How to cope with copyright issue of fonts and their characters

Some clients have recently received consultation letters and reminders for using characters, or similar warning letters from certain font library companies. This column will focus on the following issues: what are font libraries, fonts and the software of font libraries, respectively, in China? Are the font libraries, or single fonts, protected by copyright law? And when faced with consultation letters, reminders for using characters, or similar warning letters sent by the font library companies, what actions should be taken by companies?

Font, font library and software

The font, also known as chirography, refers to the style of characters, and it summarises the character symbol system from the perspective of structure. Font works are fixed and perceived through manuscripts, computer screens, the output of printers and so on.

The computer font library refers to the ensemble of the same kind of fonts in the computer, and specific co-ordinating data and function algorithms are embodied in the characters of the fonts.

Through the digital fitting and vectorisation on the matrix designed by the font designers, the producers of computer font libraries create the vector data in TrueType, PostScript and other forms written by computer language, in accordance with certain industrial standards, and the nature of the vector data is the tool of the font. To satisfy the diversified needs of fonts for users, it is created in accordance with unified technical standards, and reproduced and duplicated by technical means. It is the tool to realise the practical function of the fonts.

The software of a font library is a tool to form the font library and demonstrate the single font, which is the ensemble of a series of computer data and instructions organised in certain order, or software. The software of a font library is fixed and perceived by floppy disk, optical disc or other forms.

The single character, font library and software are independent objects, without affecting each other.

Are fonts protected?

There are no rules in domestic legislation and there is no unified international practice on the protection of fonts, along with the unique characteristics of Chinese characters, which make the protection of fonts generally controversial in the intellectual property (IP) community. Copyright law does not classify fonts as works, while the State Council’s copyright authority has registered fonts as works of fine art.

Individual cases uncertain

There are huge differences between academia, the State Council’s and the courts’ copyright authority, and even different courts hold various views, which make individual cases uncertain.

In recent years, disputes on the IP of fonts have often arisen, which should arouse widespread attention. For example, Zhongyi Electronic sued Microsoft over the IP of Songti font and Heiti font in 2007. In August 2007, Founder sued Blizzard over the IP of font libraries, claiming up to RMB408 million (US$66.2 million).

Originality a prerequisite

We believe that originality is a prerequisite for a font being entitled to copyright, i.e. the controversial fonts should be first assessed and analysed for originality. Generally speaking, there are at least four categories of Chinese characters. The first category is where the traditional fonts having no copyright, such as Heiti, KaiTi, Songti, Imitation Songti, Liuti, Yanti, Outi, and Suti.

The second category is fonts with slight changes based on the first type of fonts, and the changes have not satisfied the requirement of originality. The third category is fonts with great improvement on the first type of fonts, which have met the originality requirement. However there are very few of these fonts. The fourth category is fonts with high originality that did not exist before, such as Jinglei font and Shutong font.

Low originality

We believe, for low originality, the first and the second categories, and the use of the single font are not subject to the protection of copyright, therefore the use of them should not attract fees by law. The single font with the originality of the third and fourth types have the copyright, and the commercial use of them can reasonably attract a charge by law.

While the protection of fonts remains blank in domestic legislation and there are controversies in judicial practice, companies should still pay attention to this issue and be aware that the commercial use of unauthorised fonts is subject to potential legal risks.

Recommendations

We recommend:

• Screening the fonts that are commercially used, or to be commercially used, and assessing the originality of the fonts, and any underlying legal risks;
• Engaging in-house counsel or external consultants to review and design the contracts of the companies, to minimise the legal and litigation risks;
• Reviewing the agreements on infringing third-party IP with the suppliers, and if necessary re-signing the contract with suppliers who may possibly use the Chinese characters for design;
• Sorting out fonts that are acceptable and without risk to use, such as the fonts with low originality or fonts with high originality licensed by the font library companies, and informing designers to use these safe fonts. If the designers need to use unlicensed fonts, ask them to inform the company in order to make assessment and get a licence from the font library companies;
• Upon the receipt of letters from font library companies, based on the originality of the controversial fonts, first analyse the originality thoroughly and assess the risks objectively. Conduct a professional overlapping comparison and co-ordinate a comparison of the fonts that are allegedly being infringed and the fonts used by the companies, to assess whether there is “substantial similarity”. Lastly, the company should synthesise the above information based on specific evidence and conditions, and prepare negotiation and litigation strategies.

Qin Yajie is an associate at Chang Tsi & Partners