When Hebrew versions of Microsoft Windows and Office applications were released, a number of Hebrew fonts were part of the package. These included Narkisim, a serif font created by the late Zvi Narkis, and the Koren Publishers Jerusalem Ltd’s Koren font, which was specially developed for use in the first Hebrew Bible to be typeset and printed in Israel.
The estate of Zvi Narkis and Koren Publishers Jerusalem Ltd, together with Masterfont Ltd. filed suit against Microsoft Israel and Microsoft Corporation, claiming copyright infringement. Microsoft’s defense was that the correct form of protection for typefaces is design registration. Since copyright and design are mutually exclusive, typefaces are not copyright protected. No design registrations were filed and even if they had been, they would have lapsed 15 years after filing. Consequently, the fonts are in the public domain.
The moral right of the creators is acknowledged as the fonts bear their names. If copyright protected, the protection would last for life of creator plus 70 years, and the owners could prevent Microsoft from using the proprietary fonts, or could demand royalties. Since there is an issue of pure law at stake – the correct kind of protection for fonts and typefaces — with the complainants’ agreement, Judge Ofer Gruschkopf combined the two proceedings as far as the legal question of the correct form of protection is concerned and his ruling follows.
Copyright protection for typefaces
A typeface is designed for reproduction and multiple reuses but as something that merely marks the paper, is it an article of manufacture at all? Does the shape of letters provide the minimal requirements of creative expression to be protected by copyright?
Judge Gruschkopf’s ruling starts by defining a typeface. The 1976 US Copyright Act defines typefaces using the term “repeating design elements.” The Vienna Agreement for the Protection of Type – which was never implemented — also refers to sets of designs of letters and alphabets, with accents, numerals, punctuation marks, symbols, etc. The essential feature of a typeface is that it is not purely functional.
Microfont and Zvi Rosenberg, the co-plaintiffs with Narkis Estate and Koren Publishers Jerusalem Ltd, digitized the fonts for modern use. Judge Gruschkopf noted that both sides agreed that typefaces per se are protectable and merely argued as to the correct form of protection to apply.
Citing the New Copyright Law 2007, Judge Gruschkopf ruled that legislation in Israel Law prevents something registerable as a design from also being protected by copyright. Essentially Section 4 of the New Copyright Law extends copyright to original artistic works and Section 7 excludes designs as covered by the Patents and Designs Ordinance, unless not intended as objects of manufacture.
I find this a little strange. The fonts and Microsoft’s use thereof predates the 2007 Law and I think the old law is the one that should be used. The judge does relate to this issue in footnote 10 – a piece of Talmudic erudition. In the Interlego case, where the issue of copyright protection for Lego pieces was discussed, Supreme Court President Shamgar ruled that the protections are mutually exclusive and where something is protectable as a design, it should not be entitled to copyright protection. The judge also points out that passing off and unjust enrichment could be relevant grounds for suing.
Apparently, the only time the issue came before the Israel Courts in the past was in a 1949 decision by Judge Isaac Kister regarding a font called Aharoni. In that case, Kister ruled that fonts could be registered as designs, but as the present ruling notes, at that time the term “fonts” meant the article of manufacture used for printing rather than the marks they leave on the paper.
Fonts are no longer articles of manufacture in the same way. Kister’s ruling from another district court is not binding as the two courts are of the same competence in terms of judicial hierarchy. Furthermore, only the abstract of Kister’s ruling appears to be available because district court decisions were not always published in full.
Other “relevant” rulings include the Peleg decision, where ritual calligraphy (STaM) is seen as being protected by copyright. However, by nature, calligraphy is a hand-drawn artistic work that is not intended to be reproduced. In a June 2010 decision regarding a temporary injunction, Jerusalem District Judge Noam Solberg stated that study of the case -law teaches that computer fonts are creative works protected by Israel Copyright Law.
Here I have a problem. Either Judge Solberg is correct and there are other relevant rulings other than Kister’s, or else his ruling is baseless. Why didn’t Judge Gruschkopf pick up the phone to him?
Regarding Comparative Foreign Law, the US has declined to allow the design of typefaces in the 1976 Copyright Act and in the subsequent 1978 Eltra Corp vs. Ringer 579 F.2d decision, apparently to the dismay of the Nimmers (Nimmer on Copyright 2.15). It seems that the decision implies that a physical separation between function and creativity is required, whereas arguably a theoretical separation should suffice. Nevertheless, it appears that in the US, a design patent is the way to protect fonts.
The UK 1988 Copyright, Designs and Patents Act defines copyright in fonts including typefaces but limits protection to 25 years for reproducing and distributing the fonts, but not for typing with them. Judge Gruschkopf sees this as indicative that they are protectable by copyright.
I tend to view that this indicates that hard fonts in type metal are protected as designs. I agree that this isn’t of cutting relevance to the protection in question.
The judge seems to get hung up over the design law relating to designs for different articles whereas a printed letter is not an industrial article. There is a little ramble through other non-design protected articles and quoting Terrence J. Carroll on Protection for Typeface Designs. He rules that a typeface design is no more a design for a font than a photograph for a book cover is a design for a book cover. Where we are left is some creative linguistic definitions and an understanding that a mold or die is the opposite of that molded or printed and that modern printing is different.Judge Gruschkopf goes on to quote Judge Cheshin’s musings in the Tele-Event decision that extended copyright to live broadcasting. In this decision Cheshin points out that the old and good Copyright Law dating to the British at the turn of the 20th century is anachronistic and does not adequately relate to modern issues like the Internet, satellite broadcasting etc.
After deciding that he can choose between the forms of protection and is not bound by either, the judge decided that copyright is more appropriate for protecting fonts and prefers to avoid the mental gymnastics required to read fonts into design law. Not entirely happy with 70 years of protection, he suggests that the Knesset should enact special legislation for fonts since he can only choose between the protections available.
We note with approval but the published decision – which in all probability was written in MS Word® — did not use either font in question.
The Koren Publishers Jerusalem Ltd themselves only use the font for the Bible. Even in their prayer books they reserve the original biblical font for psalms and other biblical passages. Other prayers are in a variant font. We suspect that obtaining an injunction against Microsoft to prevent the font being usable by all and sundry for all purposes may be an aim of the litigation.
Philosophically, as a materials scientist and engineer I find the question a little like discussing the macro-properties of materials in the context of atoms and molecules or the chemistry of subatomic particles. It is really getting down to the nuts and bolts of creativity and manufacturing.
Despite the Former Supreme Court President Shamgar’s ruling in Interlego and the position of the current Commissioner of Patents which is mentioned in the present decision in an aside relating to an academic paper regarding copyright for architectural creations. I do not agree that the doctrine against double IP protection should prevent the aspects of a creation that are manufactured objects from being protected as objects of manufacture – registered designs – and the creative aspects of their footprint being awarded copyright protection. Therefore I don’t agree with Microsoft’s position that design protection should rule out copyright protection. I believe that the design protection would cover the typeset in type metal as an object of manufacture and the printed typeface on the paper, if considered sufficiently creative should be protectable as copyright.
If the doctrine of double protection is correctly applied in this case, I would argue that Narkis and Koren could have gotten design protection for the cast metal typeset and thus the print thereof is not copyright protectable. If so, the fonts were in the public domain by virtue of being produced using traditional printing and I do not see why the mere act of digitization should create a copyright in something already in the public domain.
One could argue that awarding design protection to traditional typesets and copyright protection to post-digitization modern True Type fonts is problematic. Is it really? Isn’t this the opposite of copyright protection for one-off creations but design protection for objects of manufacture?
I am happy to consider digital printing as a form of manufacturing and I see no reason why a letter cannot be the building block of an industrial printing process and should be protectable as a design. I prefer that line of reasoning rather than to see fonts as creative works in a copyright sense. Then again, conceptually I believe that software inventions should be patentable and consider life plus 70 year copyright protection for the code to be inappropriate.
The idea of lex specialis copyright for fonts to provide a shortened term but not requiring registration does seem reasonable. Certainly if chip circuitry is protected by copyright, why not fonts? However, I am not sure why chip design should not be design protected. After all, they are objects of manufacture.
Judge Cheshin’s obiter regarding copyright limitations is not overly relevant as fonts existed when the design ordinance was drafted. Therefore, in my opinion, there is a 1949 Israel ruling that fonts are designs and so the current ruling is an about face. This should at least minimize the damages that Microsoft should pay in the future ruling.
The real question seems to be whether digital printing should change the protection of fonts from design to copyright. I think not, as this simply extends protection from 15 years to life plus 70 years following digitization.
T.A. 5311-04-08 Koren and others vs. Microsoft.