Back Talk, Interview with Frank Martinez, Patent Attorney
Interview by Steven Heller
A fine arts printer and designer turned lawyer, Frank Martinez champions artists’ rights as design patent examiner at the U.S. Patent and Trademark Office in Washington, DC. In this interview, he surveys the murky field of intellectual property to offer information and advice for type designers.
Heller: What is the difference between a patent and a copyright?
Martinez: At first blush, there don’t seem to be many differences. Loosely defined, a patent is a grant by the U.S. of a monopoly for a limited period of time. A copyright is also a grant of a monopoly, but the time period is much longer. To be more accurate, what the government is granting in both cases is a property right.
Heller: How is a patent, say for a typeface, applied for and accepted?
Martinez: Most patents are acquired with the aid of a registered patent attorney or agent. If the nature of your work is technical, you should hire one of these highly trained individuals. If you are filing a design patent for a type font, however, and you are willing to learn a bit about patent law and procedure, you can probably file your own design patent application.
Typically, a design patent for a type font requires drawings of the alphabet in upper- and lower-case as well as any punctuation and numbers considered part of the font. A claim must be made for the font as an original design, which will be examined in relation to “prior art.” (Prior art is the term used to describe existing works of the same nature as yours. A design patent application for type font is examined to see if it is “non-obvious” in a view of existing type fonts.)
The basic filing fee is $160, and to have the patent issued costs an additional $230. The application period is about a year, but for the purposes of stopping an infringer, your design is considered to exist from the date of filing.
Heller: Why has it been so difficult for designers to copyright type designs?
Martinez: Type designs are what the Copyright Office calls “non-statutory material.” Stated simply, the copyright statute doesn’t extend protection to type fonts because they are utilitarian. I have often explained the bar to copyrighting anything utilitarian this way: If you can’t separate the artistic part from the working part, you can’t copyright it. Unfortunately, if you remove the design from the letterform, you have nothing. This doesn’t mean there is no protection for a font. Since 1854, patents have been issued for an ornamental design embodied in an object of manufacture. In addition to obtaining a design patent for a font, which protects the appearance, you can trademark the name and thus protect it for as long as the mark is used in commerce. While this protection may not be the best we could hope for, it is nevertheless very broad.
Heller: Do you personally view type as purely utilitarian?
Martinez: Speaking personally, I genuinely believe that type design, at its best, is an art form. When I look at type, I see paintings in miniature. Esthetics notwithstanding, how many art forms are you aware of that must retain the convention of legibility while performing flawlessly in varied technical environments?
Heller: Is type better protected in other countries?
Martinez: I think the real questions are what mechanisms exist in other countries for protecting creative work, and whether a government can properly estimate the value of creativity. The notion of an artist’s moral rights in a creative work has only recently been codified in American law. In Europe and South America, artists have long played an acknowledged role in society. Consequently, governments there seek to nurture the arts by enacting laws that protect creativity. In the U.S., creativity has almost always been the handmaiden of commerce so our laws seek to protect the benefits flowing from the use of creativity in business, not the creative endeavor or itself. Lately, however, I’ve been watching the interaction between designers, artists, and business people; and it’s getting harder and harder to distinguish one from another. From my perspective, this is a promising development. It tells me that designers and artists are beginning to recognize the value of their work in commerce.
Heller: Before the introduction of electrotyping at the turn of the century, typefaces were pirated by altering a small part of a face or simply by changing the name. Is this still a valid way to circumvent the law?
Martinez: This question reminds me of the tax lawyer’s admonition that it is perfectly legal to avoid paying taxes as long as you don’t evade them. There is no valid way to circumvent the law. The issues here are whether a work is properly protected, what constitutes an infringement of the work, and whether the infringement fits into one of the recognized exemptions to monopoly protection. Your question is good because it raises the point that most people do not adequately protect their work. Historically, this may have left them vulnerable to the situations you described. If one obtains a design patent on a type design, it is thoroughly protected. A small change in part of the shape or a name change will not create a new work. The test is whether someone of ordinary skill in the art of type design sees the copy as an obvious variation of the original. If the answer is yes, it is an infringing copy irrespective of how it was made or what it is now called.
Heller: The computer now makes “sampling,” or picking up bits and pieces of existing designs, possible. Is this a valid form of creation or re-creation?
Martinez: We all know computer users who subscribe to a mythology of rights transformation once a work has been digitized. In this mythology, anything that passes through bits of plastic, copper, solder, and silicon, urged on by lines of (copyrighted) software code, becomes free to anyone who has the wherewithal to copy it. Let’s not even discuss the Web! The normal tests for determining infringement still apply. Is the original work copyrighted? Is the infringing work an obvious variation as judged by a designer of ordinary skill in the art? Did the infringer have access to the original work? What defenses are available to the infringer? Is the new work a fair use? Was the new work created under a license or implied license? Is there a valid design patent? The essence of any property right is the right to exclude. Its corollary is the right to freely alienate the property – specifically, the right to sell it, license use of it, or give it away. Copying without permission is stealing if the copying is an infringement.
Heller: How are digital typefaces protected?
Martinez: By a design patent. Some time ago, the U.S. Patent and Trademark Office recognized that technology changes the way people invent. Consequently, there is no longer a requirement that the design for a font be embodied in a piece of lead or on a filmstrip. Merely showing a printout of the font is adequate.
Heller: Do you foresee a time when type will be totally protected?
Martinez: Type can be totally protected now. The real question is whether type designers have the fortitude to seek protection and prosecute infringers. Economics play a substantial part in this discussion. Currently, type is sold on a shrink-wrap licensing basis, a method of efficiently licensing large amounts of copyrighted material, such as software, to a large customer base. The economics of the computer industry require that a lot of content comes with the hardware. Programs and fonts are that content, and it is not uncommon to see hundreds of fonts bundled with a program. The large software houses and computer makers have an important reason to keep font prices low. For their purposes, the shrink-wrap font license is a perfect fit. Type designers, on the other hand, would like to keep royalties as high as possible. Bundling fonts tends to dilute the value or the perception of value of fonts. Accordingly, it is hard to justify the cost of a well-designed font to the average computer user. I think, however, that technology will probably play some role in realigning the economics of font licensing. Key encryption and Web technology make it perfectly possible to license type on a per-use basis. This has been referred to as a micro-payment or micro-licensing plan. Under such a system, the value of a font could be adjusted according to recognized economic principles, such as supply and demand. If a font is popular, or if the nature and extent of use are likely to create more value for the licensee, the font would have more value. Specifically, if a font were used in a film, video, or printed advertisement. That would, more likely than not, create additional value for the user.
The best way to preserve the value of your work is to protect it. Again, protection has two components, registration by copyright, trademark, or patent, and prosecuting infringement.
Editor’s Note: The opinions expressed are solely those of Frank Martinez and do not reflect the policies or practices of the USPTO. For further information about design patents and trademarks, contact the United States Patent and Trademark Office, 800-786-9199; www.uspto.gov. If you wish to know more about copyright procedures, contact The Copyright Office, 202-707-3000 (for information), 202-707-9100 (for forms); www.loc.gov/copyright.
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