Wednesday 5 August 2015

Afro Leo

Who owns the copyright in commissioned logos?

Ask just about any IP lawyer and they will probably tell you that if you sub contract the development of your logo, you will not own the copyright in the logo. This is because of the general rule that, subject to a list of exceptions, the creator of an artistic work such as a logo, is the first owner of the copyright in and to that logo and that ownership is not transferred to you, even if you pay for it, unless you have agreed to have it transferred to you in writing. If you are interested in the exact wording of the South African position take a look at Section 21 and 22 of the Copyright Act, here.

The effect of this position goes beyond logos and raises a flag in every situation a copyrighted work is created outside of a business eg computer programs (different but similar rules), transcripts, contracts etc. Indeed, for the copyright lawyer, it's often a wonderful occasion to horrify corporate lawyers, clients and potential clients and in doing so, remind them of just how important it is to have IP counsel. Of course it is. On the other hand, for the affected client the position just seems ludicrous - how can it be that I have paid for my logo, computer program etc and I do not own the copyright! In many cases the situation is realised too late, often to the detriment of the person or business that paid to have the work done. But need it be so. Could it be that there is actually an implied term when you contract out the development of a logo, for the copyright to be assigned to you on request?

Aaron Wood, a well known IP lawyer in the UK, went about arguing that position on behalf of his client recently in the case of Atelier v Kilnworx (Atelier Eighty Two Limited v Kilnworx Climbing Centre CIC & Others [2015] EWHC 2291 (IPEC)). Afro Leo learnt about the development through commentary on Aaron's LinkedIn profile a few days ago here, and in writing this post came across the ever-abreast IPKat summary yesterday here. The case itself can be obtained here.

In short, Aaron's client successfully argued that the commissioner of the logo, obtained an equitable interest in the copyright in the logo and was entitled to the assignment of the legal interest in that copyright.

"In my judgment, in August 2011 Kilnworx through Mr Bunting and Purple Penguin through Mr Kirk entered into an agreement for the creation of the Logos as described above. There was an implied term in the contract. It was a term of the usual nature to be implied into a contract for the creation of a logo, namely that Kilnworx would own the copyrights in the Logos."

The facts are quite specific and necessary to analyse to understand when this situation would occur although Afro Leo suggests  (as the above quote explains) that in most cases such an implied term would exist in the ordinary contract between designer and commissioner. The question then is whether the same would be so, under South African law. This is because English contract law distinguishes between equitable rights (a right based essentially on principles of fairness) and legal rights, something which is not that apparent (at least not directly) in South African law.

Again, this Leo is going to say that under South  African law, the situation should be no different because rules for determining the existence of tacit and/or implied terms are essentially based on the unarticulated intentions of the parties. For instance, it would be extraordinary for a logo designer to explain that his intention would be to own copyright in a logo, once he had been paid for it, for use by himself or others or to preclude (by virtue of his ownership) the commissioner from enforcing rights in copyright against third parties. But do you agree?

As post script Afro Leo would like to thank those who have sent him messages in support of Cecil, his mate from Zimbabwe. Afro Leo has never liked dentists, and wouldn't mind flossing his teeth with that dentist's bowstring.

Afro Leo

Afro Leo

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5 August 2015 at 08:54 delete

This is a case where location, location, location is critical. In the US, I believe, copyright in the majority of commissioned works remains with the author rather than the commissioning party. According to the SA copyright law linked in this article, it appears that this is only the case for artistic and literary works, but not most other types of works. In Kenya, the law provides that copyright always vests in the commissioner of the work, not with the author (provided that there is no contract that says otherwise).