Beneficial Ownership of Intellectual Property Rights

January 2004

Record Labels, Artists, Merchandisers
R Griggs Group Ltd & Others -v- Ross Evans (1) Raben Footwear Pty (2) & Others (2003) 

The claimants manufacture and sell the well known Dr Marten boots and footwear. Dr Marten is a registered trade mark and used by the claimant under licence. The boots also carry the Air Ware logo, a trade mark owned by the claimant. In 1988 a combined logo incorporating both logos was produced and thereafter used on footware produced by the claimant. The first defendant was a freelance graphic designer retained by the second defendant. He designed the combined logo. The second defendant (and the other two defendants) took an assignment of copyright in the combined logo from the first defendant. The claimant sought a declaration that it was the beneficial owner of the copyright in the combined logo. Peter Preston QC held that (1) when a freelance designer was commissioned to create a logo for a client it would normally be necessary, in order to give business efficacy to the contract, to imply a term assigning the copyright beneficially to the client in order that the client could prevent others using the logo (Robin Ray -v- Classic FM plc [1998]) and (2) The first defendant, the freelance designer, was the first owner of the copyright when he created the combined logo. It was not shown that the amount he would be paid would have been materially different when considering the uses the combined logo would be put to, and it was obvious that the right to use the logo would belong to the claimant and not to the designer. The claimant therefore owned the combined logo – and moreover it was not merely a licence from the designer to the claimant – the claimant was the beneficial owner. The second to fourth defendants had no ownership and were not purchasers for value without notice.

Source: Kilburn & Strode Trade Mark Attorneys

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