License Violation

Ralph Smith

A well known museum in Germany has modified and created a new font from outlines of one of our fonts. They even used the name of our font in their new font. The museum is claiming they have done nothing wrong. Museum claims that indeed the fonts have similarities with the our font, but in principle represents a newly designed font and claims that under German copyright law it's perfectly legal in what they have done.

Another one of the museum's claims - "there is no such protection as a design for the font family in Germany and the EU. Fonts can only be protected by copyright if they are very exceptionally designed. There is no such unusual styling in this case".

I am unsure about the copyright issue. We do have a US trademark for the font name. 

Right now my main focus is that the museum violated a main clause of EULA they agreed to before that purchase the font -“You may not modify, alter, disassemble, decrypt, reverse engineer or decompile the Software or extract its source code. You may not create derivative works from the Software.”
 
The attached samples is good representation of the the modifications (they modified the entire upper case and  and how they line up with the original outlines. The red outline is the modified letter and the black is the original. First sample show them slightly offset, the second sample shows the red modified letter directly on top of the original.

I have asked my US lawyer for advice and she says to move forward we would also need to get a lawyer in Germany.

1st question - Is it true that I have no protection in Germany and the EU? 

2nd question -Has anyone here ever revoked an end user license for violation of the agreement? 

I'm thinking that if I revoke the end user license I will have more ground to stand on.

What about playing this out on their FB and Twitter pages?

Any suggestions?

SiDaniels

Apart from the modification are they operating within the terms of the original license?

Andreas Seidel

In Germany the trademark and the font software is protectable, but not the design (if it's a common type design). Spare the money for your laywers. Make it public - like Fontshop did in the UPS case.

Adam Twardoch

The general legal assumption (which the other party can challenge, of course) is that digital fonts are computer programs:

The type designer uses a font editor to create a computer program, and that process is considered the process of the creation of a work of authorship. The font rasterization engine executes this program snd produces images of characters.

Therefore, the digital font is protected just like any other computer program. The digital images the font produces are generally not protected.

This method of protection is based on the assumption that the designer places outline points in a creative act and that the individual point placements cannot be automatically inferred from the glyph image. Manually set hinting instructions are slso considered part of the computer program that is protected.

In a way, this paradigm of protection assumes that, as a designer, you're using a GUI tool to write a PostScript program by hand.

If someone takes your digital outlines and modifies them, the current legal assumption is that it's equivalent to taking the source code of a 3rd party's computer program and modifying it without permission.

Computer programs generally enjoy stronger copyright protection than other works, also in Germany. But this paradigm of protection is based on a handful of 20+-years old U.S. court rulings (Adobe vs. SSi), and has not really been verified or challenged in other jurisdiction — so there is just assumption of protection.

It would of course also be useful to know the actual contents of your EULA to see how it defines the object of protection — but breach of contract is definitely one possibility.

If a court does not consider your font protectable as a computer program, there is a fallback strategy: you can claim that your font is a database. There is EU law that protects databases for 25 years or so (ie. much shorter than copyright but still). That protection is actually very solid and is pretty much guaranteed to work IMO.

As Andreas suggests, there is also a complementary strategy: public shaming.

Best,
Adam

Adam Twardoch

Ps. I'm still surprised that I haven't yet seen the database protection scheme written into EULAs as a fallback protection. Most EULAs base the protection claims on the computer program scheme only, which is rather volatile — if it's challenged and falls apart then you’re left with very little. Of course you could still claim protection under the database law but the infringer can say that they didn’t know. One of the purposes of including the EULA is to ensure that the licensee acknowledges your claims.

James Puckett

…database protection scheme

Care to elaborate on that? Just a link would be good, because Google thinks “database protection scheme” refers to encryption.

Dave Crossland

This is not legal advice, and represents my own personal opinions:

The images were posted as TIFF files, so won't render inline. Here they are:



Adam, I know that Adobe folks have been claiming for years and years that "fonts are programs too" but my understanding of the SSI case is that this claim was never substantiated by that court. 

Indeed, I think its disingenous to claim fonts (by which we assume SFNT fonts) are computer programs. They may contain computer programs - TT hinting instruction rendering programs, and AAT state machine layout programs - but they are mostly data.

(I believe the difference is that programs are executed, while data is used as input to a program. In the LISP family of programming languages, program code is written in a way that the output data of a program's function can itself be executed; and compiler programs process code as a data input, translate it from 'source' form to 'object' form, and output a binary file object that can be executed.

There are some non-SFNT based formats, like PostScript Type 3 and METAFONT, which are truly programs. But Type 1, CFF and TTF outlines are not executed, they are parsed as input to rendering systems. Since UFO is XML, UFOs are clearly not programs; and even the .fea files inside them are not, because - like HTML and CSS - they contain markup data that is parsed to the OpenType Layout Engine programs like Harfbuzz.)

However, what the SSI case did substantiate was why fonts can be claimed to be subject to artistic copyrights:

the assumption that the designer places outline points in a creative act and that the individual point placements cannot be automatically inferred from the glyph image

But its important to note that typeface designs themselves - glyph images - and not the Bezier points that express them, are not subject to copyright restrictions in the USA, and probably in many other places. 

And that Ralph, is the core of the dispute about them willfully infringing your copyright. The museum is talking about the typeface design, but you have deduced that their font data is derived from your font data, and is thus a derivative work under copyright, and they need to settle with you pronto. 

This 'in principle it could have been original' stuff is cute, because indeed they could have made the design that their fonts displays by hiring a type designer to create new font data of that design, and then they would be legally legitimate. But it seems that this is not what they did! And so they have put themselves in jeopardy. 

This is exactly the error that SSi made with Adobe's fonts in the famous SSi case Adam refers to.

However, unlike SSi, it seems that they were an licensee, and thus bound by your EULA contract. This to me seems like your strongest card to play, because if this is the case, the copyright status of fonts and designs is entirely irrelevant. 

There was a famous Monotype vs ITC lawsuit in the 1990s - eg http://openjurist.org/43/f3d/443/monotype-corporation-plc-v-international-typeface-corporation-international-typeface-corporation - that turned on such a contractual obligation by Monotype not to copy designs by ITC. (The lawyer Paul Stack led the case for Monotype that they did not copy the designs exactly, and thus were legitimate, and Michael Twyman was a star witness that testified that they were not exact copies.) However, in Germany there may be a 25 year copyright on typeface designs themselves, in addition to the regular artistic copyright term (life+70 years or whatever) on the font data.

The reason the case turned on contract and not copyright is because copyright restrictions don't apply to type in the USA at all. 

So when Adam says,

It would of course also be useful to know the actual contents of your EULA to see how it defines the object of protection — but breach of contract is definitely one possibility.

it would also be useful to see the actual contents of your EULA to see how it defines what happens if the EULA is terminated. The statutory defaults for breach of contract is definitely worth considering too

Chris Lozos

"I think its disingenous to claim fonts are computer programs."

That may be a valid assumption but the problem is, type designers have no other options in the USA.  Which is the greater crime, being a bit disingenuous or stealing someones work?

Adam Twardoch

EU protection of databases (it's only 15 years it turns out but it's meant as a fallback snyway):
http://en.wikipedia.org/wiki/Database_Directive
http://ec.europa.eu/internal_market/copyright/prot-databases/index_en.htm
http://eur-lex.europa.eu/legal-content/EN/TXT/?qid=1430764231038&uri=URISERV:l26028

Ralph Smith

Si, they also made a web font which they embedded. Plus they re-named the web font using our original font name.

Here is the core of our license:

-----------------------

 This License is for the final, machine-readable object code of the Software only, and not the source code.

You may not modify, alter, disassemble, decrypt, reverse engineer or decompile the Software or extract its source code.

You may not create derivative works from the Software.

4. No rights are granted to you other than a license to use the Software on the terms expressly set forth in this Agreement.

This is a mere license and not a sale.

11. The term of the License granted under this Agreement is perpetual, except that Phil's may immediately cancel this Agreement and the License in the event of a material breach of this Agreement by you, including without limitation a breach of the provisions of sections 2, 3, 4, 5, 6, 7, and 8.

If this Agreement is canceled, you shall immediately cease all use of the Software, the License shall be immediately cancelled, and you shall immediately destroy all copies of the Software.

Adam Twardoch

Dave,

I believe that neither the information theory nor law make a clear distinction between programs and data.

Wikipedia quotes from Stair, Ralph M. et al. (2003). Principles of Information Systems, Sixth Edition. Thomson Learning, Inc. p. 132. ISBN 0-619-06489-7.: “A computer program, or just a program, is a sequence of instructions, written to perform a specified task on a computer.”

I don't agree that a computer program has to be executed "by itself". Interpreted programming languages such as Python or JavaScript are not executed "by itself". Programming languages don't need to be general-purpose.

One can easily claim that fonts are interpreted computer programs: a font renderer is the interpreter, a font is the program written in a specialized programming language with the task of taking some text and formatting information and transforming that text into a visual image of typeset text.

The CFF charstrings like moveto, lineto, curveto sound like instructions. The FEA keywords like substitute or position are instructions, too.

Wikipedia lists a number of programming language that use XML as syntax: http://en.wikipedia.org/wiki/Category:XML-based_programming_languages so your implication "Since UFO is XML, UFOs are clearly not programs" is easily negated.

I agree that the argument for fonts being programs is not superbly strong, requires some good will, and I'm not willing to die over it, but I've yet to see compelling counterarguments to fully squash it. Our exchange here kind of mimics and argument that could be lead if it pleases the court .

A.

Dave Crossland

That may be a valid assumption but the problem is, type designers have no other options in the USA.  Which is the greater crime, being a bit disingenuous or stealing someones work?

Sorry if I was unclear: I don't think its disingenuous to claim fonts are subject to copyright. They are. 

But I think claiming fonts are programs is a distraction, because of the kind of debate I entered into above and that Adam is entertaining

I don't think the claim is necessary, because digital fonts are under SSI considered authored works in the USA, because the placement of point data involves human authorship, and thus subject to copyright like a novel - yes, or like a program.

But I continue to believe that fonts are not programs. However, since its veering off topic, I'll leave this discussion here and return to it with Adam at the next conference - Granshan or TypeCon or ATypI or so on

Ralph, you said,

If this Agreement is canceled, you shall immediately cease all use of the Software, the License shall be immediately cancelled, and you shall immediately destroy all copies of the Software.

Its probably a good idea to clarify with them that this includes all unlicensed derivatives of the software. 

Also, I think its always good to keep making reasonable settlement offers. 

LeMo aka PatternMan aka Frank E Blokland

Hi Ralph,

Irrespective your legal position, the fact that the copyright has been infringed and the EULA has been abused is utterly despicable.

‘A well known museum in Germany has modified and created a new font from outlines of one of our fonts.’

Does the museum in question employ type designers? Or was it an external designer/agency that did the job? I’m far from an expert on legal matters, but if the latter is the case then I reckon that the museum has infringed the EULA by providing the font to a third party, and the third party is eventually to blame for the alterations.

‘[…] Fonts can only be protected by copyright if they are very exceptionally designed. There is no such unusual styling in this case".’

Makes me wonder why the museum selected this typeface in the first place. By doing this, they basically have proven the opposite.

F.

Ralph Smith

Frank, I believe the museum has their own graphic designers who modified the font. Their email addresses have the museum name in them.

John Hudson

Dave, it's important to remember that what matters in US copyright law is how the US Copyright Office defines a computer program, which is much more broad a definition than that generally used by programmers:

A “computer program” is a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result.

In the summary judgement in the SSi case, Judge White's key decision was that the placement of points in an outline might be considered a program under the legal definition, in that it affected particular outcomes on a computer. That it might do so indirectly -- via a rasteriser, in concert with hinting -- is explicitly permitted of in the USCO definition. In other words, Judge White was willing to accept the argument that the outline description of a typeface in a digital font constitutes a computer program under the law. As you say, this argument has not been tested in court, because SSi immediately settled with Adobe as soon as they read Judge White's summary judgement.

John Hudson

Makes me wonder why the museum selected this typeface in the first place. By doing this, they basically have proven the opposite.

I've been hearing the 'not sufficiently distinctive so not protectable' argument for more than twenty years now, so I'll say here what I said on the comp.fonts Usenet group in 1994:

As soon as someone chooses to use one typeface over another, he or she has acknowledged its distinctiveness and also the value of that distinctiveness. To then claim that there is no distinctiveness and no value is disingenuous.

Dave Crossland

John, thanks for the clarification. Do you think that mean that a DOCX file is a program under the US law?

John Hudson

If you were to make a DOCX file that is designed in some way to interact with something else on your computer to produce a certain effect, then possibly yes. The reasoning seems to be, regarding what programmers would typically class as data, that if the contents of the data are arranged in a particular way so as to directly or indirectly produce a particular outcome, then you have something that the USCO and US courts are at least willing to consider subject to copyright protection as a 'computer program'.

LeMo aka PatternMan aka Frank E Blokland

‘"there is no such protection as a design for the font family in Germany and the EU. Fonts can only be protected by copyright if they are very exceptionally designed. There is no such unusual styling in this case”.’

As a consequence it will be difficult for the museum to claim any copyright on the proprietary –derived– font if the copyright on the source data is ignored.

Dave Crossland

Right - so XLSX files are almost always such 'programs.' Cool! Thanks for the insight.

I apologies for claiming fonts as programs was disingenuous

Adam Twardoch

Dave,

Given that in 1990, I have developed an entire invoice and customer management system in Excel 3.0 for my father's little signage shop, and he's been using it for 25 years now almost without modification (just some porting to newer versions of Excel), and he's very happy with it -- I never thought of Excel spreadsheets as anything other than "programs".

Excel spreadsheets are not things that "are" but are things that "do". Fonts also "do" things and not just "are".

I think the difference between "be" and "do" is the basic conceptual distinction between "data" and "programs".

Deleted Account

John's quote of the law:
A “computer program” is a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result.

...and what I think make today's font darlings especially programmatic, is that with only one certain result, the font output at the resolution of the em upon which it is defined, and viewed at the resolution of the em defined, the "actual" results are almost always coming from giving the program some other output parameters, like x and y transforms, to end up resulting on ems larger or smaller than the font's em unitization.

Seems to me, just because these other results are not a blatantly obvious part of the program, don't mean we don't put great care into "programming" our fonts to work at these other em resolutions. So, e.g. Dave, Even before a font might not need hints to run well if one gives it stupidly small sizes to scale to, that doesn't make it not a program. 

I think, this was all pretty heavily discussed in courts when Jefferson, Carter and Reagan were presidents, and some of you were

kupfers

@ Ralph Monet?

Ralph Smith

Ira- yes, Monet

Adam Twardoch

It's likely that the German museum isn't taking an "arrogant" stance but are actually panicking.

Some Germans know that West Germany has been an occupied non-sovereign country for 46 years (1945-91) but fail to realize that the allied occupation ceased 24 years ago. They still may react rather nervously to legal correspondence from the U.S.

Approaching them with the following proposal:
1. Pay the sum of $x and we'll happily part ways.
2. Or else, we'll send over the Yankees again (first just the lawyers).
might be a sensible path of action.

Adam Twardoch

(Off topic: The new Federal Republic of Germany formed de facto on March 15, 1991 was a completely different entity under international law than the pre-unification West Germany. It's not incidental that the European Union was established by the Maastricht treaty in 1993. Before that, things were much more complicated ).

Ralph Smith

Adam, I did approach them with a very reasonable solution - pay what I would have charged for the derivative font and get it licensed properly - web and desktop. They've lawyered up and said lawyer will not respond to my emails. Arrogance?  

attar

So Ralph, should we start the ion cannon on social media?

Adam Twardoch

Ah, I see. Under which law have they licensed the original fonts? I mean, where was the transaction done? Your website? If so, you can harass them some more from within the U.S., revoke the license, gather evidence.

Göran Söderström

Time for public shaming!

Ralph Smith

Transaction was through the FontShop web site with our EULA in place and agreed to.