Recently, a Navi Mumbai company faced a copyright infringement case for the unauthorized use of the Sailfin font. The case has been registered in Khandeshwar police station under the provisions of the Copyright Act, 1957, against a company and its owners for use of the Sailfin font without the permission of the firm that had developed it. As per the complaint, no license was obtained for making use of the font.
This raised a few important questions regarding the importance of ensuring that every aspect of your content is appropriately licensed before you publish the same anywhere. Even fonts, something that most people would fail to see, have it’s own copyright and any unauthorized use can lead to lawsuits, which can be expensive financially and time consuming.
In creating its website, print ads, bottling, labeling, and packaging, a company may use various fonts, which are often protected by copyright. If the company hasn’t properly licensed these fonts or uses them outside the terms of its license, it may face copyright infringement claims from the font owner.
We’ll try to analyze the protection granted to fonts and what criminal and civil actions are possible against such infringement.
Protection of Fonts as artistic works?
Fonts
A font is an assortment or set of type or characters all of one style and sometimes one size. Basically, font is a set of letters, numbers, and symbols that all share the same style and, in some cases, the same size.
The words Typeface and Font are terms that are often used interchangeably. A typeface represents a set of characters sharing the same design or style—think of Times, Arial, or Garamond. It denotes the visual style and aesthetic of the characters as a whole. Meanwhile, a font is a computer program that generates these text characters, typically accessible through word processors. Something like “Times New Roman, in Italic, with 12 pt” would be a font, while “Times New Roman” itself is a typeface.
Basically, a font is the computer program that brings the typeface into existence through a word processor, while the typeface is the style used in the text, that is the main difference. A font is generally copyrightable, a typeface on the other hand is not generally copyrightable.
Copyright Protection in India
Now given the way fonts are, which is a set of letters that share the same style, the first thought that comes is that copyright protection would be available to it, because the same style would make it an “artistic work”.
This, however, is not true. The Copyright Act, does not protect fonts as an artistic work. This was explained in the case of Aananda Expanded v. Unknown.
Aananda Expanded Italic, … v. Unknown[i]
Facts
M/s. ABP Ltd., a publishing house, (“petitioner”) applied for copyright registration for four Bengali fonts under the category of “artistic works” as per Section 2 (c) of the Copyright Act, 1957.
The fonts created were named (i) Aananda Expanded Italic, (ii) Aananda Expanded Bold, (iii) Aananda Expanded with x/xx Expanded, and (iv) Aananda Expanded Bold Italics and were submitted by petitioner. The fonts consisted of Bengali vowels, consonants, conjunct characters, and symbols. Some conjuncts minimized letter space, enhancing reading ease and efficiency.
The Copyright Office had denied copyright registration on the grounds that fonts did not qualify as an “artistic work”, under Section 2 (c) of the Copyright Act, 1957. The petitioner was not given a chance to present their case before the decision was taken against them. Aggrieved, the petitioner filed a writ petition in the High Court at Calcutta. The High Court subsequently ordered a review with a fair hearing for ABP. The petitioners then made further submissions in that hearing.
They submitted that these fonts were created by Debrani Gupta, an employee of the petitioner (publishing house), and the fonts, meaning the artistic works, were owned by the petitioner under ‘work for hire’ model. It was stated by the Board, petitioner being the owner of the work is acceptable, however, it depends on whether the subject matter is covered by copyright or not.
The applicant argued that the fonts or typefaces demonstrate sufficient originality, artistic quality, and labor, qualifying them as artistic works. They cited these cases:
- Stephenson, Blake & Co. v. Grant, Legros & Co. Ltd. (High Court of Justice – Chancery Division), where it was recognized that font design involves artistic merit, making it copyrightable.
- Roland Corporation and another v. Lovemo & Sons,[ii] where an Australian court held that copyright subsisted in two logos, the “B device” and “R device,” which were artistic representations of single letters created with careful design.
The primary legal question thus centered on whether fonts or typefaces can qualify as copyrightable “artistic works.”
Analysis of the Copyright Board
The Board here noted a key distinction: While logos or single letter designs might receive copyright protection due to their artistic merit, the protection of an entire alphabet, such as is required for typefaces and fonts, required further scrutiny. The Board held that, as what was submitted by the petitioner was a printout of the entire alphabet, if copyright protection was even granted, it would be applied to the entire work and not on a single alphabet. In the cited Stephenson, Blake & Co. case, it was ruled, that copyright would not extend to individual letters within an alphabet, and infringement would only occur if the registered work as a whole is copied.
The decision indicated that, if copyright is granted, it would apply to the entire alphabet arrangement, and not individual letters. The applicant then clarified they seek copyright on each individual letter and would file separate applications if necessary. The issue, therefore, turned to whether copyright can subsist on individual typefaces.
Under Section 2(c), “artistic works” include (i) paintings, sculptures, drawings, engravings, or photographs (regardless of artistic quality), (ii) architectural works, and (iii) other works of artistic craftsmanship. The applicants argued that their work qualifies as “artistic craftsmanship,” supporting this claim with the cited English case and expert opinions affirming its artistic value.
The applicants referenced a British case where typefaces were protected before they were formally recognized under British law. However, Section 16 of the Indian Copyright Act, 1957, states that copyright exists only as expressly provided, leaving no room for a common law copyright.
In 1988, the UK amended its Copyright Act to include typefaces. This amendment explicitly recognized typefaces as copyrightable, a provision not paralleled in the Indian Copyright Act, 1957, which does not extend copyright to typefaces.
The Board held that, according to the ejusdem generis rule, a general term following specific terms applies only to items of the same type. Therefore, the term “any other work of artistic craftsmanship” in Section 2(c) is limited by the preceding categories of paintings, photograph, or architectural works, etc. The Board held that Typeface designs do not fit within these specified categories, due to which the English law had later provided separate protection for them. The fact that the Act does not give a term of protection for typefaces/fonts, while giving specific provision for photographic works, showed that it was not the legislative intention to protect typefaces.
Conclusion
The Board held that typefaces cannot be registered as artistic works under the Indian Copyright Act, as they do not qualify for copyright protection. Even if considered artistic works, typefaces can be registered as designs. The English case of Stephenson, Blake & Co v. Grant, Legros & Co. Ltd. submitted by the applicants itself supported this contention that typeface is capable of being registered as a design. In that case, the basic fact was that the plaintiffs were the registered proprietors of Design No. 427,900 for the font of printing type known as “Windsor” registered on the 2nd of March 1904, under section 53(2) and (3) of the Patents and Designs Act, 1907. However, since the typefaces have been reproduced over 50 times, they are no longer eligible for copyright protection, and no registration could be granted by the Board at this stage.
Protection of Font otherwise?
As Design
As the Board above noted, typefaces could be protectable as “patterns” under Section 2(d) of the Designs Act, 2000. Under Section 15(2) of the Copyright Act, copyrightable designs not registered under the Designs Act are limited to fifty reproductions, after which copyright no longer applies. This effectively suggests that registering typefaces under the Designs Act is preferable, given copyright law’s reproduction limit for design works.
As Computer Program
It may be arguable that Fonts could be protected under the Indian Copyright Act, 1957. According to Section 2(o) of the Copyright Act, 1957, a “literary work” includes “computer programmes, tables and compilations including computer databases.” This broad definition could allow Font software, which comprises computer code, to be classified as a literary work, thereby making it eligible for copyright protection.
Therefore, while Fonts may not be directly copyrightable, the underlying software that generates those designs on digital word processors like Word and Google Docs could be protectable under the Copyright Act, 1957. This practice of registering Fonts as a computer software is present in the United States.
Font Protection in Foreign Countries
In the United States, typefaces themselves are not eligible for copyright protection. The Code of Federal Regulations, Ch. 37, Sec. 202.1(e), states: “[t]he following are examples of works not subject to copyright. . . (e) Typeface as typeface.” Additionally, the Copyright Office’s Compendium of US Copyright Office Practices clarifies that “[t]he Office cannot register a claim to copyright in typeface or mere variations of typographic ornamentation or lettering, regardless of whether the typeface is commonly used or unique.”[iii]
However, Fonts, are protectable under copyright law as a computer software, being considered original works of authorship in the form of a code. Therefore, while the typeface itself isn’t copyrighted, the underlying font software can be. This therefore means that the US law only protects font software, and not the artistic design of the typeface.
Germany however recognized in 1981 that typeface designs could be protected by copyright as original works.
In the United Kingdom, the Copyright, Designs, and Patents Act of 1988, recognises typefaces as artistic works, and therefore protects it as copyright. This was also referred to in the Aananda Expanded Italic case discussed above.
Risks of Unauthorized Use
The risk of unauthorized use of copyrighted works, such as typefaces, can result in significant financial damages for the rightful owner. In legal terms, infringement can lead to substantial monetary damages, including statutory damages and the potential for high compensation for losses suffered due to the infringement. Here is a list of cases related to copyright infringement of fonts / typefaces that are notable:
- Haribo Font Lawsuit (Active) – Font Diner sued Haribo for $150,000, alleging unauthorized use of a font on product packaging beyond desktop licensing rights.[iv]
- NBCUniversal Font Lawsuits (Resolved or Settled) – NBCUniversal faced two separate suits for $3,500,000 for overstepping font licensing terms in promotional and merchandising use. They were later settled.[v]
- Cher Font Lawsuit (Dismissed) – Moshik Nadav sued Cher for $5,000,000, claiming unauthorized use of his typeface on album art.[vi]
- Volvo Font Lawsuit (Unknown Status) – Berthold filed a $1,500,000 suit against Volvo, alleging corporate font infringement based on an unlicensed Berthold typeface.[vii]
- Microsoft Font Lawsuit (Unknown Status) – Tal sued Microsoft for $1,500,000, claiming unauthorized use of the Hadassah font without proper licensing from the original designer’s estate.[viii]
- Nike Font Lawsuit (Pending) – Production Type filed for $150,000 per infringement, alleging Nike’s overuse of Kreuz Light font beyond licensed permissions.[ix]
Actions available under Indian Copyright Act
In cases where someone uses a font software without proper permission or breaches licensing terms, the copyright owner can pursue infringement actions under the Copyright Act, 1957. Remedies available for the copyright owner include injunctions to prevent further unauthorized use, as well as damages or account of profits from the infringing party under Section 55. Additionally, Section 63 of the Act prescribes penalties for copyright infringement, including fines of up to 2 lakh rupees and imprisonment of up to 3 years for those found guilty of willful copyright infringement.
Conclusion
Therefore, the protection of fonts or typefaces is a complex issue, with fonts often falling under the category of computer software. The company filing a copyright infringement suit against a Navi Mumbai company for using a font without the appropriate license, would likely be based on the unauthorized use of font software, or maybe a design that is protected under the Designs Act, 2000, depending on the nature of the font.
Entities in India must be vigilant about ensuring proper licensing of fonts, whether for print, digital, or promotional use. It is crucial to thoroughly review and understand font licensing agreements to avoid unintentional violations. Companies should either acquire fonts with the necessary licenses or opt for open-source or public domain fonts to mitigate legal risks. Proper licensing not only ensures legal compliance but also safeguards the company against costly litigation and reputational damage.
End Notes:
[i] Aananda Expanded Italic, … vs Unknown, 2002 (24) PTC 427 (CB).
[ii] 105 ALR 623 (Aus).
[iii] The Fine Print: Avoiding IP Pitfalls in Unlicensed Fonts by: Shawn C. Helms of McDermott Will & Emery – Alcohol Law Advisor; https://natlawreview.com/article/fine-print-avoiding-ip-pitfalls-unlicensed-fonts#google_vignette.
[iv] https://lawdit.co.uk/readingroom/haribo-hit-with-copyright-halloween-headache-over-packaging.
[v] https://www.hollywoodreporter.com/business/business-news/nbcu-sued-harry-potter-font-theft-lawsuit-351823/.
[vi] https://www.reuters.com/article/lifestyle/cher-wins-dismissal-of-lawsuit-over-album-cover-font-idUSKBN16F2S6/.
[vii] https://cookcountyrecord.com/stories/511123136-berthold-says-volvo-violated-its-copyright-regarding-typeface.
[viii] https://forward.com/news/breaking-news/184194/microsoft-hit-with-13m-suit-over-hebrew-font/.
[ix] https://footwearnews.com/business/legal-news/nike-sued-production-type-unlicensed-fonts-1203411849/.
