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Copyright confusion ruled on by Intellectual Property Enterprise Court

Written by Ellis Sweetenham on 07 August 2015

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Atelier Eighty Two Ltd v Kilnworx Climbing Centre CIC [2015] EWHC 2291 (IPEC)


Facts:

The claimant company alleged copyright infringement by the defendants.

The claimant's director and shareholder (B) had been a director of the defendant company, which operated an indoor climbing centre.

The directors had agreed that it needed a logo, and in August 2011 B had instructed a design company to create logos for it. The claimant paid for that design work.

The defendant experienced financial difficulties and the claimant was not reimbursed for the design companies' fees. B subsequently resigned as a director of the defendant ompany, informing it that he owned the logos and that the claimant was the only party licensed to use them.

By a written agreement of August 2013, the design company assigned its interest in the logos' copyrights to the claimant. The claimant claimed ownership of the copyrights and alleged that the defendant had used and thereby infringed them.

The defendant did not deny having used the logos, but contended that the defendant had at all times been the copyrights' equitable owner or, alternatively, benefited from an exclusive licence under them.

They submitted that because the copyright works in question were logos, at the time of their creation all concerned had intended that the defendant (B) would own the copyrights in them.

They asserted that B had always been owner in equity of the copyrights or, failing that, an exclusive licensee; all that the design company had assigned by the August 2013 agreement was the legal interest in the copyrights.


Judgment:

Where a designer was commissioned to create a logo for a client, in order to give business efficacy to the contract of commission there would be a presumption that the client had the right to prevent others from using the logo.

It was, after all, the client's logo, intended to signal to the world that the goods or services supplied under that logo came from the client and no one else.

That meant either that the client retained copyright ownership or alternatively that he had the benefit of an exclusive licence.

On the evidence, in August 2011 the defendant had entered into an agreement for the creation of the logos with an implied term that the first defendant would own the copyrights in the logos.

The design company owned the legal interest in the copyrights at the time they were created and held such copyrights on trust for the defendant.

Under the August 2013 agreement, the claimant had taken the legal interest subject to the defendant's equitable interest.

B was entitled to an assignment from the claimant of the legal interest in the logos' copyrights 

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