Facts

In 2014, Le Chef plc was incorporated and the 100 issued shares divided between the claimant, Mr Munim (65 shares), Mr Rahman (25 shares) and Mr Ahmed (10 shares). Le Chef was to provide an online platform for Asian restaurant and takeaways for customers to order and pay for meals, and its trading name was Chefonline.

Mr Munim claimed that shortly thereafter, Mr Rahman agreed to transfer 20 shares to him, and that Mr Ahmed agreed to transfer all his 10 shares to him. He says that stock transfer forms dated 31 October 2014 were signed by or on behalf of Mr Rahman and Mr Ahmed. They denied any such agreement and denied signing or authorising the forms. The dispute related to those transfers, and to ownership of copyright in a logo and trophy.  This article looks only at the copyright issues.

In October 2017, ARTA Awards Ltd was incorporated, with Le Chef as the initial shareholder. It was intended that ARTA (Asian Restaurant and Takeaway Awards) would promote Le Chef’s business by holding regional and national Asian cooking competitions and award ceremonies. A logo (the ARTA Logo) was created and an award trophy was designed. Trade marks for each were registered in Mr Munim’s name. Following social media postings by Mr Rahman, Mr Munim issued proceedings for defamation against Mr Rahman. Mr Rahman then issued proceedings for copyright infringement against Mr Munim in respect of the ARTA Logo and the trophy. Subsequently, Mr Rahman and Mr Ahmed petitioned under s 994(1) of the Companies Act 2006 on the ground that the unauthorised transfer of their shares to Mr Munim amounted to conduct of Le Chef’s affairs and that their interests as shareholders had been prejudiced unfairly. The claims were consolidated and the defamation claim stayed pending a decision on the copyright claim and the petition.

The copyright claim

Mr Rahman, a graphic designer, was involved in the design of both the ARTA Logo and the trophy. He claimed that he was solely entitled to the rights in these designs pursuant to the Copyright, Designs and Patents Act 1988. He contended that after he and Mr Munim parted company in November 2017, Mr Munim and/or ARTA infringed those rights by using the logo to promote award ceremonies from 2018 onwards, at which copies of the trophy were presented.

Mr Munim said that the creation of the ARTA Logo and trophy was a collaborative project between himself and Mr Rahman. He contended that the trophy was not simply a 3D representation of the ARTA logo, but the result of work by other designers, and that any work carried out by Mr Rahman on the logos and the trophy was carried out in the course of his employment with Le Chef. Mr Rahman denied being so employed, claiming that he was self-employed.

Designs for the ARTA Logo and trophy went through several stages during the summer of 2017. In June, Mr Munim engaged a business consultant, Mahbub Noor, to carry out promotional work for Le Chef. He also asked Mr Noor for help in developing the branding concept of the ARTA awards.

Mr Noor instructed a designer and commissioned CCF Fabrication Ltd to produce a prototype of the trophy. These were then sent to Special EFX Ltd, which produced a 3D trophy design for Mr Noor. Mr Noor shared this design with Mr Munim and further changes were made.

In August 2017, Mr Noor met with Mr Munim and Mr Rahman and the three of them discussed the designs for both the ARTA Logo and the trophy. Mr Rahman then made some changes to the designs and sent them to Mr Noor and Mr Munim. Following a few further changes, the final ARTA Logo was sent by Mr Rahman to Mr Munim in September 2017. EFX finalised the 3D trophy design in October 2017.

Decision

HHJ Jarman found that the development of the ARTA Logo was a collaborative effort between Mr Rahman and Mr Munim, with input from Mr Noor. The meeting in August 2017 between the three of them produced the final design. The labour of working it out was thus shared, and each contributed a significant amount of skill in the elements which expressed the intellectual creation of each. The contributions were not distinct, and the final say lay with Mr Munim, who must be given credit for making the choices.

His Honour Judge Jarman KC found that Mr Rahman was an employee of Le Chef.  He had signed an employment contract with Le Chef in 2015. Although he continued to invoice the company, all the signs were that, by 2017 at the latest, Mr Rahman was regarded by Le Chef, and he regarded himself, as one of its employees. The finding was further supported by evidence of his requests in that year for an increase in salary and a company car, the fact he was working full time in its offices with no or little other income and his requesting time off. In HHJ Jarman’s judgment the regular payment for the work he performed gave rise to a mutuality of obligation and control by Le Chef to show a contract of employment.

Further, Mr Rahman’s contribution was made in the course of his employment by Le Chef. It was telling that of all the grievances aired by Mr Rahman in 2017, he did not claim otherwise. In fact, in April 2017 he had said that the IP should belong to the company and should not be registered in a personal name. He had assisted Mr Munim to register the trade marks without raising a claim to any IP rights and transferred digital information relating to the designs to Le Chef when he left his employment.

As for the development and production of the trophy, HHJ Jarman found that this was from EFX, with input from Mr Munim, Mr Rahman and Mr Noor. In his judgment the ARTA logo and trophy were created for and paid for by Le Chef to be used by ARTA with the intention of promoting Le Chef’s interests. Mr Rahman’s contribution was made in the course of his employment with Le Chef, and the copyright vested in Le Chef.  Accordingly, there was no infringement and Mr Rahman’s claim failed. The petition by Mr Rahman and Mr Ahmed also failed. (Mohammed Munim v Azifur Rahman [2022] EWHC 2870 (Ch) (21 November 2022) — to read the judgment in full, click here).