Exclusive Rights

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So I've recently been contacted about creating a custom font for a company. 
This would be the first time that I've designed something where I intend to hand full and exclusive rights over at the end of it.
With that said, what all would I have to provide this company with aside from the font files? I assume a regular EULA doesn't cut it in this scenario.

Thanks in advance!

Sean
#1 - 2016-01-19, 16:22

CEO, FontLab
Well, if they get all rights, then it is work for hire. You and they should still have that spelled out, too.

But there are some options and such that might be of interest and are at least worth considering.

  • You could reserve the right of first refusal on modifications. If they want the typeface modified or extended with more characters or styles, they have to come to you first, and they can’t offer to pay anybody else more for the work than they offer you. (If you are not willing to do it at that rate, they have the right to go elsewhere, however.)

  • I know you said “exclusive,” but you could make it a license (with all the rights they want or need) rather than work for hire, and limit the period of exclusivity. One, two, three, five or even ten years is still more interesting to you than forever. At the end they can still do anything they like, but you can license it to others or do whatever else you like.

Cheers,

T
#2 - 2016-01-23, 14:07

CEO, FontLab
So I've recently been contacted about creating a custom font for a company.
This would be the first time that I've designed something where I intend to hand full and exclusive rights over at the end of it.
With that said, what all would I have to provide this company with aside from the font files? I assume a regular EULA doesn't cut it in this scenario.

I would agree.

So, first off, I am NOT a lawyer. Your best bet for serious legal advice on font licensing is to consult a lawyer. For example, Frank Martinez of New York, who specializes in licensing and IP issues for type designers and font foundries.

As I understand it, you have two main options: custom license, or a work-for-hire agreement.

So, my question is, will you retain any rights at all? If you still have some rights, and you wish to be able to revoke their license for failing to respect those rights, then a custom license would seem to be in order. Some rights you might retain even with an exclusive license would be: right of first refusal on modifications, that they must identify you as the designer in any publicity, that they can't modify the font without your permission (at least, while you are still living)... among others. Be sure that their rights allow for the kinds of subsetting and format-modifications that they will need for web fonts, etc.

If you really are good with just handing it over and letting them use it as they will and they own it outright in all ways, then a work for hire agreement that spells out that they get all rights is what they need.

My understanding is that in some jurisdictions, even in the absence of a legal agreement, even when the work being done is work for hire, you may still have some intellectual property rights in the final output. I believe that it is in everyone’s interests to clearly spell it out instead of relying on the defaults of your local legal system. (Which could get even more complex if you are in different countries and it is unclear which laws apply.)
#3 - 2017-02-04, 10:48

Usually the enterprise has full rights for the employee's work.
#4 - 2017-04-09, 13:46
To want to, is to be able to.

CEO, FontLab
True, but that does not apply here as the poster is not an employee.
#5 - 2017-05-02, 13:14

This sounds like a headache. How did this play out in the end, Sean? What kind of agreement did you sign?
#6 - 2017-12-13, 08:10

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