[1983] 2 All ER 589

The plaintiffs, who were members of a trade association of owners of copyright in tape recordings and video cassettes, suspected that the defendants were infringing their copyright by making or selling copies of films and video tapes. On 26 January 1983 they accordingly made an ex parte application to a High Court judge for an Anton Piller order requiring, inter alia, the defendants to disclose the identity of suppliers of or customers for infringing tapes and to allow the plaintiffs' solicitors to enter the defendants' premises to search for infringing tapes and material used to make them. At the hearing, in addition to relying on other evidence, they revealed to the judge certain information which they considered to be so confidential and sensitive that it could not be communicated to the defendants even at a later stage. The judge made the orders sought. The order expressly reserved liberty to the defendants to apply to vary or discharge the order on giving 24 hours' notice. The order was duly served on the defendants and its terms were complied with, as a result of which one of the defendants made various important admissions. Subsequently three of the defendants applied by motion for the ex parte order to be set aside on the ground that the judge should not have made the order on the material then available to him. They further sought the return of the goods seized pursuant to the order and claimed that the admissions made in compliance with the order should be declared inadmissible. The motion came before another judge and at the hearing the transcript of the proceedings on 26 January was read in the absence of the defendants and their solicitors, although subsequently the defendants' solicitors were allowed to read the transcript. The judge made no order but gave leave to appeal to the Court of Appeal against the order of 26 January.

Held - The appeal would be dismissed, as being an abuse of the process of the court, for the following reasons-
   (1) Although the Court of Appeal had jurisdiction under s 16(1)^a of the Supreme589 Court Act 1981 to entertain appeals from any order made by the High Court on an ex parte application, the Court of Appeal would not hear an application to set aside an ex parte order because ex parte orders were by their nature provisional and it was to be expected that such an order would be revised by the judge who made the order or another High Court judge in the light of subsequent evidence and argument. Furthermore, there was no power which enabled a judge of the High Court merely to adjourn an ex parte application to the Court of Appeal for it to make an original order. It followed that the proper course for an applicant seeking to challenge an ex parte order was to apply to the judge who made the order or to another High Court judge to discharge or vary it, and to appeal to the Court of Appeal only after that application had been heard and determined (see p 593 f to p 594 a d g h and p 595 a to d, post).

   (2) Where an ex parte order had been executed but the defendant sought to have it set aside on the ground that it should not have been made, his proper remedy (save where the order was obtained mala fide or by some material non-disclosure) was to proceed against the plaintiff after the trial under the undertaking as to damages given by the plaintiff when the order was first granted. It followed that an application to discharge the order once the defendants had complied with it was misconceived (see p 594 b to d g h and p 595 b d, post).
   Per curiam. On an application for an ex parte order it cannot be right for the judge to hear information which cannot by reason of its confidentiality be disclosed to the defendants at a later stage, since the issue is to be considered only on the basis of evidence known to both parties, and where a judge is given other evidence or information he must ignore it. Furthermore, if such a situation arises, it is wrong to exclude the defendant's solicitors from access to such information, since they are officers of the court who are to be trusted to the same extent as counsel and are likewise liable to penalties for breach of that trust (see p 591 f g, p 593 c d, p 594 f and p 595 b d, post).

Notes
For the detention, custody, preservation or inspection of property and for Anton Piller orders, see 37 Halsbury's Laws (4th edn) paras 371-372, and for cases on the subject, see 28(2) Digest (Reissue) 1125, 1234-1242.

Appeal
By a writ of summons dated 26 January 1983, the plaintiffs, WEA Records Ltd (suing on behalf of themselves and on behalf of and as representing all other members of the Federation Against Copyright Theft Ltd (FACT)), sought as against the defendants, Visions Channel 4 Ltd, Terence Collins, Jeffrey Charles Collins, Jack Wengrow and Rosalyn Wengrow, injunctions, inter alia, prohibiting the defendants from selling pirated tapes or passing off video cassettes as being genuine cassettes of members of FACT, directing the defendants to disclose the names and addresses of customers and suppliers and the addresses of all premises where any illicit goods were being stored, manufactured or packed, directing the defendants to permit the plaintiffs' solicitors to enter the defendants' premises and directing the defendants to hand over to the plaintiffs' solicitors any illicit goods in their possession. On 26 January Mervyn Davies J made an ex parte order granting the injunctions sought. On 3 February Mervyn Davies J stood over the plaintiffs' notice of motion on the defendants giving undertakings, inter alia, not in any way to make or sell, distribute or otherwise part with possession of the goods in their possession or to pass off video cassettes as the genuine products of the plaintiffs. By a590 notice of motion the first three defendants sought to have the order of 26 January set aside. On 24 February Peter Gibson J made no order on the defendants' motion but gave leave to appeal. The facts are set out in the judgment of Sir John Donaldson MR.

13 April 1983. The following judgments were delivered.

SIR JOHN DONALDSON MR. In these proceedings the defendants, Visions Channel 4 Ltd, Terence Collins and Jeffrey Collins, seek to appeal against an Anton Piller order made ex parte by Mervyn Davies J on 26 January 1983. The proceedings are important because we are told that both branches of the profession are in doubt whether, in circumstances such as these, a defendant or proposed defendant who objects to the grant of an Anton Piller order should apply to the judge who granted it or, if he is not available, to another High Court judge, asking that it be discharged or varied, or whether he should appeal to this court.
   The history of the matter is as follows. The plaintiffs suspected that the defendants were actively engaged in what is popularly known as 'video piracy': making or selling unauthorised copies of films or video tapes in breach of copyright. They made inquiries, including the keeping of observation on certain premises, and came to the conclusion that it was an appropriate case in which to apply ex parte for an Anton Piller order immediately before, or simultaneously with, an application to issue a writ claiming injunctive relief, delivery up of offending material and an inquiry as to damages.
   Such was thought to be the urgency of the situation that counsel was asked to appear before Mervyn Davies J armed only with a draft writ and instructions as to the nature and results of the plaintiffs' inquiries. No affidavit evidence was produced, nor had counsel the advantage of being able to produce unsworn draft affidavits.
   Thus far the procedure was unusual, but not without precedent in a situation of appropriate urgency. However, we are told that counsel also revealed to the judge certain information which may well have been relevant, but which was so confidential and sensitive that the plaintiffs considered that it could not properly be revealed to the defendants at a later stage.
   I do not know what this information was, but I cannot at the moment visualise any circumstances in which it would be right to give a judge information on an ex parte application which cannot at a later stage be revealed to the party affected by the result of the application. Of course there may be occasions when it is necessary, for example, to conceal the identity of informants, but the judge should then be told that this information cannot be given to him and the judge will then have to make up his mind to what extent he is prepared to rely on information coming from anonymous and unidentifiable sources.
   Again I do not know to what extent the judge relied on this sensitive information. All that I do know is that he granted an Anton Piller order. The relevant parts of that order read as follows:

and then para 1 contained injunctive relief prohibiting the defendants from selling or offering for sale goods which were described as 'illicit goods', a term which was defined and, loosely, meant pirated tapes, second, from passing off, or attempting to pass off, video cassettes which were not the product of the plaintiffs or other persons associated with the plaintiffs in a trade association as being genuine video tapes, and, third, directly or indirectly informing anyone of the existence of the proceedings.
   Paragraph 2 called on the defendants to disclose to the solicitor for the plaintiffs the names and addresses of customers for these tapes and suppliers of them. Paragraph 3 required the defendants to verify that information by affidavit to be produced within four days after service of the Anton Piller order. Paragraph 4 required them to disclose to the plaintiffs' solicitor the identity of all premises and addresses in which any illicit goods were being stored, manufactured or packed. Paragraph 5 required the defendants to permit the plaintiffs' solicitors to enter their premises. Paragraph 6 required the defendants to transfer into the custody of the plaintiffs' solicitors any 'illicit goods' in the sense in which the order had defined the term. Paragraph 7 restrained the defendants in terms of a Mareva injunction, the details of which do not matter. And para 8 called on them to reveal the extent and nature of their assets in aid of that injunction.
   The order ended with a very significant paragraph, reading:

   The order was duly served on the defendants and, without asking for any time in which to exercise their right to take legal advice and without applying to the judge to vary or discharge the order, they complied with it. They could, if they had wished, have refused immediate compliance and instead have made an urgent application to have the order set aside. This, in my judgment, is implicit in the final paragraph of the order which I have just read. However I must emphasise, as did Buckley LJ in Hallmark Cards Inc v Image Arts Ltd [1977] FSR 150, that defendants who take this line do so very much at their peril. If they succeed in getting the order discharged, all well and good. But, if they fail, they will render themselves liable to penalties for contempt of court. If they fail and there is any reason to believe that, in the period between the time when the order has been served on them and the time when they eventually comply with the order, they had taken any steps which were inconsistent with the order, they had, for example, destroyed any records, the consequences to them would be of the utmost gravity.
   In part compliance with the Anton Piller order, affidavits were in fact filed by the personal defendants. In the case of Mr Jeffrey Collins, this affidavit involved important admissions.
   The injunctive relief, including the Mareva injunction, had been granted until 3 February. Meanwhile, on 1 February, the plaintiffs had filed affidavit evidence in accordance with their counsel's undertaking. The affidavit evidence did not cover the confidential matters which had been disclosed to the judge. On 3 February Mervyn Davies J had before him a motion to continue the prohibitory injunctions until trial, but that motion was ineffective and was stood over on the defendants giving undertakings in terms of the notice of motion.
   On 18 February a different motion was listed before Warner J, namely one by the defendants to discharge the Anton Piller order. The judge had insufficient time to hear592 it. However he was told that a tape recording existed of the statements made by counsel for the plaintiffs when obtaining the ex parte injunction from Mervyn Davies J, and the judge suggested that it be played over to the defendants' counsel on terms that it was for their ears only. This was done on 21 February. On 23 February a transcript was provided to counsel for the defendants on terms that it should be seen by counsel only.
   On 24 February the defendants' motion came on before Peter Gibson J and occupied the time of the court throughout the day. The filed evidence was read and, in the absence of both the defendants and of their solicitors, the transcript of the proceedings before Mervyn Davies J was read to Peter Gibson J. After the short adjournment, application was made for leave for the defendants' solicitor to attend in court, but not for the defendants to do so. This was granted and the solicitor was then allowed to read the transcript.
   I fully appreciate the problem which faced Peter Gibson J when he learned that the original order had been granted after Mervyn Davies J had been given confidential information which could not be disclosed to the defendants. I have already said that such a situation should never be allowed to arise. But, it having arisen, there was no possible justification for this information being revealed to the defendants' counsel, but not to their solicitors. Solicitors are officers of the court and are to be trusted to exactly the same extent as counsel. Any breach of that trust would be visited with the direst consequences and it is immaterial that the machinery involved might, but would not necessarily, differ according to whether the transgressor was counsel or a solicitor.
   When the time came for the court to adjourn, counsel had not completed their arguments. However, it was indicated that whichever way the judge decided the matter there would be an appeal to this court. Furthermore, there was some discussion on whether the appropriate procedure might not be an appeal to this court rather than a motion to discharge the ex parte order where, as here, the defendants had filed no evidence other than in compliance with the Anton Piller order and were contending that the ex parte order should never have been granted on the material available to the judge.
   In this situation the judge, without I think any discouragement from either party, made no order but gave leave to appeal to this court. The undertakings by the defendants were continued meanwhile.
   In terms of jurisdiction, there can be no doubt that this court can hear an appeal from an order made by the High Court on an ex parte application. This jurisdiction is conferred by s 16(1) of the Supreme Court Act 1981. Equally there is no doubt that the High Court has power to review and to discharge or vary any order which has been made ex parte. This jurisdiction is inherent in the provisional nature of any order made ex parte and is reflected in RSC Ord 32, r 6. Whilst on the subject of jurisdiction, it should also be said that there is no power enabling a judge of the High Court to adjourn a dispute to the Court of Appeal which, in effect, is what Peter Gibson J seems to have done. The Court of Appeal hears appeals from orders and judgments. Apart from the jurisdiction (under RSC Ord 59, r 14(3)) to entertain a renewed ex parte application, it does not hear original applications save to the extent that they are ancillary to an appeal.
   As I have said, ex parte orders are essentially provisional in nature. They are made by the judge on the basis of evidence and submissions emanating from one side only. Despite the fact that the applicant is under a duty to make full disclosure of all relevant information in his possession, whether or not it assists his application, this is no basis for making a definitive order and every judge knows this. He expects at a later stage to be given an opportunity to review his provisional order in the light of evidence and argument adduced by the other side, and, in so doing, he is not hearing an appeal from himself and in no way feels inhibited from discharging or varying his original order.
   This being the case it is difficult, if not impossible, to think of circumstances in which it would be proper to appeal to this court against an ex parte order without first giving the judge who made it or, if he was not available, another High Court judge an opportunity of reviewing it in the light of argument from the defendant and reaching a decision. This is the appropriate procedure even when an order is not provisional, but is593 made at the trial in the absence of one party: see RSC Ord 35, r 2 and Vint v Hudspith (1885) 29 Ch D 322, to which counsel for the defendants very helpfully referred us this morning.
   In the instant case the Anton Piller order is spent in the sense that it has been executed. However, the defendants seek to go back to the beginning of the action saying that, regardless of whether the fruits of the order are such as to show that it was abundantly justified, the judge had insufficient material to justify his action at the ex parte stage. They therefore invite us to set the ex parte order aside and to order the return of the affidavits to the two personal defendants and the seized material to the defendants' solicitors.
   I regard this as wholly absurd. The courts are concerned with the administration of justice, not with playing a game of snakes and ladders. If it were now clear that the defendants had suffered any injustice by the making of the order, taking account of all relevant evidence including the affidavits of the personal defendants and the fruits of the search, the defendants would have their remedy in the counter-undertaking as to damages. But this is a matter to be investigated by the High Court judge who is seised of the matter, and only when he has reached a decision can this court be concerned.
   I would dismiss this appeal, not on the merits, but on the grounds that it is an abuse of the process of the court. Lest it be thought that that is an opprobrious phrase, let me explain that by that I mean that it is wholly inappropriate for this court to entertain an appeal from the order of Mervyn Davies J made ex parte when not only has it been executed, but the matter has subsequently come back to and is in the process of being considered by other High Court judges.
   The parties will, of course, take such further steps as they are advised. However, I would hope that speedy progress would be made with the trial of the action, in which the Anton Piller order was merely an ancillary procedural step.
   However that may be, there remains the problem of the confidential information disclosed to Mervyn Davies J and, I think, to Warner and Peter Gibson JJ and eventually, of course, disclosed to the defendants' counsel and solicitors but not to the defendants. Understandably Mervyn Davies J felt difficulty in dealing with the matter further if this information could not be passed to the defendants. Clearly the matter has to be considered solely on the basis of evidence which is known to both parties, and in so far as any judge concerned has other evidence or information he must ignore it. This is a difficult exercise and in the circumstances it may be thought better that some judge other than these three judges be seised of the action for the future. If the transcript of what was said to Mervyn Davies J is considered to be relevant, it should be edited by counsel and solicitors on both sides in order to remove confidential matter which cannot be disclosed to the defendants. If there is any dispute as to the right of the defendants to be informed of any particular matter put before Mervyn Davies J, then this should be decided either by that judge, Warner J or Peter Gibson J, as they already have that information from the transcript.
   For those reasons I would dismiss this appeal.

DUNN LJ. I agree for the reasons given by Sir John Donaldson MR that this appeal is misconceived. Even if the appeal did proceed, it seems to me that the issue is a wholly academic one. Whatever information was given orally to the judge, it was accepted that certain attendance notes from inquiry agents were put before him, the contents of which were subsequently put in affidavits which we have read. That evidence, in my view, alone was sufficient to entitle the judge to make the order which he did.
   Following the execution of the Anton Piller order, Messrs Terence and Jeffrey Collins swore affidavits. The effect of Terence Collins's affidavit was to admit that certain illicit goods, as defined in the order, were in their possession. It was said on behalf of the defendants that that evidence was irrelevant and inadmissible in any application to review the order either by way of an application to discharge it or by way of appeal, and that on such an application the court should confine itself to the evidence before the judge who made the order. I do not agree with that submission. Hallmark Cards Inc v594 Image Arts Ltd [1977] FSR 150, to which Sir John Donaldson MR has referred, shows that the court looks at the reality of the situation, including any evidence filed or statement made by counsel by way of admissions after the execution of the Anton Piller order. If consequent on the grant of the Anton Piller order the evidence shows that the order was in fact justified, then the fact that the evidence before the judge was not as strong as it ultimately became does not in my view provide a ground for challenging the order itself. It does not of course affect the situation if the order was obtained mala fide or by some material non-disclosure, but neither of those matters are alleged in this case, and I too would dismiss the appeal for the reasons given by Sir John Donaldson MR.

PURCHAS LJ. I agree with all that has been said in both judgments. By 3 February 1983 the ex parte order against which this appeal is brought had been executed and had expired. The matter was before Mervyn Davies J on that occasion on a fresh motion for further, technically fresh, relief. This was stood over on undertakings given by the defendants which are no longer challenged on this occasion in this court.
   This appeal is concerned with the order made on 26 January 1983. For my part I doubt that on an application to set aside an ex parte order which has become entirely spent, even if made to the court which made that order, let alone by way of appeal, the party against whom the order had been made can succeed save only in those very exceptional circumstances to which Sir John Donaldson MR and Dunn LJ have referred. I agree that if and in so far as this motion purports to involve proceedings which took place on 26 January 1983 or on subsequent occasions on those grounds it is misconceived.
   For those reasons and for what has already fallen from Sir John Donaldson MR and Dunn LJ I agree that this appeal should be dismissed.

Solicitors: Hughmans (for the defendants); A E Hamlin & Co (for the plaintiffs).