Putting the Boot into Copyright
Ask any businessman who owns a logo and he will answer “the chap who paid for it”. Ask any intellectual property lawyer who owns a logo and you’ll get the answer “whoever designed it”.
Most people would presume, like the businessman, that if someone pays a design house to come up with a logo, brand name, website or other form of marketing materials, the person commissioning the work owns them and can do what they like with them. But under the Copyright, Designs and Patents Act 1988, unless there is an agreement to the contrary, ownership of the rights in such materials, known as copyright, remains with the creator/designer and the business which commissioned the work is only given a licence or permission to use the materials. The problem, of course, is that if nothing is put down in writing, you are left to argue what the exact scope of this licence is.
This whole issue was highlighted in an English court decision earlier this year revolving around the logo used for the (in)famous “Doc Martens” boots.
The idea for the boots originated in Germany by two German doctors, Doctor Maertens and Dr Funck, developing a shoe with a thick cushioned sole primarily to sell to elderly German women with foot trouble. In the 1950’s, a British boot manufacturer, Griggs, a family firm which made the famous bulldog boot used by the British Army, obtained permission to develop the product and came up with the boot now know as “Doc Martens”, “Docs” or “DM’s”.
In 1988, Griggs decided to start adopting a new logo which they started applying inside the boots. They commissioned a local advertising agency to come up with the logo, who in turn commissioned a free-lance individual, Mr Evans, to come up with it.
Now as noted above, in the absence of any agreement, the copyright in the logo would remain with Mr Evans and in 2002, he transferred the copyright to an Australian footwear company unconnected with Griggs.
The Australian company’s purpose is unclear, as while it could “own” the copyright, any lawyer worth his salt would have been able to argue that Griggs, despite not owning the copyright, clearly had an implied licence to use the logo on an exclusive basis in their business – they had, after all, paid for it. Griggs, however, were concerned that while nothing could necessarily be done to stop them using the logo, someone else might still get some sort of right to it and so decided to take action, raising proceedings against Mr Evans claiming ownership.
In what is seen as a landmark judgement, the judge effectively “put the boot in” to accepted legal thought and decided that Griggs were entitled to require Mr Evans to transfer ownership to them, although there was no contract to this effect – accordingly, as the court decided Mr Evans was under an obligation to transfer rights in the logo to Griggs and the Australian company knew about the relationship, the court held that Griggs could force a formal transfer of rights in the logo from Mr Evans with the effect that the Australians were left with nothing.
At the end of the day, this does appear a common sense judgement – what most people would say was surely was supposed to happen anyway. For lawyers, however, it goes further as it brings about a whole new concept of what is implied in any commission contract.
It is certainly not seen as ground breaking to argue that someone who commissions a logo has an exclusive right to use it and, as such, can stop someone else doing so; but it is a further step to argue that in addition they can force the original creator to transfer ownership.
This case will have far-reaching effects in the design and marketing worlds where design houses, photographers and copywriters have always assumed that if nothing is said in the contract they will continue to own the rights in their work. In the past, the onus was effectively on the business commissioning the work to put in place a contract covering the rights to use the logo as, otherwise, the designer retained ownership and the scope of the right to use was open to negotiation; this decision now puts the onus on the design house to make it clear that the work is provided on a licensed basis only, because if the contract isn’t clear the decision now allows the design agency’s client to argue that ownership transfers and the design agency is left with nothing.
An important factor in the case was the English concept of beneficial ownership, which is not recognised in Scotland. It remains to be seen, however, whether Scottish courts will follow the English lead in now seeking to go further and imply into a contract not only a licence to use commissioned work but an implied term requiring the designer to transfer its ownership.
In the past, the law favoured the agency over its client, but now it would appear that the “Doc Martens” boot is on the other foot.
FOR FURTHER INFORMATION PLEASE CONTACT: SCOTT KERR
Scott Kerr is accredited as a specialist in Intellectual Property Law by the Law Society of Scotland and is a partner and member of the Intellectual Property Group of Semple Fraser LLP.