R Griggs Group Ltd & Ors v Evans & Ors

A commission does not, without more, transfer copyright from the author. The client must establish an express or implied contractual term. Any implied term must be necessary to give the contract business efficacy and must confer no more than is necessary.

Where a freelance designer is commissioned to create a composite logo for a client, the necessary implication may be that the client receives the whole beneficial ownership of copyright. A limited licence will not suffice where the client needs to prevent others from reproducing the logo and to enforce the copyright. The result depends on all the circumstances, including the purpose of the commission, the creator’s continuing interest in the work, and the agreed payment.

The claimants manufactured and marketed Doc Martens footwear. They commissioned an advertising agency to develop a combined logo from their existing marks. The first defendant, a freelance designer engaged by the agency, created the logo.

The designer was initially the copyright owner. In 2002 he executed a written assignment of the legal title to the second defendant. The claimants contended that the agency, and ultimately they, had acquired the beneficial ownership under the commissioning contract.

A Deputy High Court Judge declared that the claimants owned the copyright in equity: [2003] EWHC 2914; [2004] FSR 31. He subsequently held that the court could make orders concerning foreign intellectual-property rights: [2004] EWHC 1088; [2004] FSR 939. The defendants abandoned their appeal from the latter ruling. The remaining issue was whether the commissioning contract implied full beneficial ownership for the claimants, or only a limited licence for United Kingdom point-of-sale material.

Appeal dismissed unanimously. Jacob LJ, with whom Lloyd J and Chadwick LJ agreed, upheld the declaration that the claimants were the equitable owners of the worldwide copyrights in the logo.

1. The starting point was that the author owned the copyright. A commission alone did not displace that position. The parties’ contractual terms, express or implied, determined whether the author was required to transfer ownership or grant a licence.

2. The court approved the general approach in Robin Ray v Classic FM [1998] FSR 622. A term may be implied only where necessary, and the term chosen must not exceed what business efficacy requires. The question is fact-sensitive; the need to exclude the creator and enforce copyright against third parties is a powerful indication that full ownership, rather than a licence, was intended.

3. On the Deputy Judge’s findings, this was a paradigm logo commission. If asked at the time of contracting whether the designer could retain rights capable of being used, or sold for use, against the client outside United Kingdom point-of-sale material, the parties would plainly have answered no. Full beneficial ownership was therefore the necessary and obvious implication.

4. The references to United Kingdom point-of-sale material identified the work requested. They did not define or restrict rights in the logo. The finding that the designer received the proper agreed rate also defeated any basis for implying that he retained copyright in order to obtain further payment for wider use.

5. The court noted that unforeseen or undisclosed further use can, in an appropriate case, support an implied right to further payment or leave copyright with the author. That result depends on the circumstances and did not arise here. The agency’s unincorporated invoice wording was irrelevant to its contract with the designer.

The appeal from the first judgment was dismissed, with costs against the appellants. The appeal from the second judgment had been abandoned.

• Court of Appeal (Civil Division): Dismissed the appeal from the equitable-ownership declaration in [2005] EWCA Civ 11. The associated appeal concerning foreign intellectual-property rights was abandoned.
• High Court, Chancery Division: Mr Peter Prescott QC, sitting as a Deputy High Court Judge, declared that the claimants owned the logo copyrights in equity: [2003] EWHC 2914; [2004] FSR 31.
• High Court, Chancery Division: Held that the court had power to make orders affecting ownership of foreign intellectual-property rights: [2004] EWHC 1088; [2004] FSR 939. No appellate determination was made because the appeal was abandoned.