CIPIL spring conference 2010

Widening the Net: Contributory Liability for Facilitating, Authorising and Inducing Infringement of Intellectual Property Rights: Faculty of Law, University of Cambridge, Saturday 13 March 2010

Chair: Mr Justice Richard Arnold.

Despite the widely-recognised expansion in the scope of intellectual property rights during the twentieth century, right-owners seem intent on widening the net of liability even further through the use of principles of contributory, secondary or accessorial liability. These legal devices have been targeted at those operators who provide mechanisms, infrastructure or ‘new forms of trade’ that facilitate direct infringement of relevant intellectual property rights. Such devices are used particularly, but not exclusively, where primary infringement is carried out by many individuals on a small scale, making direct enforcement costly and inefficient. Thus, for example, principles of contributory infringement underpinned the successful U.S. actions of record companies and film studios against Napster and Grokster (and notions of contributory criminal infringement were in issue in the recent Swedish Pirate-Bay judgment). Similar principles have been deployed by brand owners in a number of jurisdiction against e-Bay to argue that e-Bay should be held liable for permitting its auction site to be used for the sale of counterfeit products. Indeed, such arguments were before the High Court last year in L’Oréal S.A., et al v. eBay International AG et al [2009] EWHC 1094 (Ch), albeit unsuccessfully.

The law of contributory liability, however, is possibly the least well understood aspect of intellectual property law. Even the terminology is opaque. One cause of the lack of clarity derives from the fact that these principles derive from common law of ‘joint-tortfeasance’ as well as specific statutory provisions (such as section 16(2) of the Copyright, Designs and Patents Act 1988 or section 60(2) of the Patents Act 1977). Thus, questions are raised as to the relationship between common law and statute, and as to why different statutory provisions should exist in relation to different intellectual property rights. In the United States, the ‘common law’ principles applicable to copyright have been developed from, and by analogy with, the statutory rules applicable to patents. A second cause of obscurity lies in the fact that there has been little harmonisation at a regional or internation level. Thus, different jurisdictions tend to proceed on different bases, though, it seems, frequently producing similar results. Where there has been harmonization – primarily via Article 26 of the otherwise redundant Community Patent Convention 1975 – some are coming to question its adequacy and continuing relevance. A third cause of obscurity derives from the lack of any clear sense as to the normative basis of such secondary liability: some argue that an accessory should only be liable where the act in morally equivalent to the act of the ‘primary’ infringer, while others see the ascription of liability through the lens of economics, taking the view that a facilitator should be liable if they are in, economically speaking, the best position to prevent infringement.

This conference aimed to explore the question of accessorial liability with a view to clarifying our understanding of the law and policy in this area. Key questions that we will address include the following:

  • What is the current law relating to accesorial liability for infringement of copyright, trade marks and patents in the United Kingdom? What is the relationship between the common law of tortfeasance and statutory regimes of secondary liability? What is understood by the notions of ‘essential means’ and ‘staple article of commerce’ in section 60 of the Patents Act? What is meant by ‘authorisation’ in section 16 of the CDPA?
  • How do those legal principles differ from those operating elsewhere (in particular, in the United States, Germany and the Netherlands)?
  • How have these principles been deployed, and with what success, in relation to auction sites, peer to peer and other new forms of trade?
  • Would it be desirable to recognise general principles of accessorial liability for all IPRs in the UK? Would it be desirable for these principles to be encoded in regional or international law? What should the scope of such principles be? What is their normative basis? How can we ensure that such principles do not inhibit the development of new technologies and new forms of commerce?

Speakers included:

Paul Davies, (Gonville & Caius, Cambridge), ‘General Principles of Joint Tortfeasance and criminal accessorial liability in England & Wales’

Dr Phillip Johnson (Barrister, 7 New Square, Lincoln’s Inn), ‘Patents: the case law under s.60(2)-(3) of the Patents Act 1977 (taking account of caselaw elsewhere in Europe under provisions modeled on CPC, Art 26)’

Dr Catherine Seville, (Newnham College, Cambridge), ‘Authorising Infringement of Copyright: the Case Law from the UK and Australia’

Dr Jennifer Davis (Wolfson College, Cambridge), ‘Trade marks and "instruments of fraud"’

Professor Stacey Dogan (Boston University), ‘Accessorial Liability in The United States’

Professor Thomas Dreier (University of Karlsruhe), ‘Accessorial Liability in Germany’

Dr. Mireille van Eechoud (Institute for Information Law, University of Amsterdam), ‘Accessorial Liability in The Netherlands’

Professor Graeme Dinwoodie, (University of Oxford), ‘EBay and Auction Sites/ Ad Words’

Jo Oliver, (IFPI), ‘Peer to Peer: Grokster, Pirate-Bay and beyond’

Professor Matthias Leistner (University of Bonn), ‘International and Regional Harmonization

Professor Ken Oliphant (Institute for European Tort Law, Vienna), ‘The ethics and economics of Contributory Liability in Tort’

Professor Alain Strowel (Brussels), ‘Accessorial Liability in Belgium and France’