Accessory liability for copyright infringement

An accessory is a person or corporation involved in another’s wrong or unlawful act.  The tort of accessory liability is an important area of law allowing claims to be brought against “accessories” who participate in wrongdoings.  This is desirable in circumstances where, for example, the primary wrongdoer is insolvent, lacks capacity, or for some other reason cannot be pursued through regular legal channels.  In such circumstances, it may be just or equitable for a claimant to pursue a third party, the accessory, if they were sufficiently involved in any wrongdoing.  Even in circumstances where the primary wrongdoer can be pursued, accessory liability provides a mechanism for enhancing the protection afforded to holders of legal rights against interference by accessories.

To establish an action for breach of the tort of accessory liability in the context of copyright infringement the accessory must have:

• assisted the commission of an act by the primary tortfeasor;
• pursuant to a common design that the act be committed; and
• performed an act which constitutes a tort against the claimant.

Case of Sea Shepherd

In the case of Sea Shepherd (UK) v Fish & Fish Ltd [2015] UKSC 10 (Sea Shepherd) considered whether or not the tort of accessory liability may apply in circumstances where the wrong or unlawful act committed was the infringement of copyright.  It should be noted that the case did not involve an action based on infringement of copyright, but that the tort of accessory liability is substantially established by cases involving such infringement.  Thus, necessarily, Sea Shepherd both considered and discussed the tort in respect of copyright infringement.  In this case, Lord Sumption summarised concisely the effect of a successful action under the tort of accessorial liability, stating at paragraph [38]:

“It is now well established that if these requirements are satisfied the accessory’s liability is not for the assistance. He is liable for the tortious act of the primary actor, because by reason of the assistance the law treats him as party to it. … This does not, however, mean that the accessory must have joined in doing the very act constituting the tort.”

This passage shows that there is a broad scope in terms of the circumstances which might amount to the assisting the commission of an act by the primary tortfeasor.  The Court then gave specific consideration to the case of Dramatico Entertainment Ltd v British Sky Broadcasting Ltd [2012] 3 CMLR 14.  That case concluded that unlawfully downloading streamed copyright material to attract users to the defendant’s website constituted the tort of accessory liability.  In that sense, the case is a practical example of the tort of accessorial liability as applied to infringement of copyright.

Sea Shepherd, having established that copyright infringement can constitute accessory liability, went on to discuss the broader principles of the tort.  At paragraph [40], the Court acknowledged:

“In both England and the United States, the principles have been worked out mainly in the context of allegations of accessory liability for the tortious infringement of intellectual property rights.  There is, however, nothing in these principles which is peculiar to the infringement of intellectual property rights.  The cases depend on ordinary principles of the law of tort.”

The above passage shows that, whilst copyright infringement can and regularly does constitute the tort of accessorial liability, the tort itself exists independently.  Critically, this means that mere contemporaneous involvement of a third party with copyrighted material will not immediately sound in tort.  Assistance in the occasioning of some wrongdoing must be shown.

Accessory liability for manufacturers

The Court referred to the case of CBS Songs Ltd v Amstrad Consumer Electronics Plc [1988] AC 1013 (Amstrad) considering it the ‘fullest modern discussion of the tort of accessory liability.’  The key finding of Amstrad was that the manufacturer of a recording machine capable of performing acts infringing copyright was not liable for the tort of accessory liability.  This was the case because the manufacturer did not, to any extent, make or authorise the eventual users of the recording machine infringe copyrighted material.  The Court in Sea Shepherd expanded on this proposition, finding that if a manufacturer had mere knowledge of some intention of a purchaser to use the manufactured goods to infringe copyright, that would not be enough to find the tort of accessory liability.  Mere knowledge is not tantamount to a common design.  For a defendant to be liable as a joint infringer, inducement, incitement, persuasion to infringe or something further needs to be seen.

Sea Shepherd noted the prudent summary by Hobhouse LJ in respect of joint tortfeasors and manufacturers of machines which might be used to infringe copyright, citing at [42]:

“Mere assistance, even knowing assistance, does not suffice to make the secondary party jointly liable as a joint tortfeasor with the primary party. What he does must go further. He must have conspired with the primary party or procured or induced his commission of the tort; or her must have joined in the common design pursuant to which the tort was committed.”^[1]

Accessory liability for service providers

It does not appear that the Courts have conclusively decided whether the protection afforded to manufacturers applies for service providers.  Despite this, it would appear that some protection does generally apply.  An example of that protection can be seen in the case of L’Oréal SA v eBay International AG (2009) 81 IPR 235, which saw eBay acting as the agent for the sellers of goods, a service of sorts.  In this case the Court held that eBay was under no legal duty to prevent infringement and that facilitation with knowledge and an intention to profit is not enough to establish the tort of accessorial liability (at [382]).

Takeaways

It is clear that manufacturers will not readily be held accountable as joint tortfeasors for the acts of the persons who make use of their products.  This is the case even where the manufacturer is aware of the user’s intention to breach copyrighted material.  Something, possibly much more, is required on behalf of the manufacturer.  It would need to be seen that the manufacturer procured or induced the user to breach copyright or that the manufacturer had a stake in, or something to gain, from such breach.

It seems this rule will apply analogously to service providers.  Despite this, service providers ought to take greater care than manufacturers as this point of law has not been conclusively determined.

Links and further references

Cases

CBS Songs Ltd v Amstrad Consumer Electronics Plc [1988] AC 1013
Dramatico Entertainment Ltd v British Sky Broadcasting Ltd [2012] 3 CMLR 14
L’Oréal SA v eBay International AG (2009) 81 IPR 235
Sea Shepherd (UK) v Fish & Fish Ltd [2015] UKSC 10

Further information on accessory liability

If you need advice on any matter concerning a third party who is involved in the infringement of copyright material, contact us for a confidential and obligation-free discussion:

Disclaimer

This article contains general commentary only.  You should not rely on the commentary as legal advice.  Specific legal advice should be obtained to ascertain how the law applies to your particular circumstances.

[1] Sea Shepherd UK v Fish & Fish Limited [2015] UKSC 10 at [42] citing Credit Lyonnais Bank NV v Export Credits Guarantee Department [1998] 1 Lloyd’s Rep 19, 46.

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