Digital Equipment Corporation v Darkcrest Ltd
| Jurisdiction | England & Wales |
| Judgment Date | 1984 |
| Date | 1984 |
| Year | 1984 |
| Court | Chancery Division |
Practice - Discovery - Anton Piller order - Cross-undertaking in damages - Allegation by defendants that order obtained on misleading evidence - Counterclaim in damages not based on cross-undertaking - Application to strike out - Whether counterclaim disclosing cause of action
On 28 July 1982 the plaintiffs obtained an Anton Piller order against the defendants in the usual form, including a cross-undertaking in damages, for alleged infringements of copyright and passing off, and issued a writ of summons on 3 August 1982. An amended notice of motion by the defendants, dated 5 August 1982, to discharge the Anton Piller order and invoking the cross-undertaking on the ground that the plaintiffs had not disclosed the full facts to the court, was stood over until trial. The plaintiffs served a statement of claim on 22 October 1982 to which the defendants served a defence and counterclaim on 14 December 1982 alleging, inter alia, that the plaintiffs had obtained the Anton Piller order on misleading evidence. On 6 March 1984 the plaintiffs obtained from the master an order striking out certain paragraphs contained in the counterclaim, which raised three separate causes of action, based upon the Anton Piller order, but each distinct from the cross-undertaking as to damages in the Anton Piller order itself, namely, abuse of the process of the court, negligence and trespass, and which prayed exemplary or aggravated damages.
On appeal by the defendants: —
Held, dismissing the appeal, (1) that since the object of an Anton Piller order was the preservation of evidence for consideration by the court at the trial, the plaintiffs in seeking an ex parte order had an absolute duty to place all material facts and matters before the court but that the duty was not owed to any party affected by the proceedings; that since the counterclaim did not allege that the plaintiffs had sought the order for a different or improper object, and since the court retained control of proceedings arising out of Anton Piller orders thus providing the defendants with full protection under the cross-undertaking, there had been neither an abuse of the process of the court by the plaintiffs nor did they owe a duty of care to the defendants giving rise to an action in negligence (post, pp. 622E–F, 626H–627B, 628E–G).
(2) That the plaintiffs entry into the defendants' premises was with the defendants' permission in compliance with the order, and since there had been no unauthorised entry no cause of action lay in trespass and any damage which arose from an entry pursuant to the Anton Piller order would be compensated by an order under the plaintiffs' cross-undertaking (post, pp. 628G–629B).
The following cases are referred to in the judgment:
Abbs v. Merton London Borough Council [
Fletcher Sutcliffe Wild Ltd. v. Burch [
Grainger v. Hill (
Griffith v. Blake (
Quartz Hill Consolidated Gold Mining Co. v. Eyre (
Smith v. Day (
Winchester v. Fleming [
The following additional cases provided by courtesy of counsel were cited in argument:
Agreement of A.E.G.-Telefunken (Re the) [
Daniels v. Fielding (
Garden Cottage Foods Ltd. v. Milk Marketing Board [
Hedley Byrne & Co. Ltd. v. Heller & Partners Ltd. [
Paterson Zochonis Ltd. v. Merfarken Packaging Ltd. [
APPEAL from Master Cholmondeley Clarke.
The plaintiffs, Digital Equipment Corporation and Digital Equipment Co. Ltd., brought an action against the defendants, Darkcrest Ltd. and Nicholas Martin Craven Brackenbury, alleging breach of copyright in, and passing off, the plaintiffs' computer programs. By their defence and counterclaim, the defendants in paragraphs 26 to 33 alleged that the plaintiffs had obtained an Anton Piller order by failing to make full and frank disclosure to the court in their affidavit evidence and thereby misled the court. They claimed exemplary or aggravated damages for the plaintiffs' breach of the implied duty to the defendants to make full disclosure to the court on the application for the Anton Piller order and for trespass in entering the defendants' premises in execution of the order.
The plaintiffs applied to have paragraphs 26 to 33 struck out on the grounds that they (a) disclosed no reasonable cause of action; (b) were frivolous or vexatious; (c) might prejudice, embarrass or delay the fair trial of the action or (d) were otherwise an abuse of the process of the court. On 6 March 1984 Master Cholmondeley Clarke ordered that the paragraphs be struck out.
The defendants appealed. The appeal was heard in chambers and judgment delivered in open court.
The facts are stated in the judgment.
Sebastian Neville-Clarke for the defendants.
John Baldwin for the plaintiffs.
FALCONER J. This is an appeal from the order of Master Cholmondeley Clarke, dated 6 March 1984, whereby on the application of the plaintiffs he ordered certain paragraphs, namely paragraphs 26 to 33 inclusive, of the defendants' counterclaim to be struck out. I heard the appeal in chambers in accordance with the present practice; but, at the suggestion of counsel for the defendants and with the agreement of counsel for the plaintiffs, this judgment is being delivered in open court as it may possibly be of some general interest.
The action is one for infringement of copyright and passing off. The plaintiffs carry on the business of making and selling computer hardware and software, the first plaintiff being an American corporation and their business apparently being in America, and the second plaintiff carrying on business in the United Kingdom, being a wholly-owned subsidiary of the first plaintiff. In the copyright action it is alleged that the first plaintiff is the owner of the copyright in a number of original literary works, which are in fact computer programs. The defendants do say in the second sentence of the first paragraph of their defence that the first plaintiff “is the world's largest or one of the world's largest manufacturers of mini-computers and has a dominant position in the world market.” As to the second defendants, it is further pleaded in paragraph 7 of the statement of claim that the second plaintiff and those authorised by it are the only persons in the United Kingdom entitled to license and authorise others to license, use and copy operating software generated by the first plaintiff, and that the program referred to in paragraph 2 of the statement of claim is for operating such software.
The defendants say that they are original equipment manufacturers in this field, and in particular it is pleaded that they were at the material times the builders of computer programs incorporating the plaintiffs' central processing units.
The plaintiffs allege that the defendants have infringed their copyright in their computer programs and have passed off their business as one authorised by or connected with the plaintiffs, by representing (so it is alleged), contrary to the fact, that they are entitled to license users to use and reproduce the plaintiffs' operating software, and in particular the completed computer programs.
It is not necessary for present purposes to go into further details of the action. Although the action was commenced by writ on 3 August 1982, a few days earlier on 28 July 1982 Mervyn Davies J. on the application of the then intended plaintiffs, made an Anton Piller order against the then intended second defendants. The Anton Piller order was in the usual form, and I will come back to some of its specific provisions later. On 4 August the writ was served and the Anton Piller order was executed. I think also served was a notice of motion for an interlocutory injunction returnable on 6 August.
In the meantime, on 5 August the defendants gave notice of their application to discharge the Anton Piller order and for an order for exemplary or aggravated damages on the ground (so the notice says) that the plaintiffs had not disclosed the full facts of the matter to the court. The plaintiffs' motion for an interlocutory injunction and the defendants' application to discharge the Anton Piller order came before myself as vacation judge on 6 August 1982 and subsequently on 10 August 1982, when, as I understand it, I gave directions as to evidence and the further hearing of the motion and the application. It did not come on for substantive hearing, however, until towards the end of April 1983. Meanwhile a statement of claim had been delivered on 22 October 1982, and the defence and counterclaim on 14 December 1982.
In a period of days extending over the end of April and early May 1983, there was a hearing before Goulding J. of the plaintiffs' motion and the defendants' application to discharge the Anton Piller order. I am told that a very considerable body of evidence was filed and that the hearing lasted for several days. The order is dated 6 May 1983; and by that order the motion was dealt with by the defendants, through their counsel, offering undertakings which were substantially, though not entirely, in the terms...
To continue reading
Request your trial
-
United Kingdom (Her Majesty's Commissioners of Customs and Excise) v. Barclays Bank plc, (2006) 360 N.R. 218 (HL)
...v. Bedfordshire County Council, [1995] 2 A.C. 633; 185 N.R. 173 (H.L.), refd to. [para. 16]. Digital Equipment Corp. v. Darkcrest Ltd., [1984] Ch. 512, refd to. [para. Business Computers International Ltd. v. Registrar of Companies, [1988] Ch. 229, refd to. [paras. 18, 47, 106]. Al-Kandari ......
-
Commissioners of Customs and Excise v Barclays Bank Plc
...an order, since they are opposing parties in litigation and no duty is owed by a litigating party to its opponent: Digital Equipment Corporation v Darkcrest Ltd [1984] Ch 512; Business Computers International Ltd v Registrar of Companies [1988] Ch 229; Al-Kandari v J R Brown & Co [1988] QB ......
-
Harris Scientific Products Ltd. v. Araujo, 2005 ABQB 603
...Electric Ltd. et al. (1997), 196 A.R. 241; 141 W.A.C. 241 (C.A.), refd to. [para. 115]. Digital Equipment Corp. v. Darkcrest Ltd., [1984] Ch. 512, refd to. [para. Bank of Nova Scotia v. Dunphy Leasing Enterprises Ltd. (1991), 120 A.R. 241; 8 W.A.C. 241 (C.A.), refd to. [para. 118]. Geophysi......
-
Horseman v. Horse Lake First Nation, 2002 ABQB 765
...the court's process should not be used: R.O.L. v. G.O.I. , [1985] 1 Lloyd's 539, 544 (C.A.); Digital Equipment v. Darkcrest Ltd. , [1984] 3 All E.R. 381, pp. 389-390 (Ch. Div.); Ainge , supra; Chevron Canada Resources et al. v. Alberta (Minister of Energy) , [1998] A.J. No. 1202, pp. 7-8 (Q......