Anton Piller orders – preventing evidence destruction

By Malcolm Burrows

What is an Anton Piller order?

An Anton Piller order, also known as a search order, is an order of a Court requiring one party (Respondent) to allow the other party (Applicant) to enter the Respondent’s premises to inspect, remove or make copies of documents or other items which might form evidence in an action or proposed action against the Respondent.

Anton Piller orders take their name from the seminal case of Anton Piller KG v Manufacturing Processes Ltd.[1]  They are primarily sought in intellectual property related cases, but also commonly used in employment and other matters involving an equitable or contractual breach of confidence or breach of contract.  They may also be used in family law proceedings.

The primary purpose of an Anton Piller order is to prevent a Respondent from interfering with discovery and frustrating a trial by destroying documents or evidence.  They also assist an Applicant to quickly establish the existence of infringing items.  In order to ensure that a Respondent does not destroy evidence, applications for Anton Piller orders are made ex parte (without the presence of the Respondent).

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Unlike a search warrant in criminal proceedings, an Applicant can only enter the Respondent’s premises with their permission.  However, if the Respondent refuses to comply with an order, or obstructs its execution, they may be in contempt of court, which can result in fines or imprisonment.

The order is an extraordinary remedy in that it is intrusive, potentially disruptive, and made without notice and prior to judgment.

Because of their invasive nature they are only granted in circumstances where there is ‘clear and compelling evidence‘ and where the Court imposes a number of safeguards.

When will a Court grant an Anton Piller style order?

There are three threshold requirements that must be met before a court will grant a Anton Piller style orders[2]:

  1. there must be an extremely strong prima facie case against a Respondent;
  2. the potential or actual damage must be very serious; and
  3. there must be clear evidence that the Respondent has incriminating evidence in their possession, and there is a real possibility they may destroy this material if they were to become aware of the Applicant’s application.

Factors to consider if seeking Anton Piller style orders

Anton Piller orders will not be granted where a Respondent has been put on notice of infringing conduct and action was not promptly taken. Hence, any delay in taking action may indicate that the damages suffered by the Applicant are not sufficient to grant an Anton Piller order.

Further time delay in acting on threats of legal proceedings are also indicia of insufficient damages being incurred by an Applicant.

Who conducts the search?

How a search is to be conducted is described in Practice Note CM11 produced by the Federal Court of Australia and Practice Direction Number 2 of 2007 produced by the Supreme Court of Queensland.  Courts in other Australian Jurisdictions provide guidance similar in nature to these two.

These documents state the search party must include an independent lawyer who will supervise the search and a lawyer or lawyers representing the Applicant.  It may be necessary that it include other persons, such as an independent computer expert, and a person able to identify things being searched for.

Ordinarily, the search party should not include the Applicant or the Applicant’s directors, officers, employees or partners or any other person associated with the Applicant (other than the Applicant’s lawyer).

The order should be clear about the maximum number of persons permitted to be in the search party.   The number of people in the search party should be as small as is reasonably practicable.

What conduct gives rise to Anton Piller style relief?

Given that the scope of Anton Piller orders is not strictly limited, below is a summary of the different type of conduct that will give rise to such an order:

Employee theft of confidential information

In Leica Geosystems Pty Ltd v Koudstaal (No 3) [2014] FCA 1129 Leica suspected a former employee had copied large amounts of source code and other files to a personal external hard drive prior to leaving to commence employment with a competitor.

Leica successfully applied to the Federal Court for an Anton Piller order which authorised Leica’s legal representatives to enter the former employee’s residence to search for and seize any source code belonging to Leica or its associated companies and any data storage device potentially containing any source code.

See our full article on this topic.

Employee downloading client database

In Liberty Financial Pty Ltd (ACN 077 248 983) v Scott [2002] FCA 345 (26 March 2002) the respondent was found to have sent a large number of e-mails containing commercially sensitive information, including a comprehensive list of various people and organisations that were connected with Liberty, to his private email address.

The court granted the Anton Piller order on the basis that there was a real possibility the respondent would cause important evidence to be destroyed or deleted unless the order was granted.

Theft of counterfeit items containing works subject to copyright  

In Aristocrat Technologies Australia Pty Ltd v Global Gaming Supplies Pty Ltd [2009] FCA 1495 it was held all of the respondents had infringed the copyright of Aristocrat by copying Aristocrat Technologies’ game software onto blank EPROMs (removable memory chips).

The Aristocrat companies obtained Anton Piller orders on the basis of evidence given by a former employee of one of the respondents.  When the orders were executed, large numbers of components of Aristocrat gaming machines were seized at the premises at each of the respondents.

Sale of items that infringed registered trade marks

In Geneva Laboratories Limited v Nguyen [2014] FCA 1270 the applicant was the registered owner in Australia of four trademarks used to identify the skin care product “Bio-Oil”. The respondents were owners and operators of pharmacies in the Sydney area suspected of importing and selling counterfeit Bio-Oil product. The court granted ex parte orders for the search and seizure and delivery up of the allegedly counterfeit skincare product which the respondents’ unsuccessfully attempted to have discharged.

Possession of a digital decoding device

In Sky Channel Pty Ltd v Darcy’s Tavern Pty Ltd [2003] FCA 19 (14 January 2003), the respondent was suspected of using unauthorised broadcast decoding devices on their premises. Sky Channel was successful on obtaining Anton Piller orders to allow their representatives to enter the premises of the respondent and search for, examine and remove or copy the broadcast decoder devices.

Employer altered documents

Mr Rofail was granted Anton Pillar orders to access the computer hard drive used by the employer to create the alleged amended employment contract.  In George Rofail v Landmark Recruitment Pty Ltd and Others [2004] NSWIRComm 260, the case had the unusual feature that it was the employee who was seeking Anton Piller orders against the employer.  In Mr Rofail’s application he pleaded that the employment contract Landmark provided in the current proceedings had a number of altered terms which favoured the employer in relevant ways that were significantly different to his original agreement.

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Case law

AAA Embroidery & Screen Printing Pty Ltd v John Dan [2006] FCA 1846.

Anton Piller KG v Manufacturing Process Ltd [1976] 1 ALL ER 779.

Aristocrat Technologies Australia Pty Ltd v Global Gaming Supplies Pty Ltd [2009] FCA 1495.

Bitzer Australia Pty Ltd v Japp [2014] FCA 1040.

Geneva Laboratories Limited v Nguyen [2014] FCA 1270.

George Rofail v Landmark Recruitment Pty Ltd and Others [2004] NSWIRComm 260 (7 September 2004).

Leica Geosystems Pty Ltd v Koudstaal (No 3) [2014] FCA 1129.

Liberty Financial Pty Ltd (ACN 077 248 983) v Scott [2002] FCA 345 (26 March 2002).

Onus v Alcoa of Australia (1981) 149 CLR 27.

Sky Channel Pty Ltd v Darcy’s Tavern Pty Ltd [2003] FCA 19 (14 January 2003).

Television Broadcasts Limited v Nguyen [1988] 15 IPR 97.

Related articles by Dundas Lawyers

Anton Piller Orders and employee theft

Terminating an employee for serious misconduct

Disclaimer

This article contains general commentary only.  You should not rely on the commentary as legal advice.  Specific legal advice should be obtained to ascertain how the law applies to your particular circumstances.

Further information

If you need advice on obtaining Anton Piller style orders, please contact us for an obligation free and confidential discussion.

Malcolm Burrows Malcolm Burrows B.Bus.,MBA.,LL.B.,LL.M.,MQLS.
Legal Practice Director
Telephone: (07) 3221 0013
Mobile: 0419 726 535
e: mburrows@dundaslawyers.com.au


 

[1] Anton Piller KG v Manufacturing Processes Ltd [1976] 1 ALL ER 779.

[2] Ibid, at 62.

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