONAL MATERIAL!  You can be sued for copyright infringement for exceeding the scope of the EULA for example, by improper broadcasting, showing fonts on youtube, over-installing computer software programs, or using fonts without a valid license.

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Introduction – typical scenario

Many people (including CFO's, CEO's, CIO's, product marketing managers, etc.) are not aware that fonts can be subject to intellectual property rights including trademarks and copyrights.  Fonts can be used in many ways, for example in a PDF, on an advertising brochure, on a product, or on other corporate merchandise.  Many companies will use a third party to handle their marketing designs and these companies will typically purchase a font kit from a third party vendor.  The vendor typically “licenses” the product to the designer who then creates mock up designs for the company to approve.  Many times the company is not aware that the fonts being used are subject to an end user license agreement (“EULA”) just like software is such as Autodesk CAD, Adobe, and Microsoft.

This means, you have to follow the EULA which usually contains various limitations and restrictions on your use.  For example, the EULA may say that the font cannot be used in radio, TV or commercial broadcasting without paying for an “advanced” or “enhanced” commercial license.  If you use the font on a product and then shoot a video for your corporate Youtube channel you may find yourself getting a cease and desist demand letter, or perhaps a font vendor or its lawyers may move right into filing a federal court lawsuit against both the company (potentially its officers and directors) the company designer and anyone else that may have been involved.

Obviously this can create a horrible situation for a corporation and the “law of the press” (PR) aspects can be devastating, especially to a designer.  At any rate, this blog is to inform you to READ CAREFULLY YOUR FONT USAGE EULA and make sure you are following the terms.  As to the corporation and the designer MAKE SURE YOU KNOW WHO IS RESPONSIBLE FOR OBTAINING THE PROPER LICENSING.  Does the EULA allow for font use on PRODUCT PACKAGING?  These are things that every corporation, and every designer should consider before launching new products, projects, or promotions including online and offline advertising.

Are fonts copyrighted?

It depends.  General Rule:

According to the U.S. Copyright Office Circular 33

“Typeface, Fonts, and Lettering Copyright law does not protect typeface or mere variations of typographical ornamentation or lettering. A typeface is a set of letters, numbers, or other characters with repeating design elements that is intended to be used in composing text or other combinations of characters, including calligraphy. Generally, typeface, fonts, and lettering are building blocks of expression that are used to create works of authorship.

The Office cannot register a claim to copyright in typeface or mere variations of typographic ornamentation or lettering, regardless of whether the typeface is commonly used or unique. There are some very limited cases where the Office may register some types of typeface, typefont, lettering, or calligraphy. For more information, see chapter 900, section 906.4 of the Copyright Compendium. To register copyrightable content, you should describe the surface decoration or other ornamentation and should explain how it is separable from the typeface characters.”  This section notes:

906.4 Typeface, Typefont, Lettering, Calligraphy, and Typographic Ornamentation As a general rule, typeface, typefont, lettering, calligraphy, and typographic ornamentation are not registrable. 37 C.F.R. § 202.1(a), (e). These elements are mere variations of uncopyrightable letters or words, which in turn are the building blocks of expression.  The Office typically refuses claims based on individual alphabetic or numbering characters, sets or fonts of related characters, fanciful lettering and calligraphy, or other forms of typeface. This is true regardless of how novel and creative the shape and form of the typeface characters may be.

Examples:

Felicia Frost creates a font called “Pioneer Living” that evokes historical “Wanted: Dead or Alive” posters. The registration specialist will refuse to register this font because it is a building block of writing.

Calliope Cash creates a textile fabric consisting of a vertically striped grass cloth and a traditional Chinese proverb. Each character is painted on a separate stripe in standard, unembellished calligraphy. The registration specialist will refuse to register this fabric design because the calligraphy consists of standard Chinese characters, and the simple arrangement of characters on vertical stripes and the choice of grass cloth does not add sufficient creativity to warrant registration.

Potential Exceptions to the general rule:

“There are some very limited cases where the Office may register some types of typeface, typefont, lettering, or calligraphy, such as the following:

Pictorial or graphic elements that are incorporated into un-copyrightable characters or used to represent an entire letter or number may be registrable. Examples include original pictorial art that forms the entire body or shape of the typeface characters, such as a representation of an oak tree, a rose, or a giraffe that is depicted in the shape of a particular letter.

Typeface ornamentation that is separable from the typeface characters is almost always an add-on to the beginning and/or ending of the characters. To the extent that such flourishes, swirls, vector ornaments, scrollwork, borders and frames, wreaths, and the like represent works of pictorial authorship in either their individual designs or patterned repetitions, they may be protected by copyright. However, the mere use of text effects (including chalk, popup papercraft, neon, beer glass, spooky-fog, and weathered-and-worn), while potentially separable, is de minimis and not sufficient to support a registration.

The Office may register a computer program that creates or uses certain typeface or typefont designs, but the registration covers only the source code that generates these designs, not the typeface, typefont, lettering, or calligraphy itself. For a general discussion of computer programs that generate typeface designs, see Chapter 700, Section 723.

To register the copyrightable ornamentation in typeface, typefont, lettering, or calligraphy, the applicant should describe the surface decoration or other ornamentation and should explain how it is separable from the typeface characters. The applicant should avoid using unclear terms, such as “typeface,” “type,” “font,” “letters,” “lettering,” or similar terms.

What is a “Computer Program”?

According to the copyright office:

“A ‘computer program' is a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result.” 17 U.S.C. § 101.

723 Computer Programs That Generate Typeface, Typefont, or Barcodes

“Typeface and mere variations of typographic ornamentation or lettering are not copyrightable. 37 C.F.R. § 202.1(a), (e). compendium: Literary Works Chapter 700 | 44 revised 09/29/2017 A computer program that generates bar codes or a particular typeface, typefont, or letterform may be registered if the program contains a sufficient amount of original authorship in the form of statements or instructions to a computer. For example, creating a scalable font output program that produces harmonious fonts consisting of hundreds of characters may require numerous decisions in drafting the instructions that drive a printer or other output device. If this expression contains a sufficient amount of original authorship, the work may be registered as a computer program. However, the registration would not cover any bar codes, typeface, typefont, letterform, or mere variations of typographic ornamentation or lettering that may be generated by the program. See Registrability of Computer Programs that Generate Typefaces, 57 Fed. Reg. 6201, 6202 (Feb. 21, 1992). When asserting a claim in a computer program that generates typeface, typefont, letterform, or barcodes, the applicant should identify the author(s) that created the work.

Specifically, the applicant should provide the name of the person(s) or organization(s) that created the source code for the program. The registration specialist may communicate with the applicant if it appears that the author merely assigned coordinates to a particular letterform and then used a third party program to render typeface or typefont from those coordinates (but did not create any of the source code for that program). “Computer program” is the most appropriate term for registering a claim in this type of work. As discussed in Section 721.9(F), this information should be provided in the Author Created field, and if applicable, also in the New Material Included field. When completing a paper application on Form TX, this information should be provided in space 2, and if applicable, also in space 6(b).

The U.S. Copyright Office will not accept an application that asserts a claim in the “entire work,” “entire computer program,” “entire text,” or the like, because these statements suggest that the applicant may be asserting a claim in both the copyrightable and uncopyrightable elements of the program. See 57 Fed. Reg. at 6202.

To register a computer program that generates typeface, typefont, letterform, or barcodes, the applicant must submit a portion of the source code for that program. If the applicant merely submits a representation of the characters generated by the program without providing any code, the registration specialist will communicate with the applicant. For a discussion of the deposit requirements for computer programs, see Chapter 1500, Section 1509.1(C).”

Wikipedia weighs in:

Here is wikipedia's take on this important issue:

“Typefaces cannot be protected by copyright in the United States (Code of Federal RegulationsCh 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.”

According to section 906.4 of the Compendium of U.S. Copyright Office Practicestypography and calligraphy are also not copyrightable in themselves.

Are fonts trademarked?

Typically, NO.  But the name of the font can be subject to trademark protection.

The importance of knowing who's responsible for proper font licensing and usage

This is a key issue.  When disputes boil over (typically when a cease and desist or monetary demand letter is received) the question can become “I thought you were supposed to get the extended license” or “you knew we were going to run a television ad why didn't you check the EULA terms to make sure that was proper” or “did you know that fonts are subject to copyright and that we violated the terms with our product packaging?”

These types of questions can be very unpleasant because usually there is a good working relationship between the marketing department and the designer.  But this is when these parties typically scramble for their working relationship contract (ex. third party designer agreement) and see who was supposed to get the proper licensing or ensure licensing compliance for proper font usage.  This can wind up being a “gray area” that no one anticipated in their agreement.

The parties may then look to see if there is an “indemnification clause” to see if the designer will be required to “pick up” and handle the defense.  Sometimes even these clauses are not in the agreement between the parties.

At any rate, this is usually where our intellectual property law office can receive a phone call.  It is important to bear in mind that copyright infringement damages can be very high (higher than most corporate directors and officers realize) and despite having the advantage of the “corporate veil” there are provisions for holding officers and director's personally liable if they have the ability to supervise, and a financial interest in infringement and the conduct is deemed “willful.”

At any rate, when these issues arise, it makes good sense to seek legal counsel.  We offer a free initial consultation in font infringement cases.

Contact a font copyright infringement lawyer

We are a boutique copyright infringement law firm. We can help both creators enforce their EULA font licensing rights and uncover unpaid licensing fees, and help companies facing font licensing disputes, cease and desist letters, and federal court lawsuits.

Our services can help companies in font licensing disputes, mediation, arbitration, general counseling and litigation.  With font companies facing fierce competition, some companies are turning to secondary revenue sources (or “profit centers”) in the “copyright infringement marketplace” so this is an issue that every company in the United States should take note of and make sure all compliance issues are handled.  If you need help either as a rights holder or a company facing a demand letter from an intellectual property law firm, we can be reached at (877) 276-5084.

About the Author

Steve Vondran

Thank you for viewing our blogs, videos and podcasts. As noted, all information on this website is Attorney Advertising. Decisions to hire an attorney should never be based on advertising alone. Any past results discussed herein do not guarantee or predict any future results. All blogs are written by Steve Vondran, Esq. unless otherwise indicated. Our firm handles a wide variety of intellectual property and entertainment law cases from music and video law, Youtube disputes, DMCA litigation, copyright infringement cases involving software licensing disputes (ex. BSA, SIIA, Siemens, Autodesk, Vero, CNC, VB Conversion and others), torrent internet file-sharing (Strike 3 and Malibu Media), California right of publicity, TV Signal Piracy, and many other types of IP, piracy, technology, and social media disputes. Call us at (877) 276-5084. AZ Bar Lic. #025911 CA. Bar Lic. #232337

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