anton piller orders

24 Pages·2013·0.53 MB·English

' .. I
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CONTINUING LEGAL EDUCATION
Advanced Civil Litigation
Update on Mareva Injunctions & Anton
Piller Orders
Monday 17 2002
June,
Presenters:
Kate McMillan, SC
David Forbes
Barrister at Law
Chair:
Ian Lulham
Tolhurst Druce & Emmerson
'
ANTON PILLER ORDERS
By Kate McMillan, SC
THE ORIGINS OF THE ANTON PILLER ORDER
The term "Anton Piller order" is taken from the English Court of Appeal decision
Anton Piller KG v Manufacturing Processes Ltd. 1 In that case, counsel for the
plaintiff outlined the history of "permit" orders for inspection in the United Kingdom
for the previous 18 months. Judges of the Chancery Division had been making
orders that authorised the plaintiff and the plaintiff's solicitors to enter the
defendant's premises to inspect papers provided the defendant gave permission
but with the court ordering the defendant to give that permission. Counsel for the
plaintiff said that so far as it was known there had been seven ex parte applications
to the courts for such "permit" orders for inspection, five of which had been granted
and only one of which had been reported: E.M.I. Ltd v Pandif. Counsel who
appeared for the appellant in Anton Piller also appeared for the plaintiff in E.M.I. Ltd
vPandit.
In E.M.I. v Pandit Templeman J stated: "The order sought by the plaintiffs appears,
to misuse a current popular phrase, to be Draconian ... I am prepared ... subject to
suitable safeguards, to make an order on the defendant to allow the plaintiffs to
enter on premises in which he is in occupation for the purposes specified by the
plaintiffs. This order will not involve forcible entry but would make the defendant
liable for contempt proceedings if he disobeyed the order ... In the normal course of
events, a defendant will have notice of the relief which is sought against him in the
exercise of the powers given by this rule and will be able to come along to the court
and to give reasons why the order should not be made or why, if it is made,
particular safeguards should be included. Nevertheless, in my judgment, if it
appears that the object of the plaintiff's litigation will be unfairly and improperly
1 [1976] 1 Ch 55
2 [1975] 1 WLR 302
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ensuring that justice can be done to the applicant. In Anton Piller, Lord Denning
said: "It seems to me that such an order can be made by a judge ex parte but it
should only be made where it is essential that the plaintiff should have inspection
so that justice can be done between the parties: and when, if the defendant were
forewarned, there is a grave danger that vital evidence will be destroyed ... and so
the ends of justice be defeated: and when the inspection would do no real harm to
the defendant or his case."5
In Bhimji v Chatwanl it was said that Anton Piller orders "stand ... at the extremity
of the court's jurisdiction. Some may think that they go beyond it. They involve the
court in the hypocrisy of pretending that the entry and search are carried on
because the owners of the premises have consented to it. They impose on
plaintiffs solicitors the almost impossible task of describing fairly to non-lawyers the
true effect and nature of the orders. They present respondents with orders of great
complexity and jurisprudential sophistication and give little time for decisions to be
taken as to the response to be made to them. They vest the plaintiffs, one side in
what is usually highly contentious litigation, with the trappings of apparent
administrative authority to carry out the search. The usual presence of a policeman
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adds to this illusion."
THE PLAINTIFF'S CASE
The essential elements which must be satisfied before an Anton Piller order would
be made are set out in the judgment of Ormrod LJ in Anton Piller: "There are three
essential pre-conditions for the making of such an order ... First, there must be a
strong prima facie case. Secondly, the damage, potential or actual, must be very
serious for the applicant. Thirdly, there must be clear evidence that the defendants
may have in their possession incriminating documents or things, and that there is a
5
Anton Piller supra at p61
6 [1991]1 AllER 705
7 Ibid at 712
5
The Contents of the Affidavit in Support
As a starting point, the contents of the affidavit in support of the application should
satisfy the three essential pre-conditions outlined by Ormrod LJ ie. the material
should set out the facts to support a strong prima facie case, set out the damage to
the applicant and set out the clear evidence that the defendants have the
incriminating documents or things in their possession and the grounds to establish
that there is a real possibility that such material may be destroyed by the
defendants if notice of the orders were given to the defendants. The affidavit of the
applicant should include material facts to satisfy all of the items outlined in the
Practice Notes and a full proposal by the applicant for the execution of the order.
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In Brink's-Mat Ltd v Elcombe Ralph Gibson LJ dealt with the principles which
determine whether there has been material non-disclosure in the context of a
Mareva order and the consequences the court would attach to any failure to comply
with the duty to make full and frank disclosure. It is the duty of the applicant to
make disclosure of all material facts being those facts which were material for the
judge to know in dealing with the application. The applicant must make proper
inquiries before making the application and the duty of disclosure applied to
material facts known to the applicant and to any additional facts which could have
been ascertained if reasonable inquiries had been made. The materiality of a fact
was to be decided by the court and not by the applicant or the applicant's legal
advisers.
In Milcap v Coranto13 Davies J dealt with an application to set aside an Anton Piller
order on the ground of non-disclosure. He said: "When an ex parte order is sought,
the person seeking the order must be frank and disclose to the court all the matters
which, if put before the court, might have an effect upon the court's decision. The
facts that should be disclosed go both to matters of liability and matters of
discretion. If a fact is material in that it would be a matter to be taken into account
12 [1988] 3 AllER 188
13 (1995) 32 IPR 34
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(b) The articles or documents obtained as a result of the order be retained by
the applicant's solicitors in safe custody.
(c) Not to use any documents or information obtained as a result of the
execution of the order except for the purpose of civil proceedings in
connection with the subject matter of the dispute without leave.
(d) That the order will be served by a solicitor who is independent of the
applicant and who will offer to the person served an explanation of the order
in plain language.
(e) That the person served will be given the opportunity to take his or her own
legal advice.
The order usually requires the defendant to permit a stated number of persons to
enter specified premises in normal business hours to inspect relevant documents
and things and remove them to the safe custody of the plaintiffs solicitor. An
independent solicitor must also be present when the order is being executed.
In Liberty Financial Pty Ltd v Scott 21Weinberg J made an Anton Piller order against
the defendant and in addition to the normal safeguards contained in Anton Piller
orders it provided for the attendance of two named independent solicitors at the
time the order was executed. The role of the solicitors was to supervise the
execution of the order and to prepare a written report to be filed with the court. The
order also provided for the preparation by the applicant's solicitors of an inventory
specifying and describing each item to be removed from the premises and it
provided that any documents so removed be delivered into the custody of the
supervising solicitors pending the further hearing of the application for interlocutory
relief.
The requirement that the defendant forthwith admit the plaintiffs solicitor to the
defendant's premises does not if the defendant desires to obtain legal advice mean
21 [2002] FCA 345
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APPLICATIONS TO SET ASIDE OR DISCHARGE ANTON PILLER ORDERS
Defendants who have been served with an Anton Piller order may seek orders that
the Anton Piller order be set aside and/or discharged and that all documents seized
pursuant to the order be returned to the custody of the defendant or its solicitors.
The basis of such an application is usually on the grounds of material non
disclosure by the applicant when making the ex parte order. Material non
disclosure is a matter of fact and depends on the circumstances of each case.
5
In Thennax Limited v Schott Industrial Glass Limitecf an application was made to
set aside an Anton Piller order in circumstances where material facts known to the
plaintiff had not been made known to the judge who granted the order. His
Lordship Browne-Wilkinson J said: " ... As time goes on and the granting of Anton
Piller orders becomes more and more frequent, there is a tendency to forget how
serious an intervention they are in the privacy and rights of defendants ... In my
judgment the rule of full disclosure to the court is almost more important in Anton
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Piller cases than in other ex parte applications."
In Dart Industries Inc v David Bryar 27 Goldberg J dealt with an application to
discharge an Anton Piller order based upon alleged non-disclosure. His Honour
agreed with the views of Ralph Gibson LJ in Brinks and also to the tentative view
expressed by Browne-Wilkinson VC in Tate Access Floors Inc v Boswell 28 that
investigations of the circumstances in which an ex parte Anton Piller order was
granted should be restricted to the cases where there had been a serious failure to
make a material disclosure.
25 [1981] FSR 289.
26 Ibid at p298
27 (1997) FCA 481 (10 April1997)
28 (1999] Ch 512 at 534
II
Anton Piller order"32 but this appears to be restricted, save for one or two forms of
rolling orders, to Canada.
33
In Fila Canada Inc v Doe Reed J described the order as follows:
"The order, which is sought, is what is known as a "rolling" Anton Piller order. As is
obvious from the style of cause, when these orders are obtained from the Court
neither the identity or address of the persons against whom they will be executed
are known. On some occasions one or two persons may be identified as named
defendants but they will have no necessary connection to the Jane and John Does
against whom the order will be executed. The known defendants are allegedly
infringing intellectual property rights belonging to the plaintiff but in different places,
at different times and in different circumstances. The "rolling" orders can be
distinguished from defendant-specific Anton Piller orders. While defendant-specific
Anton Piller orders may also include Jane and John Doe defendants, in general, the
latter will be connected to named defendants, for example, by being an employee
of the defendant or supplier of the alleged counterfeit goods of the defendant. The
"rolling" orders are executed against street vendors and transient flea markets
although they are framed in broad enough terms to encompass the search of retail
premises, office premises, vehicles, warehouses, as well as residences. They are
usually expressed to last a year subject to being renewed."
The rolling Anton Piller order does not sit easily with the classic Ormrod LJ criteria
for granting the order. The first pre-condition of demonstrating a strong prima facie
case can be met by pointing to the existence of the applicant's registered copyright,
trademark or patent and by setting out specific examples of infringement. The fact
that specific examples do not specify a particular defendant has not been
commented upon. The second pre-condition of proof of potential or actual damage
being very serious for the applicant can be met by the fact that the continued
presence of the infringing material in the market place will threaten the trade
32 For information regarding rolling Anton Piller orders I am indebted to J Berryman for his article
"Recent Developments in Anton Piller Orders" supra
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venues." The terms of the statement of claim do not appear. An injunction was
granted restraining pending the determination of the action or further order "the
second defendants" and "the third defendants" (in the plural) respectively from
selling merchandise without the licence of Metallica or McCartney. Upon service on
them of a copy of the order by the plaintiffs solicitor, those defendants were
required to state their name and place of abode and deliver up the offending
merchandise. The injunction identified those to whom it was directed by reference
to their acts which infringed the plaintiffs rights, and it prohibited the performance of
those acts. The Metallica order (as the judge making it thought it might come to be
known) thus had the novel feature- which would have appealed to Lewis Carroll
that it became binding upon a person only because that person was already in
breach of it. The order of Anderson J. was, as we have said, directed to the world
at large. The existing Jaw and procedure may be inadequate to deal with the
reprehensible activities of these intellectual bootleggers, but, with respect, we
cannot accept that an injunction can be granted against all the world ... At p188 of
the judgment it is said that on 16 March 1993 the plaintiff had obtained an
essentially similar order from the Federal Court of Australia. The unreported
decision of the Federal Court mentioned by Anderson J is evidently that of Burchett
J., given in fact on 26 March 1993 in Tony Blain Pty Ltd v Jamison ... The order
there made was, first, a representative order that the defendant, one Jamison,
represent a group of persons (how the group was defined by the order does not
appear) and, secondly, an order for the delivery up of the infringing merchandise.
There seem to have been defendants other than Jamison; their identity or
description does not appear. It seems that no prohibitory injunction was granted."36
The reference by the Court of Appeal to Tony Blain Pty Ltd v Jamison 37 is a
reference to a type of rolling order. The Federal Court case appears to have
decided that the named defendants were representatives of the wider class.
However, the plaintiff was allowed to seize the infringing merchandise and was
35 [1998) 4 VR 143
36 1bid at pp.160-1
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CONCLUSION
Bearing in mind the strong criticism by the Court of Appeal in Victoria in the
Maritime Union case it seems reasonably safe to predict that the rolling Anton Piller
orders that are a feature in Canada will not become a feature in Victoria.
1'1-JU~I-2002 11:57 FROI1 C 11CMILLAII TO 096079451
V 1 c_ iOQtA
PRACllCE NOlES [12,680!
If only one Master is available, that Master will also bear in Cou o 1 (subject
to other business pending) applications of the type ideoti1ied the foUowing
paragraphs of Part B of the principal Practice Note: (b) (if the neys held by the
Senior Master are held under the Trustee Act· 1958 other th for a person under
disability); (f) (as if "order" were substituted for "certificate ; (g); (h); (i); (j); (k);
(m); and (o).
If another Master is available, that Master will hear s applications in Court 7,
Court 7A, or Court No 2, first floor, 471 Little Bourke eet, Melbourne. The place
of hearing will be specified in the summons (if. an but, to allow for subsequent
wt
alterjltion due to inteJVeoiog circumstances, the w of the day fixed for the
bearing should always be consulted.
Henceforth, summonses with respect t applications referred to in the
penultimate paragraph are to be filed with, 1f there is oo summons, a date for the
hearing of such au application is to be ob 'ned from, tho second secretary to the
Senior Master.
Applications for approval of a comP, mise in relation to a claim by or on behalf
of or against a person under disab' · will cooti!lue to be beard by a Master aod
arrangements for the bearing of ch an application may be made through the
se<:ood secretary to the Senior ter>
Applications for the ap otmcot of a. provisional liquidator and other
a
applications to Master und the Corporations La\V (other than those referred to
in paragraph (f) and (g) of B of the principal Practice Note) are to be made in
the 7th Court on a edn""day, Thursday .. or . Friday. Unless extraordinary
circumstances obtain, e summons with respect to any sucb application is to be
referred in the first · stance to the. principal secretary to the Senior Master.
Masters assisting e. aTIIJ/hLr
Wbere with espect to an application under tbis Practice Note to be heard by
Masters B , Gaffney and Kings,. either Master Evans or Master Wheeler is
will accept a reference Crom any of the former witb·respect to such an
applicat' which the latter cannot hear as conveniently. Similarly, when any of tbe
former s available, he or she will accept references of applications from the Master
sitti in the Masters' Practice Court.
25' August 1993 KJ Mahony
.
/ Senior Master
.----··
[12,680) Urgent ex parte applications
Practice Note '[1994] 1 VR 86
The Chief Justice has approved the issue of the foUowing Practice Note:
No 4 or 1993
"f-
Urgent ex pane applications
It is thought that it may be useful to publish for the information of the profession
a Practice Note setting out some of tbe matters that may fail to be considered when
an application is made ex parte Cor urgent interim relief. ·
0 Butkrworths 25,155