JUDGMENT
Zakir T. Thomas, Registrar
1. M/s. ABP Ltd. submitted four applications in the copyright office for registration of copyright under Section 45(1) of the Copyright Act, 1957 under the category of artistic works. The works submitted for registration are reproduction of a series of fonts comprising of alphabets in Bengali language and some other symbols.
2. The copyright office rejected the application for registration stating that the works do not qualify as an artistic work as per definition of artistic work given under section 2(c) of the Copyright Act, 1957. The applicant was not given an opportunity to present their case before the decision was taken against them. Aggrieved they filed a writ petition in the High Court at Calcutta. The Hon’ble High Court set aside the impugned order with a direction to pass orders after affording the petitioner an opportunity to be heard. The High Court also directed that this exercise should be completed within a period of six months from the date of communication of the order. Later, on 28.11.2001, the Hon’ble High Court extended this time limit to another two months on an application moved by M/s. ABP Ltd. This order is in pursuant and consequent to the orders and directions of the Hon’ble High Court.
3. Upon receipt of the order of the Hon’ble High Court, this office issued a notice to the applicants giving them an opportunity to be heard on 9.10.2001 at 11.00 AM. It was pointed out in the letter that the works submitted for registration of characters of two languages, namely, English and Bengali over which copyright cannot be granted and that the works do not satisfy the definition of works under Section 2(c) of the Copyright Act. On the request of the applicants, the case was adjourned to 13.11.2001 and was heard on that day. Applicants made further submissions on 3.1.2002.
4. M/s. ABP Ltd. submitted an affidavit in support of the applications. The affidavit submitted by M/s. Savitri Parekh Company Secretary stated the following:
5. M/s. ABP Ltd. is a leading publishing house in the country and in their efforts in improving the standards of print journalism in Bengali, they decided to develop new Bengali fonts and/or typefaces and employed one Debrani Gupta in or about May 1995. During the course of her engagement, she developed the following four fonts:
(i) Aananda Expanded Italic
(ii) Aananda Expanded Bold
(iii) Aananda Expanded with x/xx Expanded
(iv) Aananda Expanded Bold Italics
6. Each of these facts comprised of letters and characters, comprising of all the Bengali vowels and consonants, conjoined characters and commonly used symbols. It was claimed that some conjuncts discovered during the process minimized the space covered by the individual letters and this enhanced the reading space and material, and reduced the reading time for readers. Significant amount of labour and skill is claimed to have applied in developing these fonts referring that Bengali script is a complex script, and required substantial degree of character re-ordering. Uniformity in design was ensured to enhance reading pleasure.
7. These fonts were created with the aid of computer, using digital technology. The originality of these fonts is claimed on their unique and angular calligraphic strokes, diagonal strokes, and angular joineries with strong calligraphic stress, which could be produced through digital process to meet the demand of modern printing technology.
8. It was also affirmed that the company has been using the said font since April 1998, which presents Bengali text in a unique and original typeface having very strong aesthetic appeal. It is claimed that the aesthetic quality of Bengali print gets substantially enhanced upon use of the aforesaid fonts, which has been created upon application of substantial amount of labour and skill.
9. As per the affidavit, Ms. Debrani Gupta developed these fonts during the course of her employment with the company and she relinquished her rights vis-a-vis the subject artistic works in favour of the company upon complying with the requirement under section 21 of the Copyright Act, 1957. The company is claimed to be the owner of the subject artistic works.
10. It was also stated that the four fonts/typefaces, being the subject matter of the application are distinct and different from various other fonts/typefaces being used in Bengali prints. In order to establish that these fonts have high degree of aesthetic value, the deponent submitted letters from some eminent persons in the field of art opining that these fonts have aesthetic value.
11. Ms. Deborani Gupta in her affidavit stated that while in employment of ABP Ltd. between May 1995 and May 1999, in discharge of her official duties she had developed four new typefaces/fonts in Bengali alphabets which could be used in newspapers/periodicals, named Ananda Expanded, Ananda Expanded Bold, Anand Expanded Italic and Ananda Bold Italic. She had done her graduation project for Master of Design under a project named “Calligraphy Style Typefaces design : Language Bengali”. She affirmed that the fonts she developed for M/s. ABP Ltd. are original and distinctive from the project work. She also affirmed that the typefaces/fonts were developed during the course of her employment with ABP Ltd. and all the rights, title and interest vis-a-vis the said fonts/typefaces vest in ABP Ltd. She affirmed that she had employed her special skill to ensure that these fonts/typefaces are computer enabled so that they could meet the special requirement of modern day printing.
12. During the hearing, Mrs. Savitri Parekh, Secretary was present along with attorneys Mr. Abhijit Deb, Mr, Sudipto Sarkar and Mr. S.K. Gupta. It was noticed from the affidavit of M/s. ABP Ltd. that Ms. Deborani Gupta had given up her rights in the artistic works developed by her under Section 21 of the Copyright Act in favour of M/s. ABP Ltd. Section 21 deals with giving up of copyright altogether by an author and once such an action is taken none can claim copyright over such work. When this was pointed out the attorneys argued that it was a wrong affirmation and that they would like to claim ownership of the rights of works created by Ms. Dutta during the course of her employment with them u/s. 17 of the Copyright Act. Ms. Dutta also affirmed this point in her affidavit that the work was created during employment in ABP Ltd. and they have the rights in her work. As section 17 provides that ownership of works created during the course of employment by the proprietor of a newspaper lie with the employer, this plea that M/s. ABP Ltd. is the owner of work is acceptable, however, it will depend on whether subject matter is covered by copyright or not.
13. The applications filed by M/s. ABP Ltd. sought the registration under the category of artistic works of the four categories of works. In Para 10 of the affidavit also it was claimed that applications were made to enter the said four fonts in the register of copyrights as artistic work. It is stated in Para 14 that said fonts/typefaces are distinct and different from various other fonts/typefaces being in use in Bengali script. In Para 16 it is further affirmed that applicants have made out a fit case for entering the aforesaid fonts/typefaces as artistic work in the Registrar of Copyrights,
14. During the course of the hearing the attorneys submitted that what is sought for registration is the artistic design of the fonts which M/s. ABP Ltd. use for their publications. It was requested that a pragmatic view may be taken in the case so that artists are encouraged to develop such fonts/typefaces, it was submitted that the object of IP law is to encourage authors during the period of protection.
15. The issue here is hence whether fonts/typefaces can be registered as artistic work.
16. The applicant submitted that the fonts/typefaces exhibit sufficient originality, artistic nature and sufficient labour and skill has been utilized to create these fonts and hence they may be treated as artistic works. In support of their argument they produced the following cases.
17. Stephenson, Blake & Co. v. Grant, Legi’os & Co. Ltd. (High Court of Justice -Chancery Division). This British case was reported in the Illustrated Official Journal (Patents). It was pleaded that this case substantiated that designing fonts involve work of artistic merit and it is a copyrightable subject matter.
18. The vase o£ Roland Corporation and another v. Lovemo& Sons 105 ALR 623 (Aus) reported in “The Digest” – Annotated British, Commonwealth and European cases “(1995, 2nd Issue, Case No. 787) was also quoted in support of the appellant. In this Australian case, the court held that copyright subsisted on “R device” and “B device” both being two logos which were extravagant representations of the letter “B” and “R” (the two logos referred in the evidence produced before that court as “B device” and “R device”) though each was representation of single alphabet as these were drawn with care to obtain an effect.
19. The applicant could not produce any other reported decision and, also stated that there were no known Indian reported cases in this regard.
20. On the basis of the above decisions, in their written submission, the appellants pleaded that the fact that ordinary alphabet depicted in special form on a font can be the subject matter of copyright. Accordingly on the basis of these authorities it is contended that Bengali fonts in relation to which applications were made, can form subject matter of copyright protection.
21. The case of Roland Corporation v. Lovenzo & Sons deals with certain logos created using two letters and is distinguishable from the present case where applicant is claiming copyright protection over the typeface design of the entire alphabet. It was argued that the case shows that design of certain alphabets involve artistic skill. While the logo designed artistically using a single alphabet may be a subject matter of copyright, claim of copyright for the typeface design of the entire alphabet is a different issue to be” examined in depth. The only analogy one can draw is that there is artistic merit in design of a logo using a single alphabet.
22. What is submitted for registration in each of the four applications is a printout of the design of the entire alphabets and not depiction of single alphabet as such. Even if we grant registration to the work applied for copyright, copyright may subsist only in this entire work and it does not subsist on the single alphabet. This issue was examined in the British case cited by the applicants. The relevant portion is reproduced below :-
“… on the assumption, upon which also I propose to act, that the Design was a registrable one, they contend that the Design is an aggregation of letters, numerals, and signs, consisting, so far as the letters are concerned, of two complete alphabets of different types, but each arranged in strict alphabetical order, and, so far as the signs are concerned, of six symbols in a particular order ; and they argue that no user of any, or indeed of all, of the seventy-six letters, figures, and symbols which are incorporated in and together make up the Design, can be an infringement of the Design unless it amounts to a copy or a colorable imitation of the Design in its entirety. The Plaintiffs, on the other hand, argue that the Design, having been registered in respect of, or as a pattern for, a fount of type, the reproduction of any and a fortiori of all the letters, figures, and symbols included in the Design is an infringement of their rights as the registered proprietors, although the reproduced letters, figures, and symbols may never be, and, for the purposes of this hearing it is admitted, never have been, assembled in any combination approaching that in which they are assembled in the registered Design. In other words, the Plaintiffs assert that the registration of these two alphabets, this series of numbers, and this string of symbols as one Design has put them in exactly the same position as they would have occupied had they registered each letter, each numeral, and each symbol as a separate Design. The result of this would be that, not only would the Design as a whole be copyrighted, but every component letter, figure, and symbol would also be protected by the registration and the printing, for example, of the word ‘Constantinople’ in letters copied from letters to be found in the Design would be an infringement of the Design. I cannot adopt this view ; no authority has been cited in support of it, and it appears to me to be contrary to the line of authorities of which Sackett and Bames v. Clozenberg, before Mr. Justice Neville (27 of R.P.C. 104) is the last in the Reports. In my opinion that which is protected is the Design of which a copy is annexed to the Certificate, and unless that which is complained of is an actual copy or a colourable imitation of what is there to be found in its entirety, I do not think that an action for infringement of the Design can be maintained.”
23. It follows from the above decision that even if copyright is granted to the work produced along with the application, which arguably consists of artistic arrangement of depiction of series of letters on the alphabets, what the applicants can claim is copyright in the arrangement of such entire work and not on the single alphabets.
24. Upon pointing out that copy as per the application copyright may be for the entire work and not the single alphabets, the applicant clarified that what they are seeking for copyright registration is the right as individual letters as designed by them and if need be they will file separate applications for the same. Hence it need be decided if copyrights subsist on individual typefaces.
25. The issue here is this whether fonts designed by the applicant’s employee during the course of her employment does enjoy copyright.
26. Section 13 of the Copyright Act gives the details of works in which copyright subsists. It provides that copyright shall subsist throughout India in the following classes of works :
(a) Original literary, dramatic, musical and artistic works ;
(b) Cinematograph films ; and
(c) Sound recording.
27. Section 16 of the Act states that there shall be no copyright or any similar right except in accordance with the provisions of the Act.
28. Further artistic works are defined in Section 2(c) to mean (i) a painting, a sculpture, a drawing (including a diagram, map, chart or plan) an engraving or a photograph whether or not any such work posses artistic quality ; (ii) a work of architecture ; (iii) any other work of artistic craftsmanship. The applicants pleaded that their work is covered under ‘any other work of artistic craftsmanship’. They relied upon the English case cited above and the opinion filed by them of experts in the field stating that the work has artistic craftsmanship.
29. However, though the application is for registration of a work under the category of artistic works, the affidavit and during pleadings it was clarified that what is sought for copyright is the fonts and typefaces developed by them. Fonts or typefaces are not classified as works in which copyright subsists. The applicants pleaded that as per the English law cited above these were given copyright registration even when the British Copyright Law had not reorganised typefaces as a category of works and that it is a common law practice. Vide provisions of Section 16, it is clear that there is no copyright other than that specifically provided in the Act. Thus there is no common law copyright. A work has to be clearly within the definition of works protected in the Act to attract copyright.
30. Designing typefaces involve creativity and it could be argued that this involves artistic craftsmanship. This presupposes the work of mind of an artist to develop and design the typefaces to constitute the artistic work if original can claim copyright protection. This involves designing the typefaces whether through the commands of software or by manipulating the instrument used for typing. The case cited by the applicant supports this position as it treats typefaces as design and protection was afforded normally under the Design Act as can be seen from that case.
31. The copyright law of England in their amended version (1988) included an express provision to protect typefaces.
32. The section 1 of the English Copyright Act is reproduced below :-
“1. Copyright and copyright works (1) Copyright is a property right which subsists in accordance with this part in the following description of work:
(a) original, literary, dramatic, musical or artistic works,
(b) sound recordings, films broadcasts or cable programmes,
(c) the typographical arrangement of published editions.
33. English Copyright Law (1988) also defines artistic work in the following way
(4) Artistic works (i) In this part ‘artistic works’ means,
(a) A graphic work, photograph, sculpture or cottage, irrespective of artistic quality.
(b) A work of architecture being a building or a model building,
(c) A work of artistic craftsmanship.
It may be noted that despite having a specific category of ‘a work of artistic craftsmanship’, the typographical arrangements are expressly protected. This specific provision was introduced in 1988 to protect typographical arrangements.
34. This amendment was necessary as otherwise typefaces were registered as designs and this required registration of each letter to claim protection. Hence 1988 Copyright Law introduced an express provision to protect typefaces with the following exceptions. It is true that typefaces are protected in British law as artistic work but only when the legislative intervened to provide specific exception and term of protection, which was done in 1988. Section 54 of the 1988 English Copyright Designs and Patents Acts reproduced below” :-
“54. Use of typefaces in ordinary course of printing– (1) It is not an infringement of copyright in an artistic work consisting of a design of a typeface.
(a) to use the typeface in the ordinary course of typing, composing text, typesetting or printing,
(b) to possess an article for the purpose of such use, or
(c) to do anything in relation to material produced by such use;
and this is so notwithstanding that an article is used which is an infringing copy of the work.”
35. The term of protection of typefaces are different from artistic works and are limited to 25 years in British Law. Thus we see a specific legislative intervention to extend protection in copyright to typefaces with attendant exceptions.
‘Ejnsdem Generis’
36. A general word which follows a particular word of a similar nature (as in ‘and other similar words’ takes its meaning from them and shall be construed as applying only to things of same general class as those enumerated in Manual on Interpretation of Statutes 12th Edition (Bombay, Tripathi 1969) at pages 297-306. Using this interpretation to define artistic works, the meaning of ‘any other work of artistic craftsmanship’ gets restricted by the specific definitions given in 2 c (i) and 2 c (ii); as the word artistic work is preceded by the word ‘other’ it certainly indicates that it is intended to refer to something other than the ones mentioned in 2 c (i) and 2 c (ii) but of the same generis. For example though ‘fresco’ is not specifically mentioned it will fall into the category of painting. A typeface design does not get integrated into the concept of artistic work due to restrictions of ‘ejusdem generis’ and English law had to intervene and define it separately.
International Conventions:
37. This construction is supported by international conventions too. The basic international convention in the field of copyright is Berne Convention. As technology expanded and newer forms of creations demanded protection, new conventions like ‘Rome Convention 1961’ was entered into. A new concept of ‘neighbouring rights’ was introduced into the copyright system. The basic principles in these two international conventions got integrated into the copyright part of ‘Agreement on Trade Related Aspects of Intellectual Property’ (TRIPS). Is none of these international conventions on copyright is there an express mention about protection of typefaces or regarding protection of fonts.
38. On the contrary, there exists a separate international agreement on protection of typefaces. It is called the “Vienna Agreement on the Protection of typefaces” (1973). Had it been the international communities’ opinion that typeface is a copyright issue ; protection of typefaces would have been brought into one of the copyright conventions.
39. It would be illuminating to examine what Berne Convention provides for such works. Berne Convention is the basic copyright convention and India has acceded to this convention which means our Act is in conformity with the provisions of the convention. Article 2, Paragraph 7 of Berne Convention deals with works of applied art which is reproduced below :
Subject to the provisions of Article 7(4) of this Convention, it shall be a matter for legislation in the countries of the Union to determine the extent of the application of their laws to works of applied art and industrial designs and models, as well as the conditions under which such work, designs and models shall be protected. Works protected in the countries of origin solely as designs and models shall be entitled in another country of the Union only to such special protection as is granted in that country to design and models ; however, if no such special protection is granted in that country, such works shall be protected as artistic works.
40. The convention makes it clear that it shall be a matter of legislation in the countries of the Union to determine the extent of application of their laws to the work of applied art. This implies the necessity of a clear legislative intervention w.r.t. works of applied art and also shows that ‘any other artistic work’ is not an omnibus term covering all the artistic works. This calls for a legislative intervention and it is a matter of legislation in the member countries U.K. chose to amend its Act to provide for typefaces. However, Indian Copyright Act does not contain any similar provisions and does not protect typefaces.
41. Further article 7, paragraph 4 deals with the ‘terms of protection for Photographs and Works of Applied Art’.
It shall be a matter for legislation in the country of the Union to determine the term of protection of photographic works and that of works of applied art in so far as they are protected as artistic works ; however, this term shall be at least until the end of a period of twenty-five years from the making of such a work.
42. It may be noted that in Indian Copyright Act provides a specific provision for the term of photographs which is 60 years following Berne Convention (the convention provides only a minimum term). Here it may be noted that the term of protection is provided in the convention ‘in so far as’ concerning works protected as artistic works. It clearly follows that there are artistic works which are beyond protection of copyright as artistic work. If any country desires to protect works of applied art it will have a provided a term of protection also. Fonts/Typefaces are clearly works of applied art, Hence if they are protected the term of protection will also have to be provided in the act. The U.K. copyright law provides a term of protection of 25 years for typefaces which is the term of protection for applied art as per the Berne Convention. That India has not given a term of protection for typefaces/fonts while giving specific provision for photographic works shows that it is not a legislative intention in India to protect typefaces as artistic works.
43. In fact, in demanding copyright protection for typefaces, ABP is not alone and there have been requests at international level to extend copyright protection to typefaces.
44. In his book “Intellectual Property”, W.R. Cornish states the following (3rd edition, Universal Law Publishing House, Page 10, Paragraphs 1-11) :-
“For more than a century, new technology has consistently invaded the copyright worlds of culture, education and entertainment…. All these have created immense pressure for expansion of copyright …. Alongside these developments of central economic significance have run an unending miscellany of other claims : for typefaces ; folk songs and other indigenous cultures, the format of media game shows ; “look alike” products and their get up ; character merchandising ; merchandising of sport, exhibition, festivals, universities and film sites ; the use of personal characteristics (name, voice, appearance) in publicity – and these are but examples”.
45. Thus while we see that principle of ‘ejusdem generis’ limits the meaning of “any other work of artistic craftsmanship”, the international copyright conventions have not considered protection of typeface as an artistic work. Even in England where such provision is made, there are specific provisions relating to typefaces. In the absence of such specific provision in the Indian law, following the principle of ejusdem generis, it is concluded that typefaces are not included in the genre of artistic work as defined in Section 2(c), especially in view of Section 16 of the Indian Copyright Act.
46. This makes it clear that traditional copyright law was not extended to typefaces and Legislature intervened to provide protection with express provisions. While providing such specific rights, Legislature also provides specific exceptions as shown above. Without these exceptions, the balance of authors’ rights and public interest which copyright system maintains will be affected. For example, if typeface design is registered as artistic work it will enjoy the same rights and period of protection as artistic works. The British law shows Legislature keeps this balance in mind when rights are granted. Unless such specific provisions exist, a work does not get protection under copyright. This is clear from section 16 of our Act also.
47. Hence the request of the applicant to register the typefaces as artistic work cannot be acceded to, as the typeface design does not constitute a work, which is entitled copyright protection under the Indian Copyright Act, 1957.
If it is an artistic work:
48. Even if it is to be concluded for arguments sake, though the position is as explained above, that typeface is an artistic work capable of being registered for copyright, it may be noted that the design of typeface is capable of being registered as a design under the Design Act, 1911. As per section 2(5) of the Design Act, a design (refer para 30 also) includes “pattern” and typefaces are treated as a pattern. The English case of Stephenson, Blake & Co v. Grant, Legros & Co. Ltd. submitted by the applicants itself supports this contention that typeface is capable of being registered as a design. In that case, the basic fact was that the plaintiffs were the registered proprietors of Design No. 427,900 for the font of printing type known as “Windsor” registered on the 2nd of March 1904, under section 53(2) and (3) of the Patents and Designs Act, 1907.
49. As per section 15(2) of the Indian Copyright Act, copyright shall not subsist in any design which is capable of being registered under the Design Act, 1911 but which has not been so registered as soon as any article to which the design has been applied, has been reproduced more than fifty times by an industrial process by the owner of the copyright or, with his license by any other person. M/s. ABP Ltd. has been using the said typefaces since 1998 and hence more than 50 reproductions have already been done. Hence even if it is held that the works are copyrightable since it is capable of being registered as a design, the copyright in the said fonts are already over and no copyright registration can be done at this stage.
Conclusion
50. Based on the discussions above, the following applications of M/s. ABP Limited, 6, Prafulla Sarkar Street, Calcutta – 700 001 are hereby rejected :-
1. Dy- No. – 2166/99-COA -Aananda Expanded Italic
2. Dy. No. – 2167/99-COA -Expanded Bold Aananda
3. Dy. No. – 2168/99-COA -Aananda Expanded x/xx Expanded
4. Dy. No. – 2169/99-COA -Aananda Expanded Bold Italic