Professional web designers typically know a little about copyright law since infringement is a liability for their business. Most know enough to avoid using images without the proper licensing or copying large amounts of text from another website.
But not as many pay as much attention to making sure they have the proper licenses for the fonts they use.
The company that designed and created US presidential candidate Rick Santorum‘s website has found out the hard way that this is risky.
On Tuesday, Netherlands typeface design company Typotheque filed suit against media consultant RaiseDigital for copyright infringement. Typotheque alleges that RaiseDigital converted one of its typefaces into a webfont for use on Santorum’s site without permission. Neither Santorum, his campaign committee, or the America’s Foundation PAC (which commissioned RaiseDigital to design the site) has been named as a defendant in the suit.
Typotheque is also seeking claims of contributory copyright infringement, federal trademark infringement, trademark dilution, unfair competition, and breach of contract.
Can typefaces be protected by copyright? Like many legal questions, the answer is not a simple yes or no.
Typefaces and Copyright
First, a little background on typefaces themselves.
A typeface, or font, is a designed set of letters, numbers, and other characters — Times New Roman, Helvetica, and Courier, for example. 1While “typeface” and “font” began with distinct meanings, the two terms have largely become interchangeable. See, for example, Derek H. Kiernan-Johnson, Telling Through Type: Typography and Narrative in Legal Briefs, 7 Journal of the Association of Legal Writing Directors 87, 91 (2010). These are contained in digital files for use by computers. Fonts come bundled with operating systems and some software packages; they can also be purchased separately — some developers offer their typefaces for free as well.
For a long time, web designers were hampered in choosing typefaces for a web site. Web browsers render a site using fonts that are local to a user’s computer. So even though a designer could conceivably style a web page with any typeface, if she wanted the site to look consistent on most computers, she would need to choose a typeface common to most computers — a very short list.
That has changed in the last several years, and there are now a number of techniques web designers can use to get custom typefaces that look the same on most computers. One of those techniques, and perhaps the easiest to implement, is the @font-face method in CSS. There are a number of software and online applications that can convert most fonts into the formats the @font-face method needs.
Historically, US copyright protection has not been extended to “typeface as typeface.” 237 C.F.R. 202.1(e). That is, using a typeface in a document, book, or logo is not copyright infringement. The “sole intrinsic function” of a typeface is its utility, and its aesthetic features, though they may be “unique and attractively shaped”, are incapable of “existing independently as a work of art.” 3Eltra v. Ringer, 579 F.2d 294, 297 (4th Cir. 1978). Jacqueline D. Lipton discusses the copyrightability (or noncopyrightability) of typefaces in more detail in her paper To © or Not to ©? Copyright and Innovation in the Digital Typeface Industry — she also looks at whether other IP doctrines, like design patents or trademarks, could be used to protect typefaces.
The wrinkle is that font software — the “digital container” that houses a typeface for use in a computer — likely is protected by copyright. 4See, for example, Adobe Systems v. Southern Software, 45 USPQ 2d 1827 (ND Cali 1998). So while copying or distributing the actual font would not be copyright infringement, copying or distributing the font file would.
That is allegedly what occurred here. The complaint alleges that RaiseDigital, without permission, converted one of Typotheque’s fonts into a webfont format so it could be used through CSS @font-face. That unauthorized derivative work was subsequently reproduced by everyone visiting the site.
Typotheque’s trademark claims are not based on the typeface itself, but on its name. The company has a registered trademark in “FEDRA”, the font at issue here. RaiseDigital didn’t change the name of the file when it converted it — the unauthorized web font still bore the name Fedra. Typotheque alleges that this is a false designation of the source that is likely to cause confusion.
I wouldn’t be surprised to see this lawsuit settled quickly (though some of the remedies Typotheque is seeking might raise some eyebrows). 5It is seeking, among other things, destruction of “all catalogs, packages, boxes, labels, bags, film, goods, computer files, disks, hard drives, CD-Roms, data, DVD’s, videotapes, prints and all other recorded media” containing or using the FEDRA font software; an accounting of “every recipient of” the font software by “name, address, IP address, and telephone number”; actual damages of no less than $2 million or all profits derived from infringing use, plus $2 million statutory damages for trademark infringement under 15 USC § 1117(c), as well as punitive and exemplary damages. No statutory damages for copyright infringement — Typotheque registered its copyright too late to qualify for those. I’m curious how Typotheque came up with the $2 million actual damages estimate; it offers self-hosted webfont licenses for €1,500 (about $2,165). But whatever the outcome, it should serve as a cautionary tale for web developers to pay closer attention to license terms when they use custom fonts.
References
| ↑1 | While “typeface” and “font” began with distinct meanings, the two terms have largely become interchangeable. See, for example, Derek H. Kiernan-Johnson, Telling Through Type: Typography and Narrative in Legal Briefs, 7 Journal of the Association of Legal Writing Directors 87, 91 (2010). |
|---|---|
| ↑2 | 37 C.F.R. 202.1(e). |
| ↑3 | Eltra v. Ringer, 579 F.2d 294, 297 (4th Cir. 1978). |
| ↑4 | See, for example, Adobe Systems v. Southern Software, 45 USPQ 2d 1827 (ND Cali 1998). |
| ↑5 | It is seeking, among other things, destruction of “all catalogs, packages, boxes, labels, bags, film, goods, computer files, disks, hard drives, CD-Roms, data, DVD’s, videotapes, prints and all other recorded media” containing or using the FEDRA font software; an accounting of “every recipient of” the font software by “name, address, IP address, and telephone number”; actual damages of no less than $2 million or all profits derived from infringing use, plus $2 million statutory damages for trademark infringement under 15 USC § 1117(c), as well as punitive and exemplary damages. No statutory damages for copyright infringement — Typotheque registered its copyright too late to qualify for those. I’m curious how Typotheque came up with the $2 million actual damages estimate; it offers self-hosted webfont licenses for €1,500 (about $2,165). |
I’m actually rather surprised to learn that the typeface itself can’t be copyrighted. I’d have thought it’d be subject to some form of copyright protection since there are so many ways to construct letters. Written signatures are quite factually used as legal identifiers because it’s thought that no two people can have the same one and a bit more importantly, it’s very expressive. Times New Roman designates a certain level of newsprint type class while plaintext can be used to designate robotic type speaking. Could take a fair bit of work to create a consistent look to the font as well. I suppose the key factor is that it can be considered a method of writing, in which case it instead needs a patent.
Insofar as copyright claims go, if the typeface can’t be copyrighted as typeface, arguing that the container program is protected might be rather difficult since it’s in another format.
It’s not that I don’t think it wouldn’t qualify as a program and hence lacks protection, insomuch as reverse engineering the font from a screenshot using a bitmap to vector tracer to avoid incorporating any expressive elements of the program’s code might sidestep the issue of whether copyright infringement was committed entirely. [url=http://scholar.google.com/scholar_case?case=7166769136737271634&hl=en&as_sdt=2&as_vis=1&oi=scholarr]I mean I can’t imagine it’d be much harder than reverse engineering Sony PS1 firmware.[/url]