Most of us in AIGA know a great deal about type and its uses and little about legislation and its enforcement. Accordingly, in stating our views on the matter of type design protection, we will stick to our own area of expertise. We will state our needs, express our opinions on what is best in the way of a climate for producing good work, voice our concern, point to pitfalls, and mention moves we believe would be detrimental. We make no recommendations as to what legislation or other governmental action will best achieve our goals. However, we will, if asked, supply information and advice to legislators and Copyright Office personnel, will work with them in developing a system that satisfies the needs of graphic designers; we will lend our support to rulings or legislation which are consistent with those needs. A typeface is a unique creative work which merits government protection against unauthorized copying. It is as deserving of such protection as a novel, a poem, a song, or a drawing. After examining the options, we think that it can fall within the purview of amended Copyright Office regulations. But we prefer to state conditions and let others decide how best to do it: 1. We would like to see universal licensing of typefaces to all legitimate manufacturers. We consider it healthy to have typefaces obtainable from more than one source, provided there is good quality control. Because typeface designs are unique, they must be meticulously and accurately reproduced. Their extension to matrices or grids for equipment other than that for which they were originally designed is to be carefully controlled by the original designer or design team. Only with this kind of quality control, which ensures compatibility, can designers specify type with the assurance that their finished designs will reflect their graphic plans. 2. Because typefaces are designated-and selected-by name, AIGA feels that any copyright or design protection system must cover both design and name. AIGA welcomes licensing of type designs among a number of marketers. However, for the protection of users of type, we believe that the name for a typeface must be recognizable and that the configuration of the type to which the name is assigned must be constant. Name and design should not be separable. 3. We are told that a possible effect of a change in Copyright Office regulations-albeit a remote one-might be that an injunction could be obtained against printing of a book because the type in which it is set is of questionable origin— an unauthorized copy of a protected face. The author, publisher and printer would thereby become victims and suffer financial loss in a dispute between marketers of type fonts. We also understand that specific legislation could preclude such a circumstance. Should typefaces become copyrightable, we feel there exists a temporary solution to this problem: book manufacturers could simply limit their designers and printers to use of typefaces in the public domain-all faces that were standard prior to a change in regulations-until any danger of disruption of production schedules is eliminated by legislation. 4. AIGA wants to be certain that the costs of type composition remain reasonable that a royalty and licensing system will not inflate rates unfairly; it also wants to be sure that any royalty or license charge will be collected only once, when the font or grid is sold. Moreover, we would oppose any change which placed restrictions for use of composed letters on the graphic designer, who must be free to alter or adapt as special graphic needs dictate. 5. There are obvious problems in determining whether a specific typeface is, in fact, sufficiently original to merit granting of a copyright or in determining whether a typeface is sufficiently like another to constitute an infringement of copyright. The differences which distinguish one typeface from another are often subtle or minute: they might well seem insignificant to the layman. Yet these differences often prompt a designer to specify one face and reject another that seems almost the same. To overcome this difficulty, and to minimize the amount of litigation that will inevitably result from copyrighting of typefaces, AIGA recommends formation of an advisory group of typeface experts-specialists who understand the significance, or lack of significance, of differences in letter forms. This typographic panel could have several functions: a. To serve as an advisory group to the U.S. Copyright Office and to legislators in promulgating effective typographic design protection laws and regulations. b. To help establish criteria of originality (not aesthetic value) by which copyrightability or protectability of typefaces can be determined on a regular basis. c. To clarify, mediate, or arbitrate disputes involving typeface designs. To serve as experts in mediation, arbitration, or litigation. We believe that an effective system of type design protection will foster more and better type design in this country. Arguments to the contrary seem to stem from fear and from the automatic tendency of business to resist assignment of additional powers to government bureaus. While the process of protection will require study and periodic refinement, we believe it will turn some fine American designers toward a challenging area in which they have not been able to afford to work of recent years. This will almost automatically follow when type designers are paid for their effort in proportion to the success of their product. LAFF, WHITESEL & ROCKMAN, ATTORNEYS AT LAW, Chicago, Ill., August 29, 1975. Re H.R. 2223, title II, copyright protection for original typeface designs. Chairman of the Subcommittee on Courts, Civil Liberties, and the Administration of Justice of the House Committee on the Judiciary, House of Representatives, Washington, D.C. DEAR SIR: Please find enclosed my comments in opposition to the proposed change to Copyright Regulation 202.1(a), which are being filed on behalf of Castcraft Industries, Inc., of Chicago, Ill. Cordially, Enclosure. HOWARD B. ROCKMAN. STATEMENT OF POSITION ON COPYRIGHTABILITY OF TYPEFACE AND TYPE FONT This memorandum is being filed in opposition to the proposed action by the Register of Copyrights in changing regulation § 202.1(a) to permit the registration of ordinary typeface and type from designs and fonts. This action would, in effect, extend copyright protection to works which are not within the category of copyrightable subject matter as defined by legislative and judicial mandate. Opposition to the proposed change is based on several grounds. First, the proposed change would radically alter existing law as to the scope of copyrightable subject matter, and in particular, as to the standards for delineating a "work of art". Such changes are outside the power of the Register of Copyrights, which office is neither legislative nor judicial in nature. Second, the decision whether the law should be changed, and how, should be decided by the courts, or Congress, before the Copyright Office makes such an important change. This has been the custom of past rule changes, and this policy should not be abandoned now. Third, present design patent statutes, and the procedures implemented thereunder, are sufficient to grant protection to those type forms exhibiting the requisite creative authorship required under the Copyright Laws. The Copyright Office would face tremendous difficulty examining originality and creative authorship in typefaces, since the requirements of such examination are beyond the capability of the Copyright Office as presently staffed. Fourth, if the regulation were changed, publishers would avoid the use of new typefaces when producing public domain works to prevent contingent liability, thus stifling the demand for new typeface designs. Fifth, the effect on the total industry affected by the rule change would be adverse. Machinery manufacturers would be able to dominate and to exact tribute from the many typographers who buy and use such machinery. Thus, the proposed change is deemed by this writer to be unnecessary, unwarranted, and ill-advised. II. Under Existing Law, Typeface Designs Cannot Qualify as Copyrightable Works of Art At the Copyright Office hearing on November 6, 1974, proponents of the proposed change in rule 202.1(a) to allow registration of new designs in typefaces and fonts urged that such typographic designs qualify as "works of art” in Class G (17 U.S.C. § 5(g)). However, typeface and font designs do not meet existing legal standards for determining copyrightable works of art, and if the proposed rule change were adopted, a change in substantive copyright law would be required, as well as procedural changes. The Register of Copyrights, as an administrative officer of a legislative agency, is not empowered to adopt rules contrary to statutory and judicially pronounced law. The Copyright Statute, 17 U.S.C. §5(g), states only that "works of art" are subject to registration, but does not indicate the standards to be applied in deter mining what constitutes a "work of art". However, several judicial decisions have attempted to establish a definable standard, and the Register of Copyrights, under the authority of 17 U.S.C. § 207, has promulgated rules establishing the criteria for registerability of works of art. When court decisions have altered extant guidelines for determining the copyrightability of a work of art, the Register of Copyrights has responded by changing the rules. To be copyrightable in Class G, a work must be the original work of the author, and if the work is based on material already in the public domain, his contribution to the total work must be substantial, and something more than merely trivial. M.M. Business Forms v. Uarco, 472 F.2d 1137 (6th Cir. 1973); Alfred Bell & Co. v. Catalda Fine Arts, 191 F.2d 99 (2nd Cir. 1951). The alphabet has been in the public domain for quite some time. Therefore, to be copyrightable as works of art, typefaces or fonts must exhibit a design change which is more than merely trivial. Since legibility and readability are the primary considerations in letterform design, the changes made to each letter are merely trivial embellishments on a basic form, and hardly raise the letter to the status of a work of art. Thus, "mere variations of typographic ornamentation" do not meet the originality qualification for a work of art, and the regulation should not be changed. Other than originality, a copyrightable work of art must exhibit "creative authorship". 37 CFR § 202.10(b). This requirement is applied not as a matter of policy, but as a matter of definition of a work of art. Gardenia Flowers, Inc. v. Joseph Markovits, Inc., 280 F. Supp. 776 (S.D.N.Y. 1968). As testified to by typeform designers at the November 6, 1974 hearing, one typeface varies from another by the addition of known elements, such as serifs, or by merely thickening or thinning lines, curves and spaces. There is little, if any, creative effort exhibited in altering one typeface to make it "new", since above all, the letters must be legible. Thus, without embodying creativity, typeforms do not meet the historical and ordinary standards of an "art", and should not be registered as such. See: Rosenthal et al. v. Stein et al., 205 F.2d 633 (9th Cir. 1953). The value of a literary work or a work of art is in the artists' expression of the ideas embodied therein. The sales value of these works is in the literary or artistic quality of the expression. In literary works, royalties are paid to the author, or composer, or published. In works of art, royalties are paid to the artist. People usually, however, do not buy literary works because of the particular typeface used. Therefore, the artistic quality of the typeface is at a very minimal level compared to the functional quality of the typeface in being legible in expressing an idea. Proponents of a change in the existing regulation barring registration of "mere variations of typographic ornamentation" have urged that the Copyright Office employ a typography "expert" to determine originality,' e.g. whether a submitted typeface is truly different from the approximately 80,000 typefaces presently in the public domain. Aside from the technical and practical problems this procedure would spawn, to establish such a procedure would require the Copyright Office to apply a standard of copyrightability which is contrary to the body of relevant, substantive law. In my judgment, the Register of Copyrights is without power to establish a new standard of registerability without legislative backing, and in particular, in view of existing law to the contrary. In Gardenia Flowers, Inc. v. Joseph Markovits, Inc., the District Court for the Southern District of New York held that the "originality" of a work of art is not to be determined by the opinion or observation of an "expert". Instead, the court found that originality was to be determined "by the eye of an ordinary observer". (280 F. Supp. at 783). I submit that this case, while decided at the District Court level, has not been reversed or criticized in subsequent decisions, and represents an accurate statement of the prevailing law. Thus, were the Copyright Office to use an expert to determine the registerability of typefaces, a standard contrary to existing law would be introduced. This, I submit, is an abuse of the rule-making discretion of the Register of Copyrights under 17 U.S.C. § 207. Further evidence of the lack of "creative authorship" in the production of typeform design is the fact that optical projectors and printers are available which can alter a given typeface design by purely mechanical means, i.e. rotating a series of lenses relative to one another. One manufacturer advertises that its machine can produce approximately eleven million typeface variations through optics. 1 Comment of Henry Leeds, representing Mergenthaler Linotype Co. Hearing of November 6, 1974. The present Register has stated that the proposed change in the Copyright Office regulations would merely reflect an interpretation of the law. However, the proposed change in the rule regarding typeforms would result in an interpretation that is contrary to prevailing law. Further, this action would enlarge the area of copyrightability, which is not within the power of the Register of Copyrights. The proposed rule change, therefore, is unsound. As in the past, the present Register should be obliged to adhere to established judicial standards relating to the scope of copyrightable subject matter when considering changes in administrative regulations. III. Mechanical and Utilitarian Aspects Dictate the Form of Typefaces, and Not Their Artistic Craftsmanship The Copyright Office has consistently held that where the shape or form of a work is dictated primarily by utilitarian or functional considerations, rather than aesthetic values, the work does not qualify as a "work of art" within the meaning of 17 U.S.C. § 5 (g). Where a work combines both utilitarian and aesthetic values, the Office has allowed registration on the separable art embodied in the work, apart from the functional features. This concept is embodied in Rule 202.10 (c) of the Copyright Office, 37 C.F.R. § 202.10 (c), which states that artistic features of a work "which can be identified separately and are capable of existing independently as a work of art" are eligible for registration. The key question is whether additions to or embellishments on standard letterforms can be "identified separately" and exist "independently" to qualify as works of art. I have concluded that they are not! Type characters are instruments or devices for communicating written language, and are utilitarian objects. Even "decorative" or "unusual" letters must retain their ability to be read. Thus, the main thrust of typeface design is legibility. The artistic additions to a letter must stay within narrow confines, or the letter loses all legibility and becomes worthless. As stated by Mr. Michael Parker, Director of Typographic Development at Mergenthaler Linotype Co., during a seminar held in Washington, D.C. on October 15, 16, 1974, when enough ornamentation is added to a typeface to make it "novel," the face also becomes illegible. This supports the theory that any design change to a standard letter which allows the letter to retain its legibility can only be considered "trivial," and therefore not copyrightable. The mechanical aspects of printing also dictate to a large extent the design of a particular typeform. These considerations are: a. avoiding ink traps and blurs; b. maintaining proper spacing between large ink masses; c. line thickness when ink is applied; d. the unitizing and mathematical pattern of widths when the letters are assembled into words; e. cathode ray tube display requirements; and f. mechanical modifications. With these limits on the artistic freedom of a type designer in producing a new face, there is little room for the degree of "creative authorship" required to constitute artistic craftsmanship separate and independent from a letterform's utility in conveying information. Ordinary typefaces, standing alone or assembled in groups to form words, are not objects of aesthetic appeal. Their only purpose is to be read, and if their form is pleasing then reading them is made less tiring. Letters, particularly those used in texts, have no life apart from their function, and thus are not works of art. The present Register, in 1954, was instrumental in the adoption by the Copyright Office of rules which embody the above-stated concept. "The Copyright Office Practices of October, 1954, Part IV," (formulated by Ms. Barbara Ringer) states: "... if the shape of an article is dictated by or necessarily responsive to the requirements of its utilitarian function, its shape cannot qualify as a work of art." It is difficult to understand how a typeface design could meet this requirement! This concept was embodied in the Copyright Office Regulations published in 1956 and 1959, and approved by the Second Circuit in Kitchens of Sara Lee, Inc. v. Nifty Foods Corp., 266 F.2d 541 (2nd Cir. 1959). Because of its primary utilitarian function, a typeface would qualify as a work of art under Copyright Office Regulation 202.10 if it contained more than a minimum amount of originality and separable artistic authorship, and if its shape were not dictated primarily by its function. This category does not embrace commercial typefaces, which above all else must be functionally legible. Aesthetic value is secondary. As stated previously, the test of creative authorship of a work based on a public domain work is the aesthetic value as seen by a casual observer. Witnesses testifying before the Copyright Office officials on November 6, 1974 repeatedly stated that while the layman cannot detect the differences between typeface designs, the differences are apparent to an expert. They even suggested that the examination of typeface designs for authorship be conducted by an expert. If it takes an expert to note these differences, then only small changes exist between new and old typeforms. These small or "trivial" differences cannot raise a utilitarian object such as a letter of the alphabet to the status of "art." A curious dilemma would arise if new typeface designs were to be registered. The case of Ted Arnold Ltd. v. Silvercraft Co., 259 F. Supp. 733 (S.D.N.Y. 1966) indicates that where a design for a utilitarian object is granted registration, only those features of the work which can be identified separately and are capable of existing independently as a work of art are covered by the registration. In that case, a telephone casing enclosure was considered to be separate from a pencil sharpener. In the case of typefaces, whose sole utility is to convey information, inside every ornamental or newly designed letter "A" is a public domain letter "A." In other words, the new design is built on the existing letter. Therefore, what does the registration cover-the entire letter, or just that portion of the letter which has been added or modified by the designer? These questions will have to be answered by typographers when instructed by an art director to use a protected typeface, or the equivalent thereof. IV. The register of copyrights does not have the power to register typeface designs A. THERE IS NO NEED FOR A CHANGE IN THE REGULATIONS The announcement of the Copyright Office's consideration of a proposed rule change appearing in the Federal Register, Vol. 39, No. 176, September 10, 1974 stated that developments in the industry, judicial developments, and the conclusion of the Vienna Conference (WIPO) in 1973 provided the impetus for the present amendatory proceedings. However, none of the factors underlying these three categories of development support the need for a rule change. 1. Industry Developments Do Not Warrant a Change Those supporting a rule change urge that without copyright protection, designers of typefaces do not have the incentive to produce new works, thereby stifling creativity in the development of new letterforms. One speaker at the seminar conducted on October 15, 16, 1974 went so far as to describe the plight of a poor typeface designer who existed on the brink of financial disaster because of his inability to protect his work under the Copyright Laws. I suggest, however, that this is not the "industry development" which has led leading typographic machinery manufacturers to their recent quest for the protective copyright umbrella. Until recently, the manufacture of type fonts was predominately accomplished by the casting of metals, such as lead. Because of the difficulty in producing a new typeface in lead, there was very little need, if any to seek protection for the "intellectual" expression embodied in the typeform. Therefore, from a business point of view, and not because of any legal or aesthetic criteria, these large manufacturers made no effort to change the Copyright Law. However, in recent years, the advent of new photo-typesetting processes and devices makes it relatively simple to duplicate a letter, or series of letters, of the alphabet. Thus, a user of a photo-typesetting machine is able to purchase his font of alphabets from suppliers other than the machine manufacturer. Since this business situation cuts into the profit picture of the large companies, they set about to seek a method to prevent their fonts from being copied. The only way to accomplish this was to reverse a policy of the Copyright Laws which has stood for over eighty years. It is interesting to note that the majority of the typeface designers who spoke either at the October 15, 16, 1974 seminar, or at the November 6, 1974 hearing were, in one way or another, monetarily connected with a manufacturer or manufacturers of typesetting machinery. However, a |