common design

Persons who assist, procure, enable, facilitate, persuade, induce, incite or authorise others to commit tortious acts may themselves be found to be jointly and severally liable with those other persons for infringement of an intellectual property right as part of a common design. It is likely that a willing participation will be required. It is not a requirement that express agreement is reached in respect to the steps that will be taken – it is the participation in the furtherance of the design which gives rise to liability. A person may be found to be a participant where tacit agreement to carry out an infringing act has been reached and the parties combine to do acts that prove to be infringements. Although persons such as directors of companies are often found to participate in the infringement of intellectual property rights by way of a common design, the principle is in no way limited in application to intellectual property rights.

A defendant is a joint infringer if he intends and procures and shares a common design that infringement will take place. A defendant may procure an infringement by inducement, incitement or persuasion. Generally speaking, inducement, incitement or persuasion to infringe must be by a defendant to an individual infringer and must identifiably procure a particular infringement in order to make the defendant liable as a joint infringer: CBS Songs Limited v Amstrad Consumer Electronic plc, Templeman LJ.  It is one thing to facilitate an infringement which will not amount to a common design. It is quite another to procure and/or induce an infringement.

In the leading case on common designs, Unilever plc v Gillette, Mustill LJ commented that:

“… a judge directing himself correctly could reasonably come to the conclusion that - (a) there was a common design between [the joint tortfeasor as part of a common design] and [the primary infringer] to do acts which, if the patent is upheld, amounted to infringements, and (b) [the primary infringer] has acted in furtherance of that design. …

I use the words "common design" because they are readily to hand, but there are other expressions in the cases, such as "concerted action" or "agreed on common action" which will serve just as well. The words are not to be construed as if they formed part of a statute. They all convey the same idea. This idea does not, as it seems to me, call for any finding that the secondary party has explicitly mapped out a plan with the primary offender. Their tacit agreement will be sufficient. Nor, as it seems to me, is there any need for a common design to infringe. It is enough if the parties combine to secure the doing of acts which in the event prove to be infringements.”

Intellectual property rights owners have the right to choose which infringer(s) to enforce a judgment. In Molnlycke (1992): "It is long-established that a plaintiff who has been injured by a number of joint tortfeasors can choose which he will sue. He does not have to sue all of them … the defendants have no right whatsoever to dictate which the plaintiff shall sue or to make the choice for him….”.

Participation in common designs is an open textured, broad based ground for liability in the infringement of intellectual property rights. Individuals frequently come together to bring about a particular result; where the contributions of several people to the deliverable cannot be distinguished and played a part in the infringing acts, is it more likely that liability may be established. Equally, where the contribution is distinct, severable or removed from the ultimate result, there may be grounds to avoid liability.

Usage: The software developer was held liable for copyright infringement as part of a common design notwithstanding that he was not aware that he was infringing the copyright.

Related Words: copyright infringement; law of torts; joint and several liability; vicarious liability; intellectual property rights; patent infringement; law of torts.