IP Law Daily, COPYRIGHT NEWS: Shake Shack Shakedown? Venerable burger chain pushes back over typeface dispute, (Sep 13, 2022)

Organizations Mentioned:Brand Design Co., Inc. d/b/a House Industries | Frankfurt Kurnit Klein & Selz, PC | SSE IP, LLC | Shake Shack Enterprises, LLC

By Matthew Hersh, J.D.

The lawsuit seeks a declaration that its logo and related merchandise are not infringing.

The putative owner of a typeface that was originally designed in the 1930s has no basis to bring a copyright infringement lawsuit based on the allegedly unauthor ...

By Matthew Hersh, J.D.

The lawsuit seeks a declaration that its logo and related merchandise are not infringing.

The putative owner of a typeface that was originally designed in the 1930s has no basis to bring a copyright infringement lawsuit based on the allegedly unauthorized use of that font, a prominent nationwide burger chain has alleged in a federal declaratory judgment action. The lawsuit, brought in the federal court for Manhattan, also alleges that the typeface claimant is engaging in copyright misuse for its alleged “shakedown” of the burger chain (Shake Shack Enterprises, LLC v. Brand Design Company, Inc., September 9, 2022).

The lawsuit involves Neutra, a sans serif typeface that was designed by architect Richard Neutra in the 1930s. A graphic design firm named House, Inc., claims to have developed a font, which it calls Neutraface, that is inspired by the Neutra font. (“It is no wonder that Neutra specified lettering that was open and unobtrusive, the same characteristics which typified his progressive architecture,” the design firm contends on its web page. “House Industries brings the same linear geometry to Neutraface without sacrificing an unmistakably warm and human feel.”) The design firm has aggressively litigated to protect its asserted claim to the font and to the associated software that renders the font in electronic documents. (As IP Law Daily covered here, a lawsuit brought by the design firm against drugstore chain Rite Aid survived a preemption claim last month.).

The dispute that led up to this claim involves Shake Shack, the company that grew out of a hot dog cart in New York City’s Madison Square Park to become a worldwide chain with over 400 outlets in over a dozen countries. The company, it contends, uses a “Neutra-inspired” typeface of its own for its federally registered SHAKE SHACK logo and associated merchandise. However, Shake Shack contends, it has never made use of the design company’s Neutraface software to create that typeface, rendering it instead in electronic files only with so-called “vector files” digitally representing the logo. Despite this, the burger chain contends, the design firm has repeatedly insisted that the logo infringes on its rights in the typeface, and has demanded “retroactive and prospective licensing fees” for its use.

The lawsuit by Shake Shack seeks a declaration that the design firm owns no interests in the Neutraface typeface—as typefaces themselves are not copyrightable—as well as a declaration that Shake Shack has “never obtained, copied, distributed, or used in any way” the design company’s software. The lawsuit also alleges that the design company is “attempting to use its limited copyright interest in its font software to exert a monopoly over all uses of the Neutra typeface, which is not protected by copyright,” and is thus, according to the burger chain, engaging in actionable copyright misuse.

The Case is No. 1:22-cv-07713-VM.

Attorneys: Craig Brian Whitney (Frankfurt Kurnit Klein & Selz, PC) for Shake Shack Enterprises, LLC and SSE IP, LLC.

Companies: Shake Shack Enterprises, LLC; SSE IP, LLC; Brand Design Co., Inc. d/b/a House Industries