Copyright infringement claim

Our client was an author and the creator and owner of a series of illustrations. A clothing company infringed our client’s copyright by reproducing the illustrations without permission. The company included the illustrations in a catalogue of custom-printed T-shirts and produced and sold T-shirts featuring them without authorisation.

After we succeeded in the initial claim, the court also dismissed a counterclaim challenging our client’s intellectual property rights.

Events leading up to the court case

Our client owned two separate companies: a publishing company and a clothing company. He had entered into a development agreement with a marketing company that promoted his publishing business.

Using an IP assignment agreement, the author transferred ownership of the illustrations from his publishing company to himself. After personally acquiring the rights, he began selling T-shirts featuring his illustrations through his clothing business. The separate clothing company then began producing its own T-shirts using the illustrations without permission.

The author’s case

The author claimed that the clothing company infringed his copyright by copying the illustrations, issuing copies of the works to the public and communicating them to the public.

Infringing company’s case

The clothing company accepted that it had committed the alleged infringing acts but argued that liability depended on the author proving ownership of the copyright. This was necessary to establish his right to bring the infringement claim.

The company argued that the marketing company, rather than the publishing company, owned the copyright in the illustrations. It claimed that the marketing company had developed the business and that the publishing company had never been assigned ownership of the rights.

On this basis, the clothing company argued that the author had not acquired ownership through the IP assignment agreement with his publishing company and therefore had no right to bring the claim.

Issues before the court

The court first considered whether the author owned the copyright and was entitled to bring the claim. If he could not establish ownership, his infringement claim would fail and the counterclaim could succeed.

Our IP ownership evidence

We investigated and analysed the relevant documents to establish that the author had created the illustrations and owned the copyright. We explained the business relationship between the author’s publishing company and the separate marketing company, demonstrating that the publishing company had created the illustrations and was entitled to enter into the assignment agreement with the author.

The author was the first owner of the illustrations, and the IP assignment agreement transferring the copyright to him was valid.

The court’s decision

The court found that the copyright had not been transferred away from the publishing company before it assigned the rights to the author. The publishing company was therefore the original copyright owner and had validly assigned its rights to the author, who was entitled to own and exploit the illustrations.

The author’s claim succeeded because he had the necessary rights to bring the copyright infringement proceedings. The court also dismissed the counterclaim challenging his ownership.

Conclusions

Intellectual property rights can be complex, so ownership should be established and documented from the outset. This helps protect a business and preserve the value of its intellectual property as a commercial asset.

Where a business works with another party, a properly drafted agreement should clearly establish ownership of existing and future intellectual property rights.