A decision by the High Court in R Griggs Group Ltd and Others v Ross Evans and Others, provides a stark warning to freelance designers of commissioned copyright work. It was ruled that a commissioner had more than a mere implied licence to use the commissioned work in question. Where a commissioner intends to stop others using or copying the work, it may be deemed to be the beneficial owner and therefore entitled to legal ownership.
The Griggs Group uses the Dr Martens logo under licence and also uses its own logo AirWair, both logos being registered as trade marks. In 1998 the Group commissioned an advertising agency to design a new logo based on a combination of the two existing logos. A freelance artist, Mr Evans, was then commissioned to design the combined logo. There was no agreement regarding ownership of the copyright in the new logo.
Mr Evans subsequently assigned the copyright in the logo to Raben Footwear, a competitor of Griggs. As the author of an artistic work and not an employee of the agency, the legal title to the copyright in the logo vested in Mr Evans, pursuant to Section 11 of the Copyright, Designs and Patents Act 1988. The question was who owned the title to the copyright in equity?
In the case of a work that is commissioned by a client, the issue is "what the client under the contract has agreed to pay for and whether he has "bought" the copyright." It was accepted that the Griggs Group would have an implied licence to use the logo. The judge further considered that where a designer was commissioned to create a logo for a client, it would normally be necessary in order for the contract to make sense commercially, to imply more than simply a licence to use. In circumstances where that client requires not only the right to use the logo but also the right to prevent others from using and reproducing the logo, a term assigning the copyright beneficially to the client may also be implied.
The judge confirmed that Mr Evans was the legal owner of the copyright under s11 of the Copyright, Designs and Patents Act 1988, as author. It was "so obvious that it went without saying" that the right to use the logo and to exclude others from using the logo belonged to the Griggs Group and not to Mr Evans. As beneficial owners of the copyright, the Griggs Group was entitled to an order requiring Mr Evans to transfer the legal ownership of the copyright to the Group.
The case appears to go further in deeming beneficial ownership than previous case law and provides a warning to freelance designers who assume that as the author of their work they are entitled to copyright ownership. The outcome highlights the importance for both parties in establishing the position in relation to copyright at the outset of the arrangements.
For further information, please contact Stephen Whybrow by telephone on +44 (0) 20 7367 2175 or by email at [email protected], or Lucy Kilshaw by telephone on +44 (0) 20 7367 2044 or by email at [email protected]
