February 2005
Dr. Martens sticks the boot in
Dr.Marten has again successfully defended their right to the Dr.Marten logo against a claim of ownership by a freelance designer.
The range of footwear is manufactured and distributed by R.Griggs Group Limited and has recently had its claim to copyright accepted by the Court of Appeal. The copyright in the Dr.Martens logo comprises the two trade marks - "Dr Martens" and "AirWair". The claim took place because the combined logo had been designed for Griggs by a freelance designer, working for an advertising agency. When Griggs attempted to obtain an assignment of the copyright, the designer, not liking the proposed terms, assigned it to an Australian footwear company. In response to this, Griggs sought a court order that the copyright should be assigned to them, as they claimed to be beneficial owners. The court found in favour of Griggs in December 2003.
An appeal followed and the designer contended that he had been employed merely to create some point of sale material for the claimant and that had he known that he was being instructed to produce a logo for all kinds of use, all over the world, he would have charged more than his standard rate. The appeal was dismissed and the officious bystander test was applied to the particular case. Whether or not a term would be implied that copyright would invariably belong to the client in all cases where the client needed the right to exclude the contractor from using the work and the ability to enforce the copyright against third parties, would depend on all the factual circumstances.
BRIFFA Comment
It is a requirement that any assignment of copyright needs to be set out in writing. The reason for this is that copyright is seen as a property right and all property must be transferred in writing. However, in this case the written agreement between the freelancer and his agency did not provide for copyright ownership to change hands. As such, the High Court decided that in order for the contract to be effective, i.e. in order for the commissioner to be able to use the mark they had ordered, a term assigning copyright had to be implied into the agreement between the freelancer and his agency. The Court of Appeal rightly agreed with this.
Oversights of this nature are common in the field of design. The decision was a common sense one when applied to this set of facts. However, reliance on implied terms is extremely risky. The only way to make sure that rights are owned as they are expected to be owned, is to set it out in a contract.