I have been in Boston the past week, and while visiting Faneuil Hall, my family noticed a storefront sign that felt familiar, shown at right.

Faneuil Hall is a nearly three-hundred-year-old building that a rich merchant, Peter Faneuil, had built to house various merchants.  This “Cradle of Liberty” was a meeting location for patriots in the years before the Revolutionary War.  Atop the Faneuil Hall is/was a golden weathervane in the shape of a grasshopper, apparently a good luck imitation of the grasshopper weathervane above the Royal Exchange in London.

Which brings us to the storefront name, Grasshopper Creamery.  The restaurant itself is gone now; I assume this place sold ice cream and fudge or something similar to tourists like me.  I have no idea why it is gone, but I suspect it was not because of intellectual property infringement.

The storefront sign font clearly is the Disney font.  Or a Disney font.  My wife immediately said, “hey, that looks like Disney’s lettering” when she saw the sign.  And it does.  The A, S, and E in the word signs look very similar.

So, is this trademark infringement?   Probably not.  Without doing something more, trademark rights do not attach to a font set, and they do not attach to particular letters such that the use of a similar font on other letters would constitute trademark infringement.  In other words, Disney’s use of the above trademark for ice cream and other food services would not create such strong rights that it could leverage them against a company with an entirely different name like GRASSHOPPER.

But, is it copyright infringement?  This question is tougher to answer.  To be clear, using a font for ten letters (WALT DISNEY) does not create ownership rights in a full set of 26 letters scripted in that font.  In fact, using a font for ten letters as a name (like WALT DISNEY) does not even create copyright rights in that name, because copyright protection cannot substitute in short phrases in names.

Then is there any infringement, any protection at all?  Potentially.  Typographers do protect fonts with copyright.  When an artist develops a new font, he or she can protect it and can register it for official protection with the US Copyright Office.  This gives the artist strong rights and makes it much easier to license to typesetters, printers, artists, and software companies.  Disney may have done this with its font.  If so, it alone would have the right to use those protected letters, and it alone would have the right to license the use of those letters.  In some cases, fair use can allow permissive use, but those circumstances are specialized, limited, and almost certainly would not cover storefront signage for a commercial enterprise.  I am not certain as to whether Disney did copyright its font set, so this question remains unanswered in my book.

Below I review some basic information about copyright and the creation and ownership of copyright protection.  This protection is available to both published and unpublished works. The 1976 Copyright Act generally gives the owner of copyright the exclusive right to do and to authorize others to do the following:

1. Reproduce the work in copies or phonorecords
2. Prepare derivative works based upon the work
3. Distribute copies or phonorecords of the work to the public by sale or other transfer of ownership, or by rental, lease, or lending
4. Perform the work publicly, in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works
5. Display the work publicly, in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work
6. Perform the work publicly (in the case of sound recordings*) by means of a digital audio transmission

It is illegal for anyone to violate any of the rights provided by the copyright law to the owner of copyright. These rights, however, are not unlimited in scope. One major limitation is the doctrine of “fair use,” which has a statutory basis in the Copyright Act. In other instances, the limitation takes the form of a “compulsory license” under which certain limited uses of copyrighted works are permitted upon payment of specified royalties and compliance with statutory conditions.

Copyright protection subsists from the time the work is created in a tangible medium, or in a fixed form. The copyright in the work of authorship immediately becomes the property of the author who created the work. Only the author or those deriving their rights through the author can rightfully claim copyright. In the case of works made for hire, the employer and not the employee is considered to be the author. A “work made for hire” is defined as:

1.  A work prepared by an employee within the scope of his or her employment; or
2. A work specially ordered or commissioned for use as:
   • A contribution to a collective work
   • A part of a motion picture or other audiovisual work
   • A translation
   • A supplementary work
   • A compilation
   • An instructional text
   • A test
   • Answer material for a test
   • An atlas

If the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire. The authors of a joint work are co-owners of the copyright in the work, unless there is an agreement to the contrary. Copyright in each separate contribution to a periodical or other collective work is distinct from copyright in the collective work as a whole and vests initially with the author of the contribution.

Copyright protects “original works of authorship” that are fixed in a tangible form of expression. The fixation need not be directly perceptible so long as it may be communicated with the aid of a machine or device. Copyrightable works include the following categories:

1. Literary works
2. Musical works, including any accompanying words
3. Dramatic works, including any accompanying music
4. Pantomimes and choreographic works
5. Pictorial, graphic, and sculptural works
6. Motion pictures and other audiovisual works
7. Sound recordings
8. Architectural works

These categories are broadly inclusive. For example, computer programs and most “compilations” may be registered as “literary works”; maps and architectural plans may be registered as “pictorial, graphic, and sculptural works.”  There are limitations in subject matter, however. Several categories of material are generally not eligible for federal copyright protection. These include, among others:

• Works that have not been fixed in a tangible form of expression (for example, choreographic works that have not been notated or recorded, or improvisational speeches or performances that have not been written or recorded)
• Titles, names, short phrases, and slogans; familiar symbols or designs; mere variations of typographic ornamentation, lettering, or coloring; mere listings of ingredients or contents
• Ideas, procedures, methods, systems, processes, concepts, principles, discoveries, or devices, as distinguished from a description, explanation, or illustration
• Works consisting entirely of information that is common property and containing no original authorship (for example: standard calendars, height and weight charts, tape measures and rulers, and lists or tables taken from public documents or other common sources)

I was recently listening to an interview of Morgan Spurlock, who is coming out with a new film called The Greatest Film Movie Ever Sold or, really, POM Wonderful Presents: The Greatest Movie Ever Sold, which explores the world of product placement and the new media of advertising.  The film is completely funded by the advertisers in the film.

The interviewer said that when you make a show, you’re either getting sued for using the product without permission or getting paid to use it with permission.  And so, the discussion moved into talking about all the gaffer’s tape that gets used in television today because the person on camera is wearing a hat whose manufacturer hasn’t cleared its use with the studio, or the maker of the drink that the reality star is chugging doesn’t have a rights agreement with the broadcaster.  With its abundance of reality shows, MTV has become a master at the art of wrapping a soda can in paper, blurring out a t-shirt, and taping over shoe logos.  They do this for a variety of reasons, but most frequently because they haven’t cleared the ability to display trademarks and copyrights recorded on film.  With the huge number of logos and copyright-protected works that are displayed in a reality show, an effort to obtain licenses for each rights owner would be monumental.

As I’ve discussed before, copyright protection doesn’t currently extend to clothing itself.  Because clothing helps satisfy the basic need of shelter, Congress says that it is important we don’t limit the ability to create a basic-need solution or give control of that solution to just one or two companies.  By preventing clothing from being protected under copyright, we hopefully allow companies to produce both high-end and low-end clothing so that everyone can have access to it.

Various attempts to protect clothing with copyright have nevertheless been pursued in Congress.  As I was listening to the interview, I started imagining what would happen to reality shows if such fashion-protective copyright legislation passed.  Jersey Shore would turn simply into one giant blur-effect.  We’d see the faces of the cast, hear the conversations, but everything else would pretty much be blurred or blacked out.  An interesting consequence, and a helpful reminder to think about all the possible unintended side effects from a decision – legal or otherwise.