ANTON PILLER ORDER - EQUITY’S COMMANDO REMEDY AGAINST ILLICIT TRADERS & ORS.

by

G.F. Nelson

SUBJECT: Litigation, Civil ProcedureUnited Kingdom[1993] 3 CLJ i (July)

In the late 60’s when the writer as student used to travel by tube to Chancery Lane in London for Bar Final lectures, standing choked amid sardine-packed humanity, he would flip over the near-torn leaves of his pocket-book and remind himself of the maxim:

"Equity acts in personam: Penn v. Lord Baltimore". So long as the defendant was within the jurisdiction, equity would dispense remedy even if extra-territorially. Indeed around that time this very same maxim was applied in the case of Richard West & Partners (Inverness) Ltd. v. Dick [1969] 1 AER 943 CA (in court below @ p. 288 ibid by none other than Meggary J., whom Harman LJ on appeal @ p. 945 ibid regarded as "the learned man that he is").

Two decades later, and getting long in the tooth, when the writer reads Anton Piller he says to himself: this is but old wine in new bottle, or almost like juxtaposing Caravaggio and Dali. The theme is the same - Last Supper - but the texture and brushstrokes produced by the two masters - old and new - four centuries apart differing so totally. In Anton Piller, Lord Denning himself quoted a passage from a 150-year old case of East India Co. v. Kynaston - "it is an Order operating on the person requiring the defendants to permit inspection". The granting of Anton Piller-type orders dated from 1974. In the case of EMI v. Pandit [1975] 1 WLR 302; [1975] 1 AER 418, it was held that the Court has power to make an order ex-parte for discovery and inspection of documents in exceptional circumstances where justice required it. There is already an existing provision vide O. 29 r. 2(1) and (5) RHC for inspection. The relevant sub-rules reads thus:

    O. 29 r. 2 (1) On the application of any party to a cause or matter the Court may make an Order for the detention, custody or preservation of any property which is the subject-matter of the cause or matter, or as to which any question may arise therein, or for the inspection of any such property in the possession of party to the cause or matter.

    (5)     An Application for an order under this rule must be made by summons.

This Order has some obvious disadvantages. The application has to be inter partes which might afford an opportunity to the illicit trader to beaver away the illicit items and documents in question.

Normally Mareva Injunction and Anton Piller Orders go hand in hand and each one complements the other (CBS UK Ltd. v. Lambert [1982] 3 AER 237 CA). In fact the pair is called "Mareva on Piller". About these two Orders, Donaldson J. had this to say in Bank Mellat v. Nikpour [1985] FSR 87CA -

The rule requiring full disclosure seems to me to be one of the most fundamental importance, particularly in the context of the draconian remedy of the Mareva Injunction. It is in effect, together with the Anton Piller one of the law’s two ‘nuclear weapons’. If access to such a weapon is obtained without the fullest and frankest disclosure, I have no doubt at all that it should be revoked.

It will not be out of place to state briefly the circumstantial background as to how these two remedies developed.

In the 70’s there was a depressed state of freight market in international shipping. There were numerous failures to meet commitments by one-ship corporations and charterers incorporated outside England. Many of them however had assets in London in the form of bank account and credits with insurance brokers. In an age of computers and other electronic fund transfer devices, such assets could be transferred from one country to another by virtually the press of a button. Nipon Yusen Kaisha v. Karageorgis & Anor. [1975 1 WLR 1093; [1975] 3 AER 282 and Mareva Compania Naviera SA v. International Bulkcarriers SA, The Mareva [1980] 1 AER 213 came to the rescue by establishing that the court has jurisdiction to grant an ex parte interlocutory injunction restraining the defendant from removing his assets from the jurisdiction if there appears to be a danger that he may do so in order to preclude in advance the plaintiff from enjoying the fruits of his judgement against him. By Mareva Injunction, the Court was really recognising the age-old custom of foreign attachment which in former times existed in mercantile cities such as London, Exeter and Bristol.7

At about this time last century, if an application was made for a Mareva-type injunction, the judge’s jaw would have dropped in disbelief and consternation. In the case of Robinson v. Pickering [1880-1881] 16 Ch.D 660, James LJ in Court of Appeal said "You cannot get an injunction to restrain a man who is alleged to be a debtor from parting with his property.

The other development, leading to the introduction of Anton Piller, is that, nowadays, disputes about modern chemical patents often raise factual issues of extreme complexity that are difficult to resolve in interlocutory proceedings without the benefit of the pleading, discovery and oral evidence, properly decided in cross-examination. American Cynamid Co. v. Ethicon Ltd. [1975] 1 AER 504 was such a case. The case could not avoid criticism by Lord Denning in Fellows v. Fisher [1975] 2 AER 829. However, in Pertamina [1977] 3 AER 324, His Lordship, who earned a notoriety for frowning upon some HL decisions, rubbed his palms in glee and applied the Mareva remedy.

A usual feature of both these remedies is that invariably the application is in camera ex parte where the Counsel would be a specialist in his particular field with no adversarial argument advanced on behalf of the targeted defendant. According to Lord Denning, on p. 183 of the

Anton Piller case, the remedy is given under the inherent jurisdiction of the court, as cited with approval in the local case of Lian Keow v. Paramjothy [1982] 1 MLJ 217.

When Anton Piller came about in 1976, initially its area of application was the tertiary industries in general, and intellectual property in particular. Anton Piller Order also received oblique and indirect blessing from the House of Lords via Rank Films Distributors v. Video Information Centre (1981), [1981] 2 WLR 668; [1981] 2 AER 76 HL. Gradually, the AP Order took a kaleidoscopic variety operating in the fields of family law, contract, account, etc.

Thus in KEPA v. KEPA [1983] 4 FLR 515, the couple married in 1957 and in 1982 the wife obtained a decree nisi. Husband in his affidavit of means affirmed that he was a street trader earning £1,800 a year. He did not make a full and frank disclosure of his real financial position, e.g.. that he had substantial means and had secreted his money abroad. Solicitors for the wife photographed the husband’s thriving business in a stall in an antique market. She applied for an Anton Piller Order.

Booth J. said:

I think what I have to do is to balance the potential harm to the wife if I do not make this order enabling her solicitors accompanied by a valuer to go unannounced to the husbands premises for the purpose only of inspecting the property therein and removing only documents for the purpose of copying where such documents are relevant and within the terms of the order, as against the potential harm to the husband as a result of the infringement on his privacy in his house.

It seems to me that the potential harm to the husband in the circumstances is very minor indeed. It is, of course, a serious matter that the Court should make the order which in effect requires him to give permission to strangers to enter and inspect his home. But, as I see it, it is an emotional harm that he will suffer as opposed to the very real and long-term potential harm which the wife would suffer if I do not make the order and her fears were realised and the husband succeeded in spiriting away his assets from the Court.

I have come to the conclusion that in all the circumstances it is right in this case to make the order that has been sought. Although it is an exceptional order, I think the circumstances of this particular case warrant it, and I have decided to make it.

The other family law case where the Anton Piller Order was issued was in the case of Emanuel v. Emanuel [1982] 2 AER 342 (order for possession of documents relating to spouses financial position and sale of matrimonial property).

The first case where Anton Piller was extended beyond the field of intellectual property seems to be Yousif v. Salama [1980] 1 WLR 1540; [1980] 3 AER 405.

If the essential object of Anton Piller is the preservation of evidence, then, historically speaking, such object was known to Roman law as well, e.g.. "actio ad exhibendam".

In France, there seems to be a pre-trial procedural remedy parallel to Mareva, that is, "Saise-Conservatoire" (1A), which may be translated literally as "preservative seizure", that is, seizure of a provisional nature of the movable assets of the debtor for the purpose of preventing him from disposing of them or parting with them. As regards Anton Piller, in France there seems to be a preliminary procedure known as "Instruction Future" meaning investigation of facts and the procurement of evidence required by a prospective litigant for use in anticipated litigation described by the learned writer of the article elsewhere as undoubtedly the most revolutionary and sophisticated weapon in the hands of a French judge. This remedy was introduced in France by statute in 1973 and is now Article 145 of the New Civil Procedure Code which states that:

if there is a legitimate reason to preserve or establish, before trial, the proof of any facts upon which the resolution of the case might depend, legally admissible investigations may be ordered at the request of any interested party in summary proceedings or on an ex parte motion.

The main purpose of "instruction future" is to prevent the perishing of proofs. An applicant for an order under Article 145 must fulfil a total of three conditions.

    (1)     he must prove that he has legitimate reasons to preserve or establish the proofs of his facts in advance;

    (2)     that the resolution of an eventual suit might depend upon the said facts and

    (3)     that the investigations he is requesting the Court to order are legally admissible investigations.

If we were invited to explain the nature of Anton Piller order in just one word, that word might well be "surprise"; if in one phrase, "secrecy, stealth and surprise". Reading the 40 page post-Anton Piller case of Columbia Picture Industries v. Robinson [1987] Ch. 38; [1986] 3 WLR 542; [1986] 3 AER 338 may be as rewarding as an action-packed fiction. The scenario of this case which went to full trial smacks of the design, stamp and blueprint of a meticulous military operation - the dawn swoop, near-simultaneous raids at three different places, the number of actors at each targeted address, some stark lessons on the danger zones of Anton Piller for the hasty, fast-action, lawyers to be learnt from the unfortunate procedural slips that could happen even to a senior partner of a legal firm specialising in intellectual property law having 300 Anton Piller orders to their credit (see p. 348 ibid) are all instructive. In Dunlop Holdings v. Staravia Ltd. [1982] Comm. LR. 3, it was explained that although Anton Piller orders had started as an order obtaining only for very exceptional circumstance, they were now very commonly employed and it had become customary for the Court to infer the probability of disappearance or destruction of evidence.

Anton Piller KG v. Manufacturing Processes Ltd. & Ors. [1976] Ch. 55; [1976] 2 WLR 162; [1976] 1 AER 779 CA.

In this case, the plaintiffs, German principals, suspected that the English defendants as their agents were channelling confidential manufacturing secrets to their German competitors in Germany. In order to prevent the disposal by the defendants before discovery, in an action for

documents in their possession relating to the plaintiffs machines or designs, the plaintiffs applied ex parte for an interim injunction to restrain the defendants from infringing their copyrights and disclosing confidential information and for an order for permission to enter the defendants premises to inspect all such documents and to remove them on to the plaintiffs solicitors custody. The Court below, although granting an interim injunction, refused to order inspection or removal of documents. The plaintiffs appealed ex parte and were heard in chambers ex parte. Appeal was allowed but the judgement of the Court of Appeal was delivered in open Court at a subsequent date, a fact disclosing the implicit nature of secrecy.

Just to digress procedurewise, the plaintiffs seem to have given an undertaking to issue a writ of summons in their intended action against the defendants. Lord Denning’s judgement gives the impression that when the solicitors for the plaintiffs approached the judge in Court below, they went armed with a draft writ of summons. It is not known whether the writ had with it also a statement of claim. The facts of a subsequent case, Hytrac Conveyors v. Conveyors International [1983] 1 WLR 44; [1982] 3 AER 415 CA seems to suggest that it is better to have ready, at the time of approaching the Judge for an ex parte interim injunction, a draft writ with a statement of claim included therein. In this case it was held that since the nature of common law procedure was not inquisitorial, but accusatorial, those who made charges had to state right at the beginning what those charges were and on what facts they were based. They could not use Anton Piller orders as a means of finding out what sort of charges could be made, but had to deliver their statement of claim within the time specified in the rules unless the Court ordered otherwise. It was further held that, on a motion for an interlocutory injunction, it was essential for the Court to know the nature of the allegations which the plaintiff was making and this could not be done until a statement of claim has been delivered. Accordingly, it was not right for the plaintiff to commence his action without knowing what form his statement of claim would take until after the interlocutory proceedings were completed.

As an indirect authority for the need of readiness with a statement of claim, the case of Bayer AG v. Winter (No. 2) [1985] 83 LSG 1804 may be cited. In this case there was an ex parte in camera Anton Piller order against the defendant restraining the sale of a counterfeit insecticide similar to the plaintiffs’ product, and requiring disclosure of relevant correspondence and documents. The order was carried out with a search of the defendant’s premises. Being dissatisfied with the disclosure obtained, the plaintiffs sought an order for cross-examination of the 1st defendant. No statement of claim was served. The Judge felt that since no statement was served on the defendants with no opportunity to deal with the evidence to be before the Court, on an ex parte application the cross-examination applied for would perforce be a free-ranging one. Star Chamber interrogatory procedure formed no part of the judicial process for several centuries now. The Court’s proper function was to decide issues between the parties and not preside over an interrogation.

Returning to law proper of Anton Piller, Lord Denning explained the law of search envisaged by the Order thus:

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 paper 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 [1765] 2 Wils KB 275. 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 plaintiff’s solicitors or anyone else to enter the defendants premises against his will. It does not authorise the breaking down of any doors, nor the slipping in by the back door, nor getting in by an open door or window. It only authorises entry and inspection by the permission of the defendants. The plaintiffs must get the defendants 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.

His Lordship then gave some guidance as regards the conduct of the plaintiff at the premises of the defendant. He warns thus:

Nevertheless, in the enforcement of this order, the plaintiffs must act with due circumspection. On the service of it, the plaintiffs should be attended by their solicitor, who is an officer of the Court. They should give the defendants an opportunity of considering it, and of consulting their own solicitor. If the defendants wish to apply to discharge the order as having been improperly obtained, they must be allowed to do so. If the defendants refuse permission to enter or inspect, the plaintiffs must not force their way in. They must accept the refusal, and bring it to the notice of the Court afterwards, if need be, on an application to commit.

In the same case, Ormrod LJ said:

The proposed (Anton Piller) order is at the extremity of this Court’s powers ... There are three essential pre-conditions for the making of such an order in my judgment -

    (1)     there must be an extremely strong prima facie case.

    (2)     the damage, potential or actual, must be very serious for the applicant.

    (3)     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.

It is submitted that when exercising discretion whether or not to grant an Anton Piller, the Judge would be influenced by counterpoising values (Dias, Jurisprudence, 14th Edn., chapter 9, "Values"). In Ghani v. Jones [1970] 1 QB 693; [1969] 3 WLR 1158; [1969] 3 AER 1700 CA, Lord Denning said:

we have to consider on the one hand the freedom of the individual. His privacy and possession are not to be invaded except for the most compelling reasons. On the other hand we have to consider the interests of society at large in finding out and reporting crime.

A specimen Anton Piller order

The operative part of the order, some desirable further orders, coupled with a notice as to contempt in the particular context of illicit videotape copies of one film could sound as follows:

The defendant, whether by himself or by any person appearing to be in charge of the premises in the Schedule annexed hereto, does at any hour between 9 o’clock in the morning until 8 o’clock in the afternoon permit the person who shall serve this Order upon him together with such persons as may be duly authorised by the plaintiff’s solicitors not being more than three in number to enter each of the premises set out below and any outhouse warehouse or other building or storage area which forms part of the said premises for the purpose of inspecting photographing and seeking for an order removing into the plaintiff’s solicitors custody any material or equipment used or capable of being used or intended to be used for making illicit video tapes of the film "Flight to Tara" together with any copies of the said film and any documents relating thereto.

... (other Orders sought), e.g., the defendant do disclose to the solicitors serving the order the names and addresses of all other persons in the chain of distribution of the offending product.

       

       

And The Court Declares that in default of compliance with this order by the defendant or any person appearing to be in charge of the said premises the plaintiff shall be at liberty to apply to the Court for the immediate committal to prison of any person in such default without further notice".1

The phrase "permit the person" in the specimen order above seems of vital significance as emphasised by Lord Denning in Anton Piller case as follows:

It (the Order) does not authorise the plaintiff’s solicitors or anyone else to enter the defendants premises against his will ... it only authorises entry and inspection by the permission of the defendants ... It actually orders him to give permission.

If the Order imposes a duty on the defendant to give permission to enter and, so to speak, rummage, then it may be argued that the plaintiff has a correlative right to enter (remembering Hohfeld’s jural relations).

In Manor Electronics v. Dickson [1988] RPC 18, the plaintiff was a manufacturer and seller of electronic devices. The first four defendants were former directors and employees and the 5th defendant a company for whom the first four worked. Suspecting that the defendants conspired to go into competition with him and using confidential information, he sued, inter alia, for copyright breach. The plaintiff was not in a very good financial position himself. The plaintiff obtained an Anton Piller Order which was worded to the effect that the plaintiff’s solicitors accompanied by a director of the plaintiff "shall be entitled" to enter the dwelling house ... of Dickson. The plaintiff’s solicitor who attended on the execution of the Anton Piller Order was the daughter of the plaintiff’s chief executive. On the return date, the Anton Piller Order was

discharged. Held, inter alia, an Order couched in terms as "to be entitled to enter" instead of "Defendant to permit" was defective. It was also held that it is desirable that the solicitor has no personal connection with the plaintiff. It was further held that there was material non-disclosure of the overburdened plaintiff’s financial difficulties so that his cross-undertaking in damages was virtually worthless.

As stated above, the plaintiff may seek further orders as situation demanded, although he may not be guaranteed Court’s approval. Some such further orders that may be sought are:

    (a)     that forms and service provided for in the RHC be dispensed with;

    (b)     that proceedings be heard in camera and that the matter not be placed on the Motion list;

    (c)     the Order not to be made public until the returnable date;

    (d)     that respondent be restrained from warning third parties of the proceeding except for the purpose of having legal advice;

    (e)     that the respondent permit two of the applicant’s lawyers in the company of a police personnel to enter the respondents premises.

As regards (e) at first blush, the introduction of a member of the police force may look objectionable. However, in a lot of intellectual property cases, the respondents’ act may disclose an offence, e.g. under the Trade Description Act, Copyright etc. It will be remembered that in the Anton Piller case Lord Denning stated that the Order is given under the inherent jurisdiction of the Court. In Malaysia, inherent jurisdiction is provided for through O. 92 r. 4. In India s. 151 of the Code of Civil Procedure 1908 provides:

Nothing in this Code shall be deemed to limit or otherwise affect the inherent power of the Court to make such orders as may be necessary for the ends of justice or to prevent abuse of the process of the Court.

In Sanjiva Row’s Commentaries of the Code, 14th Edn., Vol. 1, p. 406, it is stated that the Court has inherent power to give directions to the police authorities to render aid to the aggrieved parties with regard to the implementation of the order of the Court or the exercise of the rights created under the orders of the Court:

R Audemma v. P. Narasimham [1971] AP 53

Some procedural aspects of Anton Piller Orders.

Upon a plaintiff seeking an Anton Piller Order, the Court normally expects at least two undertakings by the plaintiff:

    (a)     an undertaking to serve a notice of motion returnable, say, within 5 days, to continue the Injunction earlier obtained by the applicant. This means that shortly after the search and seizure the matter may be reviewed by the Court in the light of evidence from both sides;

    (b)     an undertaking to obey any Order that the Court may subsequently make as to damages sustained by the defendants which the plaintiff ought to pay. Such undertaking may have to be supported by a bond of security 2.

Liberty is normally given to the defendant to move the Court to discharge or vary the order on 24 hours notice to the plaintiffs solicitors.

Cosmetically, although not really, the combined effect of these safeguards seems to be that shortly after the execution of the order a defendant has the opportunity to present his case and to argue for the return of the articles and documents if having been removed without good cause. A defendant is further entitled to claim compensation from the plaintiff in relation to the loss sustained by reason of the order, if it subsequently appears that the granting was not justified.

In one of the very few cases (perhaps the only one so far) which went to full trial ending in an elaborate, well thought out, judgement, that is, Columbia Picture Industries v. Robinson [1986] 3 AER 338 @ 379, the Court felt that on account of the excessive and oppressive manner in which Anton Piller Order was executed, this is an instance of justification for aggravated damages. The Judge felt in that case that the plaintiffs behaviour was an additional instance to be added to the list for exemplary damages by Lord Devlin in Rookes v. Barnard [1964] AC 1129. No exemplary damage was in fact ordered because it was not prayed in the pleadings. Such omission in the prayer may not be that fatal since amendment to the pleadings could be sought even before judgement (Yoong Leok Kea v. Chin Thong Thai [1981] 2 MLJ 21; Lofti v. Czarnikow [1952] 2 AER 823; Davie v. New Merton Board [1956] 1 WLR 233).

A learned writer commenting on the Columbia case 3 states:

But in an important obiter dictum Scott J. said that exemplary damages can be awarded on the authority of Lord Devlin in Rookes v. Barnard if the solicitor goes outside his authorisation and does so oppressively and excessively (it should be noted that the restriction by reference ‘oppression’ may need to be revised in the light of Holden v. Chief Constable of Lancs [1986] 3 WLR 1107.

The learned writer continues:

This case is an important re-examination of the dangers of this ex parte and draconian procedure. It should be juxtaposed with the reservation expressed by Mustill J. concerning the Mareva injunction in Ninemia Maritime v. Trave [1984] 1 AER 398 @ 402 discussion not disturbed by the CA [1983] 1 WLR 1412). Scott J. has provided us with much food for thought. The following passage surely deserves to find a place in the textbooks, since it articulates the grounds for anxiety engendered by the remarkable example of judicial law-making:

‘What is to be said of the Anton Piller procedure which, on a regular and institutionalised basis, is depriving citizens of their property and closing down their businesses by orders made ex parte, on applications of which they know nothing and at which they cannot be heard, by orders which they are forced, on pain of committal, to obey, even if wrongly made?

There are some possible answers to this criticism of Anton Piller orders and their effect. One is that every Anton Piller order records an undertaking by the applicants who have obtained it to compensate the respondent for any damage caused to him by the order and for which the Court thinks the plaintiff ought to pay. This is theoretically a valuable safeguard. In the present case the defendants are seeking compensation under just such an undertaking.

But, in my judgement, it does not meet the main objection to the Anton Piller procedure. The main objection to the procedure is that the orders made produce for the respondents damaging and irreversible consequences without any hearing at which they can be heard. The respondents may lack the means or the strength of purpose to pursue the applicants for relief under the undertaking in damages. And even villains ought not to be deprived of their property by proceedings at which they cannot be heard’

In an article, another learned writer 4 felt that the Anton Piller Order exemplifies some of the worst dangers of judge-made law.

About Anton Piller Orders, yet another learned writer says 5:

There is no doubt that the decision in Columbia Pictures represents a turning point of the tide against the near automatic grant of Anton Piller Orders as an ex parte application. Moreover, the role of the plaintiffs solicitors will in future be scrutinised with greater care than hitherto and if it is found that, as in the instant case, he failed to fulfil his duty he may render his client penalised in damages; and those damages may not merely be compensatory. Solicitors acting for the plaintiff will have to think twice whether or not to seek an Anton Piller Order and will have to take great care to ensure that all the relevant information is given to the Judge. In executing the order care must be taken to seize only those items covered expressly by the order and therefore those items must be returned to a neutral officer or the defendants solicitors as soon as possible.

Although, to a busy practitioner, Colombia Picture case takes 40 page reading, it is still an instructive case as to the do’s and dont’s in pursuit of an Anton Piller Order. One of the biting lessons to be learnt from the case is that every hard-hitting and over-enthusiastic plaintiff ought to be quietened down and forewarned of the dire consequences of unreasonably clamouring for an Anton Piller Order simply because it is there. Moreover, from the defendant’s point of view, once an ex parte Anton Piller Order has been issued out and served, however arbitrary, oppressive or excessive it may prove subsequently to be, the defendant has to obey on pain of imprisonment: Wardle Fabrics v. Myristis [1983] FSR 263. Therefore the defendant is very likely to charge back teeth and claws drawn to set aside the ex parte Order. If he succeeds, he is entitled to claim damages.

When an ex parte application is made for an Anton Piller order, there is an absolute duty for the supportive affidavit to contain full disclosure of all material circumstances. Since the Court is

saddled with the exercise of discretion, as against the balance of probability situation in a trial, all the facts relating to the case in hand ought to be disclosed. Even the plus factors of the defendants ought to be disclosed. It is far better to err on the side of excessive disclosure than to be blamed for paucity thereof. Although the plaintiff has a duty to disclose all, the defendant does not enjoy a correlative right to claim it from the plaintiff. This is established in the case of Digital Equipment Corpn. v. Darkcrest [1984] 3 AER 381 where it was held that the plaintiff owes no duty of full and frank disclosure to the defendants but such duty is owed to the Court.

There is good authority to suggest that disclosure in the ex parte application for an ex parte injunction ought to be on the footing of uberrima fides (of the fullest confidence). See the tax case of R v. CTC for Kensington [1970] 1 KB 486. At p. 495, Viscount Reading CJ says thus:

Where an ex parte application has been made to this Court for a rule nisi or other process, if the Court comes to the conclusion that the affidavit in support of the application was not candid and did not fairly state the facts, but stated them in such a way as to mislead the Court as to the true facts, the Court ought, for its own protection and to prevent an abuse of its process, to refuse to proceed any further with the examination of the merits. This is a power inherent in the Court, but one which should only be used in cases which bring conviction to the mind of the Court that it has been deceived. Before coming to this conclusion a careful examination will be made of the facts as they are and as they have been stated in application affidavit, and everything will be heard that can be urged to influence the view of the Court when it reads the affidavit and knows the true facts. But if the result of the examination and hearing is to leave no doubt that the Court has been deceived, then it will refuse to hear anything further from the applicant in a proceeding which has only been set in motion by means of a misleading affidavit.

At p. 504, ibid, thus:

if the applicant does not act with ubberima fides and put every material fact before the Court it will not grant him an injunction, even though there might be facts upon which the injunction might be granted, but that he must come again on a fresh application.

At p. 505, ibid, thus: "... the application for a special injunction is very much governed by the same principles which govern insurance, matters which are said to require the utmost degree of good faith, ‘uberrima fides’.

Therefore, it can easily be seen that seeking an Anton Piller is no laughing matter, but one which has its own trip-wires, and danger zones. It is so double-edged that the pursuer himself may get wounded, as in the case of Columbia Pictures where the plaintiffs left the court £10,000 poorer as damages ordered to be given to the defendant.

An ex parte Anton Piller Order invariably contains a liberty for the respondent to apply at short notice for the Order to be set aside. A further date may normally be fixed for converting ex parte into inter partes. One of the strongest reasons advanced by the respondent for setting aside might be the non-disclosure of all material facts. One pertinent question is: when such application to set aside an ex parte order is to be made?

The proposition contained in the English case of Dormeuil Freres SA v. Nicolian International (Textiles) Ltd. [1988] 3 AER 197; [1988] 1 WLR 1362 seems to suggest that the appropriate time for hearing an application to set aside an ex parte Anton Piller Order on the ground that there has been material non-disclosure is at the time of the trial. One of the underlying rationale could be that the plaintiff had earlier on given an undertaking for damages anyway. Is this, proposition reasonable in the particular context of Malaysia?

It is submitted that the setting aside of the Order ought to be within weeks rather than years as the usual time taken to conclude an ordinary suit fully heard. The urgency of immediate setting-aside is deducible from Columbia Picture itself at p. 370-371 where the Judge said:

Finally, it may be pointed out that an Anton Piller Order always contains a liberty for the respondent to apply on short notice for the order to be set aside. But this cannot in practice be done until after the order has been executed. In order to obtain back his business records and place his business once more in a viable position, the respondent to the order has to make successful application to the Court. There are often very real financial difficulties which stand in his way. As happened in the present case the respondent’s bankers may, on learning of the order, have cut off his funds ... And the will of a respondent to take on a powerful and determined opponent in expensive litigation may waver. The respondent, often with very good reason, may lack confidence in the successful outcome of the litigation.

In Malaysia, except Wilayah, most of the States generally have only one Judge or at most two or three. Logically, since the Judge exercises discretion in the granting or denying an ex parte Anton Piller Order, the matter ought to be brought before the same Judge even at the trial. Since a given case takes three steps, that is, ex parte application for an Anton Piller Order, attempt to set aside/hearing inter partes, and finally the trial, it is submitted that if the same Judge were to hear all, it will be familiar ground for him throughout the entire case from start to finish, and avoid duplicitous matters. In Malaysia, for the reasons so graphically spelt out by the Judge in Columbia Picture, the setting aside for non-disclosure or otherwise ought to be within a short time and not at the trial.

The return of the native, John Doe, and the roving Anton Piller Order.

In commencing a civil suit the plaintiff has a procedural hurdle in that he has to name the defendant formally for the purpose of enforcing any Order.

Those of us who relish window-shopping as a change from the chamber-boredom often find in the five-foot way of busy streets dodgy hawkers offering for sale Madonna tapes, Dunhill briefcases, Ebel watches and Camel ‘T’ shirts, all imitation products. A whistle, and the pack vanishes beyond pursuit. It is a virtually herculean task for a genuine manufacturer to cope up with this hawking fraternity. Generally, one does not know the names, identities and addresses of these people. They are elusive enough to keep this information secret. Even if they arrive at the market place with their counterfeit articles in an automobile, such vehicle may be registered in another name. They will not normally have a fixed street premises or any documents. With such fleeting characters, surveillance can be a daunting task. Nowadays, promoters of sporting events

and rock concerts also know that pirates sell unauthorised merchandise inferior in quality and pass off as genuine.

In the particular context of squatters, where the name of the intended defendant is not known, there is provision in the RHC (O. 89) to sue the unnamed occupier.

The writer’s tattered pocket-book referred to in the first paragraph of this article contained a good stock of other Equity maxims, in fact not less than 20. Two other maxims he could produce were: "Equity, like nature, does nothing in vain"; and "Equity will not suffer a wrong to be without a remedy".

In America and Canada, 6 two common law jurisdictions, industrious solicitors for the plaintiffs have managed to obtain ex parte temporary restraining orders against "John Doe Defendants". Examples are the cases of recording artist Billy Joel, and rock groups such as ‘Rush’, ‘The Who’, etc. The potential defendants were cited as "The various John Does". Such an Order may be served on any itinerant street vendor selling, say, name-printed ‘T’ shirts and his stocks taken away. Generally, a police officer may accompany since there may be disclosed a statutory offence, e.g., breach of copyright.

EMI Records Ltd. v. Kudhail & Ors. [1980] FSR 36 is an instance of class injunction. The headnote in this case seems not very clear because the Anton Piller Order seems to be against a class as a whole. A class injunction does not take effect against any given member of the class until he has been served with a copy of the Court Order. However, once he has been served, he is bound by the injunction as if he has been the defendant all along.

Universal Application of Anton Piller

Over the years Anton Piller grew wings and flew far and wide. It has been applied in a host of countries with common law tradition and also in South Africa where Roman/Roman Dutch Law co-functioned.

In South Africa, in the case of Universal City Studios v. Network Video [1986) (2) SA 734 (4), the App. Division of the Supreme Court, through a unanimous decision of 5-judge Court, has recognised the availability of Anton Piller as a procedural remedy. One of the Judges Corbett J.A. stated that the Supreme Court:

possesses an inherent reservoir of power to regulate procedure in the interests of the proper administration of justice and that it can in certain circumstances which justify it doing so, grant procedural remedies which do not exist in common law and which are not provided for in the Supreme Court Rules.

According to a learned writer 7, there are at least four reported cases applying Anton Piller:

    (a)     Roamer Watch v. African Textile Distributors [1980] RPC 457

    (b)     Continental Wholesalers v. Fashion Fantasy [1983]

    (c)     Easyfind International v. Instaplan Holdings [1983]

    (d)     Ascaw Metals v. Apex Foundry [1982]

However, as elsewhere, the fear of tendency to abuse the remedy gradually seeped both into the legal profession as well as judiciary.

In the case of Economic Data Processing v. Pentreath [1984] (2) SA 605 (W) the Judge said:

Anton Piller, that is the local variety, has developed into a secretly obtained search warrant by means of which a person’s premises can be invaded and turned inside out to look for papers and documents and other material which the applicant believes to be relevant to some action, its nature depending on what he discovers, which he will institute.

In Hong Kong, Anton Piller has been applied. Alter Rank Film Distributors case regarding self-incrimination, they too amended their statute in the same manner as England following the English wording verbatim. In that colony, the AP Order was followed in the cases of

    (a)     Union Carbide Corp. v. Kong Lin Offset Printing Co. [1981] FSR 109; and

    (b)     Lincoln International Ltd. v. Eagleton Direct Exports Ltd. [1982] FSR 359.

In Australia, Anton Piller remedy has been applied in the following cases:

    (a)     EMI (Aust.) Ltd. v. Bay Imports [1980] FSR 328

    (b)     Chrysalis Records v. Vere [1982] FSR 328

    (c)     Golf Lynx v. Golf Scene [1984] ALR 343.

However, in all the above cases the defendant was given notice and an Anton Piller Order would be more readily made where notice has been given 8.

Some of the other jurisdictions where Anton Piller was applied are:

(New Zealand) - Fine Art Productions Ltd. v. Gray [1980] FSR 109.

(Ireland) House of Spring Gardens v. Point Blank [1980] FSR 359

(Nigeria) Ferodo Ltd. v. Unibros Stores [1980] FSR 489.

In Malaysia and Singapore, the first case granting an Anton Piller Order seems to be Lian Keow Sdn. Bhd. v. Paramjothy & Anor. [1982] 1 MLJ 217. There the learned Judge confirmed that the Order is granted under the inherent jurisdiction of the Court. It is not proposed to lay out the other cases since they are easily available to the reader. Suffice to give a representative list:

    1.     Television Broadcasts v. Mandarin Video Holdings [1983] 2 MLJ 347;

    2.     Asia Television v. Viwa Videos [1983] 2 MLJ 409;

    3.     Rajah v. Worldwide Commodities [1985] 1 MLJ 86;

    4.     Aspatra Sdn. Bhd. & Ors. v. BBMB & Anor. [1987] 2 CLJ 377;

    5.     BBMB & Anor. v. Lorraine Esme Osman & Ors. [1985] 1 CLJ 552;

    6.     Caterpillar Tractor v. Hock Guan [1988] 1 CLJ 787;

    7.     Calzaturificio Danieli v. M.J. Industries [1988] 1 CLJ 314;

    8.     Peter Edition & Anor. v. Rnner Piano Co. [1990] 1 CLJ 396;

    9.     Computerland Corp. v. Yew Seng Computers [1991] 3 MLJ 201.

Solicitors duties while executing an Anton Piller Order.

Since Mr. Burn’s work cited (8) graphically lists out the duties of a solicitor while executing the Order, the relevant passage is reproduced below verbatim. This also coincides partly with those explained in the Columbia Pictures:

There are onerous responsibilities imposed upon a solicitor who acts in an application for an Anton Piller order and participates in its execution.

    (1)     Very careful thought must be given to the case before advice to the plaintiff to apply for an order. The alternative course of seeking injunctions to restrain the defendant’s conduct together with an order to deliver up documents or material should be considered: Booker McConnel PLC v. Plascow [1985] RPC 425;

    (2)     When the order is executed it is essential that an accurate record is made of the material to be removed from the defendants premises by the solicitor before anything is taken (Columbia Pictures). A receipt should be given and disputes may well be avoided if the defendant acknowledges in writing that the list is correct. Only documents or other items within the terms of the order should be removed. In England, a practice developed for the solicitor in attendance when the order was executed to seek the consent of the defendant to the removal of documents or material which were not the subject of the order. Such consent was then noted on the receipt. This practice has been condemned (Customs & Excise Commissioner v. Hamlin [1984] 1 WLR 509). The documents and materials recovered must be strictly limited to those referred to in the order; and no colour given to a suggestion ‘consent’ was obtained by persons taking advantage of the position of power in which they had been placed by the order.

    (3)     Once the documents and other materials are in the custody of the plaintiffs solicitor, they must be held in safe custody. The solicitors are not permitted to allow anyone, except the

defendant or the defendants solicitor to have access to the materials except with leave of the Court or the permission of the defendant. Release of the material to third parties, even officials acting in the course of their duty, will involve the solicitor in contempt of Court. This follows from the fact that the order is a form of discovery; and documents held on discovery must be preserved from use for other purposes because unless the documents are preserved discovery will not be properly given (Home Office v. Harman [1983] AC 280).

The documents and other items must, of course, be safely kept, and not lost. It has been suggested that documents should be held for the short time needed to copy them and when copied they should be returned to the defendant; and that if their return is not appropriate for any reasons, they should pass to the custody of the defendants solicitor pending the hearing of the proceedings.

The danger of Anton Piller Order outstepping its bounds.

Over the years, there is a discernible uneasiness among several distinguished Judges in several countries 9 about the Anton Piller Order getting out of hand and needs to be constantly bridled lest it may behave like the amiable genie metamorphosing into a monster and refusing to get back into the bottle.

Everyone knows that the customs union, otherwise known as the Inner Six, formed under the Rome Treaty has now grown, thanks to Maastrict, a super State of Europe of which tunnelised England is part. In McWhirter v. AG [1972], Lord Denning said that although the Treaty of Rome had been signed it would have no effect as far as the Courts were concerned, until it had been made an Act of Parliament. However, once it has been implemented by an Act, the Courts would go by the Act. Such an Act was European Communities Act 1972. It is recognised in the United Kingdom that States do have a duty to ensure that national laws conform with their treaty obligations so that British Courts will, when asked to, ensure that the legislature does not violate treaty obligations. An example would be the recent Contracts (Applicable Law) 1991.

Section 8 of the European Convention on Human Rights says that everyone shall be entitled to respect for his or her private life, home and correspondence.

The accession of the United Kingdom into European Community took place in 1972. Anton Piller Order seems to be slightly out of step with the above quoted section which is part of the Community law. It is a moot point whether in the very country where Anton Piller developed, the above section may slow-gnaw it out of existence.

A feeble attempt looks to have been made in the European Court of Human Rights in the case of Chappel v. U.K. (No. 17/1987/140/194) The Times dated 6 April 1989. Chappel, the operator of the video club, was suspected of breaching copyright by distributing unlicensed video films and also of dealing in pornographic video films. He claimed that the simultaneous execution at his premises of an Anton Piller order made by the High Court in Civil Proceedings for breach of copyright and a police search warrant for pornographic films violated Article 8 of the European Convention of Human Rights. The premises searched were partly used for his business and

partly used as his home; he claimed that there had been an interference with his right to respect for his private life and home contrary to the said Article.

It was held that the simultaneous execution of an Anton Piller order and search warrant did not infringe Article 8. The safeguards contained in the Anton Piller order ensured sufficient supervision by the High Court, and the manner of its execution, despite the shortcomings in the procedure followed, were not regarded as disproportionate to the legitimate aim pursued in the circumstances of his case.

It is submitted that there could perhaps be a less stringent form of Anton Piller Order, say a Mukhtar Order (Universal Studios v. Mukhtar & Sons [1976] 1 WLR 568 @ 571) where the Order does not allow entry to the defendant’s premises but the solicitor turns up at the targeted premises and serves the Order requiring the defendant to hand over the nominated documents or things for safe-keeping by the plaintiff’s solicitors. The type of Order may be suitable where bad faith on the part of the defendant is not strictly proved, but reasonably suspected.

Conclusion

Anton Piller, although a potent remedy, is also a double-edged weapon. Its practical operation involving wide and sweeping powers of search and entry to seize documents has been given considerable publicity, much of it critical. Recently, in England, following a resolution of the Judges’ Council there, a committee was established to consider and report on the practical operation of such Orders. The said committee invited evidence and views from lawyers directly involved in such Orders for the same to be sent to Lord Chancellor’s Department 10.

Footnotes .

    (1)     Taken from Mark Hoyle, The Mareva Injunction & Related Orders, Lloyds of London Press Ltd., p. 140

    (1A)     See Article - "Pre-trial Civil Proceedings in England and France; a comparative study" - by C. N. Ngwasiri in [1991] Civ. J.Q. p. 289

-    (2)     Article by Dr. Cedric Bell, "Anton Piller Order: an Appraisal" [1968] Trading Lw p. 103

    (3)     Article by N.H. Andrews, "Abuse of Anton Piller Orders" [1987] Cam. LJ 50

    (4)     Article by Ann Staines, "Protection of intellectual property rights by Anton Piller Orders". [1983] 46 Mod. LR274 @ 285

    (5)     Article "Anton Piller Orders: Towards a more restrictive approach" [1987] Civ JQ. 10-15

    (6)     Article by Gordon Hayhurst, "Ex-Parte Anton Piller Order with John doe defendants". [1987] EIPR 257

    (7)     Article: "Anton Piller Orders in South African Practice by H.J. Erasmus, South African LJ [1984] 324

    (8)     Injunctions, a Practical Handbook by N.R. Burns , p. 77.

    (9)     (a) In the UK, the Columbia Picture case:

    (b)     In Singapore, Peter Edition [1990] 1 CLJ 396 @ 397, 379; Computerland Corp. v. Yew Seng Computers [1991] 3 MLJ 201 @ 206;

    (c)     In Malaysia Caterpillar Tractor v. Huck Guan [1988] 1 CLJ 787 @ 790;

    (d)     In South Africa, Economic Data Processing v. Penthreats [1984].

    (10)     (1991-92)11 Lit. p. 30