Do you hear that? D.J.s are dusting off their turntables…florists are snipping away at stems…wedding season is upon us. Soon, your mailbox will begin filling up with those telltale envelopes-within-envelopes. I recently received a wedding invitation with a very unique script that looked as if it could be someone’s personal — and very lovely — handwriting. Because I am always wearing my intellectual-property attorney hat (both a blessing and a curse), I paused at seeing this invitation and thought about the different ways in which the font-designer or calligrapher (or writer, in the case that it actually was someone’s handwriting) could protect his or her font. The answer, as you can imagine, is not a simple one.
Let’s write off copyright law from the start (pun intended). Fonts are not protectable by copyright — at least, not in the United States. The 1976 House Report accompanying the Copyright Act of 1976 indicates that the House Committee considered, but chose to “defer,” the protection of typeface design. Additionally, the Copyright Act explicitly excludes what are called “useful articles” from copyright protection under the Act. A useful article is an object that has an intrinsic utilitarian function. In other words, unless you can separate the design elements from the “useful” elements, you cannot protect the font under copyright law. (Click here for examples of other useful articles.) Because the alphabet is intrinsically useful, if you were to design a typeface or font and attempt to register it with the Copyright Office, the Office would likely reject your application. An exception to this general rule is the computer code behind the design of a digital font. Much like the code that makes up the design of a website, the computer code that renders a typeface is also registrable with the Copyright Office. Keep in mind, however, that this will protect only the code itself, not the design of the characters.
There are a few options under U.S. trademark law. The name of a font can be registered with the trademark office — for example, Helvetica, Times New Roman, and Arial are all registered trademarks. But, such a trademark would only protect the name of that font and prevent someone else from creating a font with the same name and using that font in commerce; it would not prevent someone else from using the font’s design. Even so, fonts are protectable insofar as they are incorporated into a logo (think the Disney logo, with its unmistakable script). Obtaining trademark protection in a logo will protect that exact image and anything “confusingly similar,” so, one could argue, if someone uses your unique script in another logo confusingly similar to yours, he or she would be denied trademark protection in that logo. It is important to remember, however, that you cannot just register a logo by itself — it must be used in connection with the sale of certain goods or the provision of certain services.
The final option is also the most expensive: a design patent. A design patent protects the design aspects of a functional item. In fact, George Brucci, who earned the very first design patent ever issued, did so by creating and registering a typeface. In exchange for the hefty fee (for “small entities,” this amounts to around $300 for the filing fee, plus another $500 if the U.S. Patent and Trademark Office grants you the patent, plus some surcharges, plus those attorneys’ fees), you will obtain protection in your design, and any design that is substantially similar. Design patent protection lasts for fourteen years from the date the patent is granted. There are no maintenance fees for a design patent, but, unlike copyrights and trademarks, there is no renewal of a design patent. Once the term of the patent has expired, you cannot stop others from using it.
So, what is the solution? If you are a calligrapher, logo designer, or font designer, can you protect your work at all without spending a fortune? Yes, you can. You can license your work to a customer (say, a printer of invitations, a retail store, or an advertising or web development agency), reserving your rights in the font (including your intellectual property rights and the right to display the font(s) in your own portfolio) and setting forth the different territories and media in which the customer is allowed to use the font, which will most likely be a focus in the negotiation of the agreement (Advertising only? Website only? One-time use? Nationwide use? It’s up to you). This would be similar to any other license you would enter into as a purveyor of artistic works and/or design services, except that you would want to be sure to include specific non-disclosure and/or non-circumvention language, which would help to control who sees or touches your work (and, thus, protects your work from being impermissibly copied), and to specify prohibited uses of your font. We are happy to guide you in the execution of such an agreement if opportunity comes knocking (or, perhaps, simply writes you an invitation).