March 07, 2017
Font as a copyright work in Russia and the United States
A. Kiselyova
This article was published in “Copyright and Related Rights Journal”, No. 5, 2015
Over the past hundred years, the world around us has changed dramatically. The rate and scale of the changes are staggering. Starting from the discovery of outer space and ending with Internet technologies and robotics, new objects of study and new areas of activity are appearing at a rate that is increasing exponentially. All these innovations are in one way or another connected with human intellectual activity. Recently, due to the boost and sophistication of social relations, many intellectual property items have appeared that did exist before or were not considered as such.
Standards governing intellectual property have emerged and exist to achieve a balance of interests between proprietors and the community. On the one hand, an author’s intellectual work has to be encouraged, otherwise there would not be sufficient incentive for cultural and economic development. On the other hand, the community must sooner or later have access to points of cultural value and works of art. In addition, the development rate of an industry often depends on the availability of works to other authors (as clearly seen through the example of open software licenses), which allows new authors to improve upon works earlier created by others. If we examine this issue under the scope of economic analysis of law, we can say that one or another type of activity becomes an item covered by copyright when it is economically disadvantageous for the government to leave such an item outside the legal framework.
With the development of the Internet and computer technology, fonts have become exactly this kind of item (there are many concepts of fonts and typefaces used in different epochs in different situations. For the purposes of this article, a font is understood as a set of characters created by an artist that represent the letters of a language, as a computer file that contains the font, and/or as a set of metal type used in typographic printing. Unless otherwise indicated or required by the context, a font should be understood as a set of characters created by an artist that represent letters of a language). However, this was not always the case. Since the invention of the printing press by Johann Gutenberg in the 15th century and before the invention of the typewriter in the early 19th century, the process of creating fonts was very time-consuming and expensive. More importantly, a font’s copying took up as much time and money as its creation.
As Blake Fry points out in his article Why Typefaces Proliferate Without Copyright Protection, creating a single font of one style and weight in a typeface family (e.g. Times New Roman 14 in the Times New Roman typeface family) would take a punch-cutter, who had a unique set of skills (part metallurgist, part sculpture, part metalsmith), 800 hours of full-time work. The focus here was not so much on the font design and the artistic work, as on the unique skills of a specialist, as well as the money spent on creating the font. It was not economically feasible at all to copy a font, because it would require spending the same amount of resources and engagement of a similar unique specialist. Accordingly, governments were not at all interested in granting legal protection to fonts. Nor did such interest appear with the invention of the typewriter, since the copying process was still too expensive. However, information technology has completely changed the font industry. Now the creation of a font requires unique creative abilities rather than practical skills and a lot of time. While earlier fonts were created mostly by large corporations that had sufficient resources, now fonts can be developed by almost any user of computer programs intended for this purpose (for example, Font Creator, FontForge). Such digital fonts can be copied by an unlimited number of people because of their complete availability and ease of copying. In addition, it is now possible to illegally use a font in an anonymous manner. While earlier the font market was narrow (all market participants knew each other), had any violation occurred, one could apply to non-state market regulators (for example, to cease cooperation with such a participant, spread the word about the violation, thereby ruining his reputation), now anonymous use makes it impossible to have recourse in extra-legal regulation mechanisms.
It is worth noting that fonts are now becoming of a higher and higher independent value. Fonts are used in advertising, web design, books, magazines, urban navigation, and many other industries. For example, in the context of advertising, it is important to choose a suitable font that is fit for its intended purpose (a vivid but not strident color) that is able to create the necessary emotions and evoke appropriate associations in the consumer (advertisements for perfumes and, for example, circus performances require completely different fonts). Various fonts are selected to create a website interface and to create the web product itself. For example, everyone knows the text in the Yandex and Google logos. These search engines attract attention and have become popular in part due to the fonts used in their logos. The font creator for Yandex, for example, provides the following description of the corporate font: «Yandex's corporate font is a narrow, grotesque one, remarkable by the open form of its characters and the small radius of its rounded forms. The dynamic thickness distribution in round font characters is perfectly combined with the static character of straight font characters <…> The typeset is well suitable for service logos, slogans, and explanatory texts” (A. Lebedev. Yandex's corporate font). The above indicates that each font has its own special elements, is designed and intended for use in certain situations, and that the suitability of the font being developed depends on the creative abilities of its designer.
State and municipal bodies pay special attention to urban navigation and subway systems and develop uniform standards for the design of explanatory texts where the font used is of particular importance. Even ordinary users do not limit themselves to the standard font set provided by operating systems, because the scope of creative activity of any Internet user is unlimited. All this supports the idea that the font as a creative work should be treated as an independent copyright item.
In most countries of the world, including Russia, fonts are under legal protection as copyright work. For example, in 1981 the German government recognized that fonts can be protected by copyright laws and regulations; the English government did the same in 1989 (Erik Shultz. The Law on Fonts and Typefaces). On the international level, fonts are governed by the Vienna Agreement for the Protection of Typefaces and their International Deposit, adopted on June 12, 1973 (Vienna Agreement for the Protection of Typefaces and their International Deposit). Unfortunately, the Agreement has not come into force, as only one country has recognized and ratified it. Most states do not consider fonts as copyright items directly but rather do not exclude them from a general non-exhaustive list. The United States of America takes a separate position on the copyrightability of typefaces, as the U.S. Copyright Office concluded in 1976 that typeface designs were not to be regarded as copyright items (Jacqueline D Lipton. To © or not to ©? Copyright and Innovation in the Digital Typeface Industry). This decision was further supported by judicial practice (Eltra Corp. vs Ringer, 579 F.2d 294 (4th Cir. 1978). This situation causes confusion among font design specialists, as well as among representatives of the legal profession. Of course, this does not mean that fonts in the USA are not legally protected at all. Thus, a computer program that allows users to display and reproduce the font on a screen is considered a copyright work. This was decided by the Copyright Office in 1992 and is enshrined in the decision in the case of Adobe Systems, Inc. v Southern Software, Inc., delivered on January 30, 1998 and referenced by Jacqueline D Lipton in her work on the protection of fonts. To © or not to ©? Copyright and Innovation in the Digital Typeface Industry). The court decided in the plaintiff’s favor, thereby having established a precedent for protecting the font’s reproduction using a computer program. However, it is quite obvious that such a protection remedy is not sufficiently effective. It is commonly known that it is the description of the program that is protected by copyright laws, not the idea behind it. That is to say, by changing the description, one can achieve a comparable result: the same or a similar font. In addition, it is not always necessary to have a computer program to use the font (for example, if the font is used on a hand-drawn advertising poster), one can copy the font itself, without affecting the program. Given the above, the issue of granting legal protection to fonts in the United States remains open. So why does one of the most progressive legal systems remain so conservative in this area? Surprisingly for a case-law system, it is the legislation of the United States that establishes such a restriction. The U.S. Copyright Act of 1976 provides that copyright works should also include pictorial, graphic, and sculptural works: “two-dimensional and three-dimensional works of fine, graphic, and sculptural works… 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.” (U.S. Copyright Act).
Any font will be useful and utilitarian, since it is primarily a set of characters used for communication. If it does not fulfill its purpose, it ceases to be a font. However, such a set of characters may have original features beyond the shape of letters, such as thickness, brightness, saturation, letter spacing, size; it can be rounded, flowery or straight, or graphical. But all the above cannot exist separately from the form of font characters. At some point, the U.S. Copyright Office established that the artistic elements of a useful and practically utilitarian item are protected by copyright only if such elements can be physically separated from the item itself (Jacqueline D Lipton. To © or not to ©? Copyright and Innovation in the Digital Typeface Industry). This is why fonts in the United States are not protected by copyright law. The main argument of the legislator and law enforcement authorities in this case is the alleged complexity and high cost of use by users should the fonts be recognized as copyright items. This is fair because, in such a case, a regular user, while being interested only in the utilitarian aspect of the font but not in its artistic component, would violate the exclusive rights. But there are also some counterarguments. Currently, there are many open fonts distributed freely and free of charge, which all provide a wide choice for user needs. If those are not enough for a particular user, then he/she is interested not in the utilitarian aspect, but in the artistic component. Fonts creators, advertising and design agencies (in short, the entrepreneurs who use fonts for commercial purposes) are exactly such users. This may qualify as using a font as a copyright work. In addition, there is the effective “fair use” doctrine in the United States, which can also be utilized by users to use fonts for non-commercial purposes should the list of fair use types listed in Article 107 of the U.S. Copyright Act be expanded or appropriate case-law be established.
Thus, at the moment, fonts in the USA are not legally protected as such due to the fact that the utilitarian characteristics of a font are not physically separable from its artistic elements. Only a computer program that displays the font on the computer screen is recognized as a copyright item.
Let us turn now to the Russian experience of legal regulation in the font industry. The Civil Code of the Russian Federation does not explicitly state that fonts are legally protected. However, Article 1259 of the Civil Code of the Russian Federation provides a non-exhaustive list of copyright works, which allows fonts to be included therein if they are in an objective form, creative in nature and do not express ideas, concepts, principles, methods, processes, systems, techniques, and if they are not solutions to technical, organizational or other tasks, or programming languages (Part IV of the Civil Code of the Russian Federation. Article 1259(5)). Moreover, copyright items listed in Article 1259 of the Civil Code include graphical and design works, which may include fonts as well. As R.N. Yuryev rightly notes: “Undoubtedly, a font is a graphical work, both with respect to a particular font character and to a set of font characters in general. Since legislation does not provide an explanation of the concept of “design”, its linguistic meaning has not been established yet and the word “design” may be understood both as the furniture placement in a room and the appearance of anything, a font can also be recognized as a “design work…” (R.N. Yuryev, Font as a copyright item). Thus, the Russian legislation in no way restricts the protection of fonts under copyright laws and regulations.
It is equally important to examine relevant domestic case law. At the present time, there are quite a few decisions recognizing fonts as copyright works. The most important authority in terms of granting protection to a font as a separate copyright item is Judgment No. С01–1268/2014, delivered by the Intellectual Property Court on December 12, 2014 in case No. А40–20099/2014). In that case, ParaType LLC, a research and development company, submitted a claim to the court against the defendant seeking prohibition of using the Rodchenko font by the latter, including when publishing books, distributing copies of violating books, and seeking also the recovery of compensation for violating the exclusive rights to the work. The first instance court granted the claim in part, having prohibited the use of the font and distribution of violating books, and also awarded partial compensation. The Court of Appeal upheld the decision. The upper courts, including the Intellectual Property Court (hereinafter referred to as the “IPC”), upheld the decision as well. Of particular interest is the reasoning in the judgments delivered by the appellate and cassation courts. The IPC did not examine the issue of the font's copyrightability as a copyright item, but referred only to the provisions of law where copyright items were listed, and treated the font as a copyright work by default. Of greater interest is the judgment of the appellate court.
“In April 2002, T.I. Safayev, acting as employee under the above-mentioned employment contract, developed and handed over to the plaintiff (his employer) a font called Rodchenko. Thus, the above font is a collection of stylistically uniform images of all characters of the Latin and Cyrillic alphabets (in several variants). The font creation process required individual mental activity aimed at expressing aesthetic ideas about the appearance of characters and other symbols; it is an original work of its author, T.I. Safayev, and is, namely, a graphical work. Thus, the above-mentioned font is a protected copyright item pursuant to Articles 6 and 7 of the Russian Law On Copyright and Related Rights, and Article 1259 of the Civil Code (Judgment No. 09AP-32019/2014-GK, delivered by the Ninth Arbitration Appeals Court on September 8, 2014). Therefore, the appellate court considered the font to be a graphical work (a copyright item) as defined in the Civil Code of the Russian Federation. Having failed to prove that the font is not a copyright item, in the cassation court the defendant challenged the decision of the court of appeal on other grounds: the respondent insisted that “it did not use the work (font) as a whole, but only individual elements (characters) that represented an insignificant part of the work that was not protected by copyright law. In the cassation appeal, the respondent alleged that a font might only be an intellectual property item only if it was a complete set of all font characters and symbols in the same style. <…> Therefore, as the respondent believed, the use of individual characters on the book cover could not be considered a violation of the exclusive rights to the work (font in this particular case) as a whole.”(Judgment No. С01–1268/2014, delivered by the Intellectual Property Court on December 12, 2014 in case No. А40–20099/2014). The IPC did not agree with those arguments and held that: “… the copyright applies also to a part of the work if it can be recognized by its nature as an independent result of the author's creative work and is expressed in an objective form <…> courts should keep in mind that, until proven otherwise, the results of intellectual activity are assumed to be creative work. The defendant, claiming that a part of the font could not be considered as having a creative nature, failed to substantiate this argument. The illegal use of a part of the work (font), which is an independent object of civil law transactions, results in violation of the exclusive right to the work itself, because the use of a piece of the work is in fact a way of using the work as a whole” (Judgment No. С01–1268/2014, delivered by the Intellectual Property Court on December 12, 2014 in case No. А40–20099/2014).
In addition, the Intellectual Property Court held: “The applicant’s allegation in the cassation appeal that individual elements of the font do not represent the creative nature of the activity during their creation due to their simplicity and indistinguishability from the elements of other fonts is of a contradictory nature, since it was the creative nature, in the court's opinion, that determined the use of the font by the respondent when designing the cover of the book in dispute.” (Judgment No. С01–1268/2014, delivered by the Intellectual Property Court on December 12, 2014 in case No. А40–20099/2014). Thus, in that case, two important questions were considered: whether a font is a copyright item in the Russian Federation, and whether the usage of a part of the set of font characters is considered to be a violation of exclusive rights (that is, whether a part of the font characters is recognized as a separate copyright item). Both questions can be answered in the affirmative.
In summary, it can be said that the world community recognizes fonts, with some exceptions, as copyright items. This is caused, among other things, by the fact that during the Internet era, copying and illegal use of fonts has become easier, cheaper, and safer (because of anonymous use). All this requires the creation of regulatory mechanisms for protecting the rights of font creators, as well as recognition of these mechanisms in case law. Russian law keeps in step with the times, recognizing fonts as copyright items. The U.S. legislation, while being the most progressive and flexible, in this matter is inferior to most modern laws and regulations, because it recognizes as a copyright item only the computer programs that reproduce the font. At the same time, the United States produces the largest number of most popular fonts. Therefore, hope remains that font creators in the USA will be assigned the same scope of rights that font creators have in the rest of the world.