Erik Spiekermann's statements re Berthold

anonymous's picture

We were disappointed, but not surprised, that Erik Spiekermann, a noted and respected type designer and author, would knowingly make false and misleading statements regarding Berthold in a public forum.

As such statements affect the reputation of Berthold Types, I am responding with this posting. I attach a letter dated June 3, 2004, to Mr. Spiekermann explaining the actual facts behind the continuation of H. Berthold's type business by Berthold Types. This letter is from Berthold Types Limited's German attorneys because the subject matter involves German law. We arranged for the attached English translation.

Although the letter to Mr. Spiekermann addresses the myths and misconceptions perpetuated by Mr. Spiekermann's comments, I would like to make a few points:

1. Berthold Designers
Mr. Spiekermann states that Berthold Types has no contracts with any of the original Berthold designers even though he is well aware of the agreement with Guenter Gerhard Lange. Mr. Spiekermann, a friend of Mr. Lange, tried to persuade Mr. Lange against working with Berthold Types but failed.

Contrary to Mr. Spiekermann's statement, Berthold Types has agreements with Guenter Gerhard Lange, Bernd Moellenstaedt, Dieter Hofrichter, Orjan Nordling and Prof. Werner Schneider.

--Mr. Lange (at 83) is working on new typefaces for Berthold Types; having completed Whittingham in 2001 and additions to his other typefaces (Bodoni Old Face and Imago). He also has a new typeface yet to be released and has embarked on another large typeface project for Berthold Types. Mr. Lange as artistic consultant is actively involved in future type releases by Berthold.

--Mr. Moellenstaedt has created a new, large typeface family for Berthold Types (yet to be released) as well as preparing additional offerings of Formata.

--Prof. Schneider recently completed and Berthold Types released his Senatus typeface.

--Mr. Hofrichter works on many projects for Berthold's type program and works closely with Berthold Types to insure the continued quality of the Berthold type program. He works directly with GGL on all his new releases.

All of the contracts between H. Berthold AG and the designers specifically stated that when a typeface design falls into the public domain the obligation by Berthold to pay royalities ceases. Berthold Types offered to pay designers nonetheless. Notwithstanding, Hans Reichel chose to release a reworking of Barmeno.

Interestingly, according to H. Berthold's royalty worksheet, Mr. Spiekermann was never paid royalties on an ongoing basis for Berliner Grotesk and LoType.

2. Registration of Berthold's Trademarks
Mr. Spiekermann also implies that any company could simply register H. Berthold's trademarks. This is simply not true.

The Type division of H. Berthold was a separated in October 1991 and the Type assets were "leased" back to H. Berthold by a consortium of banks. The Type division was not a part of the H. Berthold AG bankruptcy in 1993 and was separate from Berthold's other businesses. Berthold Types acquired the type assests (e.g. the trademarks as well as other IP rights -- see the attached letter) through the chain of title through these banks, not through bankruptcy.

Accordingly, contrary to Mr. Spiekermann's statements, over 80 German trademark registrations, and numerous UK and US registrations, were assigned through the "chain of title" from H. Berthold AG to Berthold Types, including the "Berthold in a red square logo" and the "H. Berthold" trademarks.

3. Protection of Berthold's IP Rights
Mr. Spiekermann states that Berthold Types has been "suing dozens of people with frivolous cases which have cost me and other designers and foundries millions of dollars (and I am not exaggerating)."

It's a myth. In fact, Berthold Types has filed only twelve lawsuits two of which were against FSI/FontShop (both for trademark infringement). Mr. Spiekermann cannot provide any basis supporting losses of "millions of dollars." Type is just not that large of a business.


If Mr. Spiekermann wants to debate: Stick to the facts, please.

Respectfully,

Harvey Hunt
President
Berthold Types Limited


application/pdfTranslation
Spiekermann_Translation.pdf (91.9 k)

dan_reynolds's picture

Bouncer, I find it strange that you are so quick to forgive Berthold, yet you will demonize Bitsttream at the same time. Bitstream, and its licensing stories have been discussed many times on this forum. Even if they are guilty of piracy in the past, which I don't believe, they are certainly clean now.

Berthold, which was once very clean, is now very dirty, as exemplified by the first thread in this discussion.

At least I have the decency to post under my real name when I make controversial statements such as the ones above.

Hrant, I would like to know the answers to your two questions, too. However, you know that Mr. Hunt won't answer them. Especially question number two... no foundry is going to tell you the exact number of cease and desist letters taht they have sent out.

And Bouncer, this doesn't justify Berthold's actions one bit. If FSI, Linotype, Bitsream, et al. sent out as many questionable letters as Berthold had, we'd all know about it. Those storeis would show up here, too, and they haven't.

Lastly, Hrant, I know that you are afraid of American lawyers, but they aren't all bad. In the example I used before, about legit revivals, the ficticious designer in question would have nothing to fear. Some lawyers do go over the top in litigation, but sometimes the law is chrystal clear. In the case of type, there are so few laws that it would be asy to rest assured knowing that a certain party would be right in a certain case.

as8's picture

Privet dorogoj Igor Shipovsky,
if that is possible, I

eriks's picture

Back to the intital issue (i only read these posting once a week).

1. The case between FSI and HH ended in a compromise after so much money was spent that FSI couldn't go on. Which is the purpose of starting all these suits in Illinois. And Mrs H being a lawyer sure helps keep the expenses down for them. Mr H says that designers were paid as the result of the compromise. They were, but only by FSI. H kept all the money he had taken for the sales of FontFonts when the franchise agreement was terminated because of some technical clause particular to Illinois law. I never understood how a court could make a contract void but let one of the 2 parties keep the proceeds from a void deal. But then i am not a lawyer and operate under the simple premise that designers should get paid by whoever gets proceeds from selling their fonts. I am expecting another letter from Chicago because i wasn't supposed to discuss this in public, ever. But i can let H know already that i'll ignore whatever comes from him. He'll have to send the sheriffs over to get anything out of me. Or the Marine Corps.

2. If Getraude Popple (Friedrich Poppl's widow) spoke english, i'd get her to write her version of the dealings with H. She never signed a contract because she couldn't agree with the conditions. So Poppl's fonts are sold without a contract, illegally. She hasn't got the means to pursue the matter, and H knows this.

There are lots of other stories to be told about H's behaviour and attitude towards our business. The one thing i can mention is the news that got all this started: if someone tries to prevent another foundry from using the word "Grotesk" or "Grotesque" in a typeface name, that person is not out to protect a tradename, but to harrass the competition. If he hadn't lost that one, the next step could have been sueing anybody who used Sans or Serif or Antiqua, as all these are part of some Berthold trademark or other.

3. Just the fact that no typedesigner outside a small bunch of people who used to work for Berthold will work for them should be enough to tell the rest of the community (or call it business) what their practices are. They all know more than can be told here.

4. A lof of people think that B in Chicago is not a legal successor. H writes:

>The acquisition of the designs and trademarks was recognized by the German Patent and Trademark Office as well as by WIPO, which authorities recorded the assignments. In that regard, Berthold Types Limited acquired the Type Assets and thereby is also the legal successor to H. Berthold AG. <

This is a very clever way of making something sound logical and obvious, but it isn't. A new company having acquired the assets of an old company doesn't make the new company the legal successor, it just makes it the owner of the assets. If they honoured the old contracts, one might be more inclined to believe that argument. But when it comes to paying old dues and debts, the new company conveniently seems to have no connections with its predecessor.

Intimidation and bullying is their game, as simple as that.

hberthold's picture

Neither Poppl nor Jaeger would agree to the old contracts. More later.

Harvey Hunt

dezcom's picture

>Neither Poppl nor Jaeger would agree to the old contracts.<

Must have been an appealing offer. What do they have to bargain with? You obviously sell their fonts anyway and give them nothing. Do they have the right to pull the fonts from you and make a business arrangement with a different vendor? If not, then they are "screwed" as we say in America.

Perhaps if you made them a offer they could not refuse (I don't mean Godfather style), one that would give them a fair share of the profits or let them have all their fonts and agreements back to deal with whomsover they choose? They even do this in American football. Let them be free agents. After all, you don't need them, you are Berthold and, with your vast talent, you can design your own fonts any time you wish, right?

ChrisL

hrant's picture

> you know that Mr. Hunt won't answer them.

1) I don't know that. Plus he could answer them partially, and a clue is a clue.
2) An unanswered question can often be almost as effective as the answer itself.


--



> those that are not named are not getting paid

And my question #2 seeks to find out how many they are.

> you can use your "real name" to perpetuate lies, and I can't use a nick to tell the truth.

You don't get it: a real name makes people believe you more. Duh. But if you're here merely to vent, that doesn't matter to you of course.

> this is the font of all knowledge.

No, just the most.
It would be even better with more true experts (like Eric), but they're usually too busy and/or selfish.

--

> Poppl's fonts are sold without a contract, illegally.

And of course nobody else could legally sell his fonts because they couldn't afford to defend against the inevitable lawsuits. :-/

> harrass the competition.

Exactly. And to me that's the main points of this thread.


hhp

hrant's picture

Yes, silence in a discussion is music to the ears of the powers that be.

hhp

hberthold's picture

Erik

As you choose to discuss confidential material in a public forum and then state that you will ignore private correspondence, I shall make my response in the same forum.

FONTSHOP USA
As you recall there was a business dispute between FontShop USA (a Fontshop distribution company owned by me) and FSI Fonts und Software GmbH. This dispute was resolved in the form of a Settlement Agreement that FSI insisted be confidential.

It appears that FSI's intention was to keep the truth confidential while FSI embarked on a crusade claiming that I cheated designers out of their money. Nothing could be farther from the truth.

Here are the facts:

1. FontShop USA agreed to pay (and PAID) the designers' portion of the sales of FontFonts. The dispute was with FSI and never the FontFont designers.

2. FSI audited and declared valid every single sale of a FontFont typeface (Petra Weitz coordinated this).

3. FontShop USA paid FSI close to six figures (US$) representing the designers' portion of the sales of FontFonts. The dispute did not involve millions of dollars and FSI certainly did not pay the FontFont designers out of its own pocket as claimed by Erik.

4. FSI also got the "fontshop.com" domain and Joan got to open her own FontShop in the U.S.

5. FontShop USA was represented by a law firm, not my wife.

So it appears that for the past eight years, Erik, you have been lying that I kept all of the money from the sales of FontFonts.

Erik of course has every right to choose who he likes and dislikes. But he does not have a right to lie in an effort to disparage my reputation and that of my companies.

It occurs to me that this is all about a personal problem that Erik has with me regarding a third person. It is not appropriate to discuss this in an open forum because it could be embarassing to her.

What happened, happened. Get over it. I would have thought by this time Erik that you would have moved on in your life rather than dwell on the past. If only for the other person.


Harvey Hunt

hrant's picture

> What happened, happened.

Assuming that aspect of this mess is indeed history*, what about the other complaints?
Isn't it the present that many people here have been complaining about?

* And what about ongoing profits from fonts like Poppl's for example?

hhp

eriks's picture

My final post to this thread (in case anybody is still interested in the *real* topic):

There are obviously different ways of presenting the truth. While i know that there is more to this than Mr Hunt states, i cannot present any real figures and facts without entering a very libelous area. Suffice to say that dealing with someone who sees people in this business not as partners but as potential enemies has cost other parties dearly, mainly in lawyers' fees (BTW: his wife, Melissa, is a lawyer). Thus, with Mr Hunt's history of sueing everybody who has an opinion in the typographic world, i would be a fool to carry on. By now, everybody on this forum will have formed their own opinion.

Let's go back to where this thread started:
We all agree that tradenames need protection against rip-off artists, and that our libraries need to be protected against pirates. We also seem to agree that it is at least frivolous if not downright petty and vindictive when foundries get pursued for using generic terms like "Grotesk" in naming their fonts. We probably also agree that the type-buying public can differentiate between a name like Signa and one like Signata, especially if the typefaces involved look totally different from each other. And finally we agree that designers should be paid properly for their work through contracts that are fair and easy to understand. The fact that numerous well-known designers have chosen not to enter into contractual agreements with the self-declared Berthold successor in Chicago speaks for itself.

Private business has nothing to do with this issue. There are many designers out there who know what i am not allowed to talk about as they have been party to the history of this conflict. They know my reputation and they know what the people in Chicago stand for.

Judge for yourselves.

jfp's picture

As type designer, I tend to trust other type designers experience rather than husbands of lawyers when I looking for a good foundry for typefaces. Perhaps the type designer at the head of a foundry will do mistakes, but we speak same language and understood each other well.

And more important, when we meet with speak about type design and that the best :-)

I'm fool for sure, but its why I'm a designer not a lawyer.

Last but not least, Thanks to Mr Hunt to start this thread, it helped people to confirm their own opinion.

hberthold's picture

Erik, you clearly have no clue about trademarks and the value it would bring the type industry if only members of the type industry bothered to educate themselves. Although there are more and more type designers who read Typophile that are registering their trademarks, I am always amazed at how often Typophile posts include incorrect or inaccurate information regarding trademarks.

For example, you say that you have no problem with FF UNITE so long as the design is not the same as FF UNIT. You are doing yourself, your business and the type industry a serious disservice with this position.

If a designer created a typeface called HELVETICAR or HELVETICAL, Linotype certainly would have a serious problem with that designer regardless of whether the design looked like HELVETICA.

Trademark law is intended to give a exclusivity to the first company/person who registers (or in the U.S. first peron who uses) a particular trademark in connection with PARTICULAR GOODS. The goods in our industry are FONTS; for purposes of trademark law, there is no distinction between the design of one font versus the design of another font: the registered trademark applies to all fonts (not a particular font design).

For this reason, the US trademark office refused FSI's application for SIGNA citing Berthold's SIGNATA as a barrier.

After the Barmeno/FF New Barmen fiasco which you started, FSI is now held to a higher standard not to come anywhere close to the Berthold trademarks.

If, at the time, Berthold was not trying to cause FSI & its FontShop Network to stop selling counterfeit Berthold fonts offered by BSK/Babylon Schrift Kontor, there is no way we would have ever allowed FSI to continue using the name FF SIGNA. Business disputes require compromise so we compromised.

Trademark law also does not require that the infringer use the EXACT trademark. The US requires only that the mark be "confusingly similar" and looks at the facts and circumstances of the situation. Other jurisdictions (e.g. England) also do not require use of the EXACT trademark to find infringement.

Contrary to your apparent assumptions, the type buying public is a much broader group than type and graphic designers. Therefore the type buying public would likely have difficulty distinguishing between trademarked type names with slight differences. Also because the type buying public relies more and more on purchasing over the web without assistance from people knowledgeable about type, and because they rely on search engines (dedicated to type like MyFonts or otherwise like Google), using similar typeface names could cause confusion to buyers.


FONTSHOP, THE SPIEKERMANNS AND THE DOUBLE STANDARD
Both Gustav Jaeger and Mrs. Poppl have not signed agreements with any Berthold successor after H. Berthold AG declared bankruptcy in 1993.

Notwithstanding, in 1994 when Joan and Erik Spiekermann's FontShop were distributing the Berthold typefaces (via an agreement with Berthold Systeme), Erik produced FontBook update 2, the introduction stated

"This shows the 1400 typefaces in the Berthold Type Library released by Berthold in Berlin, Germany. Many of these fonts are available from other type sources, but the Berthold versions are renowned for their sensitive interpretation."

Was Erik talking about cheating designers like Jaeger or Poppl then? Of course not. FontShop (and Erik) were making money from the Berthold typefaces.

AND, more recently the FontShops were (and some still are) making money selling counterfeit Berthold fonts offered by BSK/Babylon Schrift Kontor denying Lange (Erik's close friend of many years) and Moellenstaedt (a past ATypI board member who he has known for decades) money for sales of their typefaces.

Did Erik Spiekermann complain about cheating Berthold type designers? No.

hrant's picture

> You are doing yourself, your business and the type industry a serious disservice

No way, maybe, and no. Even for the second one (a person's business), it can be argued that long-term health precludes rabid protectionism. Plus those three factors are all less important than something people like Eric are minding: treating others with respect. Those who believe in a dog-eat-dog world are the ones responsible for misery on this earth.

Anywhere except on Legalophile.com, you're missing the whole point.

hhp

aluminum's picture

<em>I'm curious. Is this because those who wrote the law and "lawyers" in general don't see and haven't been educated to the differences?</em>

It's due (IMHO, of course, as IANAL) to the fact that the USPTO is overworked, understaffed, and Patent and TM laws have been slowly pushed towards the benefit of big business. Once Adobe got a patent on tabs in UI design and Amazon got a patent on one-click ordering, things have been going downhill.

The very fact that the USPTO granted TM protection on things like 'city' and 'grotesk' says more about the lack of careful thought going on in the USPTO than it does about Berthold being 'right' or 'wrong'.

dezcom's picture

Will New York City have to change its name now for fear of a law suit from Berthold? What about the classic film "City Lights"?
That's of course too silly, so silly it is grotesk. (OOOPS!!) I didn't mean to say GROTESK, it was just an akzident; I mean I said it akzidently, err, accidently. It was a grotesque accident!
Oh, crap, I live in a city and created a grotesque accident!
DUCK!!! I hear the sound of lawyers zipping their briefs! I was so font of grotesque accidents in the City untill lawyers started Ligaturegation--er ligagation, darn litigation!!! OK! OK!!!, I will cease and desist.

ChrisL

petra's picture

It is indeed hard to figure out the initial intention of the thread. If it is bullying tactics which are harming our industry, then we feel the need to add to the topic. Designers shouldn't be put off trying to register their type names to offer some kind of protection from the law. The more pertinent problem is that very few people in our industry can afford to defend themselves in the sort of cases brought against them, many are outrageous, but to defend the accusations: reckon with 6 figure sums and twice or three times that to take it to court.

FSI like most other companies and individuals, has never been able to take the issues to a full-blown court case with a judgement when attacked, where outcomes would have quite probably been completely different. The amount of money spent on injunctions, lawyers etc. meant that we have had to withdraw and agree to settle. In this respect, bullying tactics is an apt description and seems to be a pattern. We have always had to agree to settlements in the end, no matter how long we tried to hold out. Financials aside, humans eventually run out of steam too and are beaten down. But a legal Agreement doesn't necessarily mean that parties are in agreement - it's always a pragmatic matter of "do we go bankrupt defending further"?

Mr Hunt states: "For this reason, the US trademark office refused FSI's application for SIGNA citing Berthold's SIGNATA as a barrier."

When FSI applied to register FF Signa, the US trademark office initially turned it down on the grounds that it was similar to "Signata and FF Signa" (really, the name of our own font was cited against us as being similar, we have the letter!) It is very common, and has happened to FSI many times, that the initial application is turned down, especially if someone objects to its registration. You then show reasons why the name and font is different and it is then often accepted. In this case it was Berthold Types who objected and it was abandoned by FSI because Berthold Types began a long, exhausting and complicated case against FSI and FontShop Germany tying in this registration with other FontShops' selling (legal) BSK fonts along with FF CityStreetType, FF Avance and other issues.
We are still convinced that we would have succeeded in registering FF Signa and others had it not been for yet another case which cost all of FSI's financial and emotional resources.
Some "confusing" font names could spark a whole new thread, see already, and we list a few below for interest. There are hundreds more similar names, so FSI may be forgiven for the suspicion that a certain amount of harassment is involved in their case. We feel angry and sorry for the people who have been forced to remove "City" from their font names. FSI were "allowed" in their agreement to continue to use the name FF CityStreet Type under the
condition that it did not try to register it.

Look at the first example!

Joan Spiekermann and Petra Weitz, Managers FSI (FontFont library)

Badoni, Agfa
Bodoni, Linotype

Aldus, Adobe
Aldous, Agfa

Albertus, Monotype
Albertan, Lanston
Albertina, Monotype

Alexa, Adobe
Alexia, Alphabets
Alexie, Linotype
Alexander, Lunchbox

Arbiter, Berthold
Arbitrary,

William Berkson's picture

It appears to me from this thread that Berthold has not won lawsuits about names, but rather has used the cost of litigation as a business tactic to hurt rivals.

A possible way to diffuse this might be to get one of the type organizations to set up a clearing house to approve font names. Then a single failed lawsuit against a cleared name - which the type community might chip in to defend - might stop the practice.

I would add that this first idea might not be best but perhaps by brainstorming solutions here, the community could come up with a good plan.

hrant's picture

> What many lawyers and apparently the USPTO don't get ...

No, they get everything just fine - after all it's us who are suffering, not them.

Resolution depends on realization - face it: when the central motivation is making more money*, a field that doesn't make much money (type design) simply isn't going to get its voice heard. A "good plan" would be the same plan that works in the third world: raise money and bribe lawmakers.

* The Patent Office for example gets paid per approved application. And it doesn't suffer jack as a result of subsequent frivolous lawsuits between third parties.

The only other option (a much cheaper but also much weaker one) is what we're doing here: public outcry resulting in threats to a company's brand perception (as Joe was hinting at, albeit from the wrong angle).

hhp

Nick Shinn's picture

What's done is done, and there are lessons to be learned.
From the type designer's perspective, here is a "play it safe" strategy for the future:

1. Type designers should avoid doing revivals.
This will minimize problems of plagiarism, and naming issues (too close a name, or one unrelated -- both are problematic for revivals)

2. Type designers should publish their own work. (Since the Internet, this is a viable option.)
In other words, type designers should publish their work under their foundry name, and then market it themselves and/or through distributors.
If you have someone else publish your typefaces, no matter how great things are today, that company's ownership may subsequently change hands in ways that may not please you, and over which you have no control. It will be too expensive for you to defend your interests.

3. Type designers should be very careful in naming their typefaces: the best strategy is to use made-up words that are not already in the dictionary. For the first letter of the name, choose an area of the alphabet less colonized by other typeface names, and so on.
Quite apart from legal issues, giving your face a name that is unlike any other can only enhance the strength of its brand in the marketplace.

hrant's picture

4. Complain widely and loudly when a miscreant parasite tries to take advantage of you.

Oooops, there's a font called Miscreant (in fact interestingly it's the top hit in Google)!
So I guess I'll just have my lawyer preempt their lawyer... But wait, it's only Agfa - whew.

hhp

Thomas Phinney's picture

WRT to Nick's "play it safe" strategy.

First, my number one piece of advice is: consult a lawyer (preferably somebody who really knows this are, like Frank Martinez). I am not a lawyer, but it seems like a couple of Nick's suggestions are off base.

1) Huh? Not much risk in doing another Garamond or Baskerville, as long as you call it "Shinn Garamond" and not "Adobe Garamond."

2) It is not difficult to make sure that you, the designer, keep the copyright, trademark and (if any) design patent rights, and still publish through somebody else (license them to sell your font software).

I'd love to get into more detail here, but that would be providing legal advice which could get me into trouble (with our own lawyers if nobody else).

Regards,

T

aluminum's picture

" but rather has used the cost of litigation as a business tactic"

Hmm...sounds like Berthold is infringing on the RIAA's patented business tactic!

(Is anyone else seeing this thread as messed up in their browser (firefox for me))?

fontcity's picture

> Privet dorogoj Igor Shipovsky. I'd like to know the name of your Italian friend

Ciao Alessandro,
I like You! I never hide my own personality, but we all should respect another kind of thinking. Isn't it?
Grazie mille e cari saluti!

> I don't want a letter from Chicago
> as anybody knows a confrontational letter (especially when directed to individuals with modest or non-existent legal resources) can have nearly the same effect as a lawsuit

This is one of very serious reasons. I want to give one advice to those people who are afraid the attacks from Berthold. The majority of my friends and attorney worldwide came to similar opinion:

- "Issuing a lawsuit, in the US, is an everyday practice, even for reasons which, in other nations, would not justify a legal action. The Berthold case is a good example of this kind of approach: the company issues a lawsuit to scare a potential competitor. Anyway, on a factual level, we have to consider this: laws are not the same in any single part of the world and it's very likely there's no way to make a US Tribunal judgement effective in Russia as well. It may even be that on a specific topic Russian law is very different.
If, as I believe, we are still in an earlier phase before an actual legal action, I'd be quite relaxed to tell Igor he could use Berthold's papers to wipe his... nose."

- "I could have demonstrated to the court just how silly Berthold's claims were..."

Dear friends! If You receive the "cease-and-desist" letter, do not fear! Please take a look at my own position: http://fontcity.ru/ev.htm, read the Russian attorney opinion: http://fontcity.ru/attorney.htm and other stuff. Believe me, the most of community is on your side and will assist You. Nevertheless, bear in mind that all cases different each other.

Respectfully yours, Igor.

P.S. My congratulations to all Italians regarding the great success on Euro-2004 in Portugal!

jim_rimmer's picture

Albertan was designed by me as a private metal face for my press, Pie Tree Press. If there is any confusion about the bame being confused with Albertus or Albertina, I could care less. The type is named for my wife, Alberta who was by coincidence, born in the province of Albertan, and is thus an "Albertan". When I cut the type in her honour I had no intention that it would travel outside the confines of my letterpress sanctuary (which by the hour becomes more and more attractive to me) so the name was not a matter of confusion. If I had intended from the start that the type would be sold to the outside world I would still have named it for her. As has been stated, we can tell the difference from Bodoni This or Bodoni That, so I don't understand the confusion, if you will pardon the cheek of a "typographical nobody".

Jim Rimmer

Nick Shinn's picture

>consult a lawyer...I am not a lawyer, but it seems like a couple of Nick's suggestions are off base.

I'm not giving legal advice, but advice to avoid getting involved with lawyers. For type designers who don't live on planet Adobe, engaging the services of Mr Martinez is out of the question.

>Not much risk in doing another Garamond or Baskerville

Surely the lesson to be learned from this thread is that if a foundry releases a font with a name close to one that's already a trademark, there may be legal ramifications. "Phinney Gill Sans" would create some interest.

Also, there is always an element of plagiarism in doing a revival -- which is, after all, copying someone else's design. Not a legal problem per se, but it can create controversy.

Another issue with revivals: if you name it, say, Adobe Caslon, it's going to look strange next to the "C's" in type menus, and if you take a different route and name your Bodoni "Filosofia", well, Ms Licko can get away with it, but in general it's disrespectful to remove the original designer's name.

>It is not difficult to make sure that you, the designer, keep the copyright, trademark and (if any) design patent rights, and still publish through somebody else (license them to sell your font software)

Yes, that's what I'm recommending -- because what's being describing is not really publishing, it's distribution/reselling. The publisher is the person/business who holds the trademark.

Contrary to what Thomas says (and I speak from practical experience), it IS difficult to get one's fonts "published through someone else" and retain rights, because most publishers will not publish typefaces unless they own the trademarks. (All FontFont names, for instance, are owned by FSI.)

A publisher's brand equity is in its titles.

Thomas Phinney's picture

Nick, you are either not understanding what I wrote, or not understanding trademarks. Names such as Baskerville, Garamond, Caslon, Jenson and Bodoni cannot be trademarked for typefaces. They are in the public domain. By bringing up a name such as Gill Sans, which IS a trademark, you are likely to confuse people. It is not hard to find out if a name is trademarked.

Certainly, revivals are just that, and are not as original as new designs. I also don't see any point in doing a revival of something that is available from the original type foundry in decent digital form. However, this is a distinct issue from "am I going to get into trouble by doing this."

Nick writes: "It IS difficult to get one's fonts 'published through someone else' and retain rights, because most publishers will not publish typefaces unless they own the trademarks."

This is simply not true. ALL the biggest type foundries (Agfa Monotype, Linotype and Adobe) license designs from third parties where the third party retains the trademark.

However, at Adobe we generally have the copyright for the font software, even for trademarks we license from third parties. This is the case not because we are eager to own some piece of the pie, but because we want to do production work in-house due to quality concerns.

Cheers,

T

John Hudson's picture

Thomas, I think Nick is talking about individual designers publishing through a foundry, rather than licensing agreements between foundries. The kind of contracts offered vary considerably, but consider, for example, the contract for outside designers in the Adobe Originals library. This is the kind of publishing arrangement Nick is talking about.

billtroop's picture

>, if you will pardon the cheek of a "typographical nobody".<

How remarkable that a truly great, truly original typeface designer has actually posted to this dreary thread. Let Mr Rimmer's laudable modesty, from which we could all learn so much, deceive nobody. Confronted with Albertan, Jeff Level said, 'if Goudy had really understood type, he would have designed Albertan.'

John Hudson's picture

[Drifting off-topic -- hi, Bill --, speaking of Rimmer and Goudy: have you seen Jim's digital version of Goudy's Kaatskill? A very nice piece of work.]

Nick Shinn's picture

>By bringing up a name such as Gill Sans, which IS a trademark, you are likely to confuse people.

I don't have to, the situation with revivals is already confusing enough, which is why I am suggesting avoiding potential naming problems associated with revivals. Some names are not trademarked, such as Caslon, whereas others are trademarked, such as Gill San, and still others appear to be unnecessarily trademarked, such as Adobe Caslon.

When foundries such as ITC always put their initials in front of the name, and trademark both words, what is the status of the typeface name part? For instance, if I released a typeface named Souvenir, based on the early 20th C original (presumably in the public domain), would it result in legal action?

>This is simply not true. ALL the biggest type foundries (Agfa Monotype, Linotype and Adobe) license designs from third parties where the third party retains the trademark.

Thanks for clarifying this, John. Yes, I'm speaking about the initial publishing of a typeface, not the retailing/distribution of already published faces. If Thomas wants to verify the situation, he should try getting a large publisher to publish one of his designs, while he keeps the copyright and trademark!

johnbutler's picture

Mr. Shinn writes:
If Thomas wants to verify the situation, he should try getting a large publisher to publish one of his designs, while he keeps the copyright and trademark!

And yet my first google search for a counterexample immediately turned up this:

Thomas Phinney's picture

Exactly, John B. Not to mention many other such typefaces Adobe has published in the last 10 years where the trademark is still with the individual designer. Agfa Monotype has certainly done tons of these as well, licensed from individual designers who still hold the trademark. Nick is talking complete nonsense in this area.

Generally speaking, Adobe owns the trademark for all "Adobe Originals," and licenses the trademarks for other designs (though there are some exceptions).

With regards to Souvenir, I do not know the status of the trademark for sure. I note that ParaType sells an entirely different design called "Russian Souvenir" (1996), so I suspect that ITC's trademark only applies to the combined phrase, but I don't know for sure. Certainly Adobe's trademarks on Adobe Caslon, Adobe Jenson and Adobe Garamond only apply to the two words together (though we also have "Adobe" as a trademark).

Cheers,

T

dezcom's picture

>so I suspect that ITC's trademark only applies to the combined phrase, but I don't know for sure. Certainly Adobe's trademarks on Adobe Caslon, Adobe Jenson and Adobe Garamond only apply to the two words together<

So then it is a question of who is doing the trademarking? "Berthold City" obviously does not fit the mould of the other foundries Thomas mentioned.

ChrisL

Nick Shinn's picture

>Nick is talking complete nonsense in this area.

Thanks for straightening me out, Thomas. Despite many hours spent poring over contracts, the significance frequently escapes me. I checked the contracts (licence agreements) that I have with several foundries and found that either I retain the trademarks, or if not, they revert to me when the agreement is ended.

The only caution related to this, and I can't reveal which contract(s) it's in: if the contract is ended by either party, and the type designer subsequently decides to market either the font software or the trade name, then the original publisher is entitled to a cut of the revenue, based on its contribution to the font software or brand equity built up in the trade name by its marketing. The percentage to be negotiated.

In a situation where the publisher holds the copyright to the font software, but not the trademark, then if the designer wants out, and decides to market the typeface elsewhere, that could be problematic -- presumably he/she would have to create a font with somewhat different software than the original publisher's.

Thomas Phinney's picture

Ouch, that would be a painful contract to deal with, afterwards! I can see the reasoning behind that clause, but still....

With regards to font software copyright, all I can say is that when it's a non-exclusive license arrangement with Adobe, it seems to be the case that the designer can take the same stuff they gave us, and license or modify it as they please. This was at least the case with Arcana. Although we will provide Gabriel the version that we have done our work on, he cannot take that version and license or sell it to others. However, whether this works for everyone depends on their particular contract terms; this should not be taken as a general comment about all such non-exclusive contracts, or even all of Adobe's non-exclusive type licensing contracts.

Beyond this, I figure I ought to bow out of this discussion. The whole thing is ultimately a legal minefield, and I imagine Adobe's lawyers would rather I did not discuss this stuff, given the litigious age we live in. :-(

Cheers,

T

emp's picture

Can we sum this up in a book, please?

petra's picture

FYI
FontFont designers retain the copyright to the fonts no matter how much work FontShop International has actually contributed to the ready product.
FontShop International registers the name as a trademark, but should the contract be terminated, the designer may use the name (without the prefix FF), provided FSI gets refunded for any legal fees incurred (usually only the fee to the trademark office).
Thankfully, we only had one contract termination in our history, Thesis, and you all know that Lucas is still using the name.

Nick Shinn's picture

>Ouch, that would be a painful contract to deal with, afterwards!

When contract disputes can't be readily resolved, the use of an arbitrator to settle differences will remove the need for costly legal battles.

This can be stipulated upfront in a contract, by either party.

billtroop's picture

> I imagine Adobe's lawyers would rather I did not discuss this stuff, given the litigious age we live in.

Quite right, Thomas. After all, Adobe's Donna Kolness makes Melissa Hunt look like a real pussycat.

[Moderator comment: This post has been edited for name calling and inuendo.]

Nick Shinn's picture

Bill, that was cheap, dirty, and sexist.

billtroop's picture

Oh, a plague on North American PC, which will get you censored for _not_ using a four-letter word! (and regarding which, see Nikki Finke's latest column in LA Weekly, which you can get off the Drudge Report) ... but I ought to apologize for witlessness, because if I had my wits about me, I would have brought up my one experience with trademark infringement, i.e., when Adobe sent me a slew of threat letters warning me against using 'their trademark' and 'their typeface data' in any product of my own. Needless to say, the trademark and data they referred to were mine. I told Adobe I was using the data regardless, and if they didn't like it they could sue me. As that was some years ago and I haven't heard a word from them since, it seems clear that their threat was empty, designed merely to scare a designer whom they had treated badly. One thing I have observed: when an industry is growing, there is no litigation; when an industry is dying, there is nothing but litigation.

What effect did it have on me? I went from working on type for at least 60 hours a week, to working on type for about 60 hours a year. The advantage is that I started doing some other interesting things that were important to me; the disadvantage is that I would have preferred to work on type, but who could deal with such a poisonous environment? I didn't go into type to be reviled and sued by unspeakable persons like Adobe's Donna Kolness. I went into type to create beautiful text.

That said, I am looking at a contract from a perfectly nice foundry, but I can't yet bring myself to sign it. I fear what may follow. However, this time around, if it actually happens, I ought to have enough experience to sign a better contract. I never looked at Adobe's contract - I was too happy to have it. I trusted them implicitly, believed in their fundamental goodness.

hberthold's picture

In addition to my previous posts, following are additional points:

The Berthold Exklusiv Collection was conceived by GGL about 50 years ago and completed by the time he left H. Berthold AG in 1990.

The type business was very different back then as the Berthold typefaces were specific to Berthold equipment, as was the case with Linotype and Monotype. When a designer had one of their typeface designs published by Berthold, the agreement provided that Berthold was the owner of the intellectual property rights because of the high costs of bringing a Berthold typeface to market.

The creative process of digitizing and creating the full character sets were done under GGL's supervision at the Berthold Type Atelier in Munich. In most cases only the essential characters were digitized and then the remaining characters were then created by Berthold. H. Berthold AG was always listed as co-author of the typeface designs.

The font software for the Berthold Exklusiv Collection was developed by Berthold. When Berthold Types took over the library, Poppl and Jaeger insisted on renegotiating their original contracts and wanted ownership of the Berthold copyrighted font software.

Albert Boton had already made a deal with another foundry (using Berthold's copyrighted data) for the other typeface in the Berthold library and only wanted to sign an agreement with the typeface Boton and have Berthold withdraw Agora.

Berthold typeface designs can be found in the libraries of Bitstream, E+F, Linotype, Paratype, Scangraphic and URW all used without permission with no money going to Lange, other Berthold designers, or to Berthold for that matter.

FF Blur is Lange's AG Old Face processed through Photoshop with the "blur" filter. FSI does not pay Lange royalties or Berthold for use of the data to create a derivative.

Problems with typeface names were virtually non-existant (by today's standards) until the advent of PostScript and programs like Fontographer that enabled hundreds of people to produce fonts. Berthold's trademarks have been around for decades.

With all due respect to Mr. Shipovsky (FontCity) but his Russian attorney's "opinion" is worthless in regard to U.S. and EU law.

Finally, there is a co-existence agreement between Linotype and Monotype for the "Times" trademark and Adobe pays royalties to both companies for use of it.

The fact that both companies use the "Times" trademark, therefore, should not be seen as the right to use other people's trademarks for new typeface names (e.g. Boogaloo Boulevard, Omicron Delta, City of --- ). Boulevard and Delta have been trademarks owned by the Berthold foundry for decades.

miles's picture

>FF Blur is Lange's AG Old Face processed
>through Photoshop with the "blur" filter. FSI
>does not pay Lange royalties or Berthold for
>use of the data to create a derivative.

Disgusting.

billtroop's picture

Just to take a little point here, I suspect the 'Times' trademark is not capable of being defended because of its decades-prior use by ATF, for example, as in Times Gothic, a typeface shown (but not identified) by Tracy as an example of Will Ransom's design. 'Times Roman' perhaps, but not 'Times' per se in a typeface. In fact, if anything, Mono and Lino are in violation of ATF's rights for attempting to assert trademark ownership in any typeface containing the word 'Times'. One has got oneself into a very absurd position when one is reduced to discussing what rights Lino and Mono might have in Times and whether Adobe should be paying for those rights or not.

One wonders if there has been any friction between Agfa and Berthold over the use of tradenames such as Bembo? For example, Mono made it impossible for Scangraphic to sell its versions of faces such as Bembo, Perpetua, Centaur & Poliphilus on the grounds that the license was for Scangraphic's proprietary format and could not be applied to the Postscript conversions.

With all this dreadful litigation going on, we still don't have a usable digital version of Bembo. The Mono version is incorrectly designed. The Berthold version is correctly designed but only has two f-ligs, and those incorrectly designed. The illegal Scangraphic design is also correctly designed but the five f-ligs are merely generic, much like Adobe's ahistorical f-ligs for the 'expert' versions of the Berthold faces they used to license. The last thing they were was expert. I wonder what drudge designed them?

License, license, and litigation, yak-yak, and yet nobody ever solves the problems in the fonts. As the redoubtable Ed Mendelsohn said years ago, 'I would pay good money for a usable version of Bembo, and this despite the fact that I have two children to educate.'

Harvey, the last time I saw you your jaw had fallen and you couldn't get it up. Is it now in working order?

mojuba's picture

> FF Blur is Lange's AG Old Face processed
> through Photoshop with the "blur" filter. FSI
> does not pay Lange royalties or Berthold for
> use of the data to create a derivative.

One cannot nevertheless at all have so little knowledge of fonts. Or?

[preusss]

William Berkson's picture

In response to Miles' and Ingo's posting I compared FF Blur and Akzidenz Grotesque. There are a lot of differences in letterforms. For example compare the lower case a and c in the two faces. I guess this is their point - a simple check shows Hunt's accusation is unfounded.

victor's picture

Actually, it's worse than that. Hunt claims that it is a filtered version of AG Old Face. Take a look.

Victor

billtroop's picture

A superficial glance reveals that if Brody used someone else's underlying font, it probably wasn't AG or AG Old Face but more likely one with a more open C. Harvey, do you have any proof N Brody did this? I'm open to persuasion but I'll require proof. That takes care of the first issue: did he do it? The second issue is, what does it matter? (In this particular case, that is, for a dozen obvious reasons.)

And by the way, if you were going to use the PS Blur filter, why on earth would you bother to use a vector font as your input? You could use a scan of anything - that would be the obvious thing to do. For the moment you'll have to count me amongst the rude unpersuaded.

And by the way, suppose Brody didn't use vector data, but used a scan from some old specimen book. Would you still have an issue with that?

Here's another question: to what extent is Concorde a Times clone? As I understand the story, it was intended as a Times clone, even though it doesn't really look like one. But in intent, it is, to a certain extent, a Times clone. Does anyone have an issue with that?

And what about that version of AG that actually is a Helvetica clone? Is Berthold expected to pay Lino, or the estate of Max Miedinger, royalties on that?

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