Font infringement - is your company at risk of copyright infringement for using illegal "fonts" for marketing, advertising, product packaging, etc?

By Attorney Steve Vondran, Software Infringement Attorney

Hate reading? Listen to the Podcast on this topic on our Vondran Legal Hour show. Just click here!!

Introduction

As if receiving a software audit letter from the Business Software Alliance wasn't enough to cause stress and anxiety with your business, recently, we have received word from clients and potential clients that they have been requested to conduct a "font audit" in addition to scouring their laptops, servers, and workstations looking for unlicensed copies of Autodesk, Microsoft Office, Windows, CAD, Adobe photoshop, and other products. But just what is a font audit and does your company necessarily have to comply with such a request? This blog should provide some general legal information, and also highlight the potential for officer and director liability for willful copyright infringement of fonts.

What are fonts?

Fonts are all the fancy different styles of letters and characters that you see on books, product packaging, websites, themes, mobile applications, and basically anywhere else. Essentially it is a computer program that tells your computer screen what the font should look like, or tells your printer how to print the shape and character of the font. Fonts are a type of intellectual property because they are creative works fixed in a tangible medium of expression and thus subject to copyright laws as part of a computer program / computer software. Like most other software programs you have in your business, the font program often comes with a end-user licensing agreement ("EULA") that defines the rights the user has and exceeding the scope of this license can lead to claims of font infringement. See the Resources section below to see some big name companies that have faced legal trouble over alleged illegal use of fonts. In some cases we handle, we see a request to audit for fonts across the organization (which can be very time consuming if you are not using a "Universal Type Server" (UTS) to track font usage, control access, and tracking licensing rights. Two companies to look into for this service (which would be especially important for product designers, advertisers, webmasters, social media marketing departments and other creative individuals) are Extensis and Insider Software.

Fonts are usually referred to as Typeface (aka font families). The families may create a set of fonts that may include regular | italic | bold | bold italic. These families are created by Type Designers who may take years to create a font family and who may rely on royalties as a means of making a living, which is why intellectual property infringement might be taken serious by an individual designer or a foundry that makes founts.

Watch Attorney Steve explain font infringement / breach of license in this Video

Eltra Corp v. Ringer (fonts themselves not generally copyrightable)

This case discussed the basic principle that the font type cannot be protected by copyright as it is basically utilitarian and thus the actual design cannot be protected by the copyright office. In this case, the Court held:

Under Regulation 202.10(c) it is patent that typeface is an industrial design in which the design cannot exist independently and separately as a work of art. Because of this, typeface has never been considered entitled to copyright under the provisions of s 5(g). See  Eltra Corp. v. Ringer, 579 F.2d 294, 298 (4th Cir. 1978)

This is not the same, however, as to say a computer program containing software fonts cannot be copyrighted. In addition, a font could be protected by a design patent (a new, ornamental and non-obvious font), and/or a trademark (which helps identify the source of the fonts). So either way, it is always important to make sure you are using licensed versions of all fonts you use within your organization.

Adobe v. Southern Software (placement of points on computer font outline can be copyrightable)

This was another federal court case that dealt with whether or not fonts can be protected by copyright. In this case, the Court first laid down the general rule on copyright infringement:

To prove copyright infringement a plaintiff must prove ownership of a valid copyright and copying by the defendant.  Data East USA. Inc. v. Epyx, Inc., 862 F.2d 204, 206 (9th Cir.1988). The parties do not dispute that Adobe is the owner of valid copyrights of its programs. Copying may be established by direct evidence of actual copying or circumstantial evidence showing defendant's access to the copyrighted work and substantial similarity of the general ideas and expression of the copyrighted work.  Id. No claim of copyright infringement lies for copying of unprotected matter. Thus, a plaintiff must show the existence of protectable expression and copying of that expression.  Harper House, Inc. v. Thomas Nelson, Inc., 889 F.2d 197, 207–08 (9th Cir.1989). The parties do not dispute that defendant King had access to plaintiff's programs.  Thus, the primary issue in this case is whether the material at issue is protectable expression under the Copyright Act.  See  Adobe Sys. Inc. v. S. Software Inc ., No. C 95-20710 RMW (PVT), 1998 WL 104303, ( Northern District Cal. Feb. 2, 1998).

The Adobe Court then proceeding to hold that software programs could be protected:

A computer program is defined by the Copyright Act as “a set of statements or instructions to be used directly or indirectly in a computer to bring about a certain result.” 17 U.S.C. § 101.  Computer programs are protectable literary works. 17 U.S.C. § 102(a); Apple Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240, 1247–48 (3rd Cir.1983). Typeface designs are not copyrightable. Eltra Corp. v. Ringer, 579 F.2d 294, 298 (4th Cir.1978). A computer program is not rendered unprotectable merely because its output is not protectable. See Apple Computer, Inc. v. Formula Int'l, Inc., 562 F.Supp. 775, 781–2 (C.D.Cal.1983); aff'd, 725 F.2d 521 (9th Cir.1984).  Thus, the fact that a computer program produces unprotectable typefaces does not make the computer program itself unprotectable. See Adobe Sys. Inc. v. S. Software Inc., No. C 95-20710 RMW (PVT), 1998 WL 104303 (N.D. Cal. Feb. 2, 1998).

What is the "Font Bureau?"

According to Wikipedia: 

The Font Bureau, Inc. or Font Bureau is a digital type foundry based in Boston, Massachusetts, United States. The foundry is one of the leading designers of typefaces, specializing in type designs for magazine and newspaper publishers. They also license fonts and offer some free fonts. As you can see on the links below, they are also not afraid to file a federal copyright infringement lawsuit against a major company like NBC.

 Attorney Steve Tip:  Some font deisigners are known to scan the web looking for illegal usage of their founts either without a proper license, or exceeding the scope of the EULA license.

What types of persons may be at risk

Creative business organizations, designers, publishers, media companies, eBook authors, marketing and advertising professionals, social media bloggers and even mobile app creators and product packaging professionals can be at risk of facing a font audit. Basically, anyone, or any company that uses fonts in their business or promotional materials should take care to manage and monitor their font uses and have policies and procedures against using illegal fonts for commercial purposes.

Tips for avoiding font copyright infringement claims / audits

Here are some basic tips companies should be aware of in this interesting area of intellectual property law to try to reduce legal exposure of using unlicensed or pirated fonts.

1. Always purchase fonts from credible foundries or re-sellers
2. Make sure you are paying "fair value" (as we have learned representing other companies facing BSA audits and Autodesk and Adobe audits "if the price is too good to be true, it is, and you probably got an illegal or pirated version that infringes their copyrights).
3. Be careful downloading "free fonts" they may not be the legal copyright holder or owner of the IP to allow you to use the fonts in the manner you desire.
4. Webmaster should be confident that the fonts they are using are properly licensed (See Rick Sontorum politician link below)
5. Before launching new products and product packaging into the marketplace, make sure you have all the rights cleared. If not, don't be surprised if someone finds out that you could be facing a font audit or cease and desist legal demand letter (See Hasbro toy case below)
6. If you buy a used laptop or computer with fonts already installed, realized, these may not be "transferrable" to your new business so you could still face a claim of unauthorized and unlicensed font use. A claim for your profits made could also be an allegation if a lawsuit is filed.
7. Same holds true for using copyright font programs in web themes, mobile applications, and on websites (ex. by a third party digital advertising agency or webmaster).
8. Marketing and advertising agencies need to be careful to double check the fonts being used on promotional materials, ad layouts, press releases, and other commercial items. In some cases, officers and directors of the companies might become targets of a lawsuit.
9. Persons who legally own font software programs should not share them with third parties, this could lead to a claim of copyright infringement by exceeding the scope of your font license (i.e. make sure to read your font licenses and see what it says).
10. Conversely, be careful downloading a copy of 10,000 fonts a friend gave you when they bought the CD disc for $5.
11. Always adhere to the terms of the Software UELA. For example, if the fonts can only be used on one computer, do not allow the fonts to be installed on multiple computers throughout your organization.
12. Use UTS (Universal Type Server) products (ex. Extensis or Insider Software) to track and manage font compliance. If you have any questions, contact us at (877) 276-5084.

These are some of the things that can lead to an audit. Bear in mind, in many software audits even where "fonts" are requested to be audited, with an experience software audit compliance firm like ours, we can often get the Business Software Alliance to limit the scope of the audit in a way that the font part of the audit can be ignored.

Resources & Sample Lawsuits

1.  Unlicensed fonts leads to a high dollar settlement
2.  Font Bureau files lawsuit against NBC (sought 2 million dollars for using fonts on more computers than licensed for)
3. Mixpanel sued for 2 million dollars by Font Diner (embedding typeface in a Tumblr theme)
4. Rick Santorum (politician) sued for using counterfeit font on website
5. Toymaker Hasbro suit for using fonts outside the scope of any license to market products (my Little Pony). Sued by Font Brothers.
6. Microsoft sued for copyright font infringement (shows how copyright laws can vary by Country). Lawsuit was filed in Israel.  Moral rights also discussed.
7. Turner Broadcasting and Titleboy Films sued for infringement of copyrighted font software
8. Font issues for Ebook authors

Conclusion

For many companies font software management is hard to get a handle on. There may be a mixture of fonts in your environment (some you legally purchased and paid fair value from reputable companies) and others that may have been brought in by employees just trying to help out. In addition, you may have on copy installed on multiple servers. What this means is your "font collection" may not actually belong to you and your use of same may be deemed infringement. This leads to legal exposure and potential lost profits if a font lawsuit is filed. If you need help was a BSA or SIIA software audit, or are charged with infringement fonts belonging to the Fount Bureau, or other Foundry, Microsoft, or Adobe, call our software licensing law firm to speak with our attorney. There is no charge for the initial conversation. We can be reached at (877) 276-5084 or visit our software audit resource center. We offer low flat rate fixed legal fees for most non-litigation cases.