Legal Provisions:

Typeface disputes usually attract two different aspects of IP protection, that is, the protection granted to fonts / typeface and secondly, the proprietary software which licenses use of fonts or for which the claimant has economic rights.

The UAE Copyright Law does not explicitly provide protection to fonts and typefaces; however, computer programs are protected under the law. Pertinent works protected under the UAE Copyright law are listed hereunder:

Works Under Protection

Authors of Works and Holders of Neighbouring Rights enjoy protection, if their rights in the following works are violated within the UAE:

  • Books, brochures, articles, and other written Works.
  • Smart applications, computer programs and applications, databases, and similar Works determined by a decision of the Minister.
  • Works of drawing with lines or colors, sculpting, engraving, and printing on stone, fabrics, wood, or metals, and any other similar Works.

Protection covers the title of the work, if innovative, as well as the written innovative broadcast program.

Renting computer software and audio-visual Works

The rental right is not applicable to computer programs and smart applications, unless such program is in itself, the subject-matter of the rent. It is equally not applicable to audio-visual Works if it does not affect the normal use thereof.

Transfer and licensing of the Author's economic rights

  • The Author or their successor may transfer or license to a third party, be it a physical or a juristic person, all or some of the economic rights. Such transfer is valid only if made in writing and specifies the transferred right together with mentioning the object of such transfer, duration and place of use.
  • The Author should be the owner of all the economic rights that have not been explicitly assigned.
  • Without prejudice to the moral rights of the Author, the Author may not take any action that is likely to obstruct the utilization of the disposed right.

Licensing of economic rights to Works related to smart applications, computers, etc.

The licensing of economic rights concerning the Works of smart applications, computer programs and applications, or databases shall be subject to the provisions of the contract received or affixed on the program, whether they appear on the support bearing the program or on the screen of the computer, smart phones, or any other technical device on which the software has been downloaded or stored. The purchaser or user of such program shall be bound by the terms included in the said contract terms.

Restrictions and exceptions

Without prejudice to the moral rights of the Author and in a manner that does not conflict with the normal use of the Work and does not cause unjustified damage to the legitimate interests, the Author may not prevent third parties, after the publication of their work, from performing any of the following acts in relation to computer programs, applications, and databases:

Making one single copy of the computer program or applications or databases, with the knowledge of the legitimate possessor thereof. Such person may alone make extracts thereof provided that they fall within the licensed purpose or for the purpose of saving or replacement in case the original copy is lost, damaged or becomes unfit for use; and on condition that the backup or extracted copy be destroyed, even if downloaded or stored in the computer hardware, once there is no more reason for keeping the original copy.

Penalties

  • Without prejudice to any more severe penalty provided for in any other law, a penalty of imprisonment for a period of no less than (2) two months and a fine of no less than (10,000) ten thousand dirhams and not more than (100,000) one hundred thousand dirhams, or by either of these two penalties, shall be imposed on whomever, without the written permission of the Author or the Holder of the Neighboring Right, or their successors, commits any of the following acts:

a- Infringing one of the moral or economic rights of the Author or the Holder of the Neighboring Right stipulated in this Decree-Law, including making public any work, performance, Sound Recording, or broadcast program that is covered by the protection stipulated in this Decree-Law, either through computers, internet, information and communication networks, or other means or devices.

b- Selling, renting, or putting into circulation, in any manner, a Work, Sound Recording, or broadcast protected under the provisions of this Decree-Law, and the penalty shall be multiplied by the multiplicity of the Work, performance, program, or recording, subject-matter of the crime.

  • In case the offense is repeated, the penalty shall be imprisonment for a period of no less than six months and a fine of no less than (100,000) one hundred thousand dirhams, and not more than (500,000) five hundred thousand dirhams.
  • Without prejudice to any more severe penalty stipulated in any other law, a penalty of imprisonment for a period of no less than (6) six months and a fine of no less than (100,000) one hundred thousand dirhams and not more than (700,000) seven hundred thousand dirhams, or either of these two penalties, shall be imposed on whomever commits any of the following acts:
  1. Unlawfully manufacturing or importing, for the purpose of sale, rental or circulation, any counterfeit Work or copies thereof, any apparatuses, equipment, devices or materials specially designed or prepared for defrauding protection or technology used by the Author or the Holder of the Neighboring Right for transmitting, putting into circulation, regulating or managing such rights, or preserving a specific standard of purity of the copies.
  2. Unlawfully disrupting or impairing any technical protection or electronic data aiming at regulating and managing the rights prescribed by this Decree-Law.
  3. Downloading or storing in the computer any copy of the computer program or applications thereof or databases, without obtaining a license from the Author or right holder or successors thereof.
  • In case the offense is repeated, the penalty shall be imprisonment for a period of no less than (9) nine months and a fine of no less than (500,000) five hundred thousand dirhams and not more than (1,000,000) one million dirhams.

Without prejudice to the penalties prescribed in Articles (39), (40) and (41) of this Decree-Law, the court shall order the confiscation and destruction of counterfeit copies, subject-matter of the crime, or copies reproduced therefrom, as well as the confiscation of the equipment and devices used in the perpetration of the offence, and which cannot be used for any other purpose, and may order the closure of the establishment in which the counterfeiting has been committed, for a period not exceeding (6) six months and the Publication of the summary of the conviction judgment in one or more daily newspapers at the expense of the convict.

Compensation

The Author or the right holder has the right to claim compensation in case of infringement of their moral and economic rights in accordance with the general rules.

Observations

The UAE Copyright Law does not provide protection to fonts / typefaces per se; however, computer programs are protected under the law. Article 8 of the Law stipulates that rental rights are not applicable to computer programs and smart applications, unless such program is in itself, the subject-matter of the rent. Further Article 9 of the Law states that transfer and licensing of economic rights is valid only if made in writing and specifies the transferred right together with mentioning the object of such transfer, duration and place of use. The same article requires that in order to transfer or license the rights, the Author should be the owner of all the economic rights that have not been explicitly assigned. It is also stipulated that the Author may not take any action that is likely to obstruct the utilization of the disposed right. In continuation of the latter clauses 8 and 9, article 12 of the Law provides that the licensing of economic rights concerning the Works of smart applications, computer programs and applications, or databases shall be subject to the provisions of the contract received or affixed on the program, whether they appear on the support bearing the program or on the screen of the computer, smart phones, or any other technical device on which the software has been downloaded or stored. The purchaser or user of such program shall be bound by the terms included in the said contract terms.

The aforementioned provisions of the UAE law clearly stipulate that as a prerequisite, the assignor or licensor of economic rights in a software / Work should be the owner or economic rights holder of such rights. This in practice can be done by the copyright owner or a master licensee, who is entitled to sub-license such rights. The rights subject to rental cannot be generalized and should be in relation to a specific program covered under the agreement. Further, a written agreement is required to transfer or license the rights. Once licensed, utilization of the disposed right cannot be obstructed by the Author, if it is in conformity with the agreement.

The law also provides stringent penalties for default and entitles the holder of economic rights to claim compensation under article 43.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.