The Intellectual Property Protection of Fonts in China
In China, fonts are protected under the Copyright Law, Patent Law, and Regulations on Computers Software Protection. Unauthorized use of fonts usually constitutes an infringement. The area of law is not completely clear though.
Copyright in Fonts
There has been a lot of controversy in theory and practice, regarding whether the overall style of a font or the single characters in the font constitute copyrighted art works or not. Some courts identify font as art works, some don’t identify font as art works, and the others distinguish the distinctiveness of the single characters in font – some of the characters at issue are identified as art works.
In the case of Beijing University Founder Electronics Co., Ltd. (Founder) vs. Guangzhou Procter & Gamble Co., Ltd. (P & G) and Beijing Carrefour Commercial Co., Ltd., Founder, a Chinese character fonts developer sued P & G against P & G’s infringement of its copyright in one of Founder fonts, by prominently using “Rejoince” (in Chinese characters) in a special font called “Qianti” in relation to various product packaging, logo, trademarks and advertising. Founder claimed that P & G Co., Ltd.’s act infringed its copyright in both font and single characters, as works of art, specially infringed its authorship, reproduction rights, distribution rights and exhibition rights, and requested immediately cease use and destruction of 24 types of infringing products and compensation of economic loss RMB500,000 and reasonable expenses RMB119,082. P & G argued that the “Qianti” font did not constitute the art work referred to in the Copyright Law, due to the slight difference between the “Qianti” font and those fonts in public domain.
It was ascertained after hearing that the “Qianti” font was registered by Founder as art work in China Copyright Protection Center on 22 April 2008. Beijing Haidian District People’s Court held that the font should be protected in terms of its unique overall style and digital representation, but the single characters in the font should not be regarded as art works, and in this case, P & G just directly used the final design results of the design company which had a contractual relationship with it, but did not directly use the font in any way, even if the design company chose some single characters in Founder’s font, during the design. The Court of first instance accordingly concluded that Founder’s “Qianti” font had certain originality and met the requirements on art works under the Copyright Law, so it may be protected as a whole; however for the single characters in the font shall not be protected as art works. Founder’s request on identification of P & G’s use of “Rejoince” (in Chinese characters), the art works in “Qianti” font as copyright infringement had no legal basis, so all Founder’s requests were rejected by the Court.
The judgment of the court of first instance above was upheld by Beijing No.1 Intermediate People’s Court. The court of second instance concluded that P & G’s use of “Rejoince” (in Chinese characters) in relation to the alleged infringing products was implied licensed by the Founder, considering “Rejoince” used in relation to the alleged infringing products was designed by Nicosia Creative Expresso Ltd. (NICE Company), as entrusted by P & G, reasonably using “genuine” Founder’s “Qianti” font product, namely, NICE Company had the right to use specific single characters in “Qianti” font for design, and then license its design results to its clients for subsequent reproduction and distribution. The court did not support Founder’s claim that NICE Company just had the right to “display on the screen” and “print and output” the specific single characters, even if it was one of purchasers of “Qianti” font product, whether or not if copyright preservation was referred to in the license agreement, but had no right to re-use its design results from the specific single characters “Rejoince” in the font product in commerce unless obtaining license for the commercial re-use from Founder, since 1) it was not necessary to click the license agreement when installing “Qianti” font product, and accordingly NICE Company did not accept the retrain term in the license agreement, and 2) The font purchasers’ main purpose was using the font for design and providing the design results for subsequent reproduction and distribution, and accordingly such a retain term was clearly unreasonable. The court of second instance also concluded that P & G’s acts would not infringe the copyright, whether or not “Rejoince” in “Qianti” font constituted art work.
In the case of Beijing Hanyi Keyin Information Technology Co., Ltd. (Hanyi) vs. Frog Prince (China) Chemical Co., Ltd. (Frog Prince), Fujian Shuangfei Chemical Co., Ltd. (Shuangfei), and Suguo Supermarket Co., Ltd., Hanyi filed a copyright infringement suit with Jiangsu Provincial Nanjing Municipal Intermediate People’s Court against the Japanese Frog Prince and its China subsidiary Shuangfei. Hanyi claimed that the respondents used its copyrighted art work, “Xiuying” font in the trademark “City Baby” (in Chinese characters). The respondents argued that Hanyi did not own the copyright in the single characters in font but only owned software copyright.
The Jiangsu Provincial Nanjing Municipal Intermediate People’s Court held that 1) the single characters in “Xiuying” font constituted art work under the Copyright Law, since they were originally created, artistic and reproducible; 2) The respondents’ use of Hanyi’s copyrighted “Xiuying” font, production and sale of the products under the trademark infringing Hanyi’s copyright constituted infringement. The court accordingly ordered the respondent to compensate Hanyi’s ecnomy loss and reasonable fees RMB48,000. However, this decision was supported by Jiangsu Provincial High People’s Court which concluded that 1) the respondents did not use the original manuscript of the characters “City Baby” in “Xiuying” font, so did not infringe Hanyi’s copyright in the original manuscript; 2) the court of first instance confused the nature of the overall font and the single characters in the font, but this did not affect the identification of the single characters at issue as art works; 3) the respondents’ use of Hanyi’s “Xiuying” font without license infringed Hanyi’s copyright, even if the respondents claimed that they did not know if the online download of “Xiuying” font by the designer, as entrusted by them was authorized by Hanyi or not.
Hanyi also filed a similar copyright infringement suit with Jiangsu Provincial Nanjing Municipal Intermediate People’s Court against Kunshan Xiao Baxi Infant Supplies Limited. In this case, the court concluded that among the three characters “Xiao”, “Ba”, “Xi” used by the respondent, “Xiao” and “Xi” constituted art works, but “Ba” did not constituted art work due to its insignificant characteristics, and the respondent’s use of “Xiao” and “Xi” in Hanyi’s “Xiuying” font constituted infringement.
In the case of Ye Genyou (Ye) vs. Wuxi KFC Co., Ltd. (Wuxi KFC), Ye created a type of writing brush font in July 2007 and registered it with Jiangsu Provincial Copyright Bureau in January 2008. It claimed that Wuxi KFC extensively used his calligraphy works for posters promotional materials in 72 stores, which infringed his copyright. In the first instance, Jiangsu Provincial Wuxi Municipal Intermediate People’s Court held that the specific 7 single Chinese characters in Ye’s font shall be protected as works under the Copyright Law, and KFC’s use of the 7 single Chinese characters for its posters infringed Ye’s copyright in its font and KFC shall be liable for this. However, this decision was overturned by Jiangsu Provincial People’s Court. In the final decision, the court concluded that 1) Wuxi KFC did not use Ye’s original manuscript, and did not infringe Ye’s copyright in the original manuscript, since the characters used by KFC were of difference with those included in Ye’s original manuscript; 2) Wuxi KFC’s use of the characters in Ye’s font did not constitute infringement, on the grounds that a) Ye published its font as a “free software”, and the public had the right to use the font; b) Ye’s claim that he provided free download fonts only for leaning exchange cannot be established; c) Ye first published his font as free software, and then claimed it could not be used for commercial purpose, which violated the principle of good faith. Further, the court did not identify the KFC’s act of putting up the posters as commercial use, even if Ye claimed that free fonts were not allowed to use for secondary development or profitable purpose, since 1) free fonts themselves were not allowed to use for secondary development or profitable purpose, instead of the results arising from using the free fonts; and 2) Wuxi KFC’s act of putting up the posters was the traditional praying customs of the Chinese nation, and it could not be identified as a business act, only due to KFC’s identification as a business operator.
Copyright in Computer Fonts
Among the current computer font copyright infringement dispute cases, the courts basically identify the font as an object of copyright protection, but they have different views on what kind of works the computer font is. In some court decisions, the font code is protected as computer software; and in the others, the font code and the font are identified as the same object in different forms of representation - both are identified as art works, on the grounds that the computer font code is created based on the printed font, and then it produce the output fonts through the computer operating system.
In the case of Beijing University Founder Electronics Co., Ltd. (Founder) vs. Blizzard Entertainment Inc. (Blizzard), Founder claimed that Blizzard copied and installed Founder’s “Lanting” font in the online game "World of Warcraft", without authorization from Founder, and infringed Founder’s rights of reproduction, distribution and remuneration, and also infringed Founder’s information network communication right in its font. Beijing Municipal High People’s Court held that the font was neither a program referred to in the Regulations on Protection of Computer Software, nor the documentation for the program, so Founder’s claim that its “Lanting” font should be protected as computer software under the Copyright Law could not be established, and its claim that Blizzard infringed its copyright in the font computer software shall not be supported. Founder’s “Lanting” font was the art of calligraphy composed of lines with a certain aesthetic significance which met the conditions of art works set forth in the Copyright. However, the Supreme Court concluded that Founder’s “Lanting” font was computer software, instead of art work.
Through this case, the Supreme has determined the nature of the font code, distinguished the font code from the printed font in the course of design and the output font obtained through running the code, and identified font code as computer software, considering the font code itself is constituted by instructions and data. This decision has also distinguished the printed font and the output font (namely, the single characters in the font), which used to be omitted by academia and most courts.
Fonts Protection as Design Patent
There is no doubt fonts are usually protected under the Copyright Law, as discussed above, in some cases though, fonts may also be protected under the Patent Law.
Fonts can be covered in the design patent of a whole article, for example, an incense machine showing “LIVE LOUGH LOVE” in special font, a wheel alignment showing “Private Parking”, and a type of culture shirts showing different numbers in artistic fonts have successfully registered as design patents in China. It is also worth noting that a separate font, such as a single letter “R” in a 2D font is not registerable, which is the same as the policy in US and Australia.
Further, the font processing technology may be protected as a patent under the Patent Law, as long as the technology meets the requirements for inventions or utility models.
Generally, un-authorized use of the single characters in font will be identified as infringement, so it is risky for companies to use a font in the trademarks or product packaging etc., without authorization. It is advisable for them to pay to the copyright owner of the font, or require the designer to provide the payment certificate, if a designer is used.
ABOUT THE AUTHOR: Yu Du
Yu Du is a Partner in the MMLC Group.
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Disclaimer: While every effort has been made to ensure the accuracy of this publication, it is not intended to provide legal advice as individual situations will differ and should be discussed with an expert and/or lawyer. For specific technical or legal advice on the information provided and related topics, please contact the author.