Are Google, Blogger, Oracle, Adobe, and hundreds of other companies with browser-based HTML editors potentially violating someone’s trademark? According to the Cease and Desist letter we received from a major law firm, someone believes the answer is “yes.”
Site9 CEO, Andrew Mottaz, writes regarding a recent Cease and Desist letter about ProtoShare. Keep reading to learn about the letter, nebulous laws involved, and how we resolved the issue, but didn’t answer the bigger question.
What happened?
A few months ago, I received a Cease and Desist letter from a law firm representing three large, well-known corporations. They claimed our product ProtoShare® violated the copyright of their font software. Apparently, someone from one of these companies had seen the open-source HTML editor we use in our software. From a drop-down list of fonts (image at right), 
the other side reached the conclusion that we were embedding the fonts in our software.
I am the first to agree that embedding fonts you don’t own is a violation of copyright law. However, we don’t embed fonts at all. As anyone familiar with HTML knows, when creating an HTML document, the suggested fonts are added to a CSS style ( or font tag ) as a list of suggested fonts. The browser will then choose the best font from the list. This is how HTML works. ( As an aside – who knew that ‘Fantasy’ was a default generic font? )
I immediately contacted their attorneys, and explained that we don’t embed fonts. Their response was, “OK, well in that case, you are violating our trademark by listing the names of the font in your HTML editor.”
I asked for clarification and received the following letter.
I am a bit amazed by this. However, as I thought about the issue, it occurred to me that whether they were right or wrong about the legal issue, it was not completely clear cut.
What are the legal issues?
Trademark rights attach when you use words, phrases or artwork in the course of commerce to represent your product. We trademarked the name of our product, ProtoShare, because we don’t want someone else using the name. One important issue is whether a potentially infringing use of a trademark is likely to result in confusion among consumers. You might have heard of the ‘moron in a hurry’ test, which is: would a moron in a hurry think that Acme Computers and Acme Plumbing were the same company or represented the same product?
There are some affirmative defenses to trademark infringement. One of them is nominative fair use. At first glance, our usage appears to fall squarely in the nominative fair use category. After all, there is no other way to create a font tag for the Arial font than by using the word “Arial.” In my view, the possibility of a consumer thinking that our product is associated with or endorsed by the owners of the Arial trademark is non-existent.
However, the argument made by the font companies is not that you can never list the name of their font. The argument is that you can’t list the name of their font in such a way that indicates the displayed font is their font, when in actuality it is not.
As an example, one of the most common font-face tag sequences in HTML is “arial,helvetica,sans-serif.” Depending on your available licensed, installed fonts, (which often depends on your operating system) you will see text rendered in the order listed, using either the font Arial, the font Helvetica, or some other default sans-serif font. When using an HTML editor, a user may highlight text, choose ‘Arial’ from a drop-down list, and see the selected text change font. However, it’s possible the displayed font may not be Arial, since it’s not on the user’s system. Instead, a similar sans-serif font may be used. If you think about the ‘moron in a hurry’ argument, you can see how this could confuse your product with a competing product. Now, because we’re web developers, we think in terms of font tags, so we realize that by choosing Arial, we will get Arial or some similar font.
How did we resolve this issue?
What do the companies have to gain from this letter? It’s easy to jump to the conclusion that the font companies are trying solely to get a new revenue stream, but it’s not that simple. First, the law compels these companies to enforce their trademark. If they ignore trademark violations, they run the risk of losing the legal status of their trademarks.
So what did we do? Clearly, we didn’t have any interest in litigation. I believe our prior usage of these trademarks falls into the nominative fair use defense, but I’d rather spend our time and money somewhere else than deciding this issue in court against some deep-pocketed parties. We decided, instead, to go generic: we replaced our list of fonts with generic names. For our tool – a prototyping tool, after all – this seems like a workable solution. Most of our customers only use one or two of the font-faces anyway. We actually thought the editor was more clear using generics (image at left). 
Yet, I would prefer to definitively know that the usage we had was nominative fair use, or, with minor terminology modifications, it would be. This clarification would benefit both ProtoShare and possibly the font companies, not to mention the hundreds of other companies out there using similar editors.
The Bigger Question
This issue illustrates some of the pitfalls of how intellectual property is handled in the USA, and the high cost of litigation. In this case, the companies on the other side were only interested in maintaining their trademarks, and not looking to extract fees from us. Consequently, they worked with us to reach a solution that satisfied both parties. The issue cost us, nevertheless, a considerable amount of time and money to implement. Were the companies required by law to prevent us from having a standard list of fonts in our product? I don’t know. There certainly are plenty of other companies, very large and small, out there doing the same thing. If you have a minute, I’m interested in your thoughts. Are all online text editors in violation of trademarks? Is every company using an online editor susceptible to a lawsuit? Is HTML itself in violation of the law?
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