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Friday, 12 December 2003

PUTTING THE BOOT IN: DOC MARTENS FLATTEN LOGO COPYRIGHT ASSIGNEES

In R Griggs Group Ltd, R Griggs & Co Ltd and Airware Ltd v Ross Evans, Raben Footwear Pty Ltd, Ronny Leopold Lewy and Garry Lewy [2003] EWHC 2914 (Ch), on 2 December, Deputy Chancery judge Peter Prescott QC had to tackle the question of ownership of copyright in a trade mark-protected logo. Griggs made and sold "Dr Martens" boots. These boots all bore the DR MARTENS trade mark (which Griggs used under licence) as well as a second trade mark AIRWAIR, which Griggs owned. In 1988 a combined logo was designed, incorporating both DR MARTENS and AIRWAIR. The combined logo was designed by Evans, a freelance graphic designer for the advertising agency retained by Griggs. The other defendants took an assignment of copyright from Evans on the basis that he, not Griggs, was the first owner of the copyright. Griggs sued for a declaration that it was the beneficial owner of the copyright in the combined logo. Peter Prescott QC upheld Griggs’ claim. When a freelance designer was commissioned to create a logo for a client but the commissioning contract was silent, a term could be implied on the basis of business efficacy that the copyright should be assigned to the client so that he could prevent others using the logo. Although Evans was the legal owner of the copyright in the combined logo when he created it, he was not entitled to beneficial ownership of it. He received his normal hourly rate to create the combined logo and it was not shown that the amount he expected to be paid would be materially affected by the use to which the combined logo was put. In the circumstances it was obvious that the right to use the logo and to exclude others from using it was to belong to Griggs, not Evans. The defendants did not agree. Said one of them: “We were shafted”.

The IPKat agrees. The defendants who took an assignment of the legal interest in the copyright were competitors of Griggs, who could not lawfully have used the combined logo in any of the countries in which Griggs traded. Business that commission logos, badges etc should however make sure they take an assignment of the copyright up front and that, where they hire a design agency that uses freelance talent, the design agency’s contract with any independent designer reflects the commercial reality. Otherwise all that happens is that, as here, the parties become embroiled in fruitless litigation as to which of them owns a copyright work which only one of them can profitably use.

Other copyright infringement involving Raben Footwear here
Airwair here and here
Other much loved doctors here, here, here and here

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