Legal questions reg. custom type copyright

Kasper Pyndt

Hi TypeDrawers!

I've designed a bespoke typeface for a client and we're making a contract regarding their purchase of exclusive use of the typeface. IP still belongs with me.

They've asked me to include this bit in the contract: 

Designer warrants that his services and Work product shall not infringe on the copyright or any other rights of any third party or breach any contract or duty of confidence or otherwise infringe any third-party rights or contravene any applicable laws.

My immediate thought is that it sounds like an acceptable bit to include, but just wanted to double check with this forum. Does it seem alright, or would you make any changes to the language?

Also: is it the exclusivity-owner (client) or the IP owner (designer) who is supposed to pursue any unauthorized use of the bespoke typeface by a third party? 

Thank you in advance!

Kasper

Stuart Sandler

The line simply means in my interpretation that the font you're creating is original work and that no other party could come after you for copying, ripping-off, etc.

As far as unauthorized uses go, both parties would work to squash any unauthorized uses, you as the designer finding them, them as the owner enforcing them.

Kasper Pyndt

Stuart Sandler said:

The line simply means in my interpretation that the font you're creating is original work and that no other party could come after you for copying, ripping-off, etc.

As far as unauthorized uses go, both parties would work to squash any unauthorized uses, you as the designer finding them, them as the owner enforcing them.

Yes that's how I'm interpreting it as well, so that should be fine to include.

Thanks for the clarification!

JoyceKetterer

This is a very standard clause.  I see it all the time.  That said, if they commissioned you to make a nock off font I'd ask a lawyer before I agreed to it.

AbiRasheed

Not a lawyer but my interpretation of it is that they want you to guarantee it is your work and that it isn't infringing anything but hypothetically if it does in in the future then they take no responsibility for it and pass all the legal shenanigans to you. 

JoyceKetterer

Also, as far as unauthorised usage goes, if the contract doesn't say then I'd not presume that you know who will take on that burden.  It is not always simple to quash usage, sometimes impossible, and often costly to bring in lawyers to do it. I'm not a lawyer and can't give you legal advise but I can comment on business strategy.

This starts to get complicated so I'll try to say it briefly...The vast majority of large company license enforcements happen because the company doing it is a mess, which means just telling them to stop doesn't always work.  Also, depending on the country where the use has taken place, and given that this would be a situation where the violator doesn't have a license of the font (hence no contract with you that you can enforce) if they are uncooperative then you'd could find yourself in a quagmire.  If I were in your position I'd want to make sure that the client doesn't expect me to take on those costs if I don't want them and wouldn't consider me liable for their loss of exclusivity if I fail at getting the fonts removed. 

JoyceKetterer

@Kasper Pyndt Oh, and one other point of strategy.  If you like the font and think it could have value to you later, licensed retail there's a clause I'd try to add to the contract.  When we've done this sort of thing we say that the client's exclusivity will lapse if there is no public visible use of the font for five consecutive years.  They still can use the fonts, they only loose their exclusivity.  One of the times we did this the client actually never used the fonts at all!

Nick Curtis

It's a standard clause in video and film-production clearances, and it's intended to shield the production company from any liability, should someone scream "IP infringement!" I have executed several such documents: they haven't made me rich, but many bragging rights thereunto appertaining have accrued.

Kasper Pyndt

Thank you @JoyceKetterer (and everyone else) for the helpful input!! I think your last note on the client voiding their exclusivity after X years of inactivity is a really great one.

JoyceKetterer

@Kasper Pyndt I'm happy to help and wish you the best of luck.

@Stuart Sandler I think your post assumed ownership transfer?  I hope you can clarify.  I think that your advice is probably in error given the facts here.  In my experience, most customers think that the licensor of a license that expressly grants exclusivity thinks that means the licensor is taking on the responsibility of enforcing it.  Obviously, that's insane given the vastness of the internet, the likelihood security breaches would come from the licensee side, and the fact that the licensor is probably a small business.  However, just because the licensor thinks all they are promising is that they themselves will not license anyone else doesn't mean that's understood by both parties.  Additionally, I'd think that if the licensee is writing the contract that it's highly unlikely it's written that way.

Miles Newlyn

If that's all they asked for it's good. Usually they ask to be indemnified in the event that there is an infringement.

JoyceKetterer

@Miles Newlyn I'm not a lawyer so I could be wrong but I think indemnity (which they did ask for) only covers issues where the font is accused of infringing someone else's IP.  The issue at hand here is "is it the exclusivity-owner (client) or the IP owner (designer) who is supposed to pursue any unauthorised use of the bespoke typeface by a third party?"  I think that unless it's expressly stated this question is open to interpretation based on what the reader thinks it means to grant exclusivity.  Obviously, we font people think it means we're promising that we wont license the font to someone else.  I promise you there are clients out there who think it means we're promising to take on the burden of stopping every third party use (be it a pirate download site or a large company who shares a contractor with the authorised licensee who in error used it for other clients).

Miles Newlyn

@JoyceKetterer I think I indemnity is usually interpreted as a guarantee that there is no third party IP infringement. That's not the case. Indemnity is used to shift all financial responsibility and risk on to the creator. It is sometimes worded in such a way that it is within the client's rights to settle ANY claim against the work with a financial payout, and then claim this money back from the creator. In such situations the creator has no right to contest the claim. 
Personally I don't offer any indemnity unless it is limited to the cost of the license.

JoyceKetterer

@Miles Newlyn yeah.  Ditto, but then we don't really do custom work. Which strikes me as a slightly different animal.  That's why I pointed out that if the client directed work is to create a knock off then indemnity is a trap.  But I do think that if one were making something wholely new (rarely what the clients want and why we don't do much custom work) it would be reasonable from a business perspective. 

John Butler

I am immediately reminded of Hans Reichel’s Dax, which some design pirates at an outfit called “FutureBrand” toyed with and pawned off on UPS as original work, then UPS deployed the branding across their global organization, only to be served with a massive lawsuit from FontShop, as I recall. That’s the kind of thing these kinds of clauses are inserted to prevent.

JoyceKetterer

@John Butler yes, that is almost definitely the intent.  I've had that happen more than once with Omnes. Which we have been able to prove and we have been compensated for.

But what has also happened with Omnes, only once that I can prove, is that an existing licensee put out an RFP requesting a knock off of Omnes that would be made from scratch and that they could own.  The reason they could get away with that is that we don't have a design patient on Omnes (almost no one does) and are an American company so we can't copyright the letterforms.  If we were Dutch or French all outward signs suggest we could have sued the fuck out of them. 

As an aside, I see RFPs like that a couple times a year.  I decline them and tell the issuer of the RFP (usually a branding agency but sometimes the end client) that any foundry that takes on an RFP like that is already doing something widely considered unethical and so shouldn't be trusted.  

But, I get that sometimes you gotta eat.  I mostly judge the customers for these requests and not the font people doing the work.  So, rather than getting into all that or I simply said that the indemnification clause might be a trap if their request in the first place was for a knock off.