December 2003
Doctor Martens Put the Boot in… on Freelancer's claims
A recent High Court decision involving Doctor Martens and a freelance designer highlights the dangers of not agreeing who owns the copyright in commissioned designs and how the courts will ultimately decide who in fact does own it. Their decision will be reassuring for some and worrying for others.
Essentially the case concerned the ownership of the copyright in a logo used to market Doctor Martens boots. It was created in 1988 by a freelance graphic designer engaged on an informal basis by an agency. The agency was in turn engaged by R. Griggs Group Limited (Doctor Martens).
There was no agreement as to who owned the copyright in his work but when the designer attempted to sell the copyright to an Australian company with whom Doctor Martens were less than friendly, Doctor Martens objected.
The question the court had to answer, therefore, was who owned the copyright in the logo.
The answer was that the designer owned the "legal title" but that Doctor Martens owned the "beneficial title". It is the beneficial title that has the value and is most important. The owner of the beneficial title can insist on an assignment of the legal title and has the rights that go with copyright ownership. Effectively Doctor Martens was found to own the copyright.
This seems at odds with the established concept that copyright belongs to the person who creates a work unless they are an employee or there is an agreement to the contrary.
However the court decided that because it was a logo designed for Doctor Martens and because Doctor Martens would be the only company entitled to use it, the parties must have intended that it would own the copyright. This would therefore be implied into the agreement between the parties concerned.
A number of factors were considered by the Judge including the sum paid for the work, the expectations of Doctor Martens when it commissioned the work and how the copyright would be used.
BRIFFA Comment:
It seems logical that the Doctor Martens should own the copyright in a Doctor Martens logo that was designed for it. It would have expected to own the rights in the new logo but by not expressly agreeing that it would, it had to rely on the court to make a determination.
Relying on informal arrangements is therefore risky and whilst this decision will be comforting to some businesses (especially those who have engaged freelancers to do design work for them) it also confirms that there are only certain cases where the ordinary rule that the creator owns the copyright will be circumvented.
In the case of a software package it is likely that the copyright will remain with the developer and that an implied licence would exist to use software in the business whilst the developer can also exploit it elsewhere.
There are other good reasons for having contracts but leaving issues such as copyright ownership unclear creates damaging commercial uncertainty, particularly when dealing with intellectual property rights.