Arnold J considered what kinds of unlawfulness would engage the ex turpi causa principle.
Held: a relevant illegality was one which was sufficiently serious in all the circumstances of the case, including in particular whether the illegal act was done with knowledge or deliberately.
After reviewing the authorities, he said: ‘The main conclusion which I draw from this survey of the cases cited to me is that they confirm that the application of the ex turpi causa rule depends on the circumstances of the case. Significant factors include the knowledge of the claimant at the relevant time, whether the illegality involved intentional or negligent conduct on the part of the claimant and whether the commission of the illegal act was induced by the defendant. It appears from dicta in a number of these cases that it may not be sufficient that the act was criminal if the offence was one of strict liability and the claimant was unaware of the relevant facts. Equally, mere negligence is unlikely to be enough in the circumstances of a claim for contribution or indemnity against another tortfeasor.
In my judgment none of these authorities establishes that, in the case of acts which are tortious rather than criminal, the rule only applies if the acts involve dishonesty. Furthermore, I consider that such a limitation would not properly reflect the policy considerations which underlie the rule. I accept that there will be situations in which the tort is not sufficiently serious to engage the rule, but what degree of seriousness is sufficient will depend on the circumstances of the case. In my view the key factor in most cases is likely to be the claimant’s state of knowledge at the time of committing the act in question. If the claimant knew the material facts, and particularly if he committed the act in question intentionally, then the rule is likely to apply.’
Arnold J explained the significance of section 18 of the 1956 Act: ‘S.18 of the 1956 Act created a statutory fiction that infringing copies of copyright works were deemed to belong to the copyright owner. This gave rise to the remedy of conversion damages i.e. damages based on the whole value of the infringing article. It was a provision that often caused surprise even to lawyers and judges other than those who specialised in intellectual property law, let alone to lay people. By the time of Columbia v Robinson it had been widely criticised, and was generally recognised as being anomalous and ripe for repeal. It was duly repealed not long afterwards by the Copyright, Designs and Patents Act 1988’.
Judges:
Arnold J
Citations:
[2011] EWHC 730 (Pat)
Links:
Statutes:
Jurisdiction:
England and Wales
Cited by:
Cited – Soutzos v Asombang and Others ChD 21-Jun-2011
The claimant had obtained a freezing order against the defendants. His claim having been dismissed, the court now considered if and what damages should be paid under the cross-undertaking he had given.
Held: Setting out and applying the . .
See Also – Les Laboratoires Servier and Another v Apotex Inc. and Others PatC 11-May-2011
. .
Cited – Twentieth Century Fox Film Corp and Others v Harris and Others ChD 5-Feb-2013
The court was asked whether a copyright owner has a proprietary claim to money derived from infringement of the copyright.
Held: He did not. No such argument could be shown to have suceeded before. . .
At Patents Court – Les Laboratoires Servier and Another v Apotex Inc and Others SC 29-Oct-2014
Ex turpi causa explained
The parties had disputed the validity a patent and the production of infringing preparations. The english patent had failed and damages were to be awarded, but a Canadian patent remained the defendant now challenged the calculation of damages for . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property, Damages, Torts – Other
Updated: 04 September 2022; Ref: scu.431298
