[1980] 2 All ER 273

The plaintiffs, who were film companies owning the copyright to films produced and made by them, believed that the defendants were pirating copies of those films and recording and selling unauthorised video cassettes of them. The plaintiffs accordingly issued a writ against the defendants seeking an injunction restraining them from infringing the plaintiffs' copyright. The plaintiffs also sought and were granted Anton Piller orders^a which, inter alia, required certain of the defendants to permit forthwith representatives of the plaintiffs to enter premises occupied by the defendants for the purpose of inspecting and removing any unauthorised films. The orders further required three of the defendants, who were engaged in selling the pirate cassettes, 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 defendants. The three defendants concerned applied to have the orders varied by expunging the requirements as to disclosure, but their application was refused. On appeal to the Court of Appeal the defendants applied (i) to have the orders struck out entirely on the grounds that the court had no jurisdiction to make them, but if it did it should not have exercised its discretion by making ex parte orders which were peremptory and penal, or alternatively (ii) to have the orders varied. On the latter issue the defendants contended that if they were to disclose the information sought they would incriminate themselves by providing material on which they could be prosecuted and convicted under s 21 of the Copyright Act 1956 of the offence or making or selling articles known to be infringing copies of a copyright work. The plaintiffs contended (i) that following recent authority^b the restrictions imposed by law on the use made of material disclosed on discovery in civil proceedings were sufficient to ensure that the material could not be used in criminal proceedings, (ii) that an exception to the rule against self-incrimination ought to be made in the circumstances because otherwise the defendants would be able to take advantage of their own wrongdoing, and (iii) that alternatively, there ought to be implied in the 1956 Act an exception analogous to that contained in s 31 of the Theft Act 1968 which provided that a person was not to be excused on the grounds of self-incrimination from discovery in proceedings relating to property but that no statement or admission so made was to be admissible in evidence against him.

Held - (1) The court had an equitable jurisdiction to make mandatory and other peremptory and penal orders at any stage of proceedings, or in contemplation of273 proceedings, if the rights and property of, or remedies claimed by, the plaintiff were in jeopardy and damages were not an adequate remedy. There being ample evidence that the plaintiffs would not be protected unless any order made was both peremptory and penal and was made, served and implemented without prior notice to the defendants, the judge had been right to assume jurisdiction to make the orders, since otherwise the offending material could have been removed before the order was put into force (see p 279 c d, p 283 c to e and p 287 e f and j to p 288 d, post); Anton Piller KG v Manufacturing Processes Ltd [1976] 1 All ER 779 applied.
   (2) (Lord Denning MR dissenting) Nevertheless, that part of the orders requiring disclosure was contrary to the well-eatablished principle of privilege against self-incrimination and would accordingly be expunged, for the following reasons-
   (a) Because of the similarity between acts constituting civil infringements of copyright, as defined in s 16(2) and (3) of the 1956 Act and acts amounting to summary offences, as defined in s 21, proof of infringement in a civil action almost invariably involved proof of offences under s 21, and thus if a defendant were required to give discovery of material which would enable a plaintiff successfully to found a civil action for infringement he would at the same time almost certainly incriminate himself in respect of offences under s 21. On the facts, there was a real and appreciable risk that the defendants would incriminate themselves under s 21 if they complied with the disclosure requirements of the order (see p 283 g to j, p 288 g h, p 289 a b, p 292 h and p 283 b, post); R v Garbett (1847) 2 Car & Kir 474, dicta of Bowen LJ in Redfern v Redfern [1886-90] All ER Rep at 528, of du Parcq LJ in Triplex Safety Glass Co Ltd v Lancegaye Safety Glass (1934) Ltd [1939] 2 All ER at 617 and Rio Tinto Zinc Corpn v Westinghouse Electric Corpn [1978] 1 All ER 434 applied.
   (b) The fact that restrictions were implied by law on the use of material disclosed on discovery in civil proceedings was not a reason for over-riding the privilege against self-incrimination, because (per Templeman LJ) the privilege entitled the defendant to complete concealment and silence rather than a mere ban on the use of information disclosed (see p 284 d to g and p 289 d to g, post); Riddick v Thames Board Mills Ltd [1977] 3 All ER 677 distinguished.
   (c) An exception to the privilege against self-incrimination could not be implied in the 1956 Act on the grounds that the criminal remedy in s 21 was subordinate and ancillary to the primary remedy of civil action, because by analogy with s 31 of the 1968 Act such an exception would have to be expressly stated in the 1956 Act before it could be recognised by the courts (see p 285 c to e and h to p 286 b, p 289 d j, p 290 b c, p 291 e to g and p 292 f g, post).
   (d) Nor could an ad hoc exception to the privilege against self-incrimination be made in the circumstances of the case on the grounds that otherwise the defendants would be able to take advantage of their own fraud or wrongdoing to defeat the plaintiffs' legitimate claim, because to do so would introduce a general and unlimited exception which could have the effect of negating the privilege altogether (see p 285 b, p 291 f to h and p 292 f g, post).
   Per Bridge LJ. The only satisfactory practice when making an Anton Piller order where it can be seen from the strength of the applicant's evidence that the proposed defendant is in danger of self-incrimination, is for the court to abstain from making an ex parte order requiring immediate answers to questions or disclosure of documents (see p 286 e f, post).
   Per Templeman LJ. The difficulty raised by the doctrine against self-incrimination and experienced by owners of copyright in films and records points to a defect in the law and suggests either that the doctrine requires modification or at least that the exempting provisions of s 31(1) of the 1968 Act should be extended to offences under the 1956 Act (see p 292 g, post).

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 22 Digest (Reissue) 433-437, 4310-4336 and 18 Digest (Reissue) 19, 149-151, 97-102, 1195-1231.

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   For the Copyright Act 1956, ss 13, 16, 18, 21, see 7 Halsbury's Statutes (3rd Edn) 156, 161, 165, 171.
   For the Theft Act 1968, s 31, see 8 ibid 802.
   For the Civil Evidence Act 1968, s 14, see 12 ibid 926.

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Interlocutory appeal
The defendants, Video Information Centre (a firm), Michael Anthony Lee, Susan Gomberg, Stylestone Ltd, Videochord Ltd and Michael George Dawson, appealed against the decision of Whitford J on 31 July 1979 dismissing their application to vary orders made by Walton J on 3 and 5 July 1979 on the application of the plaintiffs, Rank Film Distributors Ltd, Universal City Studios Inc, Cinema International Corpn (UK), ITC Entertainment Ltd, ITC Film Distributors Ltd and EMI Film Ltd, ordering, 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 or who 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 orders were made by Walton J following the issue of a writ, dated 3 July 1979 and amended on 5 July, by the plaintiffs against the defendants claiming (i) an injunction restraining the defendants from infringing the plaintiffs' copyright in any cinematograph film, (ii) an order for the delivery or destruction on oath of all infringing copies of the plaintiffs' copyright works in the defendants' possession, power, custody or control, (iii) an order requiring the defendants to give discovery of the names and addresses of all persons, firms or companies276 who had supplied the defendants or to whom they had supplied infringing copies, (iv) an inquiry as to damages for infringement, and (v) against the first, second, fourth and sixth defendants an inquiry as to damages for conversion. The facts are set out in the judgment of Lord Denning MR.

15 February 1980. The following judgments were delivered.

LORD DENNING MR. 'It is, it is a glorious thing, to be a Pirate King', said W S Gilbert (The Pirates of Penzance, I). But he was speaking of ship pirates. Today we speak of film pirates. It is not a glorious thing to be, but it is a good thing to be in for making money. Film pirates plunder the best and most recent cinema films. They transpose them on to magnetic tape, and then sell video cassettes on the black market.

   A film pirate works like this. He gets hold of a technician in a cinema or in a ship or an aircraft, any place where cinematograph films are projected on to a screen. The pirate then bribes the technician. He pays him, say, £100. The technician then 'borrows' a film for a night. It is simple enough. Instead of putting the film into the cupboard, as he should, he puts it into his own case. He hands the celluloid film to the pirate. Overnight the pirate takes the film to his 'laboratory'. He has there a machine for transferring the film from celluloid onto magnetic tape. It only takes an hour or so. Next morning the pirate returns the film to the technician. He puts it into the cupboard. No one is any the wiser. The pirate has during the night made a 'master tape'. He uses it for making video cassettes. He then sells these cassettes on the black market. There are many buyers available. A lot of people nowadays have video cassette recorders. Universities have them. Hotels have them. Private homes have them. They can use the cassette so as to reproduce the film when they like or wherever they like.
   This black market makes huge inroads into the legitimate business of the film companies. They have been put to great expense in producing the best films. They have the copyright which gives them the sole and exclusive right to reproduce them. Yet here are the pirates plundering it, stealing all the best films.
   By far the biggest buyers come from the Middle East and Africa. The newspapers have drawn attention to it. In the London Evening Standard of 17 April 1979 there appeared an article:

   The pirates have good salesmen about. For instance, in February 1979 an executive of a film company was in Iran. He stayed a night in a hotel in Kuwait. Someone came up to him and said: 'Are you going to London? Here is a list of films which you can buy on video cassettes in London. Call the telephone number 937 0555 and ask for Miss Sue. The price of the tape will be £50 per hour running time.'

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   The film companies followed up that clue and others. Eventually they discovered the 'laboratory' where a pirate used to transpose the celluloid films onto magnetic tape. It was in a house in a suburb of London, half-an-hour out on the Underground, 66 Goldings Road, Loughton, Essex. It was a three-bedroomed house in a suburban street. It was occupied by Mr and Mrs Dawson who carried on a company under the name of Videochord Ltd. In a back room on the ground floor they had an expensive machine called the Rank Cintel Flying Spot Scanner Mark III. It cost £50,000. In the house they found also much other equipment including 20 video recorders. They found a library of 400 films.
   On 23 April 1979 the police entered the house pursuant to a search warrant. They found Mrs Dawson actually using the machine so as to transpose films onto tape. The police took Mr and Mrs Dawson into custody. They were detained overnight, but next morning were released on bail. The case is being considered by the Director of Public Prosecutions.
   The film companies, in a separate inquiry discovered the selling organisation. It was a selling place in a shopping arcade in Kensington. It is at 49-53 Kensington High street. There is a glass booth on the ground floor. Here they found 'Mike' Lee and 'Sue' Gomberg. Those two carry on under the name of the Video Information Centre. 'Mike' Lee puts on the trappings of a substantial business. To impress his customers, he drives a Rolls-Royce motor car. They do business in video cassettes. They have a catalogue of some 600 feature films, video-piracy, and a further catalogue of pornographic films, video-porn. Incidentally, video-porn is a big industry in itself as we have just learned in a case brought by Mr Blackburn (see R v Metropolitan Police, ex parte Blackburn (No 3) [1973] 1 All ER 324, [1973] QB 241). They sell the video-pirate cassettes at £50 a running hour. They tell customers that they have a laboratory in Essex where they have to get the films. They are quite frank with their customers. They warn them that the supply of the films may be a breach of copyright and may possibly lead to conspiracy, but it is worth the risk. They said as much to a solicitor, Mr Perkins, a partner in Clifford-Turner. On Monday, 23 April 1979 they agreed to sell him three films, Julia for £100, Animal House for £100 and The Boys from Brazil for £150, making £350 altogether. He paid a deposit of £150 in cash. 'Mike' Lee said he would obtain the films from his 'laboratory' that evening and let him have them the following day. There was some delay (no doubt because of the police visit to 66 Goldings Road, Loughton). 'Mike' apologised to the solicitor for the delay. He said: 'Things have been getting rather warm.' But 'Mike' did deliver the three video cassettes on 2 May 1979. They were clearly obtained illegally. The copyright in the films belonged to the film companies, and they have never given any permission for the films to be copied or put onto video cassettes.
   Such is the outline. The affidavits give the story in much more detail. But the evidence is quite sufficient to warrant the inference that here there was a conspiracy to defraud at common law. (That still exists; see s 5(2) of the Criminal Law Act 1977.) And that those concerned were engaged in offences of making and selling infringing copies contrary to s 21 of the Copyright Act 1956.
   But the criminal law does not provide an adequate remedy for the film companies. The committee presided over by Whitford J reported that 'the criminal provisions are of little use and little used' (Cmnd 6732(1977), para 708). The criminal law is too slow and the penalties too small. Section 21 creates only a summary offence, and the penalties have not been increased by the legislature. (The offence is regarded so lightly that it was not included when other penalties were increased by s 30 of the Criminal Law Act 1977.) The fine for an offence under the Copyright Act 1956 is still only £50. That is a small price for a film pirate to pay. He can look on it as one of the incidental expenses of his trade. In any case it is very difficult to catch the real people behind this illicit traffic. As a rule the only people who can be caught are small traders in back streets. They may sell video cassettes to an inquiry agent who gives a 'trap' order. But as soon as legal proceedings are in the offing, the stock of the street trader disappears. He protests278 his innocence, saying that he had no knowledge that there was any infringement of copyright.
   So in waging this war against this crime, the film companies have had recourse to the civil courts, and especially to the Chancery Division of the High Court. They sought the advice of counsel, Mr Hugh Laddie, and he suggested that they should apply for an ex part order, before the defendant was served with the writ, so as to take the trader by surprise before he could get rid of his stock and any incriminating documents. The first application came up for close consideration by Templeman J in EMI Ltd v Pandit [1975] 1 All ER 418, [1975] 1 WLR 302. His judgment set a most valuable initiative. It was followed by this court in Anton Piller KG v Manufacturing Processes Ltd [1976] 1 All ER 779, [1976] Ch 55 and extended in EMI Ltd v Sarwar and Haidar [1977] FSR 146. Those cases were heard ex parte. In this case we have heard both sides. As a result, I think that we should affirm those decisions and also those that have followed them. It is an innovation which has proved its worth time and time again. So long as the evidence is strong enough, it is now commonplace for orders to be made against a householder ex parte, not only to restrain him from making or distributing infringing copies, but also so as to require him to permit his premises to be searched, and to require the infringing copies to be produced, also the invoices and documents disclosed, and furthermore for him to give the names and addresses of makers who supply him. In nearly every case the householder complies with the order. He raises no objection. He could object, if he wished to do so, but this is at the risk of proceedings being taken against him for contempt. Rather than take the risk, he complies with the order.
   So much being settled, most of the discussion before us turned on a new point which has not being raised before. It concerns privilege against self-incrimination. The order against the defendants in this case required them to answer interrogatories and to give discovery of documents. These were framed so as to require the defendants to disclose-
   (i) the names and addresses of those who supplied them with illicit films or offered to supply them,
   (ii) the names and addresses of the customers who took illicit films from the defendants,
   (iii) all invoices, letters and other documents relating to illicit films received or sent out by the defendants,
   (iv) the whereabouts of all illicit copy films or masters known to the defendants.
   The defendants took objection to giving that discovery. 'Mike' Lee in his affidavit claimed privilege from self-incrimination. He said:

   This privilege has never been claimed before in any action for infringement of copyright. If it exists, it will apply not only in Anton Piller cases but in all cases of infringement of copyright, even where an order is made inter partes for discovery. So the point is of much importance.

The wider submission
   First, counsel for the plaintiffs submits that the old privilege against self-incrimination is out of date. He says that it is outmoded by the decision of this court in Riddick v Thames Board Mills Ltd [1977] 3 All ER 677, [1977] 1 QB 881. It was there held that, where a party is compelled by law to give discovery in a civil action, the documents or answers can only be used for the purposes of that action. The courts will not allow the other party, or anyone else, to use the documents or answers for any ulterior or alien purpose. In particular not in any criminal charge against him.
   Applying this principle, counsel submits that there is no risk to a party in giving279 discovery in obedience to an order of the court. The documents or answers cannot be used to incriminate him. He has nothing to fear. So he should be made to answer.
   I would like to accept this wider submission. But I do not feel able to do so. The privilege against self-incrimination is so deeply imbedded in our law that it cannot be uprooted. The common law was stated with the authority of all the 15 judges in 1847 in R v Garbett 2 Car & Kir 474, 175 ER 196; and the courts of equity did the same, it being declared emphatically by Lord Eldon LC in Paxton v Douglas (1812) 19 Ves 225, 34 ER 502. It has been treated as a settled principle both by Parliament in s 14 of the Civil Evidence Act 1968 and by me in Re Westinghouse Electric Corp Uranium Contract Litigation MDL Docket No 235 [1977] 3 All ER 703 at 710-711, [1978] AC 547 at 563-564 and approved in the House of Lords by Lord Wilberforce, Viscount Dilhorne and Lord Fraser ([1978] 1 All ER 434 at 444-445, 457, 473, [1978] AC 547 at 612, 627, 647). So much so that I do not think we can accept the wider submission of counsel for the plaintiffs.

The narrower submission
   Second, counsel urged a narrower submission. He said that there were several exceptions to the privilege of self-incrimination, and that this case fell within one or other of them. He derived these exceptions from the classic work of Edward Bray on the Principles and Practice of Discovery (p 340). It was published in 1885 after equity and law had been fused.
   The first exception is in actions for fraud or conspiracy. If the defendant were allowed to avoid discovery by saying that it might expose him to a criminal charge for fraud, perjury or conspiracy, it would mean, in the words of Lord Eldon LC that 'It would be very difficult to abstract from the apparent grasp of that doctrine nine-tenths of the bills in this Court, charging conbination and confederacy' (see Mayor and Citizens of London v Levy (1803) 8 Ves 398 at 404, 32 ER 408 at 411). So in 1852, where a defendant was charged with fraud, Turner V-C rejected his claim of privilege against self-incrimination: see Chadwick v Chadwick 22 LJ Ch 329 at 331.
   The second exception is in cases of fraud on the revenue authorities. Thus in Ireland where distillers concealed large quantities of spirits so as to evade paying duty on them, they were not allowed to claim privilege against self-incrimination on the ground that 'so much public inconvenience would result from a contrary decision': see Attorney General v Conroy (1838) 2 Jo Ex Ir 791 at 792.
   The third example is of fraud by brokers in London who were not acting honestly but were taking a secret benefit for themselves. The plaintiff sought discovery so as to be able to prove the extent of the fraud and so as to assess damages. The brokers sought to rely on a privilege against self-incrimination. It was rejected in Green v Weaver (1827) 1 Sim 404 at 427, 57 ER 630 at 639 where Hart V-C said:

   This was approved by the Lords Justices in Robinson v Kitchin (1856) 8 De GM & G 88, 44 ER 322.
   The fourth exception was in cases of fraudulent or voluntary conveyances which were avoided by the statutes of Elizabeth I (Fraudulent Conveyances Acts 1571 and 1584, 13 Eliz 1 c 5, 27 Eliz 1 c 4). The statutes also imposed penalties. The defendants sought to avoid discovery of documents by saying that they would be exposed to penalties. In Bunn v Bunn (1864) De GJ & Sm 316 at 317, 46 ER 941 Knight Bruce LJ said: '... it is not the rule or practice of this Court to allow the provisions of either of the statutes of Elizabeth ... to be used to prevent discovery.'
   Although counsel for the plaintiffs said that those exceptions disclosed no recognisable principle, I venture to think they do. They show that the courts, which grant the privilege against self-incrimination, will intervene so as to stop any abuse of it. When a280 defendant is ordered to answer interrogatories or to disclose documents, the court will allow him the benefit of the privilege against self-incrimination when it is invoked for its legitimate purpose, that is, to save him from having his answer or the documents used against him in a criminal court. But the court will not allow the defendant the benefit of the privilege when to do so would enable him to take advantage of his own fraud or other wrongdoing so as to defeat the just claims of the plaintiff in a civil suit.

Section 31 of the Theft Act 1968
   Section 31 of the 1968 Act makes a statutory inroad into the privilege against self-incrimination. The policy behind it is explained in the Report of the Criminal Law Revision Committee (Cmnd 2977(1966), para 200-205):

   In carrying out that policy, the effect of the statute is best explained by taking an ordinary civil action. Suppose an owner of property has been deprived of it in some way or other, by stealth or fraud or merely by it being taken away from him. He brings a civil action for conversion or detinue or an account. The plaintiff should be able to ask questions of a defendant so as to know how the property came to be taken and what has become of it, to what use it has been put, and what profit has been made out of it. The defendant should not be able to avoid the question by saying: 'If I answer, it may tend to incriminate me. I fear that I may be accused of stealing it or obtaining it by deception, or of false accounting.' In fairness to the plaintiff, the defendant should answer the question; but, in fairness to the defendant, the law should ensure that his answer is not to be used against him in any criminal proceedings.
   This policy is carried into effect by s 31 of the 1968 Act. But it applies in terms only to cases of 'an offence under this Act', that is, an offence depriving a man of his 'property'.

By analogy to the statute
   Suppose now that the defendant says that he fears that he may be charged not with an offence under the Theft Act 1968 but with conspiracy to defraud the plaintiff of his property. Surely he cannot claim privilege on that account. Section 31 must apply by analogy.
   A similar point arises in respect of the definition of 'property' in the 1968 Act. It covers nearly all kinds of property. But it does not cover the form of industrial property known as copyright. Nevertheless, the policy underlying the Act applies with just as much force to copyright as it does to other kinds of property. In the circumstances, I think we should do as our forefathers used to do, develop the law 'by analogy to the statute': see Snell's Principles of Equity (27th Edn, 1973, p 34). We should hold that, when a plaintiff sues for infringement of copyright, conversion of infringing copies and an account, then in fairness to the plaintiff, the defendant should give discovery; but in fairness to the defendant, his documents or answers should not be admissible in evidence against him in any criminal proceedings, a result which is achieved now by Riddick v Thames Board Mills Ltd [1977] 3 All ER 677, [1977] 1 QB 881.
   So we have by analogy a further exception to the privilege. I would just add that in other forms of industrial property, such as patents, trade marks or passing-off, the defendant cannot claim any privilege against self-incrimination, because the infringement281 is not a criminal offence. Full discovery of names of makers and customers is often ordered: see Saccharin Corpn v Chemicals and Drugs Co [1900] 2 Ch 556, Osram Lamp Works Ltd v Gabriel Lamp Co [1914] 2 Ch 129. There is no reason why a privilege against self-incrimination should be available in copyright when it is not in the other forms of industrial property.

Application to this case
   Here we have the Copyright Act 1956 which gives the maker of a cinematograph film the copyright in it, so that he can restrain anyone else from making a copy of it or showing it and so forth. It gives him the selfsame remedies as if he were the owner of the infringing copies. Those remedies are clearly intended by the legislature to be enforced by actions in the civil courts for injunction, conversion, damages and an account. To enforce those remedies, it is absolutely essential for the maker of the film to be able to get discovery from the defendant. The defendant knows what he has been doing; the plaintiff does not. Often enough discovery is necessary for the plaintiff to complete his proof. Invariably it is necessary for him to know the extent of the infringement and the amount of the damage. It is true that Parliament has made the infringement a summary offence under s 21 of the Act; it imposes a nominal fine of £50 for the first offence. But if that provision were allowed to form a ground of privilege, the purpose of Parliament would be frustrated altogether. Every defendant could deprive the plaintiff of his just remedy, simply by claiming the privilege against self-incrimination. I would make the same comment as Hart V-C did in Green v Weaver (1827) 1 Sim 405 at 422, 57 ER 630 at 637:

   No doubt in return the defendant should be given something. This is done by Riddick v Thames Board Mills Ltd [1977] 3 All ER 677, [1977] QB 881 because under that case the documents or answers are inadmissible in criminal proceedings.

When objection is to be taken
   It is well settled that the plaintiff is not required to anticipate that the defendant will rely on the privilege. It is for the defendant to take the objection in his answer. How does this point affect the Anton Piller order? I cannot think it right to refuse the order simply because the defendant might raise the objection. In fairness to the plaintiff the Anton Piller order should issue, leaving the defendant to be protected by the Riddick principle.

Triplex Safety Glass v Lancegaye
   There is only one case to the contrary. It is Triplex Safety Glass Co Ltd v Lancegaye Safety Glass (1934) Ltd [1939] 2 KB 395. I think it should not be followed to-day.
   (1) It was a decision by a court of two which is not binding on a court of three.
   (2) The court was not referred to the long line of cases on exceptions.
   (3) The Theft Act 1968 has altered the position in regard to offences against property, and this should be extended by analogy to copyright.
   (4) Now, 40 years after the Triplex case, it would be ridiculous to suggest that there is any possibility of a charge in the criminal courts for libel. That would be mere moonshine. A claim of privilege today would be regarded simply as a means of avoiding answering the interrogatories. That would be manifest abuse, which should not be allowed.

Conclusion
   There is plain evidence here that the defendants have done great wrong to the plaintiffs. They have stolen the plaintiffs' copyright in hundreds of films and have not paid a penny for it. Yet these wrongdoers glory in their wrongdoing. They get legal aid, 282and supported by it they say that, by reason of their wrongdoing, they have a privilege against self-incrimination. They rub their hands with glee and say to the injured plaintiffs: 'You cannot ask us any questions. You cannot see any of our documents. We have a privilege by which we can hold you at bay and tell you nothing. You cannot prove any damages against us, not more than minimal. You cannot get an account of our profits.'
   To allow wrongdoers to take advantage of their wrongdoing in this way is an affront to justice itself. It is a great disservice to the public interest. It should not be allowed. If this illicit traffic is to be stopped, strong measures are needed. Whitford J has much experience in cases of this kind. He has made a strong order, and I agree with it. I would dismiss this appeal.

BRIDGE LJ. Modern technology has greatly facilitated the pirating of copyright material, especially in the form of sound recordings and films. To give effective relief to the copyright owners seeking to enforce their legal remedies against the pirates the courts have found it necessary to devise a form of order for what may be called instant discovery granted on ex parte application. Such orders are commonly referred to as Anton Piller orders, having first been approved in this court in Anton Piller KG v Manufacturing Processes Ltd [1976] 1 All ER 779, [1976] 1 Ch 55. The basis of the court's inherent jurisdiction to make such orders, the scope of the orders and the circumstances in which they can properly be made are there examined. In this appeal, the first where the matter has been argued inter partes, the existence of the jurisdiction has been challenged. Having considered counsel for the defendants' careful argument on that issue, I can see no ground whatever to doubt the correctness of the conclusions reached by the court, when considering the matter ex parte, in the Anton Piller case.
   The novel and exceedingly difficult question to which this appeal gives rise is whether a defendant in a copyright action is entitled to claim privilege from giving discovery on the ground that by doing so he would tend to incriminate himself, and if so to what extent the probability of the defendant being entitled to such a privilege should affect the making of an Anton Piller order. It is said on behalf of the appellant defendants that by answering the questions they are required to answer by the disputed parts of the orders under appeal and by giving discovery of documents they would tend to incriminate themselves of (1) offences under s 21 of the Copyright Act 1956, (2) offences of conspiracy to contravene that section and (3) offences of conspiracy to defraud. The claim to privilege on the ground of self-incrimination is advanced without particularity in an affidavit filed by the second defendant. On behalf of the other appellant defendants it is advanced only through the mouth of counsel. This is unsatisfactory. But it would be even more unsatisfactory to dispose of the matter simply on the ground that the privilege is insufficiently claimed or that there are insufficient grounds for claiming it. Having regard to the course the argument has taken and, more particularly, to the strength of the evidence adduced in support of their case by the plaintiffs, it seems to me only realistic to accept, applying the tests suggested by Lord Denning MR in Re Westinghouse Electric Corpn Uranium Contract Litigation MDL Docket No 235 (No 2) [1977] 3 All ER 717 at 721-722, [1978] AC 547 at 574 that there is a real and appreciable risk, as distinct froma remote or insubstantial risk, of proceedings being taken against the appellant defendants for one or more of the offences categorised above and that they have reasonable grounds to believe that the material required to be disclosed on discovery would at least provide a link in the chain or be corroborative of existing material which could be used against them.
   At the outset it must be recognised that the principle that no man should be compelled to incriminate himself is firmly entrenched in our law. It is expressly recognised and its scope is defined by s 14 of the Civil Evidence Act 1968. It is the subject of some express statutory exceptions of which the most important, for present purposes, is s 31 of the Theft Act 1968. But it is significant that incriminating material which is disclosed pursuant to that exception but which would otherwise be privileged is rendered283 inadmissible in evidence in criminal proceedings. An emphatic affirmation of the principle is expressed in the following passage from the judgment of the Court of Appeal delivered by du Parcq LJ in Triplex Safety Glass Co Ltd v Lancegaye Safety Glass (1934) Ltd [1939] 2 All ER 613 at 617, [1939] 2 KB 395 at 403:

   More recently the principle has been again affirmed and applied, albeit in the protection of a witness not a party, in the decisions of this court and the House of Lords in Rio Tinto Zinc Corpn v Westinghouse Electric Corpn [1978] 1 All ER 434, [1978] AC 547.
   This is the formidable barrier which confronts counsel for the plaintiffs and which he has to surmount if he is to sustain the learned judge's order. He attempts to do so by both a broad and a narrow submission. Counsel's broad submission, in reliance on a line of authority culminating in Riddick v Thames Board Mills Ltd [1977] 3 All ER 677, [1977] QB 881, can be thus shortly summarised. It is to the effect that the implied restrictions which the law imposes on the use which can be made of material disclosed on discovery in civil proceedings are sufficient to ensure that such material can never be used in any criminal proceedings against the party making discovery. Accordingly, it is said, material disclosed on discovery, no matter what its nature, cannot tend to incriminate and all material is discoverable. I am wholly unconvinced that the premise on which this proposition is based is sound. There are many ways in which incriminating material once disclosed may directly or indirectly lead to or support the prosecution of the party who has been compelled to incriminate himself. But, this apart, counsel's broad submission, if it were right, would have the effect at a stroke, of abolishing the privilege against the self-incrimination in relation to discovery in civil proceedings or, to put the matter in another way, of introducing into the law a general and unlimited exception to the privilege having the same effect as the particular and limited exception provided for by s 31 of the Theft Act 1968. This is, to my mind, a sufficiently startling and revolutionary result to be self-evidently unacceptable.
   Counsel's narrow submission is advanced in support of a suggested ad hoc exception to the privilege which would cover the circumstances of the present case. He drew our attention to a number of nineteenth century decisions of English and Irish courts where ad hoc exceptions to the privilege were upheld. The following are the cases referred to, set out in chronological order: Mayor and Citizens of London v Levy (1802) 8 Ves 398, 32 ER 408, Green v Weaver (1827) 1 Sim 404, 57 ER 630, Attorney General v Daly (1833) Hayes & Jo 379, Attorney-General v Conroy (1838) 2 Jo Ex Ir 791, Rice v Gordon (1843) 13 Sim 580, 60 ER 225, Chadwick v Chadwick (1852) 22 LJ Ch 329, Robinson v Kitchin (1856) 8 De GM & G 88, 44 ER 322, Bunn v Bunn (1864) 4 De GJ & Sm 316, 46 ER 941.
   I do not refer to these cases in detail for the reason that I found it impossible to derive any significant assistance from them. The reasoning of the judgments is often terse and difficult to follow. Counsel for the plaintiffs was the first to concede that it was impossible to derive from these cases any coherent underlying principle by which to distinguish the exceptional case where the privilege is not available from the normal case where it is. The furthest one can go is to say that they indicate a willingness on the part of nineteenth century judges to override the privilege when to allow it would defeat the justice of the case. None of these cases appears to have been followed for over a hundred years. It seems to me very much open to doubt whether the privilege against self-incrimination284 at the time of these decisions had yet come to be recognised as one of the 'inveterate principles of English law' to which Bowen LJ referred in 1891 (Redfern v Redfern [1891] P 139 at 147, [1886-90] All ER Rep 524 at 528). Nor is it without significance that the first five of the eight cases referred to were decided before the important decision of 12 judges in R v Garbett (1847) 2 Car & Kir 474, 175 ER 196 affirming the privilege. In the last three cases listed Garbett's case was not cited. I regret that I am quite unable to accept an exception to the privilege against self-incrimination based on the principle formulated in the judgment of Lord Denning MR that 'the court will not allow the defendant the benefit of the privilege when to do so would enable him to take advantage of his own fraud or other wrongdoing so as to defeat the just claims of the plaintiff in a civil suit'. A principle so widely stated, so far from establishing a limited exception to the privilege, could be invoked by a plaintiff seeking discovery from a defendant so as to negate the privilege in every case.
   The other aspect of counsel's narrow submission, which has caused me much greater difficulty, is that which seeks to spell out an exception to the privilege against self-incrimination from the provisions of the Copyright Act 1956. He draws our attention in particular to two features in the statute. The first is the striking parallel between the acts defined as constituting infringements by s 16(2) and (3) which will be the normal basis of a civil action for infringement of copyright, and the acts which amount to summary offences under s 21. It follows from this that in the great majority of civil actions for infringement of copyright proof of the plaintiff's case will involve proof of the commission of offences under s 21 and accordingly when, in such cases, the plaintiff's case is well founded the giving of discovery by the defendant is almost certain to involve elements of self-incrimination. The second feature is that s 21 itself is found in Part III of the Act, which is entitled 'Remedies for Infringement of Copyright', and by providing such a remedy in the form of a summary criminal offence is manifestly subordinate and ancillary to the primary remedy by civil action at the suit of the copyright owner in which, as s 17 provides-

   Certainly since the Copyright Act 1911, which contained similar features to those noted above in the 1956 Act, it has been, we are told, the invariable practice for defendants in copyright actions to be required to give full discovery and no one has heard before this case of privilege to withhold discovery being claimed on the ground of self-incrimination. Yet if such a claim is available it could operate in many cases, so it is argued, largely to stultify the copyright owner's effective remedy. This would be in startling contrast with the position of other seeking to enforce proprietary rights whose right to obtain discovery notwithstanding its tendency to incriminate is expressly preserved by s 31 of the Theft Act 1968. On the other hand, it is argued that the contrast between the presence of such an express provision in the 1968 Act and the absence of any corresponding provision in the 1956 Act may be explained by the consideration that the former is primarily a criminal statute whereas the latter contains only a single incidental provision creating a criminal offence.
   These considerations are advanced in support of a formidable argument to the effect that Parliament cannot have intended by the introduction of s 21 into the 1956 Act to impair the efficacy of the copyright owner's civil remedy and therefore cannot have intended that privilege from giving discovery in a copyright action should be available on the ground of a tendency to incriminate of an offence under s 21 or of any conspiracy of which the commission of offences under s 21 was the essential purpose. In the end, after some vacillation, I find myself unable to accept this argument. To do so would require the court to read into the statute an exception to the privilege against self-incrimination, which if it were to be appropriately circumscribed, would need to be subject to the same safeguards as are expressed in s 31 of the 1968 Act, and it seems to me285 quite impossible to suppose that Parliament intended to enact such an elaborate provision by mere process of implication. Moreover, in the kind of copyright litigation which was familiar in 1956 I doubt if there was any reason to apprehend that claims by defendants to withhold discovery on the ground of self-incrimination would have been seen as a serious source of embarrassment to plaintiffs. In the ordinary course of litigation such claims might well tend in relation to issues of both liability and damages to recoil on the head of the defendant claiming the privilege. It is only the modern weapon of the Anton Piller order, devised to counter the ingenuity of modern copyright pirates, which is liable to be blunted if the privilege is available. At all events, I am satisfied that if the situation calls for a special exception to the availability of the privilege, that is something which only the legislature, not the courts, can provide.
   What then is the effect, in relation to the practice of making Anton Piller orders in copyright cases, of the conclusion that a copyright pirate may be entitled to claim privilege from incriminating himself? Clearly it cannot be to inhibit the making of ex parte orders requiring defendants to permit the immediate search for and seizure of infringing copies. Section 18 of the 1956 Act gives to the copyright owner proprietary rights in such copies and owners seeking to enforce proprietary rights whether by final or interlocutory order to recover their own property cannot be defeated by any claim of privilege. But very different considerations apply to those parts of an Anton Piller order which require the person to whom the order is addressed to give forthwith to the person serving the order answer to specified questions and disclosure of relevant documents. It has long been the practice of judges hearing oral evidence to warn witnesses who are in apparent danger of incriminating themselves that they are entitled to claim privilege from self-incrimination. It would not be practicable, in my judgment, to embody an effective warning of that kind in a typical peremptory Anton Piller order in such terms as to ensure that the recipient of the order fairly understood his position, what he was required to do and what were the options open to him. It must follow, I think, that the only satisfactory practice will be, when the court invited to make an Anton Piller order can see from the strength of the applicant's evidence that the proposed defendant is in danger of self-incrimination, to abstain from making any order ex parte requiring immediate answers to questions or disclosure of documents. The practical consequence of this view may well be that whenever the evidence in a copyright case is strong enough to justify the making of an Anton Piller order it will also give rise to apprehension of self-incrimination on the part of the defendant so that the ex parte order will effectively have to be limited to authorising the search for and seizure of infringing copies. This may be regrettable but seems to me inevitable.
   For these reasons I would allow the appeal to the extent of deleting from the orders under appeal all requirements to answer questions and disclose documents.

TEMPLEMAN LJ. The defendants challenge the validity of interlocutory orders made by Walton J in an action for infringement of copyright. The orders were made ex parte, without prior notice to and in the absence of the defendants. The orders were intended to be served and were served on the defendants without warning and were in large part peremptory, commanding instant obedience. The orders were penal and any breach constituted contempt of court. The defendants were given leave to apply to vary the orders and did so apply to Whitford J who refused to vary or discharge any of the orders. From that refusal the defendants appeal to this court.
   The plaintiffs own and exploit copyright in cinematograph films. The plaintiffs form part of an industry which may spend millions of pounds in the production and exploitation of a single film. It is alleged, on the basis of convincing evidence adduced before Walton J and as yet uncontradicted, that the defendants copy and exploit copies of the plaintiffs' films in breach of copyright and that the defendants form part of an industry which can copy and exploit a million pound film for less than £150. The evidence in this case and evidence derived from other cases demonstrate that an action against a dealer in infringing films or records copied in breach of copyright will not286 adequately protect the property or rights or remedies of the copyright owner if the dealer is warned of the action and is able to disperse his stock of infringing copies and conceal his suppliers, customers and confederates. The infringing copies disappear, the dealer submits to an injunction, but the infringing copies reappear and are duplicated and remain in circulation in other hands. Effective protection of copyright in these circumstances requires immediate seizure of infringing copies and immediate discovery and interrogatories relating to the supply and sale of infringing copies, otherwise the dealer and his confederates can take untraceable evasive action.
   In the present case Walton J was satisfied on ample evidence that adequate protection of the plaintiffs' property, their rights and their remedies could be only afforded by the orders which he made and which required the defendants to allow the plaintiffs' representatives to enter the defendants' premises and to seize infringing copies of the plaintiffs' films, required the defendants to give immediate discovery of the relevant documents and required the defendants to give immediate answers to interrogatories relating to the supply and sale of infringing copies. In addition the defendants were for the time being forbidden to disclose to third parties information concerning the plaintiffs' proceedings.
   Counsel for the defendants argued that the court had no jurisdiction to order the defendants to allow the plaintiffs' representatives to enter the defendants' premises for the purpose of seizing infringing copies. If such jurisdiction existed, he argued in the alternative, the court should not in the proper exercise of its discretion make such an order ex parte in a peremptory and penal form. Similarly the orders for discovery and interrogatories and restraining the disclosure of information were oppressive and unfair and there was no jurisdiction or alternatively no proper discretion to make such orders.
   We were not referred to any statutory or procedural or authoritative limitation on the power of a court of equity to devise injunctions of different kinds to meet different circumstances. In my judgment a court of equity has jurisdiction to make mandatory and other peremptory and penal orders at any stage of any proceedings or in contemplation of proceedings where damages will not be an adequate remedy and where rights or properties or remedies claimed by the plaintiff are in jeopardy. Of course an injunction is a discretionary remedy which will only be exercised in such manner as is necessary to safeguard the plaintiff and after balancing the potential harm to the plaintiff if an effective injunction is withheld against the potential harm to the defendant if the injunction is granted. The court must decide in the light of the evidence whether the plaintiff has established that the injunction sought is necessary and is no more onerous than is necessary to protect the plaintiff. The court must decide whether the interference with the defendant as a result of the injunction and the consequences of such interference are justifiable in the circumstances. The more severe and peremptory the order which is sought, the greater will be the reluctance of the court to exercise its discretion by granting the order. If the defendant is not given notice of the application for an injunction the court will require to be satisfied that secrecy is essential and will require much persuasion that the interference with the defendant is justifiable. Finally the court must be satisfied that a penal order is essential to secure compliance and to achieve the legitimate purposes of the injunction.
   Copyright in cinematograph films subsists by virtue of s 13 of the Copyright Act 1956. The copyright and ancillary distribution rights are vested in the plaintiffs in respect of their film. By the Act, and in particular by ss 13(5) and 16(3) the plaintiffs' copyright is infringed by the unauthorised making of a copy of the plaintiffs' films and by the sale of a copy by a person who knows that the making of that copy constituted an infringement. By s 18(1) the owner of the copyright is entitled to all such rights and remedies in respect of the conversion or detention by any person of any infringing copy as he would be entitled to if he were the owner of such copy.
   The plaintiffs in this action are therefore entitled to assert rights of ownership over infringing copies of their films including the right to possession. The evidence before Walton J established that failure to secure possession of infringing copies would inflict287 injury on the plaintiffs for which the remedy of damages against the defendants would be inadequate. The evidence established that the plaintiffs' rights of ownership over the infringing copies could only be exercised and the plaintiffs' copyright and other rights vested in them by the 1956 Act could only be protected if the court ordered the defendants to allow the plaintiffs' representatives to enter on the defendants' premises and to seize infringing copies. If the stable door cannot be bolted, the horse must be secured. In my judgment Walton J had jurisdiction to make and grounds to justify an order requiring the defendants to allow the plaintiffs' representatives to enter and seize infringing copies. There was ample evidence to justify the inference that the order would fail to protect the plaintiffs unless it was both peremptory and penal, and made, served and implemented without prior notice to the defendants. If the horse is liable to be spirited away, notice of an intention to secure the horse will defeat the intention.
   Similarly the peremptory and penal orders for discovery and interrogation and the temporary ban on disclosure of information to third parties made by Walton J were remedies necessary to protect the plaintiffs' property and the plaintiffs' rights and remedies and in the circumstances were amply justifiable.
   I therefore reject the argument that Walton J had no jurisdiction to make or alternatively had no sufficient justification for making the orders which are now challenged in this court.
   On behalf of the defendants counsel advanced a separate and more formidable objection to those orders which required the defendants to give immediate discovery of documents and to make immediate answers to interrogatories on pain of committal for contempt of court in the event of disobedience. Such orders, it was argued, deprived the defendants of their right or at any rate of the practical opportunity to consider and exercise their right to decline to give discovery or to answer interrogatories if by so doing the defendants might incriminate themselves.
   By the common law, summarised by Bowen LJ in Redfern v Redfern [1891] P 139 at 147, [1886-90] All ER Rep 521 at 528 impliedly accepted by Parliament in s 16(1)(a) of the Civil Evidence Act 1968 and reiterated by this court and approved by the House of Lords in Rio Tinto Zinc Corpn v Westinghouse Electric Corpn [1978] 1 All ER 434, [1978] AC 547, in any legal proceedings a person, whether a party to the proceedings or not, cannot be compelled to answer any question or produce any document or thing if to do so would tend to expose him to proceedings for an offence.
   By s 21 of the Copyright Act 1956 any person who makes for sale or sells or offers for sale any article which he knows to be an infringing copy is guilty of an offence punishable on summary conviction by a fine on first conviction or by a fine or imprisonment in any other case.
   Discovery of correspondence between the defendants and third parties relating to infringing copies and answers to interrogatories which require the defendants to identify the suppliers and customers of infringing copies might well provide evidence of the knowledge which is an essential ingredient of an offence under s 21 of the 1956 Act and expose the defendants to criminal proceedings for an offence under that section or for the offence of conspiring to contravene that section.
   Where a person gives oral evidence at the trial of an action and is endangered by a question or a line of questioning which may lead to self-incrimination, the judge reminds or informs the witness that he need not answer. In the normal course of proceedings, a party faced with an order for discovery or interrogatories which may result in self-incrimination has the opportunity to consider and to take legal advice before deciding whether to comply with the order. In any event breach of such an order does not usually involve the danger of committal and it would be improper to compel by a penal provision compliance with an order which could only be obeyed at the risk of self-incrimination.
   In the present case the defendants were given no chance, no warning and no opportunity for reflection for reasons which, as I have indicated, were well justified. But those reasons do not justify a penal and peremptory order which could only be obeyed288 at the risk of self-incrimination. The defendants were confronted with service of a complicated order which included peremptory orders for discovery and interrogation requiring instant obedience and they were informed by the penal notice on the order that disobedience would expose them to penal consequences.
   In my judgment, an order ex parte or otherwise for discovery or interrogatories under threat of committal for disobedience should not be made if it is obvious that compliance with the order will involve the danger of self-incrimination. In the present case counsel for the defendants adroitly and properly revelled in the alleged wickedness of his clients. The more criminal their apparent behaviour, the greater their claim to be protected against self-incrimination. While not admitting tort the defendants seek the concealment and silence allowed to crime by the doctrine against self-incrimination.
   On behalf of the plaintiffs counsel argued that the right to concealment and right to silence accorded by the doctrine against self-incrimination to a criminal who defends a civil action no longer remain in full force. Alternatively, in an action for infringement of copyright a defendant could not be allowed to prevent the plaintiff from protecting the rights conferred on the plaintiff by the Copyright Act 1956 by exploiting the privilege of the doctrine against self-incrimination of an offence under s 21 of the same Act.
   I can accept neither counsel's wider attack on the doctrine against self-incrimination nor his narrow attack based on the Copyright Act 1956.
   So far as the wider attack is concerned, the law binding on this court entitles the defendant in a civil action who is guilty of a criminal offence to conceal the evidence of his guilt and to remain silent notwithstanding that the evidence might be vital to the plaintiff. The right to concealment and silence extends to a defendant who is not guilty of a crime but has been guilty of conduct which invites prosecution. It is unnecessary and impossible to decide at this stage which category applies to the present defendants. It is sufficient that they appear to have indulged in conduct which invites prosecution.
   Counsel's wider attack on the ambit of the doctrine against self-incrimination is based on the decision and implications of Riddick v Thames Board Mills Ltd [1977] 3 All ER 677, [1977] 1 QB 881. In that case the principle was established or reaffirmed that a party to litigation who discloses a document on discovery is entitled to the protection of the court against any use of the document otherwise than in and for the purposes of the action. Therefore, it is now argued, the documents and information which may be obtained as a result of orders for discovery and interrogation cannot be made available to prosecuting authorities and will not lead to self-incrimination.
   In my judgment the doctrine against self-incrimination entitles the defendant to concealment and silence. Effective concealment cannot be maintained once discovery has taken place. Any other conclusion would in practice make a mockery of the doctrine against self-incrimination. The doctrine may require reconsideration in the light of modern conditions but has not in my judgment been inadvertently abolished or modified by the decision in Riddick's case.
   Counsel for the plaintiffs' narrow attack is based on the argument that the Copyright Act 1956 primarily created civil rights protected by civil actions. Section 21 which made infringement of copyright with knowledge a criminal offence was only intended to provide ancillary protection for the rights created by the Act. Parliament cannot have intended that the enforcement by a copyright owner of his civil rights should be frustrated by the doctrine against self-incrimination of a criminal offence under s 21.
   In my judgment the fact that the civil rights and remedies of the plaintiffs for infringement of copyright derive from the same act which constituted infringement with knowledge of a criminal offence is not in itself sufficient to make civil proceedings under the Act an exception to the doctrine against self-incrimination. For the purposes of the doctrine there is no difference between a breach of copyright which constitutes a statutory tort and may involve a statutory offence and any other conduct which constitutes a tort and may involve the commission of a crime.
   The existence and scope of the doctrine against self-incrimination have been recognised289 by the Theft Act 1968. Section 31(1) broadly provides that a person shall not be excused from answering any question or complying with any order in proceedings relating to property on the grounds that he might incriminate himself of an offence under that Act but no statement or admission made in compliance with such an order is to be admissible in evidence against that person.
   Breach of copyright is not an offence under the 1968 Act; therefore s 31(1) of that Act does not avail the plaintiffs in this case. Parliament has thought fit to make an express exception to the doctrine against self-incrimination limited to offences under the 1968 Act and subject to safeguards with regard to further admissibility. It is implicit in s 31 of the 1968 Act that Parliament recognised that in the absence of an express exception the doctrine against self-incrimination applies. I cannot accept that the Copyright Act 1956 contained an implied exception to the doctrine.
   I was attracted to the alternative solution suggested that the court will not allow the defendant the benefit of the privilege of the doctrine against self-incrimination if to do so would enable him to take advantage of his own fraud or other wrongdoing so as to defeat the just claims of the plaintiff in the suit. That solution is founded partly on nineteenth century authorities and partly on principle.
   Counsel for the plaintiffs cited a number of nineteenth century cases in which discovery or interrogatories were allowed.
   In Mayor and Citizens of London v Levy (1802) 8 Ves 398, 32 ER 408 a bill of discovery in an action to recover wool duties was refused because it was not clear from the bill that some of the persons against whom discovery was sought were alleged to be liable for the duties. Lord Eldon LC declined to decide that the defendants were entitled to rely on the doctrine against self-incrimination of conspiracy, commenting that (8 Ves 398 at 404, 32 ER 408 at 411): 'It would be very difficult to abstract from the apparent grasp of that doctrine nine-tenths of the bills in this Court, charging combination and confederacy.' This cryptic remark is no authority for the proposition that the doctrine does not apply if the result of discovery may disclose evidence of a conspiracy.
   Green v Weaver (1827) 1 Sim 404, 57 ER 630 is authority for the proposition that an agent or other person who undertakes a duty to the plaintiff waives the privilege against self-incrimination in respect of discovery relating to the performance of that duty. Hart V-C said (1 Sim 404 at 429-430, 57 ER 630 at 640):

Whether this broad statement is now good law or not, it does not avail the present plaintiffs.
   In Attorney General v Daly (1833) Hayes & Jo 379 the Crown in Ireland successfully sought interrogatories in connection with unpaid liquor duties though the defendant objected that the answers might incriminate him of a conspiracy to trade in smuggled goods. The interrogatories were allowed because neither the action nor the interrogatories pointed to the participation of the defendant in a conspiracy. In the present case the tort and the crime cover the same ground.
   In Attorney General v Conroy (1838) 2 Jo Ex Ir 791, another liquor duty case, the Crown in Ireland successfully argued that the doctrine against self-incrimination only applied when the bill of discovery 'set forth a state of facts, which of itself amounts to a criminal charge'. In the present case the allegation embraced crime as well as tort.
   Rice v Gordon (1843) 13 Sim 580, 60 ER 225 decided that a defendant charged with committing perjury in an early stage of an action could not resist production of documents in that same action in reliance on the doctrine against self-incrimination because the court would not hold out 'an inducement to a defendant to commit perjury in an early stage of the cause, in order to prevent the court from administering justice in the suit'. No such question arises in the present circumstances.
   Chadwick v Chadwick (1852) 22 LJ Ch 329 may be explained on the grounds that a290 trustee, like an agent, cannot resist discovery in an action in relation to the property which he is alleged to hold on trust. Counsel for the plaintiffs relied on the observation of Turner V-C where he said (at 331):

I do not consider that this observation is authority for the proposition that fraud is a general exemption to the doctrine against self-incrimination.
   Robinson v Kitchin (1856) 8 De GM & G 88, 44 ER 322 was another case in which an agent was not allowed to resist discovery at the suit of his principal.
   Similarly in Bunn v Bunn (1864) 4 De GJ & Sm 316, 46 ER 941 trustees of an alleged voidable settlement were not allowed to resist discovery at the suit of a creditor on the grounds that discovery might expose the trustees to penalties and forfeiture under the statute against settlements in fraud of creditors.
   Counsel for the plaintiffs did not claim that these authorities disclosed a coherent general exemption from the doctrine against self-incrimination where fraud or conspiracy are alleged or where the plaintiff will be frustrated or seriously embarrassed in his action, nor that the authorities disclosed a special exemption where a statutory tort constitutes a statutory crime. When Parliament created and protected copyright by civil and criminal sanctions the doctrine against self-incrimination was well established. There is no evidence that Parliament appreciated that a plaintiff in copyright proceedings would be in a more difficult position than any plaintiff faced with a defendant who relies on the doctrine. Nor is there now any evidence that a plaintiff in copyright proceedings experiences any difficulty in obtaining a remedy against an identified infringer. The difficulty, which has only recently emerged in relation to copyright in films and records, arises in obtaining a remedy against an unidentified infringer without discovery from a defendant who is a known infringer. In my judgment the authorities cited by counsel do not enable this court to evolve a general or special exemption which deprives the defendant of his privilege to resist discovery in order to assist the plaintiff against third parties, if that privilege is justified by the accepted principle that no man shall be compelled to incriminate himself.
   Apart from the authorities, it seems to me that the solution suggested would destroy the privilege accorded to a defendant in a civil action. Where a defendant in a civil action relies on the doctrine against self-incrimination and insists on remaining silent and on concealing documents and other evidence relevant to the action, he is relying on his own wrongdoing or on his own apparent or possible wrongdoing to hamper the plaintiff in the proof of his just claims in the suit. That is the inevitable result of the doctrine which can only afford protection of the defendant at the risk or price of causing an injustice to the plaintiff. That injustice is an argument against the whole doctrine as applied to discovery and interrogatories in civil actions. It is not an injustice which is acceptable in relation to some causes of action but not others.
   In every case in which a defendant is faced with possible self-incrimination as a result of discovery or interrogatories and especially where the tort and the crime are constituted by the same activity, the defendant has a choice. The defendant may choose to rely on the silence and concealment afforded by the doctrine against self-incrimination in order at one and the same time to hamper the plaintiff in the proof of his civil action and as a means of resisting or avoiding criminal prosecution or conviction. Alternatively the defendant may abandon his defence to the civil action in which case he will be immune from discovery and interrogatories and will not need to rely on the doctrine against self-incrimination unless and until he is confronted with an inquiry as to damages. Failure to defend the civil action will not prejudice the defendant in any criminal proceedings. Alternatively again, if a defendant wishes to maintain a plausible defence to the civil suit, he will waive the privilege and give frank answers to interrogatories and full discovery.

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   The plaintiff is not wholly or necessarily defeated and the defendant is not necessarily assisted by the defendant relying on the privilege against self-incrimination. The civil court may draw conclusions where a criminal court may not. If the privilege is raised in connection with an inquiry as to damages the court will be driven to draw conclusions as to the scope of and harm caused by the defendant's activities and, in the face of silence and concealment on the part of the defendant, will not be slow to make assumptions and draw inferences which will enable damages to be awarded on a scale which will do justice to the plaintiff. If in the event damages are more generous than would have been the case if the defendant had answered all the interrogatories and afforded full discovery, the defendant can hardly complain.
   The disadvantages which attach to a defendant who relies on the privilege accorded by the doctrine against self-incrimination explain the absence of reliance on that doctrine in the past in connection with copyright proceedings. A plaintiff in copyright proceedings was and is no better and no worse off by reason of the doctrine against self-incrimination than a plaintiff in any other proceedings in so far as the plaintiff seeks to establish the defendant's liability and to obtain an injunction against the defendant and a proper measure of damages.
   The plaintiff in copyright proceedings relating to films or records seeks an order for instant discovery and interrogatories against the defendant not so much for the purpose of proving the extent of liability of that defendant as for the purpose of obtaining information which will enable the plaintiff to trace and to take proceedings against third parties involved with infringing copies. The legitimate anxiety of the plaintiff to obtain information about third parties and to act against third parties with speed and secrecy has only arisen in recent years as a result of developments in technology and travel facilities which enable infringers of copyright to copy and distribute films and records with great ease, little expense and ample profit. There is no reason to think however that Parliament in 1956 foresaw or intended that the doctrine of self-incrimination would need modification to deal with the peculiar difficulty which has now arisen in the path of owners of some forms of copyright.
   Parliament cannot have intended to make a special implied exemption to the doctrine against self-incrimination to meet a future unsuspected peculiar difficulty which now applies to owners of certain types of copyright relating to films and records. This court cannot create a special exemption to the doctrine against self-incrimination for the benefit of owners of copyright in films and records or for the owners of copyright generally. This court cannot create a general exemption to the doctrine against self-incrimination based on fraud or misconduct in order to meet the peculiar difficulty now experienced by owners of copyright in films and records.
   The difficulty raised by the doctrine against self-incrimination and experienced by owners of copyright in films and records points to a defect in the law and suggests either that the doctrine requires modification or that at the least the exempting provisions of s 31(1) of the Theft Act 1968 should be extended to offences under the Copyright Act 1956. At present, however, binding authority forbids this court to uphold any order which compels any defendant in civil proceedings to submit to discovery or interrogatories if to do so would tend to expose him to proceedings for an offence, other than an offence under the 1968 Act. A higher court may be, and Parliament certainly is, capable of modifying this restriction.
   In the court below Whitford J came to the following conclusions. First, he decided that the plaintiffs' action was not an action for a penalty merely because they claimed exemplary or aggravated or additional damages pursuant to the provisions of the Copyright Act 1956. I agree. The plaintiffs are only entitled by s 17 of the Act to additional damages where effective relief would not otherwise be available. These damages are compensatory not punitive and do not involve the imposition of a penalty. The point is however academic as the defendants are in danger of prosecution for a criminal offence under s 21 of the Copyright Act 1956. Secondly, Whitford J held that the exception to the doctrine of self-incrimination afforded by the Theft Act 1968 292must apply to offences under the 1956 Act which in his view included or were at any rate analogous to offences under the 1968 Act. It does not seem to me however that s 31 of the 1968 Act expressly or impliedly affected the right of a defendant to refuse to incriminate himself of an offence under the 1956 Copyright Act. Thirdly, Whitford J held that the mere disclosure of the whereabout of infringing copies and the names of customers and suppliers engaged in the production and sale of infringing copies cannot give good grounds for believing that such disclosure will result in self-incrimination. In my judgment the discovery and interrogatories ordered in the present case plainly involve the danger of self-incrimination. No attempt was made in this court to limit, and as at present advised I do not think it would be possible to limit, the scope of the orders so as to eliminate any danger of self-incrimination. Finally, Whitford J held that the terms of the order were not too wide or unjustifiable in any respect. Subject to the objection based on the doctrine against self-incrimination, I agree with him.
   In the result I would reluctantly allow the appeal so far as it relates to those parts of the orders made by Walton J which deal with discovery and interrogatories. No blame attaches to Walton J; he followed the order I made sitting at first instance in EMI Ltd v Pandit [1975] 1 All ER 418, [1975] 1 WLR 302 and the orders made by this court in Anton Piller KG v Manufacturing Processes Ltd [1976] 1 All ER 779, [1976] Ch 55 and EMI Ltd v Sarwar and Haidar [1977] FSR 146 without the benefit of argument on behalf of the defendants. The remainder of the orders made by Walton J should stand.

Solicitors: Clifford-Turner (for the plaintiffs); Paul Bond & Co for Attwater & Liell, Harlow (for the first four defendants).