Out-Law News 4 min. read
08 Dec 2003, 12:00 am
The English High Court last week ruled that the company behind Dr Martens owns the copyright in the logo for its famous footwear despite a contract with designers failing to address ownership of copyright, an oversight that would normally pass the rights to the designers.
The case was heard by Mr Peter Prescott QC, sitting as a Deputy Judge. He neatly summarised the history of the boots, known variously as Dr Martens, Doc Martens, Docs, and DMs. The air-cushioned sole was originally developed by two German doctors, Dr Maertens and Dr Funck.
They made 'Dr Maertens' shoes for sale to elderly German women with foot trouble. "Not many people know that," wrote Mr Prescott. But in the 1950s the concept was spotted by boot manufacturer Bill Griggs of Northamptonshire. His family firm made the famous bulldog boot used by the British army, but 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 boots were also standard uniform for skinheads and football hooligans, and were taken up by the Rt Hon Tony Benn, PC, MP," wrote Mr Prescott.
"However, and by one of those paradoxes of youth culture that perplex the old, the very fact that the Dr Martens boots were the reverse of fashion items, itself served to make them fashionable," he continued.
Today there more than 250 different styles of Dr Martens footwear sold in over 78 countries.
'Dr Martens' is an anglicised version of 'Dr Maertens', and is a registered trade mark that belongs to the successors of the two German doctors. It is used by Griggs under licence.
When Griggs introduced their Dr Martens boot they were concerned that the licence might not last for ever. So they registered their own trade mark: 'AirWair', which appears in yellow lettering on a loop attached to the heel of the boot. "In fact," wrote Mr Prescott, "it is the trade mark which is displayed most prominently on the footwear, and always has been."
In 1988, Griggs, now R Griggs Group Limited, decided to combine the two logos into one, to make it more difficult for the license to be taken away. It instructed a design company, Irwin Jordan Limited, to create a combined logo.
Irwin Jordan in turn used a freelance designer, Ross Evans, to carry out the work. But unfortunately, as frequently happens, no discussion was made as to the copyright in the logo.
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 of course be assigned, but in this case was not. At least, not until an acrimonious dispute between Griggs and an Australian shoe company, Raben, brought the matter to light.
Griggs began to negotiate with Ross Evans for the assignation of the copyright but, when negotiations broke down, Evans assigned the copyright in the Dr Martens logo to Raben, described by Mr Prescott as an "enemy" of Griggs.
Griggs sued, asking the High Court to declare that even if the legal copyright belonged to Raben, they were beneficial owners of the copyright in the combined logo.
Issuing his judgment last Tuesday, Mr Prescott agreed.
He drew a distinction between the copyright and trade mark rights in a logo, saying that while the phrase 'Dr Martens' does not in itself reflect the skill and labour necessary to create copyright, the use of 'Dr Martens' in a stylised design does.
But labour and skill are irrelevant when it comes to trade marks a simple word or phase may be sufficient all by itself, so long as the mark can distinguish the goods or services of one organisation from those of others.
Accordingly, a logo can be protected by both copyright and trade mark laws, and the copyright and trade mark rights may be held by entirely different people.
The question in this case was whether the copyright in the combined logo was held by someone other than Griggs.
According to Mr Prescott, "it is possible for a person to own the legal title to property, not for his own benefit, but for the benefit of another person. That other person is said to be the owner in equity". This concept applies in English law to copyright, as well as any other form of property. (In Scotland, the concept of equity is not recognised in this way.)
Mr Prescott continued:
"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."
He added:
"I hold it to be obvious (so obvious that it went without saying) that the right to use the logo, and to exclude others from using the logo, was to belong to the client, and not to Mr Evans. It is true that the question of ownership of copyright as between Mr Evans and the client did not occur to them at the time. But, if some officious bystander had raised it, I would have expected the parties to brush aside any suggestion that the beneficial title might belong to Mr Evans.
"I must therefore give judgment for the Claimants. I freely confess that I am glad to do so. The proposition that the copyright in this important logo belongs to Raben is one that I find astonishing."
A report in the Sydney Morning Herald quotes Ronny Lewy, one of the brothers behind Raben as saying, "I was not a competitor. I was not an enemy. In the words of my brother in court in London, 'We were shafted'".