The manufacture and sale of type fonts by Mergenthaler and its approximately 40 competitors is a sizeable business. Mergenthaler alone produces and sells in the United States about $8 million in type fonts per year.

Ten years ago we needed approximately $200 thousand and two years just to manufacture Lintoype matrices for a typeface, exclusive of design and selling expenses. For today's photocomposition machines, the equivalent manufacturing time and expense would be approximately one tenth to one hundredth of that amount. The manufacturing and economic foundations of the industry have drastically altered, favoring and encouraging typographic development, a promise that, in the United States, has been largely frustrated by the lack of effective protection for the designers' and developers' efforts.

It has been erroneously argued by the opponents of protection of original typeface designs that protection would grant to some individual a proprietary right in the basic alphabet that we all share. Typefaces must not be confused with the bare bones of the letterforms themselves. A typeface is a set of coherent design principles worked out and applied to letterforms. We make no claim to the A B or C themselves, but only to the way in which we clothe them, or their Greek or Russian equivalents, with a consistent repetition of our own design elements.

It has also been argued that all characters, letters and numerals of our language are essentially alike, that typefaces are too trivial to be worth protecting. If this is true, why is it necessary to copy the new artistic property of the designer rather than simply use the vast body of material in the public domain? There must be something of real value in each original typeface that differentiates it from the others and encourages it to be copied.

The opponents of protection for typeface designs argue that granting such protection will serve to raise prices and limit distribution. I can only say that this will not be true of Mergenthaler. We will license at a reasonable fee all protected faces, subject only to appropriate quality controls to maintain the integrity of the typeface design. Why? Commercially, because a typeface is most profitable when widely distributed on many manufacturers' equipment. For this reason alone, Mergenthaler would have no objection to compulsory licensing of protected typeface designs if Congress believes such a requirement to be appropriate.

Original typeface designs should also be covered under Title II, the design protection bill. We would support such coverage if the present ten-year maximum term is extended to at least fifteen years. As advisor to the United States delegation to the Diplomatic Conference held in Vienna in June of 1973 that established the Vienna Treaty for the Protection of Typefaces, I took part in the discussions that led to the establishment of fifteen years as the absolute minimum period for the international protection of original typefaces, because of the length of time required to properly establish a new design. Anything less would be ineffective. The language of Section 202 of Title II defining what is not subject to design protection should also be modified to make it clear that protection for original typeface designs will not be barred merely because the letterform itself is a familiar shape or because some or all of the individual design elements used to create the new typeface design are in common use or are variants commonly used in the trade, even though not in the particular combination for which protection is sought.

Mergenthaler urges that the industrial design protection bill be placed under the administration of the Copyright Office because:

1. It is a registration system modeled along copyright lines as opposed to the patent search system and,

2. The Copyright Office is not faced with the huge administration backlog of the Patent Office that causes long delays so damaging in this situation. We support the granting of protection to original typeface designs under Title I and Title II not just so that the designer (or manufacturer) will get paid a few more dollars here or there. We support it in the end because we believe that the art of typography in this country stands to gain if the best designers are encouraged to do their best work in this field by Congress exercising its constitutional power to promote the useful arts by securing for limited times to authors the exclusive right to their writings-i.e., their intellectual creations.

In seeking protection for original typeface designs, Mergenthaler does not wish to inhibit in any way the use of the protected typeface by typesetters, publishers, reprint houses or authors. We merely want protection from the unauthorized reproduction of the typeface designs for the purpose of providing

a means to compose a page of text and the right to have such unauthorized means destroyed. This limitation would conform with Article 8 of the Vienna Treaty.

Finally, this past year, the Copyright Office held hearings on a proposed change in its regulations to permit the registration of the claim of copyright in original typeface designs under the present Copyright Law in 1909. We are submitting for your consideration copies of our printed statement and of Professor Nimmer's opinion filed with the Copyright Office; these detail the economics of the typographic industry, the legal aspects of protecting original typeface designs under both current law and the proposed Title I and Title II of the copyright law revision and the question of function and legibility in the alphabet versus the aesthetic ornamentation in original typeface designs. Thank you for your attention.

[The material accompanying Mr. Parker's statement follows:]

STATEMENT IN SUPPORT OF THE COPYRIGHT REGISTRATION OF ORIGINAL TYPEFACE DESIGNS

To: The Honorable Barbara Ringer, Register of Copyrights.
From: Melville B. Nimmer.

The statement is made in response to the announcement of the Copyright Office relating to the possible amendment to § 202.1(a) of the Copyright Office Regulations relating to registration of original typeface designs. It is submitted on behalf of the Mergenthaler Linotype Company. I am professor of law at UCLA School of Law, 405 Hilgard Avenue, Los Angeles, California 90024 and am also a member of the law firm of Kaplan, Livingston, Goodwin, Berkowitz & Selvin, 450 North Roxbury Drive, Beverly Hills, California 90210. I am the author of the treatise Nimmer on Copyright.

In my opinion the aforesaid Regulations should be amended so as to provide for registration of original typeface designs. I shall not endeavor in this statement to analyze the somewhat fragmentary case law bearing upon this issue. That has been done adequately by others, including the Memorandum of E. Fulton Brylawski. It will suffice for the purpose of this statement to note that none of the reported cases construe the Copyright Act as precluding the proposed registration of original typeface designs. The analysis which follows will, then, be in terms of the text of the Copyright Act, and of the underlying principles pertaining thereto.

I. Original typeface designs are copyrightable under the copyright clause of the Constitution

There would appear to be no question but that original typeface designs constitute "writings" within the meaning of the Copyright Clause of the United States Constitution (Art. I, Sec. 8, cl. 8). "Writings" in the constitutional sense have been held to include sound recordings (Goldstein v. California, 412 U.S. 546 (1973)) and photographs (Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53 (1884)), although neither of these easily fit the lay meaning of the term writings. It surely follows that typography, the very essence of what laymen understand as a form of writing, is also a "writing" within the meaning of the Copyright Clause. The Supreme Court in Goldstein has stated that "writings . . . include any physical rendering of the fruits of creative intellectual or aesthetic labor." Original typeface designs certainly constitute creative intellectual and aesthetic labor (see Par. III infra.).

II. Original typeface designs are copyrightable under the Copyright Act A. ORIGINAL TYPEFACE DESIGNS CONSTITUTE "WRITINGS" UNDER SEC. 4 OF THE COPYRIGHT ACT

Sec. 4 of the Copyright Act provides: "The works for which copyright may be secured under this title shall include all the writings of an author". Although there is some debate as to whether the term "writings" in this context is coextensive with the same term as used in the Copyright Clause of the Constitution (see Nimmer on Copyright, Sec. 12), it is submitted that at the

very least "writings" under Sec. 4 must include all constitutional "writings" except insofar as other provisions of the Copyright Act dictate otherwise. This was the view expressed by Judge Learned Hand (Capitol Records Inc. v. Mercury Records Corp., 221 F. 2d 657, 664 (2d Cir. 1955) (Hand, J. dissenting)), and has since been followed in other decisions. See e.g. Harcourt, Brace & World, Inc. v. Graphic Controls Corp., 329 F.Supp. 517 (S.D.N.Y. 1971) (“... the definition of 'writings' in Sec. 4 of the Copyright Act is intended to be read expansively, so long as limitations are not fixed elsewhere in the Act."). See also Monogram Models, Inc. v. Industro Motive Corp., 448 F.2d. 284 (6th Cir. 1971), 492 F.2d 1281 (6th Cir. 1974). The Monogram Models decisions apply and give meaning to the clause at the end of Sec. 5, sometimes ignored in earlier decisions, that provides: "The above specifications (i.e. the Sec. 5 classifications) shall not be held to limit the subject matter of copyright as defined in section 4 of this title..."

Since original typeface designs are clearly "writings" in the constitutional sense (see Par. I supra), and since there is nothing in the Copyright Act which negates their inclusion under the statute, it follows that they are protected under Sec. 4. It therefore becomes unnecessary to determine whether typeface designs can qualify as "works of art" under a Section 5 classification.

B. ORIGINAL TYPEFACE DESIGNS MAY QUALIFY AS "WORKS OF ART" UNDER SEC. 5 OF THE COPYRIGHT ACT

Even it if were necessary to fall within one of the Sec. 5 classifications in order to qualify for copyright, original typeface designs may be found to constitute "Works of art" under Sec. 5(g). The Court of Appeals for the Sixth Circuit has made the point that "(t)he fact that these (Sec. 5) classifications are perhaps not accurate descriptions of the subject matter sought to be copyrighted apparently is of no consequence". Monogram Models, Inc. v. Industro Motive Corp., 448 F.2d 284, 287 (6th Cir. 1971), 492 F.2d 1281, 1286 (6th Cir. 1974). Even if reliance is not to be placed upon the general Sec. 4 description of "writings", in applying the Sec. 5 classifications, these are to be expansively, not narrowly interpreted. But typeface designs, even under a restrictive interpretation, may surely qualify as works of art. The Copyright Office has inquired as to whether "type fonts as 'useful articles', can incorporate original design elements capable of being identified as 'works of art' within the scope of the present copyright statute."

In answering this inquiry we may start with the undoubted premise that any variation in the configuration of typefaces which departs from the standard alphabet is clearly a matter of "design." Moreover, such design variation in virtually all instances is undertaken for what is essentially an aesthetic purpose. In the standard work in the field, Legibility of Print by Miles A. Tinker (Iowa University Press 1963), the point is made that with respect to typefaces in common use (including Scotch Roman, Garamond, Antique, Bodoni, Old Style, Caslon Old Style, Kabel Light, and Cheltenham) legibility or speed-of-reading do not vary significantly. (Ibid., p. 48). Where the typeface design varies in greater degree from the standard alphabet, there may be some significant effect on legibility, but such effect is to reduce, not increase legibility. This was the case with respect to American Typewriter and Cloister Black. (Ibid, p. 48). In any event, "... differences in typefaces would have to be very radical indeed in order to produce appreciable differences in legibility in everyday reading situations.” (Ibid., p. 51). Tinker concludes that reader judgments as to legibility are in fact based upon "judgments of pleasingness." (Ibid., pp. 50, 64). It follows, then, that an election to vary typeface designs will virtually always be based upon aesthetic rather than utilitarian considerations. If typeface designs are to be protected by copyright, the reason a printer would elect to pay a royalty for the right to use such a design rather than employing one of the numerous public domain designs would be precisely because of the aesthetic effect of the copyrighted design. In this respect the situation is similar to that of Ted Arnold, Ltd. v. Silvercraft Co., 259 F. Supp. 733 (S.D.N.Y. 1966) where the court held a pencil sharpener in the shape of an antique telephone to constitute a copyrightable work of art for the reason that customers would be willing to pay more for this article than for the ordinary pencil sharpener precisely because of its artistic design.

Finally, it is to be noted that the above discussion assumes that there is a viable distinction within the sphere of works of art between utilitarian and

aesthetic functions whereby protection is to be accorded only if the aesthetic functions "can be identified separately and are capable of existing independently as a work of art. . ." Copyright Office Regulations, § 202.10 (c). Assuming that premise, original typeface designs should be accorded copyright registration for the reasons set forth above. But the premise itself is questionable. See discussion in Nimmer on Copyright, Sec. 37. The Supreme Court in Mazer v. Stein, 347 U.S. 201, 218 (1954) stated: "The dichotomy of protection for the aesthetic is not beauty and utility . . ." (emphasis added). Rather, insofar as a work contains artistic aspects, those may be protected under the law of copyright regardless of the utilitarian function to which those aspects may be put. Nothing in Mazer or in any other Supreme Court pronouncement, nor in the text of the Copyright Act, supports the "identified separately" and "existing independently" requirements of the Copyright Office Regulations. Even if this distinction is thought to be supportable with respect to other works of art, when a work of art is itself a writing in a literal sense, as in the case of typefaces, then the dichotomy between the artistic and the utilitarian loses all meaning. Such writings are by definition utilitarian in some degree. It would be an absurd paradox to conclude from this that writings, in their very core meaning, are excluded from copyright protection.

III. Typeface designs may incorporate the degree of originality and creativity necessary to support a copyright

It is clear, of course, that the copyright requirements of originality and crea-tivity are of a most minimal nature. Any "distinguishable variation" of a prior work will constitute sufficient originality to support a copyright if such variation is the product of the author's independent efforts, and is more than merely trivial. Alfred Bell & Co., Ltd. v. Catalda Fine Arts, Inc., 191 F.2d 99 (2d Cir. 1951), and see cases collected in Nimmer on Copyright, Sec. 10.2. Likewise, the"required creativity for copyright is modest at best... (and may include that, which) is not what the phrase 'work of art' ordinarily calls to mind . . .” Thomas Wilson & Co. v. Irving J. Dorfman Co., 433 F.2d 409 (2d Cir. 1970). See alsoTennessee Fabricating Co. v. Moultrie Mfg. Co., 421 F. 2d 279 (5th Cir. 1970) ("... minimal degree of creativity required for copyright.") The leading case enunciating this principle remains Bleistein v. Donaldson Lithographing Co., 188 U.S. 239 (1903), in which Mr. Justice Holmes opined: "It would be a most dangerous undertaking for persons trained only to the law to constitute themselves the final judges of the worth of pictorial illustrations. . . ."

It is hardly open to debate that typeface designs may embody not only the minimal originality and creativity necessary to support a copyright, but may, indeed, exemplify these elements in very marked degree. "The famous printerdesigners, Fournier (1764), and later Bondoni (1818) have laid the main stress on the aesthetic qualities in book-making. The controversy between exponents of the Bauhaus style and the traditionalists in typography (Reiner 1946) was not simply a question of function; it was also one of aesthetics, and aesthetic tradition... Marderstein, like his American interpreter and confrere, Porter Garnett, does not admit expedience or compromise in the act of printing. Only excellence in aesthetic fulfillment is accepted." B. Zachrisson, Legibility of Printed Tert (1965), p. 74.

IV. The issue of “Distinguishable Variation" is a matter for judicial rather than administrative determination

The Copyright Office has inquired: "Whether for purposes of copyright registration, workable standards can be established for distinguishing 'new' designs based on previously-existing typefaces from mere copies or minor variants of earlier designs."

It is submitted that no such standards need or should be adopted by the Copyright Office for the reason that they involve inquiries which are not proper for administrative determination. First, the fact that there are similar, or even identical "previously-existing typefaces" is irrelevant unless the further determination is made that the copyright claimant copied from such prior works. Copyright protection for typeface designs must, of course, be based upon a standard of originality, not novelty. Hence, the "prior art" per se is irrelevant in determining copyright protection. It is relevant on the issue of independent creation, but that presents a factual issue as to which the Copyright Office is neither equipped nor authorized to determine. When and if there is an attempt

to enforce a given typeface design copyright in a court of law, such court may well be required to determine whether and to what extent the plaintiff copied from prior typeface designs. That, however, is the kind of determination that the courts customarily make in copyright cases. There is no reason to believe that the courts will be less able to make such a determination in the case of typefaces than with respect to other copyrightable works.

Even if there is agreement as to the particular contribution to a previously existing typeface which has been made by the copyright claimant, whether such contribution constitutes a "distinguishable variation" so as to command copyright protection is a matter to be determined by the courts, not by the Copyright Office. The determination of whether a given typeface design constitutes a "distinguishable variation" from a prior design presents a factual question, and is a part of the general factual determination of originality. Originality always constitutes an issue of fact which may not be determined even by the courts as a matter of law. Dezendorf v. Twentieth Century-Fox Film Corp., 99 F. 2d 850 (9th Cir. 1938). See also Alfred Bell & Co. Ltd. v. Catalda Fine Arts, Inc., 191 F. 2d 99 (2d Cir. 1951) and Bleistein v. Donaldson Lithographing Co. 188 U.S. 239 (1903). A fortiori, it is not a question which can be administratively determined by the Copyright Office.

V. The notice, deposit and registration requirements for typeface designs are the same as those applicable to other copyrightable works

"Assuming the potential copyrightability of certain typeface designs," the Copyright Office has inquired as to "the practical means of complying with the formal requirements of the copyright law as to notice, deposit, and registration." Since no amendment of the Copyright Act relating to typeface designs is contemplated, the notice, deposit and registration requirements applicable thereto may not vary from the same requirements as applicable to other forms of copyrightable works. This should present no appreciable difficulties. It is true that a copyright notice placed upon a given work may not indicate whether the claim of copyright relates only to the typeface designs contained in such work, to the underlying literary matter, or to both. But such an ambiguity always arises when a copyright notice is affixed to a derivative work. See Nimmer on Copyright, Sec. 89.3 and cases cited therein. For example, if copyright is claimed in a translation of an underlying work written in another language, the copyright notice affixed to the work in translation form need not inform the public whether the claim of copyright relates to the translation per se, to the underlying work, or to both. This, no doubt, is an inadequacy of the present Copyright Act, but it is not a problem that is peculiarly raised by copyright in typeface designs. That which is deposited and registered in the Copyright Office may consist of a book printed in the claimed typeface designs, with a notation in the registration certificate that copyright is claimed in the designs per se (See Bouve v. Twentieth Century-Fox Film Corp., 122 F. 2d 51 (D.C. Cir. 1941); King Features Syndicate, Inc. v. Bouve, 48 U.S.P.Q. 237 (D.D.C. 1940)). Alternatively, there may be registration and deposit of the claimed typeface designs in alphabetical order, under Sec. 5(g).

CONCLUSION

For the above stated reasons, it is submitted that the Copyright Office Regulations should be amended so as to permit registration of original typeface designs. In this connection, it is surely not without significance that the international copyright community has come to recognize typeface designs as the propert subject of copyright, as exemplified in the Vienna Convention of 1973. Adoption of the proposed amendment would have the additional significance of announcing to the world that the United States is prepared to continue and expand its role as a responsible member of the international copyright community.

[Subsequent to the hearing, the subcommittee received the following letter:]

MERGENTHALER LINOTYPE Co.,
Plainview, N.Y., July 28, 1975.

Hon. ROBERT KASTEN MEIER, Chairman, Subcommittee on Patents, Trademarks, and Copyrights, House Judiciary Committee, House of Representatives, Washington, D.C.

SIR: We wish to take this opportunity to reiterate and amplify the statements made on behalf of the Mergenthaler Linotype Company at the hearing of 17 July 1975 before your sub-committee on patents, trademarks and copyrights, as well