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CIPIL Annual Spring Conference 2019: 'Mens Rea in IP: Knowledge, Intent and Infringement of Intellectual Property Rights'

Saturday, 9 March 2019

Chair: Mr Justice Richard Arnold

Intellectual property law had, for much of the 20th century, been thought of as a body of strict liability torts: a defendant infringes, irrespective of whether they knew about the claimant’s intellectual property right or intended to infringe it.  As long as the act is not involuntary, there is infringement. Knowledge and intention might be relevant in evidentiary terms, or as a component of a defence, with respect to remedies, of to establish accessory liability, but rarely, if ever, in relation to substantive infringement by the primary actor. 
Yet, in recent years, questions of knowledge and intention have taken an increasingly prominent place in matters of IP infringement, particularly as a response to new technologies and environments. For example, questions have been asked as to whether:
  • a farmer should be regarded as infringing patent rights over genetically-modified plants, where seed spread on to the farmers land which they then bred (perhaps even without being aware of its presence); 
  • a manufacturer of a generic drug is liable for infringement where it sells the drug knowing it will be prescribed for a therapeutic use covered by a “Swiss-form claim” (;
  • a search engine that automatically creates hyperlinks to infringing material communicates that material to a new public when the search engine provider cannot be said to ‘know’ the link is to such material; 
  • a maker of wine infringes another’s trade mark where users hide part of the mark applied to the goods by the alleged infringer so as to give the impression they are drinking the claimant’s wine?
The aim of this day is to explore these trends. 
Is the increased prominence of these elements in infringement actions across various IPRs purely coincidental? Does emphasis on intent or knowledge reflect an increased tendency to extend IP rights to confront ‘free riding’, or the collapse of distinctions between primary and accessory liability? Or is the shift a reflection of tendencies in tort law (e.g. defamation) which for over a century has been to move away from strict liability and towards fault? Does the increased use of mens rea signal an increasing discomfort with the idea of intellectual ‘property,’ and a recognising that a harm-causing activity (such as hyperlinking) might have a high social value? How far is the trend a reflection on the increased role of human rights in IP, harmonisation and more generally the influence of comparative law? 
What kind of mental elements do we see? How far does the law distinguish between intention and recklessness? What kinds of knowledge are involved – actual, ‘Nelsonian’, constructive? Are the mental elements focussed on ‘acts’, knowledge about the subject matter in question, or the ‘consequences’ of those acts? How do we understand ‘mens rea’ in automated systems? Are special problems associated with environments where actors can develop or use technologies to ensure they are not informed?  What other problems arise from relying on concepts of knowledge and intent? What are the procedural implications (eg for disclosure, trial, etc)? How are they handled through presumptions? Should presumptions turn on the commercial or non-commercial context?
Are mental elements more appropriate in other aspects of IP, such as acquisition (intent to create a “work”, intent to use a “mark”), ownership (cf. Beckingham v Hodgens EWCA rejection intent to co-author requirement), defences (such as an intent to be humorous in the parody defence) or remedies (IPR Enforcement Directive Art 12 (damages in lieu of injunction where defendant “if that person acted unintentionally and without negligence”; Art 13 (may be a condition for damages that infringer “knowingly, or with reasonable grounds to know, engaged in an infringing activity!), and if so, why?


Morning (9.30am -1pm)

Conceptual Framing

Professor Peter Cane, Senior Research Fellow Christ’s College/ Yorke Distinguished Visiting Fellow
[Handout] Mens Rea in Tort Law

IP Infringement

Dr Eleonora Rosati, University of Southampton
[Powerpoint Slides] ‘The place of intention and knowledge in the concept of communication to the public/Article 13 of the Directive on Copyright in the Digital Single Market and the liability of ‘online content-sharing service providers’

Professor Annette Kur, Max Planck Institute, Munich
[Powerpoint Slides] ‘Intention and the protection of trade marks with a reputation (free riding, due cause)’

Dr Patrick Goold, City University 
[Powerpoint Slides] ‘Accidental Infringement’

[Handout] ‘Accidental Infringement’

Kathryn Pickard, Barrister, 11 South Square
[Powerpoint Slides] ‘Intention, ‘off-label prescriptions’ and new use patents after Warner-Lambert v Generics [2018] UKSC 56’

[Handout] ‘Intention, ‘off-label prescriptions’ and new use patents after Warner-Lambert v Generics [2018] UKSC 56’


Afternoon (2pm – 5pm)

Professor Nari Lee, Hanken School of Economics, Helsinki
Ulla-Maija Mylly, University of Turku 
[Powerpoint Slides] ‘The place of knowledge in trade secret liability under the EU Trade Secrets Directive’

Professor Martin Senftleben, VU Amsterdam 
[Powerpoint Slides] ‘Mental Elements in Defences to Infringement of IPRs’

David Stone, Solicitor, Allen & Overy and Deputy High Court Judge
[Powerpoint Slides] ‘Intention and Knowledge in Remedies for Infringements of IPRs’

[Handout] ‘Intention and Knowledge in Remedies for Infringements of IPRs’

Concluding Talk Bringing It All Together

Professor Tanya Aplin, Dickson Poon, KCL 
[Powerpoint Slides] 'Rationalising Intention in IP Law'. 




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