From: Robert
Stevens <robert.stevens@law.ox.ac.uk>
Sent: Wednesday
15 May 2024 16:55
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