Mallory Chandler

Pryor Cashman Partner Dyan Finguerra-DuCharme, co-chair of the Trademark Practice, and Associate Mallory Chandler, a member of the Litigation and Intellectual Property Groups, have co-authored an article for Law360 about the impact of intellectual property law on fonts.

In “IP Suits Over Brand Owner Font Use Offer Cautionary Tales,” Dyan and Mallory provide background information on fonts and typefaces, and discuss the types of IP protections available for fonts:

All three intellectual property disciplines can protect certain aspects of fonts: trademark, patent and copyright. Trademark law protects the name of a typeface, like “cooper black” or “helvetica,” but not the design of the typeface or font itself. While logos using a certain font are subject to trademark protection, it is the overall logo that is protected, which includes the terms, not just the font itself.

Typefaces can be protected by design patents, which protect the ornamental design of a typeface for 15 years. The U.S. Patent and Trademark Office has issued almost 400 design patents covering typefaces over the last 20 years. In fact, the first design patent ever issued in the United States was in 1842 to George Bruce for a typeface.

While typefaces lack the requisite minimal creativity threshold to qualify for copyright protection, the computer code that generates a font is protectable by copyright. Therefore, a claim for copyright infringement of a font is not technically based on protection of the font design, i.e., how the font looks, but more specifically is based on protection of the source code that generates the font design.

They also outline the licensing process for fonts—and what might happen to companies that use a font without a license:

Brand owners and product designers should always check to make sure they are paying for the correct license for a font they want to use, or check that the desired font is subject to the OFL or another similar open-source license.

Otherwise, the user could end up like Zazzle Inc., an online marketplace sued for allegedly using plaintiff Nicky Laatz’s fonts under an improper license, copying the software subject to that license onto its own servers, and using the fonts on its website, making them available to tens of millions of users of Zazzle's services without compensating the plaintiff. On Oct. 23, the U.S. District Court for the Northern District of California issued an order granting in part and denying in part the plaintiff's motion for partial summary judgment.

Or like Rite Aid, which was sued last year in the U.S. District Court for the Eastern District of Pennsylvania by Brand Design Company Inc. d/b/a House Industries for allegedly using the font neutraface as the basis for its new logo and product packaging, among other things, in violation of the desktop license for the font, which specifically prohibits the use of the font in logos.

Read the full article using the PDF above or the link below (subscription may be required).