Common design in IP cases

The short answer is yes. Here we are talking about the law on joint liability for the tortious acts of another, in short a party is jointly liable for a tort committed by another if he either (a) procured the tort or (b) participated with the primary tortfeasor in a common design relating to the tort.

In a case I know very well ( I acted for MFI) SABAF Spa v MFI Furniture Centres Ltd [2004] UKHL 45 [2005] RPC 10, at [40]) Lord Hoffman said “The test for such liability in English law is whether the acts were done pursuant to a common design so that the secondary party has made the act his own.”

So what does this mean in practice?

If you are of the view that your IP rights are being infringed then you will need to write a cease and desist letter to the company but in addition to the company you will need to also write to the employee/director claiming that they too are infringing as they have encouraged the wrong and participated in the wrongdoing in common with the Company. The individual needs to be make the infringment his own ie that he must be capable of being sued independently of the company in addition to involving the employment of some means intentionally and actively to cause or encourage the company to carry out the infringing acts.

If you wish to avoid such a threat its always a good idea to have minuted board meetings which would express your concern that the Company was committing the acts in question and that you did not agree with the action that the Company was taking.

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