Choosing the right typeface, commonly known as a “font,” is a critically important, if lesser-known, part of marketing a small business. Business owners and entrepreneurs have far more options available to them than the typefaces that come preinstalled with computers and software applications. The internet has allowed for a significant growth in the world of typeface design, particularly in the New York City area. An ongoing dispute between two designers, who are also former business partners, shows just how big this business has become. In addition to highlighting the world of typeface design, the lawsuit, Frere-Jones v. Hoefler, No. 650139/2014, complaint (N.Y. Sup. Ct., N.Y. Co., Jan. 16, 2014), illustrates some of the potential disputes arising from small business formation.
Businesses should carefully consider the typefaces they use in their marketing and promotional materials, as well as the documents they use in the ordinary course of business. “Typeface” refers to a set of letters, numbers, and symbols with common design features. Well-known examples include Times New Roman, Arial, and Comic Sans.
Unless a business owner creates their own typeface, they must obtain a license to use a typeface in their business. Licenses for most uses of common fonts are included with the purchase of certain software packages, but businesses can also purchase licenses for specific typefaces. Typefaces are generally protected by copyright law, but patent law may also cover the design elements of a typeface. Specific uses of a typeface, such as in a brand logo, may also be subject to trademark protection.
The lawsuit mentioned above involves two typeface designers, Tobias Frere-Jones and Jonathan Hoefler, who went into business together as Hoefler & Frere-Jones in 1999. According to fellow graphic designers quoted by Bloomberg Businessweek, the partnership was of a similar magnitude to Paul McCartney and John Lennon of the Beatles, except that Frere-Jones and Hoefler were both already famous in design circles.
The company created unique typefaces used, for example, by the Wall Street Journal, Martha Stewart’s publications, the New York Jets, and the memorial cornerstone of the rebuilt World Trade Center. They are also credited with expanding opportunities for typeface designers to license their works. This enables businesses to obtain their own exclusive, branded fonts and also provides designers with sources of income comparable to music royalties.
Frere-Jones filed suit against Hoefler in January 2014, claiming that Hoefler failed to fulfill his promise to give Frere-Jones fifty percent of the equity in the company. He alleges that Hoefler encouraged him to leave his job at a design firm in Boston to join him in a 50/50 partnership in New York. In exchange for 50 percent equity, Frere-Jones would contribute his “name, reputation, industry connections and design authority,” and he would assign the rights to several typefaces he had already created to the company. Frere-Jones, complaint at 3.
Frere-Jones reportedly completed the assignment of the typefaces to the business in March 2004, when their royalty value allegedly exceeded $3 million. Despite this, Frere-Jones claims, Hoefler never completed the transfer of 50 percent of the business to him. The lawsuit seeks $20 million in damages for breach of contract, fraud, and other claims.
Small business attorney Samuel C. Berger represents New York and New Jersey entrepreneurs and businesses in a wide range of legal matters. We offer fixed-fee legal-service packages that enable our clients to understand their rights and obligations, grow their businesses, and prosper according to their goals. Please contact us today online or at (212) 380-8117 to schedule a confidential consultation to see how we can best assist you.
More Blog Posts:
Intellectual Property Rights and Monetary Value of Business Social Media Accounts, New York & New Jersey Business Lawyer Blog, March 27, 2014
Protecting Your New York Company’s Brand from Online Counterfeiters, New York & New Jersey Business Lawyer Blog, January 30, 2014
Maximum Damage Award to Photographer Shows the High Cost of Using Pictures Posted to Social Media Without Permission, New York & New Jersey Business Lawyer Blog, January 15, 2014
Photo credit: Eric Fischer [CC BY 2.0], via Flickr.