Stealth Bombers Back on the Radar – The Anton Piller Order

As the author of the highly publicized decisions of Kerwhizz and Temple Island Collections, Judge Birss of the England and Wales Patent County Court (PCC) is no stranger to controversy. In his latest judgment, Suh v Ryu, Birss J appeared to settle a relatively straightforward procedural matter. Closer scrutiny reveals that his reasons are reflective of an ongoing policy debate in Canada and abroad – the use of the Anton Piller injunction in intellectual property disputes.

The Anton Piller takes its name from a 1975 case of the English Chancery Division. A plaintiff applies on an ex parte basis for an order to search the premises (and sometimes private homes) of a defendant with the purpose of preserving evidence that might otherwise be destroyed or concealed if notice was to be provided. It is especially useful (likely required) in modern IP disputes where incriminating computer data can be quickly erased. They are also important in the fight against counterfeit designs and industrial espionage.

At issue in Suh v Ryu was whether the PCC had jurisdiction to grant Anton Piller or Mareva (asset-freezing) injunctions. The PCC is a unique county court whose jurisdiction was historically divided between a “special jurisdiction” (patents and designs), and an “ordinary jurisdiction” (copyright and trademark). In 1994, Ralph-Gibson LJ of the Court of Appeal reviewed the relevant Regulation, which disempowers county courts from issuing these injunctions, and concluded that the PCC’s jurisdiction to issue Marevas or Anton Pillers extended only to matters falling within its “special jurisdiction.”

Birss J declined to follow the precedent and ruled that the PCC could issue these injunctions in matters falling within both its “special” and “ordinary” jurisdictions. Effectively, he unilaterally expanded his own jurisdiction based on a well-reasoned reassessment of the legislation. However, one question begged to be answered – why did Parliament restrict the ability of some courts to issue Anton Pillers and Marevas in the first place?

Since its inception Anton Pillers were labelled “extraordinary remedies,” requiring the fulfillment of four stringent conditions: (1) the applicant must have an extremely strong prima facie case; (2) the potential or actual damage to the applicant must be very serious; (3) the material must be in the possession of the defendant; and (4) there is a real possibility that the defendant would destroy the material if an inter partes motion was made.

However, this judicial test has not prevented abuse in Canada or the UK. The highly intrusive nature of the Anton Piller coupled with the lack of notice to the defendant has led to it being called the “private search warrant” and the “stealth bomber of litigation.” Godin pointed out that plaintiffs often have no intention of using Anton Pillers for their supposed purpose of preserving evidence – matters involving Anton Pillers rarely proceed to trial. Courts have also grappled with overzealousness in the execution of the orders, and insufficient drafting by motions judges. Both of which have resulted in aggressive search methods and the wrongful appropriation of documents protected by solicitor-client privilege or even trade secrets.

It is these issues that prompted the UK Parliament to amend its rules concerning Anton Pillers. Presumably, this also explains why Parliament deliberately sought to reserve the power to order Anton Piller and Mareva injunctions to the more experienced judges of the higher courts.

This observation is pertinent to Canada where what was once described as an “extraordinary remedy” has become standardized practice. This is particularly troublesome for three reasons. First, Anton Pillers are not subject to Charter scrutiny. This is so despite that the theoretical distinction between a police search and an Anton Piller is tenuous at best, and at least one Canadian judge has called a spade a spade – no obvious reason exists to explain why basic rights are somehow weakened in civil, rather than criminal or administrative matters.

Second, the Federal Court’s invention of the “rolling Anton Piller” is more problematic. Here, the plaintiff is permitted to execute search and seizures on a class of John and Jane Does, and attach the individual defendants as they become identified. It is typically sought against those with transient business practices such as street vendors who deal in counterfeit goods. Although no realistic alternative exists, the potential for misuse is higher when such orders are based on undue speculation, which Hughes J recently commented on in Vinod Chopra.

Third, despite that the Federal Court is by far the largest issuer of Anton Pillers, the Rules are substantively empty and no model order exists, which increases the likelihood of inadequate drafting by motions judges. In Celanese, the Supreme Court of Canada was forced to create its own best practices for Anton Pillers to fill this gap.

Returning to Birss J’s judgment – his statutory interpretation is persuasive and seems to properly reflect the role of today’s PCC. However, Anton Pillers are invasive remedies with a high potential for abuse, as experience has shown. Despite Birss J’s unquestioned expertise, the reasons for Parliamentary restrictions on the jurisdiction of county courts to issue the controversial injunctions ought not to be forgotten.

Ken Anderson is a JD Candidate at Osgoode Hall Law School.