Today, we resume our tutorials on copyright and review one of the reliefs available to a plaintiff in an intellectual property matter, the famous Anton Piller Order.
The Anton Piller Order is made by a court to give a copyright holder the opportunity to take an alleged copyright infringer by surprise. It is an order which requests a defendant in an intellectual property action, to allow the plaintiff to enter his premises and search for and remove documents and materials allegedly used for the infringement of the rights of the plaintiff. The order is intended to ensure that the defendant does not destroy important evidence and records which may be necessary for the copyright holder to prove his case.
The Anton Piller Order is granted ex parte. In other words, it is granted upon the application of the owner, assignee or exclusive licensee without the defendant being notified, thereby preserving the surprise element. The Anton Piller Order owes its name to an English case, Anton Piller KG v. Manufacturing Processes Ltd. In that case, the plaintiff applied for an order to enter the premises of the defendant, who was not given notice, to inspect and remove documents for safe keeping. The big question was whether the court had the power to grant such an order considering that it may amount to a search warrant in a civil case. A search warrant may only be issued in a criminal matter.
The celebrated jurist, Lord Denning took the position that the order was not a search warrant because it only authorized entry and inspection with the permission of the defendant. One therefore could conclude that the defendant had the choice of giving or refusing his permission when requested. Lord Denning however went on to say that if the defendant refuses to give his permission, it would be regarded as contempt of court and adverse inference could be drawn against him.
It appears that the first Anton Pillar order in Nigeria was made in Ferodo Ltd. v. Unibros Stores by Justice Fred Anyaegbunam in 1980. While the matter had to do with a trademark, it opened the flood gates for the granting of Anton Piller orders in different types of intellectual property matters. Ferodo Ltd were sole distributors of Ferodo brake products in Nigeria. Unibros Stores who were not customers of Ferodo Limited were alleged to be selling brake linings bearing the Ferodo name. Ferodo Ltd went to the Federal High Court, claiming urgency and obtained ex parte orders restraining Unibros Stores, their servants or agents from repeating any infringement of the plaintiffâ€™s registered trademarks and that Unibros Stores should permit up to six persons (including a police officer) to enter its premises at No.168F Nnamdi Azikiwe Street, Lagos for the detention, preservation and inspection of any movable property or thing that would constitute a breach of the injunction prayed for in the suit.
The court also ordered the Defendants (Unibros Stores) to allow the plaintiffâ€™s solicitor to inspect all or any documents in the custody or under the control of the defendant relating to the suit and to produce upon oath, any documents in their possession or power relating to the matters in question in the suit.
The Anton Piller Order has raised serious controversy because it offers great opportunity for the miscarriage of justice. Is it fair and just to make such a far reaching order without listening to the other side? On the other hand, how do you deal with the die-hard pirate who is very slippery and a master of deception?
Despite the concern of some who go as far as saying that the Anton Piller Order is unconstitutional because it breaches the fundamental right to fair hearing, the process has become one of the most potent tools for dealing with piracy across the world.
However, it must not be forgotten that Lord Denning in Anton Piller KG v. Manufacturing Processes Ltd warned that the order should only be used â€œin an extreme case where there is grave danger of property being smuggled away or of vital evidence being destroyedâ€.
The question of the constitutionality of the Anton Piller order appeared to have been settled in Nigeria by the decision of the Court of Appeal in Akuma Industry Ltd v. Ayman Enterprises Ltd. In the Akuma case, Justice Chukwudi Ignatius Pats-Acholonu had said, â€œAnton Piller order although seemingly appearing as a monstrosity has become accepted within the vortex of our legal doctrines and jurisprudenceâ€. However, the Supreme Court later struck down the entire proceeding in Akuma Industry v. Ayman Enterprises Ltd. According to the courtâ€™s decision read by Umaru Atu Kalgo (JSC), the Supreme Court set aside the Akuma proceedings because according to it, the Federal High Court does not have the jurisdiction to hear any passing-off case with respect to an unregistered trademark, the very basis of the Akuma case. Since the Supreme Court did not address the issue of the Anton Pillar Order granted in the case, it appears that it is still a matter for conjecture what the court would have said about the Anton Piller Order itself. Coincidentally, the decision of the Supreme Court in the Akuma case was announced a few days before Justice Pats-Acholonu joined the apex court. Nevertheless, Anton Pillar orders continue to be made by Nigerian courts as is made in other parts of the world.
In our copyright tutorial series in Saturday Breakfast, we will continue our review of the famous Anton Piller Order, its similarities and differences with Section 25 of the Nigerian Copyright Act and the application of the principles in Nigeria.
Chief Tony Okoroji is Chairman, Copyright Society of Nigeria (COSON)