Copyright in Logos
Copyright in logos was considered recently by the Intellectual Property Enterprise Court. Once again IPEC has contributed another very helpful decision to English law for businesses related to the Internet by way of another judgment from His Honour Judge Richard Hacon.
The case is Atelier Eighty Two Limited and Klinworx Climbing Centre CIC and 2 other defendants  EWHC 2291 (IPEC).
The dispute was about ownership of copyright in logos but it affects all creative design and development work including website design and development.
The author/creator was Robin Kirk the director of a design company Purple Penguin Design Limited. The logos were created for Klinworx. The commissioners of the work were Atelier, through its director Lionel Bunting (LB) and Klinworx.
Atelier claimed first ownership of copyright in the logos on the basis that there was an assignment dated 23 August 2013 between Purple Penguin and Atelier of copyright in the logos. LB had also paid for the logos directly.
Atelier claimed that the Defendants had jointly infringed its copyright in the logos.
The Defendants did not deny the acts alleged to be infringement but instead pleaded a defence of equitable ownership or alternatively an exclusive license under those copyrights.
The Defendants first argued in their defence that LB had received shares in Klinworx as consideration for the transfer of copyrights in the logos. They later changed that argument to say that logos by nature would have been intended to be owned by Klinworx. Therefore Klinworx owns the equitable title or alternatively title passed by way of an exclusive license.
HH Judge Hacon held that LB was acting on behalf of Klinworx when he commissioned the logos and the logos were for Klinworx, therefore Klinworx was entitled to an assignment from Atelier of the legal interest in the copyrights. None of the Defendants were liable for copyright infringement.
The important things to take from the judgment are:
(1) HH Judge Hacon’s commented that although the Ds’ pleaded defence was amended to take a different approach the court would not object to them being able to rely on this change of direction because (1) the Ds’ amended defence did not change facts which had already been developed in evidence; (2) The Cl did not take any strong objection to the change of argument.
In our opinion, as a corollary it suggests that if you are going to change your arguments whether as a claimant or a defendant you should be careful not to change any of the facts pleaded, and if you do, or your opponents take a strong objection to your amendments you could be prevented from relying on it by the court particularly in the IPEC procedure which has a cap on costs and aims to be quick and efficient justice.
(2) The case of Griggs Group Ltd v. Evans  EWCA (Civ) 11,  F.S.R 31 was referred to in detail in determining the question of whether there was an implied term between a commissioner and the author of a logo that the author grants copyright over the work to the commissioner. It was concluded that there was a presumption that a client had a right to prevent others from using the logo. Further that use of the logo except by the client is liable to be unlawful as passing off. Clear evidence would be required if there was any argument that the author retained certain rights conditional on payment.
(3) An assignment agreement may be overreached. The client retained copyright despite the copyright being assigned to LB.
(4) Lastly, this judgment can apply to any case where a work is commissioned. So for example in website design and development. In our experience most SMEs do not bother with a professionally drafted website design development agreement with SOWs that deal with intellectual property rights. In some cases website developers will even add an additional charge for providing an assignment.
This judgment suggests that the equitable title to the website transfers to the client and the client is entitled to an assignment of the legal title. Clients should take note and start insisting that website developers provide this in their agreements without any further charge to the assignee.
For more information on how to take a case to the Intellectual Property Enterprise Court follow this link IPEC .
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