Monotype and its subsidiary International Typeface
Corporation (ITC) filed their lawsuit in the Northern District of
Illinois in June 2003 over rival font developer Bitstream’s
software called TrueDoc.
Brief history of the fonts families
Monotype's roots date back to the nineteenth century. It was
Monotype that designed Times New Roman, on a commission from The
Times newspaper in 1931. Much later it produced a version for
Microsoft that has been distributed with every copy of Windows
since Version 3.1.
It was another commission from Microsoft that led Monotype to
design Arial, a typeface that originally served as a cheaper
substitute for Helvetica, designed by rival font designer
Linotype.
Today, Monotype and ITC license around 1,900 fonts to designers,
developers, printer makers and others.
Bitstream has been specialising in digital fonts since launching
in 1981. Its best known font is Swiss 721 BT, another Helvetica
clone; but it licenses over 1,000 others.
About TrueDoc
Bitstream's TrueDoc product is designed to transfer fonts across
applications, operating systems or devices regardless of whether
the recipient also has the same fonts installed on his
computer.
The software works by identifying the shape of font characters
on the host computer. It records a description of these shapes to a
file which gets sent to the destination computer. Even if the
destination computer does not have the right font installed, the
system will use the description file to recreate the character
shapes on the fly for a screen or printer.
TrueDoc can be used with all of Bitstream’s fonts, as well as
those of other font designers, whether or not they have consented
to the replication.
The complaint
Monotype took objection to this, accusing Bitstream firstly of
direct copyright and trade mark infringement, and secondly of
indirect trade mark infringement, contributory copyright
infringement and violation of the DMCA.
In April this year, Judge Amy J St. Eve found that Bitstream was
not liable for direct copyright or trade mark infringement. This
was a summary judgment. (We have not seen that judgment at the time
of writing.) However, she followed it in July with a finding that
Bitstream was not liable under the remaining claims.
The Judge ruled that Monotype and ITC had not put forward
sufficient evidence to show that users of the software had actually
used it in breach of copyright or trade mark rights. Nor had they
shown that Bitstream knew that TrueDoc was being used in breach of
its rights.
Relevance of Grokster
She considered a recent Supreme Court file-sharing decision, in
which Grokster and StreamCast Networks were found liable for
copyright infringements by users of their peer-to-peer software,
because they had intended the software to be used for that
purpose.
According to Judge St. Eve, “the number of non-infringing uses
of the Character Shape Recorder [the part of the TrueDoc software
under consideration] vastly outweighs any potential infringing
uses. This factor heavily favours Bitstream.”
Bitstream argued that it developed TrueDoc so that it could
license it with its own fonts or the fonts of others who allowed
their fonts to be used with TrueDoc. Bitstream was open about
TrueDoc's compatibility with non-Bitstream fonts in its
advertising; but this was intended to encourage other font
distributors to grant such permission.
Judge St. Eve pointed out that Monotype had failed to present
"any credible evidence" that Bitstream was encouraging its own
customers to use the rivals' fonts without such permission.
Bitstream had also made some effort to reduce the risk of
third-party infringement, according to the Court.
This was different from the Grokster case, “where the defendants
specifically targeted an audience that was seeking to download
copyrighted material,” observed Judge St. Eve.
The Court also found that there was no evidence that Bitstream
would actually benefit from increasing the number of infringing
uses of its software. Instead, the firm was trying to increase
sales of its fonts.
The DMCA claim
Under the DMCA, it is illegal to remove or alter copyright
management information without the authority of the copyright
owner, or to distribute copies knowing that the information has
been removed or altered without consent.
The Court found that the TrueDoc software did not breach this
provision, because there was no evidence of direct infringement,
and Bitstream could not be shown to have knowingly allowed the use
of TrueDoc for this purpose.
Thanks to Cathy Kirkman's Silicon Valley Media Law Blog for
bringing this case to our attention.
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