Crest Homes Plc v Marks
| Jurisdiction | England & Wales |
| Judge | LORD JUSTICE MAY,LORD JUSTICE NOURSE,LORD JUSTICE CROOM-JOHNSON |
| Judgment Date | 20 February 1987 |
| Judgment citation (vLex) | [1987] EWCA Civ J0220-1 |
| Docket Number | 87/0145 |
| Court | Court of Appeal (Civil Division) |
| Date | 20 February 1987 |
[1987] EWCA Civ J0220-1
Lord Justice May
Lord Justice Croom-Johnson
and
Lord Justice Nourse
87/0145
IN THE SUPREME COURT OF JUDICATURE
COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
(Mr. Justice Whitford)
Royal Courts of Justice
MR. ROGER HENDERSON, Q.C. and MR. CHRISTOPHER FLOYD (instructed by Messrs Lovell White & King) appeared on behalf of the Appellants/Plaintiffs.
MR. GEOFFREY HOBBS (instructed by Messrs Jacques & Lewis) appeared on behalf of the Respondents/Second and Fourth Defendants.
MR. PAUL DICKENS (instructed by Messrs Wm. J. Stoffel & Co., Beckenham, Kent) appeared on behalf of the Respondent/ First Defendant.
I will ask Lord Justice Nourse to give the first judgment in this case.
This is an appeal from an interlocutory decision of Whitford J. given on 28th February 1986 in an action for infringement of copyright in house designs and misuse of confidential information. Shortly stated, the sole question now in issue is whether the plaintiffs can make use of documents obtained on the execution of an Anton Piller order for the purpose of considering and, if so advised, taking proceedings for contempt of court in respect of breaches of an earlier such order made in another action between much the same parties and covering much of the same ground. The outcome of that question depends primarily on the interaction between (1) the implied undertaking that the documents will not be used for any collateral or ulterior purpose; (2) the privilege against self-incrimination; and (3) the provisions of section 72 of the Supreme Court Act 1981.
The plaintiffs in this action (which I will call "the 1985 action") are Crest Homes plc. Both they and the second and fourth defendants, Wiseoak Homes Limited and Wiseoak Residential Limited, are companies engaged in the development of residential land and the sale of residential properties. The first defendant, Mr. David Terrence Marks, was formerly employed by the plaintiffs and he was a director of a subsidiary of theirs called Crest Homes (Westerham) Limited. The third defendant, Mr. Barry J. Best, is not affected by the order appealed from and he is not a party to the appeal.
In November 1984 an earlier action (which I will call "the 1984 action") was commenced by the plaintiffs and their Westerham subsidiary against Mr. Marks, Wiseoak Homes Ltd. and another individual who is not a party to the 1985 action. In June 1985 another individual and two other companies, none of whom is a party to the 1985 action, were Joined to the 1984 action by amendment.
On 23rd November 1984 Scott J. made an Anton Piller order in the 1984 action. It appears that at that date Mr. Marks was still technically an employee of the plaintiffs, although he had handed in his resignation on 1st November and had left to join the second defendant.
The 1984 order was applied for because the plaintiffs had discovered that planning applications had been made by the second defendant, using drawings which reproduced the plaintiffs' own drawings for two of their house types called "Carrington" and "Linslade" and for which they claim copyright.
In paragraph 39 of an affidavit sworn on 11th December 1984, Mr. Marks agreed that the plans in question used the Carrington and Linslade designs of the plaintiffs. He accepted that those plans were copied from the plaintiffs' drawings, although he then made several points in mitigation.
The 1984 order, which was in a usual form, was executed at Mr. Marks' home and also at the second defendants' registered office. The plaintiffs say that they were not aware that the second defendant had premises at any other location. The 1984 order was not restricted to the Carrington and Linslade designs. It extended to copies or originals of the plaintiffs' documents relating to 59 house designs listed in an exhibited schedule and one. further design.
The material provisions of the 1984 order were:
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(1) Injunctions against—
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(a) making use of any of the relevant documents or the information derived therefrom, and
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(b) making planning applications which utilised drawings reproducing the designs of any of the 60 house types.
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(2) A power to search for and remove from Mr. Marks' home the relevant documents.
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(3) An order for the disclosure of the whereabouts of the relevant documents.
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(4) An order for delivery up within 24 hours of all relevant documents not already removed.
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(5) An order for the swearing of affidavits of compliance by or on behalf of the defendants, including Mr. Marks.
On 30th November 1984, in response to the 1984 order, Mr. Marks swore a short affidavit in which he said that he was not in possession of any of the documents or information required by that order.
In paragraphs 40 and 41 of the much longer affidavit which he swore on 11th December 1984, Mr. Marks said that he no longer had in his possession any originals or copies of the Crest book of house designs or brochures of various Crest developments containing details of Crest House designs. In paragraphs 64 and 65 he said this:
"64. I wish to deal with the allegations made about Crest documents that I allegedly have in my possession. As I have already indicated, the documents exhibited at DTM1 are the only Crest documents I have in my possession.
65. I do not have any details of the Linslade and Carrington House type. I have not taken any documents relating to the internal costing and profit margin information of Crest, as set out in paragraph 44 and 48 of Mr. Czezowski's affidavit. Nor do I have my own copy of the Crest book of House Designs, or any copies thereof."
The documents contained in exhibit DTMl were those which had been removed from Mr. Marks' home on the execution of the 1984 order.
The plaintiffs say that it appeared to them from this evidence, first, that nothing other than Carrington and Linslade designs had been copied and, secondly, that no other documents relating to those designs were then retained by the defendants. The 1984 action proceeded, they say, upon that basis.
However, in October 1985 the plaintiffs discovered that another type of house, bearing similarities to one of their own, was being advertised by the second defendants under the name "Larchvale". They inspected the relevant planning applications and concluded that the design was substantially copied from their own "Versailles" design. That design was not one of the 60 which were covered by the 1984 order. Furthermore, it was possible that all relevant infringements and misuses of confidential information had occurred after the issue of the writ in the 1984 action. It was for that reason, say the plaintiffs, that a second action, the 1985 action, was started. An Anton Piller order was made in that action by Whitford J. on 25th November 1985. On this occasion it extended to documents relating to 105 of the plaintiffs' house designs, including all of the 60 which had been covered by the 1984 order. Subject to that, the order was in much the same form.
The 1985 order was executed at the second defendants' trading premises. The plaintiffs claim that a large number of infringing drawings were there discovered, many of which they say either ought to have been disclosed pursuant to the 1984 order, or were compelling evidence of breaches of the injunctions contained therein. In particular, the plaintiffs contend that certain documents which relate to the Carrington and Linslade types (including a specification for the former) fall within the terms of the 1984 order and that the continued possession of them was contrary to Mr. Marks' statements in his 1984 affidavits already referred to.
In paragraph 3(a) of an affidavit sworn in the 1985 action on 17th December 1985, Mr. Marks said this:
"(a) each and every document taken away by the Plaintiff's representative pursuant to the Order was in my possession when my own home was searched pursuant to an Anton Piller Order made in 1984 and they were all then (in 1984) inspected by Officers of the Court and representatives of the Plaintiff and were left with me as being of no relevance. I did not destroy or conceal those documents believing that if I had, the Plaintiffs may have subsequently claimed a breach of the Order or used such destruction or concealment as an indication of 'guilt' in that 1984 action. I therefore took all the documents, save as below, to my office at 166 Main Road, Sundridge, as aforesaid where they have since lain undisturbed with my 'dead' filing. I respectfully ask the Plaintiffs representative who searched my office to confirm this precise location."
That then is the background to this case. The plaintiffs wished to make use of the documents obtained on the execution of the 1985 order, and also the affidavits sworn in purported compliance therewith, for the purposes of the 1984 action in two respects: first, in the general conduct of that action; secondly, for the purpose of considering and, if so advised, taking proceedings for contempt of court in respect of breaches of the 1984 order. However, they were advised that they could not take that course without applying to the court.
The plaintiffs' application came before Whitford J. on 28th February 1986, when it was refused in both respects. The matter has to some extent been overtaken by events, because on 25th June 1986 the Master made an order by consent for the 1984...
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