Font piracy is rampant—and copyright protection isn’t an option—but don’t despair! Design patents are a viable way to safeguard your new typeface.
Type’s legal history is a frustrating story—especially for typeface creators. The U.S. is the only major industrialized nation that doesn’t protect font design through copyright law. This inability to use copyright law has forced the type industry to seek other means of legal protection, namely trademark and design patents. Although these options aren’t ideal, they can be used to protect type. Understanding type’s uneasy relationship with the scales of justice may help shed some light on what designers can do to protect their typeface designs.
Type’s Dismal Copyright History
On July 2, 1974, Eltra Corp. filed an application with the U.S. Copyright Office to register a copyright for the company’s ORION typeface. The Copyright Office rejected the application, finding that the typeface design contained “no elements, either alone or in combination, which can be separately identified as a ‘work of art.'” Eltra sued the Copyright Office and lost.
In 1976, while the Eltra case was still pending, U.S. copyright law was revised. The House of Representatives’ report contained bad news for type designers: “The Committee does not regard the design of typeface … to be copyrightable ‘pictorial, graphic or sculptural work’ within the meaning of the bill. …”
For more than 10 years, the answer to the question, “Is typeface design legally protected?” was essentially “no.” But the plot thickened when computers radically changed the way typeface designs are created. In 1988, the Copyright Office announced that the digitized representation of type designs can’t be registered because they don’t constitute original works of authorship—a basic requirement of copyright registration. Before, typefaces couldn’t be registered because they didn’t constitute original works of art separate from the utilitarian function of representing the alphabet. Now fonts were denied registration because they contained no creative authorship.
n its 1988 policy statement, the Copyright Office went one step further, making the distinction between the computer program that created the font and the actual typeface itself. A computer program, it said, could be registered even if the thing it creates could not. But in order to register such a program, the copyright application must specifically disclaim any copyright in the fonts created by the program. (Of course, if you’re using an off-the-shelf program like Adobe Fontographer, the software company already holds the copyright in the product.)
In 1992, the Copyright Office issued another policy statement reiterating its position that the computer programs used to create fonts were protected but the typefaces weren’t. The Office concluded, however, that the disclaimer requirement was “too burdensome” and announced that it was no longer required in type-program copyright applications.
Looking to Patents and Trademarks
When it became clear that copyright law offered no hope for protecting fonts, typeface creators turned to patent and trademark law. Because trademarks are available for the name of a typeface—but not for the design itself—trademark law offers minimal help for font designers.
Patent law is more promising. Design patents are available for ornamental designs embodied in a manufactured article. Although design patents are traditionally granted for industrial designs like furniture, hundreds of typeface design patents have been issued. While typeface patents can take a long time to come through, the process isn’t as difficult or expensive as the process for utility patents (for inventions). Designers were concerned, however, that the same problems of originality and creativity for copyrighting typefaces could affect the validity of design patents.
In 1995, Adobe Systems sued Southern Software, better known as Softkey, for copyright infringement of Adobe’s Fontmonger and Fontographer software when Softkey created a new font collection called Key Fonts Pro. Adobe claimed that Softkey began selling font packages that were essentially manipulations of typefaces included with the programs. Softkey argued that no creative authorship was involved in the creation of fonts, claiming that all it had really done was to manipulate an unprotected font image to create another slightly different (but still unprotected) font image.
Adobe also sued Softkey for infringing design patents Adobe had obtained on some of its fonts included in Fontographer and Fontmonger. Softkey claimed that design patents for typefaces were invalid because they didn’t meet the statutory requirements of originality and ornamentality in a manufactured article. This is a similar argument to what the Copyright Office claimed in its 1988 and 1992 policy statements. But Adobe prevailed and the lower court found that typefaces are appropriately covered by design patents.
Protecting Your Fonts
So where are we now? What should you do if you want to try to protect a typeface design? Some things are clear. You still can’t get copyright protection for the typeface itself, but you can secure protection for the computer program that creates fonts—if it’s an original program you created yourself.
You can obtain a design patent for a typeface as long as you meet patent requirements. But the Adobe/Softkey case is currently on appeal, leaving open the possibility that design patents and the copyrightability of font-creation computer programs could be in jeopardy.
And you always have the option of registering a trademark to protect the name of a typeface under which it’s being marketed, but not the typeface itself. Although a trademark registration for a font name may be appropriate in some situations, it doesn’t protect the actual font design. At the moment, it looks like a patent is the only viable legal path to protect type designs.
You can obtain design-patent protection for your typeface if it meets the following criteria:
- The typeface wasn’t generally known or accessible to the public for more than one year prior to filing your application. This means that if you or your client have been using a font that you designed for years, it won’t be eligible for patent protection; it has to be newly created.
- The font wasn’t used or described in a printed publication in any country at all during the year prior to filing. So even if it hasn’t been made public, it will still be ineligible if it appeared in print anywhere in the world.
- The face isn’t registered as a design patent or industrial design in a foreign country.
- The font must be completely new—it can’t be an obvious variation of another design.
Assuming your typeface meets all of these criteria, you can file for a design patent. It’s possible to file for a patent yourself, but it’s not a good idea. The filing and issue fees in the U.S. Patent and Trademark Office total $395 per patent. The process can take as long as a year and has many traps for the unwary, so consult a registered patent attorney.
What Can You Do?
Are any remedies available to you if your font is copied? Typeface piracy is so common that it’s almost expected. In the absence of an issued design-patent registration, there isn’t much that can be done. This lack of remedies is precisely why there’s so much consternation over the lack of copyright protection. With a registered design patent, you can sue for patent infringement and are entitled to actual damages and profits. Damages may be increased if the patent infringement is willful. Although you can be compensated for your legal fees if the judgment is in your favor, this isn’t automatic. If you haven’t received your patent registration yet or haven’t applied, you can’t sue for infringement.
The future of legal protection for typefaces doesn’t appear bright. The only realistic option is new federal legislation that would include typefaces as copyrightable subject matter. Because Congress considered the issue in 1976 and decided not to include typeface protection in the Copyright Act, it doesn’t look likely that the decision will be revised.
Type, although unprotected, is a vital part of works of design and art that are protected by U.S. law. Fonts can play a crucial role in the trademark or trade dress of a product or service and be protected for their ability to identify goods and services, if not for their design. (For example, the Coca-Cola typeface is a critical aspect of its name and logo. The typeface is protected because it is the logo.) The lack of legal protection for type shouldn’t dissuade creative development.
HOW February 1999