(i) Breach of Copyright
Where the defendant has profited from the breach of copyright he or she will be liable to account to the claimant for the profits obtained, regardless of the fault of the defendant in breaching the copyright,[1] but the profits will not be held on constructive trust for the copyright holder.102 Damages are also available as a remedy for breach of copyright, but not if the defendant’s infringement of the copyright was innocent, in the sense that the defendant did not know and had no reason to know of the existence of the copyright.103 It is unclear whether this means that restitutionary damages are unavailable for such innocent breaches of copyright. In addition, where the infringement is innocent but the defendant profited from it then, although the defendant is liable to account, the court may make an allowance for the defendant’s skill and effort in making the profit.104
(ii) Infringement of Patents
Where the defendant has knowingly or negligently infringed a patent an account of profits or an award of damages is available.105 But where the patent was innocently infringed the claimant is unable to obtain either remedy.106
(iii) Passing Off
An account of profits will only be awarded if the defendant deliberately passed off the claimant’s goods.107
(iv) Infringement of Trademarks
An account of profits will only be awarded if the defendant deliberately interfered with the claimant’s trademark.108 Where the defendant innocently infringed the claimant’s trademark the claimant will still be able to obtain a compensatory remedy.109
Whilst there is an unacceptable inconsistency in the award of gain-based relief for those torts which are concerned with interference with intellectual property rights, it is clear that the culpability of the defendant is generally a relevant consideration when determining the type of remedy which should be awarded.
- [1] design right: ibid, s 229(2).
