INTELLECTUAL PROPERTY

COPYRIGHT IN DIGITIZED TYPOGRAPHY

. . . . . . . . . . . . . . . . . . . . . . . . . . ratified it. 4 Subject to the efforts of countries such as the UK to : ~ , ~ i : ~ ............................................................................ ~ i i ~ i i i ~ i ~ .......... bring their laws into line with the Vienna Agreement, the

~ i ~ ~ i i ~ ~ i ~ ~ protection of typefaces is therefore a matter for national laws ~ ~ i i~: :~ i i~ ~ i ~ alone.

~ : i i i i i i i i i ~ ~ : i:ii~::i~i In the UK, copyright protects original artistic works s and the i ~ d i i i i ~ ~ii i i i i~ ~ i ~ definition of artistic work embraces a number of matters, ............................................................... a

..................... ~ i i ~ i : ~ ........................................... including graphic work. 6 A graphic work includes any- painting, drawing, diagram, map, chart or plan; and any engraving, etching, lithograph, woodcut or similar work. 7 The

INTRODUCTION legislation does not specifically mention typefaces, but an artist There is obviously nothing original about the Roman (or, with who designs a new typeface by making drawings of all the due apologies to St Cyril, any other) alphabet, but it can be individual letters clearly makes a series of artistic works. It represented in a variety of original fashions. The trained eye seems now to be accepted that the set of such works, making can detect the difference between Times Roman and up the design for the typeface, also attracts protection. Garamond; for a substantial fee a design consultant will The designs of the letters are also registrable designs, explain why one is preferable to the other. The distinctive protectable under the Registered Designs Act 1949 (as '/tramline ~' typestyle used by the Royal Mail is an important amended); a design is defined to include any features of shape, part of its corporate identity, and is jealously protected, configuration, pattern or ornament applied to an article by any Creating a typeface is an artistic endeavour, and some typeface industrial process and which appeal to and are judged by the designers such as Benjamin Franklin and John Baskerville have eye. However, it is settled that fonts (that is, collections of achieved immortality by giving their names to the lettering letters in a single style) are not protected. 8 The Whitford styles they designed. As with other areas of artistic endeavour, Report 9 explained: typeface fashions come and go. New styles are constantly The individual letters may, and usually will, possess a harmony being created, and old ones fall into disuse, which runs through the font and is characteristic of it, but the Computers enable you to switch between a selection of practice of the Patent Office since about 1939 has been to hold standard typefaces, even to create your own. Fonts - or rather, that this harmony does not satisfy the requirements for a set. the information to reproduce them - can be loaded on a card In other words, as Whitford explained: "The point is that A is or similar device into a printer, or downloaded off a disk from different to B/' the computer itself. Registered protection is unlikely in any event to be attractive to

designers of typefaces; there are fees to be paid and formalities WHAT IS D IGIT IZ ING? to be complied with. The term of protection is, however, the Digitizing an analogue typeface involves scanning a visual same; to prevent typefaces which have not been protected representation of the typeface, creating a collection of picture under the 1949 Act from enjoying longer protectionunder elements, or pixels. These can be encoded and stored in copyright than they would enjoy if registered, the 1988 Act magnetic, electronic or optical media, then organized, restricts the term of protection for designs of typefaces to 25 manipulated and changed (at least partly to reduce storage years. 1° This is the same as that afforded by the 1949 ACt, and requirements) and finally stored in a form which a particular also coincides with the maximum term allowed by the Protocol application program can use. Similar techniques could also be to the Vienna agreement. 11 This period runs from the end of used to create a new typeface with no analogue counterpart, the calendar year when articles specifically designed or adapted There are therefore three levels at which questions have to be for producing material in that typeface are first marketed by or asked about copyright in this area: the analogue typeface; the with the licence of the copyright owner. master program which controls the digitizing process; and the Whitford also expressed doubts about the protection given to collection of data produced by it, the digital representation of complete typefaces under the Copyright Act 1956, and the typeface. This article examines these questions from the recommended that the new law should make it clear that sets different viewpoints of UK and US copyright law. of lettering were protected. 12 The government indicated in its

white paper, Intellectual Property and Innovation, 13 that it COPYRIGHT AND TYPEFACES: THE UK POSITION would amend UK copyright law to enable it to ratify the Vienna Typefaces are difficult creatures to categorize under copyright Agreement, although it acknowledged during debates on the law. Neither the Berne Convention nor the Universal Copyright subsequent bill that reform might not be necessary and Convention mentions them specifically, though designs for perhaps the old law did protect typeface designs after all. To

avoid any lingering doubts, the Copyright, Designs and typefaces may be included as artistic works - engravings, for Patents Act 1988 introduced specific provisions governing example. Nor are typefaces expressly within the scope of the

Paris Convention on Industrial Property. They are, however, the typefaces which brought UK law into line with the Vienna subject of a specific international agreement, the Vienna Agreement'14 Agreement of 1973:3 but only three states (France, Germany The Vienna Agreement specifies the content of the protection

to be given to typefaces. Article 8 provides that national laws and the UK) of the five needed to bring it into force have so far

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should confer upon the owner of rights in the typeface the repeating design elements consistently applied in a notational right to prohibit: system and are intended to be embodied in articles whose

intrinsic utilitarian function is for use in composing text or other (i) the making, without his consent, of any reproduction, cognizable combinations of characters. The Committee does

whether identical or slightly modified, intended to provide not regard the design of typeface, as thus defined, to be a means for composing texts by any graphic technique, copyrightable 'pictorial, graphic or sculptural work' within the irrespective of the technical means or material used; meaning of this bill on the application of the dividing line in

Section 101. 20 (ii) the commercial distribution or importation of such The same Congress also deferred a decision on a more limited

reproductions without his consent, form of protection for typeface designs, and a proposal for ornamental design legislation.

The Agreement therefore achieves the twin aims of promoting The US legislature has therefore addressed the same problem creativity in typeface design and preserving the liberty of the as the UK Parliament, but that it has done so by simply lawful acquirer of a typeface to use it for the purposes for excluding typefaces from protection, period. This difference of which it was intended, approach has important effects on the protection of the To bring UK law in line with the Vienna Agreement, the Act programs from which different fonts can be generated. does not permit the owner of copyright in a typeface design to control the use of the typeface in the ordinary course of DIGITIZED TYPEFACES printing. Section 54(1) provides that: So much for the protection of typefaces: does it make any It is not an infringement of copyright in an artistic work difference if the typeface is embodied in a computer program consisting of the design of a typeface- or collection of magnetic data? A 1988 notice of policy (a) to use the typeface in the ordinary course of typing, decision 21 by the US copyright office made it clear that the composing text, typesetting or printing, digitized representation of a typeface is neither an original (b) to possess an article for the purposes of such use, or computer program, nor an original database, nor any other (c) to do anything in relation to material produced by such use; original work of authorship. By contrast, there appears to be Notwithstanding that an article is used which is an infringing nothing to stop the data making up a digitized typeface copy of the work. beingprotected under the UK law. Copyright in the design will, however, be infringed by another The UK law makes no distinction between a program which designer or manufacturer making a copy of the typeface. It will causes a computer to perform certain tasks and the data which also be an infringement to create a set of dry transfers to it processes. Both are literary works under the 1988 Act, and enable people to use the lettering, or a decorative poster will therefore be protected if original. 22 reproducing the letters of the alphabet in the typeface. A collection of data may be regarded for copyright purposes as Liability for the so-called secondary infringements - making, a compilation. Both programs and compilations are protectable importing, possessing or dealing with articles specifically as literary works, so it matters little which we are talking about. designed or adapted for producing material in a particular However, the application of the test of originality to the two typeface - is preserved, is A degree of guilty knowledge is types of literary work may mean that one is protected and the required before one of these acts is actionable: the person other not. The skill and labour involved in making a doing it must know or have reason to believe that it is to be compilation are different from those involved in the creation used to make infringing copies, of a piece of original writing.

Alternatively, databases may be regarded as a type of copyright COPYRIGHT AND TYPEFACES: THE US POSITION work in their own right: in the US, a database is generally The position across the Atlantic is rather different. The US has copyrightable as a literary work 23 but the UK law says nothing not signed, let alone sought to ratify, the Vienna Agreement. specific on the subject. The EC has recently produced proposals Under US law, a work only qualifies for copyright protection if for a directive on the legal protection of databases 24 which is it is an "original work of authorship" .16 What are referred to as intended to harmonize copyright protection in the field as well "useful articles" are not protected except to the extent that as to introduce a sui generis intellectual property right for they contain artistic features capable of separate existence, databases, giving ten years' protection against "unfair Variations of typographic ornamentation, or "mere lettering", extraction". The draft directive's definition of database is are not copyrightable. 17 In Eltra Corp v Ringer 18 the Fourth restrictive, since the draft is directed to online or CD-ROM Circuit upheld the refusal of the copyright office to register a databases containing factual information: but it is likely claim to copyright in a typeface design under the regulation nevertheless to have an effect on digitized typefaces. then applicable. 19 The new sui generis right will not be readily applied to the sort The court reasoned that: of database which we are discussing. It is concerned with the It is patent that typeface is an industrial design in which the unfair extraction of data, a problem which is unlikely to design cannot exist independently and separately as a work of concern the proprietors of digitized typefaces. art. In the UK, copyright in the design of a typeface will be There is no doubt that the decision in the EItra case reflects the infringed by the act of digitization. This will amount to intention of Congress. The House Report on the 1976 ACt reproducing the artistic work in a material form. states: A 'typeface' can be defined as a set of letters, numbers Under section 54(1)(b) it is permissible to possess a printing or other symbolic characters, whose forms are related by press and means to use the typeface, and this must mean

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either moulds for casting type or computer disks containing the which were to be reproduced in a pocket diary, amounted to data needed to reproduce the typeface. Merely using the type "a commonplace selection or arrangement of scraps of face in the ordinary course of printing is not restricted, so the information" and did not make the grade. owner of the disk containing the data from which the type face Since the UK law treats both computer programs and can be reproduced commits no primary infringement. If, compilations as literary works, the question of which category however, he imports the disk into the UK or does one of the includes the collection of data from which a typeface can be other acts set out in section 54(2) of the Act, and has the generated requires no answer. The data will constitute a necessary knowledge, he commits a secondary infringement, literary work which will be protected if it is original. But what rights exist in the data which embody the typeface? That last sentence begs the essential question, of course; but at And does it make any difference whether the typeface this stage a digression on the position of the master program embodied in the program is protected? A compilation of data which controls the digitizing is called for. Its position is relatively. defining the shape of the typeface can, in principle, be a simple: it will qualify for protection if (or to the extent that) it is literary work; the question then arises whether it is original, the programmer's original work. The courts have considered what is meant by 'original' on a This must leave the situation of digitized typefaces in a certain number of occasions. It is not, however, defined in statute, amount of doubt. It seems likely that the process of converting despite the fact that in the course of the passage of the 1988 the shape of a typeface into digital form will be insufficient to Act the Opposition questioned whether it was right for the amount to the creation of an original work. The first time it statute to remain silent on this matter. In the course of the was done, perhaps, would have been different, but a known debates on the Act, Lord Denning asserted that the word typeface reduced to a digital form cannot be regarded as an original was "fairly simple" to understand; he said that it original expression of that typeface. A digitized version of a means "that the author has written it himself and not copied it typeface new enough to be protected will be a different from someone else". 2s matter: and it seems that the digital data might well enjoy The case law bears out that 'original' does not mean novel or longer protection than the analogue graphic work. unique, but simply that the author created the work The proposed directive's effect on copyright laws will be to independently, and that in so doing he or she exercised a ensure that databases are protected as collections under the sufficient degree of skill, knowledge, creative labour, taste or meaning of Article 2(5) of the Berne Convention. This requires judgment to deserve protection. This explanation may serve to that "collections of literary or artistic works" enjoy copyright exclude from copyright protection certain computer programs protection. To be protected, they must constitute "intellectual or databases which embody digitized versions of typefaces, creations", involving selection and arrangement. The works while continuing to protect others, making up the database will either be protected or not Originality- and therefore protection - depends on the process according to the normal rules, and will make no difference to by which the data have been created and the extent to which the protection of the database. The directive is therefore those factors have been bought to the process by the author, unlikely to alter the position of databases (including digitized In the courts, football pools coupons have been given fonts) in UK copyright law. protection 26 but lists comprising the names of between six The US Copyright Office has proceeded on a different basis. A and twelve greyhounds participating in a race, compiled by compilation is defined in the US Copyright ACt as: drawing them from a hat, have been held not to quali fyF ... a work formed by the collection and assembling of pre- In University of London Press v London Tutorial Press 28 existing materials or of data that are selected, coordinated, Peterson J defined the matter: orarranged in such a way that the resulting work as a whole The word 'original' does not in this connection mean that the constitutes an original work of authorship. 33 work must be theexpression of originalorinventivethought. 29 The data which define the shape of the typeface are Copyright laws are not concerned with the originality of ideas, determined by the form of the characters; little if any selection but with the expression of thought, and, in the case of or arrangement is involved. The data do not, therefore, "literary" works, with the expression of thought in print constitute an original work of authorship under US law. orwriting. The originality which is required relates to the Despite its 1988 Policy Decision, the Copyright Office expression of the thought. However, the 1988 Act does not continued to receive a substantial number of applications to require that the expression must be in an original or novel register digitized typefaces. It recognized that these applica- form, but that the work must not be copied from another tions disclosed a significant technological advance from what it work - that it should originate from the author, had to go on in 1988. 34 Literary works, of which computer programs are a sub-species, Several members of the Copyright Office staff visited the only get protection insofar as they are original, which is where facilities of a company involved in computer-aided typeface the difficulty in applying the rules to programs lies. design, and the Copyright Office concluded that things had The case law 3° tells us that a work is original if the author has moved on enough since 1986 to justify reconsideration of the expended sufficient skill, industry and experience on it. Lord earlier policy decision. A Notice of Public Hearing, 35 published Devlin 31 suggested in the Ladbroke case that a "substantial" on 26 August 1991, invited comments or participation in the degree of these factors would be required, while Lord public hearings which took place on 4 October 1991. Hodson 32 set a lower threshold, protecting works in which The Copyright Office poses eight questions. It asks first their authors had invested /~more than negligible skill and whether the distinction drawn in the 1988 Policy Decision labour". In Cramp the House of Lords held that various pieces between the master program which creates the digitized of information, including postage rates, weights and measures, typeface and the data which depicts the typeface can still be

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justified; whether data and code can be separated in a way which makes a disclaimer of the data workable; and what the terms data and code actually mean. It then goes on to seek information about the process of digitizing typefaces, with particular reference to technologi- caldevelopments in the past five years. Finally, the Copyright Office asks whether there is any significant difference between a program that generates a typeface and one which generates other non-copyrightable material, giving the example of one of its own application forms; and whether there is a difference between the digitized fixation of a typeface and the program which generates it. The UK experience suggests that a distinction between the digitizing program and the data it generates is proper and, in copyright terms, sustainable. The two pieces of code or data raise different copyright issues, particularly when it comes to originality. The two might be difficult to separate, but the effort is worthwhile: they merit individual attention. It is also worth observing that the program which processes the digitized data to turn it into characters on a page also merits protection. Comparing programs which generate typefaces with programs which generate Copyright Office forms may produce a misleading result. Leaving aside the fact that neither is "non- copyrightable" in the UK, the program which does the generating must be protectable: what is really at issue is whether the data which it processes should also be protectable. A more meaningful comparison might be between a word processing package (say Volkswriter 4) processing the data which comprise a literary work (say this article). Volkswriter appears to be a copyright work, and so is the article. In each case protection applies regardless of whether the work is in black and white or on the hard disk of my computer. If, however, I chose to type in a public domain work (say a Shakespeare sonnet) the data on disk from which it can be printed will not attract protection. It is a literary work, but lacks the necessary originality. The writer submits that this is a more helpful analogy. It suggests quite clearly that if you protect typefaces the medium in which they reside should make no difference. This proposition leads to the conclusion that so long as US law withholds protection from analogue typefaces it should not protect digitized ones. Logic appears to permit no other answer. But that begs the big question, about protecting all original typefaces. So has the US Copyright Office asked the right question? It should be considering whether the developments in compu- terized typeface design make it appropriate to now bring them within the scope of copyright protection. Should the US be adhering to the Vienna Agreement, adding another name (and a particularly important one) to the list of countries which have ratified it and bringing an international system in this area a few steps closer? From the viewpoint of UK copyright policy, the answer is clearly yes.

Peter J Groves, Solicitor P.J. Groves & Co., (London)

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BOOK REVIEW ::::::

INTELLECTUAL PROPERTY

Copyright and Designs Law: A Question of Balance practice. The reason for this dramatic change is principally (Hardcover book), by Peter Groves, 1991 (Graham & the impact of technology. Technology has made it possible Trotman), 417 pp, EB7.50/US $185 (surface mail), for the works protected by copyright- literature, music,

i £92.501U5 $195 (world airmail), ISBN 1853333646. drama, art in all their manifold forms -- to be used by the i This work sets out to discuss the principles governing public in new ways and on a scale which grows

i~i!iii modern copyright and designs law, drawing upon the exponentially each year. With this growth in use -- and common law experience and making particular reference to unfortunately a lot of it is unauthorised use -- has come an the UK's Copyright, Designs and Patents Act 1988. An increasing awareness of the importance of the copyright

ii!iii}i underlying theme of the text, and indeed the rationale system and the value of the products of human creativity behind it, is the tremendous growth in the value and which it protects." The book contains 16 chapters importance of copyright law as a mechanism for protecting covering: the development of copyright; the rights within

i i ! i ! i

intellectual property rights. The inherent flexibility of copyright; what is protected and who owns copyright; copyright is illustrated by its expansion into the world of permitted acts; moral rights; dealings with copyright i~ information technology, in functional works like computer works; remedies, licensing schemes and copyright as an software, within a market worth billions of pounds international right; rights in performances, designs, the :i worldwide. As the author notes: nTwenty-five years ago, role of patent and trademark agents; patents, counter- ::: there were few practitioners who claimed a specialist feiting and the topography right. An appendix contains the knowledge of copyright; today there are many; and, full text of relevant secondary legislation. indeed, many of the large firms of solicitors have sizeable Available from Graham & Trotman Ltd, Sterling departments specialising in intellectual property law and House, 66 Wilton Road, London SWlV 1DE, UK.

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