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Implied licenses and copyright

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If you commission someone to create a work such as a logo or a piece of software, any copyright
which arises from this will remain with the author unless it is assigned in writing to you.
However all is not lost as you will be entitled to an implied licence to use the work for the
purposes for which you commissioned the work. In this way you may have some form of beneficial
ownership of the copyright .

An example of one of the cases which has provided guidance on this matter is set out below:

The UK company, R Griggs Group Limited (‘Griggs’), which manufactures and distributes the well
known Dr Martens range of footwear, had its claim to the copyright in its logo comprising the two
trade marks ‘Dr Martens’ and ‘AirWair’ upheld by the Court of Appeal.

The combined logo was originally designed for Griggs by a freelance designer, Mr Ross Evans, on
behalf of an Advertising Agency commissioned by Griggs to do so. At the time the agreement was
silent as to ownership of the copyright and as such the legal title remained with the designer. On
discovering this Griggs entered into negotiations with him to obtain an assignment of the
copyright so that it would be the owner. However Mr Ross Evans was not satisfied with the proposed
terms and so assigned it to an Australian company Raben Footwear Pty Limited.

Consequently Griggs initiated Court proceedings on the basis that it was the beneficial owner of
the copyright seeking an order that it should be assigned to it. Mr Peter Prescott Q.C sitting as
a Deputy Judge in the High Court found in its favour in December 2003.

The Defendants Mr Ross Evans, Raben Footwear Pty Limited and others appealed on the basis that Mr
Ross Evans had only been employed to produce a logo for use on point of sale material and as such
any exclusive license would only extend to this; he therefore contended that in other respects he
was free to deal with the copyright as he wished. In support of this he contended that he would
have charged more had he known that it was to be put to other uses; (a point which was rejected by
the Deputy Judge on the basis of lack of evidence of such practice.)

Rejecting the appeal Lord Justice Jacob stated that “I find that conclusion fantastic. If an
officious bystander had asked at the time of contract whether Mr Evans was going to retain rights
in the combined logo which could be used against the client by Mr Evans (or anyone to whom he sold
the rights) anywhere in the world, other than in respect of point of sale material in the UK, the
answer would surely have been "of course not." Mr Evans had no conceivable further interest in the
work being created – indeed he surely would never have had the job at all if there had been a
debate about this and he had asserted that that was to be the basis of his work.”


About the Author

Lawdit Solicitors offer services and advice for litigation, commercial contracts, Intellectual Property and IT legal agreements. We are experts in commercial law with a heavy emphasis on Intellectual Property, Internet and e-commerce law. Lawdit is a member of the International Trademark Association, the Solicitors' Association of Higher Court Advocates and we are the appointed Solicitors to the largest webdesign association in the world, the United Kingdom Website Designers Association.



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Article Published/Sorted/Amended on Scopulus 2007-08-16 18:46:15 in Legal Articles

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