Erik Spiekermann's statements re Berthold

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Erik Spiekermann's statements re Berthold
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We were disappointed, but not surprised, that Erik Spiekermann, a noted and respected type designer and author, would knowingly make false and misleading statements regarding Berthold in a public forum.

As such statements affect the reputation of Berthold Types, I am responding with this posting. I attach a letter dated June 3, 2004, to Mr. Spiekermann explaining the actual facts behind the continuation of H. Berthold’s type business by Berthold Types. This letter is from Berthold Types Limited’s German attorneys because the subject matter involves German law. We arranged for the attached English translation.

Although the letter to Mr. Spiekermann addresses the myths and misconceptions perpetuated by Mr. Spiekermann’s comments, I would like to make a few points:

1. Berthold Designers
Mr. Spiekermann states that Berthold Types has no contracts with any of the original Berthold designers even though he is well aware of the agreement with Guenter Gerhard Lange. Mr. Spiekermann, a friend of Mr. Lange, tried to persuade Mr. Lange against working with Berthold Types but failed.

Contrary to Mr. Spiekermann’s statement, Berthold Types has agreements with Guenter Gerhard Lange, Bernd Moellenstaedt, Dieter Hofrichter, Orjan Nordling and Prof. Werner Schneider.

—Mr. Lange (at 83) is working on new typefaces for Berthold Types; having completed Whittingham in 2001 and additions to his other typefaces (Bodoni Old Face and Imago). He also has a new typeface yet to be released and has embarked on another large typeface project for Berthold Types. Mr. Lange as artistic consultant is actively involved in future type releases by Berthold.

—Mr. Moellenstaedt has created a new, large typeface family for Berthold Types (yet to be released) as well as preparing additional offerings of Formata.

—Prof. Schneider recently completed and Berthold Types released his Senatus typeface.

—Mr. Hofrichter works on many projects for Berthold’s type program and works closely with Berthold Types to insure the continued quality of the Berthold type program. He works directly with GGL on all his new releases.

All of the contracts between H. Berthold AG and the designers specifically stated that when a typeface design falls into the public domain the obligation by Berthold to pay royalities ceases. Berthold Types offered to pay designers nonetheless. Notwithstanding, Hans Reichel chose to release a reworking of Barmeno.

Interestingly, according to H. Berthold’s royalty worksheet, Mr. Spiekermann was never paid royalties on an ongoing basis for Berliner Grotesk and LoType.

2. Registration of Berthold’s Trademarks
Mr. Spiekermann also implies that any company could simply register H. Berthold’s trademarks. This is simply not true.

The Type division of H. Berthold was a separated in October 1991 and the Type assets were “leased” back to H. Berthold by a consortium of banks. The Type division was not a part of the H. Berthold AG bankruptcy in 1993 and was separate from Berthold’s other businesses. Berthold Types acquired the type assests (e.g. the trademarks as well as other IP rights — see the attached letter) through the chain of title through these banks, not through bankruptcy.

Accordingly, contrary to Mr. Spiekermann’s statements, over 80 German trademark registrations, and numerous UK and US registrations, were assigned through the “chain of title” from H. Berthold AG to Berthold Types, including the “Berthold in a red square logo” and the “H. Berthold” trademarks.

3. Protection of Berthold’s IP Rights
Mr. Spiekermann states that Berthold Types has been “suing dozens of people with frivolous cases which have cost me and other designers and foundries millions of dollars (and I am not exaggerating).”

It’s a myth. In fact, Berthold Types has filed only twelve lawsuits two of which were against FSI/FontShop (both for trademark infringement). Mr. Spiekermann cannot provide any basis supporting losses of “millions of dollars.” Type is just not that large of a business.


If Mr. Spiekermann wants to debate: Stick to the facts, please.

Respectfully,

Harvey Hunt
President
Berthold Types Limited


application/pdfTranslation
Spiekermann_Translation.pdf (91.9 k)

Hrant H Papazian's picture
Joined: 3 May 2000 - 11:00am
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Thank you for telling us your side of the story.

Two questions, if I may:

1) You cited 5 designers with whom you have a valid business relationship. How many designers total are represented in your library? How would you describe the relationship with them?

2) “Berthold Types has filed only twelve lawsuits”. May we please know how many “cease and desist” and other what might be informally called “pre-lawsuit” letters you have sent out? I think this is significant because -as anybody knows- a confrontational letter (especially when directed to individuals with modest or non-existent legal resources) can have nearly the same effect as a lawsuit.

I ask these question only in the interest of full disclusure (some of us simply enjoy knowing), not as a potential basis for persecution. I don’t have a lawyer, btw. But I am from Beirut.

hhp

Anonymous's picture
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>Being inconspicuous is much more effective. :-/

And that will sell a lot of fonts.

Tiffany Wardle's picture
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I’ll add that I’m in no way questioning the right to protect a typeface design.

darrel's picture
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<em>I’m curious. Is this because those who wrote the law and “lawyers” in general don’t see and haven’t been educated to the differences?</em>

It’s due (IMHO, of course, as IANAL) to the fact that the USPTO is overworked, understaffed, and Patent and TM laws have been slowly pushed towards the benefit of big business. Once Adobe got a patent on tabs in UI design and Amazon got a patent on one-click ordering, things have been going downhill.

The very fact that the USPTO granted TM protection on things like ‘city’ and ‘grotesk’ says more about the lack of careful thought going on in the USPTO than it does about Berthold being ‘right’ or ‘wrong’.

Anonymous's picture
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A quick side note for Mr. Hunt: As far as I know, the various FontShops are actually independently owned/run businesses, so I don’t think that what any individual FontShop is selling has anything to do with Spiekermann & Co.

From their “About FSI” page:

FSI (FontShop International), founded in 1990, is a renowned type foundry based in Berlin, Germany, with an office in San Francisco, USA.

FontShops

FSI are Licensors of the FontShop concept. There are 6 independent FontShops in Europe, Australia, and USA.

That said, I’d love to hear you argue that the use of the word “city” in the name of a typeface is going to lead to consumer confusion. That’s almost akin to trying to trademark “Greek” or “Type” or “Hand”! Perhaps you should simply make a crappy typeface (not that the original Berthold typefaces are crappy) for every potential generic font name soon-to-be in existence and put all future competitors out of business!

Or perhaps someone in the Typophile community should register the name “Berthold” for numerous types of products beyond the reach of your current trademarks, if for no other reason than to try to create some REAL customer confusion and give you a taste of your own medicine!

I guess I’m just wondering why you’re in this business at all — there are so many other way to make much more significant amounts of money if you’re willing to be as ruthless as you’ve demonstrated. Are you actually a typography enthusiastic to any degree?!?

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Will New York City have to change its name now for fear of a law suit from Berthold? What about the classic film “City Lights”?
That’s of course too silly, so silly it is grotesk. (OOOPS!!) I didn’t mean to say GROTESK, it was just an akzident; I mean I said it akzidently, err, accidently. It was a grotesque accident!
Oh, crap, I live in a city and created a grotesque accident!
DUCK!!! I hear the sound of lawyers zipping their briefs! I was so font of grotesque accidents in the City untill lawyers started Ligaturegation—er ligagation, darn litigation!!! OK! OK!!!, I will cease and desist.

ChrisL

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In this corner we have ITC Orbon versus Bitstream Orbit!

Linotype’s got Univers. They could sue ITC over University
Roman, but then ITC might just turn around and crack down on
URW for Roman Stylus. Then URW could go after ITC for using
Stylus, and then ITC could sue Bitstream for Bruce Old Style, just
to keep them on their toes.

Wait, I left out Humana. That’s it. Bitstream, you sue ITC back for
that Bruce Old Style thing by holding up Humana in court
against your mighty Humanist! Nice one.

Now there’s Elsner + Flake. They’ve got a lot of nerve using Rose
Garden and Rose Deco when it’s clear that Agfa Monotype
has Rosewood. And how can Agfa get away with Davison
Americana when Bitstream has had American Typewriter for ever.

Good thing that old Omicron Delta was put in its place to protect
Jaeger Delta. And good thing Berthold cracked down on Signa in
order to protect Signata. Or was it the other way round?

Linotype, did you know you can sue Agfa? Yeah, your Shelley and
Shelley Script could easily take Agfa’s puny Shelley Adante
Script. What are you waiting for? Millions of your customers are
confused!

Berthold has City. Good one. It’s hard to believe there are
foundries out there with the nerve to sell Beijing, New York,
Orlando, Monaco, Chicago, Atlanta, London
and even Old
London.
There’s Paris from one foundry and Old Paris Nouveau
from another. There’s Parisian and then there’s Parisian and
don’t forget Old Art Nouveau in case you want to cover
all the old and nouveau bases.

Which is which?! Sue everybody!

Dax vs. Dex vs. Dex Gothic

Estiennium vs. Etienne

Fago Office vs. Officina vs. Info Office vs. Info

Jannon vs. Janson (I bet he’s rolling in his grave. Or probably
just rolling his eyes.)

Meta vs. Metallophile

Yanus vs. Janus

Ooh, I’ve got a good one. Picture this: Times vs. the whole times
cartel, Times New Roman, News Gothic, News Plantin, Plantin
and Plantain. (Which one is the plaintif?)

Stone vs. Stone Hinge vs. Manga Stone vs. Stone Age vs. Stone
Print.
And in the second round watch as Stone takes on Bedrock et al.

Fuse vs. Fusion

Recently my wife asked me to pick up some Corn Flakes and
then got upset when I came home with Frosted Flakes.

Of course nearly all of these are fictitious, in case anybody is
confused. I know it can be hard to tell the asinine examples
from the asinine examples.

Joe Pemberton's picture
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So now that I’ve gotten the satire out…

What many lawyers and apparently the USPTO don’t get is the
reason the fonts in the above post do not get confused is
because the fonts look completely different. We’re not talking
about knock-off Kate Spade handbags or fake Swiss Army
watches.

Mr. Hunt, with all due respect, and with the humor aside. I hope
you’ll see that people hold Berthold products in high esteem,
otherwise they would’ve stopped paying attention a long
time ago. If the Berthold fonts sucked we would’ve changed the
channel. Now is your chance to show that Berthold is worth
preserving for the craftsmanship of it, not petty font names.

Regardless of the technicalities of the law, regardless of your
ability to present a case in court and win, I hope you realize that
the nature of your lawsuits seem frivolous to those familiar
with the profusion of similar font names. That’s the business
you bought in to.

I think it’s safe to assume that you started this thread in order to
clear the Berthold name. I realize nobody is on trial in this
thread. There’s no judge or jury here. But what is at stake is the
collective perception of the Berhold name.

If it’s true that a brand is nothing more than a collection of
perceptions in your customers’ minds… And obviously you value
the Berthold name or you wouldn’t desire to protect it by setting
some facts straight… If these are true I hope you can see that the
way to gain positive influence can’t be gained in a court — and
certainly not with the heavy handedness you seem to have
shown over what appears to be trifling issues.

In court you have had some wins, but in the public mind you
look like the playground bully. The branding lesson here is that
whether you are a bully or not is irrelevant. What is relevant is
what your customers think, and to a large degree what you do
next, because, whether you like the attention or not, people are
paying attention. Given the respect people have for Berthold
products I think it’s safe to assume they don’t want to see
Berthold fail. Let Berthold succeed by being innovative or
intelligent or creative or hard working or quick to market or…
pick an attribute people can believe in.

I didn’t really intend to write an op-ed piece. I’m not privvy to
whatever litigation has happened. Frankly I don’t really care who
said what — and that’s kind of my point. When it comes to your
branding issue — where brand equals reputation — those details
matter less than the perceptions you create by seeming to wield
an iron fist or by seeming to letting your counsel speak for you.
Or by sending letters over light-weight issues.

I hope you’ll take this in the spirit it’s intended: with respect for
the heritage you entrust, the designers you employ and with
hopes for a better future for Berthold.

petra weitz's picture
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It is indeed hard to figure out the initial intention of the thread. If it is bullying tactics which are harming our industry, then we feel the need to add to the topic. Designers shouldn’t be put off trying to register their type names to offer some kind of protection from the law. The more pertinent problem is that very few people in our industry can afford to defend themselves in the sort of cases brought against them, many are outrageous, but to defend the accusations: reckon with 6 figure sums and twice or three times that to take it to court.

FSI like most other companies and individuals, has never been able to take the issues to a full-blown court case with a judgement when attacked, where outcomes would have quite probably been completely different. The amount of money spent on injunctions, lawyers etc. meant that we have had to withdraw and agree to settle. In this respect, bullying tactics is an apt description and seems to be a pattern. We have always had to agree to settlements in the end, no matter how long we tried to hold out. Financials aside, humans eventually run out of steam too and are beaten down. But a legal Agreement doesn’t necessarily mean that parties are in agreement — it’s always a pragmatic matter of “do we go bankrupt defending further”?

Mr Hunt states: “For this reason, the US trademark office refused FSI’s application for SIGNA citing Berthold’s SIGNATA as a barrier.”

When FSI applied to register FF Signa, the US trademark office initially turned it down on the grounds that it was similar to “Signata and FF Signa” (really, the name of our own font was cited against us as being similar, we have the letter!) It is very common, and has happened to FSI many times, that the initial application is turned down, especially if someone objects to its registration. You then show reasons why the name and font is different and it is then often accepted. In this case it was Berthold Types who objected and it was abandoned by FSI because Berthold Types began a long, exhausting and complicated case against FSI and FontShop Germany tying in this registration with other FontShops’ selling (legal) BSK fonts along with FF CityStreetType, FF Avance and other issues.
We are still convinced that we would have succeeded in registering FF Signa and others had it not been for yet another case which cost all of FSI’s financial and emotional resources.
Some “confusing” font names could spark a whole new thread, see already, and we list a few below for interest. There are hundreds more similar names, so FSI may be forgiven for the suspicion that a certain amount of harassment is involved in their case. We feel angry and sorry for the people who have been forced to remove “City” from their font names. FSI were “allowed” in their agreement to continue to use the name FF CityStreet Type under the
condition that it did not try to register it.

Look at the first example!

Joan Spiekermann and Petra Weitz, Managers FSI (FontFont library)

Badoni, Agfa
Bodoni, Linotype

Aldus, Adobe
Aldous, Agfa

Albertus, Monotype
Albertan, Lanston
Albertina, Monotype

Alexa, Adobe
Alexia, Alphabets
Alexie, Linotype
Alexander, Lunchbox

Arbiter, Berthold
Arbitrary,

William Berkson's picture
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It appears to me from this thread that Berthold has not won lawsuits about names, but rather has used the cost of litigation as a business tactic to hurt rivals.

A possible way to diffuse this might be to get one of the type organizations to set up a clearing house to approve font names. Then a single failed lawsuit against a cleared name — which the type community might chip in to defend — might stop the practice.

I would add that this first idea might not be best but perhaps by brainstorming solutions here, the community could come up with a good plan.

Hrant H Papazian's picture
Joined: 3 May 2000 - 11:00am
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> What many lawyers and apparently the USPTO don’t get …

No, they get everything just fine — after all it’s us who are suffering, not them.

Resolution depends on realization — face it: when the central motivation is making more money*, a field that doesn’t make much money (type design) simply isn’t going to get its voice heard. A “good plan” would be the same plan that works in the third world: raise money and bribe lawmakers.

* The Patent Office for example gets paid per approved application. And it doesn’t suffer jack as a result of subsequent frivolous lawsuits between third parties.

The only other option (a much cheaper but also much weaker one) is what we’re doing here: public outcry resulting in threats to a company’s brand perception (as Joe was hinting at, albeit from the wrong angle).

hhp

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What’s done is done, and there are lessons to be learned.
From the type designer’s perspective, here is a “play it safe” strategy for the future:

1. Type designers should avoid doing revivals.
This will minimize problems of plagiarism, and naming issues (too close a name, or one unrelated — both are problematic for revivals)

2. Type designers should publish their own work. (Since the Internet, this is a viable option.)
In other words, type designers should publish their work under their foundry name, and then market it themselves and/or through distributors.
If you have someone else publish your typefaces, no matter how great things are today, that company’s ownership may subsequently change hands in ways that may not please you, and over which you have no control. It will be too expensive for you to defend your interests.

3. Type designers should be very careful in naming their typefaces: the best strategy is to use made-up words that are not already in the dictionary. For the first letter of the name, choose an area of the alphabet less colonized by other typeface names, and so on.
Quite apart from legal issues, giving your face a name that is unlike any other can only enhance the strength of its brand in the marketplace.

Hrant H Papazian's picture
Joined: 3 May 2000 - 11:00am
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I was talking about public discussion. And your anonymity helps prove my point.

hhp

Hrant H Papazian's picture
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4. Complain widely and loudly when a miscreant parasite tries to take advantage of you.

Oooops, there’s a font called Miscreant (in fact interestingly it’s the top hit in Google)!
So I guess I’ll just have my lawyer preempt their lawyer… But wait, it’s only Agfa — whew.

hhp

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WRT to Nick’s “play it safe” strategy.

First, my number one piece of advice is: consult a lawyer (preferably somebody who really knows this are, like Frank Martinez). I am not a lawyer, but it seems like a couple of Nick’s suggestions are off base.

1) Huh? Not much risk in doing another Garamond or Baskerville, as long as you call it “Shinn Garamond” and not “Adobe Garamond.”

2) It is not difficult to make sure that you, the designer, keep the copyright, trademark and (if any) design patent rights, and still publish through somebody else (license them to sell your font software).

I’d love to get into more detail here, but that would be providing legal advice which could get me into trouble (with our own lawyers if nobody else).

Regards,

T

darrel's picture
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” but rather has used the cost of litigation as a business tactic”

Hmm…sounds like Berthold is infringing on the RIAA’s patented business tactic!

(Is anyone else seeing this thread as messed up in their browser (firefox for me))?

Igor B. Shipovsky's picture
Joined: 17 Nov 2003 - 4:18am
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> Privet dorogoj Igor Shipovsky. I’d like to know the name of your Italian friend

Ciao Alessandro,
I like You! I never hide my own personality, but we all should respect another kind of thinking. Isn’t it?
Grazie mille e cari saluti!

> I don’t want a letter from Chicago
> as anybody knows a confrontational letter (especially when directed to individuals with modest or non-existent legal resources) can have nearly the same effect as a lawsuit

This is one of very serious reasons. I want to give one advice to those people who are afraid the attacks from Berthold. The majority of my friends and attorney worldwide came to similar opinion:

- “Issuing a lawsuit, in the US, is an everyday practice, even for reasons which, in other nations, would not justify a legal action. The Berthold case is a good example of this kind of approach: the company issues a lawsuit to scare a potential competitor. Anyway, on a factual level, we have to consider this: laws are not the same in any single part of the world and it’s very likely there’s no way to make a US Tribunal judgement effective in Russia as well. It may even be that on a specific topic Russian law is very different.
If, as I believe, we are still in an earlier phase before an actual legal action, I’d be quite relaxed to tell Igor he could use Berthold’s papers to wipe his… nose.”

- “I could have demonstrated to the court just how silly Berthold’s claims were…”

Dear friends! If You receive the “cease-and-desist” letter, do not fear! Please take a look at my own position: http://fontcity.ru/ev.htm, read the Russian attorney opinion: http://fontcity.ru/attorney.htm and other stuff. Believe me, the most of community is on your side and will assist You. Nevertheless, bear in mind that all cases different each other.

Respectfully yours, Igor.

P.S. My congratulations to all Italians regarding the great success on Euro-2004 in Portugal!

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Albertan was designed by me as a private metal face for my press, Pie Tree Press. If there is any confusion about the bame being confused with Albertus or Albertina, I could care less. The type is named for my wife, Alberta who was by coincidence, born in the province of Albertan, and is thus an “Albertan”. When I cut the type in her honour I had no intention that it would travel outside the confines of my letterpress sanctuary (which by the hour becomes more and more attractive to me) so the name was not a matter of confusion. If I had intended from the start that the type would be sold to the outside world I would still have named it for her. As has been stated, we can tell the difference from Bodoni This or Bodoni That, so I don’t understand the confusion, if you will pardon the cheek of a “typographical nobody”.

Jim Rimmer

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>consult a lawyer…I am not a lawyer, but it seems like a couple of Nick’s suggestions are off base.

I’m not giving legal advice, but advice to avoid getting involved with lawyers. For type designers who don’t live on planet Adobe, engaging the services of Mr Martinez is out of the question.

>Not much risk in doing another Garamond or Baskerville

Surely the lesson to be learned from this thread is that if a foundry releases a font with a name close to one that’s already a trademark, there may be legal ramifications. “Phinney Gill Sans” would create some interest.

Also, there is always an element of plagiarism in doing a revival — which is, after all, copying someone else’s design. Not a legal problem per se, but it can create controversy.

Another issue with revivals: if you name it, say, Adobe Caslon, it’s going to look strange next to the “C’s” in type menus, and if you take a different route and name your Bodoni “Filosofia”, well, Ms Licko can get away with it, but in general it’s disrespectful to remove the original designer’s name.

>It is not difficult to make sure that you, the designer, keep the copyright, trademark and (if any) design patent rights, and still publish through somebody else (license them to sell your font software)

Yes, that’s what I’m recommending — because what’s being describing is not really publishing, it’s distribution/reselling. The publisher is the person/business who holds the trademark.

Contrary to what Thomas says (and I speak from practical experience), it IS difficult to get one’s fonts “published through someone else” and retain rights, because most publishers will not publish typefaces unless they own the trademarks. (All FontFont names, for instance, are owned by FSI.)

A publisher’s brand equity is in its titles.

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Nick, you are either not understanding what I wrote, or not understanding trademarks. Names such as Baskerville, Garamond, Caslon, Jenson and Bodoni cannot be trademarked for typefaces. They are in the public domain. By bringing up a name such as Gill Sans, which IS a trademark, you are likely to confuse people. It is not hard to find out if a name is trademarked.

Certainly, revivals are just that, and are not as original as new designs. I also don’t see any point in doing a revival of something that is available from the original type foundry in decent digital form. However, this is a distinct issue from “am I going to get into trouble by doing this.”

Nick writes: “It IS difficult to get one’s fonts ‘published through someone else’ and retain rights, because most publishers will not publish typefaces unless they own the trademarks.”

This is simply not true. ALL the biggest type foundries (Agfa Monotype, Linotype and Adobe) license designs from third parties where the third party retains the trademark.

However, at Adobe we generally have the copyright for the font software, even for trademarks we license from third parties. This is the case not because we are eager to own some piece of the pie, but because we want to do production work in-house due to quality concerns.

Cheers,

T

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Thomas, I think Nick is talking about individual designers publishing through a foundry, rather than licensing agreements between foundries. The kind of contracts offered vary considerably, but consider, for example, the contract for outside designers in the Adobe Originals library. This is the kind of publishing arrangement Nick is talking about.

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>, if you will pardon the cheek of a “typographical nobody”.<

How remarkable that a truly great, truly original typeface designer has actually posted to this dreary thread. Let Mr Rimmer’s laudable modesty, from which we could all learn so much, deceive nobody. Confronted with Albertan, Jeff Level said, ‘if Goudy had really understood type, he would have designed Albertan.’

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[Drifting off-topic — hi, Bill —, speaking of Rimmer and Goudy: have you seen Jim’s digital version of Goudy’s Kaatskill? A very nice piece of work.]

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The Russian foundry FontCity run by Igor Shipovsky reports that BTL forced them to rename their fonts CITY OF SAMARA, CITY OF PLESETSK, CITY OF KHABAROVSK, CITY OF TSARITSYN, CITY OF SUZDAL, CITY OF CHERKIZOVO, CITY OF OSTANKINO, CITY OF MOSKVA because it apparently infringed BTL’s registration of the trademark “CITY” for typefaces.

Here’s the correspondence:
http://www.fontcity.ru/berthold.htm
http://www.fontcity.ru/answer.htm
http://www.fontcity.ru/attorney.htm

The main text is in Russian only:
http://www.fontcity.ru/rv.htm

Apparently, Igor Shipovsky decided to give way to BTL and renamed all his “City of ***” fonts to “Gorod.***”, as you can see on:
http://www.myfonts.com/browse/foundry/fontcity/

Mike Rifkin, Canada

Nick Shinn's picture
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>By bringing up a name such as Gill Sans, which IS a trademark, you are likely to confuse people.

I don’t have to, the situation with revivals is already confusing enough, which is why I am suggesting avoiding potential naming problems associated with revivals. Some names are not trademarked, such as Caslon, whereas others are trademarked, such as Gill San, and still others appear to be unnecessarily trademarked, such as Adobe Caslon.

When foundries such as ITC always put their initials in front of the name, and trademark both words, what is the status of the typeface name part? For instance, if I released a typeface named Souvenir, based on the early 20th C original (presumably in the public domain), would it result in legal action?

>This is simply not true. ALL the biggest type foundries (Agfa Monotype, Linotype and Adobe) license designs from third parties where the third party retains the trademark.

Thanks for clarifying this, John. Yes, I’m speaking about the initial publishing of a typeface, not the retailing/distribution of already published faces. If Thomas wants to verify the situation, he should try getting a large publisher to publish one of his designs, while he keeps the copyright and trademark!

John Butler's picture
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Mr. Shinn writes:
If Thomas wants to verify the situation, he should try getting a large publisher to publish one of his designs, while he keeps the copyright and trademark!

And yet my first google search for a counterexample immediately turned up this:

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Exactly, John B. Not to mention many other such typefaces Adobe has published in the last 10 years where the trademark is still with the individual designer. Agfa Monotype has certainly done tons of these as well, licensed from individual designers who still hold the trademark. Nick is talking complete nonsense in this area.

Generally speaking, Adobe owns the trademark for all “Adobe Originals,” and licenses the trademarks for other designs (though there are some exceptions).

With regards to Souvenir, I do not know the status of the trademark for sure. I note that ParaType sells an entirely different design called “Russian Souvenir” (1996), so I suspect that ITC’s trademark only applies to the combined phrase, but I don’t know for sure. Certainly Adobe’s trademarks on Adobe Caslon, Adobe Jenson and Adobe Garamond only apply to the two words together (though we also have “Adobe” as a trademark).

Cheers,

T

Chris Lozos's picture
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>so I suspect that ITC’s trademark only applies to the combined phrase, but I don’t know for sure. Certainly Adobe’s trademarks on Adobe Caslon, Adobe Jenson and Adobe Garamond only apply to the two words together<

So then it is a question of who is doing the trademarking? “Berthold City” obviously does not fit the mould of the other foundries Thomas mentioned.

ChrisL

Nick Shinn's picture
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>Nick is talking complete nonsense in this area.

Thanks for straightening me out, Thomas. Despite many hours spent poring over contracts, the significance frequently escapes me. I checked the contracts (licence agreements) that I have with several foundries and found that either I retain the trademarks, or if not, they revert to me when the agreement is ended.

The only caution related to this, and I can’t reveal which contract(s) it’s in: if the contract is ended by either party, and the type designer subsequently decides to market either the font software or the trade name, then the original publisher is entitled to a cut of the revenue, based on its contribution to the font software or brand equity built up in the trade name by its marketing. The percentage to be negotiated.

In a situation where the publisher holds the copyright to the font software, but not the trademark, then if the designer wants out, and decides to market the typeface elsewhere, that could be problematic — presumably he/she would have to create a font with somewhat different software than the original publisher’s.

Thomas Phinney's picture
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Ouch, that would be a painful contract to deal with, afterwards! I can see the reasoning behind that clause, but still….

With regards to font software copyright, all I can say is that when it’s a non-exclusive license arrangement with Adobe, it seems to be the case that the designer can take the same stuff they gave us, and license or modify it as they please. This was at least the case with Arcana. Although we will provide Gabriel the version that we have done our work on, he cannot take that version and license or sell it to others. However, whether this works for everyone depends on their particular contract terms; this should not be taken as a general comment about all such non-exclusive contracts, or even all of Adobe’s non-exclusive type licensing contracts.

Beyond this, I figure I ought to bow out of this discussion. The whole thing is ultimately a legal minefield, and I imagine Adobe’s lawyers would rather I did not discuss this stuff, given the litigious age we live in. :-(

Cheers,

T

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Eric Pitcock's picture
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Can we sum this up in a book, please?

petra weitz's picture
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FYI
FontFont designers retain the copyright to the fonts no matter how much work FontShop International has actually contributed to the ready product.
FontShop International registers the name as a trademark, but should the contract be terminated, the designer may use the name (without the prefix FF), provided FSI gets refunded for any legal fees incurred (usually only the fee to the trademark office).
Thankfully, we only had one contract termination in our history, Thesis, and you all know that Lucas is still using the name.

Nick Shinn's picture
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>Ouch, that would be a painful contract to deal with, afterwards!

When contract disputes can’t be readily resolved, the use of an arbitrator to settle differences will remove the need for costly legal battles.

This can be stipulated upfront in a contract, by either party.

Titus Nemeth's picture
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gorod — russian for city.

hrant, unfortunately you are right. but being inconspicous doesn’t have a positive impact on the situation, more likely it makes it even worse, letting (in this case) corporations be successful with their scare-tactics.

“there can’t be a revolution in germany, because for that purpose, you’d have to step on the lawn.” (very free translation)

:-)

Bill Troop's picture
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> I imagine Adobe’s lawyers would rather I did not discuss this stuff, given the litigious age we live in.

Quite right, Thomas. After all, Adobe’s Donna Kolness makes Melissa Hunt look like a real pussycat.

[Moderator comment: This post has been edited for name calling and inuendo.]

Nick Shinn's picture
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Bill, that was cheap, dirty, and sexist.

Bill Troop's picture
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Oh, a plague on North American PC, which will get you censored for _not_ using a four-letter word! (and regarding which, see Nikki Finke’s latest column in LA Weekly, which you can get off the Drudge Report) … but I ought to apologize for witlessness, because if I had my wits about me, I would have brought up my one experience with trademark infringement, i.e., when Adobe sent me a slew of threat letters warning me against using ‘their trademark’ and ‘their typeface data’ in any product of my own. Needless to say, the trademark and data they referred to were mine. I told Adobe I was using the data regardless, and if they didn’t like it they could sue me. As that was some years ago and I haven’t heard a word from them since, it seems clear that their threat was empty, designed merely to scare a designer whom they had treated badly. One thing I have observed: when an industry is growing, there is no litigation; when an industry is dying, there is nothing but litigation.

What effect did it have on me? I went from working on type for at least 60 hours a week, to working on type for about 60 hours a year. The advantage is that I started doing some other interesting things that were important to me; the disadvantage is that I would have preferred to work on type, but who could deal with such a poisonous environment? I didn’t go into type to be reviled and sued by unspeakable persons like Adobe’s Donna Kolness. I went into type to create beautiful text.

That said, I am looking at a contract from a perfectly nice foundry, but I can’t yet bring myself to sign it. I fear what may follow. However, this time around, if it actually happens, I ought to have enough experience to sign a better contract. I never looked at Adobe’s contract — I was too happy to have it. I trusted them implicitly, believed in their fundamental goodness.

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In addition to my previous posts, following are additional points:

The Berthold Exklusiv Collection was conceived by GGL about 50 years ago and completed by the time he left H. Berthold AG in 1990.

The type business was very different back then as the Berthold typefaces were specific to Berthold equipment, as was the case with Linotype and Monotype. When a designer had one of their typeface designs published by Berthold, the agreement provided that Berthold was the owner of the intellectual property rights because of the high costs of bringing a Berthold typeface to market.

The creative process of digitizing and creating the full character sets were done under GGL’s supervision at the Berthold Type Atelier in Munich. In most cases only the essential characters were digitized and then the remaining characters were then created by Berthold. H. Berthold AG was always listed as co-author of the typeface designs.

The font software for the Berthold Exklusiv Collection was developed by Berthold. When Berthold Types took over the library, Poppl and Jaeger insisted on renegotiating their original contracts and wanted ownership of the Berthold copyrighted font software.

Albert Boton had already made a deal with another foundry (using Berthold’s copyrighted data) for the other typeface in the Berthold library and only wanted to sign an agreement with the typeface Boton and have Berthold withdraw Agora.

Berthold typeface designs can be found in the libraries of Bitstream, E+F, Linotype, Paratype, Scangraphic and URW all used without permission with no money going to Lange, other Berthold designers, or to Berthold for that matter.

FF Blur is Lange’s AG Old Face processed through Photoshop with the “blur” filter. FSI does not pay Lange royalties or Berthold for use of the data to create a derivative.

Problems with typeface names were virtually non-existant (by today’s standards) until the advent of PostScript and programs like Fontographer that enabled hundreds of people to produce fonts. Berthold’s trademarks have been around for decades.

With all due respect to Mr. Shipovsky (FontCity) but his Russian attorney’s “opinion” is worthless in regard to U.S. and EU law.

Finally, there is a co-existence agreement between Linotype and Monotype for the “Times” trademark and Adobe pays royalties to both companies for use of it.

The fact that both companies use the “Times” trademark, therefore, should not be seen as the right to use other people’s trademarks for new typeface names (e.g. Boogaloo Boulevard, Omicron Delta, City of – ). Boulevard and Delta have been trademarks owned by the Berthold foundry for decades.

John Baichtal's picture
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Sad.

miles newlyn's picture
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>FF Blur is Lange’s AG Old Face processed
>through Photoshop with the “blur” filter. FSI
>does not pay Lange royalties or Berthold for
>use of the data to create a derivative.

Disgusting.

Bill Troop's picture
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Just to take a little point here, I suspect the ‘Times’ trademark is not capable of being defended because of its decades-prior use by ATF, for example, as in Times Gothic, a typeface shown (but not identified) by Tracy as an example of Will Ransom’s design. ‘Times Roman’ perhaps, but not ‘Times’ per se in a typeface. In fact, if anything, Mono and Lino are in violation of ATF’s rights for attempting to assert trademark ownership in any typeface containing the word ‘Times’. One has got oneself into a very absurd position when one is reduced to discussing what rights Lino and Mono might have in Times and whether Adobe should be paying for those rights or not.

One wonders if there has been any friction between Agfa and Berthold over the use of tradenames such as Bembo? For example, Mono made it impossible for Scangraphic to sell its versions of faces such as Bembo, Perpetua, Centaur & Poliphilus on the grounds that the license was for Scangraphic’s proprietary format and could not be applied to the Postscript conversions.

With all this dreadful litigation going on, we still don’t have a usable digital version of Bembo. The Mono version is incorrectly designed. The Berthold version is correctly designed but only has two f-ligs, and those incorrectly designed. The illegal Scangraphic design is also correctly designed but the five f-ligs are merely generic, much like Adobe’s ahistorical f-ligs for the ‘expert’ versions of the Berthold faces they used to license. The last thing they were was expert. I wonder what drudge designed them?

License, license, and litigation, yak-yak, and yet nobody ever solves the problems in the fonts. As the redoubtable Ed Mendelsohn said years ago, ‘I would pay good money for a usable version of Bembo, and this despite the fact that I have two children to educate.’

Harvey, the last time I saw you your jaw had fallen and you couldn’t get it up. Is it now in working order?

Ingo Preuss's picture
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> FF Blur is Lange’s AG Old Face processed
> through Photoshop with the “blur” filter. FSI
> does not pay Lange royalties or Berthold for
> use of the data to create a derivative.

One cannot nevertheless at all have so little knowledge of fonts. Or?

[preusss]

William Berkson's picture
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In response to Miles’ and Ingo’s posting I compared FF Blur and Akzidenz Grotesque. There are a lot of differences in letterforms. For example compare the lower case a and c in the two faces. I guess this is their point — a simple check shows Hunt’s accusation is unfounded.

Victor Caston's picture
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Actually, it’s worse than that. Hunt claims that it is a filtered version of AG Old Face. Take a look.

Victor

Anonymous's picture
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>I was talking about public discussion. And
>your anonymity helps prove my point.

Being inconspicuous in public discussion is more effective than sending cease and desist letters?

Bill Troop's picture
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A superficial glance reveals that if Brody used someone else’s underlying font, it probably wasn’t AG or AG Old Face but more likely one with a more open C. Harvey, do you have any proof N Brody did this? I’m open to persuasion but I’ll require proof. That takes care of the first issue: did he do it? The second issue is, what does it matter? (In this particular case, that is, for a dozen obvious reasons.)

And by the way, if you were going to use the PS Blur filter, why on earth would you bother to use a vector font as your input? You could use a scan of anything — that would be the obvious thing to do. For the moment you’ll have to count me amongst the rude unpersuaded.

And by the way, suppose Brody didn’t use vector data, but used a scan from some old specimen book. Would you still have an issue with that?

Here’s another question: to what extent is Concorde a Times clone? As I understand the story, it was intended as a Times clone, even though it doesn’t really look like one. But in intent, it is, to a certain extent, a Times clone. Does anyone have an issue with that?

And what about that version of AG that actually is a Helvetica clone? Is Berthold expected to pay Lino, or the estate of Max Miedinger, royalties on that?

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Right from the beginning, I was convinced that Avenir is the better Futura.

Adrian Frutiger

Does Linotype pay royalties to Paul Renner?

Hrant H Papazian's picture
Joined: 3 May 2000 - 11:00am
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Can somebody send me Bill’s post of Tuesday, June 22, 2004 — 10:44 am please?
I heard it had sex in it.

And what the hell happened to letimes.com? Bill, if there was one way you could make yourself useful to the type world, that was it, but you’re just sitting on the idea.

hhp

John Butler's picture
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Bill Troop writes:
With all this dreadful litigation going on, we still don’t have a usable digital version of Bembo.

What do you think of Aetna?

Topic locked