Stephen Edwards, partner at legal firm Reed Smith, warns developers about the danger of copying other brands' fonts
Last month, reports emerged that Hasbro was being sued for copyright infringement for using a typeface to market its My Little Pony products without having obtained permission from the owners of rights in the typeface concerned.
The claimants, Font Brothers, based in Minneapolis were claiming for damages – potentially for millions of dollars – and demanding destruction of all products which utilised the typeface. Serious stuff. This is a timely reminder for games developers.
It’s obvious that choosing the typeface that will be just right for use within the next game you are developing – and in its packaging and marketing – involves deploying aesthetic judgment and marketing skills at the highest level to complement the work of the designers who have created the look and feel of the game. The Times Roman typeface will just not be loud enough for a good old shoot-em-up; Hasbro evidently thought that the Generation B typeface was spot on for My Little Pony.
The deployment of your team’s skills will be utterly wasted if their choice falls on a typeface that is not licensable at a reasonable cost for use in the game and in its packaging and marketing materials. Even worse, if a typeface is used without being licensed, the consequences can be dire.
Owners of typefaces, in times long gone by, used to have the devil’s own job to try to monitor all uses of their typeface properties, to identify uses that might not have been licensed. Today, like owners of copyright in photographs, they have available to them web-crawling software that works automatically night and day to identify usages of their typefaces on the internet.
If a typeface is used without being licensed, the consequences can be dire.
Many typeface copyright owners are geared up to issue demands, through law firms, for damages for unlicensed uses, usually accompanied by further demands for delivery up of infringing copies or destruction of them. Such claims obviously have to be taken very seriously, even though the protection afforded to typefaces under copyright and other forms of IP protection – such as registered designs legislation – is, to say the least, patchy in different countries around the world. Even in a country with as highly-developed a copyright protection framework as the UK, there are anomalies which may in some circumstances afford the developer a defence to the exaggerated claims which some typeface owners seem predisposed to make.
So how can a games developer protect itself against claims of this kind?
The obvious way is to exert a high degree of control over the selection and use of typefaces on the company’s products. Don’t give your designers carte blanche to use whatever typeface they want. Consider establishing a relationship with a typeface design company or two that have a sufficient range of typeface designs under their control to meet most of your creative staff’s needs and are prepared to license them to you on reasonable terms.
Take pains to ensure that your licences cover all that you may wish to do with the typefaces. In 2009, NBC Universal faced a claim for over $2 million for installing a typeface which it had licensed for use on one computer onto a number of others, and thence onto some of its highest profile television programmes.
But if despite all your precautions something goes wrong and a claim of infringement is made, don’t panic; consult a law firm with a strong Intellectual Property practice. You may be pleasantly surprised to find that you may have a defence to the claims, that the damages being claimed are entirely disproportionate and most unlikely to be awarded by any court, that in some overseas territories no claims would be upheld at all.
At the least a tactical plan can be developed that can get you out of what may be a very deep hole that your creative teams have dug for you.