Article - Intellectual Property

Who Owns Copyright in Commissioned Work?

Case Comment - R Griggs Group Ltd v. Evans (No.1) [2005] EWCA Civ 11

Introduction

The Court of Appeal has recently upheld a first instance decision which gave the owners of the famous “Doc Martens” footwear the copyright in a combined “Doc Martens” / “Airwair” logo, despite the fact that the contract between the owner and the artist remained silent on the subject of copyright ownership.  As you may be aware, Section 9 of the Copyright Designs and Patents Act 1988 (‘the Act’) states that the owner of the copyright is the person that creates it.

The Court of Appeal affirmed the first instance decision, where the Judge had ruled that:

“It seems to me that when a free-lance designer is commissioned to create a logo for a client, the designer will have an uphill task if he wishes to contend that he is free to assign the copyright to a competitor.”

The Facts

The claim arose following a dispute between R Griggs Group Limited (‘Griggs’), the creator and manufacturer of Doc Martins, and an Australian competition, Raben Footwear Pty Limited (‘Raben’).  Raben had approached the artist, Ross Evans (‘Evans’), and purchased the combined "Airwair" logo from him.  They therefore asserted that there had been a legitimate transfer of the copyright in the logo pursuant to Section 90 of the Act.

Evans had been commissioned by Griggs to combine two of Griggs’ logos, and was paid for the work at a rate of £15 per hour.  In his defence, Evans stated that he understood that he had been commissioned by Griggs to design the logo for UK “point of sale” materials.  He further stated that he was unaware that the logo on the shoes or on the world-wide market.  If he had been aware of this, then he would have charged far more for his services.  On this basis, he then assigned the copyright in the logo to Raben .

Decision of the Court of Appeal

The Court of Appeal dismissed the appeal and found that the rightful copyright owner was Griggs.  The Court of Appeal decided that a term assigning the copyright from Evans to Griggs should be implied into the agreement between the parties and applied the principle of the imaginary officious bystander, asking whether Evans was to retain any rights in his creation once he had finished it, the Court concluded that the parties would have replied “of course not.”  The Court added that Evans had no conceivable further interest in the logo he had created.

Conclusion

This is a distinct change from the provisions of Section 9 of the Act.  Whilst there are some special rules for particular sub-sets of copyright, namely registered and unregistered designs, and a general exception that copyright created by an employee in the course of his employment belongs to the employer, the case seems to qualify Section 9.  Therefore, an artist should ensure that a contract commissioning a work contains a clause by which copyright in the creation is expressly reserved with the artist.

Unfortunately, where a contract is silent then the Court will imply a term giving an assignment of, or licence to use, the copyright to the commissioner where business efficacy so demands.  However, such a term must be reasonable, fair, capable of clear expression and not in contradiction with any express term of the contract.

This is an important point not to miss as the Court appears to, at present, favour commissioners rather than the creators.

Article First Published: 26 May 2005

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