[Reader-list] copyright for fonts?

[Lawrence Liang]

Hi all

sending  some notes which outlines the existing law on
IP and fonts that i had made, the matter has now
fallen more under the relam of patent law than
copyright. I wold be happy to explain any of the
technical points if anyone finds it too cryptic


Lawrence


Fonts as intellectual Property



 	Fonts- For purpose of law can be divided into
Typefaces; Fonts; and Font Formats

1. TYPE FACES and COPYRIGHT

•	Although technically an artistic work, type faces
have been denied copyright protection for number of
reasons
•	Eltra v. Ringer – 1972-  appellant sought to
register his fonts as works of art under ther
copyright act-: The office refused registration
stating that there “no elements, either alone or in
combination which can separately be identified as a
work of art”
•	He appealed the decision
A typeface haad been defined by the Copyright act as
“a set of letters, numbers, or other symbolic
characters, whose forms are related by repeating
design elements consistently applied in a notational
system and are intended to be embodied 

•	The court went into the utility question and argued
that in the case of type faces the design and the
utility were so integrated that once could not argue
for it being an artistic work outside of its utility.

under s 5(g) to conform, (s 202.10(c), 37 C.F.R.): 
"(c) If the sole intrinsic function of an article is
its utility, the fact that the article is unique and
attractively shaped will not qualify it as a work of
art. However, if the shape of a utilitarian article
incorporates features, such as artistic sculpture,
carving, or pictorial representation, which can be
identified separately and are capable of existing
independently as a work of art, such features will be
eligible for registration."

2.	TYPEFACES AND PATENT

Adobe v. southern software-1998

•	Adobe sued SS for copyright infringement; they
claimed that the defendant had used a font editor to
modify Adobe’s fonts 

Adobe contends that King loaded Adobe font software
programs into his computer then created his own 1555
font software program by using FontMonger. 

FontMonger extracted reference points, or on-curve
points, and stored this information. FontMonger stores
both existing on-curve points and off-curve points.
FontMonger does not copy any of the glyph
instructions; it inserts new glyph instructions.
However, the glyph instructions are implicit in the
sequence and nature of the glyph coordinates. Thus,
unless the on-curve points and off-curve points are
moved by the user, the glyph instructions written by
FontMonger will be functionally identical to those of
the original font software program. Adobe contends
that after extracting all of the glyph coordinates
from the Adobe programs, King merely scaled the
coordinates 101% on the vertical axis in order to
change the font slightly. 

Adobe contends that the only difference between the
1555 product and the 2002 product is that the value of
each x coordinate has been increased by a uniform
amount and the advance widths have been changed

Argument 1

•	Defendant contended that a copyright infringement
existed only when there was a valid copyright that
subsisted in a work, and since there is no type faces
are not copyrightable subject matter there cannot be
any infringement
•	Adobe argued that a computer program produces
unprotectable typefaces does not make the computer
program itself unprotectable

1988 Copyright Office Policy Decision, the Copyright
Office determined that digitized typefaces were not
copyrightable because they were not computer programs
and required little selection or arrangement beyond
that dictated by the uncopyrightable typeface design.
‘‘Policy Decision on the Copyrightability of Digitized
Typefaces, ‘‘ 53 Fed. Reg. 38 1 lo-381 13 (September
29, 1988).

However, in 1992 the Copyright Office issued a final
regulation regarding the registrability of ‘‘computer
programs that generate typefaces’’ which appears to
back off the 1988 policy decision: The 1992 Regulation
states: bitmapped fonts are merely the computerised
representation of a typeface and not copyrightable.
Scalable fonts are different;
After a careful review of the testimony and the
written comments, the Copyright Office is persuaded
that creating scalable typefonts using already
digitized typeface represents a significant change in
the industry since our previous Policy Decision. We
are also persuaded that computer programs designed for
generating typeface in conjunction with low resolution
and other printing devices may involve original
computer instructions entitled to protection under the
Copyright Act. For example, the creation of scalable
font output programs to produce harmonious fonts
consisting of hundreds of characters typically
involves many decisions in drafting the instructions
that drive the printer. The expression of these
decisions is neither limited by the unprotectible
shape of the letters nor functionally mandated. This
expression, assuming it meets the usual standard of
authorship, is thus registrable as a computer program.
•	Coincidence of course that the 1992 regulations came
into place after intense lobbying by Adobe systems
with congress

Argument 2: Lack of originality or creativity
•	Defendants argue that after one has filtered out the
unprotectabie elements of plaintiffs software in order
to compare what remains, one finds that minimal, if
any, protectable expression remains. 
•	Defendants argued that ‘‘merely manipulating an
unprotectable font image to create another, slightly
different (but still unprotectable) font image cannot
possibly give rise to protectable expression....’’
Defendants argued that no matter what points are
selected by the Adobe editor performing the process,
they correspond directly to, and hence are determined
by, the unprotectable font shape. Therefore, because
the output is not protected and there cannot be any
creativity in what the editor does to obtain the
output, nothing is protectable
•	Adobe argued that originality for the purpose of
copyright does not pertain to creative originality but
to the point of origin and  the threshold required for
proving a work to be original is very low
•	Adobe argued that “while the shape of the glyph
necessarily dictates some of the points to be chosen
to create the glyph, it does not determine all the
points to be chosen. Thus, each rendering of a
specific glyph requires choices by the editor as to
what points to select and where to place those points.
Accordingly, Adobe asserts that the selection of
points and the placement of those points are
expression which is copyrightable in an original font
output program. The actual code is dictated by the
selected points”.
•	Court agreed thnd stated that “The evidence
presented shows that there is some creativity in
designing the font software programs. While the glyph
dictates to a certain extent what points the editor
must choose, it does not dictate every point that must
be chosen. Adobe has shown that font editors make
creative choices as to what points to select based on
the image in front of them on the computer screen. The
code is determined directly from the selection of the
points. Thus, any copying of the points is copying of
literal expression, that is, in essence, copying of
the computer code itself

Argument 3: Patent claims

Adobe is the owner of six design patents. Adobe’s
design patents are presumed valid; however, that
presumption may be overcome by clear and convincing
evidence to the contrary. Adobe asserts that
defendants have infringed the design patents.

1.	Defendants assert that the patents are invalid and
unenforceable as a matter of law, Defendants claim
that the patents are invalid because the font designs
are non-statutory subject matter in violation of 35
U.S.C. section 171 (requiring ‘‘original and
ornamental design for an article of manufacture’’) in
that none of the design patents discloses an article
of manufacture.
2.	Defendants further assert that the patents are
invalid because the designs each lack the requisite
novelty and nonobviousness for patentability.
Defendants also claim that, in any event, the design
patents are unenforceable because Adobe willfully
failed to disclose prior art when applying for the
patents.

Adobe contends, however, that the requisite article of
manufacture in this case is the program which allows
the typeface to be rendered. The court in ex parte
Tavama, 24 U.S.P.Q.2d 1614, 1616 (Bd. Pat. App. & Int.
1992), after rejecting a claim for the ornamental
design of an icon, observed
Moreover, appellant asserted that affirmance of the
rejection will bring into question the validity of
numerous design patents directed to type fonts. We
disagree. The phrase ‘‘type font’’ may be properly
interpreted as referring to letter blocks or pieces
used in a conventional printing press. The blocks or
pieces constitute an article or articles of
manufacture. Unlike the designs here, which are stated
to be surface ornamentation, type font designs are
reasonably interpreted to be the shape or
configuration of the letter blocks. The fact that the
meaning of ‘‘type font’’ may have expanded in usage to
include letters or numbers appearing on paper or on a
computer screen does not invalidate the long-standing
interpretation of type font designs as
configuration-type designs or pieces or blocks of
type.
24 U.S.P.Q. 2d at 1618. Based upon the reasoning of
Tayama, type fonts are patentable subject matter and
the program which creates the type fonts is the
article of manufacture.12 Accordingly, the court finds
that the typeface designs are statutory subject matter
entitled to patent protection.

•	On the issue of whether or not there was disclosure
and prior art, the court found that there issues of
facts which were triable and had to be reconsidered.
•	The decision of the court is now on appeal.

Impact of Adobe v. southern software
•	While traditionally type faces were held to be
uncopyrightable , the impact of the adobe case by
granting patent protection to the type face it is in
effect a protection of the type face and more

Jonathan Mezrich: “ In light of Adobe, the extension
of copyright law to fonts will have a profound impact
on the software industry. Adobe has a history of
aggressively setting software standards: initially in
the realm of desktop publishing and recently in the
area of web publishing and web page design. Moreover,
Adobe has entered licensing agreements
with IBM, Apple, and Microsoft that likely will lead
to implementation of Adobe
technology and standards in these companies’ future
products.

Because these new products will utilize
Adobe-generated fonts and will require related
programs and peripherals to mimic the same standards,
Adobe will reap enormous benefits either for as long
as the standard persists or until their copyrights
expire. In light of the Adobe holding, Adobe
apparently will be able to charge a licensing fee for
its web
design and publishing software as well as for the
underlying fonts. Companies wishing to create software
for platforms utilizing the Adobe standard will have
to pay a licensing fee to Adobe or forego satisfying
customers utilizing these major platforms such as IBM,
Apple, and Microsoft). 


3.	FONT FORMAT AND PATENT/ COPYRIGHT

-	What is the impact of the Adobe case for font
formats?
-	Can font formats either be copyrighted, patented or
protected under any form of IP?

3.1 Copyright and the idea/ expression dichotomy

•	Baker v. selden – and the double entry ledger
system- utility argument

3.2 Software Patents

•	Initial position of the patent office was to
outright reject applications for software patents
•	Early instance of whether an invention consisting of
mathematical algorithm is patentable subject matter
arose in Gottschalk v. Benson  (1972) – “We conclude
that one may not patent an idea. The mathematical
formula involved here has no substantial practical
application except in connection with a digital
computer which means that if the judgement below is
affirmed, the patent would wholly pre empt the
mathematical formula and in effect would be a patent o
the algorithm itself”
•	“it is conceded that one may not patent an idea. But
that would be the result if the formula were to be
allowed to be patented in this case”.
•	This did not stop people from attempting to patent
software and the 70’s saw a number of applications for
special purpose computers. In Flook (1978), the court
held that a patent on a method of calculating am alarm
limit controlling the temperature was unpatentable
because the only novel part of the invention was a
mathematical formula.
•	In Diamond v. Diehr (1981), the court however held
that the patent was framed not as a method of
calculating a number but of curing rubber. The fact
that the method used a formula to compute temperature
and that the use of that formula in a  computer was
the only novel part of the invention did not render
the process as a while unpatentable.
•	The US court of appeals created a two part test
known as the  Freeman-Walter-Abele test:

o	First determine whether a patent claim recites an
algorithm directly or indirectly
o	If it does, then is the claimed invention as a whole
no more than ther algorithm itself?
•	After the establishment of this test, patent claims
started describing themselves as part of a process
rather than as a algorithm itself.
•	In Re Allapat- The invention will read on a general
purpose computer programmed to carry out the claimed
invention, but the claim is patentable nonetheless
because “such programming creates a new machine,
because a general purpose computer in effect becomes a
special purpose computer once it is programmed to
perform specific functions pursuant to instruction
form programmed software”
•	Is this not true of any program?
•	There was still confusion however after the Allapat
decision , for instance in In re Lowry, abstract
claims to a type of software adapt structure where
objects a arranged complex manner was held to be
patentable , while in In Re Warmerdam, a process claim
was rejected since trhe mathematical algorithm is
implicit in the claim that is made.
•	The US PTO then issued the 1996 guidelines 

Although most software related inventions are now
statutory under these guidelines, it is important to
remember that "software" as a class is not patentable.
What is patentable are "processes" and "machines".
Thus the guidelines are framed so as to assist in
determining when computer related inventions are
patentable processes or machines.
According to the new guidelines, computer programs
that have traditionally been held to be statutory will
continue to be statutory without further analysis.
These "safe harbor" inventions include two types of
inventions:

Those having "significant post solution activity",
meaning that the software program is used to control
something external to the software routine (such as
curing rubber), and 
those having "pre-computer process activity", meaning
software programs that manipulate numbers representing
concrete, real world values (such as
electrocardiograph signals and seismic measurements. 

In addition to these safe harbor inventions, a
computer related invention will be statutory if it is
claimed in connection with a specific machine or
product. This can be accomplished by defining specific
code segments or routines in the patent application,
or by claiming the invention in connection with a
specific type of computer or memory structure. What is
not important is the type of computer program
involved. Thus, while it is clear that a program
designed to improve communication speed over a modem
is statutory subject matter, it is equally clear that
a graphics program, a spreadsheet, and a word
processing program are statutory when properly
claimed.

 	The disjuncture between the reality and the law:
With over 40,000 software patents in force and several
thousands being issued every year, the law seems to be
left far behind.
 	The “cognitive dissonance” that results between what
the law is and the actual practice has been suggests
that the law can be expected to change or that a large
number of issued patents will have to be held to be
invalid.


•	State Street v. Signature- business process patent-
a mathematical algorithm may be an integral part of a
patentable subject matter such as a machine oro a
process if the claimed invention as a whiolke is
applied in any useful manner 

Even after establishing that it is patentable subject
matter you will still have to pass the test of whether
or not it satisfies the other requirements of as valid
patent namely:
1.	Novelty
2.	Non Obviousness
3.	Prior Art

Fair Use defence

Sec. 52[(aa) 

 [(ab) the doing of any act necessary to obtain
information essential for operating inter-operability
of an independently created computer programme with
other programmes by a lawful possessor of a computer
programme, provided that such information is not
otherwise readily available;
        (ac) the observation, study or test of
functioning of the computer programme in order to
determine the ideas and principles which underline any
elements of the programme while performing such acts
necessary for the functions for which the computer
programme was supplied;

Conclusion

1.	idea/ expression dichotomy v. reality of software
patents
2.	The movement towards meta copyright _ DMCA and anti
circumvention technology
3.	The movement away from copyright to contractual
modes of protection




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