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
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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