October 25, 2020

Volume X, Number 299


October 23, 2020

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A Different "Type" of Lawsuit: Ensuring Proper Use of Licensed Font Programs

One may not typically think of font programs, or their underlying typefaces, as protected intellectual property -- but a recent suit involving retail giant Target should prompt companies to pay closer attention to their agreements related to this small yet mighty marketing aspect. 

Earlier this month, affiliated Chicago typeface companies Berthold Type Group LLC and Berthold Direct Corporation (together, “Berthold”) filed an action for copyright infringement and breach of contract against Target Corporation (N.D. Ill., Case No. 1:17-cv-07180). In its complaint, Berthold alleges that Target licensed its Akzidenz-Grotesk typeface font software programs (to which it owns federal copyright registrations) in 2013, via a limited agreement providing for the use of the font on 10 computers and only for internal business purposes. 

In June 2017, Berthold came across a promotional video by Target’s outside design firm, touting the production of an animated version of Akzidenz-Grotesk font for Target’s advertising and branding  – the video is available at https://vimeo.com/90107132. Berthold wrote to Target requesting a documentation of its uses of the font and certification that such uses complied with the license; Target responded that it had investigated the matter and could confirm that it was in compliance. Upon receiving this response, Berthold filed its complaint, asking for preliminary and permanent injunctions against Target’s unauthorized use of the font software, an accounting of all such uses to date, damages of up to $150,000 per infringement, and attorneys’ fees and costs. 

The outcome of this particular case has yet to be determined, but its existence is a helpful reminder that companies need to be mindful of the restrictions in place for all of their licensed-in intellectual property – even for something as seemingly minor as a typeface design

© 2020 Sterne KesslerNational Law Review, Volume VII, Number 304



About this Author


Dana Justus is an associate in the Trademark, Advertising, and Anti-Counterfeiting Practice, with a practice focused on U.S. and international trademark clearance, prosecution, enforcement, and portfolio management for clients in a wide variety of industries. She has significant experience in civil litigation related to trademark and copyright matters in federal district court and administrative proceedings at the Trademark Trial and Appeal Board (TTAB) and International Trade Commission (ITC). In addition, she conducts due diligence analysis of intellectual property assets, provides...