Who Owns the Copyright? Dealing with 'Silent' Contracts

Article by Kit Burden and Duncan Pithouse

In R. Griggs Group Limited and Others v Ross Evans and Others [2003] EWHC 2914 (Ch), a client was able to require an independent contractor to assign the legal ownership of copyright in a commissioned piece of work to it, even though there were no contractual provisions to this effect and notwithstanding the usual vesting of copyright in the "author", as per the Copyright Designs and Patents Act 1988.

FACTS

Griggs are the UK manufacturers of the Dr Martens footwear range. They operate under licence from the inventors of the Dr Martens boots in Germany. They are licensed, accordingly, to use the trademark "Dr Martens". In addition, Griggs have their own trademark "AirWair" which they use in association with the Dr Martens trademark.

Before 1988, both the Dr Martens and AirWair trademarks appeared separately in a stylised form on the Dr Martens footwear. In 1988, Griggs decided to combine the two logos into a single logo. Griggs commissioned a local advertising agency to create the combined logo, who in turn engaged a freelance designer, Ross Evans, to create the design. The agency purported to assign the copyright to Griggs, but Evans claimed that such assignment was invalid on the grounds he owned the copyright in it and had not himself assigned it to the agency. Griggs claimed that they were the owner of the beneficial (as opposed to legal) title to the copyright in the combined logo and being so, were entitled to an assignment of the legal title to them. The parties agreed that the combined logo was protected by copyright under the Copyright Designs and Patents Act 1988 ("CDPA 1988"); the issue in question related to the ownership of the copyright in the combined logo.

OWNERSHIP OF COPYRIGHT UNDER THE CDPA 1988

The CDPA 1988 provides that the "author" (i.e. the person that created the relevant work) is the first owner of copyright in the work except when the work is made by an employee in the course of his employment, in which case the first owner will be his employer, subject to any agreement between the employer and employee to the contrary.

The agreement between the advertising agency and Evans was silent in relation to the ownership of the title to the copyright in the combined logo. It was established that Evans, as a freelance designer, was the first owner of the legal title to the copyright and it was the ownership of the beneficial (or equitable) title that required consideration...

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