The contract commissioning a freelance designer to produce a new logo for the famous footwear brand was silent on copyright ownership. So did this allow the designer to sell some rights in it to Doc Martens’ competitor?
Who: R Griggs Group and Others and Ross Evans and Others
Where: Court of Appeal of the High Court, London
When: January 2005
This appeal dealt with the question of ownership of rights in a logo which had been designed for the "Doc Martens" footwear brand owners.
The designer of the new logo had been commissioned to do the job by Doc Martens' advertising agency. The contract between the freelance designer Ross Evans and the agency made no reference to ownership of rights in the logo to be supplied. At the time of being commissioned, Evans was told he was producing material for UK point of sale.
Evans subsequently purported to assign most of the rights in the logo to one of Doc Martens' major competitors. Griggs, the owners of the Doc Martens brand, issued proceedings to rectify matters.
At first instance, the court had sided with Doc Martens, concluding that in order to give business efficacy to the arrangements between the ad agency and the designer, beneficial ownership of copyright had to be regarded as passing to the agency and hence to Griggs.
Evans appealed that decision to the Court of Appeal. He said he did not know he was being asked to produce a logo for the client to use worldwide and only believed he was supplying something for use at point of sale.
The Court of Appeal rejected Evans' appeal. It said that an "officious bystander" at the time that the contract between Evans and the ad agency was signed, would not have viewed Evans as entitled to retain rights in the logo which could be used against Doc Martens anywhere in the world other than in respect of UK point of sale material.
The appeal judges felt that the judge's conclusion of fact, that the reference to UK point of sale was only for identification of the work to be done, was conclusive.
Accordingly, the first instances decision stood and there was an implied term in the contract that the client who was commissioning the logo was the beneficial owner of the worldwide copyrights.
Why this matters:
Audible sighs of relief here from commissioners of copyright works who fail to get it clear in the contract who is going to own the rights. To avoid years of litigation however, it has to be the better call to make the position crystal clear in the commissioning contract in the first place.