EULAs for commissioned fonts

Russell McGorman

In the case of a commissioned typeface, where I'm supplied the glyphs in the form of a PSD file, how would you determine and define what copyrights are mine and what are the clients?

I think, obviously, the glyphs are the clients. So are the outlines, I'd say, though, technically, I made the outlines from image files, plus I made a few minor adjustments to a small handful of glyphs and, I drew some alternates to preserve the hand made appearance. Still, I think that's the client's. Everything else that makes it a functioning font is mine. 

I've spelled that division out in two clauses. One stating that I assert the my right to ownership of the intellectual property contained in the font, excluding the graphic content, I.e., the characters supplied by the client and another clause stating that the client owns the rights to graphic content.

Makes sense?

Jess McCarty

There's quite a few factors at play here. Is this a work-for-hire arrangement?

Depending on your state (if US-based) and the nature of the compensation/work, this kind of stuff gets tricky. You can invalidate your entire agreement if one section is deemed void or unenforceable, and you haven't included a severability clause, for example. 

If you'd like to DM your draft agreement w/this client, I can take a look, but IANAL. If it's important enough to have an agreement, it's important enough to have an attorney review. Look for a contracts attorney with experience in software. Lots of folks here suggest Frank Martinez, and he has a thorough understanding of IP as it relates to fonts, but since everyone uses him you might encounter a conflict. Also, unless you're made of money, you're going to want an agreement with governing law that's favorable to you (and your location). If you don't already know of an attorney who fits the bill, contact your state's bar association and ask for patent & trademark referrals.

John Hudson

What were the terms of the agreement with the client under which you did the work you describe? I'd normally expect ownership of the work to be determined at that stage, not after the work has been done.

JoyceKetterer

The answer depends a lot on governing law.  If you're in the US then no one can copywrite the typeface (glyph design). The ownership of the software goes to the person who made it unless you have an agreement to do otherwise.  This ownership can be very valuable and there would be no need for a license if you were assigning it to your client so I think the implication here is that all parties expect you to own it.

@Jess McCarty's  suggestion surprises me.  In my experience lawyers who specialize in patents and trademarks aren't very qualified to write a EULA.  What I always tell people is to look for an attorney who specializes in intellectual property law and has experience with software licensing.  

Russell McGorman

Thank you. 

Jess McCarty

@JoyceKetterer True, but outside of major metropolitan areas, filtering by trademark/patent gets you to the only nearby attorneys with IP experience. Many of them have an of-counsel for contracts if they're more litigation/application focused. In St. Louis, for example, the woman who was head of the patent bar did quite a bit of copyright/trademark litigation, but had an of-counsel relationship with a gentleman who did nothing but draft IP agreements.

JoyceKetterer

@Jess McCarty Ah.  Well, that is very clever. 

I do, however, question your basic assumption that the most important criteria for choosing an attorney is that they be near you.  We're in NY, and our primary attorney is also, but I almost never meet with her in person.  I have hired secondary attorneys for various tasks and almost none of them have been in New York.  Our trademarks guy is in California.  I have never once thought that the distance effected their ability to serve our needs.

Especially when you add the fact that writing a EULA for a font is an extremely difficult high level skill I think that limiting your search to people near you is dangerous.  The most important qualities are knowledge of IP law and mental agility (because fonts are weird).  These qualities are rare in the species and not significantly more common in attorneys.  Lots of attorneys are very rules bound and limited in their thinking - if you try to get someone like that to work on a font EULA you are likely to have a mess.

Jess McCarty

@JoyceKetterer I understand where you're coming from, I'm just sharing my own experience.

Obviously there are factors to consider other than location, but in my opinion, most solo designers and small foundries just aren't willing to search for or hire multiple attorneys; heck, many are intimidated by the idea of finding just one. Local (major metro area in your state) is much more approachable than cold calling across the country. It's also usually cheaper. 

Besides an initial consult, or sh*t totally hitting the fan, most clients are probably never going to meet with their attorney face-to-face. But it's nice to know you could. 

And if you're looking for someone who can also help with general advisement/compliance, as most small foundries are, you'll need someone who is licensed in the state that your business is registered. Practically speaking, that means someone local.

I have both local counsel and another firm on retainer in Seattle, whom I've never 'met' save through Skype. Both have done exceptional IP work, including EULA drafting and review. A good contracts guy or gal with knowledge of IP law and a subscription to WestLaw is going to be able to handle 99.9% of common licensing scenarios. Location shouldn't be the primary factor for hiring an attorney, but I just do not believe the only capable minds reside far away.

I should probably mention that I'm a bit biased, as my hubs is a GC, so ¯\_(ツ)_/¯

Dyana Weissman

@Jess McCarty's question about this being work-for-hire is a good one. If that's the case, then everything is your client's.

However, starting from a PSD... I assume there are no outlines at all, that the actual digitizing/making of outlines is done by you, in which case, I would say you hold the IP. Unless it's work-for-hire/you agree to give up the rights. 

But I am also not a lawyer. 

JoyceKetterer

@Dyana Weissman  in some municipalities work for hire isn't really even legal.  There can be a such a thing as "moral rights" which are inalienable.  As an American I don't know much about this but these sorts of things are why the governing law is so important.