England and Wales Patents County Court

IN THE PATENTS COUNTY COURT

		Rolls Building 7 Rolls Buildings London EC4A 1NL
		30 July 2013

Miss Recorder Amanda Michaels:

1. 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.
2. 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?

3. 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

4. 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."
5. 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.
6. 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.
7. 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.
8. 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.
9. 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.
10. 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.
11. 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.
12. 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.
13. 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.
14. 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

15. 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.
16. 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 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.

17. The Particulars of Claim state that the author of the Sling Designs was Mr David Barns, and that he made them in about 2001, whilst a director and employee of a company called Poleon Ltd. That company assigned the intellectual property rights in all of its designs to the Company by an assignment in writing dated 24 July 2009. The document referred to IP rights in slings, amongst other goods, but did not identify the Sling Designs more particularly.
18. The Defence put the Claimants to proof of all elements of the claim to design right in the Sling Designs, including the date when the Sling Designs were made and when slings were first made available for sale, pointing out that the Claimant's own website suggested that the design dated from 1997, not 2001, and described the sling as a "1997 design classic." The Defendant also claimed that the design of the sling was commonplace and that the shape and configuration of the straps was not entitled to design right because of the "must fit" exclusion of s 213(3). The Reply pleaded that the design had been amended in 2001 and claimed that even if it did not produce a new design capable of protection, there was no change to the term of the design right, as no slings were made available for sale until 2001.
19. With that background, I turn to consider the listed issues relating to the Sling Designs.

Did the Sling Designs or any of them subsist?

20. This issue – as to the subsistence of unregistered UK design right in the Sling Design - involves consideration of a number of separate points: (a) whether the design was an original design, within the meaning of s 213 of the 1988 Act, or (b) whether it was commonplace in the design field in question at the time of its creation, and (c) whether design right is excluded by s 213(3) as seeking to protect features of shape or configuration of the sling which enable it "to be connected to, or placed in, around or against, another article so that either article may perform its function."
21. Design right can subsist in the aspects of the shape or configuration of an article or parts thereof. The claim here was that there was design right in each of the various parts of the sling identified as the Sling Designs, or a combination of two or more of those parts.
22. No evidence was called from Mr Barns nor did Mr Haiss have direct knowledge of any relevant facts prior to at least 1999 when he met Mr Barns. It was clear, however, that he was aware of the scope of the design of the 1997 version of the sling. In his oral evidence, when asked whether the sling design was made in 1997 or 2001, Mr Haiss said 'both.' In his witness statement, and in oral evidence, Mr Haiss said that he co-operated with Mr Barns in developing and modifying the design of the 1997 sling in 2001. Mr Haiss said that he had an example of the 1997 sling, but it was not disclosed (no order for its disclosure had been made) and no photograph of it was in evidence.
23. The evidence as to the differences between the sling designs in 1997 and in 2001 was rather sketchy. There was nothing about this in the pleadings and no documents which enabled the 1997 design to be compared to the 2001 design. In his witness statement, Mr Haiss merely stated that the straps at the bottom of the 1997 sling were designed to be stretched far apart, unlike the angled hanging straps at the bottom of the 2001 design. In his oral evidence he described the main changes effected in 2001, consisting of changes to the angles of the straps (top and bottom) and the headrest/headrest straps, and the shape of the 'body.' Apart from this last point, those changes reflect certain of the claimed elements of the Sling Designs.
24. Considering that the Defence put the Claimant to strict proof of the originality of the Sling Designs, the lack of evidence of changes made to the 1997 design was unhelpful. However, the description given by Mr Haiss in the witness box of the changes effected in 2001 leads me to conclude that certain elements of the 2001 Sling Designs were significantly different from the 1997 design, namely the shape and configuration of the angled hanging straps at both ends of the sling, and the angled hanging straps for the headrest.
25. If I am wrong, then it is certainly possible that the 1997 design was an original work, but without having seen it I cannot consider the further points raised by the Defendant as to the subsistence of design right in that design. For the reasons given below, that does not matter, nor does it matter whether or not (another contentious point) the 1997 sling was marketed prior to 2001.
26. Mr Ball relied upon a number of other sling designs found in the trial bundles in support of his allegation that the Sling Design was commonplace in the field in question at the relevant time. However, the documents upon which he relied consisted of pages downloaded from the internet in late 2009, the first of which (showing a variety of slings) bore a copyright date of 2006. He could not and did not suggest that the designs were in existence at any earlier date. In the circumstances, those documents do not in my view establish that the Sling Designs were commonplace in 2001, nor that the 1997 design would have been commonplace before it.
27. I therefore find that the shape and configuration of the hanging straps at both ends of the sling and the straps for the headrest in the 2001 Sling Designs were original within the meaning of section 213.
28. That leaves the question of whether the relevant parts of the overall design of the sling were excluded from protection as unregistered designs by s 213(3)(b)(i) – the so-called 'must-fit' exclusion. It provides:

"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…"

29. The Defence claimed that the Sling Designs fell within the 'must-fit' exclusion not because the Sling Designs were to connect to the Frame, but because they are intended to fit the user's body. The exclusion can apply where the 'article' which the design must fit is part of the human body, see Ocular Sciences Ltd. & Anr. v Aspect Vision Care Ltd [1997] RPC 289 at p 425, but this does not, in my judgment, mean that the exclusion must apply to every design which in some way fits the human body or part of it, such as a handle or seat. In Dyson Ltd v Qualtex (UK) Ltd a must-fit argument based upon the design for some of the parts (triggers and a catch) being intended to 'interface with the human finger or thumb' was disclaimed, and Mann J (whose approach to the law in this respect was not criticised by the Court of Appeal at [2006] RPC 31), held at [2005] R.P.C. 19 [169] that

"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 [203]

"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."

30. Whilst the sling is designed to support a person's body, the angles at which the straps are attached to the body of the sling, the distances between them, and their locations, and similar elements of the headrest straps (those being the pleaded elements of the 2001 Sling Designs which I have found to be original) are not dictated by the need to fit the user and do not, in my view, in any way 'connect' with the user. At most, the user would lie on the sling or parts of it. In my judgment, the straps do not 'connect' in any real sense with him and do not 'enable' his connection with the sling. As a result, I do not find that design right is excluded by reason of s 213(3)(b)(i).

Were the Sling Designs or any of them owned by the Claimant?

31. The Claimant relied upon the assignment to the Company by Poleon Ltd in 2009 as having transferred title to the Sling Design to it. However, Poleon could only have transferred good title to the Company if it had good title itself. The evidence to that effect was, in my judgment, inadequate. The Particulars of Claim alleged that Mr Barns was the author of the Sling Design and was a director and employee of Poleon at the relevant time. The Claimant therefore relied upon s 215(3) of the 1988 Act which provides:

"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.

32. More significantly, there was no evidence before me that Mr Barns was at any time an employee of Poleon. For s 215(3) to apply so as to make Poleon the first owner of the legal title to the Sling Design, Mr Barns would have had to be an employee of the company, employed under a contract of service (see 263(1)). The pleaded allegation that he was an employee was not supported by Mr Haiss's witness statement, which stated only that he was a director of the company. There had been no order that the statements of case stand as evidence in chief. There was no document showing his employment status. Whilst he may if the design was made whilst he was a director of Poleon have held legal title to the design right in the design on trust for it (see e.g. Ultraframe v Fielding [2004] R.P.C. 479), in the absence of any evidence that he assigned that right to Poleon prior to its assignment to the Company, the assignment made in 2009 by Poleon would not have been effective to transfer title to the Sling Designs to the Company.
33. I conclude that the Claimant did not produce evidence sufficient to show even on the balance of probability that the design rights in the Sling Designs are or were owned by the Company or by Mr Haiss. I would therefore dismiss the claim based upon the Sling Designs.
34. In its Reply, the Claimant claimed also to have owned the unregistered UK design rights in the 1997 design. For the reasons given above, it is not possible for me to assess the merits of the claim that there were unregistered design rights in the 1997 design. Even if such rights subsisted, however, there was no evidence at all before me to suggest that the first owner of those design rights was anyone other than Mr Barns (it certainly cannot have been Poleon, which had not been been incorporated in 1997) and there was no evidence of any subsequent assignment by him of any such rights, whether to Poleon or to the Claimant. In my judgment, the Claimant has no title to bring a claim based upon the 1997 design.
35. In case I am wrong in my conclusions as to ownership of the (2001) Sling Designs, I will deal with the remaining issues relating to them.

When did the Sling Designs expire?

36. If it is right that the Sling Designs were (in the amended form) made in about 2001 and that slings made to those designs were sold by Poleon in the course of 2001, as to which Mr Haiss's evidence was clear, then it is right that the design right would have expired at the end of 2011.

Was the Defendant's Sling derived from the Sling Designs or any of them?

37. The Defendant's slings look rather different from the Sling Design, in part because of differences in material and construction, but also because the shape of the body and headrest is markedly different to the Claimant's sling. However, whilst it is denied that the Defendant's Sling is an article made to the Sling Designs, there was ample opportunity to copy. No alternative explanation of the provenance of the design of the Defendant's Sling was given, as opposed to an explanation of the Defendant's commercial considerations in designing the sling (e.g. that it would be a budget priced sling). It seems to me on the balance of probability that the Defendant's sling was indeed derived from the Sling Designs, and that the similarities between the Sling Designs and the Defendant's sling arose from the Defendant's admitted wish to produce a sling which could be used with the Frame.

Did the Defendant infringe the Sling Designs or any of them?

38. There are significant differences between the overall design of the parties' respective slings. However, the Claimant relies only upon parts of the overall design, as identified above, such that the question is whether the equivalent parts of the Defendant's sling reproduce the Sling Designs by copying the designs of those parts of the sling, so as to produce articles exactly or substantially to those designs. In my judgment, considering the definition of the Sling Designs in subparagraphs 6 (a) to (d) of the Particulars of Claim and the superimposed images of the parties' respective slings in Annexes 3 to 5 to the Particulars of Claim, the hanging straps at both ends of the Defendant's sling substantially reproduce the Sling Designs described in subparagraphs 6 (a) and (d), but do not substantially reproduce the elements of the design described in subparagraphs 6 (c) and (d). Mr Ball accepted in cross-examination that the angles of the straps were the same. Had I found that the Claimant had title to the Sling Designs, I would have found them infringed to that extent.

The Frame Design

39. The issues in relation to the alleged infringement of the design in the Frame (and the Claimant relies upon both its Registered Design No 4016586 and upon unregistered UK design right) are whether the Claimant owns the Frame Design and whether the Registered Design for the Frame is valid. However, the Claimant submitted that these two issues really amounted only to the one issue of ownership, because the only real challenge to the validity of the Registered Design relates to the proprietorship of the design.
40. In the Particulars of Claim, the Claimant stated that Mr Haiss, then acting on behalf of the Company, commissioned Mr Ball to make the frame 'in accordance with Mr Haiss's own creative vision.' A number of aspects of the design were identified as Mr Haiss's notions. The Particulars of Claim stated that it was agreed that the Claimant would buy a minimum of 100 frames in the first year and would pay £180 per frame. This, it was alleged, amounted to a commission for money or moneys worth within the meaning of section 2 (1A) of the Registered Designs Act 1949 and within the meaning of section 215 (2) of the 1988 Act.
41. In the Defence and Counterclaim, the allegation that Mr Ball was commissioned to design the Frame for the Claimant was denied. It was in addition denied that the Registered Design was at any time valid and the particulars of invalidity given were that the Claimant was not the proprietor of the design, rather the Defendant was the author of the design, and that the design involved use of the Defendant's signs 'RED' or ukred.com. The latter point is denied and I could discern no use of the name RED in the Registered Design documentation. I therefore accept Mr St Quintin's argument that the sole issue for determination in relation to the frame is that of ownership. He put this in two ways: first that the design was a commissioned work, or secondly, if it was not, that the new elements of the Registered Design were designed by "the creative vision of" Mr Haiss rather than Mr Ball.
42. Mr Haiss said that he had been considering how best to design a better frame for some time before approaching Mr Ball. In this regard, he relied upon a short witness statement of Dr Jan Groszer (served with a Civil Evidence Act notice) to the effect that he recalled a discussion between Mr Haiss and a Mr Schmitz in about December 2005 about the design of such a frame, in which Mr Schmitz, an engineer, recommended an A-frame design made from tubing with a square cross-section. A similar short statement was provided from Dr Berghaus, also with a Civil Evidence Act notice, who stated that in 2009 he had done some work with Mr Haiss on producing a better frame design than those which were then available, and had produced a prototype design for Mr Haiss. Ms Brown also referred to Mr Haiss's plans to design a better frame. as A number of contemporaneous documents in the trial bundles, such as an e-mail sent by Dr Berghaus to Mr Haiss on 28 August 2009, show that they had been discussing steel tubing. Whilst this evidence does not, in my judgment, shed any light on the nature of the arrangement made between the Company and Mr Ball, it does support Mr Haiss's evidence that he had been considering how best to design a better sling frame for some time before he reached the agreement with Mr Ball.
43. Mr Haiss said that initially he asked Mr Ball whether (in the light of the meticulous metalwork of the Kinky Bed) he could oversee the manufacture of a new frame design for the Claimant, but that he was persuaded to let Mr Ball manufacture the frames himself. He said that he commissioned Mr Ball to make the frame specifically to fit the Master U sling design 'in an asymmetric way' and that he had explained to Mr Ball the features he wanted to see in the frame. He explained that they had looked together at a 'Beefy' frame which the Claimant had in stock, and discussed its shortcomings.
44. Mr Haiss said in his 1^st witness statement that once it had been agreed in principle that Mr Ball would manufacture the new frames, it was also agreed that Mr Ball would get paid for the prototype, once they knew how much time and materials had been used and that he had expected this to cost around £1000. Mr Haiss added that in January 2010 he had asked Mr Ball for a bill, but Mr Ball had declined, saying that he would recoup the money over the year. This point had not been pleaded. Mr Haiss repeated in oral evidence that Mr Ball had refused payment for the design on the basis that he would recoup his costs through sales, especially as by that time Mr Ball had learned that he would need to order the steel in quantities which would dictate selling the frames wholesale, not just through the Company's shop.
45. Mr Ball's evidence, by contrast was that Mr Haiss had asked him to oversee the manufacture of a frame which broadly copied the 'Beefy' frame, with one specific improvement to allow space under the bottom cross-section, but he would not have been happy to be involved in the production of such a poor quality product. He claimed that once he was approached by Mr Haiss he had carried out "extensive market research" on the internet looking into the potential market for such a frame, and had concluded that he could sell a suitable frame for £180 wholesale. The documents which he produced showing his research all appeared to me to have been downloaded from the Internet on 25 October 2009, and show goods available from a number of retailers of slings, frames (including the Beefy frame) and other related goods. Mr Ball said that had not contacted any potential retail clients.
46. Mr Ball denied that the frame was made for the Company, saying it was made available to it once he had designed it; he also denied that it was made specifically to fit the Master U sling. In cross-examination, Mr Ball claimed that he had no idea before making the prototype how many frames the Company would order. That statement was not what had been stated at paragraph 14.3 of the Defence which he had verified by a statement of truth, as the pleading said that it was anticipated (before the design was made) that the Company would order 100 frames in the first year.
47. Mr Ball denied that Mr Haiss had offered to pay for the prototype.
48. It was common ground between the parties that Mr Haiss appreciated Mr Ball's meticulous metalwork, whilst Mr Ball was in turn impressed by the meticulous leather work produced by the Claimant. Mr Ball accepted in cross-examination that Mr Haiss would not have asked him to copy a badly designed frame yet in his next answer suggested that Mr Haiss had done exactly that, and in another answer he suggested for the first time that Mr Haiss had asked him to oversee the manufacture of a copy of the Beefy frame. It seems to me improbable that Mr Haiss would have asked Mr Ball either to supervise the copying of the Beefy frame or to copy it himself, as alleged by Mr Ball, as both parties considered it to be an unacceptably poor product.
49. In addition, I was unconvinced by Mr Ball's evidence that he had decided that making the frame would be a venture with worthwhile commercial prospects. The evidence indicated that Mr Ball did not have any commercial experience in this field, never having sold any of his Kinky Beds. The claim that the RED business had a substantial reputation and goodwill before 2009, which was repeated in Mr Ball's witness statement, appears to me to have been incorrect as not a single product had been sold by Mr Ball. Mr Ball's evidence as to how he investigated the potential market for the frame appeared to boil down to having checked some websites one day in October 2009. Those facts in my view also undermine Mr Ball's claim that the design of the frame was essentially his own venture.
50. Another point which in my view counted against Mr Ball was that he was not prepared to accept that the Frame was specifically designed to suit the sling sold by the Company. That seems to me inconsistent with his e-mail of 28 January 2010 and possibly also inconsistent with an e-mail to August 2010 in which Mr Ball offered to promote the Company's sling along with the Frame.
51. Whilst the discussions between the parties in the latter part of 2009 were not recorded or reflected in any surviving contemporaneous documents, I note an e-mail of 28 January 2007 sent by Mr Ball to Jeremy Scott of the Company, in which Mr Ball referred to the dimensions of the frame and the bag and (having been asked for drawings of the frame by Mr Scott the previous day) said that he had no drawings of his own, "just the ones [Mr Haiss] did the other day." This does suggest an input by Mr Haiss to the design and Mr Ball accepted in cross-examination that Mr Scott wanted these details to produce a video for the Company to market the Frame. On 22 January 2010, Mr Ball sent Mr Haiss a photograph of the proposed carrying bag for the Frames, asking what he thought. This seems to me to be slightly more likely to indicate that he was making the Frames specifically for Mr Haiss than that he was just asking for Mr Haiss's views as one potential customer for the Frames.
52. In a letter written by Mr Haiss to Mr Ball on 25 July 2010, when the arrangement between the parties was on the verge of collapse, Mr Haiss wrote "The RED frame sales are below both our expectations. … it is vital that coordinated action is taken to increase sales. ... To do so, you suggested to go out there, meet the retailers, demonstrate the frame in conjunction with our Sling etc, and to take orders. I agreed that you could be more involved in sales. I totally disagree with you on your price strategy, questioned your appearance as manufacturer and pointed out that we too have an interest in the frame. I also highlighted the undermining effects to [the Company's] distribution strategy, the work and money we have invested over the last nine months to bring the frame to the market." On the one hand, the suggestion that Mr Haiss had agreed that Mr Ball could be more involved in sales supports Mr Haiss's evidence that Mr Ball had not until then been expected to sell the frames. That to my mind supports the Claimant's case that the frame was designed for the Company. However, the phrase "we too have an interest in the frame" does not sound like a claim to ownership of the design of the Frame or not to sole ownership of it. A follow-up e-mail was, however, written by Mr Haiss to Mr Ball on 28 July, which does seem to me to be consistent with the Claimant's case, because it anticipated that all sales, even to other retailers, would go through the Company. Mr Haiss said "What could not happen is that you sell the frames directly." It seems Mr Ball sent no substantive response, but 'took exception' to Mr Haiss's letter. In the event, by 2 August 2010, Mr Ball had rejected Mr Haiss's suggestions and was intending to sell the frame himself to retailers. In an e-mail of that date he described the Company as "a founding retailer"
53. Mr Ball made the point that the claim that the design had been commissioned from him was not raised until the letter of claim sent in mid 2011. However Mr Haiss exhibited an e-mail to his colleague Mr Dunn, in which he had enclosed a draft letter which he proposed to send to Mr Ball in early August 2010 and a draft compromise agreement. Although the documents were never sent, Mr Haiss proposed to complain that the Frame was commissioned by the Company, included his design features, and was designed specifically to hold the Master U sling.
54. Mr Knight, a mould-maker, gave evidence as to a discussion between Mr Haiss and Mr Ball as to some details of the design. His evidence was that the frame design was specific to the Company so as to fit the Sling but that he was told that the bags in which the frames could be transported once dismantled were marked 'RED' for marketing purposes. I do not consider that his evidence helps me one way or the other on the commission point, although it adds a little support to Mr Haiss's evidence as to the branding issue mentioned below.
55. Ms Brown gave evidence that she had known Mr Haiss for some time and knew of his intention to create a better sling frame. She too was present on an occasion when Mr Ball and Mr Haiss discussed the frame design, when Mr Ball was showing him the prototype frame. She had the impression that he was submitting it for approval. Her evidence (challenged by Mr Ball) was that the prototype frame then bore the Master U trade name; she recalled suggesting that it should be placed facing outward to be more prominent. I accept Ms Brown's evidence on this point, although it does not seem to me to resolve the question of who was to own the frame design, as Mr Ball could have owned the design but have been producing a number of frames with the Master U mark on them for sale by the Company, and he could therefore have wished for the Company's approval to be sure it would purchase the goods.
56. Considering all the matters set out above, the evidence given by Mr Haiss, which was in my judgment supported to some extent by the evidence of Ms Brown, Dr Jan Groszer and Dr Berghaus, and the documents mentioned above, and weighing those matters against the inconsistencies which I have identified above in Mr Ball's evidence, I prefer Mr Haiss's evidence on the important point as to how it came to be agreed that Mr Ball would design the frame for the Company.
57. Before considering the question of whether or not the frame design was a commissioned work, I should deal with an issue as to the branding which was to be applied to the frames. Mr Ball relied upon the fact that the frames were to bear his RED mark as showing that the design was his. In the Reply the Claimant pleaded an agreement that because RED had "some pre-existing reputation as a manufacturer" of metalwork, and because the Claimant intended to make wholesale sales of the frame to retailers who were Master U's competitors, it was agreed that it would be better if the frame was branded RED than Master U. Mr Haiss expanded upon that point in his 1^st witness statement. He said that initially (as Ms Brown's evidence confirmed) it was intended that the frame would be branded "Master U engineered by RED." However, when Mr Ball told him that he needed to order the steel tubes for the frame in quantities sufficient to make 135 frames, which was more than the Claimant thought it could sell in its shop, they agreed that the Claimant would need to enter into the wholesale business, ideally selling a frame and sling package. In those circumstances it would be necessary to remove the Master U brand from those frames, which it would be selling to its competitors, although "Designed by Master U" was supposed to be stamped underneath it. Mr Haiss said that he realised that the Master U stamp was missing when the first batch of frames was delivered. In the circumstances, in the light of both Mr Haiss and Ms Brown's evidence about branding, this point does not seem to me to detract from my finding that the frame design was made by Mr Ball for the Company.
58. The issue is whether the arrangement amounted to a commission for money or money's worth. This is not a particularly technical question, but requires the design to have been created pursuant to a pre-existing contract imposing an obligation on the part of the designer to create the design and an obligation on the commissioner to pay for it.
59. I was initially concerned that the Claimant had changed its case as to how Mr Ball was commissioned, as explained above, but there is some relatively contemporaneous support for the "payment for the prototype" agreement described by Mr Haiss in the draft settlement agreement which Mr Haiss produced (but never sent to Mr Ball) in July 2010. Given my overall assessment of Mr Haiss as a truthful witness, I accept his evidence on this point. The arrangement he described was, in my judgment, clearly a straightforward commission for money.
60. If I am wrong on that point, then I accept Mr St Quintin's alternative argument that the arrangement between the parties was that Mr Ball would manufacture the frames and recover the notional design costs through being able to produce the frames and sell them to the Company. Mr Peter Leaver Q.C. (sitting as a Deputy Judge of the Chancery Division) in Spraymiser Ltd v Wrightway Marketing Ltd [2000] E.C.D.R. 349 held at p 364:

"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."

61. A similar result was reached in Apps v Weldtite Products Ltd [2001] FSR 39 where a commission to produce a report on bicycle stabilisers and make recommendations as to new products was held to amount to a commission for a design for a replacement stabiliser produced in order to fulfil the tasks set by the commission.
62. More recently, Mr John Baldwin QC sitting as a judge of this court in Bruhn Newtech Limited v Datanetex Limited [2012] EWPCC 17 said at [24]

"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."

63. In my judgment, this is not the kind of ordinary supply contract to which Mr. Baldwin QC alluded. I conclude from the evidence before me that the Company was not simply asking Mr Ball to supply it with frames, but asking him to produce a new, custom-made frame suitable for use with the Master U sling and, to some extent, to transform Mr Haiss's pre-existing ideas as to the specifications of such a frame into a design which could be manufactured and sold by the Company. I find that the Frame was a commissioned work and, as such, the design rights in it were owned by the Company. The challenge to the validity of the Registered Design based upon ownership therefore fails.
64. The Claimant's alternative argument was that if there was not a commission, all that Mr Ball was asked to do was to put into effect Mr Haiss's pre-existing "creative vision," meaning that Mr Haiss was the author of part or parts of the design. I do not accept this argument, as it does not seem to me that the elements of the design pleaded as amounting to this creative vision are specific enough to amount to a design, rather than a number of ideas of what the design should include. However, given my findings above, this does not affect the result
65. For these reasons the claim succeeds in respect of the alleged infringement of the Frame design but fails in relation to the alleged infringement of the Sling Designs.
66. I will hear argument as to the form of Order which I should make.