Full case report

Griggs Group Ltd & Others v Evans & Others

Reference [2003] EWHC 2914 (Ch)
Court Chancery Division

Judge Peter Prescott QC

Date of Judgment 2 Dec 2003


Summary

Intellectual Property – Trademarks – Copyright – independent contractor – equitable ownership


Facts

The Claimants manufactured Dr Martens boots, under licence from the German inventors. They used the trademark “Dr Martens” under a similar licence. They also used their own trademark “AirWair”. From 1988 the two trademarks were used in a combined form. The combined logo was drawn by the first Defendant, working for a local advertising agency on a freelance basis. In 2002 the first Defendant assigned his copyright to the second Defendant, an Australian footwear company. The Claimants claimed they were beneficial owners of all aspects of the copyright in the logo, sought a declaration accordingly and an order that the copyright be formally assigned to them.


Issue

It was common ground that the logo was protected by copyright. It was also agreed that the first Defendant was an independent contractor and thus the first legal owner of the copyright in the combined logo. The court was required to determine who was the owner in equity.


Held

The Judge reviewed the principles concerning equitable ownership in a work commissioned by a client where the commission is silent on copyright ownership. He relied primarily on the judgment of Lightman J in Robin Ray v Classic FM plc [1998] FSR 622 which had set out 9 principles governing the respective rights of the Contractor and Client in the copyright in a work commissioned by the Client, particularly emphasising that the Client is only likely to have obtained an equitable interest in the work “if the Client needs in addition to the right to use the copyright works the right to exclude the Contractor from using the work and the ability to enforce the copyright against third parties.” Analysing the facts the Judge found although the question of copyright was discussed at the time it was obvious, and would have been so to an officious bystander, that the right to use the logo and to exclude others from using it, was to belong to the client and not the designer.


Comment

Although the result was unsurprising – the Judge found the proposition that the copyright in the logo did not belong to the Claimants to be “astonishing” – it is significant for three reasons. (1) The careful exposition of the interplay between copyright and trademark protection, and the Judge’s explanation of how the copyright and trademark rights in a logo may belong to different people in such a way that, unless the issue is dealt with by contract or is sufficiently obvious that a term can be implied, each party may be able to prevent the other from making any effective use of the logo. (2) The finding that in most cases it is obvious that a client who commissions a logo wants to enjoy more than a mere licence to use it; he wants the right to prevent others from using it. (3) Consideration of whether Lightman J’s 5th requirement that a minimalist approach be taken to the implication of terms was correct. Epilogue: the appeal against this decision failed: [2005] EWCA Civ 11.


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Instructing Solicitors

Shoosmiths for the Claimants; Collyer Bristow for the Defendants