Vertical Leisure Ltd v Poleplus Ltd & Anor

Joint tortfeasance requires more than knowingly facilitating another’s infringement. The alleged joint tortfeasor must actively co-operate in bringing about the infringing act pursuant to a common design, with the necessary intention. Procurement is generally a form of common design and ordinarily requires conduct directed towards a particular infringement. For vicarious liability, it is necessary that the employee acted within the kind of activities he was employed to perform and that he was primarily furthering the employer’s interests, rather than acting solely for himself. An employee may also be an agent. The principal is liable where the agent acted within the scope of authority to further the principal’s interests.

The claimant marketed pole accessories under the SILKii name. The second defendant, an employee and former director of the first defendant, registered 12 domain names incorporating the claimant’s marks and product names. The court had previously entered summary judgment against him for passing off. The remaining issue was whether the first defendant was also liable.

The claimant relied on common design, vicarious liability, agency and adoption of the second defendant’s acts. The trade mark infringement claim was not pursued at trial. The central questions were whether the first defendant had participated in a common design, whether the registrations were within the second defendant’s employment and interests, and whether he acted as its agent.

1. Common design and procurement. The court held that joint tortfeasance requires more than knowing or profitable facilitation. The alleged joint tortfeasor must actively and intentionally co-operate to bring about the infringing act pursuant to a common design. A tacit agreement is sufficient, but the conduct must go beyond assistance. Procurement will generally involve inducement, incitement or persuasion directed towards a particular infringement, and is ordinarily a form of common design.
2. On the facts, the first defendant was not jointly liable through common design. Its controlling director did not know of the registrations in advance and had not actively encouraged them. The later decision in Sea Shepherd UK v Fish & Fish Limited [2015] UKSC 10 did not alter that conclusion. The Supreme Court’s common ground required assistance, a common design and a tortious act, together with active co-operation, shared intention and a contribution exceeding de minimis.
3. Vicarious liability. Applying Dubai Aluminium Co Ltd v Salaam, the court held that the registrations were acts of the kind the employee was employed to perform and that his primary intention was to protect the first defendant’s business. It was unnecessary to assess benefit mechanically by outcome; the employee’s objectively assessed intention was material. The first defendant was therefore vicariously liable.
4. Agency. The employee had authority to register domain names for the company. Registration in his own name did not alter the parties’ common understanding that the domains were for the company’s benefit. He acted as the company’s agent, and the company was jointly liable on that additional ground. The adoption argument was not pursued beyond the separate rules of agency and vicarious liability.
5. The claim against the first defendant succeeded to the extent that it was jointly liable with the second defendant for passing off concerning the 12 domain names.