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Judge Hacon's judgment reminds businesses of the need for written contractual certainty when commissioning independent third party designers.
Atelier Eighty Two Limited v Kilnworx Climbing Centre CIC and Ors  EWHC 2291 (IPEC) is a salutary lesson for businesses in how not to go about retaining a third party designer to produce trade mark logo designs.
In the case in question, an employee and director of an independent design company was asked by a director of the first defendant to create logos to be used in connection with the operation of Kilnworx Climbing Centre CIC's business.
However, no written agreement was put in place to record who would own the copyright in the logo designs that were to be created. Thus, the matter ultimately had to be decided by the Court (and at no doubt significant legal cost to the parties involved, whereas the cost of producing a written agreement at the outset, before the commission had taken place, would have been far less).
The Court held, on the facts of the case, that it was implied that the copyright in the logos would be owned by the first defendant and that the design company held title in the copyrights on trust for the first defendant. However, the Court acknowledged that each case must be decided on its individual facts and, in another such case, the Court might hold differently, for example, that ownership of the copyrights did not pass to the commissioning party.
The lesson is clear: before you retain a third party designer to produce trade mark logo designs make sure you have agreed in writing who is to own the IP rights in the designs.