Rank Film Distributors Ltd and others v Video Informati PDF

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Date and Time: Friday, 18 October, 2019 9:49:00 AM MYT Job Number: 100423832

Document (1) 1. Rank Film Distributors Ltd and others v Video Information Centre and others [1981] 2 All ER 76, [1981] 2 All ER 76 Client/Matter: -NoneSearch Terms: anton piller kg Search Type: Natural Language Narrowed by: Content Type MY Cases

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Rank Film Distributors Ltd v Video Information Centre (a firm) Overview

| [1982] AC 380,

| [1981] 2 All ER 76,

| [1981] 2 WLR 668, [1981] FSR 363, 125 Sol Jo 290

Rank Film Distributors Ltd and others v Video Information Centre and others [1981] 2 All ER 76 HOUSE OF LORDS LORD WILBERFORCE, LORD DIPLOCK, LORD FRASER OF TULLYBELTON, LORD RUSSELL OF KILLOWEN AND LORD ROSKILL 2, 3, 4, 5, 9 MARCH, 8 APRIL 1981 Practice — Inspection of property — Property subject matter of action or in respect of which question arising — Privilege against self-incrimination — Order requiring disclosure of information — Defendants pirating films and selling unauthorised video cassettes — Defendants ordered to disclose information regarding pirating and selling cassettes — Information likely to result in defendants being prosecuted for conspiracy to defraud — Whether defendants entitled to claim privilege against self incrimination in respect of disclosure of information. The appellants, who were film companies owning the copyright to films produced and made by them, believed that certain unauthorised persons were engaged in pirating copies of their films and recording and selling unauthorised video cassettes of them. The respondents were suspected of selling the cassettes. The appellants accordingly issued a writ against the suspected unauthorised persons seeking an injunction restraining them from infringing the appellants' copyright. The appellants also sought and were granted Anton Piller orders which, inter alia, required the respondents to disclose (i) the names and addresses of persons who supplied the cassettes and customers who bought them, (ii) all invoices, letters and other documents relating to the cassettes, and (iii) the whereabouts of all pirate cassettes and master copies known to the respondents. The respondents applied to the court to have the orders varied by expunging the requirements as to disclosure, on the grounds that by disclosing the information they might incriminate themselves and the orders therefore infringed the privilege against self-incrimination. The respondents contended that if they were compelled to disclose the information they would incriminate themselves by providing evidence on which they could be prosecuted and convicted of (i) contravention of s 21 of the Copyright Act 1956, (ii) contravention of s 18 of the Theft Act 1968 and (iii) conspiracy to defraud at common law. A person associated with the respondents in the pirating of the films was in the course of being prosecuted on charges of conspiracy to defraud. The judge dismissed the respondents' application but on appeal the Court of Appeal ([1980] 2 All ER 273) held that the orders requiring disclosure should be expunged because they were contrary to the principle of privilege against self-incrimination. The appellants appealed to the House of Lords seeking reinstatement of the orders. The appellants, while recognising the existence of privilege against self-incrimination by discovery, contended that the court ought to compel the respondents to disclose the information sought while imposing a restriction on the information being used in a criminal prosecution of the respondents. Held – Since a charge against the respondents of conspiracy to defraud would not be a contrived, fanciful or remote possibility but an appropriate and exact description of what the respondents and the other persons involved had done, it was clear that disclosure by the respondents of the information sought would tend to expose them to such a charge, which would be a serious charge and would, if proved, attract heavy penalties. It followed that the claim of privilege against self-incrimination should be upheld. Moreover, there was no way in which the court could compel disclosure while at the same time protecting the respondents from the consequences of self-incrimination, since an express restriction imposed by the court on the use of any information disclosed would be binding only on

Page 2 of 11 Rank Film Distributors Ltd and others v Video Information Centre and others [1981] 2 All ER 76 the appellants and not on anyone else who brought a criminal [*77] prosecution and in any event would not bind a criminal court to exclude the information as inadmissible evidence. The appeal would accordingly be dismissed (see p 80 h to p 81 b and f to j, p 82 a to c g h, p 84 a b e to g and p 86 b to d, post). Riddick v Thames Board Mills Ltd[1977] 3 All ER 677 distinguished. Per Curiam. In cases involving large scale and systematic infringements of copyright, offences against s 21 of the 1956 Act are probably too trivial, having regard to the maximum penalty of a £50 fine, to be taken into account when considering whether a claim for privilege against self-incrimination should succeed. Furthermore, the risk of a successful prosecution under s 18 of the 1968 Act, which applies to theft of 'property', is too remote to be considered because copyright is not 'property' for the purposes of s 18 (see p 80 g h, p 81 h, p 82 g h, p 83 h to p 84 a and p 86 b to d, post). Per Lord Russell. Because the privilege against incrimination could largely deprive the owner of a copyright of his just rights to the protection of his property, legislation similar to s 31 of the 1968 Act would be welcome; the aim of such legislation should be to remove the privilege while at the same time preventing the use in criminal proceedings of statements which would otherwise be privileged (see p 86 c d, post). Decision of the Court of Appeal [1980] 2 All ER 273 affirmed. Notes For privilege from production of documents exposing a party to penalties, see 13 Halsbury's Laws (4th Edn) para 92, and for cases on the subject, see 18 Digest (Reissue) 19, 149–152, 97–102, 1195–1246 and 22 Digest (Reissue) 433–437, 4310–4346. For the Copyright Act 1956, s 21, see 7 Halsbury's Statutes (3rd Edn) 171. For the Theft Act 1968, ss 18, 31, see 8 ibid 794, 802. Cases referred to in opinions Alterskye v Scott[1948] 1 All ER 469, 18 Digest (Reissue) 62, 426. Anton Piller KG v Manufacturing Processes Ltd[1976] 1 All ER 779, [1976] Ch 55, [1976] 2 WLR 162, CA, Digest (Cont Vol E) 338, 1238b. Attorney General v Conroy (1838) 2 Jo Ex Ir 791, 18 Digest (Reissue) 247, *1249. Chadwick v Chadwick (1852) 22 LJ Ch 329, 20 LTOS 272, l6 Jur 1060, 18 Digest (Reissue) 151, 1230. Distillers Co (Biochemicals) Ltd v Times Newspapers Ltd[1975] 1 All ER 41, [1975] QB 613, [1974] 3 WLR 728, Digest (Cont Vol D) 277, 495a. EMI Ltd v Sarwar and Haidar [1977] FSR 146. Jackson v Benson (1826) 1 Y & J 32, 148 ER 574, 22 Digest (Reissue) 440, 4376.

Page 3 of 11 Rank Film Distributors Ltd and others v Video Information Centre and others [1981] 2 All ER 76

London (Mayor and citizens) v Levy (1803) 8 Ves 398, 32 ER 408. Norwich Pharmacal Co v Customs and Excise Comrs[1973] 2 All ER 943, [1974] AC 133, [1973] 3 WLR 164, [1974] RPC 101, HL, 18 Digest (Reissue) 8, 23. R v Sang[1979] 2 All ER 1222, [1980] AC 402, [1979] 3 WLR 263, 143 JP 606, HL, Digest (Cont Vol E) 137, 3913a. Reynolds v Godlee (1858) 4 K & J 88, 32 LTOS 35, 70 ER 37, 18 Digest (Reissue) 88, 635. Riddick v Thames Board Mills Ltd[1977] 3 All ER 677, [1977] QB 881, [1977] 3 WLR 63, CA, Digest (Cont Vol E) 180, 495b. Rio Tinto Zinc Corpn v Westinghouse Electric Corpn, RTZ Services Ltd v Westinghouse Electric Corpn[1978] 1 All ER 434, [1978] AC 547, [1978] 2 WLR 81, HL: rvsg sub nom Re Westinghouse Electric Corpn Uranium Contract Litigation MDL Docket No 235[1977] 3 All ER 703, [1977] 3 WLR 430, CA, Digest (Cont Vol E) 222, 7114a. Scott v Scott[1913] AC 417, [1911–13] All ER Rep 1, 82 LJP 74, 109 LT 1, HL, 16 Digest (Reissue) 170, 1693. Triplex Safety Glass Co Ltd v Lancegaye Safety Glass (1934) Ltd[1939] 2 All ER 613, [1939] 2 KB 395, 108 LJKB 762, 160 LT 595, CA, 18 Digest (Reissue) 245, 1933. [*78] Interlocutory appeal The appellants, Rank Film Distributors Ltd, Universal City Studios Inc, Cinema International Corpn (UK), ITC Entertainment Ltd, ITC Film Distributors Ltd and EMI Film Ltd, the plaintiffs in an action against the respondents, Video Information Centre (a firm), Michael Anthony Lee, Susan Gomberg, Stylestone Ltd, Videochord Ltd and Michael George Dawson, appealed against the decision of the Court of Appeal (Bridge and Templeman LJJ, Lord Denning MR dissenting) ([1980] 2 All ER 273, [1980] 3 WLR 487) on 15 February 1980 allowing in part the respondents' appeal against the decision of Whitford J on 31 July 1979 to refuse to discharge or vary two orders made by Walton J on 2nd and 5 July 1979. The orders made by Walton J, which were made on ex parte applications, ordered, inter alia, (i) the second, third and sixth defendants to disclose the names and addresses of persons, films or companies to whom they had supplied or offered to supply to them or who were engaged in the production, distribution or sale of illicit copies of films used or intended to be used in making illicit copies of films, (ii) the second, third and sixth defendants to disclose by affidavit all invoices, labels, books of account, letters lists or other documents within their possession, power, custody and control relating to illicit films supplied by or to the defendants, (iii) the second, third and fourth defendants to permit representatives of the plaintiffs to enter four named premises for the purpose of looking for, inspecting and photographing all illicit copy films, labels or packaging, invoices, bills, letters, notes or other documents, equipment, films (including video cassettes and master tapes) and blank film stock, and removing into the custody of the plaintiffs' solicitors all or any such items except equipment, (iv) all the defendants, except the sixth defendant, and/or the person appearing to be in charge of the four named premises to produce to the person serving the order all such films, labels, packaging, invoices, bills, letters, other documents or film stock, and (v) all the defendants to disclose to the person serving the order the whereabouts of all illicit copy films or masters for making copies known to the defendants. The facts are set out in the opinion of Lord Wilberforce.

Donald Nicholls QC, Hugh Laddie and Jeremy Davies for the appellants. Colin Ross-Munro QC and Daniel Serota for the first four respondents.

Page 4 of 11 Rank Film Distributors Ltd and others v Video Information Centre and others [1981] 2 All ER 76

The fifth and sixth respondents did not appear. Their Lordships took time for consideration 8 April 1981. The following opinions were delivered. LORD WILBERFORCE. My Lords, this appeal relates to two interlocutory orders made by Walton J on 2 and 5 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 (see Anton Piller KG v Manufacturing Processes Ltd[1976] 1 All ER 779, [1976] Ch 55). 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, ie before the persons affected have been heard, they are closely controlled by the court (see the judgment of Lord Denning MR in Anton Piller KG v Manufacturing Processes Ltd[1976] 1 All ER 779 at 783, [1976] Ch 55 at 61). They are only granted on 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. [*79] In this case we are concerned with video tapes of films. The appellant plaintiffs 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 respondent 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 appellants. 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 the 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. 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, ie 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.

Page 5 of 11 Rank Film Distributors Ltd and others v Video Information Centre and others [1981] 2 All ER 76

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

[*80] 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.'

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. 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.

Page 6 of 11 Rank Film Distributors Ltd and others v Video Information Centre and others [1981] 2 All ER 76

(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 s 21 of the 1956 Act. By virtue of the Criminal Law Act 1977 no greater punishment can be imposed for such a conspiracy then for the substantive offence under s 21. (3) Conspiracy to defraud, an offence at common law left unaffected by the 1977 Act. 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 s 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, s 21 is very rarely invoked; only one case came to our knowledge, namely of one prosecution in 1913 under the 1911 Act, and potential liability under it might well be disregarded as totally insubstantial. The same argument would apply as regards conspiracy to breach it. 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...