13 Current Status and Problems Concerning Typeface Protection in Foreign Countries

Typefaces are becoming increasingly important in various media with the progress of digitization, and there are calls for discussions on how typefaces should be protected. In order to examine possible systems for typeface protection that befit the current situation, it is necessary to clarify the typeface-related markets and the distribution channels and modes of transaction of typefaces, as well as gain a precise understanding of the need for typeface protection. In this study, we gathered information concerning the demand of the industrial sector and reviewed and examined court judgments and academic theories concerning typefaces in Japan. In addition, with the aim of contributing to future studies on typeface protection in Japan, we surveyed and analyzed the historical background and the current status of the typeface protection systems of major countries (the United States, the United Kingdom, Germany, France, the European Union and the Republic of Korea).

I Introduction II Background of Discussions on Legal Protection for Typefaces in According to the concept of ownership Japan under natural law, a typeface design, created by an individual, should originally belong to 1 What Are Typefaces? the individual in question. However, as A typeface is a single-set type style based typefaces are related to written characters, on a unified concept, the primary purpose of which are common property of all people, which is setting type for printed matter or such individuals can only claim ownership of other documents. Typefaces are generally the design (type style) applied to the used in the form of fonts so as to be characters (character shape), which are incorporated into equipment. common property of all people. The modes of transaction of typefaces 2 Creation Process and Modes of have diversified in line with advancement of Distribution/Transaction of Typefaces digital networking, so when examining legal The design of a typeface is usually drawn protection of typefaces, it is necessary to gain on paper or created on a personal computer a precise understanding of the demand and with the assumed purpose of using it as a necessity for such protection. We compiled font matrix. However, the characters set at this report by comparing the status of legal this stage cannot be directly used for protection for typefaces in Japan with that in typesetting. Therefore, typefaces are changed place in foreign countries based on an into type fonts that take the form of printing interview survey of Japanese types, phototypesetting fonts or digital fonts typeface-related associations and companies for actual use in the printing or displaying of and a fact-finding survey on typeface characters. protection in Japan and foreign countries. The total amount of transactions in the typeface/digital font market is estimated to be approximately 100 billion yen per year, and the market is expanding with the products being traded as digital content products under licensing agreements via

1 IIP Bulletin 2007 CD-ROMs and the Internet similar to III Current Status of Legal Protection computer programs. for Typefaces in Japan

3 Trends in Legal Protection for 1 Protection Under the Copyright Act Typefaces The Japanese Copyright Act does not In regards to typeface protection under have direct and express provisions for the Copyright Act, the Supreme Court protecting typefaces. With regard to the indicated the following as requirements for copyrightability of typefaces, there have been typefaces to be regarded as a copyright work: arguments as to whether or not they fall “it is reasonable to construe that, in order for under the category of art under the Copyright a printing type style to correspond to a work Act, but there have been no cases where as prescribed here (N.B.: Article 2(1)(i) of the typefaces were held to be copyrightable Copyright Act), it needs to have originality, except in some very special cases. such as outstanding characteristics in Among the reasons for the difficulty in comparison to conventional printing type protecting typefaces under the Copyright Act styles, and it needs to have aesthetic are the following: (i) it is hard to identify characteristics so that it can be appreciated originality that would differentiate the as art in itself.” Although this court judgment typeface from conventional ones; (ii) it is hard did not deny the copyrightability of typefaces, to identify oneness that derives from the it has been interpreted that typeface typeface being a single, unified set; (iii) it is protection under the Copyright Act is hardly difficult to establish whether copyright possible since the typeface related to this pertains to individual characters or to a set of court judgment was recognized in the characters; (iv) it is difficult to determine the industry as being highly creative. extent of alteration that is regarded as reproduction; and (v) if the standard for 4 Demand and Necessity for Legal determination of originality is relaxed, too Protection of Typefaces many rights could arise and thereby could In this study, we conducted an interview run contrary to the purpose of the Copyright survey covering seven industrial associations Act. that are considered to work closely with typefaces. As a result, we found a trend that 2 Protection Under the Design Act the demand for typeface protection is higher During the Meiji Era (late 19th century for industries with a larger number of to early 20th century), Japan recognized typeface manufacturers. design registrations for printing type styles. From the typeface users’ side, on the However, the current Design Act protects other hand, there was an opinion that designs applied to articles, which are because typefaces are for public use, tangible goods mass-produced by industrial establishment of a legal system for typeface means. Therefore, it is difficult to protect protection would obstruct smooth business typeface designs, which are character designs activities and hinder promotion in an that are not directly related to the production information-oriented society. There was also of articles, under the current Design Act. an opinion that the need to determine infringement, which requires enormous costs 3 Protection Under the Unfair and efforts, and the increased risk of disputes Competition Prevention Act could reduce business activity. Also, many The Unfair Competition Prevention Act users opined that typeface protection under aims to protect business interests by the current Design Act was inappropriate. prohibiting unfair competition in the business sector. When considering typeface protection under this Act, the problem is whether or not typefaces can be regarded as

2 IIP Bulletin 2007 “goods” or regarded to be equivalent thereto. protection is being extended to typefaces. There is no fixed view regarding this point in However, courts have held that court judgments either. However, even if infringement or tort cannot be established typefaces could be regarded as “goods,” there when the typeface in question cannot be are strict requirements in terms of similarity, determined to be an imitation due to a slight how well known they are, and the potential alteration, and have indicated that, even for for confusion with other goods. Therefore, the above-mentioned typefaces that can be protection under the Unfair Competition regarded as copyright works, it would run Prevention Act could provide certain legal contrary to the purpose of the Copyright Act relief against slavish imitations, but it would if the originality requirement were relaxed or not be a sufficient relief because, in if this were to be considered sufficient for the individual cases, the requirements for typeface to have an aesthetic characteristic protection would be difficult to satisfy. from the viewpoint of practical function. Therefore, whichever law is applied, the 4 Protection Under Tort Law scope of protection would be extremely In regards to typeface protection through narrow, limited to merely preventing tort theory under the Civil Code, there have reproductions of effectively identical been court judgments that tried to establish typefaces. tort only in the case of slavish imitations, but there seems to be little possibility for application of tort for the protection of IV Current Status of Legal Protection typefaces, which can be easily modified and for Typefaces Overseas transformed. 1 Typeface Protection Under the Vienna 5 Protection Under the Trademark Act Agreement The name of a typeface, such as “Typos,” On June 12, 1973, the “Vienna can be protected under a trademark right by Agreement for the Protection of Type Faces registering it as a trademark. However, and Their International Deposit” and the registration of the name only constitutes one “Protocol to the Vienna Agreement for element of typeface protection, and the Protection of Type Faces and their subject of the trademark registration would International Deposit concerning the Term of be phototypesetting font disks or CD-ROMs, Protection” were concluded at a diplomatic so the intangible typefaces would not be conference held in Vienna. directly protected. This agreement clarifies the definition of typefaces and obligates the contracting states 6 Consideration on Typeface Protection to establish special national deposit systems Under Current Japanese Laws or use the deposit systems provided for in No current Japanese laws expressly their national industrial design laws, or to provide for typeface protection. However, ensure the protection of typefaces by their given that past court judgments have national copyright provisions. suggested protection of slavish imitations of The Vienna Agreement was to take effect fonts through the application of the Unfair through ratification by at least five states, Competition Prevention Act, the tort theory but it has yet to take effect as it has only been under the Civil Code, or the Copyright Act by ratified by Germany (former West Germany) regarding typefaces as computer program and France. works, and have indicated that typefaces (1) United States with originality in comparison with The United States Patent and conventional typefaces and those with Trademark Office (USPTO) has traditionally aesthetic characteristics are regarded as granted design patents for typefaces (type copyright works, it is estimated that some fonts). Indeed, the very first US design

3 IIP Bulletin 2007 patent, which was issued on November 9, Designs and Patents Act (CDPA 1988). The 1842, was for “printing types.” CDPA 1988 also provides for the However, the USPTO appears to take a unregistered design right system, which stance that a “typeface,” which consists of a protects designs from imitations even set of characters that commonly share without design registrations. However, since specific design characteristics, is not unregistered design right is construed to only protectable by design patent since it is not an protect three-dimensional forms, article of manufacture, but that a “font” is metal-printing types would be protectable, protectable by design patent because it but digital typefaces would not be incorporates the means used for creating a protectable. particular collection of characters of a It is generally accepted that the typeface and said means corresponds to an “typographic type-faces” prescribed in the “article of manufacture.” Registered Designs Act include intangible A design patent owner of a font is typefaces. Digital typeface data does not granted a monopolistic exclusive right to comply with the definition of design since prevent other people from manufacturing, such data does not have features such as using, offering to sell or selling a font “lines, contours, colours” and so on producing comprising the claimed design within the the “appearance” of the data. United States or importing such fonts into Printing types and phototypesetting the United States for 14 years from the date machine font disks per se correspond to the of issuance of the design patent. definition of “product” as being industrial or Determination of the scope of articles handicraft items. infringing a typeface is based on whether or The owner of a registered typeface has not the article corresponds to the claimed an exclusive right that prohibits other people means for creating the font. While the font from using the typeface in question, but an disk of a phototypesetting machine or a act of creating an article that makes creation storage medium containing a digital of a primary infringing article possible does phototypesetting program for a typeface can not constitute infringement. Therefore, molds, constitute an infringing article, a program or printing plates or matrices used for creating piece of software alone is construed as not the registered design can be manufactured corresponding to an infringing article unless and supplied without infringing the it is, for instance, installed on a computer for registered design right. the purpose of creating the font in question. It is not an infringement of copyright in Typeface protection under copyright law an artistic work consisting of the design of a has been denied under US case law, and typeface to use the typeface in the ordinary typefaces are not protected under the US course of typing, composing text, typesetting Copyright Act. However, font software or printing, to possess an article for the programs for creating typefaces are purpose of such use, or to do anything in copyrightable and can be registered. relation to material produced by such use (2) United Kingdom (Section 54(1) of the CDPA 1988). Therefore, In the United Kingdom, designs are when a final or intermediate typeface user, protected by registered design right, such as a printing business, uses the typeface unregistered design right, and copyright. in the ordinary course of business, it is not an The Registered Designs Act pertaining to infringement of copyright in the design. registered design right was revised in 2001 in Where copyright subsists in a work response to the EU Design Directive, which consists of or includes a design in clarifying that “type-faces” are included which design right subsists, it is not an among “products” pertaining to design. infringement of design right in the design to Meanwhile, typeface protection by do anything which is an infringement of the copyright is provided for in the Copyright, copyright in that work (Section 236 of the

4 IIP Bulletin 2007 CDPA 1988). characters and their original shapes, but the (3) Germany impression created by way of interaction of Typefaces came to be directly protected the individual characters within the by law in Germany when the Law on the character set in its entirety. Therefore, even Vienna Agreement of June 12, 1973, for the when a part of a type style in a typeface set Protection of Typefaces and their application lacks novelty or originality, International Deposit (Typefaces Law) protection for the entire typeface is not provided that “new and peculiar typographic precluded. Nevertheless, partial registrations characters shall be granted design protection of typefaces are not permitted. based on the following standards in The old Designs Law and the Typefaces accordance with the provisions of the Law Law previously provided for design rights as Concerning Copyright in Industrial Designs rights aimed at prohibiting reproductions. In (Designs Law)” (Section 2(1)). contrast, the current Designs Law provides Later, in response to the effectuation of for design rights as monopolistic exclusive the EU Design Directive on November 17, rights that also extend to original creations 1998, a revised Designs Law entered into by third parties. force on June 1, 2004, which expressly (4) France indicates that typefaces are included in the France achieved protection of typefaces “product” protected by design rights. With under the Design Law by incorporating the this measure, legal protection was extended EU Design Directive in Book V (current to typefaces under the current Designs Law. Design Law) of the French Intellectual Under the current Designs Law, the Property Code and providing that typefaces definition of “product” is construed as not are included among “articles” protected as being limited to tangible items, but also designs. extending to two-dimensional (graphic Protectable articles must have been symbols or typefaces) or three-dimensional created as a result of human activities. (ordinary goods) items. Accordingly, Therefore, “typefaces” are interpreted as intangible type style designs are included in referring to tangible items such as the “product” category, but digital type style phototypesetting machine font disks design data is not considered a “product” designed to display or print specific type since “computer programs are not deemed to styles, and do not include type style designs be products” (Section 1(2)). per se, which are intangible. Digital type The requirements for protection of style design data is construed as designs under the current Designs Law are unprotectable since computer programs are as follows: (i) novelty; (ii) originality; and (iii) excluded from the definition of articles. not constituting a feature of the product’s Ornamental or aesthetic creations that appearance that is solely the result of the are expressed in the form of designs are product’s technical functions. However, in protected under either the Copyright Law or the old Designs Law and the Typefaces Law, the Design Law or under both of these laws the only requirements were novelty and in accordance with to the choice of the creator. originality. This seems to illustrate that, This system derives from the theory of the while originality under the old Designs Law unity of beauty, which is an idea that was based on a copyright-like approach and protection for a work is not affected by the focused on aesthetic peculiarities, originality aesthetic value or the purpose of the use of under the current Designs Law attaches said work. According to this definition, rights importance to the difference between for a work created by way of the creator’s own already-known designs and newly filed inspiration are protected as copyright designs. irrespective of the type, mode of expression, A typeface protected under the Designs usefulness or purpose of the work in Law does not constitute the individual question.

5 IIP Bulletin 2007 Design rights are a monopolistic designs and achieves protection of typefaces exclusive rights based on which a design is as design rights within the European Union. regarded as an imitation if it is found to have This regulation provides for two systems, similarities with the essential characteristics namely registered Community designs and of a protected design. However, there is a unregistered Community designs that are provision stipulating that third parties are effective across the European Union. not subject to civil liability if they can prove Registered Community designs take effect that their original creations have been made through registration with the Office for in good faith, thereby limiting enforcement Harmonization in the Internal Market based on the monopolistic exclusive right in (OHIM) and the term of protection is a only that respect. maximum 25 years from the filing date. On With regard to typefaces, which are the other hand, unregistered Community characterized by the fact that the character designs take effect without formalities on the shapes, i.e. the design frameworks, are day on which the design was first made common property of all people, exclusive available to the public in the European Union, rights can only be enforced when a design not and the term of protection is three years. only has characteristics that are similar to The protectable subject matter protected design, but the similar associated with typefaces include tangible characteristics in question are not in the goods such as printing types and font disks of public domain. In other words, the design phototypesetting machines, but digital must be similar to the essential typeface data is not protectable since characteristics pertaining to the originality of computer programs are excluded from the the protected design. definition of “products.” The Intellectual Property Code does not An indication of the products in which have provisions regarding the right to seek the design is intended to be incorporated or to infringement against acts of infringement. which it is intended to be applied is obligated However, infringement can be sought under at the time of filing an application for the provisions on “summary interlocutory registration, but the indication or proceedings” under Article 809 of the Code of explanation of products or the classification Civil Procedure. Summary interlocutory of products contained therein do not affect proceedings are allowed only when the the scope of protection in relation to the plaintiff has proved infringement of his/her design itself. right or imminent risk thereof by way of A registered Community design is a easily accessible evidence. monopolistic exclusive right that also extends Two seizure procedures are stipulated: to original creations by third parties. creation of a detailed description of the However, an unregistered Community design infringing articles, etc. (first procedure) and constitutes a right to prohibit reproductions actual seizure (second procedure). Generally, and does not extend to cases where third seizing officers only seize samples within the parties have independently used a design scope of the first procedure and do not seize without knowledge of the design owner’s all of the articles or equipment. The reason published design. for this is that as seizure does incur serious The scope of “products” that could damage to the defendant, it merely constitute infringement are products that constitutes a means for proving infringement have as their function the creation of and not a punitive procedure. succeeding products in which the protected (5) European Union typefaces are intended to be incorporated, The Council Regulation (EC) No. 6/2002 such as word processor software of 12 December 2001 on Community designs incorporating phototypesetting machine font (the EU Design Directive) provides for disks or typefaces as fonts. However, typefaces as products to be protected as personal computers with such word processor

6 IIP Bulletin 2007 software pre-installed do not correspond to extend to the use of the style of calligraphy in “products” because the appearance of an ordinary process such as typing, typefaces cannot be perceived in ordinary use typesetting or printing and to the resulting when said software is not being used. products stemming from the use of the style (6) Republic of Korea of calligraphy, thereby limiting the The “Industrial Design Protection Act,” monopolistic exclusive right to that extent. which saw the law title changed from the conventional “Design Act” on December 31, 3 Comparative Examinations on 2004, introduced express provisions for Typeface Protection in Major typeface protection at the time of its revision Countries by including the style of calligraphy within Based on the survey results of the six the definition of “articles,” and providing that foreign countries, comparative examinations the “style of calligraphy” refers to “a script were made in regards to the modes of legal (including numbers, marks, symbols etc.) protection for typefaces in the surveyed made in the form of common features for use countries. in recording, marking or printing.” Specifically, we compared the differences As the conventional Design Act had in the systems and legal interpretations in stipulated independently tradable tangible these countries with regard to themes such movables as “articles,” the calligraphy style as the concept of products (articles), designs, which could not be categorized as treatment of computer programs, the scope of “articles,” were unprotectable under the concepts covered by typefaces (analog fonts, Design Act. Because of this, typeface digital fonts, typeface designs per se), protection was achieved under the new Act requirements for protection, registration by deeming the “style of calligraphy” as systems, the effects of the design right, the “articles.” scope of articles to which protection extends, The “style of calligraphy” under the the scope of acts to which the protection Industrial Design Protection Act does not extends, and enforcement against include the design of the style of calligraphy infringement. per se, but includes analog fonts such as As a result of such comparative printing types and phototypesetting machine examinations, we found considerable font disks and digital fonts such as electronic differences between countries in respect to data pertaining to calligraphy style design the concepts of protectable designs and recorded in computers or electronic memory products, the effects of design rights, the devices and used for printing the style of scope of articles and acts to which protection calligraphy. extends, and the scope of enforcement The requirements for “a script” are that against infringement, even between the entire script must be made in the form European countries that have revised their bearing common features and the script must design laws based on the same EU Design constitute a set. Directive. There have only been two cases where One of the assumable causes for such typefaces were actually registered and differences between countries in regards to published. According to the Korean the concept of products, the concept of Intellectual Property Office, many typefaces, and the scope of enforcement is applications are filed, but many are refused that the basic concepts under conventional in the examination process. law and the provisions for typeface protection A design right is a monopolistic exclusive have not been rendered consistent and right, which also extends to original creations arranged into a consistent logic in the by third parties. However, there are provisions of law. For example, in the United provisions on limitation of effects stipulating States, the Republic of Korea and European that the effects of a design right do not countries, conventional and typical

7 IIP Bulletin 2007 “products” have mainly been regarded as of the provisions and specific details of tangible goods represented by industrial typeface protection under the design laws of products, and by adding typefaces that the respective countries were found to be embody the concept of design per se, a part of neither concrete nor clear, possibly due to the conventional concept of products may lack of sufficient discussions, examinations have been rendered ambiguous and and debates on the occasions of legal revision inconsistent. and lawsuits in these countries. At the same time, typefaces are by their For example, responses from the very nature items that are used and featured respective countries lacked commonalities on all kinds of articles that display regarding the specific status of use, including characters, such as books and other printed the manufacture, sale, possession and import matter and Internet web pages. Therefore, of typefaces that are regarded as intangible when they are protected and such protection goods and the specific status of acts of is made enforceable by recognizing infringement, the question of the extent to monopolistic exclusive rights, there is also which the effects of a design right can apply the risk that the influence that such rights to products that incorporate allegedly represent would become excessive. However, infringing typefaces in order to seek an apart from the Republic of Korea, which injunction against said typeface, and the maintains provisions for limiting the effects question of the scope of responsibilities of of such rights, there are no provisions that bona fide manufacturers and distributors of limit the scope of the effects of the products incorporating an allegedly monopolistic exclusive right pertaining to infringing typeface when the infringed party typefaces. requests deletion of said typeface from their In Japan, the definition of design has products or changes to said typeface. In been reviewed by way of a partial revision of addition, none of the countries provided the Design Act in 2006 for the purpose of responses that suggested that sufficient expanding the scope of protection of screen discussions and examinations have been designs. In this revision, however, the scope made regarding these aspects. of protection was expanded not by way of In the United States and the Republic of expanding the concept of “articles,” but by Korea, typefaces are protected by deeming also extending protection to “shape” and them as articles, without changing the “patterns” of a part of an article in a graphic definition of the design, which is based on image on a screen. tangible articles. Thus, these systems lack Since the basic ideas underlying design clarity as to whether it is typefaces or type law differ between countries, it would be fonts that are subject to protection, while the meaningless to argue which approach is concept of protectable subject matter appropriate, but considering that Japanese constitutes the starting basis of the law maintains as a fundamental concept that institutional framework. Because of this, a design rights should be based on articles, the detailed examinations or hypothetical concepts and methodologies for typeface verifications regarding contents of protection adopted in the surveyed countries infringement or interpretation of the scope of are unlikely to be directly adaptable to the right, which constitute the final stage of the Japanese context. framework of the protection system, cannot yet be made. At the same time, in the interview V Summary survey on typeface protection in Japan, we identified the need for some kind of In all of the countries surveyed in this protection in light of the effort and cost study, typefaces were found to be protected inherent in the creation of typefaces, but under design law. However, interpretations since there are established practices to

8 IIP Bulletin 2007 ensure remuneration for typeface creation in effects of the design, making said accordance with the contents of transfers or determination all the more difficult. the contracting of actual transactions, we Thirdly, the contents of acts of could not identify specific demand for using infringement should be clarified. A design the framework of industrial property laws for right is an absolute exclusive right against typeface protection. which good faith defenses are not permitted. The challenges for future examinations Therefore, without clarifying the scope of acts on typeface protection include the following and products that would be affected in four points. practice as acts of infringement or products Firstly, the need for typeface protection subject to infringement with regard to should be clarified. It is necessary to intangible typefaces, protection may instead ascertain the fact that typefaces are being have the effect of reducing the creation of reproduced and imitated in large quantities typefaces or the manufacture of products by many unspecified persons as well as the using typefaces, thereby hindering the fact that typeface imitations are being smooth distribution of products. distributed in large quantities, and to Fourthly, an appropriate framework for identify the actual conditions in which such a system for the protection of typefaces activity is being carried out. should be outlined. While typefaces are Secondly, the units covered by typeface protected under the design laws of the protection should be clarified. Under the countries surveyed in this study, the design design law, the balance between the design laws of the countries in question all have owner and third parties is achieved based on different characteristics, and aspects that are an understanding that a design right covers a different from the Japanese Design Act. single individual article type, and that the Therefore, what is needed is an objective design rights do not extend to different types analysis and comparison of the institutional of articles even if their shapes are similar. frameworks of the design laws of the Moreover, determination of the requirements respective countries so as to ascertain which for registration or interpretation of the scope characteristics would be most effective in the of right is made based on the design disclosed case of protecting typefaces in Japan. In in the application or the drawing attached to addition, there is also a need to sufficiently the application, and when comparing designs, scrutinize the framework, purpose and design similarity is determined based upon specific composition of the systems that the aesthetic impression that the designs comprise the current Japanese Copyright Act would create through the eye of their and Design Act, and to clarify the points consumers, by way of observation of highlighted above in the first three individual designs in their entirety. challenges. Accordingly, it is essential to clarify the outer (Senior Researcher: Yoshihito INABAYASHI) limits of the design so as to be able to identify the entirety of a single design. In the case of the Japanese language, which contains a large number of characters and character types, the scope of a single set of typeface tends to become vague, given that the scope of a set of typeface actually changes according to the contents of the contract or the situation of use. Therefore, there is a risk of the outer limits of the design in question becoming ambiguous when identifying the design, determining the requirements for registration or interpreting the scope of

9 IIP Bulletin 2007