Digital font considered original by expert in Eastern High Court case

In a recent case with the potential of becoming a Danish (and potentially European) landmark decision on the copyright protection of digital fonts, the Danish Eastern High Court refrained from considering the highly principal matter in its decision. This was although i) an expert found the font to be “a result of the author’s own intellectual creation”; and ii) the defendant, Studio 6 ApS, before the Court, had acknowledged and admitted the claims of the plaintiff, A2/SW/HK Limited.

At present, Danish case law has only ruled once - in U.2006.2697 H– that a physical font can be granted copyright protection. Thus, the case at hand could have been an important contribution to the issue of copyright in the digital realm.

The main proceedings in 1. instance before the Danish Maritime and Commercial High Court pertained to the legal protection of the digital font “A2 Typewriter” (“A2”), developed by the plaintiff, by copyright and/or section 3 of the Danish Marketing Practices Act. The case was initiated by the plaintiff with a claim to obtain an injunction against the defendant’s use of the font “Codan Typewriter” (“Codan”). 

The Danish Maritime and Commercial High Court ruled that A2 was distinctive and thus protected under section 3 of the Danish Marketing Practices Act, yet it did not find that Codan constituted an infringement. As to copyright, the Danish Maritime and Commercial High Court found that “it was not sufficiently substantiated that the requirements for copyright protection were fulfilled” (own translation). Notably, by this phrasing, the Court acknowledged the possibility of copyright protection of digital fonts.

In consequence of this outcome, the plaintiff was ordered to pay legal costs. This was, nevertheless, reversed in a judgement on appeal by the Danish Eastern High Court, according to which the plaintiff was to be considered fully successful in its claims. Notwithstanding this, the plaintiff was, accordingly, awarded costs for the appeal proceedings. However, the parties were ordered to bear their own legal costs before the Danish Maritime and Commercial High Court.

Significantly, an expert opinion given on the fonts before the Court supported the originality of A2. When asked whether A2 was to be considered the result of the author’s own intellectual creation, and not solely dictated by technical considerations, the expert agreed, highlighting the free and individual choices to, inter alia, curve, serifs, and glyphs, not based on any existing digital fonts.

With reference to the – in the perspective of the defendant – unfavorable expert opinion of the fonts, which had been given during the appeal proceedings, the defendant acknowledged and admitted the claims of the plaintiff before the Danish Eastern High Court one month before the fixed date of the appeal hearing. Consequently, the merits of the case were not examined by the Court.

In its assessment of the legal costs, the Danish Eastern High Court turned down the applicability of directive 2004/48/EC on the enforcement of intellectual property rights (the “Enforcement Directive”) as interpretated by the ECJ in case C-57/15 (United Video Properties), as the Danish Maritime and Commercial High Court had solely granted A2 protection under the Danish Marketing Practices Act, i.e., not intellectual property law. By this, the Court choose not to adhere to the principle in Danish civil law concerning the parties’ right to command the case in question, including the meaning of claim admission. By declaring admission, a defendant acknowledges the claims raised by the plaintiff, and the case is ruled in favor of and in accordance with the plaintiff’s claims.

Nevertheless, although the above was duly noted by the Court, the grounds of the costs order show that the Court failed to follow the principle through. By relying on the result reached by the Danish Maritime and Commercial High Court, the Court omitted to overrule this judgement, as the case had ended prior to the appeal hearing. Hence, the issue of copyrightability of A2 was not examined by the Court. Furthermore, the Court noted that this stance was not altered by the expert opinion, according to which A2 was regarded as an expression of an original artistic effort. Notably, in copyright cases, Danish courts do usually give due reference to assessments by experts. On this basis, it may be cautiously put forward that A2 would qualify for copyright protection, had the Court ruled on the issue.

None the less, by admitting the claims of the plaintiff, the defendant also acknowledged the allegation that A2 was protected by copyright and under section 3 of the Danish Marketing Practices Act. Accordingly, as this was no longer contested between the parties, the Court ought to have taken this into account, when ruling on the costs order. This view, that the parties – not the Court – manage the subject-matter of the case, is rooted in the negotiation principle, which, along with the principle of the parties’ right to command the case, are two of the fundamental principles of Danish civil law. Consequently, as the parties agreed on the copyright protection of A2, it could be argued that the Enforcement Directive should have been applied.

On the other hand, the decision to apply the Enforcement Directive falls within the competence of the court, traditionally phrased as “jura novit curia”, according to which the court knows the law. Furthermore, a court is obliged to prevent a legal outcome that is inconsistent with the law, cf. section 338 of the Danish Administration of Justice Act.

Following this line of thought, the application of the Enforcement Directive to a work that may not deserve protection by copyright, could be considered an incorrect application of the law. However, such a view, by which the Court sets aside the agreement on copyright protection between the parties based on the expert opinion, would undermine the above-mentioned fundamental principles of Danish civil law.

A2/SW/HK Limited was represented by BUGGE VALENTIN in the case before the Danish Eastern High Court.

The decision is not yet published.