change in a business situation does not raise typeface design to the status of "art."

Thus, the "industry" now feels the economic pinch of free and open competition where it once enjoyed a technical monopoly, and is looking to the Copyright Office to give them back their monopoly. This, I suggest, is contrary to our competitive economic system. As will be discussed in a later portion of this paper, by giving the large manufacturers the monopoly they want, the competitive fabric of the typography industry as a whole, which is composed of many small typography shops throughout the country, will be cast out of balance to the great economic detriment of the operators of these small establishments. 2. No Judicial Decision Suggests That the Law, as Embodied in the Copyright Office Regulations, Has Changed

The decision by the District Court for the Eastern District of Pennsylvania in Amplex Mfg. Co. v. A.B.C. Plastic Fabricators, Inc., 184 F. Supp. 285 (E.D. Pa. 1960) has been mentioned by some to indicate that there is a judicial trend towards recognizing the copyrightability of typeface designs. This is not true, however.

In that case, the court held that plaintiff's arrangements of standard lettering to form words in its brochure, and the manner of presentation was copyrightable. This is what is generally known as typography (layout or arrangement of words, sentences, phrases, etc.) as contrasted to a typeface (a single letter), or a font (the alphabet arranged in a reproducible platen). The court in Amplex did not hold that the typeface designs making up plaintiff's arrangement of words were copyrightable. As a matter of fact, the court noted that the lettering used by plaintiff was Egyptian and Egyptian Modified, two common, public domain typeface designs.

The Amplex court also relied upon the illustrations of products in the plaintiff's brochures to find independent authorship. This is relevant when this case is analyzed in view of a later decision of the same court, Surgical Supply Service, Inc. v. Adler, 206 F. Supp. 564 (E.D. Pa. 1962), rev'd on other grounds, 321 F.2d 536 (3rd Cir. 1963), where copyrights in price lists were held invalid for lack of the minimum degree of artistic or literary merit. This decision suggests that the Amplex decision rests more on the copyrightability of the product illustrations, rather than on the arrangement of typography.

No cases have been decided which squarely hold that type forms or fonts are or are not works of art under 17 U.S.C. § 5(g). However, several cases have, in dicta, supported the present Copyright Office regulation prohibiting registration of "mere variations of typographic ornamentation", and in so doing, have established that this regulation, while it :

"... does not have the force of statute, it is a fair summary of the law." See: Kitchens of Sara Lee, Inc. v. Nifty Foods Corp., 266 F.2d 541, 544 (2nd Cir. 1959); Alberto-Culver Co. v. Andrea Dumon, Inc., 466 F.2d 705, 710, 711 (7th Cir. 1972).

Thus, the present regulation is a fair statement of what the Congress and the Courts intended to be covered as "works of art" under the Copyright Law. The absence of any legislative or judicial determination to the contrary, especially during extensive revisions of the Copyright Law which have been pending in Congress for about twenty years, supports the view that the law, as presently interpreted by Regulation 202.1(a) is sound.

3. The Proposals of the Vienna Convention of 1973 Do Not Require a Change in Our Copyright Laws

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Article 7, paragraph (1) of the WIPO proposal arising out of the 1973 Vienna Convention suggests that typefaces be protected if they are novel, original, or both. Paragraph (2) states:

"The novelty and the originality of typefaces should be determined in relation to their style or overall appearance, having regard, if necessary, to the criteria recognized by the competent professional circles."

This coincides with the comment by Mr. Leeds at the November 6, 1974 hearing that if the Copyright Office is to register type designs as works of art, an expert or experts must be hired to differentiate submitted faces with those already in the public domain.

The United States was not officially represented at the Vienna Convention, nor was it a signatory to the draft treaty. This Convention, which was attended mainly by European countries, focused primarily on the protection of cartels and monopolles indigenous to European economics. United States policy, however, is opposed to cartels and monopolies.

At present, the Copyright Office is not equipped with the personnel or finances to establish a novelty examining procedure. Whether it is worth setting up such procedures in the Copyright Office for only one class of works is highly debatable.

However, the staff of the Patent Office (now the Patent and Trademark Office) is trained and equipped to conduct the novelty and originality examination of typefaces. Designs for novel typefaces and fonts have been submitted to the Patent Office in the past, and design patents have issued thereon following a determination of novelty. Since all typefaces are primarily functional in that their purpose is to convey information, the test of novelty similar to that applied under the patent laws should be applied to any system of protection afforded to variations in typeface design. The design patent statute and the examination procedures already established in the Patent Office are the proper forum for applying these tests. The Copyright Office is not equipped to handle novelty examinations, and were it to do so, such action would be contrary to existing substantive law regarding the registrability of works of art.

I strongly suggest that a novelty examination of typeface designs is necessary to prevent removing extant designs from the public domain. Currently, there are several thousand public domain typefaces available to any art director or typographer. Since it is common practice for typeface designers to base their new designs on existing public domain letter faces, it becomes important to distinguish between new and old. Thus, the WIPO proposal may be implemented within the structure of our existing Design Patent Laws and examining procedures. There is no need to radically amend Copyright procedures to provide the same result.

B. NORMAL PROCEDURE OF THE COPYRIGHT OFFICE HAS BEEN TO AMEND A REGULATION RESPONSIVE TO A COURT DECISION OR LEGISLATIVE ACTION

The present Copyright Act, 17 U.S.C. § 1 et seq. was enacted originally in 1909. Pursuant to the Act, the Register of Copyrights in 1910 promulgated a series of regulations, one of which excluded ornamental letters or forms of type from registration. This concept has continued as part of the regulations up to and including the present.

In 1956, the present wording of the significant part of Regulation 202.1(a) was adopted. This amendment was made in the wake of the decision by Judge Learned Hand of the Second Circuit in the case of Ricordi v. Haendler, 194 F.2d 914 (2nd Cir. 1952). In this case, the question was raised of the copyrightability of typography, but was not answered. Following the Ricordi decision, the Copyright Office in 1953 conducted a follow-up study, under the direction of W. Strauss, of the copyrightability of type fonts. This study concluded that some type designs could be copyrightable as works of art, but ordinary type and type arrangements have traditionally been denied protection by the courts and should not be granted registration. Strauss concluded that ordinary letters, either alone or in combination, are not objects of aesthetic appeal; they have no life apart from their function of forming words, and are not works of art.

This analysis leads to two important points. First, Strauss found in 1953, and it is true today, that courts have repeatedly expressed the feeling that type forms are not registrable under the Copyright Law. Kitchens of Sara Lee, Inc. v. Nifty Foods Corp., 266 F.2d 541 (2nd Cir. 1959); Alberto-Culver Co. v. Andrea Dumon, Inc., 466 F.2d 705, 710, 711 (7th Cir. 1972). The Amplex case does not establish a rule to the contrary. Therefore, there is no court ruling which demands or even suggests that the present rule excluding type forms from copyright protection is in error.

Second, the Copyright Office has consistently amended its rules, when necessary, in response to judicial or Congressional action. Here, however, the Register appears headed on a course of action at the behest only of those large manufacturers of typographic equipment which would greatly benefit by their newly found monopolistic power. The Register, by changing the rule now, will be acting without judicial or legislative impetus, and without waiting for a court decision stating whether the proposed rule is right or wrong. This is wholly contrary to established practice, and will work a great harm to the majority of the typography industry.

At present, there is a case pending in the Southern District of New York which squarely raises the question of copyrightability of typefaces. The case is captioned Leonard Storch Enterprises, Inc. v. Alphatype Corp., Civil Action No. 74 Civ. 1765. In following the precedent of past Registers, the present Register

should wait until a resolution of the copyright issue is made in the Storch case before making a final determination on the proposed rule. Typefaces have been excluded from protection under the Copyright Law since its inception; waiting a short time for the Courts to decide the issue surely would not harm the scheme of things.

C. ENACTMENT OF THE PROPOSED RULE WOULD BE TANTAMOUNT TO THE EXERCISE OF LEGISLATIVE POWER BY THE REGISTER

The proposed rule on typefaces is more than merely procedural or interpretative in nature. As stated previously in this paper, the courts have repeatedly held that the present regulation is a fair statement of the law. The proposed rule would establish a whole new class of copyrightable subject matter, which is a legislative, and not an administrative decision. Therefore, on such an important and substantive matter as proposed here, Congress, in the absence of any judicial direction, should first consider the impact, wisdom, and need for any proposed change.

Curiously, the Copyright Revision Bills (S. 1361; H.R. 2512) have been before Congress for approximately twenty years, and at no time has anyone from the Copyright Office presented the issue of registration of typefaces for legislative consideration. Neither have any of the industry spokesmen who now clamor for change. I submit that the proper place to give full consideration to both sides of this issue is a Congressional hearing, not merely a one day hearing before Copyright Office officials. Maybe then the public will find out just why the dominant members of the industry, such as Mergenthaler and the International Typeface Corporation have not pushed for this change before Congress, and what they have to gain by their present efforts.

D. THE REGISTER'S DISCRETION IN RULE MAKING SHOULD NOT BE ABUSED

The power of the Register of Copyrights to make the proposed rule change is not that clear. What little legal authority is available indicates that the Register's power of acceptance or rejection of submitted works are in some degree discretionary, and not merely ministerial. Bouve v. Twentieth Century-Fox Film Corp., 122 F.2d 51 (D.C. Cir. 1941). Although the Register's discretionary acts are not subject to appellate review by the Librarian of Congress, they are very clearly subject to judicial review and correction. Bailie v. Fisher, 258 F.2d 425 (D.C. Cir. 1958). The courts treat with great weight the actual practices of the Copyright Office. Fred Fisher Music Co. v. M. Witmark & Sons, 318 U.S. 643 (1943); Mazer v. Stein, 347 U.S. 201 (1954); DeSylva v. Ballentine, 351 U.S. 570 (1956). Whatever discretionary powers the Register has, this power would be abused if the Register took action which would be contrary to established law, and which would result in rewarding a few with a monopolistic power which could be used adversely against an industry composed of many small business enterprises. Further, to establish procedures in the Copyright Office to determine copyrightability using erroneous legal standards would be a clear abuse of discretion.

E. THE "RULE OF DOUBT" FAVORS RETENTION OF THE EXISTING REGULATION The Copyright Law, 17 U.S.C. § 5, enumerates classes of works subject to registration, but fails to establish standards for a work falling in a particular class. By enacting regulations such as contemplated here, the Register is expanding or narrowing the substantive scope of the law, without legislative or judicial guidance. As a result, the actions of the Register must be sound, and based on practical as well as legal principles. Action either way could force a proposed registrant or a user to resort to litigation to seek a declaration of his or her rights (mandamus v. infringement).

Therefore, the burden on the registrant must be weighed against the burden on the user. This is the proper manner in which the Copyright Office's "Rule of Doubt" should be applied, since both the courts, and the small typographers will, from past experience, accord prima facie validity to certificates of registration for typefaces.

In my opinion, application of the "Rule of Doubt" dictates that the proposed rule change not be enacted, leaving the present applicants to the courts to seek reversal of present Office policy and established legal precedent. The economic weight of the industry is in the hands of those favoring a rule change the typographic machinery manufacturers. These are the same people who are now

seeking to register their type fonts. The cost of a legal test of their position can well be afforded by these applicants, as evidenced by the apparent amount of resources already expended in support of a rule change.

To the contrary, the users-the typographers, artists, studios, and advertising agencies as well as printers and publishers are individually least able to seek a court declaration that a copyright registration on a type font is invalid. Thus, if the rule were changed, the chances of a court case seeking clarification of this controversy is rather remote. Therefore, in balancing the practical and economic consequences of granting registrations for typefaces and fonts, the "Rule of Doubt" favors maintaining the status quo.

V. The Proposed Change to Regulation 202.1(a) Would Adversely Affect a Large Proportion of the Typography Industry

The foregoing statements conclude that the proposed change in Copyright Office Regulation 202.1(a) would be contrary to long established legal principals, would require an examination procedure which would severely strain the efficiency of the Copyright Office, and require the creation of a complicated disproportional review system for one small class of works submitted for registration. However, the Register's consideration of the proposed rule change cannot ignore the real economic impact such a change would have on those affected—the advertisers, publishers, text re-printers, font suppliers, and typographers. The Register recognized this herself when, at the conclusion of the November 6, 1974 hearing, she indicated that she must be "sensitive" to industry impact when considering this matter. I submit that the proposed rule change will place economic monopolistic power in the hands of a few, already dominant entities in the industry, will cause many small typographers additional and unaffordable expense, and will stifle, rather than create, a demand for new typeface designs.

A. THE STRUCTURE OF THE TYPOGRAPHY INDUSTRY

Dominant in the typography industry are several large manufacturers of typographic reproduction machines. These machines are sold to typographers for the production of printed material such as advertising proof pieces, and other printed works. The machinery produced by the large manufacturers are adapted to receive fonts which contain the letters, numerals, and punctuation marks of a particular type design. The fonts are interchangeable in the machines, whereby a single machine can produce a work product in any type style by merely selecting and inserting the proper font.

Present machines use photographic projection on photosensitive paper to produce a desired image. The fonts, or alphabets, comprise film strips or fiche which are interchangeably inserted in the projection path of the machine. Type fonts, in the form of film strips or fiche, are supplied to typographers by several manufacturers, including the machinery manufacturers themselves, and others who just reproduce and sell film and fiche fonts. Since the fonts are not copyrightable, the large manufacturers are prohibited from maintaining a monopolistic position on the supply of fonts to a typographer. Through the vehicle of competition, the price of a fout to a typographer has remained reasonable.

This, apparently, has caused the large machinery manufacturers some concern, since they apparently feel that they can increase their profit margin by forcing typographers who purchase their machinery to also purchase all their fonts from the machinery supplier. It is clearly evident to this writer that the major force behind the present effort to change Regulation 202.1 (a) comes from the large machinery manufacturing concerns, and not the allegedly deprived designers whom they establish as "straw men" at each seminar and hearing. When viewed from the vantage point of the entire industry, however, it can readily be seen that the economic disadvantage this rule change would cause clearly outweighs any economic benefit the manufacturers will derive from their monopoly.

The typographers who purchase and use the machinery produced by the large manufacturers comprise an industry made up of thousands of small shops throughout the country. These are predominantly small business enterprises, and are definitely smaller in economic power than the manufacturers of their equipment. Profit margins in a successful typography business usually amount to four per cent, or lower. Therefore, decreased cost savings are an important factor in maintaining a healthy industry. Obviously, if a typographer is forced to pay

noncompetitive prices for his fonts, he would face a substantial cost increase. Some typographers have asserted that the additional costs they would face would be prohibitive, and force them out of business.

To understand why, an understanding of the nature of a typographer's business is necessary. The typographer receives an order from the art director of an advertising agency, or an advertising department of a large company, to produce a proof piece of lettering for submittal to a client, for example. The art director has at his disposal a library of type styles and designs, and he chooses one of these styles and orders its reproduction from the typographer. The typographer must have access to that type style to provide proper, and immediate service to the art director. Today, this is a simple matter, for if the designated typeface is not in his shop, the typographer can obtain a font rather quickly, and at a competitive price, from a film or fiche font producer.

However, the proposed rule change will drastically impede the typographer's ability to provide prompt, low-cost service. Because of the visible presence of large typography machinery manufacturers in these efforts to change the rule, I anticipate that these manufacturers will obtain copyright protection on the fonts they consider "new", and will sell these fonts only to typographers who use their machinery. Since the rule-making power of the Register does not extend to forcing compulsory licensing of reproduction rights on their fonts by manufacturers, there is a strong possibility that this situation will be created. Thus, when an art director orders a particular typeface from the typographer, the typographer might not be able to obtain the font unless he has the copyright owner's machine in his shop. To be able to provide any typeface which an art director might order, the typographer would be required to install machines of each manufacturer in his shop, even though one machine duplicates the functions of the other. The absurdity of this situation is apparent.

Further, since the fonts will be protected if the rule is changed, the typographer will be unable to obtain the required font from a second source. Thus, the manufacturer may legally deny him access to a necessary tool of his trade, unless he purchases their machinery, or pays an exorbitant price. Without a secondary source, price competition will be eliminated, and the manufacturers can charge the typographer what they want.

Certain prevailing industry conditions indicate that the prices for copyrighted fonts will increase sharply. A corporation known as ITC, International Typeface Corporation, offers allegedly new typeface designs for sale to its "subscribers", who then in turn offer the fonts for sale to the typographers. The subscribers of ITC are the typographic machinery manufacturers, who pay practically a 100% royalty to ITC for the use of their "new" designs. The manufacturer, under direction of ITC, then passes this royalty cost on to the customer, the typographer. Therefore, at present, under a scheme obviously directed at obtaining protection outside the Copyright Law, fonts are being made available to typographers through ITC at about double their cost in normal trade channels. It is significant that ITC's "subscribers" include approximately 23 of the nation's predominant typographic machinery manufacturers. If this is how these companies operate under existing law, is there any doubt that they would exercise full monopolistic control over the typographers if the rule were changed? Significantly, representatives of ITC, together with representatives of Mergenthaler, are at the forefront of those supporting a change in the present law. Their presence predominates each seminar and hearing where the subject is discussed.

If the desires of the large manufacturers, such as Mergenthaler, and the typeface "promoters", such as ITC are acceded to by the Register of Copyrights, these large concerns will have the power to dominate an industry made up of many small typographers. The present actions of these would-be monopolists show without a shadow of doubt that their one goal is to add to their profit margins by gaining market control over the supply of type fonts used in their machines. Their arguments that the "designer" is the poor, deprived one under existing law is a complete fallacy. Note the practical absence of independent typeface designers opposing the present regulation at the recent hearing!

B. COPYRIGHTS FOR TYPEFACES WOULD POSE A SERIOUS THREAT TO THE RE-PRINTING INDUSTRY

At the November 6, 1974 hearing, James Silberman, Esq., addressed himself to the problems of the reprinting industry should the proposed regulation change be made. He pointed out how the rule change would adversely affect not only one industry, but also a segment of the purchasing public.