Can I sell a new version of a font whose previous version was released free?

Adam Jagosz
Adam Jagosz Posts: 689
edited November 2018 in Type Business
Years ago I posted a small family of fonts on DaFont. It had minimal character set and was not quite polished. I didn't include a EULA with it, and I tagged it 100% Free. (Not the wisest thing to do.) In the meantime I completed the character set, redesigned some glyphs substantially, and altered the family structure. Now a potential client contacted me wanting to purchase an exclusive license, or preferentially, a copyright transfer. (I know the latter would not be in my favor, is more complicated legally, and so on.) Am I running into any trouble by agreeing to sell the new, completed and refined, version of the font? Am I able to do that?
On a sidenote, to what extent is DaFont's '100% Free' label legally binding without a EULA? The FAQ says to always check the EULA, and since I failed to provide one, does it mean people have the right to use it commercially?
Tagged:

Comments

  • Thomas Phinney
    Thomas Phinney Posts: 2,888
    But in any case, you still created it, and you can do derivative works (probably so can anybody else, though). You can sell or license any or all rights to the new portions of the work. BUT really... what disclaimers you might need in the license about the pre-existing content or how the new stuff interplays with the existing IP... you would need to consult a lawyer. I have some theories or educated guesses that I have shared the beginnings of, in this paragraph, but I am not a lawyer.

    Side note: Seems to me you can't easily/reasonably stop people from redistributing the version that is already out there. You could still ask DaFont to take it down—not sure what the legal status/strength of that request of that would be, but nothing stops you from asking, right?
  • Adam Jagosz
    Adam Jagosz Posts: 689
    I will probably be consulting a lawyer anyway, so thanks for pointing out that this issue might have to be mentioned in the license.
    With over 140,000 downloads to this date, and a 100 daily, I think taking it down now makes less of a difference. But even if it does, asking DaFont anything seems to be problematic. I tried to contact them several times in the past to no avail. I guess they get thousands of emails every day with questions like “how to install a font?”, so they don't even bother sorting through them.

  • Bhikkhu Pesala
    Bhikkhu Pesala Posts: 210
    Why not just rename the font, and change the license agreement? If you have made substantial improvements users will prefer the commercial version over the freeware version. 
  • Adam Jagosz
    Adam Jagosz Posts: 689
    Oh, I was intending to rename the font. Thanks for reminding me. There will be only one user of the commercial version (an exclusive deal).
  • Christian Thalmann
    Christian Thalmann Posts: 1,983
    Just add a Pro to the name. ;)
  • George Thomas
    George Thomas Posts: 645
    Does your potential client know about the previous version that was free, even though limited in characters? You might have a future problem if they don't.
  • Johannes Neumeier
    Johannes Neumeier Posts: 377
    Thomas Phinney said:
    But in any case, you still created it, and you can do derivative works (probably so can anybody else, though).
    Just because it was free does not mean anybody can create new works based on it. In people’s mind this might be the implied intent, but it certainly is not true. With so many Open Source fonts around this border also gets more and more blurry. Unless of course “free” in this context means distributed as “free to do with as you please”.
  • Igor Freiberger
    Igor Freiberger Posts: 273
    The situation has a very common parallel: applications that have a limited version freely distributed and a more complete that is available for purchase. It is perfectly possible to do that with your "pro" font. Actually, it would be absurd if a simpler, free product denies the producer to offer an improved version for sale.

    Just observe what George Thomas said. Even if it is not stricly illegal, to let the client know about the previous version is fair.

    UN's WIPO has several documents with information about typeface protection.
  • JoyceKetterer
    JoyceKetterer Posts: 812
    I'm very against adding "pro".  It's one of those things that we industry people have gotten accustomed to but which causes no end of client confusion.
  • Adam Jagosz
    Adam Jagosz Posts: 689
    The client knows about the free version, in fact the free version is the reason she got in touch. I am meaning to put that information in the agreement as well.
    I think a "Pro" suffix would perhaps make more sense for a retail font. I was thinking more like "2" or something completely different.
  • André G. Isaak
    André G. Isaak Posts: 633
    Pro would be fine for a retail font if different foundries/vendors would actually agree on what it means.
  • Grzegorz Luk (gluk)
    Grzegorz Luk (gluk) Posts: 161
    Another question is, what's oryginal font name. Because for Example, if the name was "Semi", then the "SemiPro" would sound curious :)
  • Adam Jagosz
    Adam Jagosz Posts: 689
    Good research, gluk :) I guess that was an easy one, though, I gave plenty of details.
  • Thomas Phinney
    Thomas Phinney Posts: 2,888
    Johannes Neumeier said:
    Thomas Phinney said:
    But in any case, you still created it, and you can do derivative works (probably so can anybody else, though).
    Just because it was free does not mean anybody can create new works based on it. In people’s mind this might be the implied intent, but it certainly is not true. With so many Open Source fonts around this border also gets more and more blurry. Unless of course “free” in this context means distributed as “free to do with as you please”.
    I think that is what end users will (reasonably, even!) assume. Adam said “I didn't include a EULA with it, and I tagged it 100% Free. (Not the wisest thing to do.)”
  • Cory Maylett
    Cory Maylett Posts: 248
    Adam Jagosz said:
    Now a potential client contacted me wanting to purchase an exclusive license, or preferentially, a copyright transfer. (I know the latter would not be in my favor, is more complicated legally, and so on.)
    Why would it not be in your favor? Do you have specific reasons for retaining the copyright to this font? Why is it important to you if you'll be selling, I'm assuming, exclusive, permanent, world-wide rights? Or will you be placing limits of some kind on the exclusivity of its use?

    Is this person intending to use this typeface as a permanent part of a company's branding? If so and if I were the client, I would insist on a copyright transfer since I would not be inclined to have someone else retain any ownership rights to a critical part of my company's brand identity.
  • JoyceKetterer
    JoyceKetterer Posts: 812
    edited November 2018
    You can't issue an exclusive license to a thing that has already been distributed to others, by definition.  You could make them something new based on the thing that was distributed and give an exclusive license to that.

    I'm against permanent exclusivity since companies don't tend to use fonts forever and then the font just never gets used again which makes me sad (both for financial reasons and just cause).  What we do is issue a license with permanent exclusivity that will lapse after 5 consecutive years of no public use.  That is, the exclusivity lapses, all other rights remain in place.

    @Cory Maylett is making the client side argument which i've never really understood.  Literally most companies are using fonts which are not owned by them.  It doesn't hurt them to do so. 

    Sure, it's easier to just own the rights but not so much easier that the cost to buy something outright right makes sense unless you're really attached to it, which most brands demonstrably are not.  I think it's still true that the average company changes fonts about every 5 years (i've not checked recently). Even if that number has moved slightly, it's still the case that with most companies every new art director changes the fonts.  It does depend some on the industry and specific business model but you get the idea.  
  • Adam Jagosz
    Adam Jagosz Posts: 689
    Huh, so the thing is, people are using the freebie. The client wants to go legal after one particular company that not only uses the same font but also replicates her designs 1:1. Not that the designs are very "unique" (the uniqueness is in the font, I think). So what the client really wants is the full copyright to the font so that she has anything to build the case on at all. (I suppose right now she's got nowt).
    I'm split. Wouldn't want things to get ugly or get in trouble.
    JoyceKetterer said:
    You can't issue an exclusive license to a thing that has already been distributed to others, by definition.  You could make them something new based on the thing that was distributed and give an exclusive license to that.
    That is exactly the case. I did something (partially) new, which hasn't been shared. So I tell the client I can only give exclusivity for the new thing. Or more precisely, for the new in the new thing.
  • notdef
    notdef Posts: 168
    @JoyceKetterer

    5 consecutive years of no public use

    How do you define “public”? Sounds difficult to monitor. 


  • Christian Thalmann
    Christian Thalmann Posts: 1,983
    Adam Jagosz said:
    Huh, so the thing is, people are using the freebie. The client wants to go legal after one particular company that not only uses the same font but also replicates her designs 1:1. Not that the designs are very "unique" (the uniqueness is in the font, I think). So what the client really wants is the full copyright to the font so that she has anything to build the case on at all. (I suppose right now she's got nowt).
    The free font will still be free to use after you sell a commercial derivative, so I don't think it will suddenly prevent that sort of imitation (or is it just convergent evolution?) from happening, let alone retroactively render that illegal...
  • Cory Maylett
    Cory Maylett Posts: 248
    edited November 2018
    As a U.S. graphic designer who dabbles in type design, I have no idea what the laws in Poland or the UK might be, so my perspective might be irrelevant.
    I rarely get attorneys involved in routine sales of work I've designed. I have standard contracts that, with modifications, cover most situations and have worked well. Type design is different from graphic design in the sense that work designed for clients is not typically something that one would resell to other clients down the road.
    In your situation, Adam, you've previously released a free, incomplete and unpolished version of the font (family?). You now have someone who wants to buy the copyright to a more complete and polished version. For me, the decision to sell the copyright or just exclusive, limited rights would mostly be determined by the client's wishes and which, in the long run, would be most profitable.
    From a practical standpoint, an exclusive license will greatly inhibit your ability to make future profits from the font(s). That being the case, and excluding Polish and UK laws I know nothing about, it would seem to boil down to a simple matter of how much more this client is willing to pay for a copyright transfer as opposed to an exclusive license.
    An exclusive license, as the posts here seem to indicate, might involve attorneys (who cost money). A copyright transfer (at least in the U.S.) is a simple matter of stating in writing that the copyright is transferred to the client upon, for example, payment.
    I'm assuming this client will be willing to pay you more for copyright ownership than a license. If you believe this extra money will offset the benefits of retaining copyrights to a font to which exclusive usage rights have been sold, you should, possibly, just sell the copyright at a higher price and be done with it. If you think there's a likely future benefit to you in keeping copyright ownership to a font that someone else has exclusive rights to use, negotiate with the client over the terms, hire an attorney, and hope you have the (possibly unlikely) chance to make up the difference down the road.
  • James Puckett
    James Puckett Posts: 1,993
    Adam Jagosz said:
    The client wants to go legal after one particular company that not only uses the same font but also replicates her designs 1:1. Not that the designs are very "unique" (the uniqueness is in the font, I think). So what the client really wants is the full copyright to the font so that she has anything to build the case on at all. (I suppose right now she's got nowt).
    I'm split. Wouldn't want things to get ugly or get in trouble.
    I think a good rule of business is to not do anything that might get you sucked into someone else’s lawsuit. 
  • JoyceKetterer
    JoyceKetterer Posts: 812
    edited November 2018
    I completely agree with @James Puckett . You really don't want to get cuaght up in someone else's legal battle. However, I think you might be able to thread this needle (sell the client something that will make her happy without making a mess for yourself) since the third party is using a free font that they do have permission to use. This extra info does seem to suggest there's no way around you getting your own legal council on this though to help you navigate what sounds like a field with landmines. We also issue all custom/customized fonts in a manner similar to @Ray Larabie (NameOfFont_NameOfClient) . We use the underscore for alphabetizing reasons, I think (it's been ages since that decision was made). Note here that character count can be a major pain and that we often need to abbreviate the client name. I differ with Ray in my experience with clients regarding the attachment to exclusivity. As we've discussed on other threads, the type of work you do strongly impacts the kinds of things customers care about. We let them have it because it makes them happy and because it is often not a big deal to us. A one or two year exclusivity period (most common) is unlikely to drastically effect our release schedule for a public version (which almost always needs more styles and more language support) anyway. As a side note, I don't like rolling licensing and labor into one fee. The Studio did that when I first started and I found that we lost smaller customers. It really is the case that someone might need a custom font for a small use case and then the price feels way too high. By separating the two we can keep our pricing responsive to the customer's actual use and it also allows them to interact with our retail tables. Since the commissioner is ofter a marketing firm on behalf of an end client that's useful for possible future projects using retail fonts. @Frode : We define it as anything seen by the public. We also use that phrase for our testing license (public use is forbidden but all other use permitted including pitching). I've never had anyone push back on it. That's saying something given that one of the licensees with perpetual exclusivity was the most difficult negotiation we've had. People sometimes ask, "what if they made a single page website using the font that was clearly just there as a placeholder "public use" to hold exclusivity in place?" I'm fine with that since it shows they still think they might use it. We don't issue a license like this expecting to get the exclusivity back on any particular time line. We just want the option to release it in the event it might otherwise never be used again. We like options.

Categories