Posted by Thomas Phinney
One frustrating aspect of making fonts is that they are so easily stolen. I don’t mean somebody breaking into my home (or even my laptop) and taking fonts, but rather font piracy. When a single font is only 20K or even 100K, entire families or more can be easily attached to an email or distributed via some “sharing” arrangement. What legal protections do font makers have for their intellectual property (IP)?
First, the standard disclaimer: I’m not a lawyer. If you want legal advice, whether it’s for protecting your own fonts, or determining if your usage or distribution of fonts is legal, you should consult a lawyer. This is only an attempt to provide some background.
Generally, the protections fall under three categories: trademark, patent and copyright. Each protects a different class of things, and each has different scope. Patents and trademarks are country-specific, while copyright is more international in nature. In the USA, patents have the shortest life-span, copyrights are more lengthy, and trademarks can be eternal.
Trademarks are legal protection for a word, name, logo, design or phrase that distinguishes a specific product in the marketplace. More information can be found from the International Trademark Association or the US Patent & Trademark Office. With fonts, a trademark can protect the name of the font (and the name of the foundry, which may be part of the font name). If properly maintained, trademark rights can continue indefinitely. The main protection a trademark on the font name provides is against somebody else giving their font the same name as your font, creating confusion in the marketplace.
Patents are mostly known for protecting newly invented processes (utility patents), but in the USA there is a lesser-known variety of patents called design patents. A regular utility patent might be used to protect an entirely new alphabet, such as the one funded by George Bernard Shaw’s estate, but in general one does not expect utility patents to be applied to fonts or typeface designs. US utility patents last for 20 years from the filing date.
On the other hand, a US design patent is specifically intended to cover ornamental and visual rather than functional differences – and in fact the first design patent was issued for a font of metal type, in the mid-1800s. However, design patents have a shorter lifespan than utility patents, just 14 years, but from the date of grant rather than from the date of filing. See this article by Frank Martinez for more details on design patents for protecting digital fonts (as well as some of his other thoughts).
The last form of IP protection for fonts is through copyright. One issue that is often quoted and sometimes confuses the question of protection for fonts in the USA is that the US Congress specifically eliminated copyright protection for the abstract design of a typeface in 1974. This places the US in a rather odd space, where somebody who spends two seconds taking a photograph has the visual appearance automatically protected by copyright, but somebody who spends months designing a typeface does not. The European Union and most countries that have strong traditions of respecting intellectual property generally allow the abstract designs of new typefaces to be protected by copyright.
However, even without copyright protection for the design of a font (in the US), digital fonts are widely recognized (in the US and many other countries) as being protected by copyright as computer software. This principle has been explicitly upheld in US federal district court in the very informative summary judgment rulings in the Adobe v SSI case (1997). So, when font pirates talk about how what they’re doing is legal because fonts aren’t protected by copyright under US law, we know this simply isn’t true.
Now, I’ll break for some random wild speculation. Again, I’m not a lawyer, so I make no claims that these ideas would hold up in court, but I think they make interesting thought experiments.
It would be interesting to see what the PTO would do if somebody tried to trademark the likeness of a font. After all, (as an example) the distinctive Disney word logo is a trademark, and I’d wonder whether a font which implemented the individual letters of that logo might be considered infringing. So why can’t you trademark the distinctive likeness of a font the way you can a logo?
In a related issue, I understand hand-lettering is protected by copyright. So if we hand-letter our designs prior to turning them into a digital font, would the digital font then be a derivative work from the hand-lettering? Wouldn’t that mean that the abstract design of the font – as seen in the original hand-lettering – is protected?
(In a future post, I’ll discuss the advantages and limitations of technical means to protect fonts – copy protection.)