Rank Film Distributors Ltd v Video Information Centre

JurisdictionUK Non-devolved
CourtHouse of Lords
JudgeLord Diplock,Lord Wilberforce,Lord Fraser of Tullybelton,Lord Russell of Killowen
Judgment Date08 April 1981
Judgment citation (vLex)[1981] UKHL J0408-2
Date08 April 1981

[1981] UKHL J0408-2

House of Lords

Lord Wilberforce

Lord Diplock

Lord Fraser of Tullybelton

Lord Russell of Killowen

Lord Roskill

Rank Film Distributors Limited and Others
(Appellants)
and
Video Information Centre (a Firm) and Others
(Respondents)
Lord Wilberforce

My Lords,

1

This appeal relates to two interlocutory orders made by Walton J. on 2nd and 5th July 1979. They are of a type which have come to be known as " Anton Piller orders" so called after a tortious infringer of copyright whose case reached the Court of Appeal in 1976 ( [1976] Ch. 55).

2

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 (u.s.) p.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.

3

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.

4

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. 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 injunction restraining 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."

5

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.

3. Requiring the respondents to disclose and produce documents.

6

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 sup. By virtue of the Criminal Law Act 1977 no greater punishment can be imposed for such a conspiracy then for the substantive offence under section 21.

3. Conspiracy to defraud—an offence at common law left unaffected by the Act of 1977.

7

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 one prosecution in 1913 under the Act of 1911 and potential liability under it might well be disregarded as totally insubstantial. The same argument would apply as regards conspiracy to breach it.

8

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 (u.s.) 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...

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