MEI Fields Designs Ltd v Saffron Cards And Gifts Ltd & Anor

Copyright ownership by an employee is a multifactorial assessment. Relevant considerations include the employment terms, where and when the work was created, provision of materials, direction, the ability to refuse work, and whether the work was integral to the business. No factor is decisive.

Employees who merely digitise or clean up an author’s work do not become joint authors without a sufficient creative contribution and collaboration. A sole director may be jointly liable for company infringements where he actively co-operates in, and intends to bring about, the infringing acts. A poorly drafted copyright document may nevertheless operate as an assignment when its wording and commercial context support that construction.

Mei Fields Designs Ltd claimed copyright infringement against Saffron Cards and Gifts Ltd and its sole director, Paul Steele. The dispute concerned greeting cards designed by Mei Fields before and after the termination of a licensing agreement.

The defendants disputed ownership, alleging that copyright belonged to Fields’s former employer, Metropolis Worldwide Ltd, jointly or beneficially, or had been acquired by Saffron. They also denied that certain later cards copied a substantial part of the earlier works and denied Mr Steele’s personal liability.

The court determined ownership, assignment, joint authorship, infringement, joint tortfeasorship and the defendants’ counterclaim for declarations and publication orders.

1. Ownership. The question whether works were created in the course of employment under Copyright, Designs and Patents Act 1988, s 11, required assessment of all the circumstances. Relevant factors included the employment terms, place and time of creation, materials, direction, ability to refuse the work and its integration into the business. The relevant cards were designed outside the scope of employment. Fields was therefore the first copyright owner, and the presumption in s 104(2) was not rebutted.
2. Alternatively, if the designs had been created in the course of employment, there was an oral agreement to the contrary under s 11(2), preserving Fields’s ownership. The same conclusion followed in relation to the alleged fiduciary duty arising from her directorship.
3. The junior designers’ scanning and cleaning of the designs involved no sufficient creative contribution or collaboration. Metropolis was not a joint owner under s 10(1). The presumption that Fields was the sole author was not displaced.
4. The handwritten document of 10 April 2012 was an effective assignment. Although internally inconsistent, its principal wording and commercial consequences favoured an assignment rather than a licence.
5. Cards sold after termination of the licence infringed. Of the Group B cards, COU002 and COU004 copied a substantial part of Fields’s skill, judgment and creativity. The remaining pleaded cards did not.
6. Mr Steele was jointly liable. As sole director and shareholder, with final control over major decisions and the relevant designs and sales, he actively co-operated in and intended the infringing acts. The evidential approach in Grenade (UK) Limited v Grenade Energy Limited and Another was adopted, subject to the Supreme Court’s reasoning in Sea Shepherd UK v Fish & Fish Ltd.
7. The counterclaim was dismissed. Declarations and publication orders had no utility because Saffron had ceased the relevant business. The claim was upheld in part, with consequential orders to be determined later.