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Designer Skin LLC v. S & L Vitamins, Inc., et al.
Unauthorized internet reseller of plaintiff’s products is not guilty of trademark infringement, and does not cause actionable initial interest confusion, by using plaintiff’s trademarks in meta tags of website at which plaintiff’s and its competitors’ products are sold, and in...

Monotype Imaging, Inc., et al. v. Bitstream, Inc.

376 F.Supp.2d 877, Civ. No. 03 C 4349 (N.D. Ill., July 12, 2005)

Defendant Not Guilty Of Copyright Infringement As A Result Of Distribution Of TrueDoc Font "Copying" Software

After a bench trial, court holds that defendant Bitstream Inc. is neither guilty of contributory copyright infringement nor indirect trademark infringement as a result of its creation and distribution of a software program which permits the user to copy and incorporate into a document any typeface font, whether or not the owner of the copyright in such font has consented to such copying and use.  In an earlier decision, the court, on defendant’s summary judgment motion, dismissed claims of direct copyright and trademark infringement, as well as vicarious copyright infringement, arising out of defendant’s activities.  The court’s decision was grounded principally on the absence of admissible evidence that defendant’s software had been used by its licensees to copy typeface fonts in which plaintiffs held copyright.  The Court also based its decision on its holding that defendant Bitstream neither was aware of any such infringing activities, nor sought to increase the sales of its software by advertising that its products could be used for that purpose.

TrueDoc Allows User To Print Document In Font Selected By Author, Whether Or Not Font Is On User's Computer

Plaintiffs Monotype Imaging Inc. and International Typeface Corp. create, license and distribute software programs that generate typeface designs, which programs are commonly known as “fonts.”  Together, the plaintiffs own approximately 2000 fonts.

Defendant Bitstream Inc. is a competitor that owns, licenses and distributes approximately 1000 fonts.  Defendant also created and distributed a software program known as TrueDoc.  This program permits a user to view and print a document in the font selected by its author, regardless of whether that font is installed on the user’s own computer.  TrueDoc. achieves this result by “captur[ing] the character shapes that result from executing the fonts” in the author’s document and generating images that correspond thereto on the user’s computer.

Bitstream licenses TrueDoc to customers web users along with both fonts that it owns, and those of vendors who have agreed to allow their fonts to be used with TrueDoc. 

Bitstream does not include plaintiff’s fonts in these offerings.  Bitstream has, however, repeatedly stated in its advertisements for TrueDoc that it can be used with any font.

Plaintiffs Claim Third Parties Use TrueDoc Without Authorization To Copy Fonts In Which Plaintiffs Hold Copyrights

Claiming that third parties were using TrueDoc to infringe the copyrights plaintiffs hold in various fonts by causing similar images to appear on the computers of users who had not licensed those fonts, plaintiffs commenced this suit.  Plaintiffs asserted claims of direct, contributory and vicarious copyright infringement, as well as claims for direct and indirect trademark infringement, and violations of the Digital Millennium Copyright Act (“DMCA”).  On defendant’s motion for summary judgment, the Court dismissed plaintiffs’ direct trademark and copyright infringement claims, as well as their claims for vicarious copyright infringement.

After a bench trial, the Court dismissed plaintiffs’ remaining claims.

Contributory Copyright Infringement Claims Fail

To prevail on a claim for “contributory copyright infringement, a plaintiff must demonstrate (1) direct infringement by a primary infringer, (2) the defendant’s knowledge of the infringement and (3) the defendant’s material contribution to the infringement.”  Defendants have been able to avoid liability for the infringing activities of third parties arising out of their use of defendants’ equipment, if such equipment is capable of “substantial noninfringing uses.”  Citing MGM Studios Inc. v. Grokster Ltd., 125 S.Ct. 2764 (June 27, 2005), the Court noted that “even with evidence of substantial lawful use however, one who distributes a device with the object of promoting its use to infringe copyright, as shown by clear expression or other affirmative steps taken to foster infringement, is liable for the resulting acts of infringement by third parties.”

The Court held that plaintiffs’ contributory copyright claim failed because plaintiffs had “failed to prove that a Bitstream licensee ever used [TrueDoc] to copy plaintiffs’ fonts.”  Notably, the Court reached this result notwithstanding plaintiffs’ presentation of two documents, the first of which purportedly was a tutorial on how to use TrueDoc to copy plaintiffs’ Tempus Sans font, and the second of which provided an example of the use of TrueDoc to copy plaintiffs’ ITC Highlander font.  Both documents were purportedly printouts of web pages.  There was no claim however, that these web sites were operated by Bitstream.  Indeed, plaintiffs did not offer any testimony from the parties who operated the sites themselves. 

The Court rejected this evidence, holding both that it failed to prove copying by defendant’s or its licensees, and because it had not been properly authenticated.   As a result, held the Court, plaintiffs had failed to prove that their copyrights had been infringed by either Bitstream or its licensees.

Not surprisingly, in light of this holding, the Court also held that plaintiffs’ contributory infringement claims failed because defendant neither knew, nor should have known, that its TrueDoc software was being used to infringe plaintiffs’ copyrights.  In reaching this result, the court relied, in addition to the dearth of evidence of infringing uses, on the substantial non-infringing uses to which TrueDoc could be put when used with defendant’s own fonts, or those who had authorized such use, and various steps defendant took in its design of TrueDoc to prevent it from being used to infringe the copyrights of others.  The Court accordingly rejected plaintiffs’ contributory copyright infringement claim.

Trademark Infringement Claims Fail

The Court dismissed plaintiffs’ indirect trademark infringement claims as well.  To prove such trademark infringement claims, the plaintiffs must first prove that direct trademark infringement had been committed by a third party for which infringement defendant should be held liable.

As with plaintiffs’ contributory infringement claim, plaintiffs failed to prove such direct trademark infringement.  Plaintiffs’ showing was again limited to the pages from the two websites, discussed above.  While these pages evidenced a use of plaintiffs’ trademarks, there was no evidence that the marks “were being used in association with any particular product or service” or that such use was confusing the public.  Nor was there any evidence that defendant contributed to the alleged infringers’ activities, because there was no evidence submitted as to a connection between these alleged infringers and Bitstream, given the alleged infringers were not identified.

Finally, plaintiffs’ Digital Millennium Copyright Act claim failed, because plaintiffs had not proven that either defendant or its licensees used TrueDoc to infringe plaintiffs’ copyrights.

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