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.
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.
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.