Dear Alphabettes: Legal protection of typeface design

Dear Alphabettes,

I have a question about the legal protection of typeface design. Is registering a typeface design (in addition to its name) something that should always be done? After asking different lawyers, some would advise doing it each time (more work for them), some say that registering the name is already a protection that can be considered enough, although not 100% protection.

Lisa (France)

NOTE: The answers below are comments from members of Alphabettes. The information shared here is based on their own experiences, and may not necessarily accurately reflect the law in the countries being discussed. We always recommend getting legal advice specific to your situation.

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Hi! In Argentina I have mine registered as an artistic work and as software, they are two different procedures focused on protecting different things (drawing and font files). I don’t have a name registration, I don’t think there is something like that here. However according to the intellectual property lawyer I consulted, no registry is valid internationally since there are different laws, if something happens I have to appeal to the laws of the country where it happens (I don’t know if this is true) 

Fer (Argentina)

If you can easily prove you are the author of a typeface—usually the case in typeface design—you are protected by law with no registration. The same happens with font names if you can prove you were the first to use it in the market. Having a registered trademark will help in disputes but it’s not mandatory.

If you decide to register your work, most countries don’t have a specific registration process for font software or typeface design. You need to choose within the existing legal procedures, one that better fits your needs, either as a piece of software or design.

Following the advice of a lawyer specialising in tech, we registered the font name as a trademark, trying to help in a dispute. This registration includes a sample image of the typeface, similar to a logo. We chose a category called “recorded or downloadable media, software”. We described the registration as (Spanish translation) “digital registration and storage media of a typeface with a specific design, presented in the form of downloadable and installable files in computer operating systems (for offline use) and servers (for online use)”.

María (Spain)

For a typeface, there are several things you can protect:

• the name
• the design
• the software

Different rules apply depending on the country where you work, the client or company you work for, and your nationality.

In France and other European countries, you can protect the name of your typeface as a brand. The registration costs money, but the main expenses arise if you have to defend your brand.

In France, the principles of author’s rights protect very well all original pieces that you can prove you have created. It is useful to document your creative process and have evidence of the originality and that you are the author (there are online platforms where you can deposit your files and certify a date of creation). And I’d say that this is the most important thing to do, in addition, it’s the least expensive.

Again, if someone steals your work one day, you will have to defend your interests, and that’s where it gets expensive. Depending on who the opposing party is, it might be worth it or not. In this case, it’s useful to have documented all of your process and be well-surrounded and supported, being a union member can help on several sides (and that’s something to consider before having any kind of problem).

Carine (France)

Lisa, I am a lawyer, but this is not legal advice, just general information as I know there can be a lot of confusion about these issues!

As already said, there is no single answer here, as IP protections for fonts depend on the national law of the country in which the font was created and first published (I’m focusing on trademark and copyright in my comments below, but some countries may have additional forms of protection such as patent or other design rights too). 

Registering the name of your font as a trademark (or equivalent) is generally the easiest first step in most countries and something many designers do. Regarding copyright protection, in many countries, copyright automatically attaches when the work is created, so registration of the work isn’t necessary. In the US (where I am based), works don’t need to be registered, but US works must be registered before filing a lawsuit for copyright infringement. Whether you can assert copyright over the typeface designs themselves, or just the font software, also depends on the country in which you create and first publish the work. Typeface designs receive no copyright protection in the US, for example.

All this concerns registration. As Carine mentioned, enforcement is a separate question. Due to a system of international treaties (the main one being the Berne Convention, to which the vast majority, though not all, countries are parties), if you were to find yourself needing to enforce your copyright in another country, that would depend on the law of the country where the infringement occurred. So you might have registered your copyright in France, say, but if the infringement occurs in the US, you would need to sue in a US court, which will apply US copyright laws to the dispute. Not only does this create added costs for you, but you may not receive the same protections under the law of the other country that you do in your home country — as mentioned above, you wouldn’t be able to assert any copyright interest in the typeface designs themselves in the US, for example. (It’s also worth noting that for non-US works, you do not need to register your copyright in the US in order to sue for copyright infringement in the US, but there may be reasons you would want to before pursuing any US enforcement action, such as to be able to claim statutory damages and attorneys fees). 

As might be clear from the above, this can all get complicated very fast, so make sure you get legal advice from a lawyer in your own jurisdiction regarding IP protection and registration issues, and in a foreign jurisdiction if there is infringement taking place there! 

Christine (United States)

Hi Lisa! Great question raised and difficult one. I believe the legal protection of the “font” differs among countries. In Japan “font” itself as digital software is protected (meaning copying or illegally possessing it will be legally accused) but not the design. In Korea on the other hand, a designer named Kijo Kim filed a lawsuit against a certain type foundry for creating a font from his lettering work. If I recall correctly he won and his design lettering work was accepted as “intellectual property”. Hope this info is helpful 🙂

Similar lawsuit example in Japan: Shaken, the prestigious phototypesetting company which used to be bigger and more dominating than Morisawa, filed a lawsuit against Morisawa accusing them of copying their font “Gona” (the accused font of Morisawa is called “ShinGo”). The lawsuit was so big that it went up to the Supreme Court, but the court ruled that since their fonts are both sans serif they can’t avoid some similarities.

Also, both Korea and Japan have many cases in which type foundries sue licensees (users) for illegally possessing or using their fonts. “Font” as a digital software is protected strongly in Korea and Japan.

Min-Young Kim (Japan)

Do you also have a question about font software, the universe, or everything else? Send it over and if the answer doesn’t fit into a tweet, we may reply here.

To go further, here’s an incomplete list of trademark registration offices, professional organizations and other resources sorted by country:

Argentina
DNDA, Dirección Nacional del Derecho de Autor

France
INPI, French Patent and Trademark Office
The essentials of French copyright in 20 tips to download, Alliance France Design 
Toolbox for artists and designers, ADAGP

Korea
Font copyright, Korea Copyright Commission
Design protection law, Patent Office

Mexico
Indautor, Instituto Nacional de Derechos de Autor

Spain
OEPM, Oficina Española de Patentes y Marcas

United States
USPTO, United States Patent and Trademark Office
U.S. Copyright Office

International
EUIPO, European Union Intellectual Property Office
WIPO, World Intellectual Property Organization