Dr Martens win copyright case over freelance designer

Dr Martens were originally developed by two German doctors, Dr Maertens and Dr Funck, who made the air-conditioned soled shoes for elderly German women with foot trouble.

In the 1950s the boot was spotted by manufacturer Bill Griggs of Northamptonshire, his family firm made the famous bulldog boot used by the British army, and they were looking for a new product.

With the permission of the German doctors, the family business made some key changes to the design and, from 1960, sold them as workmen's boots. The boot became a fashion statement, and there are now more than 250 different styles of Dr Martens footwear sold in over 78 countries.

In 1988, Griggs commissioned an advertising agency, Irwin Jordan Limited, who in turn commissioned a freelancer, Ross Evans, to combine its existing "Dr Martens" and "Air Wair" logos into one mark.

Under English law, copyright in a "literary, dramatic, musical or artistic work" remains with the author of the work, unless the work is carried out in the course of employment, in which case the copyright remains with the employer.

Copyright can be assigned, but in this case it was not. Griggs began to negotiate with Ross Evans, seeking assignation of the copyright. But when negotiations broke down Evans sold the copyright to Raben, an Australian footwear company.

Griggs has since been seeking to take ownership of the trade mark to use on products in both the UK and abroad.

Issuing that ruling, Mr Peter Prescott QC, sitting as a Deputy Judge, said:
"It seems to me that when a freelance designer is commissioned to create a logo for a client, the designer will have an uphill task if he wishes to contend that he is free to assign the copyright to a competitor. This is because, in order to give business efficacy to the contract, it will rarely be enough to imply a term that the client shall enjoy a mere licence to use the logo, and nothing more. In most cases it will be obvious, it will 'go without saying', that the client will need further rights. He will surely need some right to prevent others from reproducing the logo."

Raben appealed, arguing that Evans had not known that he was being asked to develop a logo trade mark, which could be used worldwide. Instead, he had thought he was producing "material for UK point of sale," and accordingly had granted a licence for that purpose only.

Issuing last week's ruling on behalf of the three-judge panel, Lord Justice Jacob said of Raben's argument:
"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'."


1st February 2005

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