This is a case that centres on whether a contract which included assignment of copyright provisions was executed; and whether the provisions in that agreement correctly assigned the copyright.

"The Dude"

The claimant, Fresh Trading Ltd (Fresh), asked the court for a declaration that it was indeed the legal owner of the copyright in "The Dude" logo, used for many years in the marketing material of the well-known brand of Innocent smoothies. The logo, used by Fresh since its business started up, consists of a cartoon depiction of a face with a halo.

Fresh v Deepend

Fresh claimed copyright ownership by virtue of a contract that was made with the designers of "The Dude"; if it was not the legal owner, it argued it was the owner in equity.

The defendants, Deepend Fresh Recovery (Deepend), argued that the contract on which Fresh relied was not signed, nor was the unsigned contract binding, and therefore there was no assignment of the copyright in "The Dude".

Deepend also counterclaimed for copyright infringement. Fresh argued that, as there had been a considerable lapse of time between the creation of the works and the alleged infringement, the counterclaim was precluded by acquiescence, laches or estoppel.

The legal issues

The first question for the judge to consider was whether or not the design agency had, as Fresh claimed, signed the contract, as required for legal assignment of copyright. Upon review of the evidence, the judge found that he was not persuaded that the document had actually been signed. Therefore, legal assignment did not take place in this case.

The judge also added that Fresh would have had difficulty even if the agreement had been signed, as when the contract was made, there was no work in which the copyright could then be assigned, there were only potential works.

It has long been the position in law that there cannot be an assignment of a future work, but only an agreement to assign.

The judge did find that, despite lack of a signed version of the contract, Fresh and the Deepend had clearly intended to enter into an agreement.

Equitable assignment of copyright

In the absence of legal ownership of the copyright by Fresh, the judge examined whether there might nevertheless be equitable ownership. The judge found that it was not in doubt that the consequence of an agreement to assign the copyright in a future work will often give rise to an equitable assignment in the copyright, when the contractual conditions for the assignment arise. He found that this was the case here and therefore found that Fresh was indeed the equitable owner of the copyright.

Acquiescence, estoppel and laches

As the judge had found that Fresh was the equitable owner of the copyright, he did not consider it necessary to address the questions of acquiescence, estoppel or laches. However he did indicate that had he found that Fresh had no legal or equitable interest, his inclination would have been to reject the notion that Fresh had infringed: Deepend would have been estopped from bringing a claim for copyright infringement, as the claim was brought after such a long lapse of time, and use of "The Dude" and success of the brand had been known by Deepend for such a long period of time.

In short

This case highlights the importance of having a contract signed by all parties, and of keeping a copy of that contract safe, in case it needs to be produced in the future.

This case also serves as a reminder that copyright cannot be assigned prior to the creation of the works.

Case details at a glance

  • Jurisdiction: England and Wales
  • Court: High Court of Justice Chancery Division Intellectual Property
  • Parties: Fresh Trading Limited v Deepend Fresh Recovery Limited and Andrew Thomas Robert Chappell
  • Citation: [2015] EWHC 52 (Ch)
  • Date: 26 January 2015
  • Full decision: http://dycip.com/freshvdeepend