Innocent Copyright Assignment
Written by Sam O'Toole on 29 June 2015« Return to Reading Room
The author of the work will own the first copyright found in the work (Copyright Designs and Patents Act 1988 s11(1)). On the surface this seems straightforward and easy to understand, however things can get complicated quickly in relation to the issue of who is the first owner of copyright.
What if the author was acting in course of employment, then who owns the first copyright? Copyright Designs and Patent Act 1988 s11(2) tells us that the employer would be the first owner of the copyright.
It is possible to go further and ask who owns the copyright in a work if the work has been created by a computer? Nova Productions Ltd v Mazooma Games Ltd  held that in relation to computer generated works the first copyright owner is the author who has devised the rules and logic to enable the computer to create the work.
Going an extra step further it is possible to ask who is the first owner of the copyright where the work has been commissioned. For example I commission a designer to draw a logo for my company, who owns the copyright?
Is it the commissioner (me) or the commissioned party (the artist) who owns the first copyright? Replace the words in brackets with (Innocent) and (Deepend) and turn the clocks back to 1998 when Deepend was commissioned by Innocent to draw a logo.
This is the question that has been put towards the courts by Innocent and Deepend.
Usually the commissioned party will own the first copyright that is found in the commissioned work. However a contract stating that the first copyright will be vested in the commissioner will overcome this.
In the Dr Martens case a designer was commissioned to merge the existing Dr Martens and airWair logos. The designer then claimed ownership of the copyright and attempted to sell it to a third party. This did not work out, the court held that there was an implied contract that included a term to assign the copyright in the logo to the commissioner respectively Dr Marten.
They went further and stated that logos are a fundamental part of a company’s identity therefore would be wrong for the designer to sell the copyright to a third party.
Innocent in its logo dispute has attempted to use this logic to overcome the fact that the Deepend owns the copyright found in its trade marked logo. They attempted to use this argument due to the fact that if Deepend owns the copyright in the logo they can assert their copyright and have the trade mark removed.
The dispute arose as they were unable to provide evidence that the copyright in the logo had been transferred to them from Deepend.
However this argument did not succeed, the Cancellation Division of the European Trademark Office dismissed the argument. However Innocent has re-applied to register the halo trade mark whilst also appealing the decision of the Cancellation Department.
This case really stresses the importance of copyright assignment. 15 years later with a design company that ceases to exist. Innocent has lost its famous trade mark. Although this could all have been avoided with a simple contract.
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