OEM Licensing and What It Means to You: An Interview with Stuart Sandler of Font Bros.

ThomasJockin

Hello everyone,

TypeThursday this week chatted with Stuart Sandler of Font Bros. We discussed what is an OEM license, managing relationships with your licensees, and considerations when drafting EULAs.

You're welcome to read the interview on Medium.

Stuart shared in the interview an example with The Osbournes TV show on MTV using one of his fonts improperly. 
Have you had an EULA issue with a big client you'd like to share? What steps did you take to deal with the issue?

Thomas Phinney

Funny, Stuart has a just plain wrong definition of an OEM license. It means licensing your fonts for bundling with hardware such as a printer... in broader terms, perhaps any kind of third-party product bundling. But it is most certainly not just any license that is not a desktop license.

Other than that, a really good and informative interview.

JoyceKetterer

to @Thomas Phinney 's point for those of us who - like me - are a bit confused by most acronyms:  it stands for Original Equipment Manufacturer. 

edited to add:  I see that the article says this and then says that the direct translation is divorced from the current meaning.  This is new to me but I guess it could be true.  At our studio we do think of embedding in software that either a) installs the font to the system or b) permits the end user to create text in the font as OEM.  Upon reflection that seems to be a slight evolution from the most traditional sense Thomas is thinking of but it's still more specific than what's described in this interview.  We do not think of self hosted web embedding or what we call "secure" application embedding as OEM and we really don't think of products use or distribution addenda (which permits a company to license its contractors) as OEM.

Dave Crossland

To be fair, I've heard people other than Stuart refer to anything other than plain ol' desktop licenses as OEM (eg, in an apps, or web font) but that was a long time ago and I suspect that as those have become more typically they have lost "OEM status"

Malcolm Wooden

It's not surprising that people's perception of 'OEM' has moved on, I remember way back when font data was either 'packaged product' or OEM. Now, because of this interweb thing there are more options to do specific licensing deals, so I guess if the deal is outside the criteria set by any of the companies published licenses then you could call it an OEM deal.

Stuart Sandler

Great thoughts all!

Let me frame my perspective based on the way Font Bros executes OEM licensing with its customers.

Every single license upgrade agreement we draft is two parts, the core EULA (usually featured as an Exhibit in the agreement AND an additional grant of use which is the Amendment to the EULA which lives at the top of the agreement.

Given the two work as a single unified instrument, we never sell an OEM license without both parts. So even if a client wishes to purchase an eBook license, they must either prove they own the desktop one or purchase both at the same time.

I can absolutely see how a customer may come to purchase the font as a web font as their single gateway into the purchase and may wish to add an eBook use to it. Historically, the core desktop font purchase was the gateway to an OEM license upgrade.

The good news is this perhaps opens a dialog about can each license live on its own merit as a stand alone license without being reliant on a core EULA. One I'm very excited to see how it plays out.

For my taste, I do believe it's important to be as clear as possible with any customer leaving no ambiguity in what rights are granted and what rights are still reserved by the foundry.

Also, to JFP's comment to the interview, I'll be the first to admit my knowledge of how IP works outside the USA is limited and I would like to understand how defending IP actually plays out in an international court of law when no specific copyright has been filed by the creator of the font.

Looking forward to furthering my understanding!

Dave Crossland

when no specific copyright has been filed

Personal opinion: Copyrights do not need to be filed, that is optional. The Berne convention makes automatic copyright nearly universally uniform around the world.

JoyceKetterer

@Dave Crossland Our attorney has advised us not to file copyrights because it's time consuming, expensive and she thinks it has questionable value in court because the level of time required to explain and prove the comparison of the software to a judge is huge. Plus, I think there is an a level of common law copyright in play once you release the font (but I could be wrong about that last one).

@Stuart Sandler I completely agree about the logistics of granting additional rights - though we do it slightly differently.  We also always start from a basic EULA and then add an addendum (though we don't structure it as the additional rights first with the EULA as an exhibit).  I guess where I'm not quite bought in is with the idea of calling anything that isn't desktop OEM.  I like the distinction of OEM being a very big deal and I'm not quite ready to give that up.  

Michael Jarboe

Aren't there limitations to damages/compensation without formal copyrights in place?

Dave Crossland

Comp might be higher with a reg'd copyright, that's the incentive for registering, but its interesting that Joyce's lawyer suggested the tradeoff may not be worth it. 

Its not 'common law' that makes copyright automatic upon publication, but the Berne convention.

JoyceKetterer

My understanding is that compensation is very much based on your provable rates and pricing tables.  This can of course get reduced for various reasons in a court.  But, court is of course the last resort anyway.  Our priority is always to resolve license infringements in the lowest stress way possible for the customer who in almost all cases didn't set out to steal from us.