Intellectual Property Infringement and extracontractual liability: A Global Perspective

Written by: Hana Bishara

Intellectual Property Infringement and extracontractual liability: A Global Perspective

Secondary liability for intellectual property (“IP”) infringement has become a cornerstone of contemporary legal discourse, particularly as digital platforms and the internet transform the way content is shared, consumed, and infringed upon. The rapid evolution of online intermediaries, such as social media platforms and service providers, has significantly impacted IP enforcement, given these entities' unprecedented ability to influence user behaviour and regulate the dissemination of information. As creative expression increasingly shifts to private communication networks, the question of who is responsible for enabling IP infringement has become central to IP law.

This article provides an overview of the legal frameworks governing secondary liability for IP infringement in various key jurisdictions, including the United States, the United Kingdom, France, Germany, and Australia, with an emphasis on how tort law and extra-contractual liability doctrines interact with IP enforcement mechanisms.

First of all, in the U.S., secondary liability for IP infringement has evolved primarily through judge-made doctrines. These doctrines stem from broader tort law principles, with contributory infringement arising from the notion that those who directly contribute to a tortious act should be held accountable, alongside the primary infringer.

Vicarious liability, on the other hand, is a branch of the agency law doctrine, holding employers responsible for their employees' unlawful actions if they benefit from those actions. U.S. courts have also utilized the doctrine of inducement, where a party that actively encourages or facilitates infringing behaviour is held liable.

In addition to this, in the UK, secondary liability for IP infringement is governed by both statutory IP provisions and tort-based doctrines. Under UK copyright law, third parties can be held liable for infringement if they have authorized or procured the act. Section 16 of the Copyright, Designs, and Patents Act 1988 (CDPA) outlines that infringement occurs when someone, without authorization, performs any restricted acts concerning the copyright work. However, the UK courts have established a clear distinction between "authorization" and "mere facilitation," the latter not triggering secondary liability.

In addition to statutory IP law, common law doctrines such as joint tort feasance and inducement also play a significant role. Joint tort feasance requires identifiable procurement or participation in an infringing act. A notable principle in UK law is derived from the Norwich Pharmacal case, which established that if a third party becomes inadvertently involved in a tortious act, they must assist the wronged party in rectifying the situation.

Moreover, in France, secondary liability for IP infringement primarily draws from general tort law principles, specifically “responsabilité délictuelle”. These doctrines oblige third parties to compensate for damages caused by fault or negligence. French courts have traditionally imposed a duty of care on intermediaries, requiring them to prevent or mitigate IP infringements. The principle of appropriate diligence created obligations such as informing users about IP rights, remaining vigilant against potential infringement, and acting swiftly to remove unlawful content.

However, this framework has faced challenges, particularly in light of European Union law, which prohibits general monitoring obligations for intermediaries. As a result, French courts have had to adjust their approach, now requiring copyright holders to notify intermediaries of specific infringements for action to be taken.

Furthermore, Germany’s approach to secondary liability for IP infringement is heavily influenced by the doctrine of “Störerhaftung”, which is an alternative to joint tort feasance. Under this doctrine, a party that interferes with another’s property, even indirectly, can be held liable if their actions contribute to the infringement. This principle is rooted in the German Civil Code (BGB) and applies broadly to property rights, including intellectual property.

In IP cases, courts apply Störerhaftung to hold online intermediaries liable if they fail to prevent infringing activity, provided it is reasonable for them to do so. This doctrine has become a crucial tool for addressing IP infringement in the digital realm, especially in cases where traditional tort liability might be too rigid or difficult to establish.

Last but not least, Australian courts have developed a distinct approach to secondary liability through a separate common law tort of "authorization." In this context, authorization refers to enabling or permitting an infringing act to occur. Australian case law has closely followed UK principles, especially concerning the distinction between mere facilitation and active involvement in infringement. The courts require evidence of a common design or inducement to impose liability on intermediaries.

To conclude this study, secondary liability for IP infringement presents a complex, unharmonized legal landscape across jurisdictions. The interaction between IP law and general tort or extra-contractual liability doctrines has created varying standards of accountability for intermediaries that facilitate or enable infringement. In common law jurisdictions like the U.S. and UK, doctrines such as contributory infringement, inducement, and joint tort feasance dominate, while civil law countries like France and Germany rely on broader tort principles to impose liability.

The challenge remains in coordinating these diverse approaches, particularly as global digital platforms continue to reshape the IP enforcement landscape. The lack of harmonization creates legal uncertainty for intermediaries and rightsholders alike, underscoring the need for clearer, more consistent international standards for secondary liability in IP law.