Commentary June 30, 2002 The terror of Linotype continues in 2002

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¶ Continuing a trend started in 2001, Linotype is stepping up its selective harassment of typographers in 2002. I already commented on the 2001 case against TypOasis based on its alleged use of the trademarked name Helvetica (the TypOasis font was called HelvAssim, and the font did not even resemble the Helvetica font). Several other cases have come to my attention, and by extrapolation, there must be hundreds of others that go unreported. This is not a time to be chicken. I will argue once again why people should not put up with this, and give some legal tips on how to respond to the Linotype lawyers. I said "selective" because a certain stratum of the population is targeted (Linotype steers clear of bigger fish, or companies with lawyers), I said "harassment" because most of the Linotype claims are ludicrous, and I said "harassment of typographers" because that is precisely what is happening---the very people that should be courted, talents like Dieter Steffmann, are in fact alienated and demonized. Linotype might be in financial trouble, but that does not mean that they have to extract or try to extract large sums of money from poor unsuspecting artists. In this page, we document Linotype's own manipulation of trademark law, and possible infringements of that law. They have stepped over the limit of the acceptable, and should look carefully in the mirror before accusing anyone else of trademark or copyright infringement.

Trademark law

¶ What is a trademark? According to the US Patents and Trademarks Office, a trademark includes any word, name, symbol, or device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name. See also here. Any application of the trademark should include a typed drawing of the trademark, so that the emphasis is clearly on the visual aspect. Registration is not necessary, although it is often recommended. Can the Office refuse to register a mark? Here is the USPTO's reply: Yes. The Office will refuse to register matter if it does not function as a trademark. Not all words, names, symbols or devices function as trademarks. For example, matter which is merely the generic name of the goods on which it is used cannot be registered. Additionally, Section 2 of the Trademark Act (15 U.S.C. §1052) contains several of the most common (though not the only) grounds for refusing registration. The grounds for refusal under Section 2 may be summarized as: 1. the proposed mark consists of or comprises immoral, deceptive, or scandalous matter; 2. the proposed mark may disparage or falsely suggest a connection with persons (living or dead), institutions, beliefs, or national symbols, or bring them into contempt or disrepute; 3. the proposed mark consists of or comprises the flag or coat of arms, or other insignia of the United States, or of any State or municipality, or of any foreign nation; 4. the proposed mark consists of or comprises a name, portrait or signature identifying a particular living individual, except by that individual's written consent; or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow; 5. the proposed mark so resembles a mark already registered in the Patent and Trademark Office (PTO) that use of the mark on applicant's goods or services are likely to cause confusion, mistake, or deception; 6. the proposed mark is merely descriptive or deceptively misdescriptive of applicant's goods or services; 7. the proposed mark is primarily geographically descriptive or deceptively geographically misdescriptive of applicant's goods or services; 8. the proposed mark is primarily merely a surname; and 9. matter that, as a whole, is functional. The Helvetica name was trademarked by Linotype-Hell AG on January 9, 1973. Let's see: how likely is it that a company could trademark the name "Japanese", or "Japonais", or "Francais", or "Gallia", or "Belgica"? Under item 7, we note that geographic names should be avoided as trademarks. Helvetica, the Latin word for "Swiss", falls under this category, I assume, but was smuggled past the USPTO in some way. As another example, Cascade fails on two grounds: it is a generic name (item 9), meaning waterfall, and it is the name of a place in Montana, where a foundry, Skeldale House Treasures, run by Robyn Phillips, was located at 215 Cooper Drive, Cascade, Montana, USA, 59421-8406. So, Cascade fails the test on the basis of item 7 as well.

Case 1: Hellvetica

¶ In May 2002, Dirk Uhlenbrock set up a foundry called Hellvetica.net. He was contacted by Linotype and forced to change its name. It is now known as TYPETYPE. Well, the argument about Helvetica was already made above and elsewhere. I entered the name Hellvetica in google, and got 3350 hits. Hellvetica is, among other things: The name of a font by Sander Kessels made in 1993 (actually, the font is called GoToHellvetica). Shown in the figure is Kessels's GoToHellvetica. Now, if TypOasis was sued over HelvAssim, why was Kessels not sued over GoToHellvetica? I suggest that it is because he is part of the "in crowd". The motto of Kampa Design. This graphic was made by a respectable design firm for AIGA, one of the major graphic design associations. Were they sued by Linotype? The name of a person making strips. The name of a type site run by M-74. A comic book character, Hector Hellvetica, created by Dave Johnson. Hmmm, any resemblance to Bruno Steinert? I can't believe that Linotype is going after each of these. The fact that these names have been in use for years means that in fact, they did not, and this raises the specter of selective targeting.

Case 2: MXCascade

¶ Cascade was registered as a trademark at the US Patents and trademarks Office as a trademark on December 20, 1983 by Allied Corporation of New York, and that trademark (registration number 1261515) is now owned by Linotype Corporation. We argued above about the silliness of the name Cascade as a trademark. The only possible defense is that maybe, just maybe, the drawing (the shapes of the characters) is something that constitutes "branding". I don't think so, but that could be it. If that is the case, Linotype should not object to any other forms of letters with the name Cascade, but that is exactly what they did in the case of Markus Wäger Designwerke from Austria, when Markus Wäger published his creation MXCascade. This design cannot possibly be confused with Linotype's Cascade. The original posting by Markus Waeger as seen on macnews.de: Von: Markus Waeger Antworten an: typo@lists.macnews.de Datum: Tue, 25 Jun 2002 09:04:34 +0200 An: typo@lists.macnews.de Betreff: Markenrechtsverletzung Hallo liebe Liste, Als typobegeisterter Grafikdesigner habe ich meine Freizeit auch schon damit verbracht Schriften zu gestalten. Und natürlich haben diese meine Kinder auch Namen bekommen. Um die Welt Anteil an meinen Schöpfungen nehmen zu lassen ( :-) habe ich sie dann in den tiefen meiner Homepage zum freien Download angeboten. Nun fuhr mir aber der Schrecken in die Knochen, als ich von der Rechtsabteilung von Heidelberg ein Schreiben in meinem E-Postkasten hatte, dass der Name einer dieser Schriften bereits von Linotype registriert sei, ich die Schrift umgehend vom Netz zu nehmen habe (habe ich auch sofort gemacht) und eine Unterlassungserklärung an Linotype zurück zu senden. In der ich mich verpflichte einen fünfstelligen Eurobetrag an Linotype zu entrichten. Wenn ich diese Unterlassungserklärung nun unterschreibe, dann werde sich Linotype überlegen ob ein anstehender Beitrag über ca. 300 Euro, zu den Kosten, die Linotype durch den Schutz seiner Markenrechte und das Aufspüren von Markenrechtsverletzungen entstehen, verrechnet werde oder nicht. Natürlich habe ich vollstes Verständnis dafür, dass Linotype darum bemüht ist, um teures Geld eingekaufte Markenrechte zu schützen. Aber da ich diese Schrift ja nirgends beworben habe und auch nicht kommerziell vertrieben habe, empfinde ich dieses Vorgehen als unangemessen. Wer nun kennt sich aus mit der rechtlichen Lage? Empfiehlt es sich, die Unterlassungserklärung zu unterschreiben, oder liefere ich mich da Linotype erst recht aus? Ist es überhaupt eine Markenrechtsverletzung, wenn die Linotype Schrift Cascade heisst, ich aber meine Schrift MXCascade genannt habe? Wer kann über ähnliche Erfahrungen berichten? Wie kann ich eine Schrift benennen, die ich verschenken wollte und somit natürlich weder die Kosten für eine Prüfung registrierter Namen noch eine allfällige Registrierung eines eigenen Namens auf mich nehmen möchte? Besser keine Schrift mehr machen? Oder einfach nicht mehr verschenken? Liebe Grüße Markus In a nutshell, Markus objects to Linotype's strong-worded lawyers' letter demanding over 10,000 Euros in compensation just for posting a free non-commercial font that does not resemble Linotype Cascade, and even carries a different name, MXCascade. Markus makes a good point--suppose he wants to give away a font, say as a present. Is he to register that font (with all the costs involved)? Is it better not to make fonts then? Or is it better not to make free fonts? Personally, I think that this is one of the sore points: Linotype does not like the free font makers. They are scary and take away market share. Four fonts with the name Cascade embedded. Guess which one does not belong! The top one is CascadeScript by Adobe/Linotype. The second one is the only free one, and the only one that looks different. The third one was sold by Qualitype, and is an obvious rip-off. The fourth one is sold on the Fantazia Fonts and Sounds CD, and it too is a rip-off. The only font properly kerned is MXCascade. The Adobe font has poor kerning (check between i and p), while the Qualitype version has awful kerning (check "de") and the Fantazia version is unusable (check space between a and d). Guess which one was sued by Linotype? Incredible, isn't it?

Case 3: CWE

¶ CWE is an archive site on Christmas Island. Although not in the category of font designers harassed by Linotype, these people too received a lawyer's letter from Linotype, this time on March 20th, 2002. In this letter, the site was asked to remove 10 fonts, including Cascade, Univers, Isadora, Helvetica, Shelley Script, Linotext, Linoscript, Optima, Palatino, Peignot, Frutiger and Flora, on the grounds of trademark violations. This text was part of the letter: we reserve the right to claim the costs involved in all legal proceedings against you. These costs come up to US$ 300,00. We ask you to send us a signed and valid cheque to settle this issue. As in the other cases, the letter was signed by Lic. iur. Nihal Yilmaz Director Legal Department Linotype Library GmbH Du-Pont-Straße 1 61352 Bad Homburg phone: +49-6172-484-2450 fax: +49-6172-484-2408 e-mail: nyilmaz@linotypelibrary.com www.LinotypeLibrary.com This sure starts smelling like an organized money-grab! The person at CWE, Craig Miller, told Linotype that their information was partially wrong, as the Peignot font, for example, belonged to Adobe, not Linotype. Furthermore, he replied: My webserver is a computer sitting in my basement, run as a hobby. It is very unprofitable and the act of your company filing suit would result in nothing more than bankrupting a 'business' that is already losing money. There is no gain in it for you. I consider the tone of your letter (and attached document, which I was able to decipher with a text viewer, but not print in the intended format, nor reply to) to be harassment, in fact. A polite request would have sufficed, but you have threatened me with a lawsuit, and demanded that I send you $300 to cover 'future infringements', as I understand it. As my family lawyer explains it to me, I am protected by common carrier status in the US, which protects me from lawsuits arising over copyright violations caused by my users. In fact, the act of my attempting to proactively identify copyright violations (in effect, performing censorship) would void my common carrier status, thus I am forced to take a passive role in such matters. He also states I would be within my right to countersue, with a very good chance of winning. I have no desire to take such action if you would merely apologize for the threat you have made and identify specifically to which files you claim copyright so I can remove them promptly. That seemed to have shut up Linotype.

Case 4: Dieter Steffmann

¶ As TypOasis explains, Linotype started an action for 5000 DM against the typographic artist Dieter Steffmann, who makes many high quality freeware fonts. They claimed that he infringed on the Linotype trademarks Eckmann and Flora, because he had made fonts by these names: Eckmann-Initialen, Eckmann-Plakatschrift, Eckmann-Schmuck, Eckmann-Schrift, Eckmann-SchriftAlternate, Eckmann-Titelschrift, FloraInitialen. Never mind that these fonts do not correspond to the Elsner & Flake font EckmannEF, or the ITC font ITC Flora. Their names are also sufficiently different. But it is in fact much worse than that: Linotype threatened Dieter Steffmann with a 5000 DM lawsuit. I think that the harassment and psychological stress caused by a lawyer's letter that falsely claims damages of 5000 DM would be grounds in countries like the USA or Canada for a big fat countersuit running in the tens of thousands of dollars. The Eckmann case. Otto Eckmann, the typographer, lived from 1865-1902. Versions of his Eckmann-Schrift (originally made in 1900) have been published by URW, Elsner & Flake, and Delbanco. Those companies were not bothered by Linotype. Trademark right disappears 70 years after the death of the inventor/creator, so the name Eckmann-Schrift should be in the public domain by now anyway. The trademarking of the name Eckmann by Linotype could be considered by some as fraud. To attempt to extract 5000 DM from Dieter Steffmann on the basis of all that can be regarded by others as a corporate felony. In the wake of the Enron, Xerox, and Worldcom financial scandals, Americans are asking for jail terms for corporate officers who abuse the system and lie to get financial gains. While this is at a smaller scale, the corporate excesses have to stop here. Postscriptum: Dieter Steffmann renamed his Eckmann fonts Rudelsberg. The Flora case. The Gill Floriated Caps was created by Eric Gill in 1935, and thus, timewise, it predates ITC Flora by many many decades. If Dieter's FloraInitialen is disallowed because ITC Flora predates it, then ITC Flora should be disallowed because Gill Floriated Caps predates it. Since ITC Flora is trademarked and not Flora, I have also difficulty believing that there could be any confusion between "ITC Flora" and "FloraInitialen". Sorry, no case here. Nevertheless, Dieter Steffmann renamed his font Flower Initials, and Linotype seems happy with that.

Some Linotype trademarks

¶ Here is a partial list of font names that are trademarked by Linotype or Linotype-Hell, as claimed by Linotype in their own fonts: Aldus, Arcadia, Ariadne, Avenir, PMN Caecilia, Caravan, Carolina, Cascade, Linotype Centennial, Centennial, Chemistra, Clairvaux, Clarendon, Clearface, Cochin, Corona, DINSchrift, Delphin I, Linotype Didot, Diotima, Diskus, Duc De Berry, Egyptienne F, Electra, Excelsior, Fairfield, Flyer, Frutiger, Garamond Three, Gazette, Glypha, Granjon, Guardi, Helvetica, Herculanum, Industria, Insignia, Janson Text, Kabel, Koch Antiqua, Kompakt, Kuenstler Script, LinoLetter, Linoscript, Linotext, Maximus, Medici, Melior, Memphis, Meridien, Neue Hammer Unziale, Neuland, NeuzeitS, New Caledonia, New Century Schoolbook, Notre Dame, Olympian, Omnia, Optima, Palatino, Peignot, Pompeijana, Present, Raleigh, Rotation, Roundy, Ruling, Rundfunk, Rusticana, Ruzicka Freehand, Sabon, San Marco, Shelley, Sho, Snell Roundhand, Spartan, Stempel Garamond, Stencil, Syntax, Times, TimesTen, Trade Gothic, Trump Mediaeval, Univers, Vectora, Versailles, WiesbadenSwing, WilhelmKlingsporGotisch, Wilke. It is well-known that generic names and geographic names cannot be used as trademarks. It really is beyond me how Linotype managed to register a trademark on the name of a country (New Caledonia---I can only imagine what will happen when the French ever find out that their overseas territory belongs to a German company), the name of a state (Carolina), the names of cities (Memphis, Raleigh, Versailles, Clairvaux), the names of famous tourist places (San Marco, Notre Dame), and the names of generic things (Rundfunk (German for radio), stencil, syntax, flyer, Diskus, present, cascade, caravan, avenir (French for future), olympian, centennial, spartan). A name like "Egyptienne" cannot be trademarked as it describes a certain style, very much like it would be impossible for Daimler-Chrysler to trademark the name "sedan" or for Peugeot to trademark the name "decapotable". Egyptienne, or Egyptian, is a style of type with usually heavy squarish slabs, also called "slab-serif". Typical faces in this style are Rockwell, Clarendon and Playbill, to name a few. Note that Linotype was clever in trademarking "Egyptienne F" and not "Egyptienne". Times: Isn't that remarkable? I associate Times with Monotype, but for some reason, Monotype did not trademark Times, either because it thought that trademark would not apply or because the name itself could not be trademarked. In fact, the lists of trademarks of Adobe and Monotype are much more reasonable than the Linotype list in terms of theoretical violation of the trademark rules. See also here or here. The fact that Times is now a trademark of Linotype has to be one of the most bizarre things in the font world. Times was created in 1931 by Victor Lardent and Stanley Morison, and was originally (in 1932) associated with Monotype. Jaspert, Berry and Johnson mention on page 200 that the face was also available from Linotype London in 1932, besides Monotype. That was thus exactly 70 years ago! For me, Times is Monotype, and trademark is meant to make such associations "official". That was and still is the intent. Acura is Honda, and Mickey Mouse is Walt Disney, period. But opportunistic Linotype snuck in there. Are they going to disallow all future uses of the name Times in fonts (despite the fact that the product is 70 years old)? Or will they just harass the small guys that have no protection from lawyers? Hey, world, wake up! Do you realize that a few decades from now, the name Times will have disappeared from the font scene? If your software product needs fonts to be shipped with them to users that grew up with Times and Helvetica, sorry, but new names will have to be invented. Monotype never cared very much, but these new pitbulls do.

Font Explorer

¶ Font Explorer is the type browser Linotype is selling on a CD since about early 2000. It is also the name of Linotype's web site. This company does not tolerate any web site names or any other names that come even close to its own trademarked names--remember Linotype's attack on the proposed Hellvetica foundry? How about this for a twist: the name Font Explorer has been trademarked by Sunshine Software (2737 Baldwin Street, Jenison, MI 49428 USA) for their own font browser. As they describe it: Font ExplorerTM allows you to browse all your font files with an Explorer like interface. You get advanced font file details usually hidden from the user, plus you can preview character strings and character maps of any True Type font. Font ExplorerTM is a very powerful new tool now included with FontFinder 32. This is indeed a competing product, and so, Linotype should in my view retire their name Font Explorer and withdraw their font CD from the market. This all depends upon the resolve of Sunshine Software to go through with a lawsuit, but I am sure that the Americans, gutsy as they always are, will not let us down. Just for general information: the name Font Explorer has also been used by other software producers, and some of them predate Linotype's "Font Explorer": Font Explorer: a program by Alexandre Trottier (Easy Soft) for the Mac, that makes it easier and faster to find specific characters in a font. Font Explorer: a free java applet for character exploration by Prust Interactive. Font Explorer: a program which allows you to view a list of all your fonts, seperate them into lists of true type and system fonts, and print samples and lists of the fonts in different ways. Free software by Mark Carrington. Karen's Font Explorer: a free PC utility (font viewer) by Karen Kenworthy (Broken Arrow, OK). Font Explorer: a freeware 32-bit font manager for Windows 95/98/NT by Arash Ramin, whose outfit is called Digitalroom.net.

The cast

¶ The cast of Linotype players responsible for this symphony of errors and cacophony of terror: N. Yilmaz, the lawyer, who knows very little about fonts. Bruno Steinert, the enforcer, ruthless, lawless, arrogant, and cold. Otmar Hoefer, son of Karlgeorg Hoefer, and the font marketing manager at Linotype. Wirnt Galster, at Heidelberg Druckmaschinen AG, the parent company. Angela Mueller, at Heidelberg Druckmaschinen AG, the parent company.

Copyright © 2002 Luc Devroye School of Computer Science McGill University Montreal, Canada H3A 2K6 luc@cs.mcgill.ca http://cg.scs.carleton.ca/~luc/index.html