NBC gets served for $2 Million

Zara Evens's picture
blank's picture

FB should demand another million for NBC associating the fonts with the horrible cast SNL has had over the last couple of seasons. Best wishes for the settlement!

Mark Simonson's picture

Someone should have checked which fonts were used in the examples in the illustration that accompanies the article. Isn't the SNL logo set in Gotham (not from FB)?

Down10's picture

Learn the difference between a single-user license and a site license before you use the fonts in your nationwide marketing materials.

typerror's picture

Looks like Sam and Dave are looking to retire early.

Shame they did not go after the piracy of my font with the same vigor!

Michael

david h's picture

> "no less than $2 million", "caused injury to Font Bureau's relationships with present and prospective customers," "will cause confusion, mistake and deception as to the source of Font Bureau's trademarks."

who's the lawyer? with that he wants to go to court?

>"which would only permit the company to install the typefaces on a single computer.... But NBC went ahead and copied the fonts"

so, that was in-house design, for sure?

Rob O. Font's picture

Michael,

If your font(s) had been in this situation, the same actions would have resulted.

Cheers!

kentlew's picture

Maybe Nick Cooke should check to see if they have an appropriate license for Houschka Pro?

Nick Cooke's picture

Discussions are ongoing at the moment Kent.

Nick Cooke

Ed_Aranda's picture

I'm left wondering if NBC’s designer(s) are going to get canned for not being more attentive to the EULA. When your design work gets that level of exposure, you have to be prepared to deal with the consequences of not knowing or abiding by protocol.

joeclark's picture

Actually, I would say the Font Bureau’s “relationship with present... customers” was to tacitly permit nonlicensed use... up to the moment that suit was filed. It seems to be a method of warning “prospective customers” that “we’ll sue the shit out of you if you so much as look at us funny.” This, incidentally, might not be a bad attitude to take. Somebody’s got to.

Are we not allowed to utter the word “Swifte” here?


Joe Clark
http://joeclark.org/

typerror's picture

David

Pouty was ripped and re-copyrighted by a Russian woman and ultimately given away. The last time I looked at the site there were 243 downloads. When I reported it a year ago I was told foundries were only going after the "BIG" guys.

Michael

Thomas Phinney's picture

@David H: Frank Martinez is the lawyer for Font Bureau. Few people (if anyone) know more about the intellectual property laws surrounding fonts. Among other things, Frank is a former graphic designer, and a former patent office examiner....

@Michael: Was the Russian woman living in Russia?

I've never heard of any font IP case being prosecuted successfully in Russia, and I've heard several lawyers in the industry say that it is pointless to even try.

Cheers,

T

typerror's picture

Yes, she lives in Russia. I also informed you, or Adobe rather, that Bickham was being ripped, along with some Linotype and several other foundries. I was amazed at the site. Pretty brazen. I think at one time she was associated with ITC. I think Frank got involved and quite a bit of it was pulled down, but Pouty persisted for quite some time. Available on the "101" site and a ton were downloaded. Just roughly, I calculated the losses at about 7500. Now whether they would have "BOUGHT" them is a whole different question.

Michael

weinziet's picture

I think that this lawsuit is a good thing; it reminds people that misusing a license or someone's IP is wrong. It is good publicity for the type industry as a whole. Don't you think more people will become aware of proper font licensing as a result? I just saw something on the WSJ about it.

http://blogs.wsj.com/law/2009/10/09/nbc-hit-with-font-infringement-suit-...

k.l.'s picture

Yep. I am confused to see that type designers lament about EULA violations yet if one of them responds that's not right either. My spontaneous reaction is thank you.

yipyop's picture

Makes me think IKEA's recent corporate typeface switcheroo may not be such a dumb idea after all? ;)

dezcom's picture

Frank Martinez is well suited for the job.

ChrisL

Richard Fink's picture

I hope this goes to a decision, not a settlement.

Richard Fink's picture

@zara evens

Thank you so much for posting this. Awesome indeed, but to me for different reasons, I suspect. I've been reading the complaint and looking at the exhibits - all of it available via Scribd links in the article. (Ya gotta love the web.)
I now doubly hope this goes to a decision and not a settlement because then there will be an extensive transcript, too.

Two facts stand out to me so far:

1) The three fonts Font Bureau is claiming to have been infringed are "Bureau Grotesque", "Antenna", and "Interstate".
I am now deeply interested to what degree those fonts can be considered "original expression".
I would imagine this would also be one line of defense for NBC.

2) The invoice to NBC for those fonts (bought online) is being used as prima facia evidence that NBC both obtained (paid for it, certainly) and used (presumably) those fonts in violation - or so plaintiff says - of Font Bureau's EULA.
I'm sure it will also be claimed that the invoice amounts to a tacit acknowledgment by NBC that said fonts are, indeed, copyrightable and that the license terms are, therefore, legit.

But since there are so many typefaces nearly identical in design, and the designers at a behemoth like NBC would surely experiment with many different fonts before making a decision, how is it going to be ascertained that NBC did, indeed, use these three exact fonts?

Fascinating.

The simple truth is that any font designer can bring a suit claiming infringement against anyone and do so relatively cheaply. But defending against it can be very expensive no matter how off-the-mark it may be.
However, if the basis of the complaint is just a similarity in look, it's a rather thin argument. Bolstering it with a documented purchase, however, much stronger.

Unfortunately, for some, the lesson here might be to think twice before buying any commercial font.

This isn't a football game where one roots for one or the other "side". There's always two sides and real-world consequences.

Awesome.

Miss Tiffany's picture

How does original expression even figure into it at this point? NBC used fonts which can be proved to be those owned by Font Bureau.

dezcom's picture

I should just leave legal matters to lawyers since my legal authority is limited to watching episodes of "Boston Legal" on another network :-)

ChrisL

John Hudson's picture

Rich, this is a straightforward software license violation suit, just like many others in which a software licensor sues a company for either unlicensed use of software or for violation of a license agreement. The fact that the software in question is fonts rather than, say, Adobe Photoshop, is irrelevant: this is a software licensing suit, not a typeface intellectual property suit.

Rob O. Font's picture

Can one actually get a law degree at any McDonald's in Canada? I heard that if you buy one happy meal, one hot apple pie, a piping hot cup of coffee and no tray, you get a diploma from Cole's Law University, located just south of Mouse Jaw. It must be true, I heard it here.

Cheers!

joeclark's picture

Don’t ask me, Berlow. I don’t eat at McDonald’s, since everything there is steeped in cow fat.


Joe Clark
http://joeclark.org/

John Hudson's picture

On the other hand, Joe, you are unlikely to hear the word charcuterie uttered in McDonalds. :)

Stephen Coles's picture

Michael, I share your frustration about the sites offering unlicensed fonts for download, but I think the Font Bureau’s efforts are wisely placed in the prosecution of high-profile unlicensed font use more than their distribution by entities that are much more difficult to track and enforce. A case like this offers the most bang for the buck in publicizing the importance of proper licensing.

Richard Fink's picture

@johnhudson

"this is a software licensing suit, not a typeface intellectual property suit."

I think I understand what you mean by this. But one line of defense is always that said property was not eligible, as IP, for licensing at all. (In patent suits, invalidating the patent is always the surest - and sometimes the easiest - way to go but whether that line is available here, I have no idea.)
I mean, can you license an egg? Unless you pay extra, you can only eat it hard-boiled, not scrambled or poached? I don't know.

I have two questions I will be calling Martinez's office about, as a journalist, on Tuesday:

1) Was NBC given, prior to filing the suit, the opportunity to rectify Font Bureau's claim by simply purchasing a license that covered the usage?

2) Is Herb Martinez's firm working on a contingency or partial contingency basis?

Of course, I may have more questions by then.

Do they do Columbus Day in Canada?

Cheers, rich

John Hudson's picture

Rich, what is being licensed is not a right to IP, but a right to use the font software, so I really don't see how IP is at all relevant. When I license Adobe InDesign, I'm not licensing the IP -- that is, I am not purchasing the right to reuse of Adobe copyrighted code or patented techniques --, I'm just purchasing the right to use the software for the purposes and in the ways permitted by the license agreement. Same with fonts.

That said, the USCO has explicitly recognised that fonts are may be copyrighted as computer programs, and the summary judgement in the Adobe vs. SSi case confirmed that this pertains also to the outlines, so even if this were an IP case I don't think there would be any question of the eligibility of the fonts to protection.

Do they do Columbus Day in Canada.

No. It's our Thanksgiving weekend up here, an end-of-harvest festival.

By the way, it's Frank Martinez, not Herb Martinez.

Richard Fink's picture

@johnhudson

(Thanks for the correction. Not Herb, Frank. I've got Herb on the brain. A Freudian thing, no doubt. But Herb always was quite frank!)

Anyway, Frank Martinez (who I met at Typecon) has a website where there is interesting stuff germaine to this topic to be read:
The Martinez Group - Litigation
I've also been reading some Atypi presentations and all kinds of stuff with an eye to the possible legal consequences of using for-pay web fonts.

Anyway, I'm not understanding you on this at all.
How can there be a license to use something unless there is, presumably, a right on the part of the licensor that remains attached even after the item is transferred?
You say I'm buying the "right to use" the thing. OK, understood.
But if the thing is not protected in the first place, there is no "right to use" to be obtained in the first place. The idea of a license, a "right to use" is predicated on copyright.
Sorry, sometimes I'm thick, but what you seem to be saying is that anything can be licensed, and the license can be enforced, even if the licensor has no claim on the item after transfer.
To use the analogy one more time: you seem to be saying that if I buy an egg from you under the terms of a contract that says I'm only to eat it hard-boiled but, dammit, you've got pictures of me eating it scrambled, that you can claim damages because it's going to be harder to license more eggs to other clients in the future. (As the Font Bureau's complaint puts it. But no eggs, of course.)
The only problem with this is that you never had any rights to the egg in the first place because it was just an egg, so that leaves you with only breach of contract and what damages could you legitimately claim?
I don't call up Herman Miller to license a chair. I don't go to the local Honda dealership to license a car.
After I've purchased those things I can do what I want with them, period. I own them lock, stock, and barrel.
Licensing a "right to use" the font software is dependent upon the font software being protected IP. Otherwise, there may be a nonsensical contract, but there is no license.
Are you saying otherwise?

(I'll pass on the significance or lack thereof, of Adobe v Southern Software other than to say I've read the decision.)

End of harvest, eh? I love it.

Regards, Rich

John Hudson's picture

The idea of a license, a “right to use” is predicated on copyright.

The fact that B is predicated on A does not mean that A is at issue whenever B is at issue. Licensing law is fundamentally contract law; specific types of contracts may be predicated on intellectual property law, but that does not imply that lawsuits regarding such contracts are intellectual property suits. I don't believe that the copyrightability of fonts as computer programs under US law is at issue in this licensing case.

But I'm not a lawyer. And you're not a lawyer. If you'll excuse me, I have to go stare down a herd of buffalo now. It's a Canadian Thanksgiving tradition.

Rob O. Font's picture

>(As the Font Bureau’s complaint puts it. But no eggs, of course.)

Clearly, a minor blow to your analogy. But do go on. ;)

>I don’t call up Herman Miller to license a chair. I don’t go to the local Honda dealership to license a car.

Generally, one buys or leases a product, and licenses a design. Herb Miller and Honda both do all three.

John, how does one get a stuffed buffalo into an oven, much less out? It expands doesn't it?

Cheers!

Ehague's picture

>I don’t call up Herman Miller to license a chair. I don’t go to the local Honda dealership to license a car.

Take a look at Title 17 § 106. The idea is that as the owner of a copyright, one has exclusive rights to do a few things with that copyrighted work. Generally one can sell or conditionally license these rights. Similarly, if you don’t own a copyright to a particular work, and you wish to do any of the things to which the owner of the copyright holds exclusive rights (again, generally) you have to negotiate with the owner to do those things.

Seriously. Bravo, Font Bureau.

William Berkson's picture

Rich, my impression is that lawyers can and on occasion will use any argument to win their case, whether it is legitimate or not, consistent or not. Thus NBC could try to challenge whether Font Bureau owns any rights to the fonts, and hence whether their EULA is a legally binding contract.

But then NBC would in effect be challenging whether any software EULA for fonts is valid. In light of SSI vs Abobe, I doubt they would be successful, and hence probably NBC won't try this strategy. I am just guessing, as I have no training in law.

Because SSI vs Adobe established protection of fonts as software, and undoubtedly software was licensed from Font Bureau and used by NBC, I don't think that an argument about the originality of these particular fonts as designs would be relevant, as they would pass the test of SSI for original software. Again, lawyers can try any argument, but I don't see how it would work before a judge.

Also re-litigating SSI vs Adobe would likely be an expensive matter for NBC to do, which they would want to do only if they were concerned to establish a principle important to their business. And I don't see how this is. To put this into perspective, according to one figure I just found it costs 3 million dollars to produce one hour of a sitcom. In contrast, paying for new fonts each year will be a tiny fraction of that.

Richard Fink's picture

@william berkson

I have no illusions. A quick settlement is what is being sought and what will, probably, be gotten.
Prolonged litigation is fabulously expensive.
On the Martinez group's web site (link to the litigation page is in a previous comment), it's made clear that settlement is the aim.

Disclaimer: I am not a lawyer. The following is nothing more than opinion and reportage of the legal precautions and calculations that take place in the world.

To continue, Bill:
Where NBC screwed up is in buying the font online using a NBC credit card or somesuch. It proves access and gives the complaint legs. It's much more difficult to prove access without it. It's the last time NBC will be doing that, I assume.
And it would not surprise me if this ran counter to existing policies within NBC.
Businesses with deep-pockets are constantly sued. Some suits are legit, some concocted. But it's routine to create barriers to potential liability such as using shell entities to conduct business, etc., to provide a shield.
For example, if the design department were to be spun off as a single-client entity - a business of it's own - it would be much more difficult to drag NBC into the fray.
And the bells that went off at Font Bureau when NBC purchased those fonts would not have rung, most probably.
My feeling is that from the day of that purchase onward they were being stalked for any sign that the basic license had been exceeded. I do not know if Font Bureau's claim is true or not. But the whole idea of a purchase triggering a surveillance of sorts, I find a little creepy. I mean, do you think someone at FB just woke up one day and said, "Hey! There's our fonts on Jay Leno!"
Instead of NBC it could be me or you or anybody, really.
I recently bought a particular weight of Kent Lew's font "Whitman" from the Font Bureau. And it gives me pause.
(Well, more than pause, but another time and place, not here.)
Anyway, perhaps because so much of NBC's core business is copyright related, it simply isn't (or wasn't) worth the confusion for them to take these precautions, who knows.

The world we live in. Interesting (and sometimes troubling) times.

William Berkson's picture

>Stalking.

Ok, I'm an interested party because Font Bureau will soon be releasing my Williams Caslon retail. But really Rich, if somebody rips me off and I complain to the law, I'm the bad guy, I'm a stalker? That's upside-down ethics, and suicide for foundries and type designers.

Are you advocating that foundries never monitor the very public use of their fonts? When a marketing firm (IIRC) ripped off FF Dax and it ended up on every UPS truck in the world without being paid for, FontFont should have ignored it? Or when P22's Cezanne wasn't licensed properly by Starbucks, and it was all over their walls around the country, they should have just shut up?

If big companies whose fonts appear all over the country are not one in a while threatend with a law suit for very publicly violating a font EULA, such as in this case or the Dax or Cezanne case (both settled out of court IIRC), then EULAs will become meaningless.

Unless you are planning to put it on a hundred computers without paying the license fees, why would this complaint cause you worry about your ownership of a one-computer license for Kent Lew's fabulous Whitman?

Thomas Phinney's picture

I mean, do you think someone at FB just woke up one day and said, “Hey! There’s our fonts on Jay Leno!”

Yes, that's exactly what I think happened. Unless (less likely) somebody at NBC tipped off FB.

The idea that font vendors in general, or FB in particular, routinely "stalk" big companies who purchase just one license for a font is pretty hilarious, actually. They don't have the time to waste. Mind you, I'm also fond of using Occam's Razor in my inductive thought.

(Heh. First time I typed that last sentence, I wrote "font" for "fond"....)

Cheers,

T

John Nolan's picture

OT:
"Ok, I’m an interested party because Font Bureau will soon be releasing my Williams Caslon retail."

REALLY! When?

blank's picture

My feeling is that from the day of that purchase onward they were being stalked for any sign that the basic license had been exceeded.

Do you have the first clue how much time type design takes? If you think that anybody at Font Bureau has time to stalk customers for license violations you’re both paranoid and not applying critical thinking skills.

William Berkson's picture

John, I'm not sure exactly, but "soon". I'll post some samples this week.

John Hudson's picture

Rich: My feeling is that from the day of that purchase onward they were being stalked for any sign that the basic license had been exceeded.

Your ‘feeling’ is erroneous.

We're talking about very high profile font use: fonts used in a television season branding campaign by a major media corporation. When fonts are used in such a high profile way, I think it is sensible for foundries to check their license sales logs. The fonts are contributing massive added value to the media corporations campaign, and should be properly licensed and paid for. Further, as explained during the web fonts discussions, much of the value in fonts, for the professional designers who are the principle market for font licensing, resides in real, partial or perceived exclusivity. If major TV network ‘A’ are using specific fonts in their season branding, other networks will want to avoid using the same fonts so that their own branding is not diluted. So high profile font use by one major customer diminishes the likelihood of licensing by other customers in the same business or marketplace. Hence the basis of potential damages. If NBC had properly licensed the fonts to use them in the ways in which they intended to use them, they would have reasonably compensated Font Bureau for the likely loss of other sales.

Ed_Aranda's picture

Forgive me if this has been discussed already, as I skipped reading the last few posts. As I understand it, the validity of this suit depends on whether or not the terms of the EULA were violated by NBC, more specifically that a license for the font, legally purchased for a finite number of computers, was installed and subsequently used on a number of computers exceeding the terms of the agreement. Assuming my facts are straight, could NBC theoretically claim that Font Bureau has no way of proving how many computers the font was installed on? For all they know, all of the design work in question could have come from the same designer on the same machine. Or is there something I’m missing that would refute such a claim?

Si_Daniels's picture

I've seen enough law shows on TV to know that there's a "discovery" phase in such cases, but there needs to be some evidence of wrong-doing to avoid claims of a "fishing expedition"

dezcom's picture

I am sure that Font Bureau and their very capable legal consultant did not just jump in to a suit without something more than a "Gee, I wonder if" whim. All of us speculators with experience limited to old episodes of Perry Mason, myself included, should perhaps just sit back and let the real folks involved do their own thing without us mucking up the works.

ChrisL

blank's picture

Or is there something I’m missing that would refute such a claim?

A law degree.

joeclark's picture

I love how the “moderators” have allowed this topic to italicize itself into oblivion.


Joe Clark
http://joeclark.org/

joeclark's picture

Shall we try turning italics off?



Joe Clark
http://joeclark.org/

Don McCahill's picture

No italics on my machine, Joe, except for the places where they should be ... in a few short quotes. And definitely nothing that deserves another dig at the moderators. Save that for the thread where it should be.

Ed_Aranda's picture

A law degree.

Sorry, did not know I needed a degree to speculate about a legal matter. I guess the next time I have to change my oil I'll become a certified mechanic. And I definitely can't cook dinner until I finish my masters at the Culinary Institute of America.

Seriously though, I think my point was valid, though maybe unsubstantiated due to a lack of information.

stormbind's picture

It's perfectly OK. There are judges who narrowly passed or resat their degrees, and probably know less than you do. I fear this thread's speculations may be over-analysed as the judge is likely to encourage settlement as a means to avoid publicly exposing their own inability.

Thomas Phinney's picture

The snarkiness was uncalled for. But....

As I understand it, the validity of this suit depends on whether or not the terms of the EULA were violated by NBC....

Well, that depends on what you mean. Did you read the lawsuit filing? I mean, yes, the six causes of action are all predicated on the idea that the EULA NBC had (a single-user license for just one of the three families in question, namely Interstate) did not permit NBC to do what they did. But if NBC had never had a license at all, five of the six causes of action would all still be there; only "breach of contract" would go away.

Cheers,

T

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