Exclusive usage of a typeface

Sabina Kipara

Helo everyone!

I have recently started working as a type designer for a graphic and product design studio. We have been discussing of creating a typeface with exclusive rights for one of our clients. Could you give my some information about this process?

I have been searching on the web and I saw some information related to Trademarks and Patents but it is not clear to me how an exclusive typeface becomes exclusive and registered internationally for a certain brand. Could you give me some advice?

Thank you!

Deleted Account

The design itself cannot be internationally protected. The name may be trademarked in whatever countries allow trademark registration of this kind. The software that defines the typeface, i.e. the fonts, may be copyrighted in certain countries that allow software copyrights of this kind.

If one of your clients wants one of these, which not uncommon, one of your clients should have a lawyer who researches what I've just written to you, and takes it from there. Or, if you want more information, people here will likely show up and begin giving you quotes on the design, during which they may be convinced to discuss design protection.

Sabina Kipara

Thank you David!

That is basically the information I have found as well but I had doubts. In this case what makes the typeface exclusive is only the fact that we won't sell it to another client?

SiDaniels

Sabina, I assume you'll be producing the font under some kind of "work for hire" agreement. You should have that reviewed by your own attorney, to make sure you are allowed to produce similar work for other clients - if the exclusivity terms are too broad this client could interfere with your ability to do future work.

John Hudson

Also confirm with the client whether they want to a) own all rights, b) have perpetual exclusive license rights, or c) have temporary exclusive license rights. The first two are functionally very similar in terms of the client's use of the font, but are legally distinct in terms of who owns the intellectual property and what they might be able to do with it in future. In option (a), you sign over all rights to the client, which means they can do whatever they want with the font, including hiring other designers to modify or extend it for them, or even licensing it to third parties in future. In option (b) you retain rights and can specify the license terms under which the client may use the font and what they can do with it in future; this is a way to protect possible future revenue streams, requiring them to come back to you for modifications or extensions, and also leaves open the possibility of a future renegotiation if they eventually decide they no longer want/need exclusive licensing. In option (c), the client has a specified period of exclusive use of the font, perhaps with a renewable clause, after which you would be free to license it to other customers.

Obviously the pricing of the project should depend on which of these options is chosen. If the client wants to own the font outright, then they should pay a premium. If they want a perpetual exclusive license, then you need to consider the likelihood that they will come back with more work, and factor that into the pricing. If they are content with temporary exclusivity, then you should consider how likely it will be in future that other customers might want to license it.

Sabina Kipara

Thank you so much John! This helps a lot. I think that option b is the best for both parts. The only thing I should investigate, or the attorney should, is the process that must be followed in order to validate option b in legal terms.

Thomas Phinney

Besides what has already been said, there is a way of protecting the abstract design of a typeface in the USA: a design patent. This is a bit more pricy, and as a limited duration of about 20 years, but is the only protection of that kind in the USA (as in the USA copyright only applies to the digital outline font, not the abstract design).

Trivia point: the first design patent ever was for a typeface.

George Thomas

And, for the superstitious among us, the very first Design Patent issued to George Bruce contained exactly 666 words.* So now you know why we have to continuously suffer from font piracy -- we were doomed from the start.

*IIRC, the word count is written on the second page of that document.

Chris Lozos

Had to be 666.

SiDaniels

The devil is in the details.