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Letter of the Law

“Any intellectual property yet, honey?” Cartoon from The New Yorker magazine

Having set his mind on becoming a lawyer, journalist and editor Petr Favorov joined the Faculty of Law of Higher School of Economics and dedicated his first term paper to type as an object of intellectual property. In an adaptation of his work for type.today, Peter explains what intellectual property rights type designers may exercise in Russia and abroad, brilliantly walking the fine line between clarifying the intricacies of the law for type designers and covering the industry basics for lawyers who know little about type.

Each new generation of the 20th – early 21st centuries was defined in the public eye by a certain medium of visual, rather than textual, expression. The world has seen generations of cinema, television, comic books, Instagram, and now even Snapchat. Paradoxically, over these same few decades, type as a standard form of written language has not only retained its significance but acquired a new importance, becoming truly irreplaceable. It started replacing handwriting with the advent of the first typewriters and completely defeated it in the era of personal computers. Today, when instant messengers and social networks are all the rage, type has started its triumphal march into the domain of spoken communication.

Nonetheless, most laymen traditionally view typefaces as the prerogative of print professionals, and the legal status of type has largely reflected this attitude, varying from exotic patentable property to being ignored completely. It was not until a few decades ago (in Russia, until a decade ago) that the legal environment entered the period of drastic change triggered by the shifts in the practice of typeface use in the digital era. The purpose of this article is to give a brief overview of the practice (and in part, theory) of typeface as intellectual property in the USA and in Europe – and then move on to the current legal situation in the Russian market. Considering that a combination of type design and law in one text is unorthodox for professionals of either area, I would like to start with a brief introduction to legal matters for designers and to printing for lawyers.

Intellectual property in a nutshell

Part Four of the Civil Code of the Russian Federation deals with various rights to results of intellectual activities. Intellectual rights may vary in nature and scope: on the one hand, there are personal non-property rights of the author, which are unalienable and non-monetary, like the right of authorship (According to Article 1265 of the Civil Code of the Russian Federation, the term “right of authorship” refers to the unalienable and unassignable right of being recognized as the author of a work. It is important to distinguish between similar Russian terms for the right of authorship _(«право авторства») and the copyright («авторские права») as a full scope of intellectual property and non-property rights belonging to the author of a scientific, literary, or artistic work)_; on the other hand, there are exclusive rights to the use of the result of intellectual activities, which have a monetary value and can be assigned to other individuals under a contract of alienation of exclusive rights (if the author wishes to dispose of them entirely) or under a license contract (if the author grants the other party the right to use the result within certain limits). Depending on the nature of intellectual property (that is, on the author’s occupation), the creator of an object is entitled to rights of both types in a certain combination. With regard to typefaces, we are primarily interested in two types of such combinations; further on, I will explain why. First, authors of scientific, literary, or artistic works are entitled to the copyright. In the case of typefaces, such artistic work could (although not necessarily, as we will see later) be both the graphic design of the typeface characters and the font file that reproduces the characters. Second, the author may patent their creation as an industrial design, that is, “the artistic or design solution of a mass-produced or handicraft article which determines the appearance of the article.” The primary differences between copyright and patent rights are their effective term, the possibilities they give to their holder, and how they arise (to secure rights in an industrial design, you normally need to register it, whereas the copyright is automatically vested in the author as soon as the applicable object is created).

cncartoons028900-965 “And while we’re at it, let’s sue the bees for illegal distribution of our intellectual property.” Cartoon from The New Yorker magazine

What a lawyer needs to know about type

Although type in its broad understanding has been in place for the entire history of the written language, in the absence of technical means of its standardization, it is preferable to speak about individual handwriting styles and characteristics. The breakthrough happened early in the second millennium AD, when movable type was invented and first applied in Korea. In the early 1450s, Johannes Gutenberg in Germany arrived at a similar solution, creating a unified system of typesetting and printing based on metallic matrices and the printing press he had invented from scratch. His creation gave birth to the modern concept of a typeface as a specific set of characteristics consistent throughout the entire alphabet.

From the legal perspective, it is crucial to distinguish between the material carrier of a typeface and its graphic image. The former is created by a technician (a craftsman, an industrial worker, or a software developer), whereas the latter is created by an artist (today, a type designer). Nevertheless, in certain historical periods, the same person could create both aspects of a typeface, and today is no different.

Over the first 450 years of book printing, typefaces existed in the physical form of type cases that contained lead “sorts” (letters and ligatures) in various sizes. It was not until the late 19th century that the situation changed drastically with the advent of the Monotype and Linotype line-casting machines. From that point on, a typeface existed in the form of matrices of each character in each size that were hidden inside the machine and enabled instant casting of any element of the text.

All the aforesaid methods – Gutenberg’s method, Monotype, and Linotype – belonged to the so-called letterpress technique, which is essentially relief printing with the use of a printing press. In 1905, a number of U.S. typographies began using planographic, or offset, presses. In such a press, the printing plate is a photograph created by projecting of type and images on a surface covered with light-sensitive chemicals. The material medium of a typeface changed accordingly: it was now a rectangular sheet of celluloid film with alphabetic characters on it. And finally, in the era of computer technologies, the material medium of a typeface lost any tangibility and turned into a font file.

While the last five centuries have seen a steady, irreversible evolution of the material media of typefaces, their graphic design has been changing in a considerably less linear fashion, sometimes going in circles. The first typefaces of the 15th–16th centuries were inspired by the calligraphy of medieval manuscripts and the Ancient Roman tradition of monumental inscriptions; not much has changed ever since. On the contrary, modern type designers normally base their creations on typefaces used 100, 200, or even 400 years ago. Moreover, nearly all fonts look more or less the same for an untrained eye. Few people can identify the specific typeface used for this or that inscription; at the same time, absolutely anyone can state the striking difference between several versions of the same text rendered in different fonts.

In this respect, it makes sense to give a general outline of creative solutions that a type designer may come up with and the criteria they use in their work. The anatomy of a typeface includes such characteristics as its capital height and x-height, the length of descenders and ascenders, the width and length of vertical, angled, and horizontal strokes, the shape of counters and bowls, the shape of serifs (if any), and so on. A type designer selects these characteristics to achieve a certain artistic effect that depends on the intended use of the typeface. Text faces are used for text pages in books and magazines. Their design is determined by considerations of legibility, although the aesthetic value is important as well. Display typefaces are used in headlines and short texts; they need to be legible and eye-catching at the same time, but not to the point of distracting the reader from the text face. Decorative faces, which are traditionally used in advertising, should attract attention and convey an artistic message first of all.

The advent of the digital era has not done much to change the graphic aspect of widely-used typeface characters but has revolutionised the status of typefaces worldwide. The quantity of typefaces has grown exponentially: while the planet used around 3600 typefaces in 1974, this number soared to 44,000 in 1990 and kept growing: in 2002, we had 100,000, and by 2013, about a quarter million typefaces had been created (Fry, B. Why typefaces proliferate without copyright protection). The scope of their use has expanded as well: in addition to traditional books, newspapers, and print media advertising, we now have websites, mobile and desktop applications, operating systems, videos, and so on. Private individuals are actively, regularly using fonts in their daily life: in every electronic document or blog, in every browser window, in each instant messenger line… Last but not least, market models available to type designers have done a one-eighty as well.

In Gutenberg’s time – in fact, for a long time after that – a typeface with all of its hefty type cases was inseparable from the printing works that used it. Manufacturers of Linotype and Monotype machines integrated a limited range of typefaces created by in-house designers in their equipment. Even after the invention of phototypesetting, designers mostly developed typefaces only for major publishers. Now that a typeface is just a small computer file, the situation has changed. In her article (Lipton, J. D. To © or not to ©? Copyright and innovation in the digital typeface industry), Jacqueline Lipton lists the new trends that emerged in the type design market in the digital era:

  1. А plethora of new type designers entered the market, making the industry global in terms of workforce. Today, anyone who has mastered specialized software can be a type designer, and some of the software products are free.

  2. Modern designers can easily distribute their creations, entering the market on their own – which results in a convergence of the author’s and the distributor’s roles.

  3. Anonymity is trending as well: whereas all market players used to know one another and treasured their reputation, now it is becoming largely irrelevant.

  4. The near-infinite variety of typefaces leads to a very high probability that any typeface will resemble some other.

  5. The range of typeface consumers has expanded too: apart from major publishers, it includes smaller printing companies, advertising agencies, standalone media, and private individuals all over the globe.

In addition, private individuals interact with typefaces on a daily basis in applications like Microsoft Word and online services like Google Docs, which include dozens, even hundreds of built-in typefaces. On the one hand, it is enough to satisfy even the extensive needs of the most fastidious modern consumer, but on the other hand, it gives an erroneous impression that any typeface is a non-commercial product (Evans, E. N. Fonts, typefaces, and IP protection: Getting to just right).

The existence of typefaces in a digital society has another meaningful aspect to it – the structure of a modern font file. Whereas early computer fonts were similar to a film negative image for phototypesetting and contained only bitmap images of each character, modern font files (TrueType, OpenType) have a completely different structure and resemble standalone applications to some extent. Nevertheless, these “applications,” including the components that contain hinting and kerning rules (Font hinting is the use of specific instructions to adjust the outline of characters on electronic screens, while kerning is the process of adjusting the spacing between particular characters to avoid unnecessary gaps), are hardly ever results of the designer’s creative effort; normally, they are generated automatically by specialized software. On the other hand, the modern OpenType format offers so many customization capabilities that it appears reasonable to view a font file as an original application created by the designer.

In spite of type design being a global industry, legal protection of typefaces still varies from country to country in scope and nature. This situation has long been deemed undesirable: as early as on June 12, 1973, the Agreement for the Protection of Typefaces and their International Deposit was opened for signature in Vienna. The Agreement obliged its member countries either to introduce specialized typeface registration systems or to apply relevant systems stipulated by the national patent law. Alternatively, they could ensure the protection of typefaces in the national copyright law. However, the Vienna Agreement will not come into effect until it has been ratified by a minimum of five countries; in the meantime, it has 11 signatories, but has only been ratified by France (1976) and Germany (1981) (Vienna agreement for the protection of typefaces and their international deposit). Therefore, it is barely possible to address the legal protection of typefaces in general without being country-specific. Besides, we need to keep in mind that public debate about the adequate degree of typeface protection, which is ongoing in a number of countries, often involves arguments that exaggerate or understate legal protection measures offered by other countries so that the argument would work better in the paradigm of its author’s opinion.

Germany

In West Germany, the type face was recognized as an object of copyright by the judgment of the Federal Supreme Court of May 30, 1958 (Az. I ZR 21/57, BGHZ 27, 351). However, it reads as follows:

A typeface intended for general use (Author’s note: i.e. text face) may be subject to the same level of protection as a work of art. However, for a typeface to be recognized as a work of art, it needs more than a set of aesthetically valuable traits that are visible only to a highly-qualified professional in the field; what matters is the aesthetic impression the typeface makes on an aesthetically-aware non-professional who compares it to previously known typefaces.

It is on these grounds that the Supreme Court of Germany many a time refused to recognize typefaces as objects of copyright on the grounds that they were not works of graphic art and consequently could not be protected by exclusive rights for a period of 70 years from the author’s death.

When ratifying the Vienna Agreement, the Bundestag passed a special Character Act that addressed the protection of typographic characters (Schriftzeichengesetz vom 6. Juli 1981). According to the Act, once a typeface is registered as a design, it is subject to protection as an industrial design for 10 years, with the possibility of prolonging this term for another 15. The only limitation imposed by the Act was that the protection of patent holder’s rights could not restrict the distribution of texts. However, the new Act on the Reform of Patent Rights on Industrial Designs (Gesetz zur Reform des Geschmacksmusterrechts) seemingly annulled this provision in 2004. Importantly, when a typeface is registered, the authorities do not assess its “novelty or originality” (the prerequisites for protection); in the event of a legal dispute, the typeface is assessed by a court of law.

Whether a font file (as opposed to the visual aspect of a typeface) is copyrightable under the German law depends on whether the file in question is an application – which is an ambiguous criterion as well. In 2000, the District Court of Cologne once again ruled that a typeface was not a work of fine or applied arts but recognized the status of a font file as copyrightable application software (the requirements of the German law to the creative aspect of software development are more lenient than those set forth to works of art). However, when explaining their judgment, the court pointed out that the author of the font file configured hinting rules manually – which is rare in today’s type design. Since then, there have been no other legal judgments in this area. Lastly, another way of protecting your typeface legally is to register it as a trademark: thus, Helvetica is a registered trademark of Linotype, a German company.

United Kingdom

In the UK, copyrighting of type design dates back to a court ruling of 1916. However, the judgment limited the scope of protection to the full display of the typeface – that is, all the characters in a specific order as a single image – and therefore was devoid of any practical value for copyright holders (Stephenson, Blake and Co. v. Grant, Legros & Co., 115 L.T.R. 666, 61 Sol. J. 55 (1916)).

At present, typeface protection is regulated by the Copyright, Designs, and Patents Act 1988 (CDPA). According to the Act, you can copyright both a typeface as a design and a font file (Legal issues relating to fonts in England and Wales{:target=”_blank”}). In the first case, a typeface is copyrightable as a work of art regardless of its artistic value, on the grounds of its originality and its author’s creative effort. In the second case, the procedure of copyrighting is similar to that of a literary work, the definition of which has been extended to include computer programs. Such rights are normally effective for 70 years from the author’s demise. In 2001, the Chancery Division of the High Court of Justice in London ruled for the plaintiff in the case of Linotype versus GreenStreet Technologies. Linotype had based their claim on the CDPA, accusing the defendant of selling font packages that contained typeface families developed by Linotype (Linotype gains High Court judgment in UK font copyright case).

However, Sections 54 and 55 of the CDPA are dedicated to restrictions imposed on the exercise of copyright in a typeface as such. Section 54 states that it is not an infringement of copyright in a typeface “to use the typeface in the ordinary course of typing, composing text, typesetting or printing, or to possess an article for the purpose of such use.” In the meantime, manufacturing, import, or marketing of such articles is regarded as copyright infringement. Section 55 limits the effective term of copyright in a typeface as compared to copyright in an artistic work (which lasts for 70 years) if the copyright owner has marketed or licensed “articles specifically designed or adapted for producing material in that typeface.” In this event, 25 years after such articles are marketed, a typeface may be freely copied by using the articles in question or further such articles. Apparently, a font file may be regarded as an “article” as well, but British courts have not yet tried such cases.

The CPDA also provides for rights to an industrial design, with or without registration. However, two-dimensional designs, including typefaces, require registration as a mandatory condition for such right to be exercised. Rights to an industrial design are effective either for a term of 10 years from the moment of sale of a material produced with the use of the design or for a term of 15 years from the moment of its creation, depending on which term expires earlier. The holder of design rights to a typeface may prohibit the use of said typeface by third parties but cannot prohibit the creation of articles that may be used for making copies of the typeface, such as type sorts, phototypesetting matrices, or font files (unless, of course, they are protected by copyright as computer programs).

European Union

The European Council Regulation “On Community Designs” of December 12, 2001, explicitly lists graphic symbols and typographic faces among the products it protects but makes an equally explicit exception for “computer programs” (including font files, presumably). The regulation provides for two ways of protecting rights to an industrial design:

  • Protection of an unregistered design, effective from the moment when the design is made publicly accessible in the EU for a period of three years; and

  • Protection of a registered design, effective from the moment of its registration at the Office for Harmonization in the Internal Market (OHIM) for a period of five years with the possibility of renewal for one or more period of five years each, up to a total term of 25 years.

The right to a registered industrial design also includes restricted use of the substantial characteristics of such design in works made by third parties. Herein lies the principal difference from the protection of an unregistered industrial design, which does not cover the cases when certain features of a design are used by a third-party developer who is not aware of the design that has been published.

For an industrial design to be protected under the Regulation, it has to meet the requirements of novelty and individual character. During a high-profile litigation in 2006, the OHIM annulled the registration of the Segoe UI typeface family as an industrial design by Microsoft (in particular, a font from that family is used in the company’s logo), sustaining the claim of a major type design company, Linotype, which had noticed a similarity between Segoe UI and its own Frutiger fonts.

United States of America

Type design as such is not copyrightable in the USA. This conclusion can be drawn primarily from case law – in particular, a 1978 case in which the Eltra company sought to register its rights to a typeface at the Copyright Office, and the court ruled for the officials, who had refused to do so on the grounds of a typeface not being a “work of art.” Apart from that, the 1976 Copyright Act provides for the protection of rights to “two-dimensional works of fine, graphic, and applied art” but introduces the following limitation in Section 101:

Such works shall include works of artistic craftsmanship insofar as their form but not their mechanical or utilitarian aspects are concerned; the design of a useful article, as defined in this section, shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.

The language implies that typefaces do not meet this requirement; in addition, the 1976 House Report (which is the source of information about the legislators’ intentions for the judiciary system) explicitly confirms such an interpretation:

The Committee has considered, but chosen to defer, the possibility of protecting the design of typefaces. The Committee does not regard the design of typeface, as thus defined, to be a copyrightable “pictorial, graphic, or sculptural work”. (H.R. Reg. No. 1476, 94th Cong., 2nd Sess 5 (1976))

A similar provision is made in the U.S. Code of Federal Regulations, an annually published codification of general and permanent rules and regulations passed by federal agencies. The list of “material not subject to copyright” specifically features “typeface as typeface.”

Nevertheless, in 1992, the Copyright Office passed a special regulation on the copyright protection of font files as computer programs:

The creation of scalable font output programs… typically involves many decisions in drafting the instructions that drive the printer. The expression of these decisions is neither limited by the unprotected shape of the letters nor functionally mandated. This expression, assuming it meets the usual standard of authorship, is thus registrable as a computer program. (Registrability of computer programs that generate typefaces. 57 Fed. Reg. 6201 (Feb. 21, 1992), reproduced in U.S. Copyright Office announcement ML-443)

The instruction was partly the grounds for the seminal legal judgment of 1998 in the case of Adobe Systems, Inc., versus Southern Software, Inc. (Adobe Sys. v. Southern Software, Inc., 1998 U.S. Dist. LEXIS 1941). The court ruled that Adobe owned the copyright in the computer programs that generated its typefaces. Southern Software had been selling the programs in question in a slightly modified state (with the coordinates of each symbol’s anchor point tweaked insignificantly), which was deemed a copyright infringement. Similar cases are galore: in 2011, for instance, Dutch type foundry Typotheque effectively forced the headquarters of presidential candidate Rick Santorum to take down his campaign site on the grounds of illegitimate use of Fedra family font files. Initially, the foundry estimated its losses as $2 million, but the final size of the compensation it received (if any) is not disclosed.

And yet, copyright in font files does nothing to protect the design of a typeface. For instance, anyone who has obtained a font file can print the characters one by one, scan the images and almost automatically process the scans into a new font file in a different type design tool. The new file will be a completely different program, unprotected by copyright and enabling the user to reproduce the typeface easily and absolutely legitimately.

Traditionally, another means of typeface protection in the U.S. have been design patents. Section 171 of the Patent Act provides for patentability of “any new, original, and ornamental design for an article of manufacture.” Metal matrices, as well as celluloid matrices for phototypesetting that came later, qualified as such articles. In fact, the very first such patent to be granted in the USA, which was issued in 1843, protected a new typeface that existed as a set of metal sorts. Whether a font file may be “an article of manufacture” had been unclear up to 1996, when the Patent and Trademark Office clarified it in a special set of guidelines (Guidelines for examination of design patent applications for computer-generated icons. 61 Fed. Reg. 11380, 11382 (Mar. 20, 1996)). According to those guidelines, articles used for typesetting have always been patentable as industrial designs; therefore, modern methods of typesetting, including computer-generation, may also be patented in a similar fashion. Importantly, the creation of a very similar typeface independently from the patent holder is regarded as a breach of the patent rights, unlike copyright protection.

However, this legal protection of typeface as intellectual property has its drawbacks as well. First, obtaining such a patent is so costly that only major foundries can afford it. Second, the term of legal protection in this case does not exceed 14 years (as opposed to 70 years from the author’s death or 95 years from the first publication in the case of copyright protection). Last, its efficacy is dubious as well. Whereas a patent on an article of manufacture automatically ruled out the possibility of legitimate reproduction of the typeface’s characters in the case of a metal or celluloid matrix, the protection of font files is not that explicit because you can create the same font with the use of completely different type design programs. There have been no relevant legal judgments yet.

And finally, an American type designer can protect his or her intellectual property by registering the typeface as a trademark. Naturally, this method does not prevent the design of the typeface from being copied and sold under a different name.

Apart from that, type designers resort to end user license agreements (EULAs), which the customer has to accept by hitting the “Agree” button before downloading the font file. Such agreements may vary dramatically in scope and contents, from authorizing free distribution and open access to source code to imposing detailed restrictions on every possible application of the typeface (Web, applications, print, videos, and so on). This method of intellectual property protection is not perfect either: thus, the enforcement of such agreements in the globalized type design market is complicated, and it is impossible to make them binding for third parties. Nevertheless, if an EULA has been concluded, those who breach it are often sued and ruled against in U. S. courts – including cases of typeface use infringement. Thus, the NBC network paid a substantial amount of money to the Font Bureau foundry for buying a single-use license for a font file and using the typeface on a number of its channels and websites.

cncartoons021762-965 “We would like to request a change of venue to an entirely different legal system.” Cartoon from The New Yorker magazine

Debate about the future of legal protection of typefaces in the USA

In his article, Blake Fry assesses the distribution of typeface sales between the USA and the rest of the world as 50 to 50 percent, so the legal intricacies of intellectual rights to typefaces in America present an immense interest for the industry in general. This is why we should pay close attention to the debate in the American legal literature of the recent years about whether the current protection of intellectual rights to typefaces in the USA is adequate, inadequate, or excessive, cataloging the arguments authors use to justify their opinion.

The aforementioned article by Blake Fry (Fry, B. Why typefaces proliferate without copyright protection), who presumes that the distinctive characteristics of the type design industry ensure its successful development even in the absence of intellectual property protection, could be a good starting point. The author is convinced that the clause of the U. S. Constitution on intellectual property protection is inapplicable in this case because its purpose is “to promote the progress of science and useful arts”. According to Blake, typefaces are different from all other kinds of expressive work that are not protected by copyright in the USA (from fashion to magic tricks) in the way that they both serve functional needs and currently exist in the form of non-rivalrous and infinitely reproducible digital files. This combination creates a unique environment in which the existing and the future variety of typefaces can be ensured without copyright protection. Blake suggests a number of mechanisms to achieve this:

  • Incessant development of technologies, which sets out more and more new requirements to typefaces and presents more and more new opportunities to type designers;

  • A constant change of artistic trends and fashions, which requires a steady influx of new fonts as well; and

  • Relatively rigid regulation of a small pool of type designers through intra-industry norms and requirements.

Consequently, argues Fry, the current situation in the USA, when such methods of intellectual property protection as copyrights and patents are barely applicable to typefaces, is not an issue. He goes as far as to declare that even the existing mechanisms of protection, like copyright in font files, are superfluous.

Professor Jacqueline Lipton dedicates her article (Lipton, J. D. “To © or not to ©? Copyright and innovation in the digital typeface industry) to the question whether the current American copyright law enables designers to protect at least some of the typefaces as intellectual property without copyrighting the letter as a building block of the written language. She starts with an analysis of the 1976 Copyright Act, specifically its provision on the physical and conceptual separability of a typeface’s artistic elements from its functional aspects. Further on, she applies the merger doctrine, which prohibits the merger of a copyrightable expression of an idea with the idea itself (in our case, typeface design elements and the shapes of letters as such). Eventually, Lipton concludes that even if typefaces may be copyrightable, they “will only attract thin copyright protection,” like computer software. Moreover, such protection will most likely cover only decorative typefaces, which have an emphasis on originality, whereas text faces, the ones that require maximum expertise on the part of a type designer, will remain unprotected because the primary criterion of their quality is their utilitarian features, or functionality.

Emily Evans (Evans, E. N. Fonts, typefaces, and IP protection: Getting to just right) takes the current U.S. copyright legislation as a starting premise as well; however, she insists that typeface protection should be based on their patentability as industrial designs instead of copyright. Generally agreeing with Lipton’s points regarding the inapplicability of copyright to type design, she absolutely rejects the opinion that such a patent, when obtained on a font file as a means of typeface reproduction, will only protect the file itself, not the typeface in general. (However, she does not justify her interpretation in any way.) Besides, the American patent law protects the aesthetic aspect of an industrial design, not its functionality. According to Evans, this division is more fitted to the needs of type design than the copyright law, which requires separability of the artistic features of an expression from its functional considerations. Overall, Evan is convinced that patentability of typefaces as industrial designs, along with copyright protection of font files as programs, will ensure comprehensive intellectual property protection for type designers – which is, in her view, unequivocally beneficial for the society at large.

Trevis Manfredi (Manfredi, T. L. Sans protection: Typeface design and copyright in the twenty-first century. University of San Francisco Law Review, Winter 2011, 45(3), 841) offers the most balanced analysis of the nature of desirable changes in the system of intellectual rights protection in type design. In his article, he considers three models:

  • The economic stimulus theory, according to which, copyright stimulates creative activities by enabling author to monetize the result of their efforts;

  • Neoclassical theory of economic efficiency, which reflects the search for a balance between economic stimulation and free access to the intellectual heritage accumulated by the humanity; and

  • The imperative of maximizing the volume of public domain, which presumes that the more goods are publicly accessible, the better for the society.

Manfredi compares the results of applying these models to typefaces in the industrial and digital eras and analyzes all the legal tools available in the U. S. legislation in the context of the conclusions he has drawn, specifically noting that patentability of typefaces as industrial designs may have a negative impact on the creative potential of the industry in view of the excessive scope of such protection. Eventually, he concludes that none of the existing means of IP protection applicable to typefaces satisfy the needs and interests of the society and suggests introducing typeface as a separate object into the 1976 Copyright Act, imposing a number of restrictions on the protection of one’s rights to it – similarly to how the Congress dealt with works of architecture in 1990 (Architectural Works Copyright Protection Act, Pub. L. No. 101-650, 104 Stat. 5133 (1990)). He believes that such restrictions would remove the requirement of separability between artistic and utilitarian properties of a typeface, along with satisfying the need of the society to have free access to all the glyphs of the alphabet in any shape and form.

Manfredi suggests the following restrictions:

  • The amendments should only apply to typefaces created after the Act was amended. Thus the huge mass of existing typefaces will serve as a core of rich public legacy in this area.

  • If a user purchases a licensed copy of a font file, they are exonerated from typeface copyright infringement charges, except in cases of transformation of the file into a different file that reproduces the same typeface or into a different means of its reproduction.

  • Copying of any expressive works that use a protected typeface, such as posters, books, web pages, and so on, is considered to be copyright infringement only if done with the purpose of creation of a new digital of physical means of reproduction of this typeface.

Intellectual rights to typefaces in modern Russia

Like in other countries, Russian statutory and case law provides for several types of intellectual rights to typefaces and font files. We will discuss several major types, focusing on the aspects that have a special significance for type design as an industry and typeface as a specific object of intellectual property.

Patent to an industrial design

According to Article 1352 of the Civil Code of the Russian Federation, a patent to an industrial design (патент на промышленный образец) protects the result of the author’s intellectual efforts in the form of an artistic and design solution of a a mass-produced or handicraft article. In this respect, Valery Dzhermakyan () remarks that a typeface is only viewed as an industrial design if it is an artistic and design solution of a a mass-produced or handicraft article that is definitive to the visual aspect of said article. Consequently, the main requirement to a typeface as an industrial design is whether it matches the concept of an “article.” A typeface is unequivocally an article if it is a set of metal sorts in a variety of sizes or a celluloid negative image for phototypesetting. Exclusive rights to a patented article cover in this case only the article itself as the carrier of the artistic and design solution but not the typeface, which is viewed as a graphic form of symbols.

Considering that the modern practice of type design and printing deals with typefaces as digital files, not factory-made articles, protection of one’s intellectual rights to them with patents to industrial designs does not seem efficient under the current Russian legislation (as stated above, the American patent law has, by contrast, recognized font files as articles, thus making them patentable as industrial designs). Nevertheless, such patents are still sometimes issued: in 2013, Art. Lebedev Studio obtained Patent 86428 to their typeface Artemius Text Regular. Admittedly, fear that your competitors will start manufacturing metal sorts at this day and age is a weird consideration, which brings us to an apparent conclusion that the company’s lawyers are not entirely certain that the patent cannot prevent the creation of another font file with the images of the typeface’s characters. As of today, there have been no legal judgments on the matter. Importantly, if Lebedev’s lawyers are right, an industrial design patent is significantly more advantageous than copyright because it protects its holder’s exclusive rights from infringement on the part of an individual who has achieved similar results in his or her independent creative activity. On the other hand, such protection will only be effective for a maximum period of 25 years, as opposed to 70 years from the author’s death in the case of copyright protection. In addition, you need to obtain a patent to exercise such protection.

Copyright in a font file

The question of whether a font file is a computer program has not been brought up in Russian courts either. However, Article 1261 of the Civil Code of the Russian Federation gives a definition to a “computer program,” which suits perfectly, extending the concept of a program beyond a set of commands to include data intended in particular for generating visual representations on computers and other devices. Copyrights in such programs are protected in the same way as copyrights in literary works.

Copyrights in font files (авторские права на шрифтовой файл) form the core of legal relations that a common user enters with regard to typefaces, knowingly or unknowingly. Font files are distributed as part of operating systems, text editors, web pages, mobile applications, and even documents of certain formats (e.g. PDF). Perception of such font files as public goods may result in a breach of the existing legislation. The website of Yuryev Law Office features an article “Typeface as an Object of Copyright”, one of the few Russian-language sources on the subject, which gives the following examples:

It is unequivocally illegal to use the Verdana typeface, which is copyrighted by Microsoft, for viewing documents in the Consultant Plus application if this application is launched in an operating system different from Windows, for instance, in Linux with the use of emulators.

Russian governmental agencies faced a similar predicament when they decided to switch to a Linux-based domestic operating system for security reasons. It suddenly turned out that Times New Roman, an omnipresent typeface prescribed by multiple regulations for official documents, is intellectual property of Monotype Corporation, and its use outside of the Windows OS requires a license that covers only one style (bold, italic, or regular) and costs about $100 per computer. As a result, NPO RusBITech had to cooperate with ParaType in order to develop alternatives to Arial and Times New Roman – publicly accessible typefaces PT Astra Sans and PT Astra Serif.

Exclusive rights (исключительные права) as the core component of copyright in a font file are the primary subject of a license contract between the author or the vendor of a typeface and its end user. Article 1233 of the Civil Code of the Russian Federation defines the subject of a license contract as alienation of the result of one’s intellectual activity to another person on the conditions set out therein. Like their foreign counterparts, Russian design studios normally use three types of such contracts:

  • A desktop license authorizes the user to install and use a font file on a limited number of devices and to reproduce the characters of the typeface for commercial and non-commercial purposes on any carriers (on electronic displays, paper, fabric, and so on) without limitations on the number of articles or copies. This type of licensing suits the needs of printing works, media, advertising agencies, and private individuals who want to use the typeface in texts and captions.

  • A web license authorizes the licensee to use the font file in the code of a certain web-site, so that the text messages on this website are displayed in this typeface. Such a license normally limits the number of website views.

  • And finally, application license authorizes the licensee to integrate the font file in their application so as to display the text elements of its interface in this typeface. In this instance, the license may limit the number of application downloads.

I have not been able to find any legal judgment in Russia pertaining to a breach of a font file license agreement. The only legal precedent of the sort – one that involved a Russian company and attracted attention of the professional community – was the dispute between type designer Peter Biľak of Typotheque (the Netherlands) and Sberbank of Russia about the use of Biľak’s typeface Fedra in the bank’s advertising campaign in 2010. Fitch and McCann Erickson, the advertising agencies responsible for the campaign, had bought a total of four desktop licenses, but the bank itself had not bought any, which, according to the foundry’s experts, was not enough for a nationwide campaign. Eventually, the bank purchased an additional 75 desktop licenses for the font file, and the dispute was resolved without a trial.

Interestingly, in the only Russian lawsuit that could have dealt with copyright infringement by way of illegal distribution of the font file, the plaintiff opted for defending his copyright in the typeface itself. In Case A40-73917/15, designer Nikolai Sirotkin filed a 350,000-ruble indemnity claim to the Moscow City Commercial Court against OOO Oridis for infringement of his exclusive copyright in the Mini typeface, which the defendant had illegally used at the xfont.ru website without the copyright holder’s consent. Although xfont.ru is a library of font files available for free download, the plaintiff chose to protest the display of sample Mini characters on one of the pages instead of the unlicensed free distribution of his font file. The designer must have opted for this type of claim because it is easier to present evidence of infringement, but it brings us to the most important intellectual right to a typeface in the Russian legal system – the copyright protection of a typeface as such.

cncartoons029954-965 “Intelligent design. How can I monetize this?” Cartoon from The New Yorker magazine

Copyright protection of typefaces

The Civil Code of the Russian Federation does not mention typeface as an object of copyright explicitly, but it matches the broad definition of “scientific, literary and artistic works, irrespective of the merit and significance of the work or the method whereby it is expressed,” which is stated in Article 1259. According to this article, a typeface qualifies as an object of copyright because it is “expressed in an objective form” (which is a font file today) and does not belong to such categories as “ ideas, concepts, principles, methods, processes, systems, manners or the resolution of technical, organizational or other problems, inventions, facts, programming languages, or geologic information about subsoil assets.”

More specifically, a typeface can be classified as a graphic or design work, as per Item 1 of Art. 1259. In her article “Typeface as Object of Copyright in Russia and USA”, Anastasia Kiseleva ( Kiseleva, A. (2015). Shrift kak ob’yekt avtorskogo prava v Rossii i Se-She-A [Typeface as object of copyright in Russia and the USA]. Intellektualnaya Sobstvennost’: Avtorskoye Pravo i Smezhnye Prava [Intellectual Property: Copyright and Related Rights], (5), 25-32.), lawyer of Mail.Ru Group, rightfully concludes: “Thus, the Russian law does not impose any restrictions on the copyright protection of typefaces.”

Nevertheless, the tradition of treating typeface as an object of copyright is very recent in Russia. Understandably, when the economy was socialistic and typefaces existed primarily as components of factory-made typographic equipment, issues of copyrights or their protection were simply irrelevant. Russia’s first legal dispute pertaining to typeface copyright infringement is now nothing but a standing joke in the professional community; however, it deserves an honorable mention. Larger captions on banknotes issued by the Bank of Russia in 1998 (like “100 Rubles”) were rendered in AdverGothic, a Cyrillic font created in 1989 by Vladimir Yefimov on the basis of Robert Wiebking’s Advertisers Gothic (1917) for SP ParaGraph, the predecessor of ParaType. Goznak, Russia’s money-printing enterprise, never requested an authorization to use the typeface and never received it either, so the management of SP ParaGraph often recalled this incident as an example of copyright infringement in the country. The dispute must have been settled eventually because most references to it were removed from the public space.

The earliest and the most reliable document to date that confirms the status of a typeface as an object of copyright in Russia is Resolution 9457/13 of the Presidium of the Supreme Court of Arbitration of the Russian Federation of November 5, 2013. When trying a case that was not connected to typefaces directly, the Presidium ruled that ParaType held the copyright in the Montblanc typeface.

Another informative precedent was the first-instance, appeals, and cassation proceedings of Case А40-20099/2014. The plaintiff, ParaType, sued the Izdatelstvo Yauza publishing house to prohibit further print and distribution of Anatoly Tereshchenko’s book “Chistilishche SMERSHa” (“The Purgatory of SMERSH”) because its cover featured Rodchenko typeface, developed by Tagir Safayev of ParaType. The Intellectual Property Rights Court ruled as follows:

In April 2002, Tagir Safayev, acting in the line of his duty under the above-mentioned employment contract, submitted to his employer, the plaintiff, the typeface that he had created under the name “Rodchenko.” The typeface in question is a set of all glyphs of the Latin and Cyrillic alphabets, which share common design features across a range of styles and are suitable for the presentation of texts. The typeface was created through individual intellectual effort of the author, who sought to express his aesthetic notion of the visual aspect of glyphs and other characters; therefore, it is an original creative work by Tagir Safayev, specifically, a graphic work. Thus, the above-mentioned typeface is an object protected by copyright under Art. 6 and 7 of Law of the Russian Federation “On Copyright and Related Rights” and Art. 1259 of the Civil Code of the Russian Federation.

Failing to defend the position that a typeface is not copyrightable, the defendant challenged the appeal judgment on different grounds at the cassation proceedings: “The defendant believes that the use of separate glyphs on a book cover cannot be regarded as an infringement of exclusive rights to the work (the typeface) as a whole.” The Intellectual Property Rights Court ruled otherwise: “The defendant has failed to consider that the reproduction of the work or a part thereof in any material form shall be deemed independent use of the work under Art. 1270 Item 2 Cl. 1 of the Civil Code of the Russian Federation and therefore may be regarded as infringement of the author’s exclusive right to the work.”

The judgment of the court also contains a reference, albeit indirect, to copyright in a font file: “In addition, the defendant does not clarify how the elements of a typeface, exclusive right to which belongs to the plaintiff, were reproduced on the cover and front page of the book if the typeface had not been copied by the defendant or the third party commissioned for the job to the hard drive of a computer.” Finally, the cassation court emphasized the creative nature of type design: “The applicant’s claim that separate elements of a typeface do not reflect the creative nature of its author’s work in view of their simplicity and indiscernibility from characters of any other typeface is ambiguous because, as the court believes, it was the creative nature of the typeface that determined the defendant’s choice of the typeface for the design of the book in question.”

One of the most successful Russian type designers in terms of protecting intellectual rights to typefaces in court (or at least the one who does it the most frequently) is Nikolai Sirotkin, whom we have already mentioned, with lawyer Vasily Rozhdestvin representing his interests. Since 2014, Sirotkin has won or has been successfully litigating a number of cases:

  • against cheese manufacturer Santorg for the use of his Taumfel font on a pack of mozzarella;

  • against Kuban Tea, a tea distributing company, for the use of the same font in packaging design;

  • against Auchan, Atak, and Perekrestok chain stores for distribution of offending goods;

  • against owners of the ukazka.ru website for the distribution of books by Olga Karpovich – “Mladshy” (“The Younger One”), “Potseluy Oseni” (“Autumn’s Kiss”), “Idealnye Lyubovniki” (“Perfect Lovers”), and “Moya Chuzhaya Zhena” (“My Someone Else’s Wife”) – that use Mini script type on their covers; and

  • against the EKSMO publishing house, which had released the books.

In December 2017, litigator Rozhdestvin announced in Facebook that the Krasnodar Territory Commercial Court had fully sustained their claim against Kuban Tea. The first instance obliged the tea distributor to pay a compensation of 1.5 million rubles, withdraw and destroy the counterfeit goods produced with the use of the typeface, and publish the decision in the Kommersant newspaper. The defendant lodged an appeal.

Normally, the proof of the designer’s copyright in a typeface in such litigations are notarized copies of web pages where Sirotkin had displayed the demo version of his font file, while the identity of the characters used by the defendant to characters of the plaintiff’s typeface is proved either by an expert or by simple overlay of images. In one of the judgments, the court even stated: “The use of the Mini typeface in the books is apparent and self-evident. It does not take specific expertise to establish this fact”.

However, all the aforesaid cases, along with a few more, concerned decorative typefaces – ones created with the objective of standing out against other typefaces and therefore possessing vivid distinctive features. The only Russian legal action to deal with the infringement of copyright in text faces (ones with a focus on legibility) has been the recent (2016–2017) Case А40-14089/201, ParaType vs. RESO Garantiya, an insurance company. The foundry demanded that the defendant cease unlicensed use of Helios and FreeSet faces in their marketing materials (which had been going on for many years) and pay a compensation for the copyright infringement. The plaintiff’s exclusive rights to the typefaces had been impeccably documented – with an exclusive license agreement in the first instance and an employment contract with designer Tagir Safayev in the second. As evidence of the illegal use of typefaces, the plaintiff presented a variety of RESO Garantiya’s booklets issued in the period from 2003 and printouts from the website of the insurance company. It remains unclear, however, what methods were used to establish the identity of fonts used in booklets to ParaType’s fonts. The first-instance court ruled:

As appears from the case file, alphabetic glyphs and characters printed on the defendant’s booklets, leaflets, and website are rendered in FreeSet and Helios typefaces because they share common design features that had been developed by the author of the typefaces.

As of now, the litigation has made two full circles (because parties and courts were unable to settle on the method of loss assessment) and the Intellectual Property Rights Court as the cassation instance has awarded ParaType 480,000 rubles at the second round of proceedings.

In the meantime, according to remarks posted on ParaType’s own website, Helios is a Helvetica-based typeface, whereas FreeSet was developed on the basis of Frutiger drafts. That is, both typefaces belong to vast and well-known families of modern sans serifs. Recognizing infringement of copyright in a typeface as such, the Russian court went considerably further than its overseas counterparts would have likely gone. Even if we disregard the stance of the American law, which rejects such rights completely, a German court would barely have perceived the “aesthetic impression the typeface makes on an aesthetically-aware non-professional who compares it to previously known typefaces” in this case, while a British court would have regarded all actions of the defendant as ordinary use of a typeface “in the course of printing” or possession of “an article for the purpose of such use.”

Conclusion

Before I started exploring this field, I had presumed I was headed for a fairly decrepit area of civil law, barely researched either in Russia or abroad in view of its insignificance. At the end of the day, however, I was astounded both at the volume of available information on the subject (although not the number of publications, especially in Russian) and the complexity of relevant legal issues that arise in the society.

A modern typeface makes for a surprisingly multi-faceted legal object: it is an original work, a part of public historical heritage, and a means of expression of thoughts in the form of literary works – all at the same time. It combines an artistic and a design solution, exists in the form of computer graphics and computer programs, functions as a means to a purely practical end, and can be copied an infinite number of times without losing a fraction of its functionality. As a result, in different countries, typefaces are protected by a variety of intellectual rights institutes: from patents to industrial designs and copyrights in software code to trademarks and license agreements.

The most important and the most ambiguous type of intellectual rights to a typeface is copyright in a typeface as such, that is, its graphic solution. In this respect, it is enough to compare the conclusions drawn by the authors of the only two Russian-language analytical materials on the issue to date. The lawyer of Mail.Ru Group is enthusiastic about the current state of affairs in the Russian legislation and court practice.

At the end of the day, we can safely say that the global community, with few exceptions, regards the typeface as an object of copyright… The Russian law lives up to the challenges of our time by treating the typeface as an object of copyright as well. In spite of being generally the most progressive and flexible, the U. S. legislation lags behind most legal systems of the world, allowing copyright only in the computer program that reproduces the typeface. (Kiseleva, A. (2015). Shrift kak ob’yekt avtorskogo prava v Rossii i Se-She-A [Typeface as object of copyright in Russia and the USA]. Intellektualnaya Sobstvennost’: Avtorskoye Pravo i Smezhnye Prava [Intellectual Property: Copyright and Related Rights], (5), 31)

Meanwhile, an anonymous but no less distinguished attorney of Yuryev Law Office argues in favor of a diametrically different opinion.

It appears reasonable to exclude typefaces and programs for their reproduction and storage from the list of legally protected objects of intellectual property from the perspective of maintaining balance between private and public interests. Otherwise, all users of a typeface would become dependent on the will of its author, who may prohibit its use in certain documents or books, or limit the use of competing software solutions through internal restrictions.

My stance on the issue is somewhat of a compromise between the two opposing opinions. Without doubt, copyright is the most convenient and reliable method for a type designer to protect his or her intellectual property: it does not require registration, its infringement is easy to prove, and its effective term is extensive. Advocated by the Yuryev Law Office attorney and many American lawyers, the model of type design as an industry free from intellectual property seems dubious to me in general and definitely not applicable in Russia with its fairly limited demand and a prevalence of small vendors. At the same time, I do not view the all-encompassing copyright protection of type design, which emerged in the absence of any explicit definition of typeface in the legislation, as a perfect solution either. In the dispute between ParaType and RESO Garantiya, the Russian judiciary system undertook to protect copyright in text faces for the first time (and for the first time in the world, to my knowledge), and we only have a vague understanding of the implications this judgment may have.

A plethora of potential legal disputes in this area have not yet arisen because Russia’s judiciary system is inert, and industry players there have not yet acquired the habit of taking their disputes to court. For instance, we are yet to see lawsuits filed against competing foundries for plagiarism regarding typefaces based on the same historical prototypes. Alternatively, the author of a typeface could sue a publisher who has used a reproduction of a poster that features this typeface on the cover of a published book. A similar lawsuit could be filed against a publisher who uses such a reproduction as a legitimate illustration without indicating the typeface author’s name.

In essence, it is a reasonable idea to follow the example of better-developed type design markets by amending the Civil Code of the Russian Federation to impose a certain restriction on copyright protection of typefaces without reversing it. Such a restriction should take into account both the financial interests of type designers and the interests of the society, with end users of typefaces representing the bulk of it. Rendering this amendment in precise, carefully balanced language is a daunting task for Russia’s legislators.

Acknowledgments: A more formal version of this work was initially written as a term paper at the Faculty of Law of Higher Schools of Economics (Moscow). I am extremely grateful to my academic supervisor, Dmitry Mazayev, for his assistance and invaluable observations.