UK: Font Licensing: Sign Of The Times (New Roman)

All businesses use fonts. The choice of font is an important branding decision, particularly where a specific font is used as part of a trade mark, such as a logo, or is intended to form a core part of a business' brand identity, being used consistently across all marketing materials.

The traditional thinking is that different types of font convey different non-verbal messages. If you buy into this, the font you choose to represent your business could say a lot more about you than just your aesthetic preferences.

For instance:

A serif font is considered to be a “traditional” choice, which conveys honesty, integrity, repute. Serif fonts are supposed to be easy to read as the serifs (decorative strokes) help to link individual letters together and thereby allow the eye to travel easily across the text. Times New Roman and Georgia are recognisable examples of serif fonts.

A sans serif font (i.e. without decoration), on the other hand, is a more minimalist option, which is thought to communicate transparency and forthrightness. These fonts are highly suitable for children and those learning to read. Examples include Arial and Helvetica.

Once a base font is chosen, there are then weights to be considered: bold, italic, light etc. You will need to think about whether your preferred font is already available in the weights you need or whether it needs modification. In any event, do you want to modify an existing font to make it bespoke to you and therefore better able to distinguish your brand over others?

Intellectual property rights in fonts

All typefaces, being the design of the letters themselves (as opposed to their “physical form”, nowadays mostly a software file) are protected by copyright. Typefaces can also be protected as registered and unregistered designs. This means that you will need a licence from the owner of the typeface to use the typeface. However, it is not always easy to work out what type of licence you need.

In this article, we look at different categories of font and consider the legal issues which can arise in relation to the use of fonts from each category.

Open source fonts

Open source fonts are what are generally regarded as publicly available, free fonts. There are a large number of open source fonts – Google Fonts alone offers 1500 choices – and businesses will often consider this to be a preferred option.

However, just because a font is freely available, this does not mean there are no restrictions on its use. On the contrary, the use of an open source font is governed by the terms of an open source licence. The most common is the SIL Open Font License, but you should always check which licence governs the use of your chosen open source font. The SIL Open Font License grants free permission to use and, importantly, modify and embed (see further below), redistribute and sell unmodified and modified copies of the font. So far, so good. This is the grant of wide permission to use the font for commercial and non-commercial purposes on a free-of-charge basis.

In particular, the right to embed is important because this enables the font to be embedded in your website and apps – so new text is automatically created in your chosen font – which allows brand consistency across your marketing platforms. 

Likewise, the right to modify the font is helpful if you want to customise it in any way for your business. However, this is where potential issues with the use of an open source font creep in.

The idea behind open source fonts is that the fonts will be “shared and improved in partnership with others” and in this regard the SIL Open Font License prohibits the sale of the font, in original or modified form, by itself. (The font can be bundled with other software and sold as part of a product e.g. an app; but it may not be sold on its own.)

Therefore, should you seek to control your modifications, for example through commercialisation (i.e. licence or sale of the modified font) or enforcement (asserting rights in the modified font against a third party user), there is a risk the licensee or infringer will seek to challenge whether you actually own copyright in the modifications.

Font foundry fonts

An alternative option is to purchase a font from a font foundry. A font foundry collates a library of fonts and offers licences to use the fonts on commercial terms. Some font foundries offer licences to tens or hundreds of thousands of fonts so this is a good option if you are looking for plenty of choice.

There are, however, issues including: (a): cost: commercial licences can be prohibitively expensive for smaller businesses; and (b) ensuring that the licence you purchase fully protects all of your proposed use.

Different font foundries will split the types of use covered by each of their licences differently but one common issue to look out for is whether the licence only allows static use of the font, for example in a graphic on a website or app, or whether embedded use, which allows the software for the website or app to create new text in the licensed font “on the fly”, is also permitted.

Another thing to consider is whether the licence permits modifications of the licensed font and, if so, what are the restrictions on subsequent use of the modifications.

And what about sub-licensing? If you have used a licensed font in any trade marks or marketing materials, you are likely to want to allow your commercial partners, such as merchandising partners, to use the font in order to promote your products. But does your licence from the font foundry allow this or are you going to have to renegotiate the terms of the licence, potentially at significant cost.

Even where font foundries offer an allegedly “all inclusive” package it is always worth checking, the terms to make sure it truly does cover all the uses you intend to make of the font now and in the future.

Bespoke fonts

A third option is to commission a graphic designer to design a bespoke font for you.

The issue to look out here for relates to ownership of the resulting design: unless copyright (and any registered or unregistered design rights) in the typeface are explicitly assigned to you, you will not “own” the font even if you have paid the designer. Many designers resist assigning intellectual property rights and instead grant “usage rights” to use the typeface. In that scenario, you will again need to be sure that all of your current and future usage is protected by the licence which is offered. You will also need to think about the territory covered by the licence, whether the licence is perpetual or time-limited, whether the licence is royalty-bearing or charged on the basis of payment of the design fee.

Another issue to be aware of is whether the licence is exclusive, sole or non-exclusive. An exclusive licence excludes everyone else, including the designer, from using the bespoke font. A sole licence permits just you and the designer to use the font but no-one else. A non-exclusive licence is, as the name suggests, non-exclusive. This means the designer could license the font to others as well, which will be unappealing if you have made the font a core part of your brand identity.

You will also need to consider whether you are permitted to modify the bespoke font and whether you are permitted to use and/or exploit any such modifications. Whilst it is likely that you would be the owner of copyright in the modified font, you would need a licence from the original designer in order to use and/or exploit that copyright because without a licence use of the modified font could amount to an infringement of the copyright in the original font.

So what next?

We have set out in this article some of the issues inherent in the choice and exploitation of a font for your business. We have experience in advising businesses on these issues and would be very happy to assist you should you have questions about taking the necessary steps to protect your current and proposed future use of such a core brand asset.

What about if I am faced with an infringement claim for using an unlicensed font?

We can help with this too.

It is usually possible to agree a settlement sum to resolve the matter without the need for litigation but failing that, there may be arguments you can make to challenge the claim.

The Copyright, Designs and Patents Act 1988, which is the primary legislation governing copyright in typefaces, was not crafted with modern electronic usage of fonts in mind. This potentially gives rise to some interesting arguments as to, for example, whether copyright has expired in old fonts and whether the knowledge requirement necessary to establish infringement is made out when you have just bought the wrong licence.

But, as we say, this is a developing area and it is always costly to litigate new points of law. The best practice is therefore always to take pre-emptive action to make sure you have the necessary permissions in place before you commence use.

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.