U.S. Design Patent for Typeface Design
Frank J. Martinez, Esq.
Inevitably, when artists in any creative endeavor which involves computers get together, the conversation will turn to the nature of your work and money, how to protect your work and money, and piracy and money. However, not necessarily in that order. While at the AtypI Conference in the Hague, I had different versions of this conversation several times. It was, however, the issue of piracy that was most troubling. I kept asking myself, why is it so endemic? How did the situation get this way? Can anything be done to stop it? Are the current schemes of intellectual property laws that ineffective? Are artists taking advantage of the protection that is available?
In this paper I would like to examine legal protection for type by Design Patent. In addition, I would like to explore the factors affecting the value of type. Finally, I would like to suggest additional methods for the protection of type and propose some alternative methods for licensing which could return more value to artists and designers who work with type and, just maybe, help in the fight against piracy.
The issue of protecting creative works is particularly important to me. All of my professional life, my work has revolved around creativity, in particular the printed image and the printed word. I have come to view myself as an artist and designer who is also trained to understand the legal issues at the nexus of creativity and commerce.
The essence of success in any creative endeavor is the ability to understand the problem to be solved and then focus on the task at hand. Artists and designers are naturally concerned with the quality of the work and the deadline which is always just around the corner. I would argue, however, that protection should be part of the creative process. The time to secure legal rights should not be when the benefits of ownership are in danger of being lost or diluted.
Copyright protection is not available for typeface design in the United States, but the software that is used to represent a typeface design is protectable by copyright when a compilation creates a new work by copyright. A typeface design can, however, be protected by a patent.
Varieties of Patent Protection
Patent protection exists in three varieties, Utility Patents, Plant Patents, and Design Patents. A Utility Patent would be appropriate for the protection of a laser printer or an imagesetter, or the software controlling the functions of such a machine. A Utility Patent takes a log time to secure, is complicated to file, expensive to obtain and almost always requires the services of a registered patent attorney or agent.
A Plant Patent is used to protect a new variety of plant, usually of a decorative nature, such as roses or a hybrid fruit or vegetable.
A Design Patent is a patent which protects the ornamental design of an object of manufacture. It is intended specifically to protect the types of articles or designs which cannot be protected by copyright. The distinction is that articles which can only be protected by patents are intrinsically useful. Type fonts are considered to be intrinsically useful.
The first Design Patent, granted in 1842 was for a typeface design. Since then, the United States Patent and Trademark office has granted over 1,500 type or type related Design Patents. The majority of those patents were granted in the late 19th century when a face was cast in metal. The fact that letter forms are now digital is recognized by the Patent Office. Consequently, there is no longer a requirement that a design for a font be applied to an object of manufacture. All that is required is that the design be new and ornamental.
Applying for a Design Patent
Applying for a Design Patent is relatively easy, but there are several conditions which must be met. First, the invention, in this case a type design, cannot have been known or used by others for more than one year prior to your filing for a U.S. patent. This means that your design could not have been generally known and accessible to the public. Therefore, if you are producing copies of a font and distributing it – even on a shareware basis – the font is known and accessible to the public. In such a situation, the font can’t be patented in the U.S.
You cannot get a patent if the design has been described in a printed publication, in any country, prior to one year before filing in the U.S. If you put your font into a specimen catalog, and you wait longer than a year to file, you cannot get a patent. Also, you cannot get a design patented or registered on the industrial property registration of another country or organization such as WIPO more than six months prior to the U.S. filing date.
If you are a U.S. citizen or a legal resident, you should file in the U.S. first. U.S. law requires that the Patent and Trademark Office issue a license to file in another country. Afterwards, you can take advantage of the Patent Cooperation Treaty through an international filing which will give you protection starting on the same date as your U.S. application. Or, if you wish, you can file directly in a foreign country, if it is permitted.
If you are not a U.S. citizen or legal resident, check your national laws before you file in the U.S. Some countries require a national filing before a foreign one.
Currently, almost every industrialized country in the world is part of the Patent Cooperation Treaty. If you are not a U.S. citizen, and you file within six months of the date of your foreign filing, it is possible to secure a U.S. Design Patent. The effective date of your protection will be the same as your foreign filing. If your home country is part of the Patent Cooperation Treaty, you can take advantage of the treaty through an international filing.
Your design must be novel. It must be new. This has come to mean that the design cannot have been an obvious variation of two or more existing designs. The ordinary type designer, if there is such a thing, must be able to look at the design and identify it as a new font. Obviously, this is a very subjective standard. Therefore, every effort should be made to distinguish the design aspects of your work from other designs which are similar. If your design is merely an attempt to combine two or more existing faces, the result will be said to be lacking "nonobviousness." That is, it is an obvious variation when compared with existing type designs. Accordingly, the revival of a classic face is almost never patentable. If it were, it would not be a close version of the classic face. The fact that a font is digital as opposed to metal is irrelevant, since the test is whether the design itself is new.
There is a requirement that you submit a drawing of your design. The design may be submitted in any clean readable form. Output from a good quality laser printer is just as acceptable as repro from an imagesetter. All that is required is that the design be submitted just as you would for a specimen book. If applicable, submit the alphabet in both upper- and lowercase, as well as any numerals, punctuation marks, or iconographic elements, which are part of the design.
The application must adhere to a particular format. The Patent Office doesn’t care whose form you choose to use, provided that the requirements for candor and complete disclosure are met. Official forms are available from the Patent Office. It is possible to reach the Patent and Trademark Office on the web at www.uspto.gov or you can call at 800-786-9199.
Patent protection is often criticized as being too expensive and taking too long to obtain. Currently, it takes about a year to get a Design Patent for a font. The filing and issue fees for the small entity or individual inventor are less than $400.00. For the large (more than 500 employees) corporation, the total filing fee is less than $800.00. There may be other fees if you wish to have extra copies of your patent or need to record an assignment of ownership interest to the patent owner. There are no maintenance fees for Design Patents. The term of protection for a Design Patent is fourteen years from the date of issue. While the active life a font may be considerably longer than fourteen years, there are other forms of legal protection that you can get. A trademark on the font name will be good as long as the mark is used in commerce.
Also, some people have complained that sometimes you can’t patent the entire font. As a designer, you know that it is hard to make every shape unique. This is particularly true with punctuation marks. In such a case, the Patent Office will require that the letter or mark be removed from the application if it is nonobvious in view of another existing face. This means that any right you license extends to that which is protected by the Design Patent, it does not mean that you cannot mark the entire font that you have designed.
In addition to protecting type designs the Patent Office is extending patent protection to icons used in a graphic user interface. The patent Office is actively exploring the impact of emerging technologies on the existing statutory framework. Recently, I drafted recommendations for disclosure guidelines when holographic elements are a part of a Design Patent application. In addition, the Patent Office received an inquiry about the possibility of patenting avatars used in interactive applications. In principle, there is no reason to believe that it can’t be done.
A Design Patent is simpler to get than a Utility Patent. An individual can frequently do it by themselves. All that is required is some patience, diligence and a basic familiarity with patent law and the rules of the patent office. Absent that, you should hire a registered patent attorney or agent. When compared to the arduous process of obtaining a Utility patent, it is cheap and easy.
Probably the most important issue facing any artist or designer today is understanding the value of your work in the market. The first step in understanding how to protect and value a creative work is to understand how it can be protected. The second step is valuing your work within the relevant marketplace. Within this context the term valuing should be understood to mean the price a design can command in the market.
Currently, most type is licensed on a mass-market software model. This type of licensing is typical in a field where competition is fierce and profit margins are low. This type of license is characterized as a mass-market transaction based solely upon the copyrighted software. These licenses are most typically a lump-sum payment which usually only limits the number of CPU’s and the number of printers on which the font can be used. This type of license does not consider the number of uses or the types of uses. As was noted earlier, this type of license is based upon the copyrighted content of the software. However, when comparing copyright values, it may be helpful to compare the shrink-wrap copyright license with the rich variety of licensing option offered to the creator who belongs to a reproduction rights organization such as the Copyright Clearance Center. The Copyright Clearance Center is an organization which provides a centralized photocopy licensing and royalty fee remittance service for copyright holders. Businesses that purchase a Copyright Clearance Center license pay an annual fee based upon the extent and nature of their copying needs. The royalties are then distributed back to the copyright owners. Currently, over 1.7 million titles are registered for licensing from over 9,000 publishers. In 1995, the Copyright Clearance Center returned approximately 30million dollars in royalty payments to artists and authors.
Licensing is growing as a method for increasing revenues by reaching out directly to users. In 1993, the estimated value of total global licensing was estimated at 66.6 billion dollars. Type designers, however, continue to follow a revenue methodology dictated by the mass-market license when piracy continues to rise. In 1995, the software industry conservatively estimates that in the United States alone, 50 million dollars was lost through piracy. We all suspect that the numbers for type, on a proportional basis, are probably the worst case. I have heard estimates that only one in 20 fonts was legitimately purchased. In addition, the imbedding of type on the Internet only promises more piracy. We all know that in general, the growth of the industry is relatively flat. What it means for type designers is that there is a lot of value that is being lost through inefficient licensing and piracy. It is time to seriously reexamine traditional licensing methods.
There will always be artists and designers who will be able to command a premium price for their work; their experience and reputation enables them to match the true value of their work with a market’s need. The rest of us are not so lucky. I suggest that one of the problems with the current method of licensing is that it fails to recognize type’s special role in low volume, high margin creative endeavors such as advertising, film and graphic design. These endeavors typically return to a rights holder, value far above that which can be expected from a mass-market license. I believe that type designers are trapped behind mass-market software model. But the value of type as design and art is not totally unrecognized. On October 3, 1996, the Wall Street Journal noted that “Typography, long one of advertising’s humblest tools, has taken on a new importance in the information age.” While this was not news to anyone at AtypI, it does tell us that the market place is going back to basics – communication.
The use of sophisticated type and well-designed graphics is experiencing a renaissance. Now more than ever, advertisers and designers are concerned with how to attract attention to their message. They have to contend with the clutter of billboards, magazines, and newspaper advertisements. Not to mention attention spans shortened by the music video. Type, when handled properly, can cut through the clutter.
Does this newfound respect for type promise to return more value to type designers? Probably not. Remember the mass-market license is used to facilitate the selling of a lot of software, with a minimum transaction cost. Stated another way, the shrink-wrap license permits the selling of a lot of type, cheaply.
This licensing method reflects the concerns of large software companies and computer manufacturers. Again, the problem here is one of valuation. We work in a crowded field. Type has been around a long time. There are a lot of fonts. How can you increase the value of your work?
First, you should get as much protection as you can for your work. If you work in countries which are WIPO signatories, register your typeface on the industrial property register. If you desire protection in the United States, seek a Design Patent, trademark the font name, and if possible get a copyright on the software compilation which describes the outline.
Second, we have an organization which is in a unique position to help. At the AtypI Congress in one of the committee meetings we discussed reviving the anti-piracy initiative. This should be done. Education is an important effort which must be carried out on a regular basis. In particular, AtypI should educate those who are in a position to make decisions regarding type, especially lawmakers.
Laws can be changed. However, the type industry doesn’t have the economic strength to get wholesale changes in the law. Lobbying is an expensive proposition. We have to choose our issues carefully and we must take care to present our concerns to lawmakers who are likely to listen. Any changes in legislation must be incremental, and they will take time. But, if we marshal our resources and move carefully we can make changes.
Third, I am proposing that AtypI form a committee which regularly polls the member ship to ascertain, on a confidential basis, the licensed uses of fonts and to further inquire whether a use is unlicensed. Upon learning of an unlicensed use, the committee would then inform the rights holder of the unlicensed use. While AtypI can’t and shouldn’t act to prosecute infringement, there is no reason why the organization can’t pass information about infringement to the interested parties and if necessary help them find legal counsel.
Fourth, AtypI should use its already existing registration system to help facilitate the licensing of type or consider forming an alliance with a reproduction rights organization. Cartel or antitrust issues can be avoided by not impairing the negotiation and contract rights of a designer or artist. Inspirational guidelines are fine, mandatory price lists are not. AtypI could publish a set of guidelines describing the value of type in individual and block licensing, but anything more, such as the power to set prices on a compulsory basis, would be anticompetitive and against various national and international cartel laws.
Fifth, the proposed committee could investigate and make known to the membership, its findings regarding the degree of use and the appropriate value of type used in low volume, high profit endeavors, such as film, video, corporate identity and package design. A photographer or an illustrator gets paid a different fee if a use is local versus national or international, or if the copyright is to be sold or if the license is exclusive. Why should a type designer get paid less under the same circumstances? Is a type designer any less of an artist?
During my investigation of piracy, I learned that the first large changes in copyright law occurred about the time the player piano and phonograph were invented. As a result of these new technologies, the tension between the public, which wanted easy access to music, and industry – which wanted protection – mandatory licensing was born. A balance was struck between the consumer’s desires and the rights holder’s demand for protection. There is absolutely no reason why the true value of type cannot be embodied in legislation.
In the type world, technology has changed everything and made piracy endemic. For example, in 1937, in order to purchase what was then the entire Bodoni font family, it would take $535.00. In addition, all that lead weighed 754 pounds. In 1937, a good weekly wage was 25 dollars. In addition to the extremely high cost, you needed a press. All of these things acted as formidable barriers to piracy. To give you an idea of the cost in 1996 dollars, it would cost $5,660.00 to purchase at retail, the same font family. Technology has erased all those barriers. While technology has changed everything, it may also be part of a solution. Technology such as key encryption could allow the licensing of software on a per-use basis. In such a scenario, it would be possible to match the appropriate value with the use of a font. The focus could then shift to the value of the particular use. Type, as an industry, needs to make sure that the emphasis shifts from closed systems and mass markets to maximizing the return to the designer. We all know that we live in a world without barriers. Type cannot afford to let the future be decided by software manufacturers and computer manufacturers. If the goal of the type industry is to grow while fostering innovation and creativity, the industry needs to understand the true value of creativity and embrace alternative legal and licensing methods. If we do not, type will become a commodity, valuable only in bulk.
The views expressed are those of the author.
©2004 The Martinez Group PLLC