Applicability of commercial licence

[Steve Gardner]

Hello,

I design typefaces and often upload 'work-in-progress' versions of my font software to a trusted online font library. This library offers my fonts for download to the general public on a 'free for personal use' basis. If users wish to use my fonts for commercial purposes, they are required to pay a small fee. This is cleary stated in the font copyright field of the font file. In return for uploading my fonts to this particular online library, I participate in their AdSense revenue share program.

There are competing online font libraries that download fonts from my trusted site and offer them to the general public by listing them on their own sites. I have not given my permission for them to do this - in fact, I have explicitly stated that users cannot make my fonts available for others to download. Although they also offer my fonts to the general public for free, they do generate a revenue by placing paid-for advertisements on my font listing pages.

My question is: does this constitute commercial use and, if so, am I due a fee?

I should add that this problem is huge, with thousands of font authors experiencing the very same thing. Many of these sites fail to credit us for our work and many also have misleading payment information, meaning we potentially lose licencing revenue. Some sites also change our original files in various ways: I've known my own files, for example, to be unpacked and/or renamed; and I've been told by other font designers that some sites even bundle what they believe to be potentially harmful executable files with their fonts.

I'd appreciate any thoughts you might have about my legal position.

Thank in advance,



Steve

 

[Zigner]

Sorry, this forum is for US law only.

 

[Steve Gardner]

Though I am from the UK, this issue affects font authors worldwide, including several I know who are based in the US. Even if the advice you have to offer doesn't apply directly to me, it would certainly be of help to many others.

 

[FlyingRon]

You can certainly get your material off their sites (if in the US) by filing a DMCA takedown notice.

Trying to get royalties would be a tougher haul. You'd have to so them here and since I suspect you didn't register your copyright in the US, you're only eligible for actual damages which probably is going to be very small in this situation.

 

[quincy]

Hello,

I design typefaces and often upload 'work-in-progress' versions of my font software to a trusted online font library. This library offers my fonts for download to the general public on a 'free for personal use' basis. If users wish to use my fonts for commercial purposes, they are required to pay a small fee. This is cleary stated in the font copyright field of the font file. In return for uploading my fonts to this particular online library, I participate in their AdSense revenue share program.

There are competing online font libraries that download fonts from my trusted site and offer them to the general public by listing them on their own sites. I have not given my permission for them to do this - in fact, I have explicitly stated that users cannot make my fonts available for others to download. Although they also offer my fonts to the general public for free, they do generate a revenue by placing paid-for advertisements on my font listing pages.

My question is: does this constitute commercial use and, if so, am I due a fee?

I should add that this problem is huge, with thousands of font authors experiencing the very same thing. Many of these sites fail to credit us for our work and many also have misleading payment information, meaning we potentially lose licencing revenue. Some sites also change our original files in various ways: I've known my own files, for example, to be unpacked and/or renamed; and I've been told by other font designers that some sites even bundle what they believe to be potentially harmful executable files with their fonts.

I'd appreciate any thoughts you might have about my legal position.

Thank in advance,



Steve

Steve, you will want to have an attorney in the UK review the facts of the use of your fonts by the other competing font libraries, to determine if the uses are commercial. I think it could potentially be seen as a commercial use based on the ad revenue generated on those sites and a perhaps corresponding loss of revenue to you.


For the benefit of others: In the US, copyright law protects computer software. Fonts (the program that tells a printer how to form a letter or character) can be protected under the law if the fonts qualify as a computer program or computer software (which they generally will). Typefaces, on the other hand (the actual shape of a letter or character), is not protected under US copyright laws (although it can be possible to gain patent protection for a typeface).

Fonts are generally licensed through an End User Agreement, where a fee is charged for the use. The agreement can place limits on how the fonts are used (for example, for private use or for commercial use).

A case to refer to is Font Bureau, Inc. v. NBC Universal, filed in a New York federal court, with damages claimed by Font Bureau of $2 million. NBC, which licensed the use of fonts from Font Bureau, is alleged to have exceeded the permission granted under the license. I can provide a link to the case later.

 

[Steve Gardner]

... I suspect you didn't register your copyright in the US...

My (limited) understanding is that a font file is regarded as a software product and that the author can assert copyright ownership in the font file header and/or accompanying documentation.

As for the potential size of the damages, I accept any claim I made on my own behalf would be relatively small. But some font authors at the trusted online library I use can expect tens of thousands of downloads each day. The top author is downloaded around 50,000 times each day and has an all-time download total of well in excess of 50 million files. This translates into a considerable AdSense revenue for him, not to mention all the commercial licence payments. So, when you take the entire font author community into account, my view is that those sites who download and re-list our fonts are responsible for a sizeable loss of income.

 

[Steve Gardner]

Steve, you will want to have an attorney in the UK review the facts of the use of your fonts by the other competing font libraries, to determine if the uses are commercial.

Thanks for the information, quincy. I think FlyingRon's point about my potential loss being small is correct and that it might not be viable for me to pursue them for any potential loss of revenue. Is there any mechanism in place for font authors from around the world to work together to pursue a sort of international class action?

 

[quincy]

... Is there any mechanism in place for font authors from around the world to work together to pursue a sort of international class action?

I have not looked into this, so I don't know. You could consult with an IP attorney in the UK and see what s/he says.

 

[FlyingRon]

The TYPEFACE is not protected. That's what the letters looks like. The FONT is the program that generates the typeface at various resolutions. That is very much protectable by copyright (in the US at least).
The font name also typically has trademark status.

 

[quincy]

The TYPEFACE is not protected. That's what the letters looks like. The FONT is the program that generates the typeface at various resolutions. That is very much protectable by copyright (in the US at least).
The font name also typically has trademark status.

Fonts as software is copyright protectable, right. I think I also mentioned that typefaces are not protectable under copyright law.

BUT, typefaces can have both patent and, like fonts, trademark protection. For a look at the history of the typeface (I know, I know . . . borrring ), here is a link: http://typeheritage.com/history/uspto-01/