R. Griggs Group Ltd & Ors v Evans & Ors

Where a client commissions a freelance designer to create a logo for payment, the designer is ordinarily the first legal owner under Copyright, Designs and Patents Act 1988, section 11. The client may nevertheless acquire beneficial ownership in equity through an implied contractual term. The question is what the client agreed to pay for and whether the copyright, an appropriate licence, or nothing was bought. For a logo, a mere right to use it will rarely give the client the necessary protection. It will ordinarily be obvious that the client requires the right to exclude the designer and others from reproducing it. The court should imply no more than is necessary, but in this case necessity required an assignment of the beneficial copyright, not merely an exclusive licence. An informal settlement proposal did not create an accord and satisfaction where its terms remained unsettled.

The claimants commissioned a combined Dr Martens and AirWair logo through an advertising agency. The first defendant, an independent freelance designer, created the drawing and was paid by the agency. The agency later assigned the copyright to the claimants. The first defendant subsequently assigned it to the second defendant, which asserted ownership.

The claimants sought a declaration of ownership and an order for assignment. The central issues were whether the first defendant retained the beneficial copyright despite the commission and payment arrangements, whether the claimants had only a licence, and whether correspondence in 2002 had produced an accord and satisfaction.

1. Copyright and trade marks. A word or phrase is not itself a copyright work, but a stylised drawing of it may be an original artistic work. Copyright protects the skill and labour in the drawing, whereas trade mark law protects the distinguishing function of the mark. The two rights may belong to different persons.
2. Legal and equitable ownership. Under section 11 of the Copyright, Designs and Patents Act 1988, an independent contractor is the first legal owner. The section does not determine equitable ownership. That depends on contractual and equitable principles. A client who has bought the copyright in equity may require the legal owner to assign it.
3. Commissioned logos. The mere fact of commissioning is insufficient. The court must determine what the client agreed to pay for. An implied term must satisfy the established requirements for implication and must adopt the minimum right necessary to give the contract business efficacy. A licence is ordinarily implied where that is sufficient. But a logo will usually require the client to exclude the designer and third parties from reproducing it, making it a paradigm case for an implied assignment where those rights are necessary.
4. On the evidence, the parties intended the client to own the right to use and exclude others from using the combined logo. The designer’s standard hourly payment was not shown to be inadequate. The claimants were therefore the beneficial owners, and judgment was entered for them. The defendants were not purchasers for value without notice.
5. The correspondence did not create an accord and satisfaction. The proposed assignment had not been accepted, and its terms remained open. This issue did not affect the result because the claimants already owned the copyright beneficially.

First-instance judgment. No earlier or appellate decision is stated in the judgment.