[1982]

 

380

A.C.

 

 

 

 

[HOUSE OF LORDS]

 

RANK FILM DISTRIBUTORS LTD. AND OTHERS

APPELLANTS

 

AND

 

VIDEO INFORMATION CENTRE (A FIRM) AND OTHERS

RESPONDENTS

 

1979 July 23, 24; 31

Whitford J.

 

1979 Dec. 17, 18, 19, 20, 21;

Lord Denning M.R., Bridge

1980 Feb. 15

and Templeman L.JJ.

 

1981 March 2, 3, 4, 5, 9; April 8

Lord Wilberforce, Lord Diplock, Lord Fraser of Tullybelton, Lord Russell of Killowen and Lord Roskill

 

Practice - Discovery - Motion for - Action for infringement of copyright - Ex parte application for orders to enter premises and seize infringing copies - Disclosure of information relating to supply and sale of infringing copies also ordered - Defendants liable to be incriminated by information - Whether jurisdiction to grant orders - Whether defendants privileged against self-incrimination - Copyright Act 1956 (4 & 5 Eliz. 2, c. 74), s. 21 - Theft Act 1968 (c. 60), s. 31 (1)

 

The plaintiffs were owners of copyright in certain cinematograph films. On the basis of evidence that, in breach of that copyright, the defendants were making and selling video cassette copies of the films, the plaintiffs, on an ex parte motion before the judge, obtained orders permitting them to enter the defendants' premises and seize infringing copies of the films and requiring the defendants to give immediate discovery of relevant documents and answers to interrogatories relating to the supply and sale of infringing copies. The defendants applied unsuccessfully to have the orders discharged or varied on the ground, inter alia, that by disclosing the documents and answering the interrogatories the defendants might expose themselves to criminal proceedings.

On appeal by the defendants, contending further that there was no jurisdiction to make the orders, the Court of Appeal (by a majority) allowed the appeal in part holding that although there was jurisdiction to make and justification for making the orders appealed from, a defendant in a copy-right action was entitled to claim privilege from giving discovery on the ground that by doing so he would tend to incriminate himself, and accordingly, the orders were varied so as to eliminate that risk.

On appeal by the plaintiffs:-

Held, dismissing the appeal, (1) that the defendants were entitled to rely on the privilege against self-incrimination by discovery or by answering interrogatories since if they complied with orders of that nature there was in the circumstances a real and appreciable risk of criminal proceedings for conspiracy to defraud being taken against them (post pp. 441E-H, 442E-G, 443B-H, 444B, 445H - 446A, H - 447E,G - 448B, E-F, G).


 

[1982]

 

381

A.C.

Rank Film Ltd. v. Video Information Centre (Ch.D.)

 

 

(2) That in respect of the orders requiring the defendants to allow access to premises for the purposes of looking for illicit copy films and to allow their being removed to safe custody, there was jurisdiction to make those orders and that the privilege against self-incrimination had no application thereto (post, pp. 440G - 441A, 444B, 445B-C, 448D-E, E-F, G).

Anton Piller KG v. Manufacturing Processes Ltd. [1976] Ch. 55, C.A.;  Triplex Safety Glass Co. Ltd. v. Lancegaye  Safety Glass (1934) Ltd. [1939] 2 K.B. 395, C.A. and  In re  Westinghouse Electric Corporation Uranium Contract Litigation M.D.L.  Docket No. 235 (No. 2) [1978] A.C. 547, H.L.(E.) applied.

Mayor, Commonalty and Citizens of London v. Levy(1803) 8 Ves.Jun. 398 considered.

Riddick v. Thames Board Mills Ltd. [1977] Q.B. 881, C.A. distinguished.

Per curiam. The mere fact that discovery might result in a defendant being prosecuted for breaches of section 21 of the Copyright Act 1956, is not a sufficient reason of itself to enable the privilege against self-incrimination to be relied on (post, pp. 441C-E, 444B, 445F-H, 448E-F, G).

Per Lord Wilberforce, Lord Diplock, Lord Russell of Killowen and Lord Roskill. The same principle applies in respect of conspiracy to breach section 21 of the Copyright Act 1956 (post, pp. 441E, 444B, 448E-F, G).

Per Lord Russell of Killowen. Inasmuch as the application of the privilege in question can go a long way in this and other analogous fields to deprive the owner of his just rights to the protection of his property I would welcome legislation somewhat on the lines of section 31 of the Theft Act 1968: the aim of such legislation should be to remove the privilege while at the same time preventing the use in criminal proceedings of statements which otherwise have been privileged (post, p. 448F).

Decision of the Court of Appeal, post, p. 403F; [1980] 3 W.L.R. 487; [1980] 2 All E.R. 273 affirmed.

 

The following cases are referred to in their Lordships' opinions:

 

Alterskye v. Scott [1948] 1 All E.R. 469.

Anton Piller KG v. Manufacturing Processes Ltd. [1976] Ch. 55; [1976] 2 W.L.R. 162; [1976] 1 All E.R. 779, C.A.

Attorney-General v. Conroy (1838) 2 Jo.Ex.Ir. 791.

Chadwick v. Chadwick (1852) 22 L.J.Ch. 329.

Distillers Co. (Biochemicals) Ltd. v. Times Newspapers Ltd. [1975] Q.B. 613; [1974] 3 W.L.R. 728; [1975] 1 All E.R. 41.

E.M.I. Ltd. v. Sarwar [1977] F.S.R. 146, C.A.

Jackson v. Benson (1826) 1 Y. & J. 32.

London (Mayor, Commonalty and Citizens of) v. Levy (1803) 8 Ves.Jun. 398.

Norwich Pharmacal Co. v. Customs and Excise Commissioners [1974] A.C. 133; [1973] 3 W.L.R. 164; [1973] 2 All E.R. 943, H.L.(E.).

Reg. v. Sang [1980] A.C. 402; [1979] 3 W.L.R. 263; [1979] 2 All E.R. 1222, H.L.(E.).

Reynolds v. Godlee (1858) 4 K. & J. 88.

Riddick v. Thames Board Mills Ltd. [1977] Q.B. 881; [1977] 3 W.L.R. 63; [1977] 3 All E.R. 677, C.A.


 

[1982]

 

382

A.C.

Rank Film Ltd. v. Video Information Centre (Ch.D.)

 

 

Scott v. Scott [1913] A.C. 417, H.L.(E.).

Triplex Safety Glass Co. Ltd. v. Lancegaye Safety Glass (1934) Ltd. [1939] 2 K.B. 395; [1939] 2 All E.R. 613, C.A.

Westinghouse Electric Corporation Uranium Contract Litigation M.D.L. Docket No. 235 (No. 2), In re [1978] A.C. 547; [1977] 3 W.L.R. 492; [1977] 3 All E.R. 717, C.A.; [1978] A.C. 547; [1978] 2 W.L.R. 81; [1978] 1 All E.R. 434. H.L.(E.).

 

The following additional cases were cited in argument in the House of Lords:

 

Allhusen v. Labouchere (1878) 3 Q.B.D. 654, C.A.

Attorney-General v. Daly (1833) Hayes & Jo. 379.

British Steel Corporation v. Granada Television Ltd. [1981] A.C. 1096; [1980] 3 W.L.R. 774; [1981] 1 All E.R. 417, Sir Robert Megarry V.-C., C.A. and H.L.(E.).

D. v. National Society for the Prevention of Cruelty to Children [1978] A.C. 171; [1977] 2 W.L.R. 201; [1977] 1 All E.R. 589, H.L.(E.).

Dummer v. Chippenham Corporation (1807) 14 Ves.Jun. 245.

E.M.I. Ltd. v. Pandit [1975] 1 W.L.R. 302; [1975] 1 All E.R. 418.

Halcon International Inc. v. Shell Transport and Trading Co. [1979] R.P.C. 97, Whitford J. and C.A.

Hopkinson v. Lord Burghley (1867) L.R. 2 Ch.App. 447.

Lamb v. Munster (1882) 10 Q.B.D. 110, D.C.

Malone v. Metropolitan Police Commissioner [1979] Ch. 344; [1979] 2 W.L.R. 700; [1979] 2 All E.R. 620.

Marshall v. Watson (1858) 25 Beav. 501.

Morris v. Beardmore [1981] A.C. 446; [1980] 3 W.L.R. 283; [1980] 2 All E.R. 753, H.L.(E.).

National Association of Operative Plasterers v. Smithies [1906] A.C. 434, H.L.(E.).

Ocli Optical Coatings Ltd. v. Spectron Optical Coatings Ltd. [1980] F.S.R. 227, C.A.

Pall Europe Ltd. v. Microfiltrex Ltd. [1976] R.P.C. 326.

Paxton v. Douglas (1812) 19 Ves.Jun. 225.

Redfern v. Redfern [1891] P. 139, C.A.

Reg. v. Garbett (1847) 2 Car. & Kir. 474.

Reg. v. Harz; Reg. v. Power [1967] 1 A.C. 760; [1967] 2 W.L.R. 297; [1967] 1 All E.R. 177, H.L.(E.).

Reg. v. Sadler [1970] 1 W.L.R. 416; [1970] 2 All E.R. 12, C.A.

Reg. v. Scott (1856) Dears. & B. 47.

Reg. v. Scott [1975] A.C. 819; [1974] 3 W.L.R. 741; [1974] 3 All E.R. 1032, H.L.(E.).

Rex v. Warickshall (1783) 1 Leach 263.

Richardson v. Hastings (1844) 7 Beav. 354.

Sitwell v. Sun Engraving Co. Ltd. [1937] 4 All E.R. 366, C.A.

Snugkoat Ltd. v. Chaudhry [1980] F.S.R. 286.

Sony Corporation v. Anand (unreported), January 22, 1981, Browne-Wilkinson J.

Spokes v. Grosvenor and West End Railway Terminus Hotel Co. Ltd.[1897] 2 Q.B. 124, C.A.

Tagg v. South Devon Railway Co. (1849) 12 Beav. 151.

Truman (Frank) Export Ltd. v. Metropolitan Police Commissioner [1977] Q.B. 952; [1977] 3 W.L.R. 257; [1977] 3 All E.R. 431.

Waterhouse v. Barker [1924] 2 K.B. 759, C.A.


 

[1982]

 

383

A.C.

Rank Film Ltd. v. Video Information Centre (Ch.D.)

 

 

Williams v. Prince of Wales Life, Etc. Co. (1857) 23 Beav. 338.

Yousif v. Salama [1980] 1 W.L.R. 1540; [1980] 3 All E.R. 405, C.A.

 

The following cases are referred to in the judgments of the Court of Appeal:

 

Anton Piller KG v. Manufacturing Processes Ltd. [1976] Ch. 55; [1976] 2 W.L.R. 162; [1976] 1 All E.R. 779, C.A.

Attorney-General v. Conroy (1838) 2 Jo. Ex. Ir. 791.

Attorney-General v. Daly (1833) Hayes & Jo. 379.

Bunn v. Bunn (1864) 4 De G. J. & Sm. 316.

Chadwick v. Chadwick (1852) 22 L.J.Ch. 329.

E.M.I. Ltd. v. Pandit [1975] 1 W.L.R. 302; [1975] 1 All E.R. 418.

E.M.I. Ltd. v. Sarwar [1977] F.S.R. 146, C.A.

Green v. Weaver (1827) 1 Sim. 404.

London (Mayor, Commonalty and Citizens of) v. Levy (1803) 8 Ves. Jun. 398.

Osram Lamp Works Ltd. v. Gabriel Lamp Co. [1914] 2 Ch. 129, C.A.

Paxton v. Douglas (1812) 19 Ves.Jun. 225.

Redfern v. Redfern [1891] P. 139, C.A.

Reg. v. Garbett (1847) 2 Car. & Kir. 474.

Rice v. Gordon (1843) 13 Sim. 580.

Riddick v. Thames Board Mills Ltd. [1977] Q.B. 881; [1977] 3 W.L.R. 63; [1977] 3 All E.R. 677, C.A.

Robinson v. Kitchin (1856) 8 De G. M. & G. 88.

Saccharin Corporation v. Chemicals and Drugs Co. [1900] 2 Ch. 556, C.A.

Triplex Safety Glass Co. Ltd. v. Lancegaye Safety Glass (1934) Ltd. [1939] 2 K.B. 395; [1939] 2 All E.R. 613, C.A.

Westinghouse Electric Corporation Uranium Contract Litigation M.D.L. Docket No. 235 (No. 2), In re [1978] A.C. 547; [1977] 3 W.L.R. 492; [1977] 3 All E.R. 717, C.A.; [1978] A.C. 547; [1978] 2 W.L.R. 81; [1978] 1 All E.R. 434, H.L.(E.).

 

The following additional cases were cited in argument before the Court of Appeal:

 

A. v. A. and H. [1962] P. 196; [1962] 3 W.L.R. 212; [1962] 2 All E.R. 573.

Acrow (Automation) Ltd. v. Rex Chainbelt Inc. [1971] 1 W.L.R. 1676; [1971] 3 All E.R. 1175, C.A.

Adams v. Batley (1887) 18 Q.B.D. 625, C.A.

Alterskye v. Scott [1948] 1 All E.R. 469.

Beloff v. Pressdram Ltd. [1973] R.P.C. 765; [1973] 1 All E.R. 241.

Blunt v. Park Lane Hotel Ltd. [1942] 2 K.B. 253; [1942] 2 All E.R. 187, C.A.

Broome v. Cassell & Co. Ltd. [1972] A.C. 1027; [1972] 2 W.L.R. 645; [1972] 1 All E.R. 801, H.L.(E.).

Burdett v. Abbott (1811) 14 East. 1.

Butler v. Board of Trade [1971] Ch. 680; [1970] 3 W.L.R. 822; [1970] 3 All E.R. 593.

Calcraft v. Guest [1898] 1 Q.B. 759, C.A.

Colne Valley Water Co. v. Watford and St. Albans Gas Co. [1948] 1 K.B. 500; [1948] 1 All E.R. 104, C.A.

Comet Products U.K. Ltd. v. Hawkex Plastics Ltd. [1971] 2 Q.B. 67; [1971] 2 W.L.R. 361; [1971] 1 All E.R. 1141, C.A.


 

[1982]

 

384

A.C.

Rank Film Ltd. v. Video Information Centre (Ch.D.)

 

 

Fowler v. Lewy (1875) 1 Char.Cham.Cas. 14.

Halcon International Inc. v. Shell Transport and Trading Co. [1979] R.P.C. 97, C.A.

Hennessy v. Bohmann, Osborne & Co. [1877] W.N. 14.

Hopkinson v. Lord Burghley (1867) L.R. 2 Ch.App. 447.

Initial Services Ltd. v. Putterill [1968] 1 Q.B. 396; [1967] 3 W.L.R. 1032; [1967] 3 All E.R. 145, C.A.

Lamb v. Munster (1882) 10 Q.B.D. 110, D.C.

Malone v. Metropolitan Police Commissioner [1979] Ch. 344; [1979] 2 W.L.R. 700; [1979] 2 All E.R. 620.

Morelle Ltd. v. Wakeling [1955] 2 Q.B. 379; [1955] 2 W.L.R. 672; [1955] 1 All E.R. 708, C.A.

Morris v. Howell (1888) 22 L.R.Ir. 77.

Norwich Pharmacal Co. v. Customs and Excise Commissioners [1974] A.C. 133; [1973] 3 W.L.R. 164; [1973] 2 All E.R. 943, H.L.(E.).

Oxford v. Moss [1979] Crim.L.R. 119, D.C.

Reg. v. Duncalf [1979] 1 W.L.R. 918; [1979] 2 All E.R. 1116, C.A.

Reg. v. Sang [1980] A.C. 402; [1979] 3 W.L.R. 263; [1979] 2 All E.R. 1222, H.L.(E.).

Reg. v. Scott [1975] A.C. 819; [1974] 3 W.L.R. 741; [1974] 3 All E.R. 1032, H.L.(E.).

Reg. v. Tompkins (1977) 67 Cr.App.R. 181, C.A.

Reynolds v. Godlee (1858) 4 K. & J. 88.

Richardson v. Hastings (1844) 7 Beav. 354.

Rookes v. Barnard [1964] A.C. 1129; [1964] 2 W.L.R. 269; [1964] 1 All E.R. 367, H.L.(E.).

Short v. Mercier (1851) 3 Mac. & G. 205.

Sitwell v. Sun Engraving Co. Ltd. [1937] 4 All E.R. 366, C.A.

Tagg v. South Devon Railway Co. (1849) 12 Beav. 151.

Truman (Frank) Export Ltd. v. Metropolitan Police Commissioner[1977] Q.B. 952; [1977] 3 W.L.R. 257; [1977] 3 All E.R. 431.

United Company of Merchants of England, trading to the East Indies v. Kynaston (1821) 3 Bli. 153, H.L.(E.).

Williams v. Prince of Wales Life, Etc. Co. (1857) 23 Beav. 338.

Williams v. Settle [1960] 1 W.L.R. 1072; [1960] 2 All E.R. 806. C.A.

 

The following cases are referred to in the judgment of Whitford J.:

 

Anton Piller KG v. Manufacturing Processes Ltd. [1976] Ch. 55; [1976] 2 W.L.R. 162; [1976] 1 All E.R. 779, C.A.

Beloff v. Pressdram Ltd. [1973] R.P.C. 765; [1973] 1 All E.R. 241.

Broome v. Cassell & Co. Ltd. [1972] A.C. 1027; [1972] 2 W.L.R. 645; [1972] 1 All E.R. 801, H.L.(E.).

E.M.I. Ltd. v. Pandit [1975] 1 W.L.R. 302; [1975] 1 All E.R. 418.

E.M.I. Ltd. v. Sarwar [1977] F.S.R. 146, C.A.

Hunnings v. Williamson (1883) 10 Q.B.D. 459, D.C.

Norwich Pharmacal Co. v. Customs and Excise Commissioners [1974] A.C. 133; [1973] 3 W.L.R. 164; [1973] 2 All E.R. 943, H.L.(E.).

Rookes v. Barnard [1964] A.C. 1129; [1964] 2 W.L.R. 269; [1964] 1 All E.R. 367, H.L.(E.).

Westinghouse Electric Corporation Uranium Contract Litigation M.D.L. Docket No. 235 (Nos. 1 and 2), In re [1978] A.C. 547; [1978] 2 W.L.R. 81; [1978] 1 All E.R. 434, H.L.(E.).

Williams v. Settle [1960] 1 W.L.R. 1072; [1960] 2 All E.R. 806. C.A.


 

[1982]

 

385

A.C.

Rank Film Ltd. v. Video Information Centre (Ch.D.)

 

 

The following additional cases were cited in argument before Whitford J.:

 

Adams v. Batley; Cole v. Francis (1887) 18 Q.B.D. 625, C.A.

Attorney-General v. Conroy (1838) 2 Jo.Ex.Ir. 791.

Attorney-General v. Daly (1833) Hayes & Jo. 379.

Blunt v. Park Lane Hotel Ltd. [1942] 2 K.B. 253; [1942] 2 All E.R. 187, C.A.

Colne Valley Water Co. v. Watford and St. Albans Gas Co. [1948] 1 K.B. 500; [1948] 1 All E.R. 104, C.A.

Debtor (No. 7 of 1910), In re A [1910] 2 K.B. 59, C.A.

Hobbs (T.W.) & Co. Ltd. v. Hudson (1890) 25 Q.B.D. 232, C.A.

Jones v. Jones (1889) 22 Q.B.D. 425, D.C.

King of the Two Sicilies v. Willcox (1851) 1 Sim.N.S. 301.

Lichfield (Earl of) v. Bond (1843) 6 Beav. 88.

London (Mayor, Commonalty and Citizens of) v. Levy (1803) 8 Ves.Jun. 398.

Loose v. Williamson (Note) [1978] 1 W.L.R. 639; [1978] 3 All E.R. 89.

Reg. v. Duncalf [1979] 1 W.L.R. 918; [1979] 2 All E.R. 1116, C.A.

Reg. v. Garbett (1847) 2 Car. & Kir. 474.

Reg. v. Scott [1975] A.C. 819; [1974] 3 W.L.R. 741; [1974] 3 All E.R. 1032, H.L.(E.).

S.A. Consortium General Textiles v. Sun and Sand Agencies Ltd. [1978] Q.B. 279; [1978] 2 W.L.R. 1; [1978] 2 All E.R. 339, C.A.

Saunders v. Wiel [1892] 2 Q.B. 18, D.C.

Sitwell v. Sun Engraving Co. Ltd. [1937] 4 All E.R. 366, C.A.

Triplex Safety Glass Co. Ltd. v. Lancegaye Safety Glass (1934) Ltd.[1939] 2 K.B. 395; [1939] 2 All E.R. 613, C.A.

Whitworth, In re [1919] 1 Ch. 320, C.A.

 

MOTION

On July 2, 1979, on a motion made ex parte by the plaintiffs, Rank Film Distributors Ltd., Universal City Studios Inc., Cinema International Corporation (U.K.), I.T.C. Entertainment Ltd., I.T.C. Film Distributors Ltd. and E.M.I. Films Ltd., Walton J., on undertakings by the plaintiffs, inter alia, to issue a writ forthwith and as to damages, made orders, inter alia (1) until July 10, 1979, or further order restraining the defendants, Video Information Centre, Michael Anthony Lee, Susan Gomberg, Stylestone Ltd. and Videochord Ltd., from making, selling or destroying any unauthorised copies of any films distributed by or in which the copyright was claimed by the plaintiffs; (2) until July 10, 1979, or further order restraining the defendants from disclosing to any third party the subject matter of the proposed action or the plaintiffs' interest therein, save for the purpose of obtaining legal advice, and warning any third party that any of the plaintiffs might commence proceedings against such third party; (3) ordering the defendants, Michael Anthony Lee and Susan Gomberg, to disclose forthwith to the person serving the order on them the names and addresses of all persons firms or companies known to them (i) to whom the defendants had supplied or offered to supply illicit copies of the films, or films used or intended to be used for making such copies with the quantities and dates thereof, (ii) who had supplied or


 

[1982]

 

386

A.C.

Rank Film Ltd. v. Video Information Centre (Ch.D.)

 

 

offered to supply the defendants with such copies or films with the quantities and dates thereof, and (iii) who were engaged in the production distribution offer for sale or sale of such copies or films; (4) ordering the defendants, Michael Anthony Lee and Susan Gomberg, within four days of service of the order, to make and serve an affidavit setting forth the information they were required to give pursuant to the foregoing order and exhibiting thereto all invoices, labels, books of account, letters, lists or other documents within their possession or control which related to every illicit copy supplied or offered by or to the defendants or to any business relating thereto; (5) ordering the defendants Michael Anthony Lee, Susan Gomberg and the proper officer(s) of Stylestone Ltd. or such other persons as appeared to be in charge of three specified sets of premises to permit forthwith the person serving the order together with not more than two other persons authorised by the plaintiffs to enter those premises for the purpose of (a) looking for, inspecting and photographing all illicit copy films, all labels or packaging for use therewith, all invoices, bills, letters, notes or other documents relating to such copies, all equipment used or which might have been used for making such copies and all films (including video cassettes and master tapes) and blank filmstock, (b) removing into the plaintiffs' solicitors' custody all or any of the items mentioned in (a) but not including equipment; and (6) ordering the defendants and/or the person(s) appearing to be in charge of the specified premises to produce forthwith to the person serving the order all of the films, labels, packaging, invoices, bills, letters, notes or other documents or filmstock referred to in the last preceding injunction. The defendants were given liberty to apply to vary or discharge the orders on 24 hours' notice, and the entire order was indorsed: "If you, the within Michael Anthony Lee, neglect to obey this order by the time therein limited or if you disobey this order, you will be liable to process of execution for the purpose of compelling you to obey the same."

A writ was issued by the plaintiffs on July 3, 1979, seeking, inter alia, (1) an injunction restraining the defendants from infringing the plaintiffs' copyright; (2) discovery of the names and addresses of the defendants' suppliers of infringing copies and of the persons to whom they had supplied or offered to supply such copies and all related documents; and (3) an inquiry as to damages. On July 5, 1979, the writ was amended to add Michael George Dawson as a sixth defendant, and, on motion ex parte by the plaintiffs, orders similar to those made against the other defendants on July 2, were made against the sixth defendant by Walton J. On the same date Walton J. made an additional order that the defendants forthwith disclose the whereabouts of all illicit copy films or masters known to them.

On July 23, the defendants moved to vary or discharge the orders made by Walton J. The hearing was in camera and Whitford J. gave judgment in open court on July 31, 1979.

The facts are stated in the judgments of Whitford J. and Lord Denning M.R.


 

[1982]

 

387

A.C.

Rank Film Ltd. v. Video Information Centre (Ch.D.)

 

 

Colin Ross-Munro Q.C. and Daniel Serota for the first, second, third and fourth defendants.

Colin Ross-Munro Q.C. and J. F. Child for the fifth and sixth defendants.

Donald Nicholls Q.C., Hugh Laddie and D. J. T. Kitchin for the plaintiffs.

 

 

Cur. adv. vult.

 

July 31, 1979. WHITFORD J. read the following judgment. In this action the plaintiffs, suing individually and in a representative capacity on behalf of members of the Motion Picture Association of America and the Society of Film Distributors Ltd., seek the usual relief in respect of alleged infringement of copyrights in cinematograph films owned by them. Recent developments in the field of audio-visual recording on tape and reproduction by way of television receivers have brought about a position in which those owning copyright in cinematograph films are finding themselves in much the same situation as owners of copyright in sound recordings have already found themselves. Pirated versions of cinematograph films are becoming increasingly available.

Copyright owners in the sound recording field seeking to protect their interests found themselves initially forced to bring proceedings against retailers frequently operating in street markets. On the proceedings being served it was a common experience to find that the stocks of alleged infringing records or tapes had mysteriously disappeared overnight, as had any documents or records which might lead to the source of supply. So far as plaintiffs are concerned, the closing down of an individual retail outlet, although it is no doubt in some respects beneficial, is unlikely to prove effective in relief against the injury in respect of which complaint is made.

It was against this background that the plaintiffs in E.M.I. Ltd. v. Pandit [1975] 1 W.L.R. 302 secured an ex parte order permitting the plaintiffs by their solicitors to enter the defendant's premises to inspect any documents or articles relevant to an alleged infringement of copyright in sound recordings and to remove the relevant material into custody. Orders of this kind have subsequently been made in a number of cases and they are now generally referred to as Anton Piller orders, as it was in Anton Piller K.G. v. Manufacturing Processes Ltd. [1976] Ch. 55 that the Court of Appeal first gave the seal of their approval to such orders.

It is right to say that this is a form of order which was then regarded, at least by Ormrod L.J., as being at the extremity of the court's powers. If Ormrod L.J.'s expectations that such orders would rarely be made have not been entirely fulfilled, this is no doubt in part due to the large increase in the sales of pirated works and, in part, to the efficacy of the Anton Piller order in bringing proceedings of this kind, in many cases, to a speedy conclusion.

What clearly emerges from the judgment in the Anton Piller case is that for an order of this kind to be made there must be, first, a strong prima facie case against the defendants, secondly, the likelihood of very serious damage, potential or actual, and, thirdly, clear evidence of the


 

[1982]

 

388

A.C.

Rank Film Ltd. v. Video Information Centre (Ch.D.)

Whitford J.

 

possession by the defendants of incriminating documents or things, coupled with a likelihood, established in evidence, that these will be destroyed prior to the hearing of any possible application inter partes.

In this case an application for an Anton Piller order was made before Walton J., who plainly thought that these criteria had been met. He made two orders dated respectively July 2 and July 5. Two orders were made because at the time when the first order had been made the sixth defendant in this proceeding had not been added. On both orders the defendants were given liberty to apply to vary or discharge the same, and I have to give judgment on an application to vary both these orders.

By the order of July 2, the first and fifth defendants were enjoined from doing various acts which would be infringing acts and, further, from unlawfully interfering with the plaintiffs' trade. I need not go into the relief by way of injunction in detail. Similar relief by way of injunction was ordered against the sixth defendant on July 5. All the defendants have given undertakings to the court in the form of these injunctions until judgment or further order and an undertaking in respect of disclosure to third parties of the subject matter of the present action up to an agreed date. There was an order both on July 2 and on July 5, for disclosure of the respective interests of the individual defendants in the firm Video Information Centre, the first defendants, and the company Videochord Ltd., the fifth defendants. This order has been complied with and nothing turns on any of these matters.

This brings me to the parts of the order which the defendants seek to have varied or expunged. The relevant part in the order of July 2, 1979, is in these terms:

 

"It is ordered that the defendants Michael Anthony Lee and Susan Gomberg do each forthwith disclose to the person who shall serve this order upon them the names and addresses of all persons firms or companies known to them (i) to whom or to which the defendants or one or more of them have supplied or offered to supply illicit copy films or films used or intended to be used for making illicit copy films with the quantities and dates thereof (ii) who have supplied or offered to supply the defendants or one or more of them with illicit copy films or films used or intended to be used for making illicit copy films with the quantities and dates thereof and (iii) who are engaged in the production distribution offer for sale or sale of illicit copy films or films used or intended to be used for making illicit copy films.

"And it is ordered that the defendants Michael Anthony Lee and Susan Gomberg and each of them do within four days after service upon them of this order make and serve upon the plaintiffs' solicitors an affidavit setting forth the information which they are required to give pursuant to the foregoing part of this order and exhibiting thereto all invoices labels books of account letters lists or other documents within their respective possession power custody or control which relate to each and every illicit copy film supplied or offered by or to the defendants or one or more of them or to any business relating thereto."


 

[1982]

 

389

A.C.

Rank Film Ltd. v. Video Information Centre (Ch.D.)

Whitford J.

 

The relevant part of the order of July 2 is in similar terms to those that I have just read so far as the sixth defendant, Mr. Dawson, is concerned, but there is an addition in the order of July 5, an order applicable to all the defendants in these terms:

 

"And it is ordered that each of the defendants do forthwith disclose to the person who shall serve this order upon that defendant the whereabouts of all illicit copy films or masters for making the same known to that defendant."

 

Now the defendants make complaint in respect of all these provisions in these two orders and the propriety of the making of these orders is the only matter on which I have heard argument and upon which I have to give judgment. There is, however, one further matter and that is this, accepting that the judgment of the Court of Appeal in the Anton Piller case [1976] Ch. 55 precludes the possibility of effectively challenging the matter in this court, Mr. Ross-Munro on behalf of the defendants made it plain that he wished to reserve the right to argue quite generally in some higher tribunal that there is no jurisdiction to make orders of this kind at all.

The objections which were made to the orders of Walton J. before me were, first, that the orders are too wide. By this I understood the complaint to be that the particular orders go further than any order made so far and, if that be right, it was said that, to the extent to which they do go further, they are unjustifiable. Secondly, it was said that this is an action in which the plaintiffs are claiming to recover a penalty and, accordingly, there can be no order for discovery or interrogatories, which effectively is what the parts of this order objected to amount to. Thirdly, it is said that the defendants ought not to be ordered to answer the questions, as the answers given may expose them to criminal proceedings.

I will in fact be taking these objections in the order in which they were argued but, before doing that, it is right that I should very briefly refer to the evidence at present before the court being, for the most part, the evidence on which the Anton Piller orders were granted. It was conceded by Mr. Ross-Munro, in opening his case, that I might conclude on the evidence that there was a strong prima facie case against the defendants that they had been dealing in illicit films and indeed that the other requirements relating to the grant of an order set forth in the judgment of the Court of Appeal were met. Walton J. must plainly have so found, otherwise he would not have made the orders and I entirely agree with Walton J. that there is a strong prima facie case in all relevant respects.

The evidence appears to me to establish that the defendants had, or had access to, a very large catalogue of illicit films and were prepared to deal in a very large catalogue of illicit films and it establishes that they either owned or had access to a very large number of so-called masters, which could be used in the making of illicit films, which masters they were prepared to sell for a very substantial sum. The evidence establishes too that they had equipment used in making copies or had access to such equipment and, finally, it establishes that the defendants were in


 

[1982]

 

390

A.C.

Rank Film Ltd. v. Video Information Centre (Ch.D.)

Whitford J.

 

fact prepared to divest themselves of their interest at short notice and had their affairs so arranged as to make this possible.

It is against this background that I turn to the first point in argument, which is the assertion that this being an action to recover a penalty, these orders, being in the nature of orders for discovery or interrogatories, should never have been made. As I am quite clearly of the opinion that this is not an action for the recovery of a penalty, the point appears to me to be a non-starter.

I was referred to a long line of authority starting with Hunnings v. Williamson (1883) 10 Q.B.D. 459, quite undoubtedly an action for the recovery of a penalty and nothing else, and ending with references to Rookes v. Barnard [1964] A.C. 1129 and Broome v. Cassell & Co. Ltd.[1972] A.C. 1027, in which latter cases the nice distinctions between compensatory, aggravated, exemplary, and punitive damages are discussed at some length. There may be cases where it might be difficult to decide whether an award, in the true meaning of the words, was or could be said to be, on the one hand, compensatory or, on the other, punitive, but what is implicit in these words is plain enough.

An action for relief in respect of infringement of copyright does not, in my judgment, become an action for the recovery of a penalty even if the prayer for relief includes not only claims in respect of damages for infringement of copyright and conversion but also a claim for damages pursuant to the provisions of section 17 (3) of the Copyright Act 1956. In Williams v. Settle [1960] 1 W.L.R. 1072, the Court of Appeal had to consider a case in which the plaintiff had started an action in the High Court based upon the supply of a photograph to the press - it being a photograph of a wedding group in which the plaintiff owned the copyright - which photograph included a murdered man, the father-in-law of the plaintiff, to the great distress of the plaintiff and his wife. At some stage the plaintiff applied for the action to be transferred to the county court. It was transferred and, on appeal, the substantial question which arose for consideration in the Court of Appeal was as to the jurisdiction of the county court judge to award the sum of £1,000 by way of damages, which he in fact awarded. In his judgment, Sellers L.J. observes, at p. 1082:

 

"In the present action the judge was clearly justified, in the circumstances in which the defendant, in breach of the plaintiff's copyright, handed these photographs to the press knowing the use to which they were going to be put, in awarding substantial and heavy damages of a punitive nature. The power so to do, quite apart from the ordinary law of the land, is expressly given by statute. By section 17 (3) of the Copyright Act 1956 it is provided: 'Where in an action under this section an infringement of copyright is proved or admitted, and the court, having regard (in addition to all other material considerations) to - (a) the flagrancy of the infringement, and (b) any benefit shown to have accrued to the defendant by reason of the infringement, is satisfied that effective relief would not otherwise be available to the plaintiff, the court, in assessing damages for the infringement, shall have power to award such additional damages by virtue of this subsection as the court may consider


 

[1982]

 

391

A.C.

Rank Film Ltd. v. Video Information Centre (Ch.D.)

Whitford J.

 

appropriate in the circumstances.' It seems that this is not a case where there is any effective relief which could be given. The benefit which can be shown to have accrued to the defendant is meagre, so much so that the judge made some references to the £15 to which exception was taken by the defendant. It is the flagrancy of the infringement which calls for heavy damages, because this was a scandalous matter in the circumstances, which I do not propose to elaborate and about which I do not propose to express a view. It is sufficient to say that it was a flagrant infringement of the right of the plaintiff, and it was scandalous conduct and in total disregard not only of the legal rights of the plaintiff regarding copyright but of his feelings and his sense of family dignity and pride. It was an intrusion into his life, deeper and graver than an intrusion into a man's property."

 

It appears to me that Sellers L.J., although he speaks of "substantial and heavy damages of a punitive nature," considered the award as being an award made to compensate the plaintiff for the injury that had been done to his feelings and his sense of family pride.

Willmer L.J., having dealt with the question of jurisdiction which he describes as a substantial question, speaks of the award as being an award of exemplary as opposed to compensatory damages. Shocked by the facts of the case, Harman L.J. observes, at p. 1087: "The new Copyright Act [1956] specifically provides by section 17 (3) that punitive damages may be awarded." Even if that be right, in my judgment, it does not make the action for infringement an action to recover a penalty.

Some doubt has, however, been expressed as to the views of the Court of Appeal in Williams v. Settle that section 17 (3) authorises an award of exemplary or punitive damages. Referring to the views of Lord Devlin in Rookes v. Barnard [1964] A.C. 1129, Lord Kilbrandon said in Broome v. Cassell & Co. Ltd. [1972] A.C. 1027, 1134:

 

"Finally, Lord Devlin, at p. 1225, doubted whether section 17 (3) of the Copyright Act 1956 authorised an award of exemplary damages: in my opinion it did not."

 

In Beloff v. Pressdram Ltd. [1973] R.P.C. 765, Ungoed-Thomas J. observes, in relation to section 17 (3), at p. 788: "Subsection (3) deals with 'additional damages.'" Then he reads the subsection. He continues, at p. 789:

 

"The subsection is directed to providing 'effective relief' for the plaintiff. It is thus directed to purely compensatory damages, so that exemplary or punitive damages are outside its ambit as the plaintiff conceded (in accordance with the opinion of Lord Kilbrandon in Broome v. Cassell & Co. Ltd. [1972] 2 W.L.R. 645, 727: Williams v. Settle [1960] 1 W.L.R. 1072, where damages for breach of copyright were referred to as 'exemplary,' occurred before the distinction was clearly drawn between exemplary and compensatory damages in Rookes v. Barnard [1964] A.C. 1129 and was the subject of criticism by Lord Devlin in that case)."


 

[1982]

 

392

A.C.

Rank Film Ltd. v. Video Information Centre (Ch.D.)

Whitford J.

 

I agree with Ungoed-Thomas J. and, in my judgment, the objection of the defendants under this head fails.

I turn next to the question of self-incrimination. For the defendants Mr. Ross-Munro based himself on a line of authority culminating in In re Westinghouse Electric Corporation Uranium Contract Litigation M.D.L. Docket No. 235 (Nos. 1 and 2) [1978] A.C. 547. I was referred to a passage in the judgment of Lord Denning M.R. in the Court of Appeal, where he observes, at p. 563:

 

"The common law has for centuries held that a person is not bound to answer a question which may render him liable to punishment, penalty or forfeiture."

 

He refers also to the provisions of section 14 of the Civil Evidence Act 1968 relating to the right of a person in any legal proceedings other than criminal proceedings to refuse to answer any question if his answer would tend to expose him to proceedings for a criminal offence under the United Kingdom law; Lord Denning M.R. observes at p. 574:

 

"Note that a witness is only given this protection if he can satisfy the court that there is reasonable ground for it. Lord James of Hereford said so in National Association of Operative Plasterers v. Smithies [1906] A.C. 434, 438. (If the court thinks that he has no reasonable ground but is making it as an excuse - for instance, so as to help or hinder one side or the other - it will overrule his objection and compel him to answer. That was pointed out by Sir George Jessel M.R. in Ex parte Reynolds (1882) 20 Ch.D. 294, 300.) It is for the judge to say whether there is reasonable ground or not. Reasonable ground may appear from the circumstances of the case or from matters put forward by the witness himself. He should not be compelled to go into detail - because that may involve his disclosing the very matter to which he takes objection. But if it appears to the judge that, by being compelled to answer, a witness may be furnishing evidence against himself - which could be used against him in criminal proceedings or in proceedings for a penalty - then his objection should be upheld.

"There is the further point: once it appears that a witness is at risk, then 'great latitude should be allowed to him in judging for himself the effect of any particular question': see Reg. v. Boyes(1861) 1 B. & S. 311, 330. It may only be one link in the chain, or only corroborative of existing material, but still he is not bound to answer if he believes on reasonable grounds that it could be used against him. It is not necessary for him to show that proceedings are likely to be taken against him, or would probably be taken against him. It may be improbable that they will be taken, but nevertheless, if there is some risk of their being taken - a real and appreciable risk - as distinct from a remote or insubstantial risk, then he should not be made to answer or to disclose the documents."

 

The observations of Lord Denning M.R., to which I have just referred, were expressly approved in the House of Lords.

Now it is said that these defendants may be in peril under two


 

[1982]

 

393

A.C.

Rank Film Ltd. v. Video Information Centre (Ch.D.)

Whitford J.

 

heads. First, the answers given may expose them to proceedings under section 21 of the Copyright Act 1956 which is, so far as is material for present purposes, in these terms:

 

"(1) Any person who, at a time when copyright subsists in a work, (a) makes for sale or hire, or (b) sells or lets for hire, or by way of trade offers or exposes for sale or hire, or (c) by way of trade exhibits in public, or (d) imports into the United Kingdom, otherwise than for his private and domestic use, any article which he knows to be an infringing copy of the work, shall be guilty of an offence under this subsection. (2) Any person who, at a time when copyright subsists in a work, distributes, either - (a) for purposes of trade, or (b) for other purposes, but to such an extent as to affect prejudicially the owner of the copyright, articles which he knows to be infringing copies of the work, shall be guilty of an offence under this subsection. (3) Any person who, at a time when copyright subsists in a work, makes or has in his possession a plate, knowing that it is to be used for making infringing copies of the work, shall be guilty of an offence under this subsection."

 

It must at least be arguable that a master, such as we might be here concerned with, will come within the definition of a plate under the Act.

Secondly, it is said that their answers may expose them to proceedings for conspiracy, in that they might establish overt acts, which, by implication, would point to an agreement between them and third parties to commit offences. Under this head it was also submitted that, if the objection is open, it matters not that it may already have been in part waived, a submission which was not controverted on the plaintiffs' side. Mr. Nicholls, for the plaintiffs, however, urged, first, that a claim to privilege based on the possibility of self-incrimination is only a shield against discovery and interrogatories and cannot be prayed in aid where the object of the order is the preservation of property or the order made is ancillary to such an object. He drew attention to the provisions of section 31 of the Theft Act 1968, which provides:

 

"(1) A person shall not be excused, by reason that to do so may incriminate that person or the wife or husband of that person of an offence under this Act - (a) from answering any question put to that person in proceedings for the recovery or administration of any property, for the execution of any trust or for an account of any property or dealings with property; or (b) from complying with any order made in any such proceedings; but no statement or admission made by a person in answering a question put or complying with an order made as aforesaid shall, in proceedings for an offence under this Act, be admissible in evidence against that person or (unless they married after the making of the statement or admission) against the wife or husband of that person. (2) Notwithstanding any enactment to the contrary, where property has been stolen or obtained by fraud or other wrongful means, the title to that or any other property shall not be affected by reason only of the conviction of the offender."


 

[1982]

 

394

A.C.

Rank Film Ltd. v. Video Information Centre (Ch.D.)

Whitford J.

 

Drawing particular attention to the words, "an offence under this Act," Mr. Ross-Munro submitted that, as no comparable provision is found in the Copyright Act 1956, it is plain that, in respect of possible offences under that Act or indeed charges of conspiracy whether under the Criminal Law Act 1977 or to defraud at common law, privilege against possible incrimination is preserved. The manufacture and sale of infringing copies may very well lead to criminal proceedings under the Copyright Act 1956 or, in my judgment, under the Theft Act 1968, having regard to the provisions of section 1 of that Act.

If the possibility of self-incrimination in respect of an offence under the Theft Act 1968 is not to be accepted as an excuse for not answering questions put in civil proceedings for the recovery of property then, in my judgment, the plain intention of Parliament would be frustrated if the defendants in this case can avoid the effect of section 31 by saying that their dealings, apart from potentially, as I think, involving proceedings under the Theft Act 1968, might lead to charges under the Copyright Act 1956 or charges of conspiracy related to either Act.

I would say, so far as this objection is concerned, that it seems a little strange that, although the applications were made ex parte, if the point be a good one it was not taken by a Court of Appeal presided over by Lord Denning M.R. Further than all this, however, it is my view that considering it against the information which the defendants have been ordered to give, mere disclosure of the whereabouts if known of illicit copy films or masters and disclosure of the names of persons, if any, known to be engaged in the production, and so on, of such films, cannot conceivably give good ground for belief that such disclosure will result in self-incrimination. The same goes for disclosure of names of persons who had supplied or offered to supply the defendants. As to the names of persons supplied by the defendants or to whom offers for supply have been made, I am of the opinion that these again are not matters in respect of which there is really any reasonable ground for belief that such a disclosure would tend to incriminate the defendants.

The sixth defendant, Mr. Dawson, has claimed privilege because he says that to the best of his knowledge, information and belief the giving of the information ordered would tend to incriminate him. He has, however, disclosed nothing as to the source of his information or the knowledge he has acquired on which I could make some estimate whether there is any substance in his belief. It does in truth, however - and this I must say - appear from his evidence that he may already be open to the possibility of a charge, though the exact nature of it is a mere matter of speculation.

Mr. Lee, the second defendant, asked to be permitted to decline to provide the information on the basis that it would tend to incriminate him or expose him to a penalty but, for the reasons I have given, I do not think that the defendants are entitled to claim privilege in respect of possible self-incrimination and their objection to the order made by Walton J. under this heading also fails.

So I come to the submission that, even assuming that there is jurisdiction to make these Anton Piller orders, and that the order made by Walton J. is not objectionable - as I have held - upon the ground that


 

[1982]

 

395

A.C.

Rank Film Ltd. v. Video Information Centre (Ch.D.)

Whitford J.

 

it is made in an action to recover a penalty or would involve self-incrimination then, as I have said, it is suggested that the order is too wide. Both Mr. Ross-Munro and Mr. Nicholls relied upon Norwich Pharmacal Co. v. Customs and Excise Commissioners [1974] A.C. 133, as the relevant fountainhead of authority for the purposes of considering this aspect of the matter. I was taken through it three times, once by Mr. Nicholls and twice by Mr. Ross-Munro and I hope that it will not be thought disrespectful either to them or to the opinions of their Lordships if I merely endeavour to summarise what, to my mind, is the plain effect of this case.

It establishes, first, that there is no power in the court to secure discovery of information, however relevant or however potentially useful to one or other of the parties or indeed the court itself, from mere bystanders. It establishes next, however, that once a person, even if innocently, becomes involved in any tortious act, as was the case with the Customs and Excise or, to use some of the expressions to be found in the opinions of their Lordships, is "mixed up" in some transaction touching the subject matter of the dispute or "stands in some relation" to goods whose title is in dispute - and any one of these involvements will suffice - such person can be compelled, inter alia, to disclose names of third parties against whom the plaintiffs may wish to proceed, because justice requires that a third party even if innocent should co-operate in righting any wrong done to the plaintiffs. If innocent parties should give disclosure, I would for my own part consider the obligation upon guilty parties to be no less.

It is not suggested that the orders I have to consider in the light of the order made by the Court of Appeal in E.M.I. Ltd. v. Sarwar [1977] F.S.R. 146 go too far in respect of head (i) of the heads I have above enumerated. So far as the other heads are concerned, on the evidence the relationship in which the defendants stand in this trafficking in illicit copy films is such that they cannot properly, in my judgment, seek to claim as mere bystanders relief from compliance with the Walton J.'s order. The applications to vary must, accordingly, stand dismissed.

 

 

Applications dismissed with costs.

Leave to appeal.

Stay of execution until October 15, 1979.

 

Solicitors: Paul Bond & Co.; Attwater & Liell, Loughton, Clifford-Turner.

 

T. C. C. B.

 

APPEAL from Whitford J.

The first four defendants appealed on the grounds that (1) (a) Walton J. had no jurisdiction to make orders (5) and (6) in that such orders were tantamount to a search warrant, (b) alternatively such orders should not have been made ex parte or with immediate effect, (c) in the further alternative such orders should have informed the defendants that if they reasonably believed that to comply with the


 

[1982]

 

396

A.C.

Rank Film Ltd. v. Video Information Centre (C.A.)

 

 

orders might tend to criminate them or expose them to penalties they were entitled to decline to comply with them, (d) in the further alternative such orders should not have been made in that they might reasonably do real harm to the defendants by compelling them to provide materials that might be used against them in criminal or penal proceedings; (2) Walton J. should not have made order (3) and the additional order of July 5, 1979, ex parte and with immediate effect by way of injunction or at all as such orders were contrary to the practice of the court or alternatively might reasonably be harmful to the defendants by compelling them to provide information that might be used against them in criminal or penal proceedings; (3) Whitford J. misdirected himself in holding that (i) the defendants were not entitled to claim privilege against self-incrimination in relation to orders (3), (4), (6) and the additional order, (ii) alternatively, no disclosure required to be made by the defendants pursuant to such orders might tend to criminate them, (iii) in the further alternative, the defendants were not entitled to claim the privilege in that if prosecuted they might be prosecuted for an offence under the Theft Act 1968; (4) further or in the alternative, Whitford J. misdirected himself in holding that the defendants should be compelled to disclose (i) the names and addresses of all persons who had offered to supply the defendants with illicit copy films or films used or intended to be used for making illicit copy films or who were engaged in the production distribution and sale of illicit copy films or films used or intended to be used for making such copies, and (ii) the whereabouts of all illicit copy films or masters known to the defendants, as such orders should have been limited to instances in which the defendants were either involved or mixed up; and (5) Whitford J. misdirected himself in holding that the action was not a penal action, and accordingly, as the orders sought were in the nature of orders for discovery or interrogatories the court had no jurisdiction to make them or alternatively the making of such orders was contrary to the practice of the court.

 

Colin Ross-Munro Q.C. and Daniel Serota for the first, second, third and fourth defendants. The defendants challenge the court's jurisdiction to order them to allow the plaintiffs' representatives to enter the defendants' premises for the purpose of seizing infringing copies of films and other material. Support in past authorities for such a jurisdiction is fairly meagre until one reaches the modern case of E.M.I. Ltd. v. Pandit[1975] 1 W.L.R. 302.

In United Company of Merchants of England, trading to the East Indies v. Kynaston (1821) 3 Bli. 153 the court permitted inspection on an inter partes application. Hennessy v. Bohmann, Osborne & Co. [1877] W.N. 14 seems to be the first case where such an order was made ex parte but was wrongly decided and in any event extends to inspection only. In Fowler v. Lewy (1875) 1 Char.Cham.Cas. 14 Wayne J. seemed to be of the opinion that he could not order inspection ex parte. Though Morris v. Howell (1888) 22 L.R.Ir. 77 was an ex parte case inspection was being sought under the Rules of Court, not inherent jurisdiction.

E.M.I. Ltd. v. Pandit [1975] 1 W.L.R. 302 and Anton Piller KG v.


 

[1982]

 

397

A.C.

Rank Film Ltd. v. Video Information Centre (C.A.)

 

 

Manufacturing Processes Ltd. [1976] Ch. 55 though assuming jurisdiction to make orders ex parte to enter premises and seize samples did not deal with the greater powers assumed in making the present order. The last authority on jurisdiction, E.M.I. Ltd. v. Sarwar [1977] F.S.R. 146, extended Anton Piller in that the order required disclosure of the names and addresses of suppliers.

The most alarming aspect of Anton Piller orders can be demonstrated by comparing them with search warrants. Armed with a search warrant the police can break the door down if refused admittance whereas with an Anton Piller order one has to go back to the court, but, that apart, powers under Anton Piller orders are infinitely greater. A defendant can be restrained from disclosing matters to third parties, for example, and it is a serious matter for a man to have his house searched forcibly. It seems wrong for such wide powers to be exercisable ex parte.

Turning to the even wider aspect of the present order, the court should not have power to order ex parte or even inter partes that the defendants should disclose the whereabouts of films which they have had nothing to do with. They should not be made to reveal the names and addresses of persons with whom they have never had any dealings, that is, with whom they have not been "actively concerned": see Norwich Pharmacal Co. v. Customs and Excise Commissioners [1974] A.C. 133, 178, 188, 203, 206.

The orders which required the defendants to give immediate discovery of documents and to make immediate answers to interrogatories are also challenged on the basis of the privilege against self-incrimination. If the defendants refused to obey those orders they would be in contempt of court and liable to committal. They were, therefore, deprived of their right, or of the practical opportunity to consider and exercise their right, to decline to give discovery or to answer interrogatories if by doing so they might incriminate themselves. [Reference was made to In re Westinghouse Electric Corporation Uranium Contract Litigation M.D.L. Docket No. 235 (No. 2) [1978] A.C. 547.]

The offences with which the defendants might be charged are the common law offence of conspiracy to defraud: see Reg. v. Scott [1975] A.C. 819, offences under section 21 of the Copyright Act 1956 and conspiracy to contravene the Copyright Act 1956. So long as there is a real risk of self-incrimination of such charges the defendants have the right to be privileged from disclosing the information. The Theft Act 1968, section 31, cannot affect that because the defendants are not relying on any offences under that Act in claiming privilege. It simply provides a very limited exception to the general common law rule against self-incrimination. No offences under the Theft Act arise as copyright is not capable of being stolen and it is not necessary to strain the provisions of that Act since the offences already outlined are available. "Borrowing" a film to tape it is not theft: see Oxford v. Moss[1979] Crim.L.R. 119; Smith, The Law of Theft, 4th ed. (1979), para. 101 and Griew, The Theft Acts 1968 and 1978, 3rd ed. (1978), p. 39.


 

[1982]

 

398

A.C.

Rank Film Ltd. v. Video Information Centre (C.A.)

 

 

[Reference was made to Triplex Safety Glass Co. Ltd. v. Lancegaye Safety Glass (1934) Ltd. [1939] 2 K.B. 395.]

As a rule of practice where a witness or party is in danger of incriminating himself the judge will warn him that he has the privilege of refusing to answer. In all Anton Piller order cases it will be highly probable that the defendant is guilty of offences under the Copyright Act 1956 and the judge will have considerable material before him on the ex parte application. If the judge has pretty clear evidence that in answering interrogatories or disclosing information there is a real risk that a defendant would tend to incriminate himself the order ought not to be made ex parte. Failing that, at the very least a warning ought to be put into the order.

The privilege exists and it must be upheld until Parliament decides to change it. [Reference was made to Reg. v. Garbett (1847) 2 Car. & Kir. 474.] It is no answer to say that information obtained under an Anton Piller order cannot be used in any other proceedings because one cannot control the prosecution of offences. It is not open to the court to extend the statutory exception in the Theft Act 1968 to copyright offences. [Reference was made to the Civil Evidence Act 1968, section 14 (1).]

It is further argued that the judge should not have made the orders for discovery or interrogatories because the plaintiffs' action is penal in that it sought exemplary or aggravated or additional damages. Such damages have been regarded as akin to a fine: see Colne Valley Water Co. v. Watford and St. Albans Gas Co. [1948] 1 K.B. 500, 504-505; Broome v. Cassell & Co. Ltd. [1972] A.C. 1027, 1073, 1086, 1100 and Williams v. Settle [1960] 1 W.L.R. 1072.

Donald Nicholls Q.C., Hugh Laddie and D. J. T. Kitchin for the plaintiffs. [In relation to jurisdiction reference was made to the Torts (Interference with Goods) Act 1977, sections 2 and 4; Acrow (Automation) Ltd. v. Rex Chainbelt Inc. [1971] 1 W.L.R. 1676, 1682; Norwich Pharmacal Co. v. Customs and Excise Commissioners [1974] A.C. 133 and R.S.C., Ords. 29 and 8, r. 2.]

On the question of whether the order was too wide, in the Norwich Pharmacal case it was a wholly innocent party who was required to give information, which is very far removed from the case where the involvement is not innocent. There can, therefore, be no justification for limiting the information a film pirate should be required to give concerning what he knows about the trade and no compelling reason he can advance why he should not do so. It is inappropriate to inquire whether the case falls within the test applied to an innocent party in Norwich Pharmacalwhen one is dealing with knowledge which the defendants have come by in the course of defrauding the plaintiffs. The wording of any particular order is a matter of discretion.

It was submitted that the plaintiffs' action was for recovery of a penalty. That is clearly wrong. Adams v. Batley (1887) 18 Q.B.D. 625, 626, 629, provides the locus classicus as to the criteria to be employed in deciding which side of the line a case falls. The plaintiffs' claim is all under the head of infringement of copyright and the only additional exemplary damages they can get are under the Act itself and it has been


 

[1982]

 

399

A.C.

Rank Film Ltd. v. Video Information Centre (C.A.)

 

 

decided that such damages are not punitive. It is not the law that if one claims exemplary damages one cannot get discovery. [Reference was made to Rookes v. Barnard [1964] A.C. 1129, 1225; Broome v. Cassell & Co. Ltd. [1972] A.C. 1027, 1134 and Beloff v. Pressdram Ltd. [1973] R.P.C. 765, 767-768, 788-790.]

The privilege against self-incrimination is judge made and throughout the centuries judges have been most pragmatic in applying it and exceptions have arisen. The privilege has no application outside orders for discovery and interrogatories or answers in evidence. It is not an answer to a claim for delivery up of the plaintiff's property, and the position is the same where an order is aimed at preserving infringing copies pending inspection and trial. If the privilege is available on orders for discovery, production and answering questions, all of which could be used as evidence at trial, it would preclude such things as discovery in a copyright action.

The Anton Piller procedure has proved very efficacious and there is no evidence to suggest that the present formula has led to any misuse. In nearly all, if not all, cases where the evidence would justify an Anton Piller order a criminal offence is likely to have been committed.

The essence of the privilege lies in the use which might be made of answers or documents. Where discovery is ordered in an action there is an implied obligation on the party receiving discovery not to use documents disclosed, without leave of the court, for any purpose other than the proper conduct of that action: see Riddick v. Thames Board Mills Ltd. [1977] Q.B. 881, 896. That point was not taken in Triplex Safety Glass Co. Ltd. v. Lancegaye Safety Glass (1934) Ltd. [1939] 2 K.B. 395. The privilege developed when there was no obligation limiting the use of documents discovered. Since 1885 there has been no privilege against discovery when self-incrimination would be of a penalty and not a crime since the document would not tend to incriminate as it could not be used against the defendant. The obligation not to use documents compulsorily discovered in civil proceedings would prevent their use in criminal proceedings.

The 19th century cases show that in the absence of an undertaking to the contrary discovered documents could be used for any purpose and that such an undertaking was not automatic though the practice of giving an undertaking did evolve around the middle of the century: see Richardson v. Hastings (1844) 7 Beav. 354, 356; Tagg v. South Devon Railway Co. (1849) 12 Beav. 151; Williams v. Prince of Wales Life, Etc. Co. (1857) 23 Beav. 338, 340; Reynolds v. Godlee (1858) 4 K. & J. 88, 91-92; Hopkinson v. Lord Burghley (1867) L.R. 2 Ch.App. 447, 448 and Bray on Discovery, 1st ed. (1885), p. 238.

By 1948 the limitation on the use that could be made of discovered documents had become so accepted that in Alterskye v. Scott [1948] 1 All E.R. 469 Jenkins J. refused to insist on an undertaking being given by the plaintiff because sufficient protection was provided by the implied obligation not to misuse disclosed documents.

In the very recent case of Halcon International Inc. v. Shell Transport and Trading Co. [1979] R.P.C. 97 where two actions were proceeding, one in the Netherlands and one in England, it was held that the plaintiffs


 

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could not use documents discovered in the English action in the Dutch courts.

It is accepted that if the present submission is right the Triplex case [1939] 2 K.B. 395, 404 ought to be the other way round, but, although binding as to what it decided, the present point was never taken and so it is not binding in that respect.

Section 14 of the Civil Evidence Act 1968 recognises the existence of the privilege against self-incrimination but is not a statutory codification and has not operated to put the judge-made principle into a strait jacket. There are lots of exceptions to the privilege and plainly section 14 was not intended to make any difference in circumstances to which it makes no reference.

It follows from the foregoing argument that in ordinary domestic civil litigation in which recovery of a penalty is not being sought there will be no occasion in practice in which documents or information disclosed could be used to found or further a criminal prosecution. Therefore, a defendant to a civil action cannot refuse discovery or to answer interrogatories on the ground that he would tend to incriminate himself.

If that broad approach is unacceptable to the court, there is a narrower, though less satisfactory, approach. There exists a motley collection of exceptions to the privilege against self-incrimination which defies the extraction of any consistent logical principle, but which has arisen because of the courts' refusal to allow the privilege to be used where it would be contrary to common sense and justice. It is open to the court to decide that in the particular circumstances of the present case the availability of the privilege should be refused the defendants.

In Rice v. Gordon (1843) 13 Sim. 580 the court refused to allow the privilege to be claimed because it would have been an inducement to commit perjury. Exposure to common law conspiracy was another reason for not allowing the privilege: see Mayor, Commonalty and Citizens of London v. Levy (1803) 8 Ves.Jun. 398; Attorney-General v. Daly (1833) Hayes & Jo. 379; Attorney-General v. Conroy (1838) 2 Jo.Ex.Ir. 791; Chadwick v. Chadwick (1852) 22 L.J.Ch. 329 and Bray on Discovery,1st ed., p. 340.

When a plaintiff sought to recover under a brokers' agreement, exposing the defendant to the imposition of a penalty or criminal sanction did not prevent discovery on the basis that by his own acts the defendant had put himself outside the privilege: see Robinson v. Kitchin (1856) 8 De G.M. & G. 88 and Green v. Weaver (1827) 1 Sim. 404.

Discovery could not be resisted on the grounds that the defendant might be exposed to penalties and forfeiture under the statute against settlements in fraud of creditors: see Bunn v. Bunn (1864) 4 De G.J. & Sm. 316.

The courts have striven to find ways of not allowing the privilege to be used so as to defeat just claims and to ensure that it is not allowed to overshadow the primary purpose for which an Act has been passed simply because a defendant might be exposed to prosecution for an offence under the Act. When a statute creates a code of civil rights and makes an ancillary provision that certain infringements of those rights shall also be


 

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a criminal offence, Parliament is not to be presumed to have intended the presence of those ancillary provisions to be used to deprive a plaintiff of his civil law remedies under the statute.

The Copyright Act 1956 is essentially and primarily an Act creating civil rights in contrast to an Act, such as the Theft Act 1968, which is concerned with criminal law and where an express provision in regard to discovery or incriminating questions is to be expected. It would be extraordinary if, where the charge faced by defendants is the more serious one of theft, plaintiffs would be entitled to discovery whereas, if the charge is a lesser offence under the Copyright Act, they would not.

The defendants would be guilty of the theft of every infringing copy they sold because there would be a dishonest appropriation by them of property belonging to another: see the Theft Act 1968, sections 1, 3, 5 and the Copyright Act 1956, section 18 (1).

Of the offences with which the defendants fear they might be charged, the offences under section 21 of the Copyright Act 1956 are answered by the submissions on legislative intent and the way the courts have approached the use of the privilege. That must also cover the offence of conspiracy to commit offences under the Copyright Act because the position can be no different in relation to a charge of conspiracy than it would be in relation to the substantive offence. [Reference was made to the Criminal Law Act 1977, sections 3 and 5 (1).] Persons should not be charged with conspiracy to defraud at common law where their obvious purpose was to commit some other, substantive offence: see Reg. v. Duncalf [1979] 1 W.L.R. 918, 923. Accordingly, in civil proceedings where an individual is sued in his own right in respect of wrongful infringements of property interests it is no answer to discovery or interrogatories to say that the information might disclose a conspiracy. The remedies under the Copyright Act should not be allowed to be frustrated.

Laddie following. The privilege against self-incrimination is a shield, not a sword: a defendant has no right to defeat the plaintiff's claim. The privilege is not a right to prevent a defendant from being incriminated as a result of civil proceedings; it is only a right that he should not incriminate himself. Nor is it a rule of discovery. It is a rule of general application to all legal proceedings and can, therefore, be used at any stage during proceedings. In the early days when the results of discovery or interrogatories were expected to be freely used the privilege could and normally would be taken at the discovery or interrogatory stage.

The privilege is just as forceful now as it was 300 years ago. But, as a shield, it should be used, as far as possible, so that it has the least impact on the administration of civil justice. Because the procedure of the courts is now more sophisticated and flexible it is possible to allow a defendant to use the privilege as some shield without destroying civil rights and causes of action, by (i) application of the implied obligation not to use information disclosed for any other purpose and (ii) the defendant's exercising his right to ask the court to hear his evidence in camera: see Reg. v. Scott [1975] A.C. 819.

So, the privilege remains in force but may now be exercised in a


 

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different and less harmful manner, its only purpose being to prevent a defendant from being convicted of an offence out of his own mouth.

Ross-Munro Q.C. in reply. On the plaintiffs' broader submission, the authorities which culminate in Riddick v. Thames Board Mills Ltd. [1977] Q.B. 881 merely lay down the foundation of a principle that where a party has received information on discovery in one civil action he will not be permitted to make improper use of it in a second civil action to which he is a party. That leaves quite untouched the vital point as to whether prosecuting authorities can be restrained from using such information. It is clear that they have an overriding duty to prosecute if there is a reasonable prima facie case that a crime has been committed and so long as evidence is relevant they can use it even if it was obtained in breach of privilege. It does not matter how the prosecution get possession of evidence: the only test is relevance. [Reference was made to Riddick v. Thames Board Mills Ltd. [1977] Q.B. 881, 902; Butler v. Board of Trade [1971] Ch. 680; Initial Services Ltd. v. Putterill [1968] 1 Q.B. 396, 405; Malone v. Metropolitan Police Commissioner [1979] Ch. 344, 361 et seq.; Reg. v. Tompkins (1977) 67 Cr.App.R. 181, 183; Reg. v. Sang [1980] A.C. 402; Frank Truman Export Ltd. v. Metropolitan Police Commissioner [1977] Q.B. 952, 965 and Calcraft v. Guest [1898] 1 Q.B. 759.]

Information could be used in criminal proceedings in the following circumstances: (a) where a plaintiff is entitled to hand over to the prosecuting authorities a document if it discloses a reasonable case that a crime has been committed; (b) where the police take secondary evidence themselves; (c) where the police obtain documents by subpoena; and (d) where the police use the information to set up their own inquiries. In deciding the present appeal, therefore, the court should exercise a certain amount of caution.

Some of the cases since 1875 when the privilege has been successfully claimed are Lamb v. Munster (1882) 10 Q.B.D. 110; Redfern v. Redfern[1891] P. 139; Sitwell v. Sun Engraving Co. Ltd. [1937] 4 All E.R. 366, 369, 370; Triplex Safety Glass Co. Ltd. v. Lancegaye Safety Glass (1934) Ltd. [1939] 2 K.B. 395; Blunt v. Park Lane Hotel Ltd. [1942] 2 K.B. 253; A. v. A. and H. [1962] P. 196, 198-202; Comet Products U.K. Ltd. v. Hawkex Plastics Ltd. [1971] 2 Q.B. 67 and the Westinghouse Uranium Contract case [1978] A.C. 547. This court is probably bound by the Triplex case [1939] 2 K.B. 395 even though a different argument was advanced: see Morelle Ltd. v. Wakeling [1955] 2 Q.B. 379. If the plaintiffs' broad submission is right, du Parcq L.J., at p. 403 in Triplexwas wrong and the rule has been practically swallowed up.

Turning to the statutory provisions affecting the privilege, one has to look at section 14 of the Civil Evidence Act 1968 against the background that the privilege against self-incrimination has been known to the law for centuries. Given that and the enormous width of the plaintiffs' broad submission, it would be most unlikely that if that submission was right the legislature would have used the words they did in 1968. There would have been no need for section 14. Similarly, section 31 of the Theft Act 1968 would be superfluous.


 

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On their narrower approach the plaintiffs cited a series of 19th century cases which can be taken in two groups. First are Mayor, Commonalty and Citizens of London v. Levy, 8 Ves.Jun. 398; Rice v. Gordon, 13 Sim. 580; Attorney-General v. Daly, Hayes & Jo. 379 and Attorney-General v. Conroy, 2 Jo.Ex.Ir. 791 which are of little use since they came before Reg. v. Garbett, 2 Car. & Kir. 474. Until that case in 1847, though the privilege against self-incrimination was well established, the exceptions were so strange that it was impossible to gather any principle in relation to them. It is probably due to that confusion that 15 judges sat to hear Reg. v. Garbett.

In the second group Chadwick v. Chadwick, 22 L.J.Ch. 329, was wrongly decided and Garbett was not cited, and in any case the rationale of the judgment in Chadwick was that the sole object of the suit was to convict the defendant for penalty: see p. 331. Green v. Weaver, 1 Sim. 404, was before Garbett, 2 Car. & Kir. 474, and was probably wrongly decided. Robinson v. Kitchin, 8 De G.M. & G. 88 in which Garbett was not cited was also probably wrongly decided. Whereas Short v. Mercier (1851) 3 Mac. & G. 205, in which both Reg. v. Garbett, 2 Car. & Kir. 474, and Green v. Weaver, 1 Sim. 404, were cited, came down on the side of Garbett.

On the question of the various criminal charges feared by the defendants, their acts do not constitute theft, but if they did, there would be conspiracy to steal as well which is not an offence under the Theft Act 1968: see section 5 of the Criminal Law Act 1977. As for the offences under the Copyright Act 1956, if the privilege against self-incrimination should not be available in relation thereto, nothing would have been simpler than for the legislature to have inserted a provision to that effect. So long as there is nothing in the Act, expressly or impliedly, depriving a defendant of the privilege he must be able to rely on it.

Reg. v. Duncalf [1979] 1 W.L.R. 918, 923 does not lay down any binding rule for prosecuting authorities. Otherwise, they could only bring a charge of conspiracy to contravene section 21 of the Copyright Act 1956 whereas in a serious case they would put in a count of conspiracy to defraud with its correspondingly higher sentence.

 

 

Cur. adv. vult.

 

February 15, 1980. The following judgments were read.

 

LORD DENNING M.R. "It is, it is a glorious thing, to be a Pirate King," said W. S. Gilbert: but he was speaking of ship pirates. Today we speak of film pirates. It is not a glorious thing to be, but it is a good thing to be in for making money. Film pirates plunder the best and most recent cinema films. They transpose them on to magnetic tape: and then sell video cassettes on the black market.

A film pirate works like this. He gets hold of a technician in a cinema or in a ship or an aircraft - any place where cinematograph films are projected on to a screen. The pirate then bribes the technician. He pays him, say, £100. The technician then "borrows" a film for a night. It is simple enough. Instead of putting the film into


 

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the cupboard, as he should, he puts it into his own case. He hands the celluloid film to the pirate. Overnight the pirate takes the film to his "laboratory." He has there a machine for transferring the film from celluloid on to magnetic tape. It only takes an hour or so. Next morning the pirate returns the film to the technician. He puts it into the cupboard. No one is any the wiser. The pirate has during the night made a "master tape." He uses it for making video cassettes. He then sells these cassettes on the black market. There are many buyers available. A lot of people nowadays have video cassette recorders. Universities have them. Hotels have them. Private homes have them. They can use the cassette so as to reproduce the film when they like or wherever they like.

This black market makes huge inroads into the legitimate business of the film companies. They have been put to great expense in producing the best films: they have the copyright which gives them the sole and exclusive right to reproduce them. Yet here are the pirates plundering it - stealing all the best films.

By far the biggest buyers come from the Middle East and Africa. The newspapers have drawn attention to it. In the "Evening Standard" of April 17, 1979, there appeared an article with the headline:

 

"London's £1m video pirates"

 

"One world-beating success that is not likely to feature in the trade figures is the emergence of London as the international centre for a black market in video cassettes.

"Trade in these recordings, made without payment of copyright, and carried on through a network of London box numbers, is estimated to be worth up to £1,000,000 a year.

"Crates full of pre-recorded cassettes are being shipped out of London to the Middle East ...

"The recent emergence of London as a world centre is due to the large number of Middle Eastern and African travellers who meet here, and who have an insatiable appetite for an alternative to the poor quality programmes put out by their own television networks."

 

The pirates have good salesmen about. For instance, in February 1979 an executive of a film company was in Iran. He stayed a night in a hotel in Kuwait. Someone came up to him and said:

 

"Are you going to London? Here is a list of films which you can buy on video cassettes in London. Call the telephone number 937-0555 and ask for Ms Sue. The price of the tape will be £50 per hour running time."

 

The film companies followed up that clue and others. Eventually they discovered the "laboratory" where a pirate used to transpose the celluloid films on to magnetic tape. It was in a house in a suburb of London - half-an-hour out on the Underground. No. 66 Goldings Road, Loughton, Essex. It was a three-bedroomed house in a suburban street. It was occupied by a Mr. and Mrs. Dawson who carried


 

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on a company under the name of Videochord Ltd. In a back room on the ground floor they had an expensive machine called the Rank Cintel Flying Spot Scanner Mark III. It cost £50,000. In the house they found also much other equipment including 20 video recorders. They found a library of 400 films.

On April 23, 1979, the police entered the house pursuant to a search warrant. They found Mrs. Dawson actually using the machine so as to transpose films on to tape. The police took Mr. and Mrs. Dawson into custody. They were detained overnight, but next morning were released on bail. The case is being considered by the Director of Public Prosecutions.

The film companies, in a separate inquiry, discovered the selling organisation. It was a selling place in a shopping arcade in Kensington. It is at 49-53, Kensington High Street. There is a glass booth on the ground floor. Here they found "Mike" Lee and "Sue" Gomberg. Those two carry on under the name of the Video Information Centre. "Mike" Lee puts on the trappings of a substantial business. To impress his customers, he drives a Rolls Royce motor car. They do business in video cassettes. They have a catalogue of some 600 feature films - video-piracy - and a further catalogue of pornographic films - video-porn. Incidentally, video-porn is a big industry in itself as we have just learned in a case brought by Mr. Blackburn. They sell the video-pirate cassettes at £50 a running hour. They tell customers that they have a laboratory in Essex where they have to get the films. They are quite frank with their customers. They warn them that the supply of the films may be a breach of copyright and may possibly lead to conspiracy: but it is worth the risk. They said as much to a solicitor, Mr. Perkins, a partner in Clifford-Turner. On Monday, April 23, 1979, they agreed to sell him three films - "Julia" for £100, "Animal House" for £100 and "The Boys from Brazil" for £150, making £350 altogether. He paid a deposit of £150 in cash. "Mike" Lee said he would obtain the films from his "laboratory" that evening and let him have them the following day. There was some delay (no doubt because of the police visit to 66, Goldings Road, Loughton). "Mike" apologised to the solicitor for the delay. He said: "Things have been getting rather warm." But "Mike" did deliver the three video cassettes on May 2, 1979. They were clearly obtained illegally. The copyright in the films belonged to the film companies: and they have never given any permission for the films to be copied or put on to video cassettes.

Such is the outline. The affidavits give the story in much more detail. But the evidence is quite sufficient to warrant the inference that here there was a conspiracy to defraud at common law - that still exists: see section 5(2) of the Criminal Law Act 1977 - and that those concerned were engaged in offences of making and selling infringing copies contrary to section 21 of the Copyright Act 1956.

But the criminal law does not provide an adequate remedy for the film companies. The Committee to consider the Law on Copyright and Designs (1966) (Cmnd. 6732), presided over by Whitford J., reported


 

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that "... the criminal provisions are of little use and little used": see paragraph 708. The criminal law is too slow and the penalties too small. Section 21 creates only a summary offence: and the penalties ave not been increased by the legislature. (The offence is regarded so lightly that it was not included when other penalties were increased by section 30 of the Criminal Law Act 1977.) The fine for an offence under the Copyright Act 1956 is still only £50. That is a small price for a film pirate to pay. He can look upon it as one of the incidental expenses of his trade. In any case it is very difficult to catch the real people behind this illicit traffic. As a rule the only people who can be caught are small traders in back streets. They may sell video cassettes to an inquiry agent who gives a "trap" order. But as soon as legal proceedings are in the offing, the stock of the street trader disappears. He protests his innocence, saying that he had no knowledge that there was any infringement of copyright.

So in waging this war against this crime, the film companies have had recourse to the civil courts: and especially to the Chancery Division of the High Court. They sought the advice of counsel, Mr. Laddie, and he suggested that they should apply for an ex parte order - before the defendant was served with the writ - so as to take the trader by surprise before he got rid of his stock and any incriminating documents. The first such application came up for close consideration by Templeman J. in E.M.I. Ltd. v. Pandit [1975] 1 W.L.R. 302. His judgment set a most valuable initiative. It was followed by this court in Anton Piller KG v. Manufacturing Processes Ltd. [1976] Ch. 55 and extended in E.M.I. Ltd. v. Sarwar [1977] F.S.R. 146. Those cases were heard ex parte. In this case we have heard both sides. As a result, I think that we should affirm those decisions and also those that have followed them. It is an innovation which has proved its worth time and time again. So long as the evidence is strong enough, it is now commonplace for orders to be made against a householder ex parte, not only to restrain him from making or distributing infringing copies, but also so as to require him to permit his premises to be searched, and to require the infringing copies to be produced, also the invoices and documents disclosed, and furthermore for him to give the names and addresses of makers who supply him. In nearly every case the householder complies with the order. He raises no objection. He could object, if he wished to do so, but this is at the risk of proceedings being taken against him for contempt. Rather than take the risk, he complies with the order.

So much being settled, most of the discussion before us turned on a new point which has not been raised before. It concerns privilege against self-incrimination. The order against the defendants in this case required them to answer interrogatories and to give discovery of documents. These were framed so as to require the defendants to disclose: (i) the names and addresses of those who supplied them with illicit films or offered to supply them. (ii) The names and addresses of the customers who took illicit films from the defendants. (iii) All invoices, letters and other documents relating to illicit films received or sent out by the defendants. (iv) The whereabouts of all illicit copy


 

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films or masters known to the defendants. The defendants took objection to giving that discovery. "Mike" Lee in his affidavit claimed privilege from self-incrimination. He said:

 

"I now refer to that part of the order that orders me to make available on oath certain information to the plaintiffs and to make discovery of certain documents to the plaintiffs. I would wish, if I am so permitted, to decline to provide such information and discovery on the basis that it would tend to criminate me or to expose me to a penalty."

 

This privilege has never been claimed before in any action for infringement of copyright. If it exists, it will apply not only in Anton Piller cases but in all cases of infringement of copyright, even where an order is made inter partes for discovery. So the point is of much importance.

 

The wider submission

 

First, Mr. Nicholls submits that the old privilege against self-incrimination is out of date. He says that it is out-moded by the decision of this court in Riddick v. Thames Board Mills Ltd. [1977] 1 Q.B. 881. It was there held that, where a party is compelled by law to give discovery in a civil action, the documents or answers can only be used for the purposes of that action. The courts will not allow the other party - or anyone else - to use the documents or answers for any ulterior or alien purpose. In particular not in any criminal charge against him.

Applying this principle, Mr. Nicholls submits that there is no risk to a party in giving discovery in obedience to an order of the court. The documents or answers cannot be used to incriminate him. He has nothing to fear. So he should be made to answer.

I would like to accept this wider submission. But I do not feel able to do so. The privilege against self-incrimination is so deeply imbedded in our law that it cannot be uprooted. The common law was stated with the authority of all the 12 judges in 1847 in Reg. v. Garbett (1847) 2 Car. & Kir. 474: and the courts of equity did the same, it being declared emphatically by Lord Eldon L.C. in Paxton v. Douglas (1812) 19 Ves. 225, 226. It has been treated as a settled principle both by Parliament in section 14 of the Civil Evidence Act 1968 and by me in In re Westinghouse Electric Corpn. Uranium Contract Litigation M.D.L. Docket No. 235 (No. 2) [1978] A.C. 547, 563-564 and approved in the House of Lords by Lord Wilberforce at p. 612, Viscount Dilhorne at p. 627 and Lord Fraser at p. 647. So much so that I do not think we can accept the wider submission of Mr. Nicholls.

 

The narrower submission

 

Second, Mr. Nicholls urged a narrower submission. He said that there were several exceptions to the privilege against self-incrimination: and that this case fell within one or other of them. He derived these exceptions from the classic work of Edward Bray, Bray on Discovery(1885), p. 340, published after equity and law had been fused.


 

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The first exception is in actions for fraud or conspiracy. If the defendant were allowed to avoid discovery by saying that it might expose him to a criminal charge for fraud, perjury or conspiracy, it would mean, in the words of Lord Eldon L.C. in Mayor and Commonalty and Citizens of London v. Levy (1803) 8 Ves.Jun. 398, 403-404:

 

"It would be very difficult to abstract from the apparent grasp of that doctrine nine-tenths of the bills in this court, charging combination and confederacy."

 

So in 1882 where a defendant was charged with fraud, Turner V.-C. rejected his claim of privilege against self-incrimination: see Chadwick v. Chadwick (1852) 22 L.J. Ch. 329, 331.

The second exception is in cases of fraud upon the revenue authorities. Thus in Ireland, where distillers concealed large quantities of spirits so as to evade paying duty on them, they were not allowed to claim privilege against self-incrimination on the ground that "so much public inconvenience would result from a contrary decision": see Attorney-General v. Conroy (1838) 2 Jo. Ex. Ir. 791, 797.

The third example is of fraud by brokers in London who were not acting honestly but were taking a secret benefit for themselves. The plaintiff sought discovery so as to be able to prove the extent of the fraud and so as to assess damages. The brokers sought to rely on a privilege against self-incrimination. It was rejected in Green v. Weaver (1827) 1 Sim. 404 where Hart V.-C. said, at p. 427:

 

"If a court of equity, in this case, protected [the defendant] from the discovery, the plaintiff's proceeding at law must be quite nugatory; for the materials of evidence must necessarily rest, almost exclusively ... in their possession."

 

This was approved by the Lords Justices in Robinson v. Kitchin (1856) 8 De G.M. & G. 88.

The fourth exception was in cases of fraudulent or voluntary conveyances which were avoided by the Statutes of Elizabeth. The Statutes also imposed penalties. The defendants sought to avoid discovery of documents by saying that they would be exposed to penalties. In Bunn v. Bunn (1864) 4 De G.J. & Sm. 316, 317 Knight Bruce L.J. said:

 

"... it is not the rule or practice of this court to allow the provisions of either of the Statutes of Elizabeth ... to be used to prevent discovery."

 

Although Mr. Nicholls said that those exceptions disclosed no recognisable principle, I venture to think they do. They show that the courts - which grant the privilege against self-incrimination - will intervene so as to stop any abuse of it. When a defendant is ordered to answer interrogatories or to disclose documents, the court will allow him the benefit of the privilege against self-incrimination when it is invoked for its legitimate purpose, that is, to save him from having his answer or the documents used against him in a criminal court. But the court will not allow the defendant the benefit of the privilege when


 

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to do so would enable him to take advantage of his own fraud or other wrongdoing so as to defeat the just claims of the plaintiff in a civil suit.

 

Section 31 of the Theft Act 1968

 

Section 31 of the Theft Act 1968 makes a statutory inroad into the privilege against self-incrimination. The policy behind it is explained in the Eighth Report of the Criminal Law Revision Committee on Theft and Related Offences (1966) (Cmnd. 2977), paragraphs 200-205. The material parts of paragraphs 200 and 204 read:

 

"200 ... on balance the public interest requires that persons in possession of property on behalf of others should be compelled to give information about their dealings with the property in order to protect the interests of those entitled to it, notwithstanding that this involves departing from the general rule that a witness need not incriminate himself. But it is thought that in return the making of the disclosure should give a measure of protection in respect of criminal proceedings. ...

"204. The right course in our opinion is to make the statement or admission in the civil proceedings inadmissible in evidence against the maker in the criminal proceedings."

 

In carrying out that policy, the effect of the statute is best explained by taking an ordinary civil action. Suppose an owner of property has been deprived of it in some way or other - by stealth or fraud or merely by it being taken away from him. He brings a civil action for conversion or detinue or an account. The plaintiff should be able to ask questions of a defendant so as to know how the property came to be taken and what has become of it, to what use it has been put and what profit has been made out of it. The defendant should not be able to avoid the question by saying: "If I answer, it may tend to incriminate me. I fear that I may be accused of stealing it or obtaining it by deception, or of false accounting." In fairness to the plaintiff, the defendant should answer the question; but, in fairness to the defendant, the law should ensure that his answer is not to be used against him in any criminal proceedings.

This policy is carried into effect by section 31 of the Theft Act 1968. But it applies in terms only to cases of "an offence under this Act," that is, an offence depriving a man of his "property."

 

By analogy to the statute

 

Suppose now that the defendant says that he fears that he may be charged, not with an offence under the Theft Act 1968, but with conspiracy to defraud the plaintiff of his property. Surely he cannot claim privilege on that account. Section 31 must apply by analogy.

A similar point arises in respect of the definition of "property" in the Theft Act 1968. It covers nearly all kinds of property. But it does not cover the form of industrial property known as copyright. Nevertheless, the policy underlying the Act applies with just as much


 

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force to copyright as it does to other kinds of property. In the circumstances, I think we should, as our forefathers used to do, develop the law by analogy to the statute: see Snell's Principles of Equity, 27th ed. (1973), p. 34. We should hold that, when a plaintiff sues for infringement of copyright, conversion of infringing copies and an account, then in fairness to the plaintiff, the defendant should give discovery: but in fairness to the defendant, his documents or answers should not be admissible in evidence against him in any criminal proceedings - a result which is achieved now by Riddick v. Thames Board Mills Ltd. [1977] Q.B. 881.

So we have by analogy a further exception to the privilege. I would just add that in other forms of industrial property, such as patents, trade marks or passing off, the defendant cannot claim any privilege against self-incrimination: because the infringement is not a criminal offence. Full discovery of names of makers and customers is often ordered: see Saccharin Corporation v. Chemicals and Drugs Co. [1900] 2 Ch. 556 and Osram Lamp Works Ltd. v. Gabriel Lamp Co. [1914] 2 Ch. 129. There is no reason why a privilege against self-incrimination should be available in copyright cases when it is not available in cases involving the other forms of industrial property.

 

Application to this case

 

Here we have the Copyright Act 1956 which gives the maker of a cinematograph film the copyright in it - so that he can restrain anyone else from making a copy of it or showing it and so forth. It gives him the self-same remedies as if he were the owner of the infringing copies. Those remedies are clearly intended by the legislature to be enforced by actions in the civil courts for injunction, conversion, damages and an account. To enforce those remedies, it is absolutely essential for the maker of the film to be able to get discovery from the defendant. The defendant knows what he has been doing - the plaintiff does not. Often enough discovery is necessary for the plaintiff to complete his proof. Invariably it is necessary for him to know the extent of the infringement and the amount of the damage. It is true that Parliament has made the infringement a summary offence under section 21 of the Act. It imposes a nominal fine of £50 for a first offence. But if that provision were allowed to form a ground of privilege, the purpose of Parliament would be frustrated altogether. Every defendant could deprive the plaintiff of his just remedy - simply by claiming the privilege against self-incrimination. I would make the same comment as Hart V.-C. did in Green v. Weaver, 1 Sim. 404, 422:

 

"If this defence is sustainable, the Acts of Parliament ... which were intended for the protection of the trader, will, instead of having that operation, prevent him from detecting the grossest frauds."

 

No doubt in return the defendant should be given something. This is done by Riddick v. Thames Board Mills Ltd. [1977] Q.B. 881: because under that case the documents or answers are inadmissible in criminal proceedings.


 

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When objection is to be taken

 

It is well settled that the plaintiff is not required to anticipate that the defendant will rely on the privilege. It is for the defendant to take the objection in his answer. How does this point affect the Anton Pillerorder? I cannot think it right to refuse the order simply because the defendant might raise the objection. In fairness to the plaintiff the Anton Piller order should issue - leaving the defendant to be protected by the Riddick principle.

 

Triplex Safety Glass Co. Ltd. v. Lancegaye Safety Glass (1934) Ltd.

 

There is only one case to the contrary. It is Triplex Safety Glass Co. Ltd. v. Lancegaye Safety Glass (1934) Ltd. [1939] 2 K.B. 395. I think it should not be followed today. (1) It was a decision by a court of two which is not binding on a court of three. (2) The court was not referred to the long line of cases on exceptions. (3) The Theft Act 1968 has altered the position in regard to offences against property: and this should be extended by analogy to copyright. (4) Now, 40 years after the Triplex case, it would be ridiculous to suggest that there is any possibility of a charge in the criminal courts for libel. That would be mere moonshine. A claim of privilege today would be regarded simply as a means of avoiding answering the interrogatories. That would be manifest abuse - which should not be allowed.

 

Conclusion

 

There is plain evidence here that the defendants have done great wrong to the plaintiffs. They have stolen the plaintiffs' copyright in hundreds of films and have not paid a penny for it. Yet these wrong-doers glory in their wrongdoing. They get legal aid, and supported by it they say that, by reason of their wrongdoing, they have a privilege against self-incrimination. They rub their hands with glee and say to the injured plaintiffs: "You cannot ask us any questions. You cannot see any of our documents. We have a privilege by which we can hold you at bay and tell you nothing. You cannot prove any damages against us - not more than minimal. You cannot get an account of our profits."

To allow wrongdoers to take advantage of their wrongdoing in this way is an affront to justice itself. It is a great disservice to the public interest. It should not be allowed. If this illicit traffic is to be stopped, strong measures are needed. Whitford J. has much experience in cases of this kind. He has made a strong order, and I agree with it. I would dismiss this appeal.

 

BRIDGE L.J. Modern technology has greatly facilitated the pirating of copyright material, especially in the form of sound recordings and films. To give effective relief to the copyright owners seeking to enforce their legal remedies against the pirates the courts have found it necessary to devise a form of order for what may be called instant discovery granted on ex parte application. Such orders are commonly referred to as Anton Piller orders having first been approved in this court in Anton Piller KG v. Manufacturing Processes Ltd. [1976] Ch. 55. The


 

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basis of the court's inherent jurisdiction to make such orders, the scope of the orders and the circumstances in which they can properly be made are there examined. In this appeal, the first where the matter has been argued inter partes, the existence of the jurisdiction has been challenged. Having considered Mr. Ross-Munro's careful argument on that issue, I can see no ground whatever to doubt the correctness of the conclusions reached by the court, when considering the matter ex parte, in the Anton Piller case.

The novel and exceedingly difficult question to which this appeal gives rise is whether a defendant in a copyright action is entitled to claim privilege from giving discovery on the ground that by doing so he would tend to incriminate himself, and if so to what extent the probability of the defendant being entitled to such a privilege should affect the making of an Anton Piller order. It is said on behalf of the defendants that by answering the questions they are required to answer by the disputed parts of the orders under appeal and by giving discovery of documents they would tend to incriminate themselves of (1) offences under section 21 of the Copyright Act 1956, (2) offences of conspiracy to contravene that section, and (3) offences of conspiracy to defraud. The claim to privilege on the ground of self-incrimination is advanced without particularity in an affidavit filed by the second defendant. On behalf of the other defendants it is advanced only through the mouth of counsel. This is unsatisfactory. But it would be even more unsatisfactory to dispose of the matter simply on the ground that the privilege is insufficiently claimed or that there are insufficient grounds for claiming it. Having regard to the course the argument has taken and, more particularly, to the strength of the evidence adduced in support of their case by the plaintiffs, it seems to me only realistic to accept - applying the tests suggested by Lord Denning M.R. in the Westinghouse Uranium Contract case [1978] A.C. 547, 574 - that there is a real and appreciable risk, as distinct from a remote or insubstantial risk, of proceedings being taken against the defendants for one or more of the offences categorised above and that they have reasonable grounds to believe that the material required to be disclosed on discovery would at least provide a link in the chain or be corroborative of existing material which could be used against them.

At the outset it must be recognised that the principle that no man should be compelled to incriminate himself is firmly entrenched in our law. It is expressly recognised and its scope is defined by section 14 of the Civil Evidence Act 1968. It is the subject of some express statutory exceptions of which the most important, for present purposes, is section 31 of the Theft Act 1968. But it is significant that incriminating material which is disclosed pursuant to that exception but which would otherwise be privileged is rendered inadmissible in evidence in criminal proceedings. An emphatic affirmation of the principle is expressed in the following passage from the judgment of the Court of Appeal delivered by du Parcq L.J. in Triplex Safety Glass Co. Ltd. v. Lancegaye Safety Glass (1934) Ltd. [1939] 2 K.B. 395, 403:

 

"The law is well settled. It is a general rule that 'no-one is bound to criminate himself,' in the sense that he is not to be compelled to


 

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say anything which 'may tend to bring him into the peril and possibility of being convicted as a criminal': per Field J. in Lamb v. Munster, 10 Q.B.D. 110, 111. We are here concerned with the rule in its relation to discovery, which Bowen L.J. stated as follows: 'It is one of the inveterate principles of English law that a party cannot be compelled to discover that which, if answered, would tend to subject him to any punishment, penalty, forfeiture, or ecclesiastical censure': Redfern v. Redfern [1891] P. 139, 147. To the rule so stated there is no real exception, so far at least as discovery is concerned, and it is the paramount duty of the court to uphold it."

 

More recently the principle has been again affirmed and applied, albeit in the protection of a witness not a party, in the decisions of this court and the House of Lords in the Westinghouse Uranium Contract case [1978] A.C. 547.

This is the formidable barrier which confronts Mr. Nicholls, for the plaintiffs, and which he has to surmount if he is to sustain the judge's order. He attempts to do so by both a broad and a narrow submission. Mr. Nicholls' broad submission, in reliance on a line of authority culminating in Riddick v. Thames Board Mills Ltd. [1977] (Q.B. 881, can be thus shortly summarised. It is to the effect that the implied restrictions which the law imposes on the use which can be made of material disclosed on discovery in civil proceedings are sufficient to ensure that such material can never be used in any criminal proceedings against the party making discovery. Accordingly, it is said, material disclosed on discovery, no matter what its nature, cannot tend to incriminate and all material is discoverable. I am wholly unconvinced that the premise on which this proposition is based is sound. There are many ways in which incriminating material once disclosed may directly or indirectly lead to or support the prosecution of the party who has been compelled to incriminate himself. But, this apart, Mr. Nicholls' broad submission, if it were right, would have the effect, at a stroke, of abolishing the privilege against self-incrimination in relation to discovery in civil proceedings or, to put the matter in another way, of introducing into the law a general and unlimited exception to the privilege having the same effect as the particular and limited exception provided for by section 31 of the Theft Act 1968. This is, to my mind, a sufficiently startling and revolutionary result to be self-evidently unacceptable.

Mr. Nicholls' narrow submission is advanced in support of a suggested ad hoc exception to the privilege which would cover the circumstances of the present case. He drew our attention to a number of 19th century decisions of English and Irish courts where ad hoc exceptions to the privilege were upheld. The following are the cases referred to, set out in chronological order: Mayor, Commonalty and Citizens of London v. Levy, 8 Ves. 398; Green v. Weaver, 1 Sim. 404; Attorney-General v. Daly (1833) Hayes & Jo. 379; Attorney-General v. Conroy, 2 Jo.Ex.Ir. 791; Rice v. Gordon (1843) 13 Sim. 580; Chadwick v. Chadwick, 22 L.J.Ch. 329; Robinson v. Kitchin, 8 De G.M. & G. 88 and Bunn v. Bunn,4 De G.J. & Sm. 316. I do not refer to these cases in detail for the reason that I found it impossible to derive any significant assistance from them.


 

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The reasoning of the judgments is often terse and difficult to follow. Mr. Nicholls was the first to concede that it was impossible to derive from these cases any coherent underlying principle by which to distinguish the exceptional case where the privilege is not available from the normal case where it is. The furthest one can go is to say that they indicate a willingness on the part of 19th century judges to override the privilege when to allow it would defeat the justice of the case. None of these cases appears to have been followed for over a hundred years. It seems to me very much open to doubt whether the privilege against self-incrimination at the time of these decisions had yet come to be recognised as "one of the inveterate principles of English law" to which Bowen L.J. referred in Redfern v. Redfern[1891] P. 139, 147. Nor is it without significance that the first five of the eight cases referred to were decided before the important decision of 12 judges in Reg. v. Garbett, 2 Car. & Kir. 474 affirming the privilege. In the last three cases listed Garbett'scase was not cited. I regret that I am quite unable to accept an exception to the privilege against self-incrimination based on the principle formulated in the judgment of Lord Denning M.R., ante, pp. 408H-409A:

 

"... the court will not allow the defendant the benefit of the privilege when to do so would enable him to take advantage of his own fraud or other wrongdoing so as to defeat the just claims of the plaintiff in a civil suit."

 

A principle so widely stated, so far from establishing a limited exception to the privilege, could be invoked by a plaintiff seeking discovery from a defendant so as to negate the privilege in every case.

The other aspect of Mr. Nicholls' narrow submission, which has caused me much greater difficulty, is that which seeks to spell out an exception to the privilege against self-incrimination from the provisions of the Copyright Act 1956. He draws our attention in particular to two features in the statute. The first is the striking parallel between the acts defined as constituting infringements by section 16 (2) and (3) which will be the normal basis of a civil action for infringement of copyright, and the acts which amount to summary offences under section 21. It follows from this that in the great majority of civil actions for infringement of copyright proof of the plaintiff's case will involve proof of the commission of offences under section 21 and accordingly when, in such cases, the plaintiff's case is well founded the giving of discovery by the defendant is almost certain to involve elements of self-incrimination. The second feature is that section 21 itself is found in Part III of the Act, which is entitled "Remedies for Infringements of Copyright," and as providing such a remedy in the form of a summary criminal offence is manifestly subordinate and ancillary to the primary remedy by civil action at the suit of the copyright owner in which, as section 17 provides:

 

"... all such relief, by way of damages, injunction, accounts or otherwise, shall be available to the plaintiff as is available in any corresponding proceedings in respect of infringements of other proprietary rights."


 

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Certainly since the Copyright Act 1911, which contained similar features to those noted above in the Act of 1956, it has been, we are told, the invariable practice for defendants in copyright actions to be required to give full discovery and no one has heard before this case of privilege to withhold discovery being claimed on the ground of self-incrimination. Yet if such a claim is available it could operate in many cases, so it is argued, largely to stultify the copyright owner's effective remedy. This would be in startling contrast with the position of others seeking to enforce proprietary rights whose right to obtain discovery notwithstanding its tendency to incriminate is expressly preserved by section 31 of the Theft Act 1968. On the other hand, it is argued that the contrast between the presence of such an express provision in the Theft Act and the absence of any corresponding provision in the Copyright Act may be explained by the consideration that the former is primarily a criminal statute whereas the latter contains only a single incidental provision creating a criminal offence.

These considerations are advanced in support of a formidable argument to the effect that Parliament cannot have intended by the introduction of section 21 into the Copyright Act 1956 to impair the efficacy of the copyright owner's civil remedy and therefore cannot have intended that privilege from giving discovery in a copyright action should be available on the ground of a tendency to incriminate of an offence under section 21 or of any conspiracy of which the commission of offences under section 21 was the essential purpose. In the end, after some vacillation, I find myself unable to accept this argument. To do so would require the court to read into the statute an exception to the privilege against self-incrimination, which, if it were to be appropriately circumscribed, would need to be subject to the same safeguards as are expressed in section 31 of the Theft Act 1968, and it seems to me quite impossible to suppose that Parliament intended to enact such an elaborate provision by mere process of implication. Moreover, in the kind of copyright litigation which was familiar in 1956 I doubt if there was any reason to apprehend that claims by defendants to withhold discovery on the ground of self-incrimination would have been seen as a serious source of embarrassment to plaintiffs. In the ordinary course of litigation such claims might well tend in relation to issues of both liability and damages to recoil on the head of the defendant claiming the privilege. It is only the modern weapon of the Anton Piller order, devised to counter the ingenuity of modern copyright pirates, which is liable to be blunted if the privilege is available. At all events, I am satisfied that if the situation calls for a special exception to the availability of the privilege, that is something which only the legislature, not the courts, can provide.

What then is the effect, in relation to the practice of making Anton Piller orders in copyright cases, of the conclusion that a copyright pirate may be entitled to claim privilege from incriminating himself? Clearly it cannot be to inhibit the making of ex parte orders requiring defendants to permit the immediate search for and seizure of infringing copies. Section 18 of the Copyright Act 1956 gives to the copyright owner proprietary rights in such copies and owners seeking to enforce proprietary


 

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rights whether by final or interlocutory order to recover their own property cannot be defeated by any claim of privilege. But very different considerations apply to those parts of an Anton Piller order which require the person to whom the order is addressed to give forthwith to the person serving the order answers to specified questions and disclosure of relevant documents. It has long been the practice of judges hearing oral evidence to warn witnesses who are in apparent danger of incriminating themselves that they are entitled to claim privilege from self-incrimination. It would not be practicable, in my judgment, to embody an effective warning of that kind in a typical peremptory Anton Pillerorder in such terms as to ensure that the recipient of the order fairly understood his position, what he was required to do and what were the options open to him. It must follow, I think, that the only satisfactory practice will be, when the court invited to make an Anton Piller order can see from the strength of the applicant's evidence that the proposed defendant is in danger of self-incrimination, to abstain from making any order ex parte requiring immediate answers to questions or disclosure of documents. The practical consequence of this view may well be that whenever the evidence in a copyright case is strong enough to justify the making of an Anton Piller order it will also give rise to apprehension of self-incrimination on the part of the defendant so that the ex parte order will effectively have to be limited to authorising the search for and seizure of infringing copies. This may be regrettable but seems to me inevitable.

For these reasons I would allow the appeal to the extent of deleting from the orders under appeal all requirements to answer questions and disclose documents.

 

TEMPLEMAN L.J. The defendants challenge the validity of interlocutory orders made by Walton J. in an action for infringement of copyright. The orders were made ex parte, without prior notice to and in the absence of the defendants. The orders were intended to be served and were served on the defendants without warning and were in large part peremptory, commanding instant obedience. The orders were penal and any breach constituted contempt of court. The defendants were given leave to apply to vary the orders and did so apply to Whitford J. who refused to vary or discharge any of the orders. From that refusal the defendants appeal to this court.

The plaintiffs own and exploit copyright in cinematograph films. The plaintiffs form part of an industry which may spend millions of pounds a in the production and exploitation of a single film. It is alleged, on the basis of convincing evidence adduced before Walton J. and as yet uncontradicted, that the defendants copy and exploit copies of the plaintiffs' films in breach of copyright and that the defendants form part of an industry which can copy and exploit a million pound film for less than £150. The evidence in this case and evidence derived from other cases demonstrate that an action against a dealer in infringing films or records copied in breach of copyright will not adequately protect the property or rights or remedies of the copyright owner if the dealer is


 

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warned of the action and is able to disperse his stock of infringing copies and conceal his suppliers, customers and confederates. The infringing copies disappear, the dealer submits to an injunction, but the infringing copies reappear and are duplicated and remain in circulation in other hands. Effective protection of copyright in these circumstances requires immediate seizure of infringing copies and immediate discovery and interrogatories relating to the supply and sale of infringing copies, otherwise the dealer and his confederates can take untraceable evasive action.

In the present case Walton J. was satisfied on ample evidence that adequate protection of the plaintiffs' property, their rights and their remedies could only be afforded by the orders which he made and which required the defendants to allow the plaintiffs' representatives to enter the defendants' premises and to seize infringing copies of the plaintiffs' films, required the defendants to give immediate discovery of the relevant documents and required the defendants to give immediate answers to interrogatories relating to the supply and sale of infringing copies. In addition the defendants were for the time being forbidden to disclose to third parties information concerning the plaintiffs' proceedings.

On behalf of the defendants Mr. Ross-Munro argued that the court had no jurisdiction to order the defendants to allow the plaintiffs' representatives to enter the defendants' premises for the purpose of seizing infringing copies. If such jurisdiction existed, he argued in the alternative, the court should not in the proper exercise of its discretion make such an order ex parte in a peremptory and penal form. Similarly the orders for discovery and interrogatories and restraining the disclosure of information were oppressive and unfair and there was no jurisdiction or alternatively no proper discretion to make such orders.

We were not referred to any statutory or procedural or authoritative limitation on the power of a court of equity to devise injunctions of different kinds to meet different circumstances. In my judgment, a court of equity has jurisdiction to make mandatory and other peremptory and penal orders at any stage of any proceedings or in contemplation of proceedings where damages will not be an adequate remedy and where rights or properties or remedies claimed by the plaintiff are in jeopardy. Of course an injunction is a discretionary remedy which will only be exercised in such a manner as is necessary to safeguard the plaintiff and after balancing the potential harm to the plaintiff if an effective injunction is withheld against the potential harm to the defendant if the injunction is granted. The court must decide in the light of the evidence whether the plaintiff has established that the injunction sought is necessary and is no more onerous than is necessary to protect the plaintiff. The court must decide whether the interference with the defendant as a result of the injunction and the consequences of such interference are justifiable in the circumstances. The more severe and peremptory the order which is sought, the greater will be the reluctance of the court to exercise its discretion by granting the order. If the defendant is not given notice of the application for an injunction the court will require to be satisfied that secrecy is essential and will require much persuasion that the interference with the defendant is justifiable. Finally, the court


 

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must be satisfied that a penal order is essential to secure compliance and to achieve the legitimate purposes of the injunction.

Copyright in cinematograph films subsists by virtue of section 13 of the Copyright Act 1956. That copyright and ancillary distribution rights are vested in the plaintiffs in respect of their films. By the Act, and in particular by section 13 (5) and section 16 (3), the plaintiffs' copyright is infringed by the unauthorised making of a copy of the plaintiffs' films and by the sale of a copy by a person who knows that the making of that copy constituted an infringement. By section 18 (1) the owner of the copyright is entitled to all such rights and remedies in respect of the conversion or detention by any person of any infringing copy as he would be entitled to if he were the owner of such copy.

The plaintiffs in this action are therefore entitled to assert rights of ownership over infringing copies of their films including the right to possession. The evidence before Walton J. established that failure to secure possession of infringing copies would inflict injury on the plaintiffs for which the remedy of damages against the defendants would be inadequate. The evidence established that the plaintiffs' rights of ownership over the infringing copies could only be exercised and the plaintiffs' copyright and other rights vested in them by the Copyright Act 1956 could only be protected if the court ordered the defendants to allow the plaintiffs' representatives to enter on the defendants' premises and to seize infringing copies. If the stable door cannot be bolted, the horse must be secured. In my judgment, Walton J. had jurisdiction to make and grounds to justify an order requiring the defendants to allow the plaintiffs' representatives to enter and seize infringing copies. There was ample evidence to justify the inference that the order would fail to protect the plaintiffs unless it was both peremptory and penal, and made, served and implemented without prior notice to the defendants. If the horse is liable to be spirited away, notice of an intention to secure the horse will defeat the intention.

Similarly the peremptory and penal orders for discovery and interrogation and the temporary ban on disclosure of information to third parties made by Walton J. were remedies necessary to protect the plaintiffs' property and the plaintiffs' rights and remedies and in the circumstances were amply justifiable.

I therefore reject the argument that Walton J. had no jurisdiction to make or alternatively had no sufficient justification for making the orders which are now challenged in this court.

On behalf of the defendants Mr. Ross-Munro advanced a separate and more formidable objection to those orders which required the defendants to give immediate discovery of documents and to make immediate answers to interrogatories on pain of committal for contempt of court in the event of disobedience. Such orders, it was argued, deprived the defendants of their right or at any rate of the practical opportunity to consider and exercise their right to decline to give discovery or to answer interrogatories if by doing so the defendants might incriminate themselves.

By the common law, summarised by Bowen L.J. in Redfern v. Redfern

 

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[1891] P. 139, 147, impliedly accepted by Parliament in section 16 (1) (a) of the Civil Evidence Act 1968 and reiterated by this court and approved by the House of Lords in the Westinghouse Uranium Contract case [1978] A.C. 547, in any legal proceedings a person, whether a party to the proceedings or not, cannot be compelled to answer any question or produce any document or thing if to do so would tend to expose him to proceedings for an offence.

By section 21 of the Copyright Act 1956 any person who makes for sale or sells or offers for sale any article which he knows to be an infringing copy is guilty of an offence punishable on summary conviction by a fine on first conviction or by a fine or imprisonment in any other case.

Discovery of correspondence between the defendants and third parties relating to infringing copies and answers to interrogatories which require the defendants to identify the suppliers and customers of infringing copies might well provide evidence of the knowledge which is an essential ingredient of an offence under section 21 of the Copyright Act 1956 and expose the defendants to criminal proceedings for an offence under that section or for the offence of conspiring to contravene that section.

Where a person gives oral evidence at the trial of an action and is endangered by a question or a line of questioning which may lead to self-incrimination, the judge reminds or informs the witness that he need not answer. In the normal course of proceedings, a party faced with an order for discovery or interrogatories which may result in self-incrimination has the opportunity to consider and to take legal advice before deciding whether to comply with the order. In any event breach of such an order does not usually involve the danger of committal and it would be improper to compel by a penal provision compliance with an order which could only be obeyed at the risk of self-incrimination.

In the present case the defendants were given no chance, no warning and no opportunity for reflection for reasons which, as I have indicated, were well justified. But those reasons do not justify a penal and peremptory order which could only be obeyed at the risk of self-incrimination. The defendants were confronted with service of a complicated order which included peremptory orders for discovery and interrogation requiring instant obedience and they were informed by the penal notice on the order that disobedience would expose them to penal consequences.

In my judgment, an order ex parte or otherwise for discovery or interrogatories under threat of committal for disobedience should not be made if it is obvious that compliance with the order will involve the danger of self-incrimination. In the present case Mr. Ross-Munro on behalf of the defendants adroitly and properly revelled in the alleged wickedness of his clients. The more criminal their apparent behaviour, the greater their claim to be protected against self-incrimination. While not admitting tort the defendants seek the concealment and silence allowed to crime by the doctrine against self-incrimination.

On behalf of the plaintiffs Mr. Nicholls argued that the right to concealment and right to silence accorded by the doctrine against self-incrimination to a criminal who defends a civil action no longer remain


 

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in full force. Alternatively, in an action for infringement of copyright a defendant could not be allowed to prevent the plaintiff from protecting the rights conferred on the plaintiff by the Copyright Act 1956 by exploiting the privilege of the doctrine against self-incrimination of an offence under section 21 of the same Act.

I can accept neither Mr. Nicholls' wider attack on the doctrine against self-incrimination nor his narrow attack based on the Copyright Act 1956.

So far as the wider attack is concerned, the law binding on this court entitles the defendant in a civil action who is guilty of a criminal offence to conceal the evidence of his guilt and to remain silent notwithstanding that the evidence might be vital to the plaintiff. The right to concealment and silence extends to a defendant who is not guilty of a crime but has been guilty of conduct which invites prosecution. It is unnecessary and impossible to decide at this stage which category applies to the present defendants. It is sufficient that they appear to have indulged in conduct which invites prosecution.

Mr. Nicholls' wider attack on the ambit of the doctrine against self-incrimination is based on the decision and implications of Riddick v. Thames Board Mills Ltd. [1977] Q.B. 881. In that case the principle was established or reaffirmed that a party to litigation who discloses a document on discovery is entitled to the protection of the court against any use of the document otherwise than in and for the purposes of the action. Therefore, it is now argued, the documents and information which may be obtained as a result of orders for discovery and interrogation cannot be made available to prosecuting authorities and will not lead to self-incrimination.

In my judgment, the doctrine against self-incrimination entitles the defendant to concealment and silence. Effective concealment cannot be maintained once discovery has taken place. Any other conclusion would in practice make a mockery of the doctrine against self-incrimination. The doctrine may require reconsideration in the light of modern conditions but has not in my judgment been inadvertently abolished or modified by the decision in Riddick's case to which I have referred.

Mr. Nicholls' narrow attack is based on the argument that the Copyright Act 1956 primarily created civil rights protected by civil actions. Section 21 which made infringement of copyright with knowledge a criminal offence was only intended to provide ancillary protection for the rights created by the Act. Parliament cannot have intended that the enforcement by a copyright owner of his civil rights should be frustrated by the doctrine against self-incrimination of a criminal offence under section 21.

In my judgment the fact that the civil rights and remedies of the plaintiffs for infringement of copyright derive from the same Act which constituted infringement with knowledge a criminal offence is not in itself sufficient to make civil proceedings under the Act an exception to the doctrine against self-incrimination. For the purposes of the doctrine there is no difference between a breach of copyright which constitutes a


 

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statutory tort and may involve a statutory offence and any other conduct which constitutes a tort and may involve the commission of a crime.

The existence and scope of the doctrine against self-incrimination have been recognised by the Theft Act 1968. Section 31 (1) broadly provides that a person shall not be excused from answering any question or complying with any order in proceedings relating to property on the grounds that he might incriminate himself of an offence under that Act but no statement or admission made in compliance with such an order is to be admissible in evidence against that person.

Breach of copyright is not an offence under the Theft Act 1968, therefore section 31 (1) of that Act does not avail the plaintiffs in this case. Parliament has thought fit to make an express exception to the doctrine against self-incrimination limited to offences under the Theft Act 1968 and subject to safeguards with regard to further admissibility. It is implicit in section 31 of the Theft Act 1968 that Parliament recognised that in the absence of an express exception the doctrine against self-incrimination applies. I cannot accept that the Copyright Act 1956 contained an implied exception to the doctrine.

I was attracted to the alternative solution suggested that the court will not allow the defendant the benefit of the privilege of the doctrine against self-incrimination if to do so would enable him to take advantage of his own fraud or other wrongdoing so as to defeat the just claims of the plaintiff in the suit. That solution is founded partly on 19th century authorities and partly on principle.

Mr. Nicholls cited a number of 19th century cases in which discovery or interrogatories were allowed. In Mayor, Commonalty and Citizens of London v. Levy, 8 Ves.Jun. 398 a bill of discovery in an action to recover wool duties was refused because it was not clear from the bill that some of the persons against whom discovery was sought were alleged to be liable for the duties. Lord Eldon L.C. declined to decide that the defendants were entitled to rely on the doctrine against self-incrimination of conspiracy, commenting, at pp. 403-404:

 

"It would be very difficult to abstract from the apparent grasp of that doctrine nine-tenths of the bills in this court, charging combination and confederacy."

 

This cryptic remark is no authority for the proposition that the doctrine does not apply if the result of discovery may disclose evidence of a conspiracy.

Green v. Weaver, 1 Sim. 404 is authority for the proposition that an agent or other person who undertakes a duty to the plaintiff waives the privilege against self-incrimination in respect of discovery relating to the performance of that duty. Hart V.-C. said, at pp. 429-430:

 

"... a man may contract so as to incur the obligation to make the discovery of all the facts relative to that contract, although the effect of that discovery may, incidentally, subject him to pecuniary penalties."

 

Whether this broad statement is now good law or not, it does not avail the present plaintiffs.


 

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In Attorney-General v. Daly, Hayes & Jo. 379 the Crown in Ireland successfully sought interrogatories in connection with unpaid liquor duties though the defendant objected that the answers might incriminate him of a conspiracy to trade in smuggled goods. The interrogatories were allowed because neither the action nor the interrogatories pointed to the participation of the defendant in a conspiracy. In the present case the tort and the crime cover the same ground.

In Attorney-General v. Conroy, 2 Jo.Ex.Ir. 791, another liquor duty case, the Crown in Ireland successfully argued that the doctrine against self-incrimination only applied when the bill of discovery "set forth a state of facts, which of itself amounts to a criminal charge." In the present case the allegation embraced crime as well as tort.

Rice v. Gordon, 13 Sim. 580 decided that a defendant charged with committing perjury in an early stage of an action could not resist production of documents in that same action in reliance on the doctrine against self-incrimination because the court would not hold out

 

"... an inducement to a defendant to commit perjury in an early stage of the cause, in order to prevent the court from administering justice in the suit."

 

No such question arises in the present circumstances.

Chadwick v. Chadwick, 22 L.J.Ch. 329 may be explained on the grounds that a trustee, like an agent, cannot resist discovery in an action in relation to the property which he is alleged to hold upon trust. Mr. Nicholls relied on the following observation of Turner V.-C., at p. 331:

 

"On looking at the allegations in the bill, I see nothing in them to entitle the defendant to claim exemption from the discovery now sought which would not equally entitle every defendant charged with fraud to say, that he is charged with fraud, and that the discovery asked would expose him to be indicted for fraud."

 

I do not consider that this observation is authority for the proposition that fraud is a general exemption to the doctrine against self-incrimination.

Robinson v. Kitchin, 8 De G.M. & G. 88 was another case in which an agent was not allowed to resist discovery at the suit of his principal.

Similarly in Bunn v. Bunn, 4 De G.J. & Sm. 316 trustees of an alleged voidable settlement were not allowed to resist discovery at the suit of a creditor on the grounds that discovery might expose the trustees to penalties and forfeiture under the statute against settlements in fraud of creditors.

Mr. Nicholls did not claim that these authorities disclosed a coherent general exemption from the doctrine against self-incrimination where fraud or conspiracy are alleged or where the plaintiff will be frustrated or seriously embarrassed in his action, nor that the authorities disclosed a special exemption where a statutory tort constitutes a statutory crime. When Parliament created and protected copyright by civil and criminal sanctions the doctrine against self-incrimination was well established. There is no evidence that Parliament appreciated that a plaintiff in copyright proceedings would be in a more difficult position than any plaintiff


 

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faced with a defendant who relies on the doctrine. Nor is there now any evidence that a plaintiff in copyright proceedings experiences any difficulty in obtaining a remedy against an identified infringer. The difficulty, which has only recently emerged in relation to copyright in films and records, arises in obtaining a remedy against an unidentified infringer without discovery from a defendant who is a known infringer. In my judgment, the authorities cited by Mr. Nicholls do not enable this court to evolve a general or special exemption which deprives the defendant of his privilege to resist discovery in order to assist the plaintiff against third parties, if that privilege is justified by the accepted principle that no man shall be compelled to incriminate himself.

Apart from the authorities, it seems to me that the solution suggested would destroy the privilege accorded to a defendant in a civil action. Where a defendant in a civil action relies on the doctrine against self-incrimination and insists on remaining silent and on concealing documents and other evidence relevant to the action, he is relying on his own wrongdoing or on his own apparent or possible wrongdoing to hamper the plaintiff in the proof of his just claims in the suit. That is the inevitable result of the doctrine which can only afford protection of the defendant at the risk or price of causing an injustice to the plaintiff. That injustice is an argument against the whole doctrine as applied to discovery and interrogatories in civil actions. It is not an injustice which is acceptable in relation to some causes of action but not others.

In every case in which a defendant is faced with possible self-incrimination as a result of discovery or interrogatories and especially where the tort and the crime are constituted by the same activity, the defendant has a choice. The defendant may choose to rely on the silence and concealment afforded by the doctrine against self-incrimination in order at one and the same time to hamper the plaintiff in the proof of his civil action and as a means of resisting or avoiding criminal prosecution or conviction. Alternatively the defendant may abandon his defence to the civil action in which case he will be immune from discovery and interrogatories and will not need to rely on the doctrine gainst self-incrimination unless and until he is confronted with an inquiry as to damages. Failure to defend the civil action will not prejudice the defendant in any criminal proceedings. Alternatively again, if a defendant wishes to maintain a plausible defence to the civil suit, he will waive the privilege and give frank answers to interrogatories and full discovery.

The plaintiff is not wholly or necessarily defeated and the defendant is not necessarily assisted by the defendant relying on the privilege against self-incrimination. The civil court may draw conclusions where a criminal court may not. If the privilege is raised in connection with an inquiry as to damages the court will be driven to draw conclusions as to the scope and harm caused by the defendant's activities and, in the face of silence and concealment on the part of the defendant, will not be slow to make assumptions and draw inferences which will enable damages to be awarded on a scale which will do justice to the plaintiff. If in the event damages are more generous than would have been the case if the


 

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defendant had answered all the interrogatories and afforded full discovery, the defendant can hardly complain.

The disadvantages which attach to a defendant who relies on the privilege accorded by the doctrine against self-incrimination explain the absence of reliance on that doctrine in the past in connection with copyright proceedings. A plaintiff in copyright proceedings was and is no better and no worse off by reason of the doctrine against self-incrimination than a plaintiff in any other proceedings in so far as the plaintiff seeks to establish the defendant's liability and to obtain an injunction against the defendant and a proper measure of damages.

The plaintiff in copyright proceedings relating to films or records seeks an order for instant discovery and interrogatories against the defendant not so much for the purpose of proving the extent of liability of that defendant as for the purpose of obtaining information which will enable the plaintiff to trace and to take proceedings against third parties involved with infringing copies. The legitimate anxiety of the plaintiff to obtain information about third parties and to act against third parties with speed and secrecy has only arisen in recent years as a result of developments in technology and travel facilities which enable infringers of copyright to copy and distribute films and records with great ease, little expense and ample profit. There is no reason to think however that Parliament in 1956 foresaw or intended that the doctrine of self-incrimination would need modification to deal with the peculiar difficulty which has now arisen in the path of owners of some forms of copyright.

Parliament cannot have intended to make a special implied exemption to the doctrine against self-incrimination to meet a future unsuspected peculiar difficulty which now applies to owners of certain types of copyright relating to films and records. This court cannot create a special exemption to the doctrine against self-incrimination for the benefit of owners of copyright in films and records or for the owners of copyright generally. This court cannot create a general exemption to the doctrine against self-incrimination based on fraud or misconduct in order to meet the peculiar difficulty now experienced by owners of copyright in films and records.

The difficulty raised by the doctrine against self-incrimination and experienced by owners of copyright in films and records points to a defect in the law and suggests either that the doctrine requires modification or that at the least the exempting provisions of section 31 (1) of the Theft Act 1968 should be extended to offences under the Copyright Act 1956. At present, however, binding authority forbids this court to uphold any order which compels any defendant in civil proceedings to submit to discovery or interrogatories if to do so would tend to expose him to proceedings for an offence, other than an offence under the Theft Act 1968. A higher court may be and Parliament certainly is capable of modifying this restriction.

In the court below Whitford J. came to the following conclusions. First, he decided that the plaintiffs' action was not an action for a penalty merely because they claimed exemplary or aggravated or additional damages pursuant to the provisions of the Copyright Act 1956.


 

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I agree. The plaintiffs are only entitled by section 17 of the Act to additional damages where effective relief would not otherwise be available. These damages are compensatory not punitive and do not involve the imposition of a penalty. The point is however academic as the defendants are in danger of prosecution for a criminal offence under section 21 of the Copyright Act 1956. Secondly, Whitford J. held that the exception to the doctrine of self-incrimination afforded by the Theft Act 1968 must apply to offences under the Copyright Act 1956 which in his view included or were at any rate analogous to offences under the Theft Act 1968. It does not seem to me however that section 31 of the Theft Act 1968 expressly or impliedly affected the right of a defendant to refuse to incriminate himself of an offence under the Copyright Act 1956. Thirdly, Whitford J. held that the mere disclosure of the whereabouts of infringing copies and the names of customers and suppliers engaged in the production and sale of infringing copies cannot give good grounds for believing that such disclosure will result in self-incrimination. In my judgment, the discovery and interrogatories ordered in the present case plainly involve the danger of self-incrimination. No attempt was made in this court to limit and as at present advised I do not think it would be possible to limit the scope of the orders so as to eliminate any danger of self-incrimination. Finally, Whitford J. held that the terms of the order were not too wide or unjustifiable in any respect. Subject to the objection based on the doctrine against self-incrimination, I agree with him.

In the result I would reluctantly allow the appeal so far as it relates to those parts of the orders made by Walton J. which deal with discovery and interrogatories. No blame attaches to Walton J.; he followed the order I made sitting at first instance in E.M.I. Ltd. v. Pandit [1975] 1 W.L.R. 302 and the orders made by this court in Anton Piller KG v. Manufacturing Processes Ltd. [1976] Ch. 55 and E.M.I. Ltd. v. Sarwar[1977] F.S.R. 146 without the benefit of argument on behalf of the defendants. The remainder of the orders made by Walton J. should stand.

 

 

Appeal allowed in part.

No order as to costs.

Leave to appeal.

 

Solicitors: Paul Bond & Co.; Clifford-Turner.

 

C. N.

 

 


APPEAL from the Court of Appeal.

This was an appeal by leave of the Court of Appeal by the appellants, Rank Film Distributors Ltd., Universal City Studios Inc. suing on behalf of themselves and on behalf of and as representing all other members of the Motion Picture Association of America Inc., Cinema International Corporation (U.K.) (a company incorporated with unlimited liability) suing on behalf of themselves and on behalf and as representing all other members of the Society of Film Distributors Ltd., ITC


 

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Rank Film Ltd. v. Video Information Centre (H.L.(E.))

 

 

Entertainment Ltd., ITC Film Distributors Ltd. and EMI Films Ltd., from an order of that court (Bridge and Templeman L.JJ., Lord Denning M.R. dissenting) dated February 15, 1980, allowing in part an appeal by the respondents, Video Information Centre (a firm), Michael Anthony Lee, Susan Gomberg Stylestone Ltd., Videochord Ltd. and Michael George Dawson, from an order made by Whitford J. on July 31, 1979, refusing to discharge or vary two orders made on ex parte applications by Walton J. on July 2 and 5, 1979.

The issues that arose for consideration in this appeal were: What was the scope of the privilege against self-incrimination in the field of discovery? Did this privilege preclude the making of orders such as those of July 2 and 5, 1979, or excuse defendants from complying with such orders. In any event was the privilege available where the incrimination feared was in respect of the criminal provisions of the Copyright Act 1956, or a charge of conspiracy to commit an offence under those provisions or under the Theft Act 1968 or to defraud at common law?

The facts are set out in the opinion of Lord Wilberforce.

 

Donald Nicholls Q.C., Hugh Laddie and Jeremy Davies for the appellants. This appeal raises the following issues: (1) Whether the court has jurisdiction to make Anton Piller orders, that is, to make an ex parte order that X do permit Y to enter his premises to look for, inspect, photograph and remove illicit copy films and documentation. (2) Whether the respondents can be required to give information as ordered where such information would tend to incriminate them. (3) Whether in the light of the particular offences relevant in the present case the respondents can be required to give information in this case. (4) Even if the appellants be wrong on issues (2) and (3), is a court precluded from making the orders in question? (5) Whether the respondents should have been ordered to give information and produce documents in respect of the whereabouts of illicit films, the names of other persons engaged in making and/or selling illicit films, or the names of persons who have offered to supply illicit films to the respondents.

(1) So far as the appellants are aware the first occasion when an Anton Piller order was made was by Foster J. in May 1974 in a copyright case involving gramophone records. A similar order was made by Foster J. in July 1974. In October 1974 an order was made by Goff J. in Pall Europe Ltd. v. Microfiltrex Ltd. [1976] R.P.C. 326. The first occasion in which an order was made where there was a considered judgment was in December 1974 by Templeman J. in E.M.I. Ltd. v. Pandit [1975] 1 W.L.R. 302. In December 1975 the question of these orders came before the Court of Appeal in Anton Piller KG v. Manufacturing Processes Ltd. [1976] Ch. 55, following the refusal of Brightman J. to make such an order. In May 1976 Graham J. added to the protection to be given to a defendant by stating that the order should be served on the defendant by a solicitor - an officer of the Supreme Court. This has been a standard part of the procedure ever since that date.


 

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In October 1976 the Court of Appeal in E.M.I. Ltd. v. Sarwar [1977] F.S.R. 146 extended the ambit of the order to include an order made on an ex parte application to disclose forthwith the names of suppliers. In the circumstances, it is for the respondents to show that there is no jurisdiction to make these orders.

(2) This is one of the two main issues in the appeal. Does the privilege against self-incrimination enable a party today to refuse to produce documents or answer interrogatories in a civil action? This is concerned with parts (a) and (c) of the order.

There are three preliminary observations: (a) It is concerned with all civil actions and not just copyright infringement actions. Almost inevitably when two persons act together knowingly to commit a flagrant infringement of a trade-mark, patent or other industrial proprietary right there will be a conspiracy to defraud. Further, since the legislative trend is to impose stricter standards in this field for the protection of consumers, so the area in which infringement of the civil right is also a criminal offence is tending to grow. A clear example is that in the field of passing off of trade marks: see the Trade Descriptions Act 1968, ss. 1, 2 (1), 3 (1) (2) and (3), 18.

(b) The particular case before the House is concerned with discovery and interrogatories. It is not directly concerned with the case of a person being asked questions in open court. This is material because when considering whether the answering of questions or the production of documents would tend to self-incrimination, the question which has to be asked is: what use could be made of the discovered documents or the answers to the interrogatories? Answers on oath in open court may not stand on the same footing as discovered documents or answers to interrogatories. Answers in open court can be used by anyone for any purpose.

(c) In the English system of court procedure discovery plays an important, and in some cases a critical, role. It is an essential part of the procedure. The burden of proof is normally cast upon the plaintiff. But the defendant is required to produce material documents. Without discovery, justice could not be done in many instances. A plaintiff could not prove infringement, for example, or the amount of his loss for he does not know the scale of the defendant's wrongful use of his trade name, or the amount of the defendant's profits. So to deprive a plaintiff of discovery is to deprive him of one of the tools fashioned by English procedure as necessary to achieve justice between a plaintiff and a defendant: see D. v. National Society for the Prevention of Cruelty to Children [1978] A.C. 171, 223D, per Lord Hailsham of St. Marylebone.

There is no distinction between the use which can be made of documents or information obtained on discovery or from interrogatories; and it is convenient to refer normally only to discovery of documents. The law today is that documents produced by compulsion on discovery cannot be used for any purpose apart from that for which their production was compelled without the leave of the court. The purpose for which documents are normally produced on discovery in an action is the conduct


 

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Rank Film Ltd. v. Video Information Centre (H.L.(E.))

 

 

of that action. But documents may be ordered to be produced in contemplation of other civil litigation. Under this jurisdiction, the existence of which was confirmed by this House in Norwich Pharmacal Co. v. Customs and Excise Commissioners [1974] A.C. 133, the court has power to order a party against whom the plaintiff has no cause of action to produce information and documents which will enable the plaintiff to identify an infringer of his rights. This is the action for discovery. In such a case, the plaintiff in the discovery action can use the documents in the new proceedings - that is for the very purpose for which discovery was ordered. That is the case with information ordered to be given in Anton Piller orders concerning the sources of supply, namely, to enable the plaintiff to identify and sue the infringer. But information so obtained cannot be used for any other purpose without leave of the court. The law was not so firmly settled in the mid-19th century: see Richardson v. Hastings (1844) 7 Beav. 354; Tagg v. South Devon Railway Co. (1849) 12 Beav. 151 and Reynolds v. Godlee (1858) 4 K. & J. 88.

The two leading modern authorities are both decisions of the Court of Appeal. In Riddick v. Thames Board Mills Ltd. [1977] Q.B. 881 the plaintiff had been dismissed from his employment with the defendants. There was an internal memorandum prepared concerning the plaintiff and his character. The plaintiff brought an action against the defendants for wrongful dismissal and in the course of that action, the defendants' internal memorandum was produced on discovery. The action was settled. Subsequently, the plaintiff brought a fresh action against the defendants claiming that the memorandum was libellous and seeking damages. At the trial, the action succeeded, but on appeal, the Court of Appeal allowed the appeal and dismissed the action on the ground that the internal memorandum could not be used for any purpose save in relation to the original action. In Halcon International Inc. v. Shell Transport and Trading Co. [1979] R.P.C. 97, there were proceedings in the Netherlands Patent Office in which Shell had succeeded in opposed patent applications by Halcon. Halcon appealed and there was an appeal pending in Holland. There was no discovery in the Dutch proceedings - any documents which were disclosed went on a publicly available file. In proceedings in England regarding the same subject matter of the patents, Shell had discovered documents. Halcon applied to the English court for permission to use those documents in the Dutch patent proceedings. The application was rejected by Whitford J. and by the Court of Appeal.

It is pertinent to observe that if the court does not permit a person's answers and documents given or disclosed compulsorily to be used as evidence against him in another civil action, the position is a fortiori where the other proceedings are criminal. It would be improper to permit such use for it would defeat the object of the privilege against self-incrimination.

The privilege against self-incrimination is a judge-made principle, long established and going back to the 17th century. Bowen L.J. in 1890 described it as "one of the inveterate principles of English law": see


 

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Redfern v. Redfern [1891] P. 139, 147. There is nothing in the appellants' submissions which is intended to cut down, erode, or encroach upon that privilege. The existence of the privilege is not in issue, what is in issue is the method by which effect should be given to it in one particular field, namely, the field of discovery and interrogatories.

If there exist two methods by which the object for which the privilege exists can be attained, and one will prejudice the plaintiff in the civil action and the other will not, the method that the court will prefer is the former. Such a method does exist and the House is invited to head the practice in a direction which both preserves the privilege and preserves the rights of the plaintiff in the civil action. The object of the privilege is that a man shall not be compelled to convict himself out of his own mouth. Stated more precisely, the object of the privilege is that a man is not to be compelled to disclose information admissible against him which would or might lead to his prosecution or conviction. The privilege can apply to all stages of all proceedings.

The information sought need not relate to all the ingredients of a crime. It is not only a full confession of the commission of a crime which is protected. Equally protected is the disclosure of information which would establish against the defendant one of the ingredients of a crime. The information is also protected where the inference to be drawn from the answer would establish the commission of a crime or one of the ingredients of a crime.

The above is consistent with the various ways that the privilege is approached in the authorities. None of this is disputed. But it is of cardinal importance to keep in mind that what the privilege is concerned with is the use which can be made of the self-incriminating material. If the information (the documents) would show that a defendant in a civil action had committed a criminal offence, that would afford no answer to the claim to disclose, if criminal proceedings could not be brought, for example, because a nolle prosequi had been entered or a royal pardon granted. Or, again, if though criminal proceedings could be brought, the further information sought would add so little to the facts already known or confessed to, that disclosure of that information would not increase the risk of prosecution. Or, again, if though the information would expose a defendant to penal proceedings, the defendant can be protected by a plaintiff undertaking not to use the information in any penal proceedings. Such an undertaking having been given and the defendant protected accordingly, the defendant can be required to disclose the evidence. The undertaking given by the plaintiff is not "I will not bring penal proceedings," but "In any penal proceedings I may bring, I will not use the information which you the defendant are now being compelled to disclose": see Jackson v. Benson (1826) 1 Y. & J. 32, by which date the privilege was well established.

Today the court has at hand, in the principle of the Riddick case [1977] Q.B. 881, a means by which in the field of discovery and interrogatories the object of the privilege can be attained without prejudicing the plaintiff in the civil action by refusing him discovery. The means being the control which the court has over the use which may be made


 

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of documents and information compulsorily disclosed. With one exception, the appellants are not aware of any case where the Riddick principle has been decided or even been raised. The explanation may be that the Riddick principle was not firmly settled certainly until the mid-19th century. By then the privilege was well established and the earlier cases in which the privilege had been allowed as an answer to discovery or interrogatories were followed without any examination of whether the privilege any longer necessitated such a consequence. The following are four representative cases concerning the privilege against self-incrimination: Paxton v. Douglas (1812) 19 Ves.Jun. 225; Lamb v. Munster(1882) 10 Q.B.D. 110; Redfern v. Redfern [1891] P. 139 and Triplex Safety Glass Co. Ltd. v. Lancegaye Safety Glass (1934) Ltd. [1939] 2 K.B. 395. The exception is to be found in In re Westinghouse Electric Corporation Uranium Contract Litigation M.D.L. Docket No. 235 (No. 2) [1978] A.C. 547, 588 where it was noted in argument that if an order for discovery were made, any undertaking given to an English Court in respect of the documents in question could not be enforced in relation to criminal proceedings taken under E.E.C. law in Brussels. All the speeches in this House and all the judgments of the Court of Appeal proceeded on the footing that the documents and answers would be available for use in a trial. Production of the documents for the giving of oral testimony would tend to expose R.T.Z. and its officers to penalty by increasing the risk of proceedings in which those documents and that testimony would be admissible in evidence.

British Steel Corporation v. Granada Television Ltd. [1981] A.C. 1096 is helpful as showing that the protection against self-incrimination is limited. The giving of evidence which may lead to further investigation is not within the protection of the privilege. The Riddick principle cannot prevent the disclosed documents and answers to interrogatories from being read out in court at the trial. And then a police officer sitting in the back of the court can, with that lead, go away and make further inquiries which lead to a prosecution, for the privilege does not protect, and never has protected, a person from providing information because it might lead to the discovery of evidence which might incriminate him.

The privilege against self-incrimination is co-extensive with the protection given to a person who makes an involuntary disclosure of criminative information, for example, the person who makes a confession following threats or the promises of favour. That protection is confined to excluding the statement. Evidence discovered as a result of such an involuntary statement is not excluded: it has to be proved without reference to the statement but if it can be so proved, it is admissible at the trial: see Rex v. Warickshall (1783) 1 Leach 263 and Reg v. Sadler [1970] 1 W.L.R. 416.

In Reg. v. Sang [1980] A.C. 402 the basic principles were discussed. The question arose whether in a criminal trial the trial judge had any discretion to refuse to admit evidence on a charge of conspiracy to issue forged bank notes which (it was said) showed that the offence was only committed because of the activities of an agent provocateur. The House


 

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answered the question in the negative. The speeches contain an illuminating discussion of the rationale underlying the principle: see per Lord Diplock, pp. 434C-436G; 437D-F; per Lord Fraser of Tullybelton, p. 449; per Lord Scarman, pp. 453, 455B. This decision was followed and applied in Morris v. Beardmore [1981] A.C. 446.

It is inconceivable that a trial judge at the present time could properly exercise his discretion to admit evidence tantamount to a self-incriminating admission in circumstances where the disclosure had been compelled. A fortiori where as is now beginning to happen Chancery judges require an undertaking from the plaintiff not to use documents or information obtained, say, for the purpose of civil proceedings without leave of the court. The appellants concede that they are inviting the House to apply the information provisions of section 31 of the Theft Act 1968 to a wider field. Attention is also drawn to R.S.C., Ord. 24, r. 13 (2).

The problem of information being given in open court is not insuperable because the court has a right to hear the whole or part of a civil case in camera where this is necessary for the due administration of justice: Scott v. Scott [1913] A.C. 417. Courts are constantly sitting in camera for parts of trials when evidence concerning trade secrets or confidential information is being given or discussed. If a court is concerned that a public trial will lead to an undesirable dissemination of the contents of discovered documents or answers to interrogatories it would be appropriate and preferable for it to use its power to hear the whole or part of the proceedings in camera rather than use the fear of such dissemination as a justification for refusing discovery or interrogatories. Much reliance below was placed on Reg. v. Garbett (1847) 2 Car. & Kir. 474. But this does not harm the appellants' submissions for it was not concerned with a case of discovery or interrogatories where the court could control the use subsequently made of the information. In Reg. v. Scott (1856) Dears. & B. 47, a bankrupt had been examined on oath pursuant to the Bankruptcy Act 1849 (12 & 13 Vict. c. 106). Subsequently, he was prosecuted and convicted on evidence being given at his trial or his answers in the bankruptcy examination. The admissibility of that evidence was reserved for the opinion of the judges. By a majority, it was decided that the answers were admissible. Statute had provided that a bankrupt could be required to attend and be examined, but the court could not imply a proviso that the answers could not be used against the accused. Parliament could take away and was to be taken as having taken away the privilege. On that ground - the construction of the statute - the decision is of no direct relevance in the general case where there is no statute. But the majority in that case also held that the mere fact that the examination was compulsory did not have the consequence of excluding the evidence from criminal proceedings. Confessions are only excluded if they are induced by improper threats or promises and a lawful examination in judicial proceedings could not be such.

All the judgments of the Court of Appeal in the present case proceed on the basis that the appellants' argument involves the abolishing of the


 

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432

A.C.

Rank Film Ltd. v. Video Information Centre (H.L.(E.))

 

 

privilege against self-incrimination but the appellants' argument does not have this effect and they have never sought to abolish the privilege.

(3) This only refers to parts (a) and (c) of the order. The following are the relevant criminal offences:

(a) Breaches of section 21 of the Copyright Act 1956. The Act creates proprietary rights: see sections 12, 13, 14, 15, 16. The primary remedies for infringement are contained in sections 17 and 18. Section 21 creates a criminal offence. The extent, however, to which infringements of the copyright are ipso facto criminal offences but of a minor character points strongly to the conclusion that Parliament cannot have intended by creating this ancillary offence to have thereby deprived the copyright owner of the relief or remedy which he would otherwise have had available to him.

(b) The Theft Act 1968 creates offences but not proprietary rights; proprietary rights in chattels exist at common law. Parliament, therefore, felt it necessary expressly to provide that the creation of the criminal offences was not to impair the ordinary remedies of the proprietary owner in civil proceedings.

(c) As to conspiracy to commit an offence under the Copyright Act 1956 or the Theft Act 1968, the position of a defendant cannot be stronger than it would be in relation to a charge of committing the substantive offence. The courts have shown a marked reluctance to apply the privilege to conspiracy to defraud at common law, because of the width of conspiracy. A conspiracy to defraud at common law is almost inevitably going to exist whenever there is an issue of passing off or infringement of trade marks or infringement of patents or an infringement of copyright which takes place with two defendants acting together.

The following cases are examples of the courts' unwillingness to permit the privilege to be claimed where so to do would seem to be "inequitable": Mayor, Commonalty and Citizens of London v. Levy(1803) 8 Ves.Jun. 398; Dummer v. Chippenham Corporation (1807) 14 Ves.Jun. 245; Attorney-General v. Daly (1833) Hayes & Jo. 379; Attorney-General v. Conroy (1838) 2 Jo.Ex.Ir. 791 and Chadwick v. Chadwick (1852) 22 L.J.Ch. 329. Thus in Chadwick's case, there was a bill to set aside a conveyance on the ground of fraud. One of the objections taken in answer was the privilege against self-incrimination. Sir George Turner V.-C. observed that there was nothing in this bill which would not equally apply to every defendant charged with fraud, and the objection was overruled.

Since joint defendants in a case of fraud will almost inevitably be exposed to a charge of conspiracy of some sort, the court will not let that per se provide an answer to discovery. In the same way as a tendency to criminate oneself of an offence under section 21 of the Copyright Act 1956 is no answer to an order for discovery in a copyright infringement action, neither is a tendency to criminate oneself of a conspiracy of which the commission of offences under section 21 of the Act of 1956 or the Theft Act 1968, was the essential purpose. This is the present case. Reliance is placed on the judgment of Whitford J. As to the observation of Templeman L.J. that if a defendant relies on the privilege


 

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A.C.

Rank Film Ltd. v. Video Information Centre (H.L.(E.))

 

 

that will not harm the plaintiff in civil proceedings because the court may in the circumstances draw adverse inferences against the  defendant, the answer is that those adverse inferences may not be open to be drawn where the plaintiff has little or no evidence of the scale of the damage done to his interests as holder of the copyright in question. As to the judgment of Bridge L.J., privilege against self-incrimination was well established long before the 19th century.

Since the decision in the present case, the question of Anton Pillerorders has again been considered by the Court of Appeal in Ocli Optical Coatings Ltd. v. Spectron Optical Coatings Ltd. [1980] F.S.R. 227. That case concerned misuse of confidential information and infringement of copyright. Fox J. refused to make an order. The Court of Appeal allowed the appeal, distinguishing the present case. The court there took into consideration the likelihood of prosecution but it is an unsatisfactory basis for the court, without really any material, to have to seek to form a view on the likelihood or unlikelihood of prosecution. In Snugkoat Ltd. v. Chaudhry [1980] P.S.R. 286 Graham J., having considered the two recent decisions of the Court of Appeal made an Anton Pillerorder with an undertaking from the plaintiff that the information received would not be used in any subsequent criminal proceedings.

(4) If the appellants are wrong on the above submissions there remains a third point: whether in any event the conclusion follows that the orders ought not to have been made at all. The privilege is one to be invoked or not, as he may choose, by a party or witness when called upon to answer. There is an established line of authority up to and including this House to the effect that even where it is expected that the litigant could claim privilege against self-incrimination or where he has indicated that he intends so to do, the court should still make the order for discovery or interrogatories. The privilege is only an excuse for not complying with the order, it is not a justification for refusing to make the order at all. The party should be given the choice of complying with the order or claiming the privilege as he wishes: see National Association of Operative Plasterers v. Smithies [1906] A.C. 434.

In the present case, both parties have throughout been in agreement that this litigation should not be decided solely on this narrow point in the sense that if the respondents failed solely on this point and the other points were left undecided the result would be only that the other points would then have to be brought back before the court for decision on a further application by the appellants based on the respondents' failure o comply with the orders (the appellants saying that an invocation of the privilege in this case did not furnish justification for not complying with the orders).

However, there are dicta in the Court of Appeal which are in point, and, in the appellants' submission, erroneous terms on this point. See, for example, the observations of Templeman L.J. ante, p. 419F-G: "... an order ex parte or otherwise for discovery or interrogatories under threat of committal for disobedience should not be made if it is obvious that compliance with the order will involve the danger of self-incrimination." By the use of the words "ex parte or otherwise," Templeman L.J. seems


 

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434

A.C.

Rank Film Ltd. v. Video Information Centre (H.L.(E.))

 

 

to have been expressly indicating that no such orders for discovery should be made even inter partes. Bridge L.J. appears to have come to the same conclusion on somewhat narrower grounds.

It is standard procedure to impose upon a party applying for and obtaining an Anton Piller order an obligation to serve the order by a solicitor and to "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": Anton Piller KG v. Manufacturing Processes Ltd. [1976] Ch. 55, 61C. That obligation was fulfilled by the appellants in this case. Views expressed on this question by the majority of the Court of Appeal are contrary to authority and principle and would have the effect of turning an option into a prohibition.

(5) Whitford J. was right concerning the width of the order. These respondents were mixed up in this unlawful trade. They were unlike the innocent Commissioners of Customs and Excise in the Norwich Pharmacal case [1974] A.C. 133. There is nothing wrong in principle in requiring them to disclose all they know. Strong reliance is placed on Norwich Pharmacal on this question.

Colin Ross-Munro Q.C. and Daniel Serota for the respondents. (1) In their printed case the appellants put their first submission, which is described in the Court of Appeal as a broad submission, in alternative ways. In the first place it was said that whatever may have been the position in times past, today the purpose of the privilege against self-incrimination can be achieved in the case of discovery and interrogatories without permitting the plea of the privilege to afford reason for not giving discovery or answering interrogatories in civil proceedings: the documents or information disclosed cannot be used, either by the party to whom they are disclosed in the civil proceedings, or anybody else for any purpose without the leave of the court. In the alternative there was a submission based on the principles in Riddick v. Thames Board Mills Ltd. [1977] Q.B. 881 and Scott v. Scott[1913] A.C. 417, that if there is a real and appreciable risk, as distinct from a remote or insubstantial risk, of criminal proceedings being taken, the party resisting discovery should not be made to answer or to disclose documents, but even if there is such a real and appreciable risk, the court's power to order the whole or a part of a civil trial to be heard in camera can ensure that for all practical purposes there is no real and appreciable risk of the discovered information being used to initiate or sustain criminal proceedings. By virtue of section 14 (1) of the Civil Evidence Act 1968 the first alternative is not open to the appellants.

(2) The so-called rule or principle of Riddick v. Thames Board Mills Ltd. [1977] Q.B. 881 is wrong. It leads in practice to absurdity and it can be traced to Seton, Forms of judgments and Orders, 3rd ed. (1862), who misunderstood the cases up to that date and turned it into a rule. If the above submission is placed too high, then if there is a rule at all, it is merely that documents will not be used for any improper purpose.

(3) If, contrary to (2), the rule in Riddick v. Thames Board Mills Ltd.[1977] Q.B. 881 is correct, it is subject to at least three exceptions: (a)


 

[1982]

 

435

A.C.

Rank Film Ltd. v. Video Information Centre (H.L.(E.))

 

 

cases such as Norwich Pharmacal Co. v. Customs and Excise Commissioners[1974] A.C. 133; (b) Anton Piller cases, and (c) cases where it is in the public interest that the documents in question should be disclosed.

(4) Even if the above is wrong and the rule in Riddick's case is as stated in that decision and there are no exceptions to the rule, nevertheless, the so-called protection given by the Riddick rule is not sufficient to do away with a privilege which has existed for many years and when until 1968 the privilege existed without exception: see Distillers Co. (Biochemicals) Ltd. v. Times Newspapers Ltd. [1975] Q.B. 613, 621, per Talbot J.

As to (1), this has been sufficiently dealt with.

As to (2), Seton, Forms of Judgments and Orders, 3rd ed., p. 1052, states that in all cases where documents are produced there is an implied covenant not to divulge documents procured on discovery and reference is made to Williams v. Prince of Wales Life, Etc. Co. (1857) 23 Beav. 338. But neither that case nor cases such as Tagg v. South Devon Railway Co., 12 Beav. 151; Reynolds v. Godlee, 4 K. & J. 88 and Marshall v. Watson, 25 Beav. 501 support the statement in Seton.

In Alterskye v. Scott [1948] 1 All E.R. 469, 470E-F, Jenkins J. did not require an undertaking from the plaintiff because he said the defendant was afforded sufficient protection by the implied obligation not to make improper use of disclosed documents and reference was made to Seton,7th ed. (1912), and Hopkinson v. Lord Burghley (1867) L.R. 2 Ch.App. 447. But there is no hint in those judgments that there was a rule. They are merely an example of the power of the court to restrain improper use of documents. A slight indication that there was no rule in 1867 is illustrated by the statement in Gatley on Libel and Slander, 7th ed. (1974), p. 648. There would have been no need to re-enact section 19 of the Stamp Act 1836 in the Stamp Act 1869 if the rule in Riddick v. Thames Board Mills Ltd. [1977] Q.B. 881 had then been in existence. Further, there is no trace of the rule in the second edition of Seton published in 1854, nor is it to be found in Wigmore. Any such rule could lead to great difficulties. To take but one example: suppose that A sues X for breach of copyright and, on discovery, A, which is a company, discovers that X's associated company, Y, has infringed the copyright of A's associated company B. Is A entitled to inform B of this fact?

In Distillers Co. (Biochemicals) Ltd. v. Times Newspapers Ltd. [1975] Q.B. 613, 621, Talbot J. expressed the protection given to a party against whom discovery has been ordered in wide terms, namely, that the matters in question must not be used "otherwise than in the action in which they are disclosed." But Lord Denning M.R.'s statement in the present case, ante, p. 410H, that there is another exception to the Riddick rule, namely, that when a plaintiff sues for infringement of copyright, the defendant should give discovery but his documents and answers are not admissible in evidence against him in any criminal proceedings, is not to be found in any earlier authority.

The rule in Riddick v. Thames Board Mills Ltd. [1977] Q.B. 881, must be of recent origin because it could not have existed before 1967


 

[1982]

 

436

A.C.

Rank Film Ltd. v. Video Information Centre (H.L.(E.))

 

 

when there was still the offence of misprision of felony, but if the rule be that documents may not be disclosed for an improper purpose (see Alterskye v. Scott [1948] 1 All E.R. 469, 470E-F) then that doctrine is not incompatible with the offence of misprision of felony and shows the ambit of the discretion vested in the court.

If the rule be as Lord Denning M.R. enunciated it, then it is most remarkable that it has never been stated in any of the numerous previous cases where, on an application for discovery, the issue of self-incrimination has been raised for there would have been no need to rely on the privilege against self-incrimination if the rule had hitherto existed.

As to (3) the first obvious exception is the type of case exemplified by Norwich Pharmacal Co. v. Customs and Excise Commissioners [1974] A.C. 133, for if Talbot J.'s statement in Distillers Co. (Biochemicals) Ltd. v. Times Newspapers Ltd. [1975] Q.B. 613 be correct that there are no exceptions to the rule, then the names ordered to be disclosed in Norwich Pharmacal could not be used in a subsequent action without leave of the court. The second exception is the Anton Piller type of order. Reliance is placed on the judgment of Browne-Wilkinson J. in Sony Corporation v. Anand (unreported), January 22, 1981. These Anton Piller orders do not come within the Riddick case rule for there is no room for the implication that the documents will not be used without the leave of the court.

The third exception is the question where it is in the public interest that documents disclosed on discovery or answers to interrogatories should be disclosed: see Halcon International Inc. v. Shell Transport and Trading Co. [1979] R.P.C. 97, 109, 112, per Whitford J. See also the judgment of Talbot J. in the Distillers Co. case [1975] Q.B. 613, and that of Lord Denning M.R. in the present case.

Reliance is placed on the analogy of confidentiality between master and servant. There is no breach of confidence if a servant discloses an iniquity: Malone v. Metropolitan Police Commissioner [1979] Ch. 344, 376H, per Sir Robert Megarry V.-C. If there be a rule that documents on discovery cannot be used for other purposes then there is this exception if those documents disclose an iniquity, inter alia, a serious crime.

Even if a statement is obtained by improper means and, therefore, inadmissible in evidence, nevertheless, the information obtained can be used if it can be proved independently. Frank Truman Export Ltd. v. Metropolitan Police Commissioner [1977] Q.B. 952 illustrates a party's exposure to danger even where documents are subject to a legal professional privilege.

Scott v. Scott [1913] A.C. 417 is a very extreme case. In the present case it cannot be said that the risk of criminal proceedings is fanciful. The time for considering this question is the time when the privilege is taken. This proposition is supported by all three members of the Court of Appeal. The risk here of prosecution for conspiracy to defraud is far greater than that of conspiracy to contravene section 21 of the Copyright Act 1956 or any other offence which could be brought against the respondents, because (a) there is greater scope in imposing penalties and (b) all


 

[1982]

 

437

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Rank Film Ltd. v. Video Information Centre (H.L.(E.))

 

 

overt acts are capable of being proved where the charge brought is conspiracy to defraud.

The infringements in question do not contravene section 35 of the Theft Act 1968: per Lord Denning M.R., ante, p. 409F, and Templeman L.J., ante, p. 421B. Until the present case it has never been suggested that a breach of the Copyright Act 1956 could constitute theft under the Theft Act 1968. The respondents are supported by Smith, The Law of Theft, 4th ed. (1979), para. 108 and Griew, The Theft Acts 1968 and 1978, 3rd ed. (1978), para. 2-54 (iii). As to the injustice done to the appellants if Anton Piller orders are not granted, see the judgment of Templeman L.J.

The difficulties alleged by the appellants if the present appeal is dismissed are not as formidable as has been suggested, for in order to obtain an Anton Piller order, a plaintiff must show a very strong case which necessarily entails that the plaintiff has already a substantial amount of evidence. Further, in most cases damages could be adequately assessed.

There will be cases where an injustice is done by a plaintiff being granted discovery. Thus, in the present case, if the respondents are forced to make discovery, there is a real risk that a police officer in court might be able to use the evidence in subsequent criminal proceedings against the respondents.

It was said by analogy with section 31 of the Theft Act 1968 that the principle of that provision should be extended to cover cases such as the present. But section 14 (1) of the Civil Evidence Act 1968 gives a right against self-incrimination and is declaratory of the common law and that right can only be taken away by another statute which expressly takes away that right, for example, as it does under section 31 of the Theft Act. The right given by section 14 (1) of the Civil Evidence Act 1968 cannot be taken away by some implication to another statute or by some analogy to another statute. Section 16 of the Civil Evidence Act does actually deal with the abolition of certain privileges. A perusal of the Copyright Act 1956, alongside the Civil Evidence Act 1968, makes it impossible to imply that the privilege against self-incrimination in copyright matters has been abolished. It cannot be implied as a matter of construction of the Copyright Act. It was said that in the 19th century there are cases which show that the courts were reluctant to allow the privilege against self-incrimination in conspiracy cases; but see Spokes v. Grosvenor and West End Railway Terminus Hotel Co. Ltd. [1897] 2 Q.B. 124 and Allhusen v. Labouchere (1878) 3 Q.B.D. 654, and in the present century, National Association of Operative Plasterers v. Smithies[1906] A.C. 434. In none of those cases was there any objection to the privilege being claimed; see also Waterhouse v. Barker [1942] 2 K.B. 759. The respondents rely on Triplex Safety Glass Co. Ltd. v. Lancegaye Safety Glass (1934) Ltd. [1939] 2 K.B. 395, 403, where du Parcq L.J. said that there was no real exception to the privilege and that it was the paramount duty of the court to uphold it. The privilege is probably more needed in conspiracy cases than in any others because, there, evidence of overt acts is inadmissible. If there had been an exception in relation


 

[1982]

 

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A.C.

Rank Film Ltd. v. Video Information Centre (H.L.(E.))

 

 

to conspiracy one would have expected to find a reported decision on the question.

As to the appellants' issue (4), Templeman L.J.'s observation, ante, p. 419E, illustrates the difficulty of the whole Anton Piller procedure.

As to the appellants' issue (5), the width of the order of July 2, 1979, the respondents no longer wish to argue against part (ii) of the order, but they do contest part (iii) thereof. This goes far beyond any reported case and it goes beyond the alleged illicit trading of the respondents. Reliance is placed on the dissenting judgment of Donaldson L.J. in Yousif v. Salama [1980] 1 W.L.R. 1540.

Serota following. To deal with two issues: (i) the effect of the decision in Reg. v. Sang [1980] A.C. 402; (ii) the powers of the police or other prosecuting authorities to obtain evidence. The House is concerned to protect the freedom and property of parties. But this may have to yield to the interests of justice - the interests of the public at large. Reg. v. Sang essentially admits all probative evidence subject to two exceptions: (a) similar facts evidence; (b) matter related to inadmissible confessions. Unless Sang is to be re-written, the appellants must show that documents and answers to interrogatories and information gathered therefrom are inadmissible in criminal proceedings. Unlike the case of inadmissible confessions, evidence obtained pursuant to an Anton Piller order is not obtained by means of a trick, threats or other improper activity. It cannot be said that when documents are disclosed pursuant to an Anton Piller order that any of the above exceptions apply.

In Reg. v. Harz; Reg. v. Power [1967] 1 A.C. 760, it was held that once documents are disclosed, they are admissible also in criminal proceedings. There is no trace in that case of the argument advanced by the appellants in the present case, and if there is a principle that evidence obtained on compulsion is not admissible in civil or criminal proceedings, it is surprising that Lord Reid (see p. 816F) did not draw the distinction between the use of such documents in civil proceedings and those in criminal proceedings.

As to the manner in which a prosecuting authority could properly use documents obtained pursuant to Anton Piller orders: see Frank Truman Export Ltd. v. Metropolitan Police Commissioner [1977] Q.B. 952. If documents are obtained by a plaintiff pursuant to an Anton Pillerorder which show that a crime has been committed and an affidavit referring to these documents is referred to in inter partes proceedings, there is no reason why the information contained in them should not be utilised by the police. Once reference is made to the documents in open court, they are in the public domain and they can be used by any member of the public. That is the danger.

Nicholls Q.C. replied.

 

Their Lordships took time for consideration.

 

April 8. LORD WILBERFORCE. My Lords, this appeal relates to two interlocutory orders made by Walton J. on July 2 and 5, 1979. They are of a type which have come to be known as "Anton Piller orders"


 

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439

A.C.

Rank Film Ltd. v. Video Information Centre (H.L.(E.))

Lord Wilberforce

 

so called after a tortious infringer of copyright whose case reached the Court of Appeal in 1976 (Anton Piller KG v. Manufacturing Processes Ltd. [1976] Ch. 55).

They are designed to deal with situations created by infringements of patents, trade marks and copyright or more correctly with acts of piracy which have become a large and profitable business in recent years. They are intended to provide a quick and efficient means of recovering infringing articles and of discovering the sources from which these articles have been supplied and the persons to whom they are distributed before those concerned have had time to destroy or conceal them. Their essence is surprise. Because they operate drastically and because they are made, necessarily, ex parte - i.e. before the persons affected have been heard, they are closely controlled by the court: see the judgment of Lord Denning M.R. in Anton Piller [1976] Ch. 55, 61. They are only granted upon clear and compelling evidence, and a number of safeguards in the interest of preserving essential rights are introduced. They are an illustration of the adaptability of equitable remedies to new situations.

In this case we are concerned with video tapes of films. The appellants represent the owners of the copyright in nearly every feature film in the English language shown in this country, each representing a large investment, many of them very valuable properties. The defendants are persons alleged to be concerned with the wholesale pirating of these films by distributing video tapes illegally made from master tapes, themselves made from the original 35 mm. films, copyright in which belongs to the plaintiffs. Those concerned in the present appeal are the first three respondents, effectively Mr. Lee and Ms. Gomberg, who own the Video Information Centre. The sixth respondent, Mr. Dawson, who owns or controls the fifth respondent and between whom and Lee-Gomberg a business relationship appears to exist, had a laboratory in Essex which was raided by the police in April 1979 and where 400 illicit copy films were seized and a Rank reproducing machine was found. Mr. Dawson is in course of being prosecuted on charges of alleged conspiracy to defraud. He did not take the present proceedings to the Court of Appeal and is not a party to the appeal to this House. So far as Lee-Gomberg are concerned, it is enough to say that the evidence is strong and clear that they have engaged in the distribution and sale of pirated copy video tapes on a very large scale - to Kuwait and other places. It amply satisfied the requirements laid down by the Chancery judges for the making of an Anton Piller order. The case is one for an order to be made in such terms as will give the maximum legally possible protection to the appellants, to whose business the respondents' activities represent a major threat.

The main question before this House is whether Mr. Lee and Ms. Gomberg can avail themselves of the privilege against self-incrimination in order to deprive the appellants of an important part of the relief which they seek. It may seem to be a strange paradox that the worse, i.e. the more criminal, their activities can be made to appear, the less effective is the civil remedy that can be granted but that, prima facie, is what the privilege achieves. The orders under appeal are elaborate.


 

[1982]

 

440

A.C.

Rank Film Ltd. v. Video Information Centre (H.L.(E.))

Lord Wilberforce

 

A summary of their effect is sufficient. They included: (1) Injunctions from making or dealing with illicit copies of any of the appellants' films: no question arises as to these. (2) An injunction0restraining the respondents from warning third parties of the existence of these proceedings except for the purpose of obtaining legal advice: no question. (3) An order relating to the identity of those concerned with the first and fifth respondents: no question. (4) An order

 

"that the defendants Michael Anthony Lee and Susan Gomberg do each forthwith disclose to the person who shall serve this order upon them the names and addresses of all persons firms or companies known to them (i) to whom or to which the defendants or one or more of them have supplied or offered to supply illicit copy films or films used or intended to be used for making illicit copy films with the quantities and dates thereof (ii) who have supplied or offered to supply the defendants or one or more of them with illicit copy films or films used or intended to be used for making illicit copy films with the quantities and dates thereof and (iii) who are engaged in the production distribution offer for sale or sale of illicit copy films or films used or intended to be used for making illicit copy films."

 

(5) An order

 

"that the defendants Michael Anthony Lee and Susan Gomberg and each of them do within 4 days after service upon them of this order make and serve upon the plaintiffs' solicitors an affidavit setting forth the information which they are required to give pursuant to the foregoing part of this order and exhibiting thereto all invoices labels books of account letters lists or other documents within their respective possession power custody or control which relate to each and every illicit copy film supplied or offered by or to the defendants or one or more of them or to any business relating thereto."

 

(6) An order that Mr. Lee, Ms. Gomberg ... do forthwith permit two persons authorised by the appellants to enter certain premises between specified hours for the purpose of looking for and inspecting illicit copy films and defined categories of documents ... for the purpose of removing into the appellants' solicitors custody all such films and documents and to produce to the person serving the orders all the illicit copy films and documents referred to above. (7) An order

 

"that each of the defendants do forthwith disclose to the person who shall serve this order upon that defendant the whereabouts of all illicit copy films or masters for making the same known to that defendant."

 

Thus, for present purposes, the orders fall under three heads:

 

(1) Requiring the respondents to supply information.

(2) Requiring the respondents to allow access to premises for the purpose of looking for illicit copy films and to allow their being removed to safe custody.


 

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Rank Film Ltd. v. Video Information Centre (H.L.(E.))

Lord Wilberforce

 

(3) Requiring the respondents to disclose and produce documents.

The orders under (2) were upheld by the Court of Appeal, and this part of the court's decision was not seriously contested in this House. In any event I am satisfied that there was jurisdiction to make these orders and that the privilege against self-incrimination has no application to them. The privilege against self-incrimination is invoked as regards (1) and (3). The essential question being whether the provision of the information or production of the documents may tend to incriminate the respondents, it is necessary to see what possible heads of criminal liability there may be. There are three: (1) Section 21 of the Copyright Act 1956 creates summary offences under a number of headings, some of which would have potential applicability to the respondents. For a first offence there is a maximum fine of £50 however many infringing articles are involved. (2) Conspiracy to commit a breach of section 21 of the Act. By virtue of the Criminal Law Act 1977 no greater punishment can be imposed for such a conspiracy than for the substantive offence under section 21. (3) Conspiracy to defraud - an offence at common law left unaffected by the Act of 1977.

As to (1) and (2), I think that a substantial argument could be raised that these should not be taken account of in connection with a claim for privilege. The criminal offences created by section 21 cover almost precisely the same ground as the bases for civil liability under the Copyright Act 1956. I would be reluctant to hold that in civil proceedings for infringement based on specified acts the defendants could claim privilege against discovery on the ground that those same acts establish a possible liability for a petty offence. In practice, as one would suppose, section 21 is very rarely invoked: only one case came to our knowledge, namely of a prosecution in 1913 under the Copyright Act 1911, and potential liability under it might well be disregarded as totally insubstantial. The same argument would apply as regards conspiracy to breach it.

However, it is only too clear (and I deliberately use the language of reluctance) that supply of the information and production of the documents sought would tend to expose the respondents to a charge of conspiracy to defraud. In the very nature of this activity, a number of persons are certain to be involved in it - in printing the master tapes, copying from the master tapes, seeking and accepting orders, and distributing the illicit copies. A charge of conspiracy to defraud, so far from being, as it sometimes is, a contrived addition to other charges, is here an appropriate and exact description of what is being done. So far from it being contrived, fanciful, or imagined, it is the charge on which Mr. Dawson, who appears on the existing evidence to be closely connected with Mr. Lee and Ms. Gomberg, is to stand trial. It cannot be said that charges under this head would be nothing but charges under section 21 of the Act of 1956 under another name. An essential ingredient in them is dishonesty, which may exist in cases brought under section 21, but which may not. The much heavier penalties also make it more likely that charges would be brought of conspiracy to defraud. Unless some escape can be devised from this conclusion, the privilege must inevitably attach.


 

[1982]

 

442

A.C.

Rank Film Ltd. v. Video Information Centre (H.L.(E.))

Lord Wilberforce

 

Mr. Nicholls, for the appellants, courageously attempted to suggest an escape route on the following lines. The courts, he submitted, must in all cases try to reconcile protection of a defendant from possible self-incrimination with doing justice to a plaintiff. Whatever may have been the position when the privilege was first worked out by the judges, modern procedure is now more flexible, and makes it possible to do justice without denying protection. It is all the more necessary to find a flexible approach, because so many actions which formerly involved civil liability only are now, by modern trends in legislation, made criminal offences. Thus many ordinary cases of "passing off" are now offences under the Trade Descriptions Act 1968. If full scope is given to the privilege against self-incrimination, potential plaintiffs, in this area of industrial property, will fail to get a remedy in the civil courts. Mr. Nicholls was at pains to make clear that he was not, in these submissions, attempting to negate or undermine the privilege against self-incrimination. This has been too long established in our law as a basic liberty of the subject - in other countries it has constitutional status - to be denied. It has received modern recognition in section 14 of the Civil Evidence Act 1968 and in this House.

It is certainly correct to say, that existing law and practice to some extent prevent matter disclosed on discovery in civil proceedings from being used to the prejudice of the disclosing party. The protection is described with different words: the matter must not be used for an "improper" purpose: Alterskye v. Scott [1948] 1 All E.R. 469, or a "collateral object" (Bray on Discovery, 1st ed. (1885), p. 238) or, most strongly, "otherwise than in the action in which they are disclosed": Distillers Co. (Biochemicals) Ltd. v. Times Newspapers Ltd. [1975] Q.B. 613, 621, per Talbot J.

In the most recent case, Riddick v. Thames Board Mills Ltd. [1977] Q.B. 881, 896, Lord Denning M.R. used the words "for any ulterior or alien purpose." But it has never been held that these expressions, however wide, extend to criminal proceedings: if they did there would be no need for the privilege. Mr. Nicholls was therefore obliged to suggest that even granting this, the courts had power positively to decide in a particular case, as the counterpart of the obligation to disclose, that any matter which is compulsorily disclosed as the result of the court's process should be inadmissible in evidence. But I cannot accept that a civil court has any power to decide in a manner which would bind a criminal court that evidence of any kind is admissible or inadmissible in that court. Certainly a criminal court always has a discretion to exclude evidence improperly obtained if to admit it would unfairly prejudice a defendant. But to substitute for a privilege a dependence on the court's discretion would substantially be to the defendant's detriment. That the civil court has not the power to declare evidence inadmissible is strikingly shown by section 31 of the Theft Act 1968 which contains an express provision by which a person is obliged to answer questions put in proceedings for the recovery of property and to comply with orders made in such proceedings and which states that no statement or admission so made shall be admissible in evidence against the person concerned in


 

[1982]

 

443

A.C.

Rank Film Ltd. v. Video Information Centre (H.L.(E.))

Lord Wilberforce

 

proceedings for an offence under the Act. Infringement of copyright is not theft, so this section cannot be invoked.

The appellants' submission amounts to a request to the courts, by judicial decision, to extend this statutory provision to civil proceedings generally, or at least to these proceedings. But this, in my opinion, the courts cannot do. I should add that Riddick's case is no support for the proposition that answers or documents extracted in civil proceedings are inadmissible in criminal proceedings: the remark of Lord Denning M.R. in the Court of Appeal [1980] 3 W.L.R. 487, 507G is made with reference to an argument for applying section 31 of the Theft Act by analogy (which I cannot accept) and clearly does not represent Lord Denning's view as to Riddick's case. That is accurately stated at p. 504.

There are some further points on this aspect of the case. First, I do not think that adequate protection can be given by extracting from the plaintiffs, as a term of being granted an Anton Piller order, an undertaking not to use the information obtained in criminal proceedings. Even if such an undertaking were binding (see to the contrary Triplex Safety Glass Co. Ltd. v. Lancegaye Safety Glass (1934) Ltd. [1939] 2 K.B. 395) the protection is only partial, viz. against prosecution by the plaintiff himself. Moreover, whatever direct use may or may not be made of information given, or material disclosed, under the compulsory process of the court, it must not be overlooked that, quite apart from that, its provision or disclosure may set in train a process which may lead to incrimination or may lead to the discovery of real evidence of an incriminating character. In the present case, this cannot be discounted as unlikely: it is not only a possible but probably the intended result. The party from whom disclosure is asked is entitled, on established law, to be protected from these consequences. Secondly, and this was very much an argument of last resort, Mr. Nicholls suggested that protection could be given by a hearing, wholly or in part, in camera. But such procedure is totally alien, except in the most exceptional cases, to our procedure and I do not think that so wide an extension of it as the submission involves ought to be contemplated. Thirdly, there are some procedural considerations. The appellants argued that even, if, in principle, the privilege against self-incrimination is capable of attaching in cases such as the present, that should not prevent the order for information and production being made: the defendant should be left to raise the question of privilege, if he wishes, and if necessary the court should rule upon it. The difficulty is, however, that the orders are intended to take effect immediately upon the arrival of the plaintiff's representatives (including, under existing practice, a solicitor) at the defendant's premises, and if the defendant were to refuse to comply, even in reliance on the privilege, he might, at least technically, be liable in contempt. I do not think that this problem is for this House to resolve. Attention can merely be drawn to it, and in due course, no doubt, forms of order will be worked out which will enable the orders to be as effective as practicable while preserving the defendant's essential rights. All that this House can do is to decide that the privilege against self-incrimination is capable of being invoked. I would so decide.


 

[1982]

 

444

A.C.

Rank Film Ltd. v. Video Information Centre (H.L.(E.))

Lord Wilberforce

 

Some other points were taken by the respondents as to the orders made in this case. Some were said to be too widely expressed, in particular one which required each defendant to disclose the whereabouts of all illicit copy films or masters (i.e. master copies) for making the same known to that defendant. I can see that they may have force, but the proper forum for them to be raised and debated is in the Chancery Division before judges particularly experienced in the framing and controlling of interlocutory orders. The record shows that they are fully sensitive to the need for keeping these orders within due limits.

I would dismiss the present appeal.

 

LORD DIPLOCK. My Lords, I have had the advantage of reading in draft a copy of the speech of my noble and learned friend, Lord Wilberforce. For the reasons he has given, I too would dismiss this appeal.

 

LORD FRASER OF TULLYBELTON. My Lords, recent technical developments have made it possible for anyone who can get a cinema film into his possession for a few hours to transpose it on to magnetic tape. Having made a master copy on magnetic tape he can make hundreds of copies from it which can then be inserted in cassettes and sold to the public. These cassettes can be played on a domestic television set provided it has a suitable attachment, called a video cassette recorder (VCR), which can now be bought for a few hundred pounds. Unauthorised copies are sold to the public at prices of £100 or £150 each and the owners of the copyright suffer serious loss as a result.

The appellants are, or represent, the owners of nearly every major English language cinema film shown in public cinemas in the United Kingdom. The first four respondents are alleged to be dealers in pirated copies of many of these films, and the fifth and sixth respondents are alleged to be makers of pirate copies. The appellants are naturally concerned to protect their valuable copyright in these films. Ordinary actions against dealers in illicit films are of little avail to the copyright owners because the dealers are unlikely to be able to pay substantial damages and injunctions against them merely close down one outlet for the films and do not prevent the manufacture of more unauthorised copies which can then be sold through other outlets. The main concern of the appellants is, therefore, to trace the whereabouts of the master tapes in order to take action against those who control them. For this purpose a form of order has been devised which is generally referred to as an Anton Piller order, from the case of Anton Piller KG v. Manufacturing Processes Ltd. [1976] Ch. 55. These orders are only made when the plaintiff produces strong prima facie evidence of infringement of his copyright. They are made on the ex parte application of the plaintiff, are served on the defendants without previous notice and order the defendants to make immediate discovery of documents and to give immediate answers to interrogatories designed to find out particularly the names and addresses of their suppliers. Orders of that general nature, tending gradually to increase in stringency - see E.M.I. Ltd v. Sarwar[1977] F.S.R. 146 - have been found effective and have been made in several reported cases in England as well as in New Zealand (apparently


 

[1982]

 

445

A.C.

Rank Film Ltd. v. Video Information Centre (H.L.(E.))

Lord Fraser of Tullybelton

 

independently of the English development) and also in South Africa, Australia and elsewhere, apparently following the English practice. Now for the first time the defendants have objected to making discovery and to answering the interrogatories on the ground that by doing so they might incriminate themselves. If the objection is well founded the usefulness of the Anton Piller type of order will be much reduced if not practically destroyed.

In the present case, two orders were made by Walton J. on July 2 and 5, 1979, respectively. The order of July 2, which was directed to the first four respondents, was a long, complicated document. The part of it to which the respondents object on the ground that it might require them to incriminate themselves is the part which ordered them to disclose to the person who served the order the names and addresses, so far as known to them, of all customers to whom they had supplied illicit films nd of all persons who had supplied them or offered to supply them with illicit films. It also ordered them to permit the person who served the order to "enter forthwith" their premises for the purpose of looking for, inspecting, and photographing documents relating to illicit copy films, but the objection of self-incrimination is not made against this part of the order. By July 5, when the second order was made, the appellants ad apparently discovered the name of the sixth respondent, and by the order of that date each of the six respondents was ordered to disclose to the person who served the order the whereabouts of all illicit films, or masters for making them, known to that respondent. This order is said to infringe the privilege against self-incrimination.

The respondents assert that if they are compelled to disclose the information mentioned in the parts of the orders to which they object, they will run a real risk of providing evidence tending to show that they have been guilty of criminal offences. Three offences are particularly suggested, namely (1) contravention of section 21 of the Copyright Act 1956, (2) the common law offence of conspiracy to defraud and possibly (3) an offence against section 18 of the Theft Act 1968. The risk of prosecution under the Theft Act may, I think, be disregarded as remote, because that Act applies to theft of "property" which is defined in a way that does not appear to include copyright, but only, so far as this appeal is concerned, to the physical objects such as tapes and cassettes which are of small value by themselves. The risk of prosecution under section 21 of the Copyright Act 1956 is theoretically greater because acts which are infringements of copyright, including the making of unauthorised copies (section 13 (5)) and knowingly importing, or selling infringing copies (section 16 (2) and (3) (a)) are very likely also to be offences under section 21 (1). But the offences created by section 21 are only ancillary remedies for breach of copyright, as appears from the cross-heading to Part III of the Act, and they are treated as comparatively trivial with a maximum penalty (as amended) of £50. It would, in my opinion, be unreasonable to allow the possibility of incrimination of such offences to obstruct disclosure of information which would be of much more value to the owners of the infringed copyright than any protection they obtain from section 21.

But conspiracy to defraud is a different matter. It is a serious offence. The risk of those who deal in or manufacture illicit films being prosecuted


 

[1982]

 

446

A.C.

Rank Film Ltd. v. Video Information Centre (H.L.(E.))

Lord Fraser of Tullybelton

 

for it is by no means remote or fanciful. Indeed the sixth respondent is now facing prosecution on that ground for the matters with which this appeal is concerned. Subject to a point, to be noticed hereafter, with regard to an offence of conspiracy, the possibility of prosecution on this ground does therefore raise the question whether the defendant can rely on the privilege against being compelled to incriminate himself. The privilege itself is well established in English law. It is impliedly recognised by section 14 (1) of the Civil Evidence Act 1968, and authority for its existence is to be found in Triplex Safety Glass Co. Ltd. v. Lancegaye Safety Glass (1934) Ltd.[1939] 2 K.B. 395 and In re Westinghouse Electric Corporation Uranium Contract Litigation M.D.L. Docket No. 235 (No. 2) [1978] A.C. 547. The appellants do not dispute the existence of a privilege against compulsory self-incrimination by discovery or by answering interrogatories. But their counsel presented a powerful argument to the effect that the privilege ought not to be upheld in its simple form, to the serious prejudice of the appellants, when the object of the privilege could be attained in a way that would not prejudice the interests of parties such as the appellants. It could be attained, according to the argument, by compelling the discovery and answers, while relying on a restriction, express or implied, against the use of information thereby disclosed in any prosecution of the party making the discovery.

At one stage, the argument seemed to depend on the possibility that the court which ordered the discovery might place an express restriction on the use of any information disclosed. In my opinion, any argument on that basis must be rejected. A restriction by the court making the order would, no doubt, be effective to bind the party who obtained the order, but it can hardly be suggested that it would be effective to prevent a prosecutor in the public interest from using, or an English criminal court (a fortiori a Scottish criminal court if a conspiracy were prosecuted in Scotland) from admitting the information in evidence at a trial. All evidence which is relevant is prima facie admissible in a criminal trial, although the trial judge has a discretion to exclude evidence which, though admissible, has been obtained by unfair means from the accused after commission of the offence: Reg. v. Sang [1980] A.C. 402. But it is obvious that a person who has to rely on an exercise of judicial discretion is in a less secure position than one who, by relying on the privilege, can avoid providing the information in the first place. We were referred to some old cases where the court had considered the restrictions on the use of documents which it ordered to be disclosed. In one case the court required an undertaking by the party in whose favour the order was made not to use answers for the purpose of enforcing penalties (Jackson v. Benson (1826) 1 Y. & J. 32) and in Reynolds v. Godlee (1858) 4 K. & J. 88, 92 Page-Wood V.-C. said that the court had a right to say to the person who has obtained the production of documents: "Those documents shall never be used by you except with the authority of the court" (emphasis added). Such qualified restrictions are clearly of much less value to the party making discovery than the privilege itself would have been.

The main basis of the argument was an implied rule, said to be derived from the case of Riddick v. Thames Board Mills Ltd. [1977] Q.B. 881, to the effect that evidence which has been disclosed under compulsion in


 

[1982]

 

447

A.C.

Rank Film Ltd. v. Video Information Centre (H.L.(E.))

Lord Fraser of Tullybelton

 

a civil action cannot be used against a person who has disclosed it for the purposes of another civil action or of a criminal prosecution. It was argued that any incriminating information disclosed by a person making discovery or answering interrogatories would enjoy complete protection by reason of that rule, because the information would have been given under compulsion, in respect that refusal to give it would be contempt of court. I would make one preliminary observation on that argument. It seems to me to go much too far. If it is well-founded, it means that the established practice whereby judges warn witnesses that they need not answer questions addressed to them in oral examination in court, if the answers might tend to incriminate them, is unnecessary, because refusal to answer would, in the absence of the warning, be contempt of court and any incriminating evidence having been given under compulsion would not be admissible against them in criminal proceedings. I approach a proposition leading to that result with some scepticism. In any event, the case of Riddick was concerned only with the question of the use to which documents recovered on discovery could be put by the party who had obtained discovery. Lord Denning M.R. at p. 896H, stated the principle in a sentence thus: "A party who seeks discovery of documents gets it on condition that he will make use of them only for the purposes of that action, and for no other purpose" (emphasis added). That statement of principle would have to be extended to include cases such as Norwich Pharmacal Co. v. Customs and Excise Commissioners[1974] A.C. 133, where an order was made for discovery of information for the purpose of its being used in another action. The principle is, I think, that information is not to be used by the party who gets discovery for purposes other than that for which production was ordered. But the case of Riddick had nothing to do with the use of information for prosecution in the public interest. On the contrary, both Lord Denning M.R. at p. 896 and Stephenson L.J. at p. 901, referred with approval to the observations of Talbot J. in Distillers Co. (Biochemicals) Ltd. v. Times Newspapers [1975] Q.B. 613, 621, recognising that there might be a public interest in favour of disclosure which would override the public interest in the administration of justice which goes to preserve the confidentiality of documents disclosed on discovery. That is clearly correct. If a defendant's answers to interrogatories tend to show that he has been guilty of a serious offence I cannot think that there would be anything improper in his opponent reporting the matter to the criminal authorities with a view to prosecution, certainly if he had first obtained leave from the court which ordered the interrogatories, and probably without such leave. If that is right the object of the privilege against self-incrimination would not be completely achieved by relying on any rule which can be derived from Riddick v. Thames Board Mills Ltd.[1977] Q.B. 881.

Moreover, if the incriminating information given on discovery or in answer to interrogatories were disclosed subsequently in open court in the civil action, it might be heard and might then be used in a criminal prosecution against the defendant. In an attempt to meet this difficulty Mr. Nicholls submitted that the defendant's interests could be protected by the courts sitting in camera whenever incriminating information disclosed on discovery was to be referred to. Such procedure would raise considerable practical difficulties and it would also be objectionable on principle. There


 

[1982]

 

448

A.C.

Rank Film Ltd. v. Video Information Centre (H.L.(E.))

Lord Fraser of Tullybelton

 

are cases where in order that justice may be done the court has to sit in camera (Scott v. Scott [1913] A.C. 417) but it is important that such cases should be limited to those where proceedings in private are absolutely necessary in the interests of justice. If the procedure for which the appellants are contending would lead to more frequent hearings in camera, as I think it would, then that is an additional argument against adopting it. Accordingly I reach the conclusion, with some regret, that the respondents' objection based upon the fear of self-incrimination is well-founded and ought to be upheld.

An alternative and narrower contention was advanced by counsel for the appellants to cover the event of his being unsuccessful on the main contention. This narrower contention raises the point about a charge of conspiracy to which I have already referred. It was said that there is a special exception to the privilege against self-incrimination where the incrimination relates to the offence of conspiracy, because of the wide range of facts that might be included in that offence. There is some support for this argument in observations by judges in cases to which we were referred (see Mayor, Commonalty and Citizens of London v. Levy (1803) 8 Ves.Jun. 398, Attorney-General v. Conroy (1838) 2 Jo.Ex.Ir. 791 and Chadwick v. Chadwick (1852) 22 L.J.Ch. 329) but in my opinion they do not provide any clear principle on which an exception to the general rule against compulsory self-incrimination could be based. They do not appear to have been followed in recent years. Accordingly I would not accept the narrower submission on this point.

The order of July 2 was criticised as being too wide, particularly in so far as it called on the defendants to disclose the names of all persons who are engaged in the production, distribution and sale of illicit films, and not merely those persons with whom the defendants have had business dealings. In my opinion that criticism was justified and the order ought to have been restricted in that way. For these reasons I would dismiss the appeal.

 

LORD RUSSELL OE KILLOWEN. My Lords, for the reasons contained in the speeches of my noble and learned friends, Lord Wilberforce and Lord Fraser of Tullybelton, I concur in the dismissal of this appeal. Inasmuch as the application of the privilege in question can go a long way in this and other analogous fields to deprive the owner of his just rights to the protection of his property I would welcome legislation somewhat on the lines of section 31 of the Theft Act 1968: the aim of such legislation should be to remove the privilege while at the same time preventing the use in criminal proceedings of statements which otherwise have been privileged.

 

LORD ROSKILL. My Lords, I have had the advantage of reading in draft the speeches of my noble and learned friends, Lord Wilberforce and Lord Fraser of Tullybelton. I agree with them and for the reasons they give, I too would dismiss this appeal.

 

 

Appeal dismissed.

 

Solicitors: Clifford-Turner; Cutner Bond.

 

J. A. G.