In a colourful judgment laced with curious details about the improbable Dr Martens brand – whose functional boots, incorporating soles originally sold to elderly German women with foot trouble, have been enthusiastically adopted by a diverse market in over 78 countries including policemen, skinheads, the Rt Hon Tony Benn and feisty teenage girls – Peter Prescott QC (sitting as a deputy judge in the High Court) has nudged the legal concept of “equitable ownership” of copyright in a direction which will be applauded by clients but will be less welcome to advertising and design agencies and creative suppliers in general.
Dr Martens boots are made by a group of companies originating from the family firm of Bill Griggs, the producer of the famous bulldog boot used by the British army. In 1988 Griggs commissioned a small advertising agency in Kettering, Irwin Jordan Ltd, to produce a new logo combining their existing Dr Martens and AirWare logos. The combined logo has continued to appear on Dr Martens footwear ever since.
The issue in this case was simple: “A client goes to an advertising agency and pays them to design a new logo. The agency employs a freelance designer to produce the design. Nothing is said about copyright. Who gets the copyright in the logo?”
The designer who drew the Dr Martens logo, Ross Evans, was an independent contractor hired by the advertising agency for a standard rate fee of £15 an hour. The agency knew that Griggs intended the logo to be used for the branding of Dr Martens footwear generally. (The judge accepted that Mr Evans was not told by the agency about this general purpose for the logo, believing that he was being asked to design a logo merely for point of sale material for use in the UK. However, he found that this had not been of any consequence to Mr Evans at the time.)
The logo created by Mr Evans was undoubtedly a copyright artistic work, even though the concept – to combine two logos already in use by Griggs – was not “earth-shaking” and was proposed by the client. Because Mr Evans, the author of the work, was not an employee of Irwin Jordan and copyright had not been discussed, the legal title to the copyright in the logo belonged to Mr Evans.
To understand how Griggs ended up being declared the “beneficial owner” of the copyright, two legal concepts need to be explained: implied terms in contracts and equitable ownership of copyright.
Implied terms in contracts
A number of conditions must be satisfied before a term can be implied into a contract. The term must be necessary to make sense of the contract commercially (to give it “business efficacy”) and it must be so obvious that “it goes without saying.” If, for example, a creative supplier is commissioned to produce a drawing or photograph, with no discussion of copyright, the courts will readily imply a term in the contract giving the client a licence to use the material for the purposes for which it was jointly contemplated that it would be used at the time of the engagement.
Equitable ownership of copyright
If the creator of a work agrees to assign copyright to the client, the client entitled to that assignment becomes the “equitable” or “beneficial” owner of copyright. The court will order the legal owner to assign the copyright to the equitable owner, the equitable owner can sue people who infringe the copyright and the equitable owner is to all intents and purposes the real owner of the copyright.
In the 1998 case of Robin Ray v Classic FM, Mr Justice Lightman emphasised a minimalist approach towards implying copyright assignments. If sense can be made of an agreement by implying either a licence or an assignment of copyright, only a licence will be implied. However, an assignment of copyright might be necessary “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.”
The judge in the Dr Martens case considered that the design of a logo would normally be a typical example of just such an exception from the minimalist approach. It was obvious to him that the right to use the logo, and to exclude others from using the logo, was to belong to the client, not the designer. The designer was the legal owner of copyright, but Griggs was the owner in equity.
It seems that a copyright assignment is most likely to be implied where a supplier is paid a fixed fee for material that is intended for use by the client on an exclusive basis without any time or geographical limits. However, each case has to be looked at on its own facts. In some cases it will be debatable whether an assignment or merely a licence is necessary to make sense of the agreement.
The lesson to be learned, for both client and supplier, is clear. The copyright position should be dealt with at the outset. If the client expects to own the copyright it should agree this with the supplier, preferably obtaining a written assignment. If the supplier expects to retain copyright he or she should make this clear, specifying the extent of the client’s licence in writing. Freelance creative suppliers should not assume they own the copyright in their work just because the Copyright Act says that the owner of the copyright is the author.