Two more cases against pirates

Artem Drabkin

Our colleague won two more cases against Font Software pirates last couple of weeks.

First case. Designer Sirotkin vs Eksmo (major Russian publisher used the font on book cover) 
Compensation $67 000

Second case. Designer Sirotkin vs Azertea (Tea distributor used the font on a tea package)

1. $26000  compensation;

2. Defendant must withdraw from the civil turnover of the Russian Federation and destroy the counterfeit tea "Azerchai" made using the font, as well as labels and packaging to it;

3.  three types of goods recognized counterfeit;

4. Defendant obliged to publish the decision in major business newspaper Kommersant ();

5. Banned the production, storage, transportation, offer for sale, sale, shipment and other introduction into civil circulation of counterfeit tea.

 

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Chris Lozos

:-)

JoyceKetterer

I read this post when it was first written and I was immediately uncomfortable.  I didn't post anything at first because I needed to interrogate my reaction and make sure that I wasn't just clutching my pearls over a cultural difference between how license enforcement is handled in America and Russia.  

Upon reflection, I have decided that even it if is it's worth me saying something.

Though there certainly are some instances where wrongdoers deserve to be publicly shamed there are more honest mistakes (especially in the world of font licensing).  From the brief descriptions I see here both look of these seem to be in the second category. 

Both of the infringements listed here are for print uses that would be permitted by many font EULAs.  So it seems very likely to me that the infrigers just didn't understand that the licensing they were working with was more restrictive.  Therefore, even if it is ok to publicly shame them in the culture they inhabit, the word "pirate" seems misplaced.  

Sure, people "should" read EULAs and they should know better but it really isn't their fault that the entire software industry has trained all of us that they don't have to and they won't get into trouble as long as they don't crack the software.  Nor is it there fault that isn't true in fonts.  I have always advocated for compassion towards license violators.  This forum is public and I don't like that potential font licensees can see this and think that we are all celebrating over heads on spikes.  

As an additional matter, I don't see why the non-monetary portions of the settlements are so harsh.  The infringers have paid so shouldn't they be allowed to use up back stock if not continue use?  And, the requirement that they publicly advertise the settlement does not feel just to me.

This whole thing feels very bloodthirsty and counter to the image I want our industry to have in the world.  If this was how we all behaved we would deserve to be put out of business by Google and free fonts.

Samuil Simonov

@JoyceKetterer
The Eksmo case seems rather an open-and-shut case to me from both legal and moral standpoints. I would expect a *book publisher* to be acutely aware of the legal status of the fonts they use. You can't really feign ignorance of a font EULA when your business is centered around printing text. Even if you subcontract cover design to independent subcontractors, it's the job of your legal team to make sure they haven't unlawfully used a copyrighted font or a photograph.

You could claim that Kuban-Tea (the owner of the Azertea trademark) is not a company that has someone that reads font EULAs on payroll, but whether they've outsourced the design or it has been drawn by someone they employ, it's not that hard to check the legality of the result. If you google the name of the font, the first two links lead to Mr. Sirotkin's LiveJournal where he says without any legalese that it's a paid font and you cannot use the demo file for any commercial purposes.

The lawyer's webpage also says that Kuban-Tea has been repeatedly warned about their copyright infringement, but the company has not responded. They haven't been sued out of the blue. I'm sure they could've settled the matter out of court in a more peaceful manner if they wanted.

However, the law is a bit weird since Mr. Sirotkin had to sue the ultimate distributors first (a book shop and a grocery shop), and they definitely were acting in good faith. Unrelated contracts that I work with at my day job always have a clause that allows us to seek compensation from the other party if their work or goods cause us to get sued, so I hope they had the same clause in their contracts with the publisher and the tea company.

Artem Drabkin

Well, they didn't buy fonts at all. More both of them decided to fabricate proofs so to demonstrate that they published the design first and then the author actually produce type based on it.   

KP Mawhood

I skip between what is "good practice" and what is helpful.

1) Real life examples are helpful to see!
2) Name and shame.

The licensees here may not frequent this forum, but some of us do. Some of us consider ourselves part of the font community. I would not want to see my employer named and shamed, and I see first hand how difficult it is to assure adequate licensing throughout complex workflows.

Joyce shared a recent talk for Extensis customers, a short quote:

Font licensing is scary. You may even think that font licensors are scary, that licenses are filled with contradictions and traps written by greedy people who want to trick you into more later. You know what, many sell-side people also think that font licensing is scary. They wonder if customers are just a bunch of greedy people trying to get away with as much as possible for as little as possible.

It talks of the five habits of highly ineffective font licensing:

1. No style guide
2. No Font Server
3. Too much delegation to contractors
4. Lack of legal vetting
5. Thinking all fonts are licensed the same

This is good guidance, and I agree with it. But, it is difficult to practice across a global organization, where there are thousands of autonomous employees who are trying to fulfill their own objectives. Misuse is uncommon, but it is still misuse. Misuse on a single product can quickly grow into a serious violation. This is an example of licensees trying their best and failing. Some view as laziness, some as honest mistakes.

KP Mawhood

Samuil Simonov said:

I would expect a *book publisher* to be acutely aware of the legal status of the fonts they use. You can't really feign ignorance of a font EULA when your business is centered around printing text.

We don't feign ignorance, we are ignorant of some usages. I spend my time discovering new instances of fonts being introduced to the workflow, and finding ways to address the risk of those fonts  – either license or remove – before publishing. We don't capture everything.

Samuil Simonov said:

Even if you subcontract cover design to independent subcontractors, it's the job of your legal team to make sure they haven't unlawfully used a copyrighted font or a photograph.

Not the legal team, a small permissions team or someone who does it on the side of a full-time role. There are so many people buying in products, producing new products, subcontracting products, republishing old products across locations, with different team sizes who speak different languages, live in different time zones, and have different attitudes and cultures.

Book publishers don't get tingly feelings for font misuse in printed text – it's not a magic skill, but something that that we must labour over.

JoyceKetterer

I obviously don't know the details and perhaps these folks are really bad actors.  That wasn't clear from the first post and I'm very clear that we can't assume that even the majority of entities that infringe on font licenses are in bad faith.  Quite to the contrary.  It's the vast minority.

I'm reassured that these particular violators are in that minority.  So I will discuss the general issues raised rather than these specific cases.

There is a logic to the argument that a book publisher should be expected to live to a higher standard.  But I think that falls apart under scrutiny - especially with print based infringements which can't be stopped by a font server.  Further, with the increase in font licensing the risk of accidental infringement increases exponentially.  If I had @Katy Mawhood 's job I wouldn't measure success by never having infridgments because then I'd always see myself as a failure.  I'd aim for a 2% infringement rate and call 5% a win.  I can get into the details of why I say this in a later post if someone wants me to.

In both of these cases the most common type of licensing model wouldn't have even sent up an alarm bell.  I see print uses of our fonts associated with brands that don't have a license but who's outside contractor does and is permitted to create image files for their use all the time.   I bring this up not to argue the fairness of print based add-on licensing requirements but to point out that many people who have familiarity with font licensing will only be aware of our model and not know that some other foundries don't permit it.  That very clearly doesn't relate to these cases if they only had demo licenses but there are many superficially similar cases where it would be a very good reason to assume the infringement was accidental.

I would never dream of to telling anyone what licensing model to have.  I can see the argument for almost all licensing models that exist.   I would, however, strongly suggest that if you choose one that is more restrictive than that which is most commonly seen that you need approach enforcement with a proportionately greater degree of sympathy and willingness to be cooperative.   

There's a whole other wasps' nest in here about who the responsible party should be in an infringement but I'll leave that for now.

*I wrote this about the same time as @Katy Mawhood  wrote her posts and hadn't seen hers when i published my post.  She pretty clearly explains what I was hinting at in my third paragraph 

Adam Twardoch

Here's the information I have gathered by reading some materials posted online: 

1. Nikolai Sirotkin designed a script font called Taumfel (and several other fonts). 
2. Mr Sirotkin published a free demo version of the font on his Russian-language blog https://nicksirotkin.livejournal.com/3426.html and, as far as I can tell, on some other sites. The website that allowed users to download the demo font did (still does) carry information in Russian that commercial use of the font is prohibited. 
3. Mr Sirotkin did distribute the commercial version of the Taumfel font at MyFonts for several years. It seems that MyFonts no longer is selling the font but I don't know when or why the font was removed from distribution there. 
   
4. When the font was distributed on MyFonts, it was presented like this: https://web.archive.org/web/20151002000316/http://www.myfonts.com/fonts/nikolai-sirotkin/taumfel/
5. During its distribution on MyFonts, the font was associated with tags such as "russian" and "cyrillic". 
6. The End-User License Agreement of the font had this clause: "The License is valid on territory of the whole world. Commercial use of fonts in territory of Russia, Ukraine, Belarus and Kazakhstan is prohibited." The EULA can still be viewed on http://www.myfonts.com/viewlicense.php?lid=1261 
7. To my knowledge, there was no Russian-language info associated with the demo versions of the fonts about where or how a commercial version of the font can be purchased, but I have seen some links pointing to MyFonts, for example on a Google+ album that seems to belong to Mr Sirotkin himself: https://plus.google.com/109045288674850675468  
8. A number of companies seem to have created books or packaging for commercial products sold in Russia using the demo version of the Taumfel font, and demo versions of several other fonts created by Mr Sirotkin. It seems that the designers downloaded the demo versions of the font from the various places where the font was made available by the author, and then used them — indeed violating the EULA terms. 
9. Mr Sirotkin has filed court complaints in Russia against several of these companies, and demanded (in some cases successfully) very high compensations. 

Adam Twardoch

Ps. I personally found the clause in the EULA as published on MyFonts, to put it mildly, unusual and surprising, especially since the main presentation of the font on MyFonts did not feature that restriction. 

Jasper de Waard

Not that I would advocate this kind of behavior, but it looks as if including a strange clause in the EULA and then sueing could be more profitable than selling 'normally'. That's really something to be avoided, and the only option I see is greater transparancy and simplicity in EULAs, across the whole market. Standardized EULAs, such as Fontspring offers (I believe?), can avoid the kind of distrust typeface designers may suffer, when/if sueing for an income becomes normalized.

Samuil Simonov

@Adam Twardoch the fonts were available for licensing in Russia, Ukraine, Belarus and Kazakhstan directly from the designer.

Artem Drabkin

Jasper de Waard said:

Not that I would advocate this kind of behavior, but it looks as if including a strange clause in the EULA and then sueing could be more profitable than selling 'normally'. That's really something to be avoided, and the only option I see is greater transparancy and simplicity in EULAs, across the whole market. Standardized EULAs, such as Fontspring offers (I believe?), can avoid the kind of distrust typeface designers may suffer, when/if sueing for an income becomes normalized.

Well, two years in a court will eat away any possible profit. Nevertheless, I am sure that the standardization of licenses (as well as prices) is necessary for the industry 

JoyceKetterer

Can we please put away this old dream of standardizing licensing?  Even if we were capable of herding cats to agree to something (which we aren't) it would be illegal under antitrust law.  Price doesn't just refer to the literal price.  In our case, that means that if we all had the same EULA document granting identical rights that would be price fixing.  

Adam Twardoch

I agree with Joyce that "selling" fonts forms competition based on the design qualities or glyph complements of the fonts, but also on the licensing terms.

If a Futura package from foundry A costs $50 and its EULA permits editable embedding into documents including documents that are commercial products, while a Futura package from foundry B costs $35 but its EULA restricts embedding quite a lot, and more liberal embedding options  are only available at a premium license that costs $350, then the Futura from foundry A offers much more rights for only a small price difference, i.e. to a number of users would effectively be a "cheaper" option despite costing $15 more. 

The problem is really just that the competition on license terms is obscure — which is surprising, because most font distributors aren't actually selling fonts, they're selling licenses. But they rarely present the products they sell (i.e. licenses) in a prominent, comprehensible way. 

Because of the old "we cannot provide a tldr summary friendly for end-users because it's legal stuff and it has to remain intact" attitude, it's very hard for users to make educated comparisons of what they're buying, so in the end users often end up making purchases in ignorance. And the case cited here shows that ignorance indeed isn't bliss. 

So I wouldn't necessary call for unification or standardization of EULAs, but I would call for simplification. 

Adam Twardoch

In other words: standardization of the language and vocabulary in font EULAs would be welcome.

The EULAs don't need to provide identical rights and restrictions, but the way they provide the rights and restrictions, the way they define the terms, the way they communicate exceptions — that could be based on a common subset of legal language that is specific for fonts.

Then, the distributors could safely summarize and compare the terms and make distinctions clear to users. I don't think that would constitute any kind of cartel operation. 

Adam Twardoch

Glyph repertoires are "standardized" in a similar way: there is a set of registered Unicode codepoints and a set of registered layout features, and the way how a font fills the combination of those two factors gives users some idea as to what they are buying. And there is a way to define private Unicode codepoints and custom features that allows for relatively arbitrary freedoms. 

In the end, after looking at a subset of the 2000+ EULAs that are or had been, at a time, in use at MyFonts, I think there is a lot of implicit standardization going on already. Many EULAs are copy-paste with some modifications, some of those mods are minor, others are major, so it's hard to make out the difference. 

The effort for an end-user to compare hundreds of legal documents is massive. So I wouldn't wonder if the more educated users will more and more settle for offerings from larger, more dominant foundries just because they would have lower entropy in their legal obligations.

This is already visible in the opensource software and font world: a small number of clearly-written licenses is preferred over lots of ad-hoc improvised sets of terms.

Stories like the one described here will likely make frequent font buyers re-think their future purchases.

Do I really want to track 150 licensing documents and remember that one of them restricts me from using a particular font in some country, or for some particular purpose? Or will I choose some subscription model and get access to just one large font library but without the hassle of legal fragmentation? 

Remember: a frequent font buyer may already have some 100+ different "contracts" that they have entered so they are bound by a massive amount of law. Using the font menu in an app to change one font to another actually constitutes a major change of a contract that governs the publication I'm working on, and if I use several fonts in a publication, this gets really complex. 

This is real life. Most of the users don't realize this, really, but they start realizing it more and more. 

Adam Twardoch

One problem I think many font foundries seem to forget is that, no matter how useful and unique they make their own EULA, in the real world, users will use their fonts together with fonts from other vendors. So the complexity is huge. Of course some design products only use a small set of fonts, but other products (e.g. packaging, or magazines that publish ads) will use a large number. 

Currently, there still is no easy way for end-users to manage their font licensing obligations. Switching a font using an app's font menu is easy, but then finding out what that switch means legally to the publication I'm working on is arcanely hard. 

For the design work I do myself (and it's not much) I tend to use commercial fonts from a very small pool of foundries plus opensource fonts released under the OFL, even though I often know of commercial alteratives that I would like better (and I would have the budget to buy).

But the thought of adding another set of EULA terms to the pool of legal obligations I've already subscribed to makes for a quite successful deterrent for me. So I optimize for simplification and low entropy. 

JoyceKetterer

@Adam Twardoch  I would LOVE it if we could standardize terms.  I can't imagine that would be a violation of antitrust law to do so (though I'd have to check with an attorney) and it would make real progress for all parties.

I've always known that a lot of terms don't have standard meanings.  For this reason we refuse to use "enterprise", "oem", "buyout" and a few others in any of our contracts.  However, when I prepared my lecture for the extensis event last month (which Katy linked to in one of her posts) I was confronted with how bad it is.  I knew that what the audience really wanted was to be given a list of terms with meanings so they could just tottle off and buy licenses and I knew I wouldn't be able to do that but it wasn't till I sat down to write the thing that I realized there is literally only ONE thing that is standard across foundry licensing models:

A desktop license is always a contract which, as a base line, permits the installation of fonts for the use by people to create documents.  That's literally it.  Everything else is, at minum, nuanced.  

As a side note, Adam, I'd be very curious to know what you think of our EULA.  Wait a few days to read it though because we're about to make a minor update.  

JoyceKetterer

Additionally, while I appreciate being agreed with that is totally irrelevant.  Personally, I think the fact that having a common EULA would likely be interpreted as price fixing is regulatory overreach. However, I consulted several attorneys on it and I'm convinced that US and EU regulatory bodies would interpret it that way. Saying you agree is like agreeing that unassisted human flight would violate gravity. Since I don't really believe we're capable of it anyway it's not a hill I want to die on.  

KP Mawhood

Adam Twardoch said:

Using the font menu in an app to change one font to another actually constitutes a major change of a contract that governs the publication I'm working on…

Thanks Adam! I think this summarizes the nightmare of font management beautifully.

For us, a single subscription model or large font library isn't a "fix-all". Fonts are introduced to the workflow for countless reasons.

It would be wonderful to see some standardization.

Adam Twardoch

@JoyceKetterer I'll be happy to take a closer look soon! Of course I am a somewhat specific "reviewer" because I happen to have a keen interest in licensing, copyright and law, so I have experience that bars me from being able to take a "fresh" look. But if you're looking for some feedback from someone who has read hundreds of EULAs, has analyzed dozens and has written a handful — I'm in  

Mark Simonson

Using the font menu in an app to change one font to another actually constitutes a major change of a contract that governs the publication I'm working on, 

Maybe apps could display an "accept/cancel" dialog with the full text of the EULA when a font is selected from the menu. (I'm kidding, I hope.)

Mike Wenzloff

Mark Simonson said:

Using the font menu in an app to change one font to another actually constitutes a major change of a contract that governs the publication I'm working on, 

Maybe apps could display an "accept/cancel" dialog with the full text of the EULA when a font is selected from the menu. (I'm kidding, I hope.)

Which would be really cool when trying to decide on particular fonts for a layout...

I'm mostly a reader of this place. I am a frequent user of fonts. As a user since about 1989 when I started writing and laying out user manuals and the like, I gotta say that EULAs are one of the baffling things to even attempt to adhere to in a production shop. That's regardless of whether I was the sole person or through the 1990s when I employed 7 others at its height. The number of people involved didn't matter. It was hard in a production environment to stay on top of things—and it has only gotten worse since with the shear variety of EULAs.

I am also fairly certain I have violated such things over the years. Why? Because at some point I lost track of organizing fonts into folders that had EULAs in them. Even fonts from the same foundry varied over the years and it simply became a pita to keep up. And as we also did final work on other's files as a prepress department, I also am fairly certain we violated some EULAs by just using client fonts to finish their stuff.

I don't know where i am really going with this ramble. But I think at minimum there just has to be a better means of keeping track of what variables apply to which fonts and encouraging users to adhere to the EULAs by making it easier.

Mike