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,