Anton Piller order

In English and English-derived legal systems, an Anton Piller order (frequently misspelled Anton Pillar order) is a court order that provides the right to search premises and seize evidence without prior warning. This is intended to prevent the destruction of relevant evidence, particularly in cases of alleged trademark, copyright or patent infringements.

Overview

The order is named after the 1975 English case of Anton Piller KG v Manufacturing Processes Limited, dealing with the theft of trade secrets,[1] although the first reported such order was granted by Templeman J earlier that year.[2] They are now formally known as search orders in England and Wales,[3] New Zealand,[4] Australia,[5] and India.[6]

In Anton Piller, Lord Denning described the nature of the relief:

Let me say at once that no court in this land has any power to issue a search warrant to enter a man's house so as to see if there are papers or documents there which are of an incriminating nature, whether libels or infringements of copyright or anything else of the kind. No constable or bailiff can knock at the door and demand entry so as to inspect papers or documents. The householder can shut the door in his face and say, 'Get out.' That was established in the leading case of Entick v. Carrington.[7] None of us would wish to whittle down that principle in the slightest. But the Order sought in this case is not a search warrant. It does not authorise the Plaintiffs' Solicitors or anyone else to enter the Defendant's premises against his will. It does not authorise the breaking down of any doors, nor the slipping in by a back door, nor getting in by an open door or window. It only authorises entry and inspection by the permission of the Defendants. The Plaintiff must get the Defendant's permission. But it does do this: It brings pressure on the Defendants to give permission. It does more. It actually orders him to give permission—with, I suppose, the result that if he does not give permission, he is guilty of contempt of Court.

Because such an order does not give the accused party the ability to defend themselves, Anton Piller orders are only issued exceptionally and according to the three-step test set out by Ormrod LJ in Anton Piller:

1. There is an extremely strong prima facie case against the respondent,
2. The damage, potential or actual, must be very serious for the applicant, and
3. There must be clear evidence that the respondents have in their possession relevant documents or things and that there is a real possibility that they may destroy such material before an inter partes application can be made.[8]

In England, it has been reported that approximately 500 Anton Piller orders were granted per year between 1975 and 1980. During the 1990s, this rate had dropped tenfold. Although the name persists in normal usage, the common law application of this order has been largely superseded by a statutory search order under the Civil Procedure Act 1997. A search order under this act "does not affect any right of a person to refuse to do anything on the ground that to do so might tend to expose him or his spouse to proceedings for an offence or for the recovery of a penalty".[9]

Hugh Laddie is generally credited with the "invention" of the Anton Piller order.[10] An obituary in The Daily Telegraph stated that he later described the Anton Piller order "as a Frankenstein's monster that went far beyond his original design brief."[11]

In some jurisdictions (for example, Hong Kong and South Africa) where there is no statutory search order, the Anton Piller order is still often used. In South Africa, for example, in Mathias International Ltd v Baillache,[12] the applicants instituted motion proceedings in which they claimed (i) an Anton Piller order and (ii) interdictory relief directed at prohibiting unlawful competition by the first and second respondents using the applicants' 'confidential information.'

In Lock International plc v Beswick,[13] Anton Piller orders were mentioned as "inherently oppressive."

Outside England

Anton Piller orders also constitute a common ex parte procedure in intellectual property related cases in some other countries, such as Canada, France, and Italy.

France and Belgium

Anton Piller orders are known in France and Belgium as "saisie-contrefaçon" orders, translated literally "infringement seizure" orders, (or in Belgium also as "saisie-description" orders, translated literally descriptive seizure orders). The court order may only allow the description of the alleged counterfeited goods and processes, with the aim of obtaining evidence of infringement, or may additionally allow real seizure to take place in addition to the description measures.[14] Such a seizure is enforced by a bailiff, usually accompanied by at least one expert. It can take place on the premises of the alleged infringer, but also at a trade fair for instance. Art. L. 615-5. of the French IP code reads as follows (excerpt only):

The owner of a patent application or the owner of a utility certificate application or the owner of a patent or of a utility certificate shall have the possibility of furnishing proof by any means whatsoever of the infringement of which he claims to be a victim.

He shall further be entitled, on an order given by the President of the First Instance Court of the place of the presumed infringement, to direct any bailiffs, accompanied by experts of his own choice, to proceed with a detailed description, with or without effective seizure, of the allegedly infringing articles or processes. Such order shall be provisionally enforced. It may be subjected to a security on the part of the plaintiff. In that same order, the President of the Court may authorise the bailiff to carry out any enquiry required to ascertain the origin, nature and scope of the infringement. ... " (emphasis added)[15]

European Union

Similar provisions are now required in the rest of Europe, under Article 7 of the European Union Directive on the enforcement of intellectual property rights, approved in April 2004.

Australia

Anton Piller orders are also used in Australia and are available on grounds similar to that of England. Each superior court jurisdiction provides rules and forms for the manner in which Anton Piller orders are available.

In technical modern terminology, Anton Piller orders are referred to as "search orders", but "Anton Piller order" remains dominant in everyday use, including in universities.

Of greatest importance is the onus upon an applicant to establish proper grounds for obtaining such an order. This is due to the largely ex parte nature of the application. As such, an applicant must demonstrate not only that it has reasonable grounds for success in its case but must put the likely counter arguments of a respondent if that respondent were present to oppose the order being granted. This is a heavy burden faced by an applicant: its avoidance is not taken lightly by the courts and can result in penalties for its breach (see Columbia Picture Industries v Robinson [1987] Ch 38).

Canada

Common-law jurisdictions

The Supreme Court of Canada, in Celanese Canada Inc. v. Murray Demolition Corp.[16] established guidelines for Anton Piller Orders. The orders are meant to protect evidence from being destroyed, not to gain litigious advantage, and should only be issued if:

• The plaintiff has demonstrated a strong prima facie case
• The damage to the plaintiff of the respondent's alleged misconduct, potential or actual, must be very serious.
• There must be convincing evidence that the defendant has in its possession incriminating documents or things
• It must be shown that there is a real possibility that the defendant may destroy such material before the discovery process can do its work.[17]

The Court laid out basic protection for the rights of parties involved.[18] The protections in place are meant to protect solicitor-client privilege by preventing privileged documents from being disclosed.[19] The search must be conducted according to the following guidelines:

• During normal business hours
• Defendant or responsible employee of the defendant should be present
• The persons who may conduct the search should be specified and limited in number
• A copy of the claim should be served on the defendant
• The defendants have a right to contact their lawyer within a reasonable amount of time
• A detailed list of evidence should be made
• Where possible, documents seized should be placed in custody of the supervising lawyer and defence should have the opportunity to review them.
• Contested evidence should be kept in the supervising lawyer's custody

The supervising lawyer, referred to as an Independent Supervising Solicitor (ISS), should:

1. act as a neutral officer of the court
2. explain the court’s order to the defendant
3. supervise the search for and seizure of evidence from the defendant
4. objectively report to the Court
5. aid the Court and counsel for all parties in technical matters.

In addition, following the search:

• The Order should make clear the responsibilities of the supervising solicitor continue beyond the search itself.
• Supervising lawyer should file a report of the search within a time limit describing the execution including who was present and what was seized.
• The plaintiff may be required to file and serve a motion for review within a set time in case the defendant does not request such a review.

If counsel gains access to privileged documents as a result of an Anton Piller Order, the court must ensure precautionary steps are taken to prevent any potential prejudice – including removal of counsel if no alternative is available.[20]

Quebec (civil law jurisdiction)

The Quebec Court of Appeal has recognized Anton Piller orders as being valid in that province under its civil law.[21]

Ireland

Anton Piller orders have been granted by the High Court in William A. Grogan (copyright owner of RAMDIS) v. Monaghan Electrical Ltd & Michael Traynor (1998) related to an unlicensed copy of the RAMDIS software system, Joblin-Purser v. Jackman[22] and Microsoft v. Brightpoint,[23] but the issue has not come before the Supreme Court and, owing to the civil nature of the order and the strong protection given to the family home in the constitution, it currently exists in something of a grey area.

New Zealand

The Anton Piller case is the basis for rule 33.3 of the High Court rules.

This rule states that:

(a) an applicant seeking the order has a strong prima facie case on an accrued case of action.

(b) the potential or actual loss or damage to the applicant will be serious if the search order is not made

(c) there is sufficient evidence in relation to a respondent that –

1. the respondent possesses relevant evidentiary material; and
2. there is a real possibility that the respondent might destroy such material or cause it to be unavailable for use in evidence in a proceeding or anticipated proceeding before the court.[24]

Impoundment orders in the United States

Orders comparable to Anton Piller orders have long been available in the United States under section 503(a) of the Copyright Act (17 USC, § 503(a)), which provides for the impounding of allegedly infringing copies of works and equipment for making them.[25]

In recent years, questions have been raised about the abusive use of these orders,[26] and the doubtful constitutionality of the procedures used.[27] More recent decisions in the field have tended to require that that impoundment must be necessary, reasonable, and comport with the requirements of due process.[28]

Combination with Mareva injunction

An Anton Piller order is often combined with a Mareva injunction, enabling an applicant to have the respondent's assets frozen so they cannot be dissipated to frustrate the judgment. This can, however, be disastrous for a defendant as the cumulative effect of these orders can be to destroy the whole of a business' custom, by freezing most of its assets and revealing important information to its competitors.

See also

• Injunction
• Norwich Pharmacal order

References

1. Anton Piller KG v Manufacturing Processes Ltd & Ors [1975] EWCA Civ 12, [1976] 1 All ER 779 (8 December 1975)
2. EMI Limited v Pandit [1975] 1 All ER 418
3. "Noticeboard". International Journal of Evidence & Proof. 11 (1): 57–68. 2007. doi:10.1350/ijep.2006.11.1.57.
4. Samson, Alan (15 March 1999). "Outdated legal jargon gets the sweep in Britain". The Dominion Post. p. 12.
5. Shepherdson, Verity. "Who's knocking on my door? How to handle an Anton Piller order". Retrieved 23 April 2013.
6. Bucyrus Europe Limited And Anr. v. Vulcan Industries Engineering, 2005 (1) CHN 106 (Calcutta High Court 14 October 2004).
7. Entick v Carrington & Ors [1765] EWHC J98 (KB), (1765) 2 Wilson (2 November 1765)
8. Anton Piller KG v Manufacturing Processes Limited [1976] Ch 55: "There are three essential pre-conditions for the making of such an Order, in my judgment. First, there must be an extremely 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 have in their possession incriminating documents or things, and that there is a real possibility that they may destroy such material before any application inter partes can be made."
9. s. 7(7), "Civil Procedure Act 1997", legislation.gov.uk, The National Archives, 1997 c. 12
10. See Guardian; Telegraph; UCL News ("he is credited with having invented the 'Anton Piller' (search and seizure) order and was described by Lord Denning as the 'enterprising' Mr Laddie."); Rouse Archived 1 March 2009 at the Wayback Machine ("He is widely credited as being the founding father of the Anton Piller Order."); Howard Knopf ("It was he as a young barrister at the age of 29 who developed the remedy known as the 'Anton Piller order' and won the landmark appellate ruling in a judgment written by Lord Denning confirming its historic place in legal history.").
11. "Professor Sir Hugh Laddie". The Daily Telegraph. London. 3 December 2008. Retrieved 25 April 2010.
12. Mathias International Ltd and Another v Baillache and Others [2010] ZAWCHC 68, (23347/09) (8 March 2010)
13. Lock International plc v Beswick, (1989) 1 WLR 1268
14. Pierre Véron, Benefiting from National Procedures Archived 12 November 2008 at the Wayback Machine, IBC Conference 15 & 16 May 2000, International Patent Disputes, Paris, Multinational Actions and Tactics.
15. France: Industrial Property (Part II), Code (Consolidation), 01/07/1992 (18/12/1996), No. 92-597 (No. 96-1106) Archived 15 February 2009 at the Wayback Machine Art. L. 615-5.
16. Celanese Canada Inc. v. Murray Demolition Corp. 2006 SCC 36, [2006] 2 SCR 189 (27 July 2006)
17. Celanese Canada, par. 35
18. Celanese Canada, par. 40
19. Celanese Canada, par. 1
20. Celanese Canada, par. 58–68
21. Raymond Chabot SST Inc. c. Groupe AST (1993) Inc. 2002 CanLII 41255, [2002] RJQ 2715 (25 October 2002), Court of Appeal (Quebec, Canada)(in French), citing Art. 2858 CCQ and s. 9.1 of the Charter of Human Rights and Freedoms
22. Jobling-Purser v. Jackman [1999] IEHC 243 (27 July 1999)
23. Microsoft v. Brightpoint [2000] IEHC 194 (12 July 2000)
24. Judicature Act 1908 No 89 (as at 1 February 2009), Public Act, Act by section, Schedule 2 High Court Rules, Part 33 Search orders Archived 23 February 2012 at the Wayback Machine, New Zealand Legislation: Acts, Consulted on 7 May 2009.
25. Section 503(a) provides: "At any time while an action under this title is pending, the court may order the impounding, on such terms as it may deem reasonable, of all copies or phonorecords claimed to have been made or used in violation of the copyright owner's exclusive rights, and of all plates, molds, matrices, masters, tapes, film negatives, or other articles by means of which such copies or phonorecords may be reproduced." The corresponding provision of the 1909 Copyright Act (§ 25) provided for issuance of orders to "deliver up on oath for destruction all the infringing copies or devices, as well as all plates, molds, matrices, or other means for making such infringing copies as the court may order.
26. In Warner Bros. Inc. v. Dae Rim Trading, Inc., 877 F.2d 1120 (2d Cir. 1989). , the court found that the copyright owner used "high-handed methods" and that the impoundment "action was conducted in a ‘vexatious,’ ‘oppressive,’ and ‘unreasonable’ manner."
27. In the Dae Rim case, the district court found that the procedures used violated the U.S. Constitution, but the court of appeals found it unnecessary to reach the constitutional issue because of other defects in the impoundment, stating: "Because we agree that Warner's attorney ran roughshod over the applicable statutes and rules, we follow standard practice in not reaching the issue of constitutionality." See also Paul S. Owens. "Impoundment Procedures Under the Copyright Act: The Constitutional Infirmities" (PDF). Hofstra Law Review. 14 (1): 211–260..
28. See Paramount Pictures Corp. v. Doe, 821 F.Supp. 82 (E.D.N.Y. 1993).

Further reading

• "Anton Piller Orders and the Federal Court of Canada: Everything the Practitioner Would Want to Know in 2005" Daniel S. Drapeau and Jonathan J. Cullen, Ogilvy Renault LLP.
• "Recent Developments in Anton Piller Orders: John and Jane Doe, rolling along in Canada" Professor Jeff Berryman, University of Windsor, 2001.
• "A Tale of Two Remedies: Rationalizing the Anton Piller Order in Canada" 19 Intellectual Property Journal 459–520, Nathaniel Lipkus, Gilbert's LLP, 2006.
• "ISP raided over file swapping", Sydney Morning Herald, March 11, 2005
• "Anton Piller Orders & Mareva Injunctions" Richard N. Billington Q.C., BillingtonBarristers.com