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Out-Law News 3 min. read

Dr Martens wins logo ownership appeal

England's Court of Appeal this week threw out an appeal against a ruling which said that copyright in Dr Martens' AirWair logo is owned by the company that makes the famous boots and did not pass to its designer.

The logo, developed in 1988, was designed by a freelancer without there being any discussion between the parties as to who would own the copyright in the design.

The Dr Martens boot, known also as Doc Martens, Docs and DMs, was originally developed by two German doctors, Dr Maertens and Dr Funck, who made the shoes, with air-conditioned soles, for sale to elderly German women with foot trouble.

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 boot became a fashion statement, and there are now 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 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 took place over 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 be assigned, but in this case it 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, seeking assignation of the copyright. But when negotiations broke down, Evans assigned the copyright in the Dr Martens logo to Raben.

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, and in December 2003, the High Court agreed.

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 this 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'."

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