1. ANTON PILLER ORDER, MAREVA INJUNCTION & JOHN DOE ORDER By Priyanga.G Altacit Global
2. Intellectual Property Remedies Civil Remedies – Traditional remedy - Civil raids & seizures, damages or accounts of profits, delivery up/ discovery of infringing material / documents, preservation of assets and interim. Non - Traditional Remedy – Anon Piller order, Mareva Injunction, John Doe order, Interlocutory injunction etc. These remedies are discretionary depending on the facts of the case. Criminal Remedies Administrative Remedies
3. Anton Piller Order is an order to enter a premises and search for and seize allegedly infringing goods and related documents or evidence. Mareva Injunction is an order to prevent a defendant from disposing of assets to defeat a possible judgment. John Doe Order is a representative order against an identifiable class of defendants rather than named persons that allows allegedly infringing goods to be seized.
4. Common requirement for the 3 matters: There is a serious question to be tried. The balance of convenience favours granting the injunction (that is, greater damage will be suffered by the rights owner if the conduct continues than the damage that will be suffered by the alleged infringer, if ordered to stop the conduct). The owner gives a promise to the court to pay any damages that the alleged infringer suffers, as a result of the injunction if, at the end of the trial, the applicant is unsuccessful.
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6. Refusing would amount to contempt of court. Originated from the court of UK INAUDITA ALTERA PARTE - Without prior hearing Article 50, paragraph 2 of the TRIPS Agreement. Sensitive in nature Named after Anton Piller KG, to whom such an order was first issued in 1976.
7. Meaning & Circumstances under which the order is passed: First delivered in the case of : Anton Piller KG v. Manufacturing processes Ltd & Others (1976) RPC 719 (A case involving drawing and confidential information) Court of Appeal detailed the preconditions for granting such order:[as stated by ORMROD J. "(i) The applicant must have a very strong prima facie case. (ii) The potential or actual damage to his interests must be very serious. (iii) There must be clear evidence that the defendant has in his possession incriminating documents or things, and that there is real possibility that he may dispose of or destroy such materials before any application inter partes can be made."
8. EXCESSES IN EXECUTION OF ANTON PILLER ORDERS: In Universal Thermosensors Ltd. v. Hibben and Ors. ([1992] F.S.R. 361) Columbia Picture Industries and Ors. v. Robinson and Ors. ([1986] F.S.R. 367 per Scott J.). The UK courts gave certain guidelines to prevent the abuse of Anton Piller Order .
9. Rights of the Parties Supervising solicitor – to ensure the integrity. Appointment of local commissioner for the preservation of copyright infringement materials. Security for unwarranted and wrongfully executed Anton Piller orders. Limited use clause. Defendant is entitled to return to court on short notice to (a) discharge the order; or (b) vary the amount of security. Return the seized material to the defendant or his counsel.
10. MAREVA INJUNCTION: This is a type of injunction which prevents somebody from getting rid of his assets. Freezing order Prevents the infringer/ offender from removing/disposing of assets in which the gains from infringement have been invested. Purpose- Judgments shall not go valueless – and meaningless. To prevent dissipate their assets from beyond the jurisdiction of a court so as to frustrate a judgment. – per Lord Denning “THE MAREVA [1980] 1 All ER 213 (CA). Common Law did not permit pre-judgment injunctions of this type before this case. The injunction is served on third parties, normally in many cases the infringers bank asking them to freeze the assets of the infringer which they hold.
11. Any person who has the knowledge of the infringers assets must assist in finding the assets if not would amount to contempt of court. Granted at the pre-trial stage in ex parte hearings, based on affidavit evidence alone. To get MI by an ex- parte the plaintiff should satisfy the main 4 ingredients: a good arguable claim; a real risk that the final judgment in its favour would remain unsatisfied; full and frank disclosure of all material facts; the exercise of discretion by the court Mostly granted in association with AP order.
12. CIRCUMSTANCES UNDER WHICH MI IS GRANTED: Danger of the defendant absconding. Danger of the assets being removed out of the jurisdiction. Disposed off within the jurisdiction. Danger that the plaintiff, if he gets judgment, will not be able to get it satisfactorily. PERIOD OF EXECUTION: Before the commencement of the trial Any time during the proceeding After judgment in aid of execution
13. JOHN DOE ORDER “JOHN DOE”, “JANE DOE”, “RICHARD ROE” - Americans use the names for unidentified persons. John is the generic name which usually denotes American man But the origin of the names are still unknown. John Stiles, Richard Miles – used for third fourth participants in an action. “John Doe” orders are orders granted against a class of unknown infringers.
14. It is best defined by the Australian Copyright Council as “a representative order against an identifiable class of Defendants, rather than named persons, which allows the goods to be seized”. Once the wrong doing persons are identified, they are added as defendants to the suit. In Traditional action for infringement, we have to identify the defendant before bringing an action where John Doe order is extremely helpful in cases where specific identification may not be possible, given the fact that the IPR itself has a limited shelf life and would lose its commercial value in a short while.
15. First John Doe order in India Taj Television & Anr v RajanMandal & Ors[IA NO. 5628/2002 in CS (OS) 1072/2002] John Doe orders were granted in India for the first time, whereby the Commissioner was empowered to enter the premises of any cable operator illegally airing the football World Cup 2002. Entry as well as seizure of the infringing equipments were permitted in the case of Taj Television Ltd v. Channel Communication (2002)
