Griggs Group Ltd v Evans
| Jurisdiction | England & Wales |
| Judge | Mr Peter Prescott QC |
| Judgment Date | 12 May 2004 |
| Neutral Citation | [2004] EWHC 1088 (Ch),[2003] EWHC 2914 (Ch) |
| Docket Number | Case No: HC 02C 02112,Case No:HC 02C 02112 |
| Court | Chancery Division |
| Date | 12 May 2004 |
[2003] EWHC 2914 (Ch)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
Royal Courts of Justice
Strand, London, WC2A 2LL
Mr Peter Prescott Qc (sitting As A Deputy Judge)
Case No:HC 02C 02112
Richard Hacon (instructed by Shoosmiths) for the Claimants
Robert Onslow (instructed by Lamb & Holmes) for the First Defendant
Denise McFarland (instructed by Collyer Bristow) for the Second to Fourth Defendants
Hearing dates : 25th, 26th and 27th November 2003
I direct that pursuant to CPR PD 39A §6.1 no official shorthand note shall be taken of this judgment and that copies of this version as handed down may be treated as authentic.
A client goes to an advertising agency and pays them to design a new logo. The agency employs a free-lance designer to produce the design. Nothing is said about copyright. Who gets the copyright in the logo? That is what this case is about.
In this case the logo has been used for many years on Dr Martens footwear. The story of Dr Martens is so improbable that no novelist would have dared to invent it.
The Dr Martens Story.
Everybody has heard of Dr Martens, also known as "Doc Martens", "Docs", or "DMs". As the Oxford English Dictionary explains, it is "A proprietary name for a type of heavy laced walking boot or shoe with a cushioned sole". The sole is, in fact, air-cushioned. The 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.) But in the 1950s the concept was spotted by boot manufacturer Bill Griggs of Wollaston, Northamptonshire, whose grandson Stephen gave evidence before me.
Bill Griggs' 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, Griggs (as I shall call them 1) made some key changes to the design. For example they gave it a strong leather upper with a bulbous shape. Griggs began to manufacture these heavy boots for sale to workmen. The first one in the range came off the production line on 1 April 1960 (hence the sub-brand '1460').
At first they were worn by postmen, builders, factory workers and so forth. They became standard issue police boots. Police officers are called out to deal with accidents and it is an advantage of a Dr Martens boot that the sole is resistant to petrol and other chemicals. Further, and according to the 2001 edition of Superbrands (a publication about 100 of Britain's strongest brands), policemen reckoned that the soft sole proved invaluable for sneaking up on criminals. The boots were also standard uniform for skinheads and football hooligans, and were taken up by the Rt Hon Tony Benn, PC, MP.
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. A trendy young girl would wear Dr Martens boots with a feminine Laura Ashley skirt. It had the combined advantages of provoking her parents and her male admirers, though for different reasons. By 1994 half of Dr Martens wearers were women. "A sixteen-year-old girl is more likely to buy a pair of DMs as her first solo purchase than a teetering pair of stilettos" (Superbrands). "The profile of Dr Martens customers is extremely diverse. They are worn by popstars and policemen, super models and street buskers; the brand is popular with people of all backgrounds and all ages" (The World's Greatest Brands, Interbrand, 1996).
Today there more than 250 different styles of Dr Martens footwear. The products are sold in over 78 countries, the U.S. alone accounting for 60% of sales.
Branding.
The phrase '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 also employed a trade mark of their own: 'AirWair'. This word too is a registered trade mark. It appears in yellow lettering on a loop attached to the heel of the boot. In fact, it is the trade mark which is displayed most prominently on the footwear, and always has been.
So, if you had inspected a pair of Dr Martens boots before the year 1988, you would have found them to bear two different brands: Dr Martens and AirWair. They were represented in stylised form, and looked like this.
I was not told who were the authors of those drawings, but the AirWair drawing was based on the doodles and handwriting of Bill Griggs himself.
In 1988 Griggs were in the process of reorganising their business. As part of that exercise they decided it would be a good idea to combine the Dr Martens and AirWair logos so as to form a single logo. According to Mr Stephen Griggs "to combine the two logos would inextricably link us together making it more difficult to split the brands and ultimately lose the Dr Martens licence". This was done in about August 1988, and the combined logo looked like this:
From 1988 onwards the combined logo has always 2 appeared on the sock sole of Dr Martens footwear. (As its name implies, the "sock sole" is the part of a boot or shoe that your sock rests on.) As I understand it, the AirWair logo continues to appear on the loop attached to the heel.
How the Present Dispute Arises.
The Defendants assert that the copyright in the combined logo, at least when it is present on the footwear, has never belonged to Griggs. They accept that the drawing of the combined logo was commissioned by Griggs from a local advertising agency, and they accept that Griggs paid for the commission. But they point out that the drawing of the logo was made by Mr Ross Evans, the First Defendant. He was not an employee of the agency. He was accustomed to do work for the agency on a free-lance basis, and did so on this occasion. Thus, say the Defendants, it was Mr Evans who was the first owner of the copyright. On 13 May 2002 Mr Evans assigned the copyright to the Second Defendants, Raben Footwear Pty Limited, who assert that they are the current owners 3.
Raben are an Australian footwear company. They own a number of retail outlets in that country. While it might not be strictly accurate to say they are a competitor of Griggs, it is clear that they must be regarded as an enemy. I wondered why Raben had taken the trouble to buy the copyright in this combined logo. I asked counsel for Raben what was the purpose. Counsel
said, on instructions, that Raben had no intention of using the copyright to sue Griggs for infringement. I enquired, therefore, what was the point of the present litigation. As a result, a director of Raben, Mr Garry Lewy, went into the witness-box. He told me that Raben had been ill-treated by Griggs in connection with previous litigation in Australia, and that they hold Griggs in distrust.The merits of Raben's grievance arising from the Australian proceedings are not a material issue in the present case and it would be wrong for me to attempt to adjudicate on them. If Raben are indeed the valid owners of the copyright in the logo they are entitled to assert it, and need no grievance in justification. If they are not the valid owners, no collateral grievance can justify their usurpation of Griggs' property. What was quite clear to me, however, is that Mr Lewy and, by extension, Raben, are hostile to Griggs. Even if it is true that they have no present intention of stopping Griggs from using the logo on their footwear, they might change their minds in future. Or they might assign the copyright to an undoubted and formidable competitor of Griggs. And, quite apart from any risk of Raben wanting to stop Griggs, there is the question of Griggs wanting to stop others from using the logo in territories where they do not yet own effective trade mark rights. So, the result of this case matters.
It is because of the assignment of the copyright in the combined logo from Mr Evans to Raben that Griggs have launched these proceedings. Griggs claim that is they who are the beneficial owners of all aspects of the copyright in that logo. They seek a declaration accordingly, and an order that the copyright be formally assigned to them.
So the dispute in this case is about the ownership of the copyright in the combined logo. Note that I say the copyright in the logo. It is not the same as the ownership of the trade mark rights in the logo. The point is that it is possible for these to belong to different people.
Copyright vs. Trade Mark in a Logo.
The Concise Oxford Dictionary defines 'logo' as "an emblem or device used as the badge of an organisation in display material". A logo may be protected against unauthorised use by (1) copyright law (2) trade mark law. There is a fundamental difference between the two.
Copyright law protects the skill and labour that has gone into the creation of an original work 4. A simple word or phrase, like "Dr Martens", is not capable of being copyright, and for two reasons. First, it is not a 'work' 5. Secondly, and in the ordinary way, its creation does not imply sufficient literary skill or labour 6. So no-one has ever had a copyright in the phrase "Dr Martens", as such.
However, a drawing is capable of being a 'work'. So if an artist uses his skill and labour to draw a word or phrase in a stylised way, as in the case of a logo, his drawing is capable of being an original work, protected by copyright law. Unauthorised persons are not entitled to copy it. This is so...
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