50 shades of sex swings: how failing to protect the IP of a product's design can have you tied up in knots

When Derek Ball entered an English courtroom a couple of weeks ago as a defender in a lawsuit about design rights in a sex swing, one could say his financial well-being hung in the balance. Literally.

Much of the dispute between Mr Ball and the claimant company remained uncontentious, but highlights how the even the most outrageous of contraptions can gain legal protection in design rights. Those companies dealing with any forms of intellectual property should protect themselves before being hung in suspense over legal claims. The problem started for the claimant company when it designed a sex swing to go over what was referred to in court as a rather ‘beefy’ frame. The sling known as the “Master U” was made to go over the aforementioned beefy frame. The problem was that the symmetrical design overstretched the head end of the sling. Like Tarzan, Mr Ball came swinging to the rescue.Mr Ball, a mechanical engineer, was the proprietor of a company known as ‘Red’ manufacturing, who makes the product aptly called “the Kinky bed”. He had not sold any of these at various fetish fairs, but had earned a reputation as a decent designer of kinky, fetish items. When the sling didn’t fit the current frames on the market, Mr Ball and Red Manufacturing decided to make a prototype frame for the sling. Here is where the dispute starts. 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 demurred, suggesting he could make a better frame.

Not that kind of swing

Ruling in favour of the complainer, the Court rejected the Mr Ball’s plea that the design and construction of the disputed frames was ‘essentially his own venture’. The Court found that he had been commissioned and paid to design and build the frames by the businessman and that the latter’s company owned the design rights therein. Arguments that the Claimant Company also owned design rights in a sling used to support bodies in conjunction with the frame were rejected by the Court. However, the ruling meant that the engineer was liable to pay damages in respect of his infringement of the frame design or account to the businessman for any profits that had been generated by the infringement.As the frame was concerned, the claimant company commissioned the design in the frame, so it owned the design right and the right to register the design and the judge ruled that its rights had been infringed. As far as the leather sling was concerned, the judge ruled that the shapes of some parts were sufficiently original to be protected (insert condom joke here), and although that protection would have been lost if the shapes had been dictated by the need to fit the user, that was not the case. The claimant company’s rights would have been infringed, except that it did not own them: there was no evidence that it employed the designer at the time, or that he had assigned his rights to the company. Accordingly, that part of the case failed. The important message is that companies need to need to document intellectual property issues in a written contract whenever any design work is being undertaken whether for bondage equipment or anything else. It avoids disputes and the cost and uncertainty of litigation. Those who fail to do so may end up being bent over Mr Ball’s frame and/or tied to the claimant company’s swing.

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