Can Tort of Infringement Learn from Its Common Law Predecessors?

In an opinion filed Tuesday, Chief Judge Robinson addressed whether a plaintiff may maintain an action for conversion of property (here, a virus strain) that plaintiff possessed only in copy form. Answering no, the Court found that “conversion cannot lie in the absence of the physical possession of the actual good or chattel owned by the plaintiff.”

Thus, “[e]ven if the law supports the proposition that the physical possession of copies of a chattel may be a basis for conversion, the court has found no cases where the chattel sought to be returned was never in the actual possession of the alleged owner.”

Because plaintiff possessed stock of the same strain, but not the identical sample, of defendant’s strain, plaintiff did not have “physical possession” of the property, and therefore could not pursue its conversion claim.

While the Court rested its decision on grounds beyond the copying issue, its discussion of “physical” and “actual” possession in the context of copies is notable in light of the Supreme Court’s recent Microsoft Corp. v. AT&T Corp. decision, which also addressed the issue of liability in tort for duplication of property. Although there are differences (most notably the echoes of international comity running throughout the Supreme Court’s opinion), the two cases raise the question of how far liability should extend to products that are easily copied and modified as a matter of course in the relevant field.

In terms of judicial development, the ancient action for conversion has a leg up on the “new” statutory tort of infringement. The Delaware Court reaffirmed the common law principle that possessing the chattel in question is a prerequisite to relief. Perhaps the Supreme Court, in wading through the contours of infringement and its applicability to copies, also gave a nod to this common law possession rule.

Bavarian Nordic A/S v. Acambis Inc., C.A. No. 05-614-SLR (May 15, 2007) (Robinson, C.J.)

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