When developing a new brand or product, creatives often give considerable attention to avoiding intellectual property infringement. Trademark lawyers are similarly vigilant to avoid infringing another company’s mark. However, when a company creates its labeling and marketing materials, they tend to not give enough thought to the issue of fonts. The fonts that a beverage company uses to create its website, print advertisements, bottling, labeling, and packaging may be protected by copyright and the company may not have appropriately licensed them. If a company uses a font without the permission of the owner of that font, or outside of the scope of that company’s license, that company could be subject to a claim of copyright infringement.
Typeface Versus Fonts
First, we need to draw a distinction between two terms that are often used interchangeably: fonts and typeface. A typeface refers to a set of characters that share the same design or style. Typeface is the collective name of a family of related characters (e.g., Times, Arial and Garamond). It describes the overall look of the characters—their design and aesthetics. A font, on the other hand, is a computer program that is used to create text characters. Fonts are often installed into, and made available through, a word processing program such as Microsoft Word or design programs such as Adobe InDesign. In the digital era, the distinction between these two terms has become blurred, as many people use “font” to refer to what is technically a typeface.
In the United States, typefaces themselves are not protectable under copyright law. Code of Federal Regulations, Ch 37, Sec. 202.1(e) states: “[t]he following are examples of works not subject to copyright. . . (e) Typeface as typeface.” In addition, the Copyright Office’s Compendium of US Copyright Office Practices states that “[t]he Office cannot register a claim to copyright in typeface or mere variations of typographic ornamentation or lettering, regardless of whether the typeface is commonly used or unique.” Typefaces may be eligible for a design patent, which protects new, original and ornamental designs. However, design patents have significant limitations, must meet very specific requirements and are rarely used.
A font, on the other hand, is computer software that is protectable under copyright law because it is an original work of authorship in the form of software code. Typefaces cannot be copyrighted, but the font software used to display them can be. This distinction is crucial because it separates the visual design of characters (typeface) from the underlying code that instructs computers and printers how to reproduce those characters (fonts).
Font Infringement and Enforcement
Type foundries have made available a number of fonts that are free (often referred to as open source fonts) or are otherwise in the public domain. However, if a font is copyright protected, then copyright owners can sue companies and others who use that font without a license for copyright infringement, and a finding of copyright infringement can result in substantial liability. A copyright owner can seek actual damages that are the result of the alleged infringement, such as lost sales or license fees of its font program. If the copyright owner cannot demonstrate actual damages, the owner can be entitled to statutory damages, which can range from $750 to $30,000 per work infringed. If the infringement is proven to be willful, damages can go up to $150,000 per work.
Certain font owners are vigilant in protecting their rights in the fonts they have created. These owners scan websites for typefaces that were created using their fonts. If they find those typefaces, they reach out to the website owner to determine if it has properly licensed the font. In addition, there are organizations that threaten businesses with claims of copyright infringement (so-called copyright trolls) in order to receive payouts. Typically, font copyright trolls are not the creator of the work whose copyright they claim is being infringed. Rather, trolls purchase a license from the copyright owner to pursue infringers. Demands for payment from owners or font trolls can be quite effective since the requested license amount is often small compared to the cost of litigation. Faced with the prospect of litigation, many businesses opt to simply pay the demand.
Businesses can protect themselves from a font infringement claim by only using open source or public domain fonts (i.e., fonts that are not protected by copyright), or by obtaining a license from the copyright holder to use the font for the business’s intended purpose (e.g., for commercial purposes). In order to obtain a license, a business often must pay the copyright holder a license fee.
What Should You Do?
Alcoholic beverage companies and marketing firms serving the industry should ensure that all the typefaces in all materials, including websites, labeling and packaging, were created using fonts that either are not subject to copyright or are appropriately licensed.