Anton Piller order
Encyclopedia
In English
and English-derived legal
systems, an Anton Piller order (frequently misspelt Anton Pillar order) is a court
order that provides the right to search premises and seize evidence without prior warning. This prevents destruction of relevant evidence
, particularly in cases of alleged trademark
, copyright
or patent
infringements.
The order is named after the English case of Anton Piller KG v Manufacturing Processes Limited [1976] Ch 55 in 1976, although the first reported such order was granted by Templeman J
in EMI Limited v Pandit [1975] 1 All ER 418 in 1975. They are now known as search orders in England, Wales and Western Australia.
Because such an order is essentially unfair to the accused party, Anton Piller orders are only issued exceptionally and according to the three-step test set out by Ormrod LJ in the Anton Piller case:
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 Although the name persists in normal usage, the common law application of this order has been largely superseded by a statutory search order under the Civil Procedure Act 1997.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".
Hugh Laddie
is generally credited with the "invention" of the Anton Piller order. 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."
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 and Another v Baillache and Others (23347/09) [2010] ZAWCHC 68 (8 March 2010), 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'.
." -- (per Lord Denning in Anton Piller KG v. Manufacturing Processes Ltd. and Others [1976] Ch. 55).
procedure in intellectual property
related cases in some other countries, such as Canada
, France
and Italy.
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 an infringement, or may additionally allow real seizure
to take place in addition to the description measures. 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):
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.
They 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'". 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).
, in Celanese Canada Inc. v. Murray Demolition Corp. 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 Court laid out basic protection for the rights of parties involved.The protections in place are meant to protect solicitor-client privilege by preventing privileged documents from being disclosed. The search must be conducted according to the following guidelines:
The supervising lawyer, referred to as an Independent Supervising Solicitor
(ISS), should:
In addition, following the search:
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.
, it currently exists in something of a grey area.
This rule states that:
In recent years, questions have been raised about abusive use of these orders and the doubtful constitutionality of the procedures used. 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.
, enabling an applicant to have the respondent's assets frozen so they cannot be dissipated to frustrate 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.
England
England is a country that is part of the United Kingdom. It shares land borders with Scotland to the north and Wales to the west; the Irish Sea is to the north west, the Celtic Sea to the south west, with the North Sea to the east and the English Channel to the south separating it from continental...
and English-derived legal
Law
Law is a system of rules and guidelines which are enforced through social institutions to govern behavior, wherever possible. It shapes politics, economics and society in numerous ways and serves as a social mediator of relations between people. Contract law regulates everything from buying a bus...
systems, an Anton Piller order (frequently misspelt Anton Pillar order) is a court
Court
A court is a form of tribunal, often a governmental institution, with the authority to adjudicate legal disputes between parties and carry out the administration of justice in civil, criminal, and administrative matters in accordance with the rule of law...
order that provides the right to search premises and seize evidence without prior warning. This prevents destruction of relevant evidence
Evidence (law)
The law of evidence encompasses the rules and legal principles that govern the proof of facts in a legal proceeding. These rules determine what evidence can be considered by the trier of fact in reaching its decision and, sometimes, the weight that may be given to that evidence...
, particularly in cases of alleged trademark
Trademark
A trademark, trade mark, or trade-mark is a distinctive sign or indicator used by an individual, business organization, or other legal entity to identify that the products or services to consumers with which the trademark appears originate from a unique source, and to distinguish its products or...
, copyright
Copyright
Copyright is a legal concept, enacted by most governments, giving the creator of an original work exclusive rights to it, usually for a limited time...
or patent
Patent
A patent is a form of intellectual property. It consists of a set of exclusive rights granted by a sovereign state to an inventor or their assignee for a limited period of time in exchange for the public disclosure of an invention....
infringements.
The order is named after the English case of Anton Piller KG v Manufacturing Processes Limited [1976] Ch 55 in 1976, although the first reported such order was granted by Templeman J
Sydney Templeman, Baron Templeman
Sydney William Templeman, Baron Templeman, MBE, PC, is a former British judge. He served as a Lord of Appeal in Ordinary from 1982 to 1995 in the House of Lords and was created a life peer as Baron Templeman, of White Lackington in the County of Somerset....
in EMI Limited v Pandit [1975] 1 All ER 418 in 1975. They are now known as search orders in England, Wales and Western Australia.
Because such an order is essentially unfair to the accused party, Anton Piller orders are only issued exceptionally and according to the three-step test set out by Ormrod LJ in the Anton Piller case:
- There is an extremely strong prima faciePrima faciePrima facie is a Latin expression meaning on its first encounter, first blush, or at first sight. The literal translation would be "at first face", from the feminine form of primus and facies , both in the ablative case. It is used in modern legal English to signify that on first examination, a...
case against the respondent, - The damage, potential or actual, must be very serious for the applicant, and
- 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 partesInter partesThe term inter partes is the Latin for "between the parties." It can be distinguished from in rem, referring to a legal action whose jurisdiction is based the control of property, or ex parte referring to a legal action that is by a single party....
application can be made.
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".
Hugh Laddie
Hugh Laddie
Sir Hugh Ian Lang Laddie was a British High Court judge, lawyer, professor, and a specialist in intellectual property law. He was considered one the leading English judges and academics in the field of intellectual property law...
is generally credited with the "invention" of the Anton Piller order. An obituary in The Daily Telegraph
The Daily Telegraph
The Daily Telegraph is a daily morning broadsheet newspaper distributed throughout the United Kingdom and internationally. The newspaper was founded by Arthur B...
stated that he later described the Anton Piller order "as a Frankenstein's monster that went far beyond his original design brief."
In some jurisdictions (for example, Hong Kong
Hong Kong
Hong Kong is one of two Special Administrative Regions of the People's Republic of China , the other being Macau. A city-state situated on China's south coast and enclosed by the Pearl River Delta and South China Sea, it is renowned for its expansive skyline and deep natural harbour...
and South Africa
South Africa
The Republic of South Africa is a country in southern Africa. Located at the southern tip of Africa, it is divided into nine provinces, with of coastline on the Atlantic and Indian oceans...
) where there is no statutory search order, the Anton Piller Order is still often used. In South Africa, for example, in Mathias International Ltd and Another v Baillache and Others (23347/09) [2010] ZAWCHC 68 (8 March 2010), 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'.
Quotations
"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 (1765), 19 State Tr. 1029. 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 their 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 ... 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 them to give permission – with, I suppose, the result that if they do not give permission, they are guilty of contempt of courtContempt of court
Contempt of court is a court order which, in the context of a court trial or hearing, declares a person or organization to have disobeyed or been disrespectful of the court's authority...
." -- (per Lord Denning in Anton Piller KG v. Manufacturing Processes Ltd. and Others [1976] Ch. 55).
Outside England
Anton Piller orders also constitute a common ex parteEx parte
Ex parte is a Latin legal term meaning "from one party" .An ex parte decision is one decided by a judge without requiring all of the parties to the controversy to be present. In Australian, Canadian, U.K., Indian and U.S...
procedure in intellectual property
Intellectual property
Intellectual property is a term referring to a number of distinct types of creations of the mind for which a set of exclusive rights are recognized—and the corresponding fields of law...
related cases in some other countries, such as Canada
Canada
Canada is a North American country consisting of ten provinces and three territories. Located in the northern part of the continent, it extends from the Atlantic Ocean in the east to the Pacific Ocean in the west, and northward into the Arctic Ocean...
, France
France
The French Republic , The French Republic , The French Republic , (commonly known as France , is a unitary semi-presidential republic in Western Europe with several overseas territories and islands located on other continents and in the Indian, Pacific, and Atlantic oceans. Metropolitan France...
and Italy.
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 an infringement, or may additionally allow real seizure
Seizure
An epileptic seizure, occasionally referred to as a fit, is defined as a transient symptom of "abnormal excessive or synchronous neuronal activity in the brain". The outward effect can be as dramatic as a wild thrashing movement or as mild as a brief loss of awareness...
to take place in addition to the description measures. Such a seizure is enforced by a bailiff
Bailiff
A bailiff is a governor or custodian ; a legal officer to whom some degree of authority, care or jurisdiction is committed...
, usually accompanied by at least one expert. It can take place on the premises of the alleged infringer, but also at a trade fair
Trade fair
A trade fair is an exhibition organized so that companies in a specific industry can showcase and demonstrate their latest products, service, study activities of rivals and examine recent market trends and opportunities...
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 authorize the bailiff to carry out any enquiry required to ascertain the origin, nature and scope of the infringement. ... " (emphasis added)
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
Directive on the enforcement of intellectual property rights
Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights is a European Union directive in the field of intellectual property law, made under the internal market provisions of the Treaty of Rome...
, approved in April 2004.
They are also used in Australia
Australia
Australia , officially the Commonwealth of Australia, is a country in the Southern Hemisphere comprising the mainland of the Australian continent, the island of Tasmania, and numerous smaller islands in the Indian and Pacific Oceans. It is the world's sixth-largest country by total area...
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'". 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 (excluding Québec)
The Supreme Court of CanadaSupreme Court of Canada
The Supreme Court of Canada is the highest court of Canada and is the final court of appeals in the Canadian justice system. The court grants permission to between 40 and 75 litigants each year to appeal decisions rendered by provincial, territorial and federal appellate courts, and its decisions...
, in Celanese Canada Inc. v. Murray Demolition Corp. 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 faciePrima faciePrima facie is a Latin expression meaning on its first encounter, first blush, or at first sight. The literal translation would be "at first face", from the feminine form of primus and facies , both in the ablative case. It is used in modern legal English to signify that on first examination, a...
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.
The Court laid out basic protection for the rights of parties involved.The protections in place are meant to protect solicitor-client privilege by preventing privileged documents from being disclosed. 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
Solicitor
Solicitors are lawyers who traditionally deal with any legal matter including conducting proceedings in courts. In the United Kingdom, a few Australian states and the Republic of Ireland, the legal profession is split between solicitors and barristers , and a lawyer will usually only hold one title...
(ISS), should:
- act as a neutral officer of the court
- explain the court’s order to the defendant
- supervise the search for and seizure of evidence from the defendant
- objectively report to the Court
- 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.
Ireland
Anton Piller orders have been granted by the High Court in Joblin-Purser v. Jackman (1999) and Microsoft Corporation v. Brightpoint Ireland Ltd. (2001), 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 constitutionConstitution of Ireland
The Constitution of Ireland is the fundamental law of the Irish state. The constitution falls broadly within the liberal democratic tradition. It establishes an independent state based on a system of representative democracy and guarantees certain fundamental rights, along with a popularly elected...
, 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 -
- the respondent possesses relevant evidentiary material; and
- 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.
Impoundment orders in 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 U.S.C, § 503(a)), which provides for the impounding of allegedly infringing copies of works and equipment for making them.In recent years, questions have been raised about abusive use of these orders and the doubtful constitutionality of the procedures used. 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.
Combination with Mareva injunction
An Anton Piller order is often combined with a Mareva injunctionMareva injunction
The Mareva injunction , in Commonwealth jurisdictions, is a court order which freezes assets so that a defendant to an action cannot dissipate their assets from beyond the jurisdiction of a court so as to frustrate a judgment...
, enabling an applicant to have the respondent's assets frozen so they cannot be dissipated to frustrate 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.
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