Selling a font as a natural person

Adam Jagosz

Without running my own business/company, what are my options for selling an exclusive license/transferring copyright to a client based in the UK (I live in Poland)? I considered having the client draft a contract agreement for us (she would need to hire a solicitor).

JoyceKetterer

If at all possible you want to have an attorney yourself who drafts the contract because attorneys will always write with a bias to their client.  If your customer does craft the document you still want an attorney yourself to review it and help you make sure it's in your interest.  I strongly recommend not going with Frank Martinez (who is well known in the industry and likely to be suggested here).  What you'll get from him is work off templates that are not crafted to your specific needs.  Also, he's in NY and so more expensive than someone local to you - who will also be able to make the governing law of the contract Portland which is way better for you in the event of a future dispute.

You're looking for an Intellectual Property attorney.  If you're just doing assignment of rights and not a license for use then you probably don't need to further make sure they have experience with software licensing - but it wouldn't hurt.  

There's a big difference between assigning rights and selling an exclusive license.  With assignment of rights you are selling all your options and they can do anything they want with the fonts.  With an exclusive license you can restrict all sorts of things (like require that they can't expand the family without your permission or prevent them from selling the fonts to someone else) even if you give very permissive use rights.  

If you do go the license route make sure your attorney reviews font licenses before drafting it.  Fonts are very weird among software and an attorney who knows other kinds of software licensing is likely to do some basic things that are normal elsewhere but not in fonts. If you need a list of a few good licenses send to an attorney just let me know.  I teach a workshop on exactly this topic.

Adam Ladd

I know I didn't start the discussion, but regardless just want to say thank you @JoyceKetterer for all the times you provide these valuable insights (like here and in many other threads) into the legal and practical sides of the business. It is indeed helpful, whether in present circumstances or for future reference.

JoyceKetterer

@Adam Ladd Thanks for the compliments.  I'm happy to help

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JoyceKetterer

@James Montalbano That's good to know.  Regardless, if one is going to the trouble of hiring an attorney it should be someone you can definitely use again.  Frank has so many industry clients that the odds are he also represents anyone you might enter into an agreement with who is also in fonts.  Sure, you can sign a waiver of conflict but I just don't believe humans are self aware enough to prevent themselves from being biased.  Myself included.  It's best just to stay away and get someone without any other font clients.

Adam Jagosz

Thanks for the info, Joyce. I am definitely getting in touch with an attorney.

I am wondering how a copyright transfer works in different jurisdictions. You say that it equals selling all your options, and that seems logical, but I've been doing some research, and some Polish source claims that both a license agreement and a copyright transfer agreement need to stipulate fields of exploitation that the agreement covers. Which would mean that it doesn't mean selling all options. Is that different in your jurisdiction?

JoyceKetterer

I think you are talking about Natural Rights.  This is an idea we don't have in America that some of Europe does have.  I don't fully understand it but it amounts to saying that the person who created something has some inalienable rights that they cannot sell (to extravagantly over simplify, it's sorta the opposite idea to work for hire).  I'm also not sure if those concepts relate to you since you will have made the work in a jurisdiction which doesn't have that concept. These are questions that even some American attorneys may not be fully familiar with.  

Adam Jagosz

The client is based in the UK, not US.

What I meant is that if I assign copyright rights and narrow down the fields of exploitation to, say, printing, then I still retain copyright for embedding and web. Ok, that sounds illogical, because how can I stop people from printing webpages? Perhaps that's when the specificity of fonts comes into play. Anyway, I see that licensing seems saner than ceding copyright.

Natural rights, from what I could gather, is a universal idea, which is about rights that cannot be restricted by any human law. By this definition Europe still thinks you have it in America Another thing is the distinction between moral copyright and economical copyright (moral can't be sold).

JoyceKetterer

I don't think you can assign just print rights.  Assignment of rights usually means ownership of the IP.  But I'm no attorney and legal concepts are not always intuitive.  This is why you always want to hire one.

John Hudson

The first thing you need to determine is the jurisdiction whose laws will govern the agreement (and hence where any dispute would be resolved). This could be Poland or the UK. The client will probably prefer the jurisdiction to be the UK, since a) that is what they and their lawyers are familiar with, and b) it will be less expensive for them if there is a dispute. But you as the creator of the work who is giving over rights to it can say you prefer the agreement to be under Polish law (even if the agreement is drafted in English.

With regard to assignment of rights, if you only want the client to have the right to use the font(s) in a particular way, that doesn't sound like transfer of copyright, but only granting of a use license. Of course, a use license that is both exclusive and perpetual would be significantly similar to copyright transfer in terms of preventing you from licensing the work to other customers, but it might not affect derivative works, i.e. such a license could prohibit the client from creating derivative works while enabling you to do so (presuming you could do so in a way that wouldn't undermine the exclusivity of the license on the original work). Also, such an agreement might prohibit the client from distributing the font or financially exploiting it beyond their own use.

The first thing I would do is clarify with the client exactly what their needs are, and then draft some terms for discussion that would cover those needs. I find a lot of clients have not really thought through what they need until you start asking them questions. Do they need perpetual exclusivity? Or would they be happy with a (renewable?) period of exclusivity? With an option to buy out remaining rights during or at the end of that period? Or are they really certain that what they want is to own the fonts outright and for you to explicitly transfer all rights?

Obviously the answers to these questions will determine not only the terms of the agreement but also the price. 

Adam Jagosz

I started drafting the agreement myself just to try to determine what my options are and if it makes sense at all. From the info that I gathered, by Polish law the difference between a copyright assignment and an exclusive license is that a copyright is by default perpetual, and a license is by default for 5 years. Moreover, a license cannot be set for a fixed period longer than 5 years—if it is, then after this period has elapsed, the license becomes an indefinite period license, which means it can be terminated with a notice period.

About selling just print copyright, I could compare this to books: (in Poland, unless the sources I found were wrong, and IANAL) you can sell copyright for publishing the book, but keep the copyright to making a film adaptation. Again, a license is an option in this case too, and a one in favor of the author.

JoyceKetterer

@Adam Jagosz  my apologies fir somehow thinking you were in Portland.  I was probably sleepy when I read your post.  Some of what I wrote should be adjusted for the fact you are not in the US.  

I see now what you're saying about different kinds of rights. I'm not sure how much that concept is transferable with fonts but I get the idea.  

Adam Jagosz

@JoyceKetterer No problem. I did see “Portland” but I thought it was autocorrect. I'm sorry I didn't clear that up right away.