We’re happy to bring you a guest post by Shivam Kaushik on the copyrightability of fonts. Shivam is a recent law graduate of the Banaras Hindu University, Varanasi. He has previously written several guest posts for us, titled ‘Jhund’ Injunction Order: Copyright and Personality Rights in Real Life Stories, ‘Copyright and Webinars: Ownership, Licensing and Fair Use’ , ‘Govt’s Draft Model Guidelines on Implementation of IPR Policy for Academic Institutions – A Critique‘, ‘Reengineering of the Requirement of Disclosure of Foreign Applications by the 2019 Patent Manual‘ and ‘Are Orbital Transfer Trajectories Patentable?‘
Fonts and Typefaces: Are they Copyrightable?
An abundant number of fonts and typefaces are jam packed into prevalent word processing programs. Their function is so fundamental, and presence so ubiquitous that the thought that fonts and typefaces are eligible for copyright protection, seems inconceivable at first. But as I will discuss in this post, they fulfill the eligibility criteria as provided under the Copyright Act, 1957.
Before we begin, let me lay down the glossary for this post. ‘Typeface’ refers to the particular design of letters, numbers, marks and symbols. What we colloquially refer to as ‘font’ is actually the typeface as font changes with the size, italic, bold, and style. That said, traditionally, ‘fonts’ and ‘typefaces’ were not used synonymously, and the distinction between them was relevant when letters made out of metal blocks were used for printing. In the digital age, word processing programs have made the distinction obsolete and arcane. Therefore, for the purpose of this post, I will be using the word, ‘font’ to mean both fonts and typefaces. This post only deals with copyrightability of fonts from artistic work perspective and does not explore the copyrightability of fonts as code or literary works.
Debunking the ‘no copyright for fonts’ argument
The legal position in India is that fonts do not enjoy copyright protection under its copyright law, i.e. under the Copyright Act, 1957 (page 5). The question of copyrightability of fonts first came up for judicial consideration in 2002, before the Copyright Board in Re Anand Expanded Italics wherein the Board held that fonts are not copyrightable. Some of the reasons put forth by the Board in support of this decision has found support outside of this order as well. In the following paragraphs, I deal with several of these arguments.
According to one reasoning, fonts are not just artistic but also have a utilitarian aspect; they are letters, numbers which are the building blocks of words and language. This argument relies on established principles of copyright law (explored in detail below) to hold that if the artistic attributes of an artistic work are not severable from its functional aspect/ utilitarian aspect then the work cannot be copyright protected. Applied to the present instance, no matter how artistically a letter is written, as long as the aesthetic embellishment cannot be separated from the functional aspect, i.e., the letter, i.e., the font is unprotectable. This is perhaps why fonts cannot be copyrighted in the US. The US copyright law of 1976 explicitly excludes the mechanical or utilitarian aspects of applied art from the definition of artistic craftmanship. But the argument of severability does not hold water in the Indian jurisdiction because possession of utilitarian aspect is not a per se disqualification from copyrightability under the Copyright Act. The Act doesn’t require a work to be broken down into its artistic and utilitarian aspects and for them to be independent of each other to be called artistic under the legislative scheme. As long as the sum total of both the utilitarian aspect and the non-utilitarian aspect are artistic enough to cross the threshold of originality and scènes à faire doctrines, the work can be copyrighted.
The second argument against copyrightability of fonts is that copyright in India emerges from the Copyright Act, 1957 as is laid down in section 16 of the Act. Scaria and George in their article Copyright and Typefaces (p.9) argue that any right or subject matter not specifically enumerated under the Copyright Act is beyond the purview of copyright protection in India. A similar approach was taken by the Copyright Board in the only case that dealt with this contentious question till date in India, as also referenced above. In Re Anand Expanded Italics the Copyright Board held that:
“A general word which follows a particular word of a similar nature… takes its meaning from them and shall be construed as applying only to things of same general class as those enumerated in Manual on Interpretation of Statutes 12th Edition (Bombay, Tripathi 1969) at pages 297-306. Using this interpretation to define artistic works, the meaning of ‘any other work of artistic craftsmanship’ gets restricted by the specific definitions given in 2 c (i) and 2 c (ii); as the word artistic work is preceded by the word ‘other’ it certainly indicates that it is intended to refer to something other than the ones mentioned in 2 c (i) and 2 c (ii) but of the same generis.”
The Board miss-applied the rule of ejusdem generis to conclude that clause (iii) of section 2 (c), i.e. “any other work of artistic craftsmanship” has be interpreted in light of specific illustrations like painting, sculpture, drawing, photograph, and work of architecture provided under section 2(c)(i) &(ii). As per the constitution bench judgment of the Indian Supreme Court in Kavalappara Kochuni v. States of Madras (1960), which laid down the rule of ejusdem generis, when general words follow specific word of the same nature the interpretation of the general word is confined to the same kind as specified. But the rule applies only when specific words form a distinct genus/ category amongst themselves. Paintings, works of architecture, and photographs do not have any common characteristic apart from their artistic nature, which is equally shared by fonts. Moreover, the general phrase “any other work of artistic craftsmanship” does not even follow the specific phrase, i.e. inter alia painting, drawing, and work of architecture as required by the rule of ejusdem generis. The phrase has been placed as a residuary clause to cover works that otherwise fulfil the eligibility of artistic work. Had the intention of the legislature been otherwise, the phrase “any other work of artistic craftmanship” would have been placed towards the tail end of section 2(c)(i) or (ii).
Another argument put forth by Scaria and George is that none of the international treaties dealing with copyright, i.e., Berne Convention, Rome Convention, TRIPS Agreement make any explicit mention of fonts. This point was also espoused as a ground for denying copyright protection to fonts by the Copyright Board in Anand. But absence of explicit protection fonts under International Conventions cannot be taken to mean that they cannot be copyright protected. In fact, in the year 1973, efforts were made by countries supporting IP protection for typefaces to bring into existence the Vienna Agreement for the Protection of Type Faces and Their International Deposit (“Agreement”). The Agreement provided:
(1) The protection of typefaces shall be subject to the condition that they be novel, or to the condition that they be original, or to both conditions.
(2) The novelty and the originality of typefaces shall be determined in relation to their style or overall appearance, having regard, if necessary, to the criteria recognized by the competent professional circles.
Unfortunately, the Agreement could not be brought into force.
Regardless, many countries like the UK and Canada already provide copyright protection to font (some of these are elaborated below).
Making the case for copyright
As discussed above, section 2(c) of the Copyright Act which defines artistic work gives an illustrative definition. According to it, an ‘artistic work’ includes a painting, sculpture, drawing, photograph, or any other work of artistic craftmanship. Notably, for a work to be an “artistic work” under the Act, there is no requisite degree of artistic quality prescribed by the Act. The Copyright Act provides the requirement of originality under section 13(1)(a) for artistic works, among other works, to be copyrightable. Well established principles of copyright law provide that this originality has to exist in the expression and not in the idea itself. Murray in his article Copyright, Originality, and the End of Scenes a Faire and Merger Doctrines for Visual Work (p.4) contends that if the expression of a work inextricably merges with its underlying idea, then the work is deemed to be uncopyrightable. The Supreme Court of India in the landmark case of DB Modak v. Eastern Book Co. has laid down the creativity standard required for copyright protection to apply, providing that when a work has some minimum amount of creativity then it is considered an original artistic work. In the case of fonts, some argue that the granting copyright over fonts may tantamount to granting copyright over the letters, numbers and symbols which are in turn the building block of language. But the way out of this predicament is a simple one: giving copyright protection only to those fonts that are highly artistic. It is important to keep the copyright limited to highly artistic fonts to ensure non-exclusivity over the basic building blocks like letters, numbers, signs and marks. One may refer to the treatment of fonts in Spain, where only those fonts with medium high artistic level can qualify for copyright protection. Another example is that of the UK, where only those fonts are considered copyrightable which display originality of expression and a certain level of artistic skill and labor.
The legal position that fonts cannot be copyrighted is a result of too little analysis of the criteria laid down under the Indian copyright law. In my view, for the reasons listed above, on merits fonts are eligible for copyright protection within India.