Are you allowed to digitize an old font and sell it by its old font name?

Uli's picture

A Typophile member asked me by email the question, whether he is permitted to digitize an old font no longer sold by the original foundry and then sell this digitized font using the old font name.

Since this is a question which will interest other Typophile members too, I summarize here what I wrote to the member, who asked me the question. While the trademark laws vary from country to country, there are usually two principles applied in most countries and summarized here at the Wikipedia website http://en.wikipedia.org/wiki/Trademark as follows:

"Proprietary rights in relation to a trademark may be established through actual use in the marketplace, or through registration of the mark with the trademarks office of a particular jurisdiction."

The Typophile member asked me, whether he is permitted to digitize the old font "Erbar Medieval" and sell it by its original font name "Erbar Medieval".

Here is a sample of one of the bold cuts of this old font

www.sanskritweb.net/temporary/Erbar-II.jpg

drawn from a book by Georg Kandler

"Erinnerungen an den Bleisatz", Volume 1, 1995, page 26
("Reminiscences of the foundry type era")

Erbar Mediaeval is a typeface which was designed by the German Jakob Erbar, who died in 1935 in Cologne in Germany.

Even if fonts were copyrightable in Germany (which they are not), the "70-years-post-mortem" copyright protection period would have expired a couple of years ago (1935 + 70 = 2005).

However, fonts may be registered as designs in Germany for a period of 25 years starting with the first publication of the font. This period expired too.

Since Erbar died in 1935, all his copyrightable works (e.g. his books etc.), if any, and all his fonts registered as designs, if any, have already fallen into public domain.

Therefore today nobody can can claim any copyright to the works and to the fonts made by Jakob Erbar, because Erbar's death was more than 70 years ago.

Do not make the legal mistake of claiming copyright to digitizations of the public domain Erbar fonts, because nobody can claim copyright to something that is in public domain. Neither the heirs of Erbar nor anyone else can do that. Therefore, a digitization of Erbar Mediaeval will be public domain too, just like the original font made by Erbar is public domain.

Many people at the Typophile website erroneously think that they can become the copyright owner of a public domain font by digitizing this public domain font. This is legal nonsense.

As regards the name of a font, it may be registered forever, provided you pay the trademark registration fees forever. I did NOT research in depth whether anyone registered the name "Erbar Mediaeval" for a font. Such a research is cumbersome and time-consuming, because the name of a product may be registered in any country of the world.

As regards the website www.bauertypes.com, a certain "c. Dr. Ferran, nº 6-8 Entlo 2º A 08034 Barcelona Tel. +34 931127993 - Fax +34 932524806" seems to be responsible for this website. At the subsite

www.bauertypes.com/categorias/index/32/quienes-somos

we read:

"Trademarks: BauerTypes, como principal fabricante de tipografía en la era de plomo posee la patente o TradeMark de un sinfín de tipografías dentro del marco de los grandes clásicos. Entre las más destacadas se encuentran: ver listado"

However, the trademark list

http://www.bauertypes.com/arxiu/Pdfs/c/catalogo_nd.pdf

does not even mention fonts by Erbar as trademarks

The Neufville website www.neufville says here:

http://www.neufville.com/nd/uk/colof_uk.htm

"... Erbar Mediaeval ... are trademarks of Bauer Types SA"

"Neufville Digital makes no warranties as to the completeness or accuracy of this information."

The information that "Erbar Mediaeval" is a trademark of Bauer Types SA is inaccurate, because neither of the two requirements for a trademark protection are met:

Firstly, "Erbar Mediaeval" is not protected by registration
Secondly, "Erbar Mediaeval" is not protected by actual use

"Proprietary rights in relation to a trademark may be established through actual use in the marketplace, or through registration of the mark."

Since neither Bauer nor Neufville sell a font called "Erbar Mediaeval", this font name is no trademark by actual use. To mention a name of an old font in a list does not make you the owner of a trademark. You have to sell the font to achieve protection by actual use.

This means that the Typophile member is permitted to digitize the public domain font Erbar Mediaeval and to sell this font by its original font name Erbar Mediaeval.

However the Typophile member cannot claim copyright to his digitization of the public domain font. But he may sell the font against the payment of a font price (but not against the payment a copyright licence fee).

Remember: If you digitize an old public domain book, you do not become the copyright owner of this public domain book. The same holds true for old public domain fonts, irrespective of whether fonts are copyrightable or not.

cromy's picture

I am the member who asked Uli about this old font. If someone thinks I should not digitize or sell the font under the original name, I would like to hear his opinion here. Until now I am convinced the typeface has all the public domains attributes. Thank you.

oldnick's picture

Mergenthaler Linotype distributed Erbar Sans, and doubtless trademarked the name. I would check with their digital successors before proceeding. Several years back, I--and several other foundries and myfonts.com--got sued by Berthold over the use of the names City and Boulevard in any way, shape or form in a font name. My "offenders" were Boogaloo Boulevard NF (nothing AT ALL like Berthold Boulevard) and City SLicker (nothing AL ALL like Berthold City)...

jfp's picture

Really not sure about this:
"Therefore, a digitization of Erbar Mediaeval will be public domain too, just like the original font made by Erbar is public domain."

Its really depending what you're doing as designer. Based on a the "fact" that new technologies demand new designs (thanks Mr Zapf), I assume that a good designer will not just scan and do autotrace but will really design a typeface in the style of the old typeface.

Its what happening all the time in the history of typeface. *Adobe Garamond* and so on.

But indeed, what ever new interpretation of a recent design, contact first any people connected with the original typeface or current digital version.

Uli's picture

oldnick:

> Mergenthaler Linotype distributed Erbar Sans, and doubtless trademarked the name.

Prove it!

As regards "Erbar Mediaeval" (in Germany also spelled "Erbar Mediäval"), this font name consists of two components:

1) "Erbar" is the name of a German typographer
2) "Mediaeval" is the generic German term for "old style"

1) ad "Mediaeval" as a Generic term:

Generic terms such as "Mediaeval" cannot be registered. Harvey Hunt even tried to register the generic term "Standard", but did not succeed.

www.sanskritweb.net/forgers/standard.pdf

2) ad "Erbar" as the name of a person:

The name "Erbar" without any additions cannot be registered as a font name.

The German typographic company Schumacher-Gebler in Munich recently tried in vain to register the name "Erbar" for a font. The application was rejected by the German Trademark Office with the remark "Eintragung nicht möglich" (= "Registration not possible").

see www.sanskritweb.net/temporary/Erbar-Trademark.pdf

But the combination "Erbar" + "Mediaeval" = "Erbar Mediaeval" could be registered as a trademark for the font shown above

www.sanskritweb.net/temporary/Erbar-II.jpg

As far as I know, nobody ever tried to register this font name, and as far as I know, nobody offers the font "Erbar Mediaeval" for sale. Hence, whosoever comes first and publishes a digitization of the "Erbar Mediaeval" font, may call it "Erbar Mediaeval".

cromy's picture

@oldnick - That is a horrible story ! I don't know how could that happen. Seems nowadays there are a lot of people in the font business who spend more time sueing others than making fonts. I see you have an impressive portfolio of lovely old style typefaces - and what a coincidence! a font from the same period (1910 -1913) and from the same part of the world - I'm talking about Kleukens Antiqua :

http://new.myfonts.com/fonts/nicksfonts/kleukens-antiqua-nf/

Can you, please, give me a few hints, what measures did you take to assure that nobody sues you (hope not already happened) for reviving and selling this typeface with the original name ? Thank you

Uli's picture

As regards Harvey Hunt, read his famous claim
on page 7 of the file mentioned above:

www.sanskritweb.net/forgers/standard.pdf

To the best of my knowledge and belief, after
inquiry, there is no “standard” font in the
type industry.

To the best of my knowledge and belief, after
inquiry, the term STANDARD as understood in
the type industry has no significance other
than to identify the typeface marketed by
Berthold under the mark BERTHOLD STANDARD.

I wonder whether the inmates of a lunatic asylum
would agree to this utter nonsense.

oldnick's picture

@uli...

I don't need to prove anything; I merely made a "better safe than sorry" suggestion.

Yes, copyright laws differ from country to country: what Germany says cannot be done may be perfectly allowable under US copyright law. For example, Berthold claimed copyright to the name Boton BE/BQ, which effectively prevented Alfred Boton from using HIS OWN NAME for any other of his works in the US.

Lawsuits don't have to have a sound basis in order to be filed but, in US courts at least, once a person is sued, it is his or her responsibility to prove that the claims are bogus: in other words, in civil court, one is presumed guilty unless he or she proves otherwise. So, I repeat: better safe than sorry.

Uli's picture

jfp:

Really not sure about this: "Therefore, a digitization of Erbar Mediaeval will be public domain too, just like the original font made by Erbar is public domain." Its really depending what you're doing as designer. Based on a the "fact" that new technologies demand new designs (thanks Mr Zapf), I assume that a good designer will not just scan and do autotrace but will really design a typeface in the style of the old typeface. Its what happening all the time in the history of typeface. *Adobe Garamond* and so on.

Is this illegal Copyright Revival Procedure customary in France too?

Is it customary in France to modify public-domain works and to rename them

Porchez Balzac
Porchez Gauguin

and to add Revived Copyright Notices to the public-domain works

Porchez Balzac © Copyright by Jean F Porchez 2011
Porchez Gauguin © Copyright by Jean F Porchez 2011

Ray Larabie's picture

So, I repeat: better safe than sorry.

You said it. It's getting to the point where I think I should name fonts with strings of random letters to avoid getting more C&D letters.

Richard Fink's picture

@ray
Seriously? Whose jerking you around about names?

@oldnick
"Berthold claimed copyright to the name Boton BE/BQ"
Can't claim copyright to that. Trademark perhaps?

oldnick's picture

Trademark perhaps?

TM it is...

Uli's picture

Boton is Registered Trademark for entire Europe till 2020

www.sanskritweb.net/temporary/Boton-Trademark.pdf

Thomas Phinney's picture

"Do not make the legal mistake of claiming copyright to digitizations of the public domain Erbar fonts, because nobody can claim copyright to something that is in public domain. Neither the heirs of Erbar nor anyone else can do that. Therefore, a digitization of Erbar Mediaeval will be public domain too, just like the original font made by Erbar is public domain."

"Many people at the Typophile website erroneously think that they can become the copyright owner of a public domain font by digitizing this public domain font. This is legal nonsense."

Uli is misrepresenting both the views of "many people at the Typophile website" and as far as I can tell, the reasonably settled state of US law on the subject, by conflating the underlying design and the digital representation.

What is commonly believed and claimed is that by digitizing a public domain *design*, one may create a digital font and have copyright on the font. This belief is founded on pre-existing practice, strongly supported by both the broad situation and the details of the summary judgment of Judge Ronald Whyte of the US 9th Federal District Court in the Adobe v SSI case.

http://directory.serifmagazine.com/Ethics_and_Law/Copyright/judgement.php4

Specifically, Whyte found:

"The evidence presented shows that there is some creativity in designing the font software programs. While the glyph dictates to a certain extent what points the editor must choose, it does not dictate every point that must be chosen. Adobe has shown that font editors make creative choices as to what points to select based on the image in front of them on the computer screen. The code is determined directly from the selection of the points. Thus, any copying of the points is copying of literal expression, that is, in essence, copying of the computer code itself."

Whether or not the abstract design is protected by copyright (which it sadly is not in the USA), the placement of on and off-curve points in digitizing that design is itself protected by copyright in the USA. Judge Whyte found this to be the case as a simple matter of law.

Neither Uli nor I is a lawyer, and the sensible thing to do would be to consult one on these sorts of questions.

The other sensible thing to do would be to consider the past behavior of the most likely complainant, Berthold, the likelihood of them suing you, and whether you are willing to contend with such a lawsuit, even if you have reason to believe you could win in the end.

Cheers,

T

Bendy's picture

>Whether or not the abstract design is protected by copyright (which it sadly is not in the USA), the placement of on and off-curve points in digitizing that design is itself protected by copyright in the USA.

Interesting. Looking through the telescope the other way, does that then mean that any pre- or non-digital face can be revived/digitised without infringing copyright (positioning nodes and bcps from scratch)?

Igor Freiberger's picture

Let me add a small information.

A type design from someone dead in 1935 is in public domain in almost all countries –standard copyright length varies from 50 to 70 years. So, it can be freely reused to create new fonts. But the new font based on that type design is not in public domain.

See: a new font has other additional works, as digitalization, OT programing and kerning. This is new intellectual creation and cannot be freely reused. Thus, the font cannot be freely copied, its use must follow the EULA conditions.

What remain in public domain even in the new font is the type design. This means anyone can produce another font using the same design. There is no illegal copy of the glyphs as their shapes are public (of course, I'm talking about a simple reedition of a font in new format. maybe with small adjusts, and not a revival).

In some countries, there is a split between copyright and software protection. Under this legal model, this new font wouldn't have elements protected by copyright (the only artistic creation is the type design and it's expired). But anyway this new font cannot be copied due to software protection –which actually is very similar to copyright, but preserves technical solutions instead of artistic creations.

Analogy with music applies. A piece from Debussy is in public domain; it can be freely performed and recorded by any orchestra. But a CD with his works is not public domain –it brings efforts by other people, some of them also protected by copyright, as performers– and cannot be copied.

Almost all Western countries follow these guidelines, with small variations, as Intellectual Property rules proposed by WIPO were adopted in a near standard basis.

Richard Fink's picture

Since Adobe v SSi has been brought up, the following is worth a read:

The SSI/Adobe Case

As for myself, as a matter of law, not morality, I agree with Luc Devroye's opinion:

"I think that this particular judge was taken for a ride by the lawyers of Adobe and Emigre. He made an erroneous judgment, and Paul King was within his legal rights."

Devroye adds:

"Morally, Paul King's actions were deplorable, but that is another matter."

Me, I don't know enough about the case. Or King's motives.

Ray Larabie's picture

@Richard
Seriously? Whose jerking you around about names?

monolithic font corporations
rock bands
movie companies

The only plus side to making fonts based on trademarked logos is that it's kind of fun to try to guess who the next C&D letter is going to come from. On my list of reasons why I don't recommend making free fonts: contacting every free font site to recall a font release over a decade ago is a frustrating/humiliating task. At least with commercial vendors, I can recall a font in a matter of minutes. A few weeks ago it took me 5 solid days to attempt to recall a free font from a zillion font sites who deliberately hide their contact information.

Uli's picture

typodermic:

> A few weeks ago it took me 5 solid days to attempt to recall a free font from a zillion font sites

This is surprising, since the trademark law does not apply to non-trade things.

If a font is really for free, i.e. if the font is not a commercial commodity sold against payment, but a font made just for fun, the trademark law does not apply at all to such a non-commercial, non-trade object.

For instance, if someone writes the trademark "Pepsi-Cola" just for fun on the hood of his old car, he cannot be sued by PepsiCo Inc. The same holds true, if someone making a free font as a pastime or leisure activity labels this free font "Pepsi-Cola".

Even a novelist cannot be sued by PepsiCo Inc, if the novel begins with the sentence:

"The trademark shyster with his greedy eyes was drinking Pepsi-Cola"

If all this were forbidden by trademark law, you could not even enter a drug store or a pub and say: "I want to drink a Pepsi-Cola", without fearing to receive a cease-and-desist letter by some trademark shyster.

Richard Fink's picture

Thanks, Ray. Interesting. It's the technological times we live in. Even pre-internet, there were law firms who specialized in this. If there was any similarity in the name at all, a pre-prepared letter went out. Like a collection agency. The one time it happened to me, I had to have an attorney respond to explain that they were off the wall and that was the end of it. That's the problem - the costs of defending. In your case, the cost of a recall.
Is it fair to call it harrassment? Well, sometimes it most definitely is. Competitive gamesmanship.
And once in a blue moon it's legitimate, of course.

Thomas Phinney's picture

I wrote something more detailed and critical in this post, but I turned around and immediately deleted it because I realized I just don't want to engage any further, and rather revert to my policy of not responding to anything Uli says.

In place of that lengthy post, I'll just reiterate that Uli is not a lawyer. I in return am certainly not offering legal advice, but merely trying to suggest that some of the advice being offered here has been highly suspect. Go talk to a lawyer if you want legal advice. Also, do some reading on your own. Read the Adobe vs SSI decision, which I linked to earlier. Read up on trademarks.

I will say in parting, as somebody who has been around the block a few times, if I was given a choice between cutting off one of my own toes and digitizing and naming a font as described here, I would carefully consider the balance between these options, and ask "which toe"?

Cheers,

T

oldnick's picture

Uli is not a lawyer.

Nor, it would seem, is he familiar with American Civil Law. I reiterate, in U.S. civil courts, a case does not have to have merit in order to be filed, and defending one's self against a lawsuit, frivolous or not, can be costly and/or time-consuming.

Igor Freiberger's picture

Trademark law does not apply to non-trade things.

This is wrong. Everything eligible to be protected under any category of intellectual property (what includes trademark for font names) would keep its privileges no matters if it is commercially used or not. To freely distribute a font is not a right withdrawal. Of course, commercial use is the main privilege granted to its owner, but it's not the only one.

Usually there is confusion between trademarks, patents, industrial designs and copyrights. When discussing these matters in relation to fonts, it may refer to trademarks (font name), copyrights (shapes) or copyright-related issues (codes, mappings, kerning, hinting, etc.).

I suggest some survey in WIPO, where one finds much information about this and also some ways to solve international infringements.

In U.S. civil courts, a case does not have to have merit in order to be filed.

Unhappily, it's also this way in many other places. And even in countries where legal procedures permit the judge to refuse a case due to complete lack of minimum sense, this is not always done due to excessive number of cases.

There are notorious cases where people sued God, Devil, Abraham, Adam, etc. and the procedure advanced for weeks or months before a judge finally aborted it.

Last year a person filed dozens of identical cases in Rio because he did bet and lost in Brazilian Federal lottery. The Federal Bank who manages the lottery was even notified to answer some of the cases before Judiciary finally perceived what was happening...

Uli's picture

Freiberger:

> Trademark law does not apply to non-trade things.

> This is wrong.

If you get a daughter (undisputedly a non-trade thing) and you name your daughter Mercedes, neither the Mercedes car company nor any other company claiming trademark rights to the name Mercedes can sue you for trademark infringement.

Igor Freiberger's picture

Uli, the problem here is the difference between goodies freely available (as a free font) and things which cannot be subject of commercial operations (as the daughter in your example). These last does produce trademarks or any other intellectual property. But a free font is not an example of this category.

You call these things non-trade. I'm not sure (as my English is far from good) but I thought non-trade was related to tertiary sector and non profit actions, not? In Roman Law we have the expression "goodies out of commerce" to indicate things like human beings, personal names, sunlight, wind, rain, etc. Probably there is a Common Law equivalent.

Anyway, a free font can have trademarks or other IPs associated.

Sidenote: after Jellinek's story, it would be funny if Mercedes sue someone who name a daughter Mercedes.

Richard Fink's picture

"Go talk to a lawyer if you want legal advice."

I think this misses the problem, Thomas. Why is it so hard to figure out what the law is? What's permissible and what isn't? What kind of situation are we in that we need to consult with lawyers at every turn? (Which of course puts the people with the money for lawyers at a natural advantage.)

If there's any lesson to be had in this thread (doubtful, I know, considering the BS level), I think that's it.

Rich

Nick Shinn's picture

What kind of situation are we in that we need to consult with lawyers at every turn?

Not every turn. If someone is going to adopt appropriation as a business model, then it would be foolish to not take legal advice.
On the other hand, it's possible to design new typefaces with new names, and get by without a lawyer.

agisaak's picture

Nick Shinn writes:

On the other hand, it's possible to design new typefaces with new names, and get by without a lawyer.

With the myriads of fonts available, though, determining whether you've really got a new name can be tricky. Of course, the likelihood that an original font shares a name with another font which it closely resembles is extremely small (unless, of course, you're dealing with a name like 'Trajan' which suggests a particular pedigree), but even if the fonts are clearly distinct you still risk claims of trademark infringement.

André

Richard Fink's picture

@nickshinn

"On the other hand, it's possible to design new typefaces with new names, and get by without a lawyer."

I'm not so sure about that. Have you spoken to a lawyer about this?

Richard Fink's picture

BTW - I should make it clear that I'm not referring to behavior that's stupid by anyone's lights. If you look and see that someone has a trademarked name for a font you're either asking for trouble or out to prove a point if you name your font the same.

But in that case there is a Trademark registry to check. It's rather clear cut. Very little else is, in comparison.

Here's what one author has to say about this. (All of these instances are endnoted with citations from the actual cases in the original):

 "I would not have imagined that a temporary image of a Web page captured in the cache of my browser counted as a “copy” for the purposes of copyright law. I would have thought that it was fair use for a company to photocopy articles in journals it subscribed to, and paid for, in order to circulate them to its researchers. If a conservative Web site reposted news articles from liberal newspapers with critical commentary, that, too, would have seemed like fair use. I would have thought that it was beneficial competition, and not a trespass, for an electronic “aggregator” to gather together auction prices or airline fares, so as to give consumers more choice. I would not have thought that a search engine that catalogued and displayed in framed format the digital graphics found on the Internet would be sued for infringing the copyrights of the owners of those images. I would not have thought that I might be sued for violating intellectual property law if I tried to compete with a printer company by making toner cartridges that were compatible with its printers.

 "The examples go on. I know that the “research exemption” in U.S. patent law is very tightly limited, but I would have laughed if you had told me that even a research university was forbidden from doing research unless that research had no conceivable practical or academic worth - in other words that even in academia, in a project with no commercial goal, the research exemption only covered research that was completely pointless. Why have an exemption at all, in that case? I would have told an academic cryptography researcher that he need not fear legal threats from copyright owners simply for researching and publishing work on the vulnerabilities of copy protection schemes. I would not have thought that one could patent the idea of having an electronic Dutch auction on the Internet, working out the daily prices of a bundle of mutual funds through simple arithmetic, or buying something online with one click. I would have assumed that celebrities’ rights to control their images should end with their deaths, and that courts would agree that those rights were tightly limited by the First Amendment. Yet, in each of these cases, I would have been wrong, or at least I might be wrong — enough that a sane person would worry. Not all of the expansive claims eventually triumphed, of course, but some did. Guessing which would and which would not was hard even for me, though, as I said, I teach intellectual property law. You, probably, do not.

From The Public Domain: Enclosing The Commons Of The Mind by James Boyle
Boyle is a Professor of Law at Duke Law School

So, which lawyer are you going to consult? The guy who did the closing on your house?
You might as well, for all the difference it will make.

Don't get me started... I'm really tired of dealing with geniuses who think their creations - or a single thought in their heads for that matter, and that includes me - owes nothing to what came before. Appropriation, my ass.

Uli's picture

Although this painting shows the trademark Pepsi-Cola

http://archive.liveauctioneers.com/archive4/wittlinandserfer/19533/1713_...

the painter cannot be sued for trademark infringement.

Thomas Phinney's picture

Nonsense, of course he can be sued. Whether or not the lawsuit would be successful is another matter.

Richard: I don't think the situation at hand is actually all that complex. If *I* were considering doing it, I'd assume that the printed design from pre-1935 is fair game as a source, that other people's recent digital font versions of that same design are not, and that the status of the name is uncertain but not worth the risk given that Berthold seems to have some claim on it. It's just that I know better than to offer legal advice as such.

I am myself on the verge of taking a printed work (rules for a complex strategy game) that was created over a couple of decades (1960-1983) by ongoing collaboration of a loose evolving and changing bunch of people who never bothered even sticking their names on it, and making my descendant of it publicly available. I'm putting a fair bit of work into tracking down some of those people first, to see if I can get their blessing and reassurance that such availability is cool with them and the kind of thing that they think the creators would have approved of. But technically there is a legal risk involved, and I recognize that, even if I think the likelihood of anyone who has a claim on some portion of the game rules turning up and objecting is vanishingly small.

Cheers,

T

Uli's picture

Thomas Phinney:

> if I was given a choice between cutting off one of my own toes
and digitizing and naming a font as described here,
I would carefully consider the balance between these options,
and ask "which toe"?

> Berthold seems to have some claim on it.

You may start by cutting off your left toe.

Not Berthold, but Bauer claims US trademark rights:

see www.sanskritweb.net/temporary/Erbar-Trademark2.pdf

But since Erbar cannot be registered in Europe

see www.sanskritweb.net/temporary/Erbar-Trademark.pdf

registration for the USA is useless for Europe.

The Swiss Bauer outfit is a trademark grabber
specialized in writing cease-and-desist letters.

This one-man-outfit never made a digitization
of the old Erbar Mediaeval font.

Thomas Phinney's picture

Ah, that's a different kettle of fish. My apologies for mistaking the one for the other. They are rather different entities.

Cheers,

T

Richard Fink's picture

@thomas phinney

I'm just tired of hearing "consult an attorney". Intellectual Property law is a specialty and while it's been a long while since I've sought out a good IP attorney - I would expect a billing rate of at least $300.00 an hour. But I'm probably out of step and it's probably more like $500.00. And the answer to my questions, in all but the most clear-cut of cases would be, "Well, give me a retainer of $10,000.00 and I'll look into it."

By chance, I will be at Duke University over a long weekend in February and I'm going to see if I can interview Professor Boyle. Maybe he can even shed some light on fonts.

As for your project, it sounds like you've got more patience than I do!

Rich

Richard Fink's picture

BTW - I unexpectedly found a behind-the-scenes and extremely readable account by someone who has worked for years as Literary Expert Witness in copyright cases.

I know of him because of his writings on Prose and Rhetoric: Richard Lanham, former Professor at UCLA.

For anyone who finds the legal stuff interesting:
The David Mellinkoff Lecture: 8 February 2007, UCLA Law School

Fun reading and an eye opener for many, I'm sure.

Rich

Nick Shinn's picture

Maybe he can even shed some light on fonts.

I doubt it.
People who don't know typography, whether scientists or lawyers or whatever, just don't get it.
And that's understandable, because one has to be a multidisciplinarian to really contribute -- which is why, for instance, a lawyer specializing in medical patents may well have a degree in pharmacology and another in law. (I know someone who does.)
Now show me the scientist or lawyer who claims to be an expert on type science or type law who actually has some professional experience or academic qualification in graphic design or typography.
I rest my case.

Uli's picture

Nick:

> one has to be a multidisciplinarian ... a lawyer specializing in medical patents may well have a degree in pharmacology and another in law. (I know someone who does.)

I agree.

In Germany, for patent lawyers, this is a requirement.

For instance, at this German patent lawyer website, selected at random by me

www.patentoffice.de/html/our_patent_attorneys.html

all the patent lawyers listed have diploma in chemistry (Dipl.Chem.) or in physics (Dipl.Phys.) or in engineering (Dipl.Ing.) or in biology (Dipl.Biol.), etc.

Richard Fink's picture

I know it's momentous that Uli agrees with Nick but I have to bust the feel-good bubble: you're both as wrong as wrong can be.

Typefaces enjoy no claims of copyright. This is flat-out indisputably true.
Why would an IP attorney need to know a damned thing about type to function well?
It's irrelevant.
There is no need to be an expert on type science. Academic qualifications in graphic design or typography are equally irrelevant.

The claim is that fonts are copyrightable as software, not type. It is the original expression as it might or might not exist within the font as software that is the issue. Software is software, right? Code.
Type, as such, DOES NOT ENTER INTO IT except for how the code, as original expression (or not), shapes the resulting type. The design of that type is irrelevant. All typefaces are the same for the legal issues at hand. Pick a font, any font, doesn't matter.

Thomas Phinney's picture

Now show me the scientist or lawyer who claims to be an expert on type science or type law who actually has some professional experience or academic qualification in graphic design or typography.

For lawyers, that would be Frank Martinez, in NYC—which is probably why he's the single most popular lawyer for indie type foundries. I'd go straight to him in an instant if I was operating independently and had font legal issues I needed dealt with.

Type, as such, DOES NOT ENTER INTO IT except for how the code, as original expression (or not), shapes the resulting type....

Your initial point is right I think, as is the point that the design of the type is irrelevant (unless a design patent is involved, or you're outside the USA). But I don't agree with your conclusion that specific expertise is irrelevant. That specific expertise is about legal issues around fonts, not necessarily about type design per se.

I strongly believe it helps to have a lawyer who knows and understands the exact same stuff you're talking about, BEFORE you go and talk to them about it. Somebody who has already read the various legal info specifically relevant in this area, including understanding the published position of the US Copyright Office on the subject, as well as the Adobe v SSI case, and potentially others, depending on the nature of the claim. Do you want to pay for hours of their paralegal's time to find stuff, and then for the lawyer's time to read it? I know I don't.

Note in particular that there are issues specific to type in IP law, where it's not like other software. Take for example when Agfa Monotype sued Adobe over font embedding rights in sub-licensed fonts. That was very interesting, particularly when it got down to whether the font embedding bits constitute protection in a DMCA sense (they were found not to do so). Similarly it helps to know that US design patent can apply to fonts (again Adobe v SSI is informative), which is a way in which they are a bit different than most software.

Cheers,

T

Uli's picture

> For lawyers, that would be Frank Martinez, in NYC

Frank J. Martinez is a guy registering trademarks for cease-and-desist outfits.

Martinez declared that the Bauer Types SA outfit owns the trademark "Erbar".

see http://www.sanskritweb.net/temporary/Erbar-Trademark2.pdf

However, the Bauer Types SA outfit is a "mailbox company" without employees and without offices.

The Bauer Types SA outfit "exists" as a "pillar box", "post box" or "mail box" of the Swiss consulting firm Studio Faim SA:

Bauer Types SA
Piazza C. Bernasconi 5
6830 Chiasso SWITZERLAND

c/o

Studio Faim SA
Piazza C. Bernasconi 5
6830 Chiasso SWITZERLAND

see www.swissguide.ch/it/consultatione-di-gestione/Chiasso/481615_studiofiam...

"I'd go straight to him in an instant if I was operating independently"
(Thomas Phinney)

Thanks for recommending a guy representing cease-and-desist outfits operating independently as the mailbox of a consulting firm.

Richard Fink's picture

@thomas phinney

"But I don't agree with your conclusion that specific expertise is irrelevant."

Maybe I wasn't clear.
The point is, as you note, expertise specific to what?

Expertise specific to typefaces? I gotta stick with irrelevant. Did the judge in Adobe v SSI have expertise specific to typefaces? Of course not. But still he rendered a decision in the case and even threw in some tortured technical analysis about "points".
'Typefaces' didn't enter into the analysis at all.

Uli's picture

> some tortured technical analysis about "points".

The SSI judgment was a summary judgment:

see www.sanskritweb.net/forgers/ssi.pdf

see also www.sanskritweb.net/forgers/ssi2.pdf

In addition, the plaintiff (= Adobe) was the "expert" consulted by the judge. This is ridiculous. An independent expert such as mathematics professor Luc Devroye would have explained that "points" are no computer programs, no software.

oldnick's picture

Points are waystations on the journey. Every glyph in a font is described by a SPECIFIC set of mathematical instructions used to construct that glyph. Starting from a base reference (usually 0,0), the code lays out the waystations and the kinds of paths used to connect them. If the code used to describe a specific character in one fonts is ABSOLUTELY IDENTICAL to the code used to describe the same character in another font, chances are EXTREMELY HIGH that one is a direct copy of the other. Period.

William Berkson's picture

As I have written here before, whether Uli's arguments are good or bad, US law doesn't care about his views unless he is a party to a lawsuit here. However, the US law does care about the judge's opinion in the Abobe et al. vs SSI case, as it set precedent. It might be overturned, but meanwhile it is, I believe, the guidance that everyone involved in font commerce in the US has looked to.

Thomas Phinney's picture

Geez, it's a lawyer's job to represent their clients, whether their clients are in the right or not. That's the whole way the legal system works, in pretty nearly every country in the world with a functioning independent legal system. Criticizing Martinez for effectively representing his client is just nuts. If you don't like it, blame Bauer for claiming a trademark they shouldn't, not their lawyer for sending a letter at their request.

For what it's worth Bauer Types SA is at least a bit more than just a faceless holding company with trademarks, I've met a couple of their people at type conferences, repeatedly.

Richard: You fail to address my point, which is that being familiar with the case law and the state of the law with respect to fonts is specific expertise. Martinez doesn't have to do a bunch of reading and research, which would have to be paid for by the client. Just knowing general info about copyright isn't enough, it's important to know how it has been applied in this area.

Cheers,

T

Uli's picture

William Berkson:

> However, the US law does care about the judge's opinion in the Abobe et al. vs SSI case, as it set precedent.

The SSI summary judgment is not valid for all fonts of all companies in the world, but it is only valid for the US company SSI, which is defunct now, and it is only valid for one SSI font, namely for the Adobe font Utopia sold by SSI as the clone Veracity.

see www.sanskritweb.net/forgers/ssi.pdf

The SSI summary judgment is of no avail, if other companies sell the clone Veracity, about which judge Whyte made his summary judgment. For instance the website

www.azfonts.net

and numerous other websites offer the SSI clone Veracity and other SSI fonts for sale or for free download. Although Adobe knows that the clone Veracity and other SSI fonts have been offered for sale by numerous companies during the past ten years, Adobe never dared to sue any ot these companies for fear of losing at court, because the Whyte judgment was a strange summary judgment, which presumably will never be confirmed by any other judge.

William Berkson's picture

>only valid for the US company SSI

Whether you like it or not other US courts will look to this case for guidance in future rulings. You don't seem to get the concept of "precedent".

Richard Fink's picture

@Thomas Phinney

"You fail to address my point, which is that being familiar with the case law and the state of the law with respect to fonts is specific expertise.
Oh yeah, of course I agree with that. (I didn't get that this was the kind of expertise you meant. Thought we were still on "design".)
This is the ordinary legal expertise one seeks from any lawyer.
Task-specific, let's call it. You don't go to a cardiologist to treat a skin infection.
(For example, the pre-eminent law firm in Franchise law is Zarco, Einhorn, & Brito in Miami, Florida. If you think copyright law is arcane, try franchise law. Finding a lawyer familiar with it is near impossible. There are a handful at best and except for Robert Zarco, et al, the other firms represent franchisors, not franchisees so the chances are good the others won't take the case due to conflict of interest.)
Apropos of this, there was an episode of the Sopranos where - after Carmella tells Tony she wants a divorce - Tony calls up every top divorce attorney in the vicinity to meet for a consultation, thereby making them ineligible, ethically, to represent Carmella.

Try hiring a law firm specializing in IP law in or near Seattle, Washington to work on anything that even mentions Microsoft technology.
I had a reason to do this some years ago - the idea being that firms heavily involved with software would possess the needed expertise. I stopped after calling about a half-dozen firms in the Seattle area. They wouldn't/couldn't touch anything to do with Microsoft technology, even if it was only prior art. (And that's all it was.)

I'm bringing this up simply to bolster the notion that "consult an attorney" is almost always a very unpractical and usually prohibitive proposition almost all the time that someone is advised to "consult an attorney".

But there is precious little law that's font-specific. And, as I said, it's peripheral to the main issues. The technological issues are not difficult to grasp. IMHO.
There IS, however much that has happened in case law over the last twelve years regarding software in general which would be equally binding "precedent".
There is nothing in the SSI decision that left anything "well settled".

Uli's picture

William Berkson:

> You don't seem to get the concept of "precedent".

The Whyte judgment, dated 30 January 1998, took place 13 years ago.

During these past 13 years, innumerable outfits ignoring the Whyte "precedent" have been selling the SSI clone fonts, and Adobe during all these 13 years never cared about sueing any of these innumerable outfits for selling Veracity and other SSI clones.

So, if Adobe, now 13 years later, all of a sudden starts to sue these numerous outfits, e.g. the guys running the www.azfonts.net website, the judge, after looking at the Whyte "precedent", would ask, why Adobe during the past 13 years has ignored the Whyte "precedent" thus acting against own interests (German law: "venire contra factum proprium", US law: "estoppel by delay", etc.).

Uli's picture

For instance, the ripoff DVD

www.sanskritweb.net/forgers/f31000i.pdf

documented by me in March 2007 contains 500 SSI (Southern Software) clone fonts.

During the past 4 years, Adobe had plenty of time to sue the sellers of this DVD with reference to the Whyte "precedent" judgment. But Adobe never dared to sue them.

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