From: Lucas
Clover Alcolea <lucas.cloveralcolea@otago.ac.nz>
Sent: Tuesday 4
June 2024 23:43
To: Robert
Stevens; obligations@uwo.ca
Subject: RE:
Procuring Trademark Infringements
Apologies for the late reply as I just came
across this now when inserting it into our course materials for Wills and
Trusts.
Isn t the answer to the question you ask re
if that is right, "accessory liability" for breach of trust or
breach of contract must be based on some other principle. If your action in not
performing a contract is attributed to me, I am not liable for breach of
contract because I do not owe the contractual duty that, as in the case of
dishonestly assisting a breach of trust (although I m not clear whether the
Court would also apply this to knowing receipt -the better argument would seem
to be no-), it would go too far to impose liability on someone who assists in
carrying out a tort without them knowing that the act is unlawful (in the
sense that the defendant must know the essential facts which make the act
unlawful )? It seems to be on the same grounds of principle as in Royal
Brunei that it would be going too far to allow an ignorant innocent third
party to be liable as accessory liability is concerned with the liability
of a person who has not received any property. His liability is not
property-based. His only sin is that he interfered with the due performance by
the trustee of the fiduciary obligations undertaken by the trustee. These are
personal obligations. They are, in this respect, analogous to the personal
obligations undertaken by the parties to a contract. But ordinary, every day
business would become impossible if third parties were to be held liable for
unknowingly interfering in the due performance of such personal obligations.
Beneficiaries could not reasonably expect that third parties should deal with
trustees at their peril, to the extent that they should become liable to the
beneficiaries even when they received no trust property and even when they were
unaware and had no reason to suppose that they were dealing with trustees.
Could the same issues not be said to arise in the case of accessory liability
for torts more broadly? It appears to me that the UKSC is right in that Royal
Brunei itself appears to be making statements about accessory liability
generally, so that one would require to argue that the law in this area has
been wrong at least since Royal Brunei if one disagrees with Lifestyle
Equities. It s possible to make that argument, but I don t see it as an
easy one and I myself prefer the path of least resistance unless the law in
this area is plainly wrong.
It also seems arguable that the Court s
statements about an accessory only being liable for profits they themselves
made, if any, and not profits made by others are linked to the Court s earlier
views distinguishing accessory and primary liability. The result is that I m
not sure one can accept the former without accepting the latter and vice-versa,
or at least one would be accepting the result for reasons different to those
given in the judgment. But, again, I m merely an amateur when it comes to tort,
as opposed to equity/property, so I may well be wrong.
I would also be wary of relying on arguments
based on criminal law in the area of private law where very different
considerations and doctrines are at play, though I don t deny I have done this
myself in my work.
All the best,
Lucas
|
|
Dr Lucas Clover-Alcolea |
From: Robert Stevens <robert.stevens@law.ox.ac.uk>
Sent: Thursday, May 16, 2024 3:55 AM
To: obligations@uwo.ca
Subject: Procuring Trademark Infringements
An interesting decision of the UKSC adopting a
restrictive approach to the accessory liability of those procuring a tort: Lifestyle
Equities v Ahmed [2024] UKSC 17. As presently informed I think it is wrong,
but it fits with the modern orthodoxy of how accessory liability should and
does work (which I do not share): see for the best longform treatment P Davies Accessory
Liability (2015) ("excellent book" [137])
A company infringes the claimant's trademark. Can the
directors of the company be liable for the tort committed by the company?
On what I suppose we must now call the orthodox
approach, someone who procures the wrong of another is not committing the wrong
itself. Rather, there are a set of rules for accessories, under which a third
party can be held liable despite not having themselves committed a wrong.
([27]).
On this approach, procuring a trespass, procuring a
breach of contract, procuring a breach of trust/fiduciary duty, and procuring
(as here) a statutory wrong all form part of the same family. As is well known,
accessory liability in equity for breach of trust requires some kind of
knowledge or dishonesty. Procuring breach of contract under Lumley v Gye requires
knowledge that what is being procured is a breach of contract. It therefore
seems to follow that other forms of procurement should also require knowledge
of the wrongfulness of the action. So, the court conclude that "knowledge
of the essential features of the tort" are necessary ([137]). Where, as
here, the directors weren't proven to know of the trade mark that the company
was infringing, no liability.
My own view, for what it is now worth, is that this is
wrong. There are various ways, both inside and outside the law, by which we can
act through other people. If your actions are attributed to me, they are mine
too. The actions for which we are responsible are not confined to the movements
of our own bodies (indeed sometimes, and conversely, we aren't responsible for
the movements of our own bodies, as in cases of automatism).
Traditionally, we express the idea that your actions
are also mine in the Latin tag qui facit per alium facit per se (he who
acts through another acts himself). The law then has (normatively necessary)
rules for determining attribution of action: authorisation, ratification.
procurement and conspiracy (but not mere facilitation or assistance).
If therefore I authorise you to walk on another on
another's land, honestly and reasonably believing that they give permission, if
you do the authorised act on my behalf, it is then attributed to me. If there
in fact was not permission, you commit the tort of trespass, and so do I. My
knowledge of whether the authorised act was wrongful was irrelevant. I think
the same rule had applied in cases of conspiracy (I don't think the
conspirators in the famous Brooke v Bool knew that what they were
agreeing to do could be wrongful.
That is why those who authorise, ratify, procure or
conspire are joint tortfeasors. Because they do, in law, commit the
action which constitutes the tort, alongside the person they authorise,
procure, ratify, or conspire with.
But if that is right, "accessory liability"
for breach of trust or breach of contract must be based on some other
principle. If your action in not performing a contract is attributed to
me, I am not liable for breach of contract because I do not owe the contractual
duty.
So, I do not think it follows that because we require
dishonesty or knowledge for liability for procuring breach of contract or
breach of fiduciary duty, that we should also require it for procuring the
commission of torts, regardless of whether the tort is found in the common law
or statute.
You can, I think, show that the "attribution of
action" view is correct by thinking of situations where the party procured
to act commits no wrong. If I procure you to publish a libel in circumstances
of qualified privilege, if I am motivated by malice, but you are not, I the
procurer am liable, even though the primary actor is not. Similarly, if I
procure you to make a statement that I know to be false, but you do not, I
should potentially be liable in deceit, but you should not. Conversely, if I
procure you to commit the breach of a statutory duty that you owe, but I do
not, that alone should not be actionable (unless the statute says I am).
Further , the rules for holding third parties liable
for breach of contract or breach of trust are much more restricted than the
rules for the attribution of action in other ways. If I authorise you to break
a contract, or agree with you that you'll breach a fiduciary duty, those things
do not suffice to hold me, a party who is not subject to the primary duty,
potentially liable. (Those who adopt the general accessories idea tend to also
argue for its expansion to cover these cases).
If that is right, I am not at all sure that the
directors should not have been liable here. (I completely agree with the court
that there is no special immunity for agents or directors in play.) If we look
beyond the law of torts, if I procure you to commit an act which constitutes a
crime, is it necessary to show that I knew it was a crime? Or does it suffice
that I procured the actions that constituted the crime, and personally had
whatever mens rea that that crime requires? And if the crime has no mens rea
requirement (and torts properly so-called never have a mens rea requirement) I
should be criminally responsible.
[The case also contains some valuable discussion of
when and why an account of profits is available, with which I have, perhaps
unsurprisingly, no disagreement.]
Rob