On 12 December last year the IPKat reported on the battle that R. Griggs had to secure the copyright in the artwork for a logo which it had already registered a UK trade mark. Yesterday there was some follow-up litigation. In R. Griggs Group Ltd v Evans and others (No. 2)  EWHC 1088 (Ch) Peter Prescott QC, sitting once again as a Deputy Judge of the High Court, was asked by the losing party if he could raise a fresh argument that wasn’t raised at trial.
In the first trial the judge said that Griggs was entitled to an assignment to him of the copyright in the logo, without any limitations as to geographical range. The second defendant, Evans ― who had taken a wrongful assignment from the designer who was commissioned to create the logo ― argued that the court had no power to make orders affecting ownership of intellectual property in foreign countries. By that reasoning, although the court could compel the assignment of the British copyright in the logo to R. Griggs, the court did not have jurisdiction to do so in respect of the foreign copyrights in that same logo, since that would be an interference with systems of property ownership created by foreign sovereigns, contrary to principles of international comity.
Peter Prescott ruled that it was not a breach of international comity today, if it ever was, to adjudicate in personam on rights to foreign intellectual property arising out of a contract, even as against a third party purchaser with actual notice of it (or with sufficient notice to cause an honest man to make better enquiries or else stop his hand). This was especially so where the contract to commission the copyright work was governed by English law and the rights existed in manifold jurisdictions. In the absence of a specific rule to the contrary, a claim to the copyright in all countries ought to succeed. In this case therefore, it was not a breach of comity to order Evans to assign the foreign copyrights in the logo to the claimants, instead of leaving the claimants to bring parallel proceedings in numerous countries. What’s more, the claimants had an equity arising out of English contracts which, if the “property” were situated in England, the claimants could have enforced against Evans. Finally, with regard to the foreign copyrights, it had not been shown that the laws of the foreign countries would extinguish that equity and it was not unreasonable to proceed on the basis that they wouldn’t do so. Accordingly, the claimants were entitled to succeed and the assignment in escrow should be delivered by Evans’ solicitors to the order of the claimants.
The IPKat notes that this argument was based on an analogy with real estate: but copyright is different and analogies between real property and personal property are rarely helpful.
Thursday, 13 May 2004
Posted by Jeremy at 11:13:00 p.m.