Established foundry threatening legal action for alleged infringement.

Foundry

We've been contacted by a well established foundry, accusing us of copying one of their typefaces and demanding that we take it down or legal action will be pursued. For a fact, I can say that it is not a copy in any sense. Like a lot of neo-grotesk sans, it shares similarities, but that is as far as it goes.

What I'm worried about is the unknown. So does anybody know the extent of how serious the legal action can get? Or has anyone experienced this kind of intimidation before? How would people respond/react to this?

John Hudson

In what jurisdiction is this? Is the claim that the designs are similar or that the font is derived from theirs? Is the threatened legal action a copyright suit, a patent suit, or ?

Foundry

We’re based in the uk. They’re based in Switzerland. The claim is that the designs are similar and what they’ve said is that they’re going to pass this matter to their legal team if I don’t remove the typeface from my website

JoyceKetterer

@Foundry

I'm not a lawyer and none of this constitutes legal advice.  I am a business side foundry owner who can give business strategy advice.  If you decide not to just pull the fonts down you're going to need a lawyer asap.

Have you asked them to send you a document, with images, explaining why they think the font is too close to theirs?  That's a reasonable request and if they don't meet it they are showing themselves to be bullies. That said, if you don't think this font is highly commercial it still could be a wise business decision to let the bullies win.  

The legal action can get very protracted, expensive and exhausting.  Some of the determining factors would come from the answers to @John Hudson questions...

1. Jurisdiction:  Firstly, this matters because it relates to your costs to fight a dispute.   But it's tricky because different kinds of disputes have different jurisdictions.  

2. Kind of claim: If they are claiming you made your own font that is too close to theirs that sounds to me like it could be either a copyright or a patent dispute, but possibly both (depending on how the relevant jurisdictions treat those things). 

Design patents are rare in the industry so they might not have one.  If they do and are making a patent claim I'm pretty sure their case would be at its strongest, but to really know that's a question for a lawyer.  I also don't know how design patents treat jurisdiction

As a non-lawyer I think (but could be wrong) that the jurisdiction for a copyright dispute is where the violation happened.  Therefore, that would be your jurisdiction unless you've moved since you made/released the fonts (because I don't know which of those would be counted under the law as the location of the violation).  At least you'd not have travel costs, but different governments have different copyright laws.  There's a chance you get lucky and a British lawyer immediately erodes their case (which certainly is based on their understanding of Swiss copyright law) by showing that under UK law their protection has expired, or similar.

If they are claiming you modified their font files that could be a license dispute (if they can prove you have a license of their fonts), or a copyright dispute.  License dispute would mean the jurisdiction would be the one named in their EULA.  If you really did modify their fonts then this would actually be where they have the strongest case.  But I'm assuming you can prove with version tracking from your development of the fonts that you didn't work from their files.  So, this could be the one where your case is strongest.  




I think you can see why I say this is a question of business strategy. Because I already have a strong relationship with a lawyer, if I got a demand like this I would be in a position to gather information and possibly fight them off.  If you'd need to start from scratch with a lawyer, fighting them even a little bit is probably only worth it if you think this font is highly commercial.  I've had this happen to several friends, some have won and some have lost but all of them found it a costly time sync and a drain on their creative resources.  


PS - I believe this is still a real names forum. @Paul Hanslow, @Eris Alar, @James Hultquist-Todd?  

Paul Hanslow

JoyceKetterer said:

PS - I believe this is still a real names forum. @Paul Hanslow, @Eris Alar, @James Hultquist-Todd?  

I believe this was changed late last year so forum members can now op to not use their real name if desired. @James Hultquist-Todd can correct me if this is incorrect.

Eris Alar

@JoyceKetterer James talks about the change in this thread 

jeremy tribby

edit: on further thought, without seeing, I don't have any comment to offer

Thomas Phinney

Foundry said:

How would people respond/react to this?

Like everybody else in this thread so far, I am not a lawyer, and don’t mean to offer legal advice. That said, if their allegation is as vague as “copying”… my first thought is: without conceding anything, one could write a polite note inquiring what exact sense of copying they are alleging, what laws they think are being violated, and in what jurisdiction? If it were me, I would also consider paying a colleague who is expert in font ID and classification several hundred bucks to come up with a list some fonts that are more similar to the complainant’s font than my own font is. I would then show them that list and see if that is enough to get them off my back.

If the facts are as you suggest, then one imagines such a list would not be difficult to create, for the right person. (If they have trouble creating a list like that, then maybe the similarity is stronger than you think.)

Foundry said:

So does anybody know the extent of how serious the legal action can get?

Given that this is a non-criminal matter between two parties, anybody can launch legal action against somebody else for anything. There is a whole gamut from just contacting you, to them paying their lawyer to send you a nasty letter, to filing a lawsuit, to pursuing the matter to an actual legal conclusion. It can end anywhere along the way.

Whether it will get as far as the courtroom (and hold up if and when it gets there), and how much the lawyers and other legal costs will be along the way… those things depend on not only the legitimacy of the case in the first place, but the willingness of both parties to keep the dispute going.

Foundry said:

Or has anyone experienced this kind of intimidation before?

Sort of, but a bit different case, accused of actual unlicensed commercial use. Of two different fonts, if I recall correctly. They were wrong in a couple of different ways, we pointed that out to them, and they didn’t even have the courtesy to reply. Not that I would have expected it, given that particular foundry’s reputation.

 No, not THAT foundry. The other one. 😛

Foundry

@JoyceKetterer @Thomas Phinney Thanks for your responses. Very informative, really appreciate it.

I have already had some legal advice on this matter, but I've not got a lawyer with specific knowledge around this kind of thing and copyright laws in type design.

Could anybody recommend a lawyer based in the UK for this?

Scott Briggs

@Foundry drop me an email, we're in the UK info@thenorthernblock.co.uk

JoyceKetterer

@Foundry In case it wasn't already clear, I agree with @Thomas Phinney that the next best step is to ask them to explain in detail exactly what they think the problem is with your font.  It may be either that you can explain to them they are mistaken or make changes to your font to address their concerns.