When the famous boot maker commissioned a new logo, they didn’t expect the designer to assign the logo rights to a competitor. They went to Chancery to get their rights back.
Who: R Griggs Group Limited and Others v Ross Evans and Others
Where: Chancery Division of the Royal Courts of Justice, London
When: December 2003
The Griggs Group is the home of the "Dr Martens" range of footwear. In 1988 they decided to combine two of their logos into one. They featured stylised words and images. One was the distinctive "Dr Martens" logo with the words shaped like the famous boot, whilst the other featured the words "AirWair" and "with bouncing soles" and some artwork surrounding it.
Griggs commissioned a local advertising agency to produce the combined logo ("the Logo"). The agency commissioned a freelance artist, Ross Evans, to do the job. There was nothing by way of a written agreement concerning who would own the intellectual property rights in the product of Evans' labours. Evans went ahead and did the job and supplied the Logo to Griggs via the ad agency. Subsequently, for reasons that are not relevant here, Evans purported to assign the copyright in the Logo to a third party company called Raben Footwear Pty Limited of Australia. Raben happened to be one of Griggs' keenest competitors.
In the proceedings in which judgment was pronounced by Peter Prescott QC sitting as a deputy Judge on 2 December 2003, Griggs sought a declaration from the court that it was the beneficial owner of the copyright in the Logo.
It was accepted by all parties that the Logo was protected by copyright. The big question was who owned that copyright.
In his judgement Peter Prescott QC confirms that it is possible for two different entities to own trademark and copyright rights respectively in a single logo. This was the case here, since both of the branding devices which made up the Logo were registered trademarks owned by Griggs. The deputy Judge also underlined that even though an entity might own the legal title to copyright in a work, another party might be the owner of that copyright in equity and as a result entitled to come to the court for a declaration that they were the true owner of the rights.
In this particular case, the owner of the legal title to the copyright in the Logo was Evans. This was because he was not an employee of either the advertising agency which commissioned him or of Griggs and there was no separate written agreement between Evans and the advertising agency by which he gave them the copyright in any work he supplied to them.
The Judge commented that it is often the case that a copyright work is commissioned by a client, but the question is who is the owner in equity. "The issue in every such case" the Judge went on "is what the client under the contract has agreed to pay for and whether he has "bought" the copyright."
The alternatives in each case he went on, are that the client has bought the copyright, some form of copyright licence or nothing at all.
In this case, where a designer is commissioned to produce a logo for a client, the Judge felt that the designer would always have "an uphill task if he wishes to contend that he is free to assign the copyright to a competitor." This is because, in order to give business efficacy to the contract, it will rarely be enough to imply a term that the client should enjoy a mere licence to use the logo and nothing more. In most cases it will be obvious, Prescott went on, it would "go without saying" that the client will need further rights and these must surely include the right to prevent others, including its competitors, from reproducing the logo.
Evans argued that because of the relatively low rate of pay he received for the job from the advertising agency (£15 per hour) this should not be regarded as enough to include the full copyright in the product of his labours. Evans said in evidence that had he known that he was being asked to produce a logo for all kinds of use all over the world he would have charged far more than this. However he did not know because he was not told.
The Judge accepted that Evans may well not have been told about the full purposes Griggs had in mind for the Logo, which was for branding of their Dr Martens/AirWair footwear generally, throughout the world. On the evidence, the advertising agency which commissioned Evans was aware of this, and in the Judge's view, whatever Evans was saying in evidence now, he did not reflect on the matter either way at the time and it was of no consequence to him. In other words, it was not shown on the balance of probabilities that the amount Evans would expect to charge would have been materially affected by the use to which the Logo was going to be put.
This meant that although Evans was the legal owner of the Logo copyright, the judge held "it to be obvious (so obvious that it went without saying) that the right to use the logo, and to exclude others from using the logo, was to belong to [Griggs] and not to Mr Evans."
This meant that Evans' attempt to assign the copyright to Raben was ineffective and Griggs were entitled to a declaration from the court that they were the beneficial owners of the Logo copyright and were also entitled to an order requiring Evans to transfer the legal ownership of the copyright to them.
Why this matters:
On the facts, the outcome of this case is not altogether surprising, but it does underline the importance of establishing at the start of arrangements of this kind, who is going to own the intellectual property rights in the end result of the process.