rands and designers often use existing typefaces and fonts to adapt and create logos, product packaging, websites, and other commercial assets that establish the identity of a brand. Whether these creative uses require a license from a font owner or type foundry is complex and depends on how the typeface or fonts are adapted and used in the final design product. Whether the designer or its client needs a separate license requires an examination of the type of font used, the software license terms, and whether the software or the typeface is used as a final design element.
Typeface vs. Font Distinction
While the words “typeface” and “font” are often used interchangeably to describe the look of text, there is a material difference between the two terms. A typeface is the artistic creation of a designer, and it refers to the way a set of letters, numbers, and symbols appear. On the other hand, a font is a computer code or program that tells a computer or a printer how to render a certain typeface on a screen or a piece of paper. The distinction between the two terms has a legal significance when it comes to intellectual property protection.
Intellectual Property Protections over Typeface and Font
In the United States, trademark, copyright, and patent each protect certain aspects of a typeface or a font. Trademark law protects the name of a typeface, but not the actual design and look. For instance, the name “Times New Roman” is registered and protected as a trademark, but how this popular typeface looks is not protectable under trademark law. A logo created using a certain font, on the other hand, can avail itself of trademark protection. To illustrate, if a designer uses Times New Roman to create a logo for her brand client, that logo itself can be registered as a valid trademark, assuming it fulfills the other statutory requirements.
The distinction between typeface and font is especially significant in the copyright law context. In the United States, the design of a typeface is not eligible for copyright protection, while the underlying computer program used to render a typeface (i.e. the font) is. Computer programs are considered copyrightable as literary works, and fonts are copyrightable despite the ineligibility of their outputs (including typefaces) to copyright protection. In contrast, many European countries protect typefaces under their respective copyright laws. For example. Germany recognized the copyrightability of typeface designs as original works in 1981, and the United Kingdom passed a copyright law in 1988 that covers typeface designs that are first published in the UK or introduced within thirty days of publication elsewhere.
Even though typefaces do not receive copyright protection in the United States, they can be protected by design patents. In fact, the very first design patent issued by the United States Patent and Trademark Office was granted for a typeface. Design patents last for fifteen years before the typeface will enter the public domain. Similarly, France allows registration of typefaces under a 19th century industrial design protection law, and Canada allows typeface designers to claim protection through its Industrial Design Act of 1985. A patented typeface can still be licensed for use. For instance, Adobe’s “Pelago” typeface currently holds a valid design patent, and users can license the “Pelago” for font personal and commercial uses through an Adobe subscription. However, as highlighted in the next section, a user must carefully review the license to ensure the intended use is permitted by the licensor.
License to Use a Font for Logo Design
When downloaded to a computer, each font is subject to an end-user license agreement (“EULA”), a contract between the type foundry and the user. The EULA dictates what a user can or cannot do with the font it licenses. Each type of license enables users to use a font within specific digital and/or print spaces. A desktop font license typically enables users to install the font on their computer and use it for a range of services, including using the font in a logo design. For instance, Adobe allows its users to use its fonts in any desktop program to create image or vector artwork, which can be used for logo design and any other purpose. Font license may restrict the registered user from assigning rights to the font license to a client or sublicensing the rights to use the software.
Not every font is subject to a paid license. Many fonts can be licensed under an “open-source license,” which allows users to freely use, modify, and distribute fonts for a wide range of purposes, including for commercial work. Most open-source fonts use the SIL International Open Font License (“OFL”), including fonts offered by popular open-source foundries such as Google Fonts and The League of Movable Type. Under the OFL, licensed fonts can be used, modified and redistributed freely as long as they are not sold by themselves. A designer or brand owner who licenses an open-source font, therefore, generally has the freedom to create logos and other commercial assets with the font without restriction.
When designing a logo using an existing font software, a designer or anyone using the resulting designs should review the EULA of the underlying font to ensure that the uses are broad enough for the intended use. A designer or design studio should also examine the EULA to determine whether a client may need a separate font license to use the delivered design project. In many instances, in creating a logo or adapted design element, the font software downloaded is thereafter adapted and modified in the creation of a logo, and the client is only receiving the typeface as part of an integrated finished pdf or other file of the final logo. If that is the case, the design studio is usually the only party that needs a license that allows for the creation of the logo design, as the client received the logo as a finished and does not need any font software to reproduce the logo. If a client desires to use a certain typeface as part of its identity in text communications, outside of the logo design, the client may need to acquire a software license from the font foundry if it doesn’t already have a license for it.
Creating Logo without Using Font Software
As an alternative, designers can create a logo that adapts or imitates the look of a typeface without using the font software. A license is unnecessary in such scenarios. This does not mean reverse engineering the font software but merely imitating the look of a typeface through other design software or creating bespoke stylized type in a logo design. Here is an example from a recent case:
Shake Shack’s logo and signages look identical to the font Neutraface, owned by a type foundry named House Industries. House Industries sued Shake Shack and argued in court that since its EULA prohibited downloaders from using Neutraface to create logos, Shake Shack breached the contract. However, House Industries was unable to prove that Shake Shack (or its employees and agent) downloaded or used the font software to create the logo. Instead, House Industries alleged that the only way to Shake Shack could make its logo look identical to Neutraface would be to use the font software. The court was not convinced by this argument and noted that the public is free to replicate, imitate, or reverse engineer Neutraface typeface to create glyphs of identical appearance. As long as House Industries’ software is not used to create the output, there is no breach of the software EULA. The court also held that the Neutraface glyphs are pictorial or graphic works that fall within the subject matter of copyright, though they are not copyrightable in and of themselves. Because of that, House Industries’ contract claim is preempted (superseded) by the Copyright Act and no claim could be brought based on the similarity of the logo to the typeface.
License to Use a Font for Website Design
Most brands and businesses have websites that are accessible by the public. These websites invariably use several fonts and display corresponding typefaces. Unfortunately, not all fonts are allowed to be used for this purpose. Brand owners and website designers should carefully read the EULA before using font software on their webpages. Many popular foundries (such as Adobe, Monotype, and Google Fonts), have dedicated FAQ pages to provide clarity on common license inquiries, including whether a certain font can be used for the purpose of website design. Some type foundries, such as Monotype, only license their fonts for “personal use,” which does not include use on a website for commercial purposes. On the other hand, all fonts available on Google Fonts are open-source, free of cost, and without any use restrictions. In the middle are type foundries that allow for commercial use of their software in a limited scope or with additional requirements. Adobe for example, permits the use of its fonts on websites, but requires the website owners to purchase their own subscription to Adobe’s services. Furthermore, fonts licensed from Adobe are “non-assignable” and “non-transferable.” This means that if a brand owner engages a designer to create a website, the designer cannot simply share the font software used with the owner through email or other means. Instead, the font that is used in the design needs to be separately purchased and downloaded (i.e. licensed) by the owner.
In addition to carefully reviewing EULAs before use, brand owners and companies that wish to hire website designers should make sure of the following when it comes to web font usage:
- Ensure that the designer uses font software that allows for the intended use. Brand owners should ask the designer to use open-source fonts, or fonts that do not have restrictions against use on a public website.
- Require designers to provide details on font licensing. Designers should inform brand owners of the name of the font that is used for web design, the source of the font, and whether brand owner needs to obtain a separate license to use the website. With this information, brand owners should provide consent or refusal before designers start incorporating fonts into the website.
- Download font software separately. Brand owners should obtain a personal license for the font software used to create a website, rather than asking designer to share the software through email.
Conclusion
Before using a downloaded font into logo or website design, a brand or a designer should carefully review the EULA to ensure the license permits the intended use. Designers can independently imitate or recreate a desired typeface when designing a logo without using the font software. However, such an option is not available for website design, and appropriate license(s) should be secured by both the brand owner and designer.