UWUG Ltd and Another v Derek Ball T/A Red
| Jurisdiction | England & Wales |
| Judge | Miss Recorder Amanda Michaels |
| Judgment Date | 30 July 2013 |
| Neutral Citation | [2013] EWPCC 35 |
| Court | Patents County Court |
| Docket Number | Case No: CC11P04024 |
| Date | 30 July 2013 |
[2013] EWPCC 35
IN THE PATENTS COUNTY COURT
Rolls Building
7 Rolls Buildings
London EC4A 1NL
Miss Recorder Amanda Michaels
Case No: CC11P04024
Mr Tom St Quintin (instructed by Taylor Hampton Solicitors Ltd) for the Second Claimant
The Defendant in person
Hearing date: Monday 3 June 2013
Approved Judgment
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
This is a case relating to design rights and registered design in a sling and a portable frame from which such a sling can be hung, for use during sexual activities involving bondage.
The proceedings were initiated by the First Claimant company ("the Company") as sole Claimant against the Defendant in November 2011. A defence was filed on 11 January 2012 by solicitors then instructed by the Defendant. Case management directions for the trial of liability only were given by HHJ Birss QC (as he then was) on 10 May 2012. He identified the issues to be tried as follows:
1. Did the Sling Designs or any of them subsist?
2. Were the Sling Designs or any of them owned by the Claimant?
3. When did the Sling Designs expire?
4. Was the Defendant's Sling derived from the Sling Designs or any of them?
5. Did the Defendant infringe the Sling Designs or any of them?
6. Does the Claimant own the Frame Designs or any of them?
7. Is the Registered Design valid?
On 19 June 2012 the Company was ordered to provide security for the Defendant's costs of the claim in the sum of £25,000. The disputed rights and the cause of action, including the right to sue for past infringement of those rights, were assigned to Mr Uwe Haiss, a director of the Company, on 18 July 2012. At a further case management conference on 25 January 2013, it was ordered that Mr Haiss should be joined as a party to the proceedings and added as Second Claimant. The Company went into voluntary liquidation on 19 February 2012 but (for what it is worth) remains a party for the purpose of any costs orders that may be made against it at the conclusion of the case. Mr Ball's solicitors acted for him and remained on the record until 17 May 2013.
Background
Much of the history of the case is uncontentious. The main evidence on the part of the Claimant was given by Mr Haiss. He explained how he came to the UK in the 1990s to study and teach and in 1999 moved to London to find employment. There he met a Mr Barns whose business was to make handcrafted, 'tailor-made' leather goods. He had already designed a sling in 1997, which was (as described further below) the precursor to the sling in issue in this case. In 2001, Mr Haiss, Mr Barns and Mr Oliver Thomas set up in business together to make and sell leather goods through a newly incorporated company called Poleon Ltd. The Claimant says that the sling in issue was designed by Mr Barns in about 2001, when he was a director or employee of Poleon Ltd. In 2001, Poleon Ltd started to sell slings made to the new sling design, under its brand/trade name "Master U."
On 24 July 2009, Poleon Ltd assigned all of its intellectual property rights in a range of goods, including slings, to the Company. The assignment was executed by Mr Haiss on behalf of Poleon Ltd and by a Mr Philip Dunn on behalf of the Company.
Mr Haiss explained in his 1 st witness statement how by 2005 he had started to work upon possible designs for a frame which could support the Master U sling, as existing portable frame designs were inadequate in various ways: too short, too narrow, too unstable or too costly. The main frame sold by Poleon Ltd from 2006 was a "Beefy" frame sold by US manufacturers Jim Support. These were imported from the USA, but Mr Haiss described a number of concerns he had with that frame, which he described as wobbly and over-priced. Its symmetrical design also overstretched the head end of the Master U sling. Mr Haiss held various discussions with different engineers as to the technical aspects of producing a better frame.
Mr Ball, the Defendant, is a mechanical engineer with many years of experience. He carries out mechanical testing for Airbuses but is also the proprietor of 'RED' manufacturing, which he described as producing metalwork for the fetish industry. That business had originally just one product, which Mr Ball calls the Kinky Bed, which he made in the workshop behind his house. At the time he met Mr Haiss in 2009, he had displayed the product at trade shows or fetish events but he had not sold any of them. The Claimant nevertheless accepted in paragraph 17 of the Reply that Mr Ball had some reputation as the designer of the Kinky products.
Mr Haiss met Mr Ball in about summer 2009, when the latter consulted him about some leather accessories he wanted made for the Kinky Bed. Mr Haiss's evidence was that he considered that the accessories needed more design work, but he was impressed by the quality of the metalwork of the Defendant's product. Equally, Mr Ball, who had previously bought a Master U sling, was impressed by the high quality of the Company's leather products.
Later in 2009 Mr Haiss and Mr Ball discussed the possibility that the latter would manufacture a frame suitable for use with the Master U sling. The parties disagree about what was said and agreed between them. This is the central issue in the claim relating to the Frame. In brief, Mr Haiss's evidence was that he asked Mr Ball if he might be able to oversee the production of metal frames for the Company, and Mr Ball's response was to offer to manufacture the frame himself. Mr Haiss stated that he then explained to Mr Ball the requirements of the design which Mr Haiss had already identified using the Beefy frame to demonstrate what he did not want. The claim is put either on the basis that Mr Ball was commissioned to make the design of the frame for the Company, or that he did no more than give effect to Mr Haiss's pre-existing design ideas. Mr Ball, on the other hand, gave evidence that Mr Haiss had asked him at the outset to make a copy of the Beefy frame, and he (Mr Ball) had demurred, and suggested that he could design and produce a better frame for the Company to sell under his 'RED' label, after which he designed the frame and produced a prototype. He denies that this arrangement amounted to a commission by the Company.
The parties agree, however, that a design was made and a number of frames were ordered by the Company from Mr Ball. Unfortunately, in July 2010, the parties fell out. The Company complained about late deliveries and the quality of the goods delivered, whilst Mr Ball complained of late payment, which caused him difficulties as he had invested in machinery as well as in the raw materials. Mr Ball wrote terminating the relationship on 2 August 2010. The Company applied to register the Frame Design on 7 August 2010.
By early 2011, Mr Ball had designed his own sling and was ready to market it, together with the frame. He wrote to Mr Haiss on 9 March 2011, asking if Mr. Haiss wished to buy frames or have the Master U sling advertised on the RED website. This led the Company to take legal advice, and a letter of claim was written by its solicitors to Mr Ball on 27 June 2011 alleging that the Frame design had been commissioned by the Company and that Mr Ball was infringing both the frame and sling designs.
I heard oral evidence from Mr Haiss and from Mr Ball about both the sling and the frame designs. In addition, the Claimant called Darren Knights, who had witnessed a discussion about the development of the frame design between Mr Haiss and Mr Ball, and Lynne Brown, who had witnessed a discussion about branding on a prototype shown to Mr Haiss by Mr Ball. I found Mr Haiss a measured, calm and believable witness. In his witness statement in reply, Mr Ball said that he thought that Mr Haiss had read his (Mr Ball's) first witness statement before writing his (Mr Haiss's) first witness statement. I do not see that Mr Haiss's witness statement was obviously 'tailored' in reply as suggested, whilst the Claimant's solicitors refuted that point in a letter of 21 May 2013. It therefore seems to me that Mr Ball's concerns on that front were unfounded.
Mr Knights and Ms Brown were also to my mind reliable witnesses, although the evidence they gave was of limited use to me in resolving the issues before me, as explained below. The Claimant also relied upon the witness statements of Dr Jan Groszer and Dr Andreas Berghaus, in respect of which hearsay notices were served.
Mr Ball was the sole witness for the defence. He too gave evidence in a measured and calm manner and made a number of sensible concessions in cross-examination. Nevertheless, for the reasons set out below, where his evidence differed from that of Mr Haiss, I prefer Mr Haiss's evidence in a number of significant respects.
The claim to infringement of the Sling Designs
The Claimants' case was that slings made to the disputed sling designs were first made available for sale in 2001, so that any unregistered UK design right in them subsisted only until midnight on 31 December 2011. The claim is thus only for damages for any past infringements and the trial before me was only to establish liability, not to assess the quantum of damage.
UK unregistered design rights are claimed to have existed in a number of elements of the shape and configuration of the sling, mainly (and I summarise the relevant paragraphs of the Particulars of Claim) in the following features (the 'Sling Designs') or a combination of any two or more of them:
a) The angles at which the hanging straps attach to the main section of the sling at the top, and the distance...
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