Corporation letting public download my typeface for free

Max Phillips

Just found that an international fitness chain has adopted one of my typefaces for event branding (good) and is making all 20 styles of it available as a free download on their site. (bad)

Any advice from you licensing experts out there?

Oliver Weiss (Walden Font Co.)

When you say "adopted", do you mean licensed? If so, are they violating that license? If so, I'd start with a C&D letter and go from there. Many times this happens out of ignorance.  

Max Phillips

I don't know yet whether someone bought some sort of license. I'm asking around for advice before I go up against company. I assume whoever did this doesn't know better.

Hrant Հրանդ Փափազեան Papazian

They're just looking up to IBM.

JoyceKetterer

@Max Phillips find out if they have a license first.  If they do, and you are the licensor, contact the person listed as the licensee contact and gently let them know it's not allowed (assuming your license says that it isn't).  Don't assume they are intentionally violating your trust, or even that the people in power know the fonts are available for download.  It could be an intern who thought it was a cute promotion. if you aren't the licensor (the license was issued by the reseller as the licensor) you probably can't do anything on your own. We need more information to be helpful. 

Claudio Piccinini

Thanks for your constant advice on these matters, @JoyceKetterer.

Hrant Հրանդ Փափազեան Papazian

Yes, there's still not enough education about typeface IP, and companies giving away fonts to curry favor is sadly trending.

Max Phillips

Thanks, Joyce. I've sent off a query to their legal dept. I don't have a record of a whole family licensed to these folks, though it might have gone thru an agency or other 3rd party.

JoyceKetterer

@Max Phillips - for future reference, you've just done it the hardest possible way.  From a purely strategic standpoint, it's always better to stay away from lawyers and talk to the designers and tech people who are on the ground using the fonts. Lawyers are at a remove from the use and tend to be the last line of defence for a company.  What you've done is equivalent to calling the cops because your neighbour is playing loud music rather than walking over there and talking to them.  It's instant escalation and less likely to result in a happy outcome.

I understand you did that because you thought you had no other choice.  I don't think it would have mattered if they have a license of the full family or a license of a single style.  In your position, if I had a record of the fitness chain having a 1 cpu license of 1 style I'd have written the person given as a contact for it.  At that point, part of the violation is that they are using more styles than are licensed.  You don't need to find a license that perfectly matches the use to reach out.  In fact, you are very unlikely to find such a thing if there is a violation.  It's much more likely to find five licenses of varying sizes with different styles.  

If there isn't a license like that the thing I'd do next is just try to reach the design team.  I use linkedin a lot for that.  I only ever turn to legal as a last resort and only by having my own lawyer write them.  

And, as I said, the people who did this probably made an honest mistake.  That's why it's better to try to reach them rather than the lawyers.  By contacting the lawyers you've embarrassed them and made it impossible for the matter to be quietly fixed.

Hrant Հրանդ Փափազեան Papazian

@JoyceKetterer Solid.

KP Mawhood

JoyceKetterer said:

@Max Phillips - for future reference, you've just done it the hardest possible way.  From a purely strategic standpoint, it's always better to stay away from lawyers and talk to the designers and tech people who are on the ground using the fonts. Lawyers are at a remove from the use and tend to be the last line of defence for a company.  

I'll echo this. Our lawyers didn't speak font licensing nuance* and mostly got involved on major font contracts ($10k+). The legal team will have clout, but the design/tech teams are the ones who will have to make the change – it may be quicker to go direct. I never met an in-house designer who didn't respect licensing, though it would be easy to make an uninformed choice.

* Legal teams will reach out to the person(s) managing the font licensing.

When I first joined the press, we had someone managing the font library who had a background in license enforcement. He would advise the legal team directly. For troubling issues, the legal team would also contract external specialists in IP/copyright – who in turn would reach out to the font manager as a consultant. He would end up advising the same thing twice (paid twice too).

Max Phillips

Well, live and learn. I actually wasn't able to find any record of anyone plausibly connected with the chain licensing the face, or any footprint for a design department online, but I guess my detective skills aren't up to much. Thanks for the feedback, everyone!

Max Phillips

So a senior counsel at the fitness chain apologized and said their agency had taken down the link, and so they had. Agency got the files thru Adobe Fonts, which is why I couldn't find a license. And that's that. I have put away my flaming sword for next time. Thanks again, all.

John Hudson

if it were me, I would request their download logs, so you have some idea of how many times the fonts were downloaded from their site before they were taken down. If it were just a handful, I would probably let it go, but if it were a lot I would go after them for compensation. They were acting as unlicensed distributors for a period of time, and it is very likely that the same fonts will start showing up in other places as ‘free’ because once a font has that label associated with it, it will get propagated to a bunch of free font sites.

JoyceKetterer

@max Adobe fonts licenses are for cloud use.  If they "got the files from Adobe fonts" it was by hacking.  But it's more likely that they didn't get the fonts from them at all.  I've seen dozens self hosted web embedding violations that have this fact pattern.  They know that Adobe permits web embedding, want to self host, and think that the use is permitted, which therefore makes it ok that they got the fonts from a pirate site.  People are capable of impressive levels of self delusion.  

Ralph Smith

I agree with John Hudson. In our initial correspondence with anyone offering unauthorized downloads is a request for download logs.  

Max Phillips

All good points. Thanks, John and Ralph, and thanks again, Joyce. I'll look into this further.

Christopher Slye

Yeah, wow, “Agency got the files thru Adobe Fonts” is not a thing. If that’s an accurate description, it would involve a deliberate circumvention of the technical measures that protect Adobe Fonts. (The fonts would have to be discovered and renamed.) And of course it’s a clear violation of the Terms of Use. If you’re already talking to the company’s legal counsel, you might point that out.