Note: Consult your attorney for advice on any particular legal matter. No reader should act, or refrain from acting, on the basis of this article, without seeking advice from legal counsel in the relevant jurisdiction.
Whether you use fonts as a graphic or web designer, or are perhaps starting to make fonts, understanding the legal issues around them is important. What are font lawsuits about, what legal protections do fonts have and how does it affect you—whether you use fonts or make them?
Font lawsuits take many forms. Some are within a company, such as when Tobias Frere-Jones sued Jonathan Hoefler. Some are business disputes between companies in the font business, whether around distribution/relicensing deals, making derivative fonts and selling them (Adobe v SSi), making similar fonts (ITC v Monotype), or allowing fonts to be embedded in documents (Monotype v Adobe).
Lawsuits over font “sharing” via websites are rare. Going after file sharers is like a game of whack-a-mole, offering minimal rewards. Most foundries stop after getting their fonts removed from the font-sharing website, if even that. One egregious case that did go to court in Canada was someone using the online alias Apostrophe getting sued by a group of type designers and foundries in the early 2000s. Afterwards, Emigre’s Rudy VanderLans told Fontzone’s Clive Bruton, “We have never lost any of these type of lawsuits. Granted, many of the lawsuits to protect our font software are settled out of court. Our goal is to stop people such as Apostrophe. We’re in it to protect our work, not to clog up the legal system and/or fatten the wallets of lawyers. This settlement gave us exactly what we asked for.”
Such “piracy” can have consequences besides lawsuits. In the United States, under the Digital Millennium Copyright Act (DMCA), copyright holders can complain to infringers’ internet service providers. Repeat infringement after warnings can lead to loss of internet service—although this is rare.
Whether you’re using fonts or making them, the main risks are around underlicensed or unlicensed font use. Only one or two such lawsuits a year reach public awareness, but in countless more cases, a foundry or its lawyer contacts users about improper usage of fonts, and they settle out of court. Often, these users are either partly legitimate customers, or just made a mistake. For example, in 2010, the French anti-piracy agency Hadopi’s new logo, created by an outside design firm, used a Porchez font that had been created for the exclusive use of France Télécom, and couldn’t legally be used by anyone else. Designers’ Lesson: Track your usage and segregate any fonts you have only because of a specific client, perhaps by utilizing a font-management app. Remember that few licenses, aside from open source, allow you to give the fonts to third parties doing design work for you—sometimes with an exception for output services.
License wording and terms are hard for foundries; they have to decide whether to keep things simple and generous, or to charge extra for additional rights. Emigre, for one, has an especially modular and clear license where users pay separately for various different areas of use.
Proceeding to an actual lawsuit is expensive for everyone. In most cases, the additional licensing fees involved, which go from users to foundries, are small compared to potential legal fees on both sides. And that’s not counting time on both sides, lost from actual work.
This is why filed lawsuits are rare, but getting contacted over unlicensed font usage is very common. Said contact may not even be an actual problem! In a previous job, my company got a letter from a well-known foundry about what they thought was two cases of unlicensed font usage—but they were mistaken. Designers’ Lesson: Keep records of your font licensing, as well as who you hired for outside design work.
Two foundries that are especially active in pursuing unlicensed or underlicensed font usage have told me—under condition of anonymity—that they might get as much revenue from enforcement (which one of them called “retroactive license sales”) as from normal licensing! This relies on dedicated staff as well as automated bots that can scan for font usage in web pages and posted PDFs. Sam Berlow, previously general manager of Font Bureau and chief executive officer of Type Network, says “license enforcement ‘can’ be a substantial percentage of foundry income. It can also be soul-killing and maddening. I recommend outsourcing it whenever possible.” Berlow suggests foundries take a gradual escalation approach to license enforcement, starting with a company-to-company letter before involving lawyers.
What’s in a font license? Most, except open source, cover a specific number of users or computers. Desktop licenses often exclude or limit web fonts, while web font pricing often scales based on usage. Incorporating fonts into an app is often extra. Some font licenses charge extra for various other things, such as use in advertising, in logos or on T-shirts. Many foundries don’t allow modifications, or require that they do modi cations themselves. One foundry’s license even says that you may not use its fonts for a political or religious purpose without additional permission! A few offer some sort of trial use. Designers’ Lesson: Font license generalizations are just that—font licenses can differ and usually do, which is why you must read them!
Fonts from the same foundry or under the same open-source license will generally have the same license, which helps. With practice, you can scan a license quickly. If you don’t like it, don’t license under those terms. I know this may sound excessive. Even I don’t usually read software licenses... except for fonts, because there’s a real chance of the license not allowing what I want to do. You need to read font licenses, too.
Kinds of Legal Protection for Fonts
The end-user license agreement (EULA) is a legal contract that says what you can and cannot do with the fonts. Excepting fonts you have designed yourself or commissioned, or those from “warez” sites with no license at all, most fonts on your computer are licensed to you, not owned by you—even open-source fonts.
Copyright is contentious for fonts in the United States, but the companies making fonts, and their lawyers, have long acted as if fonts are protected by copyright. The details are complicated.
In 1976, a new Copyright Act was enacted by Congress that specifically excluded fonts from copyright protection. In the mid-’90s, Cynthia Hollandsworth Batty led the type community in convincing the Copyright Office that digital fonts might be considered software, and be treated as such for copyright. So instead of showing what the font looks like, a US copyright application for a font consists of text-format code dump representing everything, even glyph shapes.
Since then, the US Copyright Office’s Compendium of Practices has said that a computer program that generates a particular typeface or “typefont” may be registered, but not the typeface/typefont itself (§723). However, as intellectual property lawyer Karen Shatzkin explains it, “computer programs are entitled to copyright only if they contain new creative elements, which the Copyright Office is not equipped to judge, and your registration is only prima facie evidence. Prevailing in litigation may well require that you prove its entitlement to copyright, which, even if you succeeded, would cost a fortune.” And, of course, this would protect the font-file-as-software, not the appearance.
For more confusion, the Copyright Office in 2018 started sending letters to some font copyright applicants saying copyright required applicants to explicitly claim that they had in fact input the code as text to create font glyph shapes (as opposed to using a drawing interface, as is nearly universally done). But copyright registrations for fonts-as-software have quietly resumed since, and neither the Office nor multifoundry lawyer Frank Martinez, who led objections to this, would comment on the record, leaving the situation murky at best.
From a software perspective, this—typing code versus drawing vectors on the computer—is an arbitrary distinction with no difference in the output. Indeed, as chief executive officer of FontLab at the time, I consulted with FontLab engineering vice president Yuri Yarmola, and he promptly put the “source” text-based glyph editing mode into FontLab VI. You could then edit any glyph either as source code text or via the visual editor—and changes made in either affect the other, in case anyone wanted to convince the Copyright Office as to the irrelevance of the distinction.
Why do foundries badly want copyright to apply to fonts? Copyright is automatic and inherent in authorship, without even requiring registration, and copyright on new works generally lasts for 70-plus years, depending on the country, author’s lifetime, etc. Additionally, registering one’s copyright has the advantage in the United States that it can make infringers liable for “statutory damages”—a range of cost per work, regardless of the actual damages (actual loss to the copyright owner).
Design rights protect the abstract design of the typeface; they are the only legal protection that protects the appearance alone.
Design rights vary in form by country. In the United States, design rights take the form of a “design patent,” which is a different category than the usual “utility patent.” Design patents only last for fourteen or fifteen years and must be actively applied for, with noticeable fees on top of any lawyers’ fees, and are only relevant in the United States. Result? Font design patents are uncommon; Adobe routinely applies for them, but few others do. Unlike copyright, though, there is no question that design patents can be applied to fonts. In fact, US design patent number one was for a font, issued to George Bruce of the Bruce Type Foundry in 1842! In the European Union, registering a “Community design” gives protection for up to 25 years. In some circumstances, an “unregistered Community design” may also be protected, for a period of three years.
What does it mean that design rights protect appearance? If you sell a font in the United States that looks too much like Adobe’s Hypatia Sans (designed primarily by me, but owned by Adobe), it could infringe Adobe’s US design patent—even if you didn’t start with Hypatia Sans’s font code or outlines.
Trademark requires registration, protecting just the name, in the registered domains. Thus there are three active US trademarks on Arial in different domains: one for the font, but also for climbing/mountaineering ropes and a wireless call system. Anyone can claim a trademark (™), but only registered trademarks can use ®. Trademarks last forever as long as one uses the name in commerce and pays renewal fees.
Which protections matter? Font lawsuits often rely on as many areas as can be brought to bear, including copyright and trademark—and design rights, where applicable. But the complexity and uncertainties of US copyright for fonts has led a few lawyers and foundries—such as Shatzkin and her longtime former client Darden Studio—to conclude that both foundries and users are best off relying solely on a fair but highly enforceable license. ca