Crest Homes Plc v Marks
| Jurisdiction | England & Wales |
| Judge | Lord Keith of Kinkel,Lord Templeman,Lord Griffiths,Lord Mackay of Clashfern,Lord Oliver of Aylmerton |
| Judgment Date | 09 July 1987 |
| Judgment citation (vLex) | [1987] UKHL J0709-3 |
| Date | 09 July 1987 |
| Court | House of Lords |
[1987] UKHL J0709-3
Lord Keith of Kinkel
Lord Templeman
Lord Griffiths
Lord Mackay of Clashfern
Lord Oliver of Aylmerton
House of Lords
My Lords,
I have had the opportunity of reading in draft the speech to be delivered by my noble and learned friend Lord Oliver of Aylmerton. I agree with it, and for the reasons he gives would dismiss the appeal.
My Lords,
For the reasons to be given by my noble and learned friend Lord Oliver of Aylmerton I would dismiss this appeal.
My Lords,
I have had the advantage of reading in draft the speech to be given by my noble and learned friend Lord Oliver of Aylmerton. I agree with it, and for the reasons he gives I too would dismiss this appeal.
My Lords,
I have had the advantage of reading in draft the speech prepared by my noble and learned friend Lord Oliver of Aylmerton and for the reasons he gives I too would dismiss this appeal.
My Lords,
The respondents, Crest Homes Ltd. ("Crest"), are a company carrying on, either themselves or through subsidiary companies, a business of developing and selling land for residential purposes. In the course of that business they have evolved a substantial number of designs and plans of different types of dwelling house and it is not in dispute that they are the owners of the copyright in those designs and plans. On 23 November 1984 Crest, together with its subsidiary company Crest Homes (Westerham) Ltd. ("Westerham"), obtained from Scott J. ex parte an order in the Anton Piller form ( Anton Piller KG v. Manufacturing Processes Ltd. [1976] Ch. 55) against the first and second appellants. The first appellant was an employee of Crest and a director of Westerham but had handed in his resignation and left to join the second appellant, a company incorporated in the previous August, as its managing director. The basis of the ex parte application was an allegation that Crest had discovered that a planning application had been made by the second appellant using drawings relating to two of Crest's house designs known as "Carrington" and "Linslade." The order, which followed the usual Anton Piller form, incorporated an undertaking by the plaintiffs to issue and serve a writ and notice of motion and that was done on 26 November 1984. The defendants were the first two appellants and another individual not a party to this appeal. Subsequently further parties were added by amendment. The writ claimed appropriate injunctions restraining infringement of Crest's copyright in the drawings relating to their house designs and misuse of confidential information, an inquiry as to damages and delivery up of infringing material. I will refer to the action thus constituted as "the 1984 action." The order of Scott 3. ("the 1984 order") restrained the defendants in the action from parting with possession otherwise than to the plaintiffs' solicitors of an extensive range of documents including "any documents of the plaintiffs or either of them relating to any of their house designs listed on page 2 of exhibit JMC 11" to the affidavit sworn in support of the application and it obliged the first appellant to permit entry to his house for the purpose of searching for, inspecting and removing such documents. The exhibit referred to contained particulars of 60 of Crest's house designs including the Carrington and Linslade designs which had formed the basis of the application. That order was duly executed at the first appellant's house and a number of documents were inspected and removed into the custody of Crest's solicitors. On the first inter partes hearing of the motion before Vinelott J. on 4 December 1984 the matter was adjourned to a date to be fixed on an undertaking substantially in accordance with the injunction granted by Scott J. On 11 December 1984 the first appellant swore an affidavit in which he accepted that the second appellant had made use of drawings relating to the Carrington and Linslade houses and swore that he had no relevant documents in his possession other than those which had been found as a result of the search of his premises on the execution of the order, which documents had been listed in an exhibit to an affidavit of Crest's solicitor. He had previously, pursuant to the order, sworn an affidavit on 30 November 1984 denying that he was in possession of any of the documents or information required by the order. The action thereafter proceeded on the footing that only the Carrington and Linslade designs had been copied and that the first appellant was not in possession of any further documents relating to Crest's designs. On the adjourned hearing of the motion on 17 April 1985 a further undertaking in the terms of the previous undertaking with certain modifications was given and the motion stood to trial.
As already mentioned, the 1984 order and the undertakings which replaced it related to 60 specified Crest designs. They did not include the design of a house type known as "Versailles." In October 1985, however, Crest discovered that the second appellants were advertising a house which appeared to them to be similar to the Versailles house and, after inspecting the second appellant's planning applications, they concluded that the design was substantially copied from their Versailles design. The relief claimed in the 1984 action was sufficiently wide to cover a claim in respect of such copying and it would, no doubt, have been open to Crest to apply in that action for a further interlocutory injunction specifically to restrain copying of the Versailles design and any other Crest designs not already embraced in the existing undertakings. It seems, however, that they took the view that any infringement in relation to the Versailles design would probably have taken place after the commencement of the 1984 action and would thus constitute a fresh cause of action. They accordingly, on 25 November 1985, commenced a second action against the first and second appellants claiming substantially the same relief as that claimed in the 1984 action and at the same time they obtained and executed a fresh Anton Piller order ("the 1985 order") directed to conducting a search at the second appellant's business premises for documents which included the designs listed in an exhibit to the affidavit in support of the application. This exhibit listed some 105 designs and included (although, it might then have been thought, unnecessarily) the 60 already the subject matter of the existing undertaking. That order was duly executed. No objection was made to the search and numerous drawings were discovered which Crest allege infringe their copyright and which include drawings which Crest allege are copies of designs of some of the 60 types of dwellings specifically made the subject matter of the 1984 order. Crest concluded, therefore, that the existing undertakings had been broken and that the first and second appellants were in breach of the 1984 order. In an affidavit sworn on 17 December 1985 the first appellant admitted that all these documents had been in his possession at the time of the 1984 order but deposed that a representative of Crest's solicitors had consented to his retaining them.
In the light of this history, and if Crest are right in believing that the documents disclosed as a result of the execution of the 1985 order show numerous (and, it must be assumed, deliberate) breaches of the order and undertakings made or given in the 1984 action - and it must be emphasised that this is very much at issue - it is not altogether surprising that they now wish to seek to enforce the order and undertakings by proceedings in the 1984 action for contempt of court. The problem with which they are confronted, however, is that a substantial part of the material which they would require to make use of in prosecuting such an application consists of the documents taken into the possession of their solicitors and the affidavits sworn by or on behalf of the appellants pursuant to the 1985 order.
The purpose of an Anton Piller order is, primarily, the preservation of evidence which might otherwise be removed, destroyed or concealed but it operates, of course, also as an order for discovery in advance of pleadings. It is clearly established and has recently been affirmed in this House that a solicitor who, in the course of discovery in an action, obtains possession of copies of documents belonging to his client's adversary gives an implied undertaking to the court not to use that material nor to allow it to be used for any purpose other than the proper conduct of that action on behalf of his client (see Home Office v. Harman [1983] 1 A.C. 280). It must not be used for any "collateral or ulterior" purpose, to use the words of Jenkins J. in Alterskye v. Scott [1948] 1 All E.R. 469, approved and adopted by Lord Diplock in Harman's case, at p. 302. Thus, for instance, to use a document obtained on discovery in one action as the foundation for a claim in a different and wholly unrelated proceeding would be a clear breach of the implied undertaking (see Riddick v. Thames Board Mills Ltd. [1977] Q.B. 881). It has recently been held by Scott J. in Sybron Corporation v. Barclays Bank Plc. [1985] Ch. 299 - and this must, in my judgment, clearly be right - that the implied undertaking applies not merely to the documents discovered themselves but also to information derived from those documents whether it be embodied in a copy or stored in the mind. But the implied undertaking is one which is given to the court ordering discovery and it is clear and is not disputed by the appellants that it can, in appropriate...
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