License Violation

David Somers

In your EULA do you specify under which law your EULA operates and the jurisdiction of where any disputes will be handled?

Ray Larabie

Even though I don't live there, I sometimes use Vancouver. They have an international arbitration center there and for smaller claims, it can all be done through the mail.

Dave Crossland

Aha! I remembered why it is that I thought the definition of computer program vs data was relevant.

There was a ruling in 1988 from the US Copyright Office, Federal Register 53.189:

"The purpose of this notice is to inform the public that the Copyright Office has decided that digitized representations of typeface designs are not registrable under the Copyright Act because they do not constitute original works of authorship. The digitized representations of typefaces are neither original computer programs (as defined in 17 USC 101), nor original databases, nor any other original work of authorship. Registration will be made for original computer programs written to control the generic digitization process, but registration will not be made for the data that merely represents an electronic depiction of a particular typeface or individual letterforms. If this master computer program includes data that fixes or depicts a particular typeface, typefont, or letterform, the registration application must disclaim copyright in that uncopyrightable data."

John Hudson

Dave, the 1988 decision was superseded by the 1992 decision:
http://www.copyright.gov/history/mls/ML-443.pdf

The salient point of Judge White's summary decision in the Adobe/SSI case was that point placement in the definition of the digital outline may be protectable under the terms of the 1992 decision, since this placement is a) not mechanically deterministic and b) interacts with instructions in the font to affect a certain result on a computer, thereby meeting the USCO definition of a computer program.

Funnily, my search for a link to the 1992 decision led me to a comp.fonts Usenet archive from 1997, in which the same conversation we're having here was taking place. If David Lemon and Terry Carroll show up, it will be just like old times.

Richard Fink

I'm not here to say who's wrong or right, I just stopped by to shed some light:
Here are some links to relevant info for anybody who's interested:
The following URL correlates the four cases that provide the strongest - and most probably, at this point, unassailable precedent supporting the notion that fonts are not copyrightable - There have been no successful cases that have come to an opposing conclusion and the decisions themselves are well written and persuasive. Plus the reputations of the courts and judges issuing the decisions are weighty.
The four decisions are: Feist (a well known and sweeping SCOPUS decision), Bridgeman Art Library v Corel Corp, Gracen v The Bradford Exchange, and the final nail in the idea of fonts as copyrightable software's coffin: Meshworks v Toyota.  (There's a link to the appeals court decision in Meshworks decisions. Worth a read, for sure. The facts in the Meshwork case couldn't be more nearly identical to what the facts would be if Meshworks had produced wire-framed versions of letterforms. It's as close to a perfect precedent as you're going to find.)
http://www.intellectualpropertylawblog.com/archives/meshworks-inc-v-toyota-motor-sales-u-s-a-good-news-and-bad-news-for-creators-of-new-media-works.html
Further, there's this stuff - also about the Meshworks case - on the now defunct blog of William Patry, now chief copyright counsel for Google.
http://williampatry.blogspot.com/search?q=Toyota
Both Patry's posts AND the reader comments may be of interest.  Especially the post by IP attorney Sunny Kalara, at kalaralaw.com who immediately saw the close connection between the wireframe depiction of cars at issue in the Meshworks case and the wireframe depiction of glyphs in fonts.
Once again, I don't care who's right and wrong.  Just calling attention to the way the wind has blown in courts around the country.
Ralph Smith - maybe you want to give attorney Sunny Kalara a call and run it by him. He's the only attorney outside of Frank Martinez in New York that I know of who actually knows what a font contains. 
I wish you luck. 

Jan Schmoeger

Ralph, I think that taking and modifying your existing outlines was the main transgression here, so your EULA would cover that, and also apply anywhere in the world? On copyright protection the European/German law might actually be stronger than the US (US non-copyright position on typefaces was, in my day, the exception). Also, the location of the museum would govern the applicable laws? Is there any new development?

Josh Krämer

In Germany, the design of a typeface can be protected by two mechanisms: (1) by Urheberrecht (copyright), or (2) as a Geschmacksmuster (registered/unregistered design).

(1) Urheberrecht (copyright)
A typeface design is only protected by the Urheberrecht if it is recognized as a unique work of art by laymen (not by experts). This means, if a judge thinks, “hmm, looks like Times New Roman”, you are out of luck. For instance, the highest German court (Bundesgerichtshof) ruled in 1958 that the typeface Candida does not qualify as a protected work of art.

(2) Geschmacksmuster (registered/unregistered design)
If a typeface is not protected by the Urheberrecht, it can still be protected by registering a Geschmacksmuster, for a period of 25 years at most. A Geschmacksmuster can also be registered EU-wide. Even if you do not register a Geschmacksmuster, a design is still protected for the duration of 3 years after it has been published in the EU’s territory. This protection for unregistered designs is called “nicht eingetragenes Gemeinschaftsgeschmacksmuster”/“unregistered Community design”. You can read about it here: https://oami.europa.eu/ohimportal/en/designs-in-the-european-union

If you can prove when your typeface was made available to the public in the EU, and this is no more than 3 years ago, it should be protected as a Geschmacksmuster.

Disclaimer: I am not a lawyer.

Dave Crossland

Josh, thanks for the note on this. There's also a special court-appointed monopoly right in Germany, that Futura is subject to.

Ralph Smith

I've handed this over to a lawyer in Germany who specializes in copyright, trademark and software licensing. Thanks to all who replied to my original post. I will keep everyone here updated as new developments happen.

Adam Twardoch

One more aspect worth focusing on is something Jan mentioned: when a user buys a license for a font, the user agrees to the terms of service and the EULA, so a contract is in place. The terms of the contract may regulate the arrangement and even just the definition of the subject of the deal.

If the EULA defines your fonts as software programs, and the user agrees to the EULA, then the user will have a hard time arguing that the fonts are not software programs after that.

If the user agrees to certain terms, the user is obliged by them — as long as they don't contradict certain explicit regulations in law. In Germany, there is a concept of contract clauses that are "sittenwidrig" ("against honest practice" or "against public policy"), which means that the buyer can postulate that certain EULA terms are unreasonable and should not apply.

But I don't think any German court would deem the EULA clause that prohibits modification as "sittenwidrig" because it's the industry-standard clause that has been in use by virtually everyone for decades. So it is de facto "public policy".

Thomas Phinney

Richard, I wouldn't be in any way shocked if a future court contradicted the findings of Adobe v SSi, and Meshworks v Toyota certainly appears to be a binding precedent in the 10th District.

But your phrasing "unassailable precedent supporting the notion that fonts are not copyrightable" is a stretch, and more importantly "there have been no successful cases that have come to an opposing conclusion" is simply false. What's your argument here on Adobe v SSi? It was unsuccessful? The summary judgment did not represent an opposing conclusion?

Dave Crossland

JH y u no link?

Deleted Account

Dave... you are up to speed on US law now?

And, all legal software protection, and all property law whatsoever, really is just court appointed monopoly to something or other, ain't it?

Jan Schmoeger

JH y u no link?

It appears you forgot your customary smiley.

Josh Krämer

One thing also interesting to note is that in Germany, a licence agreement is only legally valid if the buyer has seen and accepted it before buying. For example, if an EULA for a software is shown to the user only during software installation, and the user clicks "Accept" to proceed with the installation, it is not legally valid in Germany, because at the point of installation, the user has already bought the software/licence.

Dave Crossland

And, all legal software protection, and all property law whatsoever, really is just court appointed monopoly to something or other, ain't it?

In a way you could consider property to be a sort of monopoly right, but this would only be confusing. The reverse is very common - to confuse monopoly rights with property rights - and confusion is the aim of people espousing the term "intellectual property."

For example, the term invites us to lose sight of the fact that monopoly rights have an end date, while natural property does not. 

Deleted Account

Well, that's good then no? Futura cannot be a monopoly, because it has protection with no end date.

yakunins

Ralph, I guess you are talking with wrong person. Find someone who make decisions at this museum.

Also, I can't figure out what solution you proposed to these people? Buy other license? Buy custom font that you made?

Georg Seifert

I wanted to ask that for some time: I wonder why someone wouldn't allow modification of fonts. As long as they have enough licenses and don't redistribut it or anything.

Jackson Showalter-Cavanaugh

The two best reasons not to allow modifications are license management and quality control. 

Dave Crossland

Well, that's good then no? Futura cannot be a monopoly, because it has protection with no end date.

Is there really no end date?

Richard Fink

@Thomas Phinney who wrote:

"But your phrasing 'unassailable precedent supporting the notion that fonts are not copyrightable' is a stretch"

No it's not, IMHO. The sentence in my post that contains the phrase you quoted has an URL to an article that refers to multiple court decisions and once you pile all of those decisions on top of each other, so to speak, they make the idea of actually winning a court case based on the copyright infringement of a font a total non-starter.

Thomas, really... in the absence of absolutely no case law to favor the idea that outlines of shapes that, in and of themselves cannot be copyrighted and by their nature must be slavish reproductions of those shapes, I ask you: do you think you could win an infringement suit anywhere in the country?

You can't, and that's why legal tussles over fonts are so few and far between. Do you know of ANY court case based on fonts being copyrightable that has been brought and actually gone to a decision?

FYI - The Bridgeman Art Library decision was really the death knell. And it had a lot of precedential value for two reasons: the first, is that it was well-reasoned and easy to comprehend. (How can a slavish reproduction of a work of art in the public domain - produced mechanically, through photography - be copyrightable as a new work?) and second, that it was decided in a New York court, New York being the place where cases involving museums and artwork and textual infringement usually land so even lower court decisions will sometimes take on the air of Appeals Court decisions because of the higher level of legal expertise assumed to have been brought to bear due to the location.

SSI is an old case (1992, I think?) that, at the time, got blown up way out of proportion for a variety of motives. SSI was an unpublished opinion with no value as citable precedent. It was, at that time, a straw to grasp for people eager to deter what they deemed piracy. People eager to spread the word that suing over font copyright was a doable proposition.

And the judge's comment in the case that purports that because there is "choice" involved in the selection of points the Bezier outlines are, therefore, protectable expression separate and apart from the typeface they depict, has had it's logical legs knocked out from under it in other later citable cases. (Feist, Apple v Microsoft)

I could go into more detail, but this is enough. SSI is a non-factor. You can't even cite it in a brief.

While I gotcha - how does one go about being a beta tester?

Ralph Smith

Museum responded - they stand by their claim that the contract (EULA) is with our distributor and they have not used or modified the underlying software and has therefore not infringed any software rights.

kupfers

That is weird. What does the destributor say to this? Don’t they make it clear that the EULA a client ticks off is with you?

Jan Schmoeger

Ralph, is it possible that they did not see the points overlap? It should be fairly easy to prove that they used your outlines as a start …

Ralph Smith

We do give a definition of "software" in our EULA:

1. "Software" means the current version of the machine-readable object code of the computer program contained in this package (which may include digitally encoded, machine readable, scalable outline font data as encoded in special format) and all documentation accompanying this package or provided electronically with the program.

Henning von Vogelsang

I haven’t legal background, but I have been confronted with intellectual property laws throughout my career in advertising, branding and digital productions.

There are three legal levels that could apply here:

1) Breach of contract: by purchasing the font set, the museum agreed to the EULA, which was part of the contract under trade law. In theory this should be enough to rule with a labour injunction (stop using the font).

2) Intellectual property: contrary to the US, intellectual property does not have to be specifically protected with a copyright or trademark label in Europe, to be identified as intellectual property. Any visual design is identifiable as original artwork, independently of the used tools. The definition of what makes an artwork original is what leads to conflict in court rulings. So far, courts have attempted to rely on a percentage of derivation: If the artwork is significantly different, it should be considered a new, original work (say, a collage, like Andy Warhol made them with branded items and celebrity photos found in newspapers). The problem of course is how to determine the originality, which is often a matter of concept rather than visual differences. In the last decades, with increase of digital copies, legal executive throughout Europe were shy to follow this practice.

3) Software: This has been discussed extensively above. Software makes it easier than say, a concept or visual representation of an artwork, to determine the difference between two sources. While there may be more rulings that used software instead of intellectual property as a legal case, chances to successfully employ this on a typeface design are rather slim in the EU. The court may compare the binary code and if the percentage of the different binaries in summary (uncompiled) is big enough, they may rule for it to be “new software”. I am not certain how software is defined in the EU, but at least in Germany, there is no specific law for it other than intellectual property.

On a good note, intellectual property cases are quite common in Germany right now, because German companies are fighting an increased number of intellectual property cases (with very limited success).

Two notes:

If I understand correctly, the font was distributed from the US, and the contracting party (the museum) bought it in the US. This means the case is not going to be made in Germany, but in the US.

If the legal case is made in Germany anyway, it may also be important to understand if the Museum is an incorporated company or a registered association (non-commercial). As an association they may claim to use the work for a limited audience and only in a specific, association related context, and they are not using it for commercial purposes. Depending on the interpretation of the EULA by a German (European) court, this may have an effect on the ruling.