Mg Distribution Pty Ltd v Khan
[2005] FMCA 500
•12 April 2005
FEDERAL MAGISTRATES COURT OF AUSTRALIA
| MG DISTRIBUTION PTY LTD & ORS v KHAN & ANOR | [2005] FMCA 500 |
| COPYRIGHT – Whether proper basis to make Anton Piller order – “Bollywood Films” – restraining orders – precondition to Anton Piller order satisfied. |
| Anton Piller KG v Manufacturing Processes Ltd (1976) Ch 55 Microsoft Corporation v Goodview Electronics Pty Ltd (1999) 46 IPR 159 Gianitsios v Karagiannis (1986) 7 IPR 36 (SC(NSW)) Television Broadcast Ltd v UN (1988) 21 FCR 34 38 |
| First Applicant | MG DISTRIBUTION PTY LTD |
| Second Applicant | EROS MULTIMEDIA PVT LTD |
| Third Applicant | YASH RAJ FILMS INTERNATIONAL LIMITED |
| Fourth Applicant | STANNING CORPORATION |
| Fifth Applicant | SHIVAM VIDEOTECH PVT LTD |
| Sixth Applicant | UTV COMMUNICATIONS (MAURITIS) LIMITED |
| Seventh Applicant | YASH RAJ FILMS PRIVATE LIMITED |
| Eighth Applicant | DHARMA PRODUCTIONS (UK) LIMITED |
| Ninth Applicant | FILMKRAFT PRODUCTIONS (INDIA) PVT LTD |
| Tenth Applicant | RED CHILLIES INTERNATIONAL LIMITED |
| Respondents: | SAEED KHAN AND ABIDA KHAN |
| File Number: | MLG401 of 2005 |
| Judgment of: | McInnis FM |
| Hearing date: | 12 April 2005 |
| Delivered at: | Melbourne |
| Delivered on: | 12 April 2005 |
REPRESENTATION
| Counsel for the Applicants: | Mr P Wallis |
| Solicitors for the Applicants: | Choy Lawyers |
| Solicitors for the First and Second Respondent: | No appearance |
ORDERS
UPON THE APPLICANTS, BY THEIR COUNSEL, UNDERTAKING:
(a)to pay any party adversely affected by the making of the orders made below such compensation (if any) as the Court thinks just in such manner as the Court directs;
(b)to arrange for Daniel Hirsh, being a solicitor independent of the Applicants, to serve this Order, together with the Application, Statement of Claim and the affidavits of Marcus Georgiades, Richard Harvey and Trevor Choy dated 19 March, 27 March and 29 March 2005 respectively and the exhibits thereto, upon the Respondents at the premises mentioned below, or upon any apparently responsible person appearing to be in charge of the premises mentioned below being a servant or agent of the Respondents (“the said person”);
(c)that it will, by Daniel Hirsh:
(i)offer to the said person on whom the Order is served to explain in everyday language the meaning and effect of this Order;
(ii)inform the said person that the Respondents have the right to obtain legal advice prior to the execution of the Order if that advice is sought forthwith;
(iii)inform the said person of the Applicants’ undertaking that except for the purposes of this proceeding the Applicants will not make use of any of the information obtained pursuant to the execution of this Order;
(iv)introduce and identify to the said person the additional persons identified in paragraph 2 below;
(d)not to effect forceable entry into the premises mentioned below in the execution of the Order;
(e)to arrange for Daniel Hirsh to make an inventory of any articles and documents to be removed from the premises mentioned below and to deliver the list to the Respondents at the premises mentioned below within 24 hours of removal of the articles and documents;
(f)to retain all articles and documents obtained as a result of the execution of this Order in the safe custody of Trevor Choy;
(g)that any articles, documents or information obtained pursuant to this Order will not be disclosed or permitted to be disclosed to any person other than the Applicant’s solicitors and Marcus Georgiades and Richard Harvey of the First Applicant, without the written consent of the Respondents or the leave of this Court; and
(h)to abide by any Order this Court may make as to damages in case this Court shall hereafter be of the opinion that the Respondents have suffered any damage by reason of this Order which the Applicant ought to pay.
THE COURT ORDERS THAT:
The hearing of the application for these orders be in camera.
The Applicants be at liberty to move ex parte for the following orders and that the requirements of service prescribed by rule 6.03(2) of the Federal Magistrates Court Rules 2001 be dispensed with.
The Respondents by the said person permit Daniel Hirsh together with the following persons:
(a)Trevor Choy;
(b)William Hammond;
(c)Tamur Ikbal; and
(d)Marcus Georgiades,
to enter upon the premises of the Respondents at Shop 3A Mason Street, Dandenong, Victoria (“the premises”) at any hour between 8.30am and 6.00pm between 13 and 16 April 2005, and into any outhouses forming part of the said premises, for the purpose of:
(i)searching for and removing into the custody of the Applicants’ solicitor digital video discs (“DVDs”), video compact discs (“VCDs”) and video cassette tapes that substantially reproduce the Applicants’ Films (as defined in paragraph 11 of the Statement of Claim);
(ii)searching for and removing into the custody of the Applicants’ solicitor packaging and promotional material relating to the articles listed in sub-paragraph (i) above, including posters, brochures, in-lay cards or similar articles;
(iii)searching for, inspecting, photographing, making notes of and downloading information from equipment from which the articles listed in sub-paragraph (i) above may be produced; and
(iv)searching for, inspecting, printing, photocopying, making notes of and downloading information relating to the reproduction, importation, sale or distribution by the Respondents of the articles listed in sub-paragraph (i) above.
For the purpose of giving effect to this Order the said person where necessary shall:
(a)do nothing to impede or hinder the activities authorised elsewhere in these orders;
(b)to the best of his or her ability, specify and identify to Daniel Hirsh or persons nominated by Daniel Hirsh all of the articles, documents and information referred to in paragraph 2 above, whether they be on the premises or on other premises;
(c)to the best of his or her ability, open any locked enclosure at the premises used for the purpose of storing articles, documents and/or information referred to in paragraph 2 above;
(d)to the best of his or her ability, open or unlock any computer or computer storage device and cause to be displayed or printed out all documents and/or information referred to in paragraph 2 above.
The Respondents whether by themselves their servants or agents or otherwise howsoever be restrained until further order from:
(a)reproducing in a material form the Applicants’ Films or a substantial part or parts thereof in DVD, VCD and/or video cassette tape format, in breach of section 86 of the Copyright Act (1968) (Cth) (“Copyright Act”);
(b)importing, or authorizing the importation of, the Applicants’ Films’ or a substantial part thereof in DVD, VCD and/or video cassette tape format for the purpose of selling or offering or exposing for sale where the Respondents knew, or ought to have known, that the making of the DVDs, VCDs and/or video cassette tapes would, if made in Australia, have constituted an infringement of the copyright in the Applicants’ Films, in breach of section 102 of the Copyright Act; and/or
(c)selling, or by way of trade offering or exposing for sale or distributing for purposes of trade, or by way of trade exhibiting in public, or authorising the sale, offer, exposure, distribution or exhibition of, the Applicants’ Films or a substantial part thereof in DVD, VCD and/or video cassette tape format, where the Respondents knew, or ought to have known, that the making of the DVDs, VCDs and/or video cassette tapes constitutes an infringement of the copyright in the Applicants’ Films, or in the case of imported DVDs, VCDs and/or video cassette tapes, would, if the DVDs, VCDs and/or video cassette tapes had been made in Australia by the Respondents, have constituted an infringement of the copyright in the Applicants’ Films, in breach of section 103 of the Copyright Act.
Entry of these orders be expedited.
The parties have liberty to apply on 24 hours notice.
The costs of this day be reserved.
The proceeding be otherwise adjourned to this Court at 9.45am on
20 April 2005.
| FEDERAL MAGISTRATES COURT OF AUSTRALIA AT MELBOURNE |
MLG401 of 2005
| MG DISTRIBUTION PTY LTD |
First Applicant
| EROS MULTIMEDIA PVT LTD |
Second Applicant
| YASH RAJ FILMS INTERNATIONAL LIMITED |
Third Applicant
| STANNING CORPORATION |
Fourth Applicant
| SHIVAM VIDEOTECH PVT LTD |
Fifth Applicant
| UTV COMMUNICATIONS (MAURITIS) LIMITED |
Sixth Applicant
| YASH RAJ FILMS PRIVATE LIMITED |
Seventh Applicant
| DHARMA PRODUCTIONS (UK) LIMITED |
Eighth Applicant
| FILMKRAFT PRODUCTIONS (INDIA) PVT LTD |
Ninth Applicant
| RED CHILLIES INTERNATIONAL LIMITED |
Tenth Applicant
And
| SAEED KHAN AND ABIDA KHAN |
Respondents
REASONS FOR JUDGMENT
(Revised from transcript)
By an application dated 12 April 2005 the applicants seek ex parte an Anton Piller order and other interlocutory restraining orders against the respondents. The nature of the claim has been set out in some detail in a statement of claim provided by the applicants in support of this application.
In brief terms, the applicants claim that the respondents have infringed and continue to infringe the applicants copyright in cinematographic films owned by the applicants which is set out in schedule 2 to the statement of claim (the applicants films) by reproducing, importing and/or selling copies of the applicants films in digital video disc, DVD, video compact disc, VCD or video cassette tape format.
When the matter was before the court at the commencement of this ex parte hearing, proposed orders were provided to the court by way of a draft. The draft order seeks effectively orders in the form of what are described as Anton Piller orders and otherwise in general terms seeks orders that the applicants representatives be permitted to enter premises of the respondents located at Shop 3A, Mason Street, Dandenong in the state of Victoria without prior notice to the respondents for the purpose of searching for and removing in to the custody of the applicants solicitor unauthorised copies of the applicants films, together with promotional material and business records relating to the applicants films.
Certain concerns were expressed by the court in relation to the form of the draft order, although for reasons which will become apparent, I am satisfied that a further draft order to be relied upon by the applicants is in a form that is appropriate, and indeed based upon the material filed before the court and the relevant law, it is my view that in this instance the orders in the amended draft form should be made.
The general principles to be applied in considering whether or not to make an order, described as an Anton Piller order, following the decision of Anton Piller KG v Manufacturing Processes Ltd (1976) Ch 55 contain well known preconditions which are set out as follows:
1)There must be an extremely strong prima facie case;
2)The damage, potential or actual, must be very serious for the applicant;
3)There must be clear evidence that the defendants have in their possession incriminating documents or things and that there is a real possibility that they may destroy such material before any application inter partes can be made, thus depriving the plaintiff of his rights by way of discovery or otherwise if the order is not made.
It is noted that the decisions in relation to Anton Piller orders stress that these orders are not equivalent to a search warrant. It is an order on the defendants in personam to permit inspection. Obviously the respondents can refuse to comply with the orders. The applicants in these circumstances cannot make a forcible entry. The respondents, however, are ordered to give permission with the result that if permission is refused the respondents may be guilty of contempt.
I note, in particular, other principles in relation to the granting of an order are set out by Branson J in the decision of Microsoft Corporation v Goodview Electronics Pty Ltd (1999) 46 IPR 159 at 165 as follows:-
“30 In nearly all cases it will, in my view, be desirable for a supervising solicitor, with experience in the execution of orders of this kind, to be appointed (see Universal Thermosensors Ltd v Hibben [1992] 1 WLR 840 at 861). The service of the order by the supervising solicitor, a neutral appointee of the Court, should assist in ameliorating the shock likely to be experienced by the occupier of premises when the order is served. Further the supervising solicitor will then be in a position:
(a) to give immediate and independent advice to the occupier as to the significance of the order;
(b) to ensure that the occupier has an appropriate opportunity to obtain his or her own legal advice should he or she so desire;
(c) to mediate any dispute as to whether any particular member of the applicant's search team is an unsuitable member of the team on the basis, for example, that he or she might derive commercial advantage from an inspection of the premises;
(d)to ensure the proper protection of privileged documents (if any);
(e) to attempt to achieve agreement on a suitable search procedure;
(f) to assess whether items or documents come within the terms of the court order and, in the case, of doubtful material, to ensure its safe keeping pending an order of the Court;
(g) to ensure that an appropriate list is prepared of all items or documents to be removed from the premises; and
(h) generally to assist in the smooth execution of the order.
31 Whilst the appointment of an independent solicitor will involve the applicant in expense (which may or may not ultimately be recoverable from the respondent), it is interesting to note that it has been experienced in England that much, if not all, of that expense tends to be saved by the more expeditious and smooth execution of the order (see Tony Willoughby, "The Role of the Supervising Solicitor" (1999) 18 CJQ 103).’
It is further noted that an Anton Piller order is clearly an extreme remedy and sometimes described as an extreme remedy for extreme cases. I note in particular the comments of Young J in the matter of Gianitsios v Karagiannis (1986) 7 IPR 36 (SC(NSW)). The remedy is one which I accept should be exercised cautiously, and in my view it is clear that the preconditions must be carefully examined.
In this case the applicants rely upon affidavits of Marcus Georgiades, managing director of the first applicant sworn 19 March 2005; Richard Harvey, marketing assistant of the first applicant sworn 27 March 2005; Trevor Choy, the applicants solicitor sworn 29 March 2005.
In dealing with the precondition that there must be an extremely strong prima facie case, it is submitted in the applicants contentions that in the present case the affidavit material supports the conclusion that the applicants are owners and/or exclusive licensees of the applicants films, that they have obtained DVDs from the respondents which are unauthorised reproductions of the applicants films and that those matters are sufficient to establish that there is indeed in this case what would be described as a strong prima facie case. In my view, the affidavit material, without reciting the details of the deponents to which I referred, clearly establishes the first precondition.
In relation to the issue of serious damage to the applicants, the criteria requires, as I have indicated earlier, that the damage, potential or actual, must be very serious for the applicant. Although I raised concern during the course of the hearing as to the extent of what might be described as the potential or actual damage based upon some reservations I had arising out of the affidavit of Marcus Georgiadis, and in particular paragraph 23 thereof, I am satisfied that the affidavit material taken as a whole is sufficient to justify a finding that the second essential precondition has been established. In a matter of this kind, although the deponent in paragraph 23 of the affidavit to which
I referred makes what might be described as somewhat vague assessments, or what I describe as ‘guesstimates’ of the extent and nature of the claim infringement and what might be then described or inferred as the potential damage, I am satisfied that having regard to the very nature of the claim before this court that it is difficult, indeed if not almost impossible, for the deponent in an affidavit in support of this application to be more precise. I do note that the basis for the assessment of the volume of items sold and/or of course extrapolation from that as to the potential damages is at this stage necessarily vague. However, I otherwise accept that as indicated the first precondition has been made out and in circumstances of this kind where there is an awareness, knowledge and indeed proof of the distribution of what are claimed to be unauthorised copies of the applicants films, there is indeed, having regard to current technology and noting what is perhaps obvious and common in matters of this kind, a significant price differential between authorised and unauthorised copies, a significant prima facie potential for significant damages and indeed what might be described as damage of a kind which would be regarded as very serious for the applicant. I therefore conclude that the second precondition has been made out.
The affidavit material in my view clearly establishes, both by the nature of the product now sought to be the subject of the Anton Piller order and interlocutory restraining order, has clearly the potential for material to in fact be destroyed before any inter partes application can be made. That would, in my view, deprive the applicants in this instance of their rights by way of discovery or otherwise if the order sought is not made this day. I accept that in considering the third precondition that the court should be prepared to apply and do apply what is described is common wisdom in assessing the risk of destruction in the case of copyright in cinematographic films (See Television Broadcast Ltd v UN (1988) 21 FCR 34 38).
In the applicants outline of submissions, based upon the affidavit evidence, the risk referred to is particularly significant in the case of the respondents, due to a number of factors which I accept - at least for the present purposes - have been made out, namely:
1)The nature of the Bollywood film industry in Australia;
2)The ease and lack of expense involved in destroying DVDs, VCDs and video cassette tapes;
3)The likely lack of proper accounts and record-keeping by the respondents;
4)The ease with which the respondents could dispose of the copies of the applicants films within the Indian community in Australia;
5)The lack of substantial assets of the respondents.
Whilst it may be true that the affidavit evidence in support of each and every one of those conclusions may vary, I am satisfied for the present purposes of this application, having regard to the relevant law, that each and every one of those factors has been established to the requisite degree.
In my view, for these reasons stated it follows that upon the appropriate undertakings being given through counsel, which are incorporated in the final draft of the orders now proposed to be made, it is appropriate in the exercise of the court's discretion to make the orders sought in the modified version by the applicants. I am satisfied that it is an appropriate exercise of the court's discretion to grant the orders sought in this application. It is noted the matter is otherwise adjourned for further hearing before this court on 20 April 2005 at 9.45 am.
I certify that the preceding fifteen (15) paragraphs are a true copy of the reasons for judgment of McInnis FM
Associate:
Date: 12 April 2005
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