ISSUE XXI : ANTON PILLER AND IMPLEMENTATION AGAINST SOFTWARE PIRACY

Introduction

Anton Piller orders made by the court in a civil action allow a plaintiff alleging the violation of its IP to enter the respondent’s premises to search and seize evidence, if any, without prior warning. Such orders are effective in alleged trade mark, copyright or patent infringement. Anton Piller procedure evolved in the United Kingdom and was conceptualized in Anton Piller KG v Manufacturing Processes Limited.1 Since then various common law jurisdictions have chosen to adopt the same as an effective methodology for establishment of evidence of infringement of IP by the seizing of the goods in question. Indian courts have recognized the same for more than 20 years with the successful order being in the case of National Garments, Kaloor, Cochin Vs. National Apparels, Ernakulam, Cochin,2 where the order was passed in an action of passing off in regard to trademarks of the plaintiff.

Anton Piller orders are often used together with Mareva injunctions, which are used to restrain defendants from removing assets from the jurisdiction of the court. This bulletin discusses the current position in the manner of application of Anton Piller orders in India.

1. Analysis of judgments issued by courts and the principles of Anton Piller

The courts in India have primarily treated Anton Piller orders as another form of injunctive relief for persons whose IP have been violated. This is a modified application of the principles of Anton Piller. As laid down by the courts, the basic principles that should be satisfied in order for the court to issue Anton Piller orders are (a) There is an extremely strong prima facie case against the respondent; (b) The damage, potential or actual, must be very serious for the applicant; and (c) There must be clear evidence that the respondents have in their possession relevant documents or things and that there is a real possibility that they may destroy such material before an inter-party application can be made.

These guidelines were laid down in the Indian context in Autodesk Inc. and Anr. V. Mr. AVT Shankardass and Anr.,3 where Manmohan Sarin, J., recognized the principle of Anton Piller to be, “in cases where the desired evidence cannot be obtained in reasonable circumstances, the court can appoint a local commissioner4 to obtain such evidence”. The judgment further went on to lay down the guidelines for the manner of application of Anton Piller orders for instances of software piracy. These guidelines laid down by the court are as below:

(i) The object of appointment of a Local Commissioner in software piracy matters is not, as much to collect evidence but to preserve and protect the infringing evidence. The pirated software or incriminating evidence can only be obtained from the premises of the opposite party alone and in the absence of an ex parte appointment of a Local Commissioner there is likelihood that such evidence may be lost, removed or destroyed;

  • Request for ex parte appointment of a Local Commissioner in such matters is usual and in fact is intended to sub serve the ends of justice as it is imperative to have an element of surprise so that the actual position is not altered;
  • The test of reasonable and credible information regarding the existence of pirated software or incriminating evidence should not be subjected to strict proof or the requirement to demonstrate or produce part of the pirated software/incriminating evidence at the initial stage itself. It has to be tested on the touchstone of pragmatism and the natural and normal course of conduct and practice in trade.
  • It may not always be possible for a plaintiff to obtain any admission by employing decoy customers and gaining access to the defendant’s premises. Any such attempt also inheres in it the possibility of disappearance of the pirated software/incriminating evidence in case the decoy customers is exposed. Accordingly, visit by decoy customer or investigator is not to be insisted upon as pre condition. A report of private Investigator need not be disregarded or rejected simply because of his engagement by the plaintiff. The information provided by the private Investigator should receive objective evaluation.
  • In cases where certain and definite information with regard to the existence of pirated software or incriminating evidence is not available or where the Court may nurture some element of doubt, it may consider asking the plaintiff to deposit cost in Court so that in case pirated software or incriminating evidence is not found then the defendant can be suitably compensated for the obtrusion in his work or privacy.”

The principles of Anton Piller have been analysed in other decisions like, Bucyrus Europe Limited v. Vulcan Industries Engineering Pvt. Ltd.5 and Microsoft Corporation and Anr. V. Dhiren Gopal and Ors.6 As far as the trend in relation to Anton Piller orders go, most orders have been issued in regard to instances of software piracy with the exception of Marico Limited v. GPL Oil Limited.7 In the Bucyrus Europe case, the Calcutta High Court restated the principles of Anton Piller orders with the addition of the fact “the purpose of Anton Piller order is the preservation of evidence.” These principles were further distinguished and balanced in the Microsoft case where S. N. Dhingra, J., laid down that in instances where the plaintiff is seeking an Anton Piller order against the defendants, and the matter is of software piracy, the plaintiff through the offices of the local commissioner would not be allowed to seize the infringing hardware but be required to be accompanied by competent personnel for the creation of mirror images of the software installed so as to ascertain software piracy.

2. Analysis of principles of Anton Piller Orders

Anton Piller order, in principle is an order based on equity, in exceptional circumstances, to assist the plaintiff to establish its case and to prevent the destruction of evidence by the defendant. As established, the application of Anton Piller orders require that the court give due care to the passing of such orders after carefully balancing the available evidence and the preponderant nature of such destruction of evidence in the course of execution of a general injunction/search or seizure order, where both parties could prima facie establish its case before the implementation of an adverse order against one of them. Another important requirement is that the proceedings for an Anton Piller order should be in camera to preserve the confidential nature of the execution of such an order. These principles establish Anton Piller orders as primarily injunctive orders with the injunction being upon the defendant from interfering with a search and seizure to be conducted by the plaintiff.

In Indian cases, the evolution of the principles have led to the establishment of the following rules (i) Anton Piller orders are for the preservation of evidence, (ii) the execution of an Anton Piller order is to be done through a local commissioner to be appointed by the court and (iii) the local commissioner to be so appointed will have to be accompanied by competent personnel who would create a mirror image of the violation of IPR and he would not have any powers of search and seizure of goods.

3. Criticism

Visibly it seems that the courts and lawyers in India have understood and effectively adopted the principles laid down by Lord Denning, J., in Anton Piller KG v Manufacturing Processes Limited. However, upon careful reading of the cases referred herein, there seems to be a departure from the primary principles and procedure adopted in the Anton Piller order and the manner of effecting the same in India.

In Anton Piller KG v Manufacturing Processes Limited, the court adopted in-camera proceedings to maintain the secretive nature of the issue of such orders for their appropriate effect. Also, the orders were for the plaintiff in question, after fulfilling the primary requirements, to conduct the search and seizure on their own, as they are the most competent to understand the whole import of the IPR violation. In the pure legal sense, it isn’t that the Anton Piller order doesn’t require the defendant in question to undertake any action, it pressurizes them to permit the plaintiff to conduct their search and seizure and directs that any action preventing the same would be in contempt of the order of the court.

In the Indian cases analysed herein, the courts have diverged a long way from the principles elucidated above. Most of the hearings in question have been in open court and the local commissioner is appointed by the court. By such appointments made by courts the secretive, expeditious and necessary nature of the Anton Piller order has been diluted to some extent. With the further requirement of the local commissioner being required to be accompanied by a competent person who would undertake the required processes for the creation of a mirror image, the fundamental nature of an Anton Piller order has been completely set aside and it has been replaced by a common search and seizure order without

the authority to seize the goods in violation. The order in Microsoft Corporation and Anr. V. Dhiren Gopal and Ors., though being just in the equitable sense, has complicated the procedure of Anton Piller orders and also diluted them to mere search and ascertain orders. To be adherent to the principles and to be appropriately effective, Anton Piller orders should be issued in in-camera proceedings and the search and seizure should be conducted by the plaintiff or their appointed competent personnel assisted by the local police force for enforcement and effectiveness.

Conclusion

Courts in India have accepted the inevitability of Anton Piller orders in gathering of evidence in IPR cases due to the nature of such violations. However, the elaborate procedure established by the courts in India have somewhat diluted the effectiveness of the Anton Piller order in its intent of gathering of evidence. Though it must be said that even with the attendant procedure, Anton Piller orders can still be an effective mechanism for gathering of evidence if the orders are issued in in-camera proceedings. Also, Anton Piller orders have given the creators of IP an effective mechanism for establishing their claim of violation of IPR by software pirates.

Authored by: Saurav Bhowmik

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