7 Rolls Buildings
London EC4A 1NL
B e f o r e :
| (1) UWUG LIMITED
(2) UWE HAISS
| -and -
|DEREK BALL t/a RED
Hearing date: Monday 3 June 2013
Crown Copyright ©
Miss Recorder Amanda Michaels:
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?
The claim to infringement of the Sling Designs
a) The angles at which the hanging straps attach to the main section of the sling at the top, and the distance between the straps at that point;
b) The angles of the straps at the bottom of the main section and the distance between them;
c) The layout of all 4 such straps; and
d) The configuration of the head support and the straps supporting it.
Each of the claimed features was shown in marked up photographs in Annexes to the Particulars of Claim.
Did the Sling Designs or any of them subsist?
"Design right does not subsist in … features of shape or configuration of an article which … enable the article to be connected to, or placed in, around or against, another article so that either article may perform its function…"
"The essence of the must ?fit exception is that it applies to features that are essentially part of a connection—they facilitate a level of connection even if it is only to the extent of allowing one article to be placed against another."
He added at 
"The must fit exception does not apply to every aspect of a part that has a function (which it is likely to have) and which happens to lie against another part. There has to be an enablement of connection, or of placing, or of placing around."
Were the Sling Designs or any of them owned by the Claimant?
"Where … a design is created by an employee in the course of his employment, his employer is the first owner of any design right in the design."
The Particulars of Claim did not allege that Mr Barns made the design in the course of his employment by Poleon. That may be a 'pleading point' and one might infer that the Claimant's case was that he did so, but there was no evidence to that effect. Indeed, Mr Haiss's evidence was not specific as to whether the changes made to the 1997 design to produce the 2001 Sling Design were made before or after the incorporation or acquisition of Poleon.
When did the Sling Designs expire?
Was the Defendant's Sling derived from the Sling Designs or any of them?
Did the Defendant infringe the Sling Designs or any of them?
The Frame Design
"I am quite satisfied that Mr Evans was commissioned by Mr Snell to help with the design of the prototype Mr Woody I have also said that I accept Mr Evans' description of the work that he carried out for Mr Snell. "Commission" is defined in Section 263(1) of the 1988 Act as meaning "a commission for money, or money's worth". Mr Evans said that he was not paid for working for Mr Snell on the prototypes, and that it was not his practice to charge for such work. He added that he recovered the cost of working on the prototype in the cost charged to Mr Snell for the mass-produced production of Mr Woody, which he supplied to Mr Snell from 1993 to 1997. In his evidence, Mr Evans added that, if Mr Snell had decided to have Mr Woody produced by some other producer after Mr Evans had worked on the prototype for him, he would have charged him for the cost of the work that he had done."
"for there to be a commission within the meaning of section 215(2) there must be something (i.e. some fact or matter) from which one can infer that designs in which design rights subsist were being ordered by A from B such that A would own the rights to the designs, something from which one can infer that the order was in fact a commission. …
30 The facts here are that there was an ordinary commercial contract for the supply of certain goods and the goods were supplied. The fact that some aspects of the goods had to be designed by Datanetex prior to the supply does not seem to me, without more, to change things; to convert an ordinary contract (which on its face does not appear to be one in which designs are being commissioned) into one in which not only does the purchaser get the goods it ordered but it also gets ownership of any designs that are created."