was called into question by the recent submission of three claims to copyright. The Company submitted a work entitled Century Typeface consisting of a four-line listing of the capital letters of the alphabet (A through Z, in alphabetical order) and the numerals (zero through nine, in numerical order). Claimant's attorney sought registration on the grounds that the work was original in that it was a "novel composite of parallelograms, both of the elongate side and the equilateral side form. In the case of certain letters, the parallelograms have cut corners including also straight bars joining various letter segments." This claim was rejected by the Office. Second, on September 14, 1970, Mr.

Finally, the

10

submitted a Class G application for listing the "nature of the

registration of a work entitled Alphabet for work" in the application as "design for alphabet." The work consisted of a drawing of a uniform alphabet with the addition of very simple scroll features. The disposition of this case has been held up, pending completion of this study and follow-up meetings with the Office. Company of New York has met with representatives of the Office on two occasions to discuss possible registration for its allegedly original newspaper type font." On both occasions, the company demonstrated the involved process of creating a new and salable type font (called -) for newspaper use." The company urges statutory copyright protection for its work product, because the process of its creation is both risky, and expensive. Statutory protection was heretofore unnecessary (from a business point of view), said company representatives, because of the difficulty (i.e., expense and time) involved in copying a competitor's type font. However, modern photographic processes make copying matrices and even inked proofs relatively easy and inexpensive. Too, the existence of photographic typesetting devices encourages copying to produce types compatible with these new machines." Design patent does not offer satisfactory protection, said company representatives; 16 and they

13

Discussed more fully in memo from H. Oler to R. Glasgow, supra note 2.

10 Letter from Augustus Douvas, Esq. to Miss Dorothy Schrader, Head, Arts Examining Section of the Copyright Office, August 15, 1969.

11 On August 19, 1970, four attorneys from the Copyright Office (Mr. Glasgow, Miss Ringer, Mr. Dietz and Mrs. Oler) visited the Company in New York. Subsequently, on January 27, 1971, several Company officials reciprocated the visit to discuss further the possibility of copyright registration for their type fonts. Office participants at this meeting were: Mr. Cary, Mr. Goldman, Miss Ringer, Mr. Moore, Mr. Glasgow, Mr. Levine, Miss Schrader, Mr. Dietz, Mr. Hadl, Mr. Froelich and Mrs. Oler. These sessions are hereafter referred to as the meetings.

12 The process outlined at the

meetings typically involves the following steps:

(1) researching market needs and comparing the Company's Catalog of type fonts with those of competitors;

(2) making initial drawings of letters;

(3) making polished drawings for quick trials on linofilm machines;

(4) making sets for comparison with existing type fonts;

(5) printing up pages for comparison with pages printed with existing type fonts; (6) making manufacturing or engineering drawings for use on actual machines;

(7) making experimental settings on newspaper machines to test the effects of high speed printing on the proposed font;

(8) drawing capitals, associated boldface, italics and numerals and running them through the comparison and quick trial stages;

(9) producing the font on a linotype machine and distributing it to manufacturers for critical appraisal; and

(10) marketing the font.

13 See C. Swann, Techniques of Typography (1969).

14 A. Lawson "The Discouraging Lot of the Type Designer" (Sept. 1970) (photocopy in Copyright Office Library).

15 This statement seems to be legally sound. In Goudy v. Hansen, 247 Fed. 782 (1st Cir. 1917), cert. denied, 246 U.S. 667 (1918), the First Circuit Court of Appeals voided a design patent in a design for a font of type on grounds that the subject matter was not patentable, and that neither the type characters, imprints, nor metal blocks upon which they were cut possessed sufficient "peculiar configuration or ornamentation" to justify a design patent. 247 Fed. 782, 785.

to

The first ground was subsequently overruled to the extent that a design for a font of type was held to be patentable subject matter within the meaning of the statute. Cooper v. Robertson, 38 F. 2d 852 (D.C.D. Md. 1930), citing, inter alia, Keystone Type Foundry v. Wynkoop. 239 F. 355 (S.D.N.Y. 1916). But no later case has been found upholding a design patent in a font analogous (in terms of the amount of original artistic expression -'s). At both meetings, their spokesman stated that no design patents have been issued since 1946 for commercially valuable type fonts, and it was therefore their unanimous opinion that enforceable design patent protection is not available for their product. This opinion held notwithstanding the fact that the Patent Office had recently issued a patent for a type design of sorts. In Ex parte Fishback, the Patent Office Board of Appeals reversed a lower decision and granted a design patent for "the ornamental design for a Set of Sign Panel Letters, Numerals and Symbols." In the course of the decision, the (Continued)

therefore determined to pursue the copyright route. To date, no formal applications or briefs have been submitted by -; but the company plans to submit

materials for registration in the near future.1

The above cases are set forth as examples of the types of materials for which copyright registration is currently sought. In order to determine the best disposition of those cases yet unresolved and to lay the foundation for establishing a uniform practice on what is broadly referred to as "typography," this paper will briefly review the history and present status of Office practice. It will then discuss recent copyright law bearing on "typography" and, more broadly, trends in law and practice regarding the copyrightability of works of art generally. Finally, each branch of "typography" will be reviewed individually in the above framework and a suggested Office practice for each will be proposed.

II. ISSUES

(1) What practices should the Office follow regarding the registration of claims to copyright in a type face, type fonts, and typography?

(2) Must the current Regulations (Sec. 202.1(a)) be amended to reflect these practices?

III DISCUSSION

A. History: Statute, Regulations, and Office Practice

The Copyright Law, insofar as it relates to the registrability of the three kinds of typography under consideration, has remained unchanged since 1909. It provides for statutory copyright in all the "writings of an author"" and enumerates as copyrightable works, inter alia, “[w]orks of art; models or designs for works of art;" and "[d]drawings or plastic works of a scientific or technical character." 18

A Review of the Regulations of the Copyright Office prior to 1956 disclosed only one specific reference to the subject matter under consideration. The two sets of Regulations printed in 1910 contained the following provision: "Mere ornamental scrolls, combinations of lines and colors, decorative borders, and similar designs or ornamental letters or forms of type are not included in the designation 'prints and pictorial illustrations' " 19

No other provision was mentioned until 1956, when the present prohibition against copyright registration for "mere variations of typographic ornamentation, lettering or coloring" was adopted."

20

It codified Office policy in the wake of the Second Circuit's 1952 decision in G. Ricordi & Co. v. Haendler" (which raised, without answering, the question of the copyrightability of typography) and the Office's follow-up study on the copyrightability of a font of type and the typographical arrangement of a book.” Strauss considered whether "designing and engraving a type font is artistic work, and whether the resulting lettering and arrangement is a copyrightable work of art.?" Based on his review of case law (foreign and domestic) and scholarly opinion, Strauss concluded that while some type designs "should

(Continued)

Board said: the claimed set of symbols is displayed in connection with border and background features which give a distinctive and characteristic effect supporting appellant's allegations as to design improvement over the reference appearances. While any such display of characters can be analyzed as involving individual features as to letter form, border form, background and slant relationships, it does not appear to us that the art applied leads to applicant's total creation using these elements of symbol presentation. To arrive at the design by piecemeal consideration of references using such elements in one way or another is not difficult but appears to us to be guided by appellant's disclosure rather than by a rationalization giving credence to the view that the design would be obvious to the ordinary observer working from the references alone." 160 USPQ 30 (P.O. Bd. App. 1968).

On the general problem of the absence of protection for type designs, see A. Lawson, Printing Types: An Introduction 12-13 (1971).

16

meeting Jan. 21, 1971.

17 Copyright Law of the United States, 17 U.S.C. § 4 (1964).

18 17 U.S.C. §§ 5(g), 5(1) (1964).

10 Regulations of 1910, compiled, in Compilation of Regulations Concerning Copyright 1874-1956 (mimeo found in Copyright Office Library) (emphasis added).

20 Copyright Office Regulations, 37 C.F.R. § 202.1(a) (1956).

21 G. Ricordi & Co. v. Haendler. 194 F. 2d 914 (2d Cir. 1952).

"Memo from W. Strauss to G. Cary on "Copyrightability of a Font of Type and the Typographical Arrangement of a Book". Dec. 22, 1953 (unpublished collection of Strauss memos found in the Copyright Office Library).

23 Id., at 2.

probably be copyrightable" as works of art, ordinary type and type arrangements have traditionally been denied protection by courts and should not be copyrightable. He drew the line of registrability of a particular work by analyzing its comparative artistic and functional features: "Where a letter, or combination of letters has aesthetic meaning (i.e., incorporates a design) apart from the function of forming words and conveying thoughts, then it may be considered a work of art. . . . A decorative letter, beautiful or ugly, expresses an idea of its own, regardless of its function within the language; it can stand by itself as a drawing, etching or print. Not so ordinary type: None of the letters, alone or in combination, are things of aesthetic appeal; their only purpose is to be read, and if their form is pleasing then reading them is made less tiring. But they have no life apart from their function; they are therefore, not works of art."

Under this standard, legibility was the practical determinant of registrability: "it would be impossible to read a book consisting wholly of decorative type" of the kind he found copyrightable."

Strauss applied a more lenient standard of registrability to advertising type and layout: "Type designing then means more than finding new and artistic forms for existing letters. There must be a feeling of harmony and unbroken rhythm that runs through the whole design, each letter kin to every other and to all. Particularly in the case of advertising art success largely depends on artistic letters and on good layout. The proportionate arrangement and relationship of the various parts: headline and text, main illustration, secondary illustrations must be harmonious and striking, and an unbalanced, incongruous, or monotonous type and layout detracts from the message. Some such type designs should probably be copyrightable."

Although Strauss leaves open the possibility of registration for both excessively decorative letters and some types of advertising layout or typography, the informal Office practice, at least within recent years, acknowledges the possibility of registration only for works in the former category. No Office case has been found or recalled where registration was made for a work consisting solely of the advertising layout or arrangement of unadorned letters of the alphabet." It remains to be seen whether recent case law or policy considerations suggest a change in this practice.

B. The Law Bearing on “Lettering and Typography”

Most of the proponents of a change in Office practice cite the Pennsylvania District Court's 1960 decision in Amplex Manufacturing Co. v. A.B.C. Plastic Fabricators, Inc. as authority. It is the only decision squarely on point. But considering a type face, a type font and typography as different kinds of works, it probably considers the copyrightability only of the latter. Although court guidance is minimal, we should review the few decisions which are relevant to our issues.

The issue of the copyrightability of typography was raised in Judge Learned Hand's decision in G. Ricordi & Co. v. Haendler." He found defendant innocent of unfair competition where he photographically copied plaintiff's book after the copyright had expired. Announcing a doctrine of federal preemption for published works, Hand held that regardless of whether typography was copyrightable (under state law or by federal statute), federal, rather than state law must determine whether any part of the work (including typography) was dedicated, since plaintiff "invoked the protection of the Copyright Act over all that appeared" in his work by publishing it with an unlimited copyright notice.

31

"Did the plaintiff preserve any rights after publication in the book except those granted by the Copyright Act? We may start with the undoubted postulate that, except for some especial typography used to print the libretto and scores, the plaintiff dedicated all its interest to the public. Moreover, it is equally

24 Id., at 10.

25 Id., at 13.

20 Id., at 4 (footnotes omitted). For a fuller discussion of the Strauss memo, see memo from H. Oler to R. Glasgow. supra note 2.

This question was discussed informally with present Examining Division Section Heads prior to conducting this study.

28 Amplex Manufacturing Co. v. A.B.C. Plastic Fabricators, Inc., 184 F. Supp. 285 (E.D. Pa. 1960).

None of the cases explicitly distinguishes between kinds of "typography" in the manner adopted in this paper. yet it is often possible to narrow their discussions from the factual context of the cases.

30 194 F. 2d 914 (2d Cir. 1952).

31 Id., at 915.

clear that if the especial typography was itself copyrightable, it too was dedicated to the public, for it was certainly a part of the 'work.' Therefore, we need consider only the possibility that the typography was not copyrightable. The argument then would be that, since the typography was not copyrighted, the plaintiff did not dedicate it, because no part of a 'work' is to be deemed dedicated which the copyright does not cover; and that it was for the state law to decide whether the publication of the book was a dedication of the typography. However, even though the state law held that publication was not a dedication we should feel bound to disregard it, because the question would still be, not one of state law, but of federal law." 2

In Hand's exemplary style, the reason for the rule was offered: under federal law, publication of a work with an unlimited copyright notice "would imply that, when the copyright expired, the 'work' in all its aspects would be in the public demesne. After the copyright did expire, the public would certainly understand that they might reproduce the book without any limitation, and if it was permissible to prevent their doing so photographically, that expectation would be defeated." 33

By way of dicta, the Ricordi opinion made two statements noteworthy for our study. First, it implied that "ordinary" typography, at least, is not copyrightable. "[W]e may start with that undoubted postulate that, except for some especial typography . . . the plaintiff dedicated all its interest to the public." * Thus, whatever common law rights the plaintiff might have possessed in ordinary typography did not survive publication in the copyright sense, because such subject matter was not statutorily copyrightable. The opinion cited no authority for this postulate.

Second, the opinion raised the question of whether plaintiff might, by using a special notice of reservation of rights in typography, have preserved common law rights in the typography even after the work itself entered the public domain.

"Such a secret limitation upon the apparent dedication of the 'work' seems to us inconsistent with the exercise of the other rights of copying which by hypothesis the dedication indubitably would include. Whether this result could be avoided by annexing to the copyright notice a reservation of the 'author's' rights in the typography we need not say; for there was no such reservation." The possibility remained open, since plaintiffs' work did not contain a restricted notice.

For all its unanswered queries, Ricordi remains the law; and it was cited with approval in the more recent case of Desclee & Cie., S.A. v. Nemmers." There, plaintiff brought an action for unfair competition to enjoin the photographic reproduction of published Gregorian chants annotated with Solesmes rhythmic signs." The court denied relief, on grounds that the rhythmic annotation, indicating the manner of performance of Gregorian chants, were an integral part of the copyrightable musical composition; that there is no reservation of rights in the typography of a published work; that the exclusive remedy for wrongful copying was that afforded by the Copyright Law; and that plaintiff had failed to establish a case of unfair competition.

39

The nature of Desclee's interest was clearly set forth: ". . . Desclee's interest in the property which was photocopied may be analyzed as consisting of the intellectual content or subject matter; that is, the Solesmes annotations, and the concrete, physical form employed to convey and publish this content; that is, the type characters, layout, and composition of the typography." "

32 Ibid. 33 Ibid.

34 Ibid. This postulate followed the Court's avowed assumption that the case of E. P. Dutton & Co. v. Cupples, 117 App. Div. 172. 102 N.Y.S. 309 (1907). stood for the proposttion that a work "profusely illustrated with illuminated capitals" may be protected by unfair competition against photographic copying when it has never been copyrighted. 194 F. 2d at 915.

35 Id., at 915-16.

30 Desclee & Cie., S. A. v. Nemmers, 190 F. Supp. 381 (E.D. Wis. 1961).

37 The rhythmic signs used were the standard mora (or dot), ictus and apisema (or vertical and horizontal dashes), and comma. Id., at 384.

38 This statement could mean that either no such reservation can ever be made. or simply that plaintiff here failed to make one. It probably means the former, since the court could easily have phrased the statement to apply only to this particular case.

3190 F. Supp. at 387-89.

40 Id., at 387. Some type characters, including large Roman numerals and capital letters found at the beginning of individual chants were stated to have been "specially created for and unique with Desclee". Id., at 385.

This subject matter, said the court, was not so extraordinary that it would fall within the protective scope of unfair competition's "free ride" doctrine.

"The evidence as to the claimed uniqueness and artistic competence of the Solesmes annotations does not suffice to endow this subject matter with such an exceptional character as to give it an additional inherent commercial value, different from that of other literary property of a scientific or artistic nature."" Thus, the court rejected plaintiff's claim of misappropriation," but left open the possibility in future cases of establishing the necessary secondary meaning to layout, composition, and unique type characters and competitive use thereof to constitute actionable misrepresentation." It gave no clear statement on the statutory copyrightability of a type face, type font, or typography, for it was dealing with questions of unfair competition and federal pre-emption.

In the same general vein was the very recent unfair competition case of Bailey v. Logan Square Typographers, Inc." a case which involved the jurisdiction of a state court to decide a claim where the defense relied on the federal Copyright Law.

Plaintiff, a photo process printer, designed and compiled over 270 different alphabet styles and reproduced the individual characters on negatives and positives which he licensed to other photo printers. They in turn used the alphabet characters in their published material "without restriction," but the further use of the negatives and positives was regulated by the license agreement. Plaintiff claimed that the unpublished compilation of alphabets had a greater market value than did the published alphabet characters, and thus brought suit against defendant for copying his licensee's negatives.

The Seventh Circuit, in the course of holding that defendant was not entitled to remove to a federal court, made some interesting copyright observations: "The common law has recognized that the owner of unpublished designs or compilations of material has a valuable interest that may be protected from wrongful invasion apart from the federal copyright and patent laws. Indeed, the Copyright Act itself recognizes the validity of common law protection prior to publication. [17 U.S.C. 2] Although that which is published may be freely copied as a matter of federal right, [Sears, Roebuck & Co. v. Stiffel, 376 U.S. 225], that which is unpublished and therefore not available for copying, may be protected from misappropriation without offending any federal law." This seems to solidify the doctrine of federal pre-emption as applied to published works.

Another case factually similar to Desclee in that it concerned protection for scholarly editing and the addition of (standard shaped) accent and cantillation marks over (public domain) Hebrew characters was Schulsinger v. Grossman.“ Here, the Southern District of New York court granted plaintiffs' motion for an injunction pendente lite to protect its copyright against a business competitor's infringement. The Copyright Office had registered plaintiff's work as a compilation, rather than a work of art, and the court seemed to affirm this view of the nature of authorship: "[i]n the light . . . of my finding that defendants have

41 Id., at 387.

2 Though the Sears, Compco and Desclee cases seemed to have closed this door to prospective plaintiffs, it was recently knocked ajar by a California district court in Grove Press v. Collectors Publications, Inc., 264 F. Supp. 603 (C.D. Calif. 1967). There, plaintiff was granted an injunction to prevent defendants from photocopying and offset lithographing the typographic layout of his edition of a public domain book. The Court expressly set aside the Sears and Compco cases and cited for authority Greater Recording Co. v. Stambler. 144 U.S.P.Q. 547 (N. Y. Sup. Ct. 1965); Flamingo Telefilm Sales, Inc. v. United Artists Corp., 141 U.S.P.Q. 461 (N.Y. Sup. Ct. 1964), rev'd, on other grounds, 22 A.D. 2d 778, 259 N.Y.S. 2d 36 (1964); and Cable Vision, Inc. v. KUTV, Inc., 355 F. 2d 348, 351 (9th Cir. 1964). Significantly, it also cited I.N.S. [infra note 45] for the proposition that: "In view of Plaintiffs' expenditures of substantial sums in setting type and engraving plates, it would constitute unfair competition for Defendants to appropriate the value and benefit of such expenditures to themselves by photographing and reproducing Plaintiffs' book through the offset lithography process, thereby cutting their own costs and obtaining an unfair competitive advantage." 264 F. Supp. 603, 606-607. Whether any court outside of California would recognize protection in these circumstances is questionable. 43 190 F. Supp.. at 389. The court mentioned E. P. Dutton & Co. v. Cupples, 117 App. Div. 172, 102 N.Y.S. 309 (1907), a case involving the photographic copying of a publication, as authority for the proposition that though the "material was not copyrighted and possibly not copyrightable," unfair competition based on misrepresentation was found where the purpose of copying the book, "including the distinguishing features of the overall makeup and color. was the deception of the public." 190 F. Supp. at 390.

Bailey v. Logan Square Typographers, Inc., 441 F. 2d 47 (7th Cir. 1971).

45 Id., at 51. citing, inter alia, I.N.S. v. Associated Press, 248 U.S. 215, 250-53 (Brandels, J. dissenting).

46 Schulsinger v. Grossman, 119 F. Supp. 691 (S.D.N.Y. 1954).

57-786 76 pt.2 32