Protecting the Product™: Typefaces and Fonts
While copyright law is at the center of a few recent disputes over intellectual property protection for typefaces and fonts, design patents are an often-overlooked mechanism for protecting these designs. Those who develop or license fonts will benefit from the following summary of the available protections for the visual appearance of typefaces and fonts, which includes novel “emoji” sets.
In recent years, House Industries, a font foundry, has made copyright infringement accusations against Michaels Stores, Inc. and NBCUniversal Media, LLC relating to alleged copying of fonts. Seeing the writing on the wall, Shake Shack Enterprises, LLC recently filed declaratory judgment action against House Industries to preempt such a copyright infringement accusation. While the outcomes of these copyright infringement cases will be fact specific, the recent rise in such accusations warrants a renewed look at the legal tools available to protect and enforce the visual appearance of typefaces and fonts.
Because copyright law requires a certain minimum level of creative authorship to impart protection, typefaces and fonts are treated differently. “Typeface” refers to the visual appearance or design of a type, i.e., letters, but typefaces are generally not protectable under copyright law since they are considered to lack the required level of creative authorship. On the other hand, a “font” refers to the software used to generate the typeface on a screen or page and is generally protectable under copyright law, assuming it has the required level of creativity. Because protection of typeface designs are not typically permitted under copyright law, design patents are regularly filed to protect them.
Design patents can protect the ornamental design for a font or typeface if the design passes the standard patent hurdles of novelty and non-obviousness. Unlike copyright law, there is no per se minimum level of creativity required under design patent law, but the design must be ornamental as well as novel and nonobvious over the prior art, i.e., existing fonts and typefaces.
More than 370 designs for the ornamental design of a typeface, font, or type font have issued in the U.S. over the past 20 years. And because there are no maintenance fees required to keep U.S. design patents alive throughout their 15-year term, the lion’s share of these issued designs remain in force. Noteworthy companies like Samsung, Apple, Google, and Adobe all own several design patents for typefaces, examples of which are provided below.
FIG. 1 of U.S. Design Patent No. D879874, owned by Adobe, Inc., for a “Typeface”
FIG. 1 of U.S. Design Patent No. D738429, owned by Samsung Electronics Co., Ltd., for a “Typeface”
FIG. 1 of U.S. Design Patent No. D964458, owned by Apple Inc., for a “Type Font”
Under the right circumstances, i.e., a significant period of substantially exclusive and continuous use, it’s even possible for typefaces and fonts to become trademarks of their respective owner or user. While such “acquired distinctiveness” might be particularly difficult to establish in a font or typeface given the varied ways in which fonts and typefaces appear to the public, such a trademark right “maturing” is not without precedent and can be incredibly powerful if obtained, given that trademark rights may exist in perpetuity as long as a mark remains in use.