Macahill v Metro-Goldwyn-Mayer Inc [1979] FJCA 5; Civil Appeal No 31 of 1979 (28 November 1979)

IN THE FIJI COURT OF APPEAL
CIVIL JURISDICTION

Civil Appeal No. 31 of 1979

BETWEEN:

1. ROBERT TWEEDIE MACAHILL
2. PACIFIC CROWN VIDEO LIMITED
Appellants

AND:

1. METRO-GOLDWYN-MAYER INC.
2. PARAMOUNT PICTURES CORPORATION
3. WALT DISNEY PRODUCTIONS
4. WARNER BROS. INC.
5. WARNER BROS. DISTRIBUTING CORPORATION
Respondents

BETWEEN:

1. ROBERT TWEEDIE MACAHILL

2. PACIFIC CROWN VIDEO LIMITED

Respondents

AND:

UNIVERSAL CITY STUDIOS, INC.
Respondent

Mr. S.M. Koya for the Appellants
Mr. F.M.K. Sherani for the Respondents.

Date of Hearing: 15^th November, 1979
Delivery of Judgment: 28/11/79

JUDGMENT OF THE COURT

Gould V.P.

On the 22nd May, 1979, Tuivaga J. in the Supreme Court of Fiji, made an ex parte order on the affidavit of Mr. F.M.K. Sherani, a Barrister and Solicitor of the Court, appointing an Examiner to examine and record the evidence of a number of named or specified persons. The application was made by Mr. Sherani pursuant to Letters Rogatory issued by the United States District Court, Eastern District of Washington, in two civil actions commenced in that Court. The order was headed In the Matter of the Evidence by Commission Act, 1859, but the appropriate Act from which the courts in Fiji draw their authority in such matters in the case of non-Commonwealth countries is the Foreign Tribunals Evidence Act, 1856; this was noticed and corrected in a subsequent order to which reference will be made, Under Order 70 r. 2 of the Supreme Court Practice which (as it appears in the Annual Practice 1967, and with certain modifications.) is in force in Fiji, the application was correctly made ex-parte. The persons mentioned in the order were two Assistant Superintendents of Royal Fiji Police, Ashok Singh and Chandar Bhan Singh, Robert Macahill, Matt Wilson both of Suva, and two Fiji companies, Pacific Crown Video Ltd. and Matt Wilson Ltd, each by its proper representatives.

It would appear that there were two actions in the United States with different plaintiffs but the same defendants. One is No. C78-360, brought by Metro-Goldwyn-Mayer Inc. and Others, and the other, No. C78-243, brought by Universal City Studios and Others: the defendants in each case are Edward J. Chopot and Victoria. Ann Schmit both of Washington, the said Robert Macahill and Pacific Crown Video Ltd. (of which Macahill is the Managing Director) and the said Matt Wilson and Matt Wilson Ltd.

According; to an affidavit by R.T. Macahill the action No. C78-360 (to which we were informed that the parties wish to refer as embracing both actions) was commenced in February, 1979, and the relevant documents served in March 1979. In November and December, 1978, and February, 1979, certain video cassettes, papers and documents were seized by the police under search warrants issued under section 104 of the Criminal Procedure Code. This, we were informed by counsel for the appellants, was done on the complaint of the plaintiffs in the United States actions, the present respondents. In the actions mentioned, the plaintiffs claim ownership of various copyrights, damages and injunctions from the defendants under various heads: infringement of copyright, conspiracy, violation of the Lanham Act, and unfair competition.

The materials seized under the search warrants were not at the premises of Pacific Crown Video Ltd. or of R.T. Macahill but at those of Matt Wilson Ltd., Ali & Co., and Air Pacific Ltd. all of Suva. However, we have not been asked to make any point of this and in the written submissions of Mr. Koya, made for an earlier application, but which. he also made part of his argument in this Court, he referred to the various items seized as belonging to Pacific Crown Video Ltd.

On the 3rd May, 1979 the police instituted criminal proceedings against R.T. Macahill in the Magistrate's Court, Suva, charging him with 14 counts of infringement under the United Kingdom Copyright Act, 1956, as applied to Fiji by the Copyright (Fiji) Order, 1961. It is in connection with these proceedings that the articles seized have been held. Prior to this, on the 22nd March, 1979, Pacific Video commenced an action in this Court, No. 125 of 1979, against the Attorney-General of Fiji and the Commissioner of Police seeking inter alia a declaration that the search warrants "whereby the police seized plaintiff's properties" at the premises mentioned, were invalid and the seizure and detention was unlawful. Alternatively it was prayed that the Commissioner be restrained from parting with possession of or releasing the property without leave of the Court. According to affidavit of R.T. Macahill,

"In this country I take it that it is undoubted law that it is within the power of, and is the duty of, constables to retain for use in Court things which may be evidences of crime, and which have come into the possession of the constables without wrong on their part. I think it is also undoubted law that when articles have once been produced in Court by witnesses it is right and necessary for the Court, or the constable in whose charge they are placed (as is generally the case), to preserve and retain them, so that they may be always available for the purposes of justice until the trial is concluded."

Counsel for the respondents, as we have said, sought to distinguish the Hong Kong section 50 from the Fiji section 104. In our opinion, though there are differences they are not material. Counsel also sought to establish that the respondents were in a special position with regard to the material seized as they themselves were in a position to have seized them under the law as to copyright. He conceded that he could point to no section in the Copyright Act, 1956, and relied upon the courts inherent jurisdiction. Our own. researches indicate that in EMI Ltd. v. Pandit [1975] 1 All E.R. 418 the court, on a very strong case and in exceptional circumstances, made an order that the defendant permit the plaintiffs to enter and inspect infringing materials. The learned Judge described it as being in essence discovery, and the order did not justify unlawful entry, disobedience being punishable only by contempt proceedings. A similar case was Anton Piller KG v. Manufacturing Processes Ltd. [1975] EWCA Civ 12; [1976] 1 All E.R. 779, where it was said that the order was only to be made in an extreme case where there was grave danger of property being smuggled away or of vital evidence being destroyed. All we need say on this aspect of the matter is that we are not in a position to know whether the respondents could have presented the necessary strong case and shown exceptional circumstances, because they did not attempt to do so.

Instead, even before commencing their civil proceedings they were instrumental in setting, criminal law in motion and the seizures were under criminal procedures. It is in this light, we think, that the position must be examined.

Counsel for the respondents sought also to draw upon Rio Tinto Zinc v. Westinghouse (supra) for the phrase "the public domain". We quote from the judgment of Lord Wilberforce at p.444 of the All England Report:-

"Unless a case of bad faith is made against Westinghouse (which is expressly disclaimed) it is impossible to deny that the letters rogatory were issued for the purposes of obtaining evidence in the Richmond proceedings. The fact, if it be so, that evidence so obtained may be used in other proceedings and indeed may be central in those proceedings is no reason for refusing to allow it to be requested: all evidence, once brought out in court, is in the public domain, and to accept the argument would largely stultify the letters rogatory procedure. I must therefore reject this separate contention, and express my conclusion on the other factors."

Insofar as it is sought to apply these words to the materials seized we are unable to agree that they, have any relevance. No evidence has been given concerning those articles and the fact that they may become the subject matter of evidence in the criminal proceedings and may at that stage become "in the public domain" does not provide a reason for making them the subject of evidence now, if that is otherwise unacceptable

Tuivaga J. in his order of the 26th June, 197 , considered that the Hong Kong case was distinguishable and placed importance on the fact that the Fiji Court had been judicially requested to act on the Letters Rogatory in actions to which the property seized was very relevant, and in which the ownership of the property was claimed. He was of the opinion that sections 104 and 107 of the Criminal Procedure Code prevented him from making the original exhibits available but that there was no contravention of the Code or of an alleged right of ownership by furnishing copies.

It is not a question so much of distinguishing the Hong Kong case as of deciding whether the reasoning of the learned judges in the passages we have quoted does or does not apply with equal force to the provision of copies in the present case. Presumably the provision of copies in the former case could have been done without risk of the authorities being deprived of the use of the originals - it is the same here. But if it is a breach of the duty of the police, imposed or implied by the Criminal Procedure Code, to allow any interference with the property not consistent with the purpose for which they were authorised to hold it, i.e. their own investigations and at the disposal of the court, as that an action which the court should authorise?

We do not think that the fact that the respondents have commenced their action in the United States puts them in a stronger position that if they had been plaintiffs in Fiji. Would a plaintiff in Fiji have had the right to obtain copies from the police? According to what was said by Cons J. the police would have been entitled to provide copies to potential witnesses in the interests of their own criminal investigation, but does that prevent it from being a breach of duty to provide them for the purposes of civil actions. Prima facie we think, for the reasons given by Cons J. that, without the authority of a court order, it would not, and the court would not make such an order without good reason.

To the extent that the order of Tuivaga J. authorises the production and. verification of copies of the material seized, it was made in the exercised of a judicial discretion, pursuant to his function under the Foreign Tribunals Evidence Act, 1856. We think that in doing so he gave insufficient attention to a number of factors. One is, as we have indicated, that the order authorised the police to do sometimes in excess of their power; another and important factor is that the police officers were not parties to t civil actions, and to make the order would be to give pre-trial discovery; a third is that Civil Action 125/1979 asks for a declaration that the search warrants were invalid and the seizures unlawful; this action has not been heard and if the appellants succeeded in it the property seized should not have been in hands of the police at all; lastly that the proceedings would be likely to be complicated by questions of privilege, which would concern the parties but not the police witnesses.

For these reasons we think with respect that the orders of the 20th and 26th June, 1979, should have refused leave to call S/IP C.B. Singh to produce property seized, or to the Examiner to take in evidence copies as specified in paragraphs (1) and (2) of the Order of the 26th June, 1979, as drawn up.

The appeal is allowed to that extent with costs. The cross appeal, as appears above, has already been dismissed.

It would appear that the orders made upon the Letters Rogatory are now exhausted, but we have been informed that a fixture has been made for the hearing of the criminal proceedings. As the result of these may have a bearing on future proceedings the Letters Rogatory should remain on the file and the parties have liberty to apply generally to the Supreme Court.

T. Gould
Vice President.

C.C. Marsack
Judge of Appeal.

B.C. Spring
Judge of Appeal.