Copyright © 1995 Paul F. Schaffner
ALL RIGHTS RESERVED
t may be supposed that digital fonts pose for the librarian the same kinds of problems, and that they should be treated according to the same guidelines, as other software. It may also be supposed that librarians and academic users fall outside the category of wholesale software- and typeface- pirates at which the majority of litigation is likely to be directed. To a large extent, these suppositions are true. Nevertheless, type, because of both its ubiquity and its unusual legal status, raises some distinct and thorny issues. Consider the following scenarios, all of which have occurred in my own experience:
good number of long-standing controversies on the scope of copyright entangle the copyright status of digital typography almost inextricably. The amount of protection that may be afforded to industrial designs; the distinction, if any, between useful and decorative articles; the separability of functional and aesthetic components of design; the kind of protection that may be afforded to software and to digital data; the status of common typeface names as trademarks, and the legitimacy of software licensing (and "shrinkwrap licenses" in particular) all involve themselves in the question of digital type. The last issue is a particularly vexing one, since software manufacturers have resorted to "licensing" their software precisely because they wish to evade the rights granted to purchasers (but not licensees) under copyright law. The question of software licensing is therefore quite distinct from questions of copyright and I will largely ignore it.
o determine the place of typeface designs among the works offered protection by copyright, or among those denied it, requires consideration of statute, legislative history, case law, and federal administrative rule and practice. Historically, these are far from independent sources. For example, language dealing with design was added to the Copyright Office regulations in the 1950s in an effort to implement the Supreme Court decision in the Mazer case (see below); this regulatory attempt to interpret the Court's interpretation of the 1909 Copyright Act itself became the basis for changes introduced by the 1976 Copyright Act; these changes, together with the House Judiciary Committe Report that commented on them, became the basis in the 1980s for new changes in the Copyright Office Regulations and practices; the Copyright Office rules have since then formed the basis for judicial decisions.
To begin in the middle, in the language of the 1976 act: no one doubts that a typeface design meets the fundamental test of eligibility for copyright protection, that of being an original work of authorship fixed in a tangible mode of expression;N1 nor that it is in some sense a "pictorial, graphic, [or] sculptural work." The vital question, however, is whether it qualifies as such within the definitions supplied by the statute, or whether it is excluded by virtue of being a "useful article":
The design of a useful article, as defined in this section, shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.N2A "useful article," moreover, is
an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information. An article that is normally part of a useful article is considered a "useful article."N3
Two points about this language should be noted, both relevant to the standing of typeface designs under the act. The first is that it attempts to codify in statute a broad de facto definition of useful object (an object having "an intrinsic utilitarian function") long employed by the Register of Copyrights in defiance of the Copyright Office's own regulation (which defined a useful object as one the sole intrinsic function of which is its utility).N4 Typefaces, in so far as they serve the ordinary purposes of printed communication, would seem to qualify as useful articles by this broad definition. More significantly, the definition of a PSG work attempts to codify the separability test introduced by the Supreme Court in Mazer v. Stein,N5 when the court held that the sculptural design of a lamp base was separable from the lamp that it supported and hence copyrightable. As the House Judicary Committee Report accompanying the 1976 act declares in commentary on this clause:
The Committee is seeking to draw as clear a line as possible between copyrightable works of applied art and uncopyrightable works of industrial design.... Although the shape of an industrial product may be aesthetically satisfying and valuable, the Committee's intention is not to offer it copyright protection under the bill. Unless the shape of an automobile, airplane, ladies' dress..., or any other...product contains some element that, physically or conceptually, can be identified as separable from the utilitarian aspects of that article, the design would not be copyrighted under the bill.... Even if the appearance of an article is determined by esthetic (as opposed to functional) considerations, only elements, if any, which can be identified separately from the useful article as such are copyrightable.N6
Unfortunately, despite the legislative attempt to codify and clarify the definition of a copyrightable PSG work, judicial effort "to apply the 'separability' standard has not resulted in a clear or consistent pattern of decisions."N7 With regard to typefaces, the most important aspect of the case law on the separability criterion is the extent to which courts have accepted the "conceptual" (as opposed to the physical) separability of aesthetic design elements (mentioned, note, not in the Copyright Act but in the Committee Report) from functional elements as sufficient grounds to award copyright protection. Assuming that typefaces are "useful articles" insofar as they are legible representations of letters, are the slab serifs of an "Egyptian"-style typeface conceptually separable from the letters? If so, is this separability sufficient grounds to award copyright protection to the design? Terrence Carroll has observed that the form that the separability test has taken in some recent decisions opens the door to the copyrightability of at least some typeface designs.N8 In particular, the Second Circuit Court of Appeals ruled in Carol Barnhart v. Economy Cover Corporation that a conceptually separable expressive element was sufficient to establish copyright protection for that element:N9 many decorative typefaces, if not the usual run of text typefaces, certainly contain such expressive elements. The court went further in Brandir International v. Cascade Pacific Lumber, adapting the "Denicola"N10 test and allowing protection to such elements as "can be identified as reflecting the designer's artistic judgment exercised independently of functional influences."N11 Under this test, almost all typeface variations are potentially eligible for protection.
Standing in the way of any such result are the long-standing resistance of the Copyright Office to registering typeface designs; the refusal of Congress to pass any of the dozens of design-protection bills that have been proposed, including some that explicitly protect typeface design;N12 and the apparently express desire of Congress to exclude typefaces from protection by the Copyright Act. The same passage of the Committee Report that discusses the separability test (and the protection afforded to architectural designs) goes on to declare:
The Committee has considered, but chosen to defer, the possibility of protecting the design of typefaces. A "typeface" can be defined as a set of letter, numbers, or other symbolic characters, whose forms are related by repeating design elements consistently applied in a notational system and are intended to be embodied in articles whose intrinsic utilitarian function is for use in composing text or other cognizable combinations of characters. the Committee does not regard the design of typeface, as thus defined, to be a copyrightable "pictorial, graphic, or sculptural work" within the meaning of this bill and the application of the dividing line in section 101.Again, this statement appears in the report of a single House Committee, and does not have the force of statute. The corresponding Senate Judiciary Committee report, in many places parallel to the House report, omits this section; but it should be noted that the original Senate bill contained a Title II devoted to giving limited protection to industrial designs, and that this title was omitted in the bill as passed, partly because it might have had the tendency to offer protection to typeface designs.N13 Congress has, in fact, been consistent in opposing protection for typeface designs, and the legislative history cannot reasonably be construed otherwise.
The single Circuit Court decision (and that, unusually, in the fourth circuit) explicitly to consider the copyright status of typefaces, Eltra Corp. v. Ringer,N14 was decided under the 1909 Copyright Act. Eltra Corporation sued in order to compel the Register of Copyrights to grant copyright registration to one of its typeface designs. The district court had dismissed the suit on the grounds that Congress, by failing to overrule the policies of the Copyright Office legislatively, had effectively accepted that Office's administrative interpretation of the 1909 Act.N15 The Appeals Court upheld the decision, on two rather different grounds: that typefaces failed the "separability" test; and that the legislative history of the 1976 act (at the time of the decision very recent history indeed), in particular the passage quoted above from the House Report, could be safely used as a guide to the interpretation of the 1909 Act. Though the principle is sound enough, based on the express intent of the 1976 Act to codify and clarify, not alter, the eligibility requirements of the 1909 Act,N16 and one widely employed elsewhere, its effect in this case is to make the House Report extremely influential, even retroactively, and to create an almost insuperable presumption against the copyrightability of typefaces. In February of 1992, this presumption was reinforced by the Copyright Office's Regulation 202.1(e),N17 which lists as "Material not subject to copyright," "Typeface as typeface" (Further on this regulation below). Under the so-called "Chevron doctrine," named after a case in which the Court held that any reasonable agency ruling ought to be upheld if it represented a reasonable interpretation of the statute being administered, the Copyright Office's regulation has exercised all the power of case law precedent or statutory enactment, and then some.
One potential shortcut to typeface copyright is to argue that typefaces designs are not designs for useful articles at all, thus obviating all the "separability" arguments based on industrial design. Carroll, for example, suggests that the useful item in question is not a typeface but a font, and that the relationship of font to typeface design is not that of article to design (like that of house to blueprint) but that of medium to art work (like that of book cover to photograph reproduced thereon). A font is something that allows a design to be seen; a design is not something that enables a font to exist in a particular form. An alternative argument, on the same lines, that seems plausible, though it is not one that I have seen made, is to argue that the utilitarian purpose of letterforms is precisely "to convey information"--the one function that in section 101 excludes an item from being considered a "useful article." I have not been able to ascertain what sort of article this clause was intended to cover, or why it should not be thought to cover letterforms--instruments of communication if anything is. While the current position of the Copyright Office obtains, of course, all such arguments remain moot.
o the perplexing problems posed by consideration of typefaces as useful articles, and of typographic style as conceptually separable from typographic functionality yet additional complications have been added by the development and widespread use of digital type. Could a computer program, normally accredited as a copyrightable work of literary authorship, continue to be regarded as such when its whole purpose was to generate unprotectible typefaces? On the other hand, if a computer font could be protected, why not also the typeface that it embodied?
The most important rulings bearing on these questions have been administrative rather than judicial or legislative. In 1986, the Copyright Office published a Notice of Inquiry in response to "applications to register claims to copyright in digitized information or material that represents typeface designs and is used to print texts," seeking "public comment about the copyrightability of digitized typeface apart from the uncopyrightable typeface design."N18 After receipt of considerable public comment, the "Policy Decision on Copyrightability of Digitized Typefaces," was issued two years later. Though it summarizes and discusses an interesting variety of opinions on the subject, its conclusions and policy recommendations are based heavily on the House Report and the Eltra case:
Although the master computer program used to control the generic digitization process is protectible and may be registered, if original, this protection does not extend to the data fixing or depicting a particular typeface or typefont or to any algorithms created as an alternative means of fixing the data. The Office will register a program that can be used to create digitized versions of various typefaces but will not register the data used to depict a particular typeface or individual letterforms. If the computer program submitted for registration includes data that fixes or depicts a particular typeface, typefont, or letterform, the Office requires an appropriate disclaimer of copyright on the application to exclude uncopyrightable data.N19The effect of this ruling was, at least on the face of it, to disallow copyright registration for digital fonts, however they might be implemented. It explicitly disallowed registration of bitmapped fonts, point-defined scalable fonts, and Bezier-curve-based outline fonts, as well as any comparable method of representing typographic data. Only generic font-generation programs (like Bitstream's "Fontware") could be registered--not the font outlines (like Bitstream's .BCO-format fonts) that they employed.
Though the 1988 ruling directed type designers to Congress as the only source of remedy for those seeking protection, in fact the Copyright Office itself reconsidered its ruling only three years later, "concerned that [recent] claims represented a significant technological advance."N20 It is not entirely clear, either from the notice of enquiry or from the comments received, just what the technological advances consisted of: hinted font outlines had been explicitly mentioned, and rejected as uncopyrightable, in the 1988 ruling. The one advance mentioned, the creation of scalable fonts from already digitized typeface data as opposed to the digitization of pictorial data, does not seem sufficient to justify changes. Nevertheless, the 1992 ruling that emerged from the enquiry process reversed to a significant degree the policies laid down by the 1988 decision:N21
The Copyright Office is persuaded that creating scalable typefonts using already-digitized typeface represents a significant change in the industry since our previous Policy Decision. We are also persuaded that computer programs designed for generating typeface in conjunction with low-resolution and other printing devices may involve original computer instructions entitled to protection under the Copyright Act. For example, the creation of scalable font output programs to produce harmonious fonts consisting of hundreds of characters typically involves many decisions in drafting the instructions that drive the printer. The expression of these decisions is neither limited by the unprotectible shape of the letters nor functionally mandated. This expression, assuming it meets the usual standards of authorship, is thus registrable as a computer program.The Copyright Office further emended its practices so as no longer to require a disclaimer of copyright in typographic elements contained in software programs. These changes resulted in the amended regulation 37 CFR 202.1(e) (forbidding the registration of "Typeface as typeface"--implying that typeface as software could be registered). The change of practice with regard to the disclaimer was regarded as just that, not a change of regulation, and was recorded as such; manufacturers whose programs had already been registered with the office would not be allowed to re-register with the intention of removing the disclaimer requirement. And the change of policy with regard to registering font-generating software was described as a clarification. Indeed, it appears that it reflected and did not create changes in practice, for the Copyright Office had accepted typeface outlines for registration as early as 1990, when Adobe's Garamond Light was granted copyright registration number TX 396-004.N22 Adobe had, as contemporary practice dictated, specifically disclaimed all copyright in the "underlying typeface characters" and the overall design, but successfully registered the font anyway.
Absent any case law on the subject, the following seems to represent a conservative view of the present situation in the United States:
Counterarguments and clarifications are welcomed.
n the interests of space, of I have omitted consideration of several issues that influence or seem likely to influence the protection granted to digital typography. International practice, increasingly codified by multilateral treaties, increasingly grants protection to digital type. Interactive type creation, of the sort pioneered by Adobe's Multiple Master technology, will increasingly leave the authorship and fixedness of type designs in question. And, most influential of all, the institutional environment in which digital type is created, organized chiefly around elaborate licensing agreements (in default of copyright protection), will continue to dictate for the forseeable future the terms under which high-quality professional typefaces can be obtained and used.
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