Television Broadcast Ltd v Yee Ting Man [1998] FJHC 4; Hbc0289d.97s (16 January 1998)

Fiji Islands - Television Broadcast Ltd v Yee Ting Man - Pacific Law Materials

IN THE HIGH COURT OF FIJI

AT SUVA

CIVIL JURISDICTION

CIVIL ACTION NO. 289 OF 1997

BETWEEN:

1. TELEVISION BROADCAST LTD
2. YEE JOY CO. LTD
Plaintiffs

AND:

1. YEE TING MAN
t/a Y.T. Man Store
2. SAI KIN YEE
t/a Modern Audio Centre
Defendants

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Mr. J. K. L. Maharaj for the Plaintiffs
Mr. V. Kapadia for the Defendants

DECISION

By notice of motion dated 10 September 1997 the defendants sought an Order that ex parte Order made herein dated 19 August 1997 be set aside.

A Writ of Summons herein was issued on 24 July 1997 and pursuant to the motion dated 4 August 1997 for, inter alia, Anton Pillar Order, I granted the following orders:

1. THAT the defendants deliver to the Senior Court Officer of the High Court, Suva, Mr. C.D. SINGH or to any officer appointed by him, assisted by a POLICE OFFICER, ALL THE CHINESE VIDEO TAPES in their possession until a further order of this Court and stay under his control and custody.

2. AND it is further ORDERED that the tapes delivered be screened at the High Court Registry at the Senior Court Officer's Chamber in the presence of the plaintiffs or their agents and the defendants or their agents if they so wish for the sole purpose of isolating the allegedly offending video tapes as evidence and the non-offending tapes to be returned to the defendants, as complained of in the substantive Writ of Summons filed and served in this matter.

3. IT IS FURTHER ORDERED that the defendants are restrained and an INTERIM INJUNCTION is granted restraining the defendants by themselves, their servants and agents or any of them or otherwise howsoever from manufacturing, duplicating, copying, renting out, selling or offering for sale, or causing to be duplicated, distributed, sold or offered for sale, rented out, and copied in Fiji all video tape material that are subject to the copyright, proprietary rights and interests of the plaintiffs in all such material. AND they are further restrained from interfering with the second defendant's private contractual rights with the first defendant in the video tape materials and contents until a further Order of this Court.

Defendants' contention

The ground on which Mr. Kapadia is seeking dissolution of the Order is that there are serious breaches of the requirement of an ex parte Anton Pillar Order.

In his submission he states the law on the subject of Anton Pillar orders with particular reference to the cases of ANTON Pillar KG v MANUFACTURING PROCESSES LTD (1976) Ch 55, COLUMBIA PICTURE INDUSTRIES INC. v ROBINSON (1987) Ch. 38 and LOCK INTERNATIONAL PLC v BESWICK & ORS (1989) 1 WLR 1268. He emphasised the need for a full and frank disclosure of the case and to bring to the Court's attention everything that the defendants could possibly say.

On the facts Mr. Kapadia on page 2 of his submission states:

1.3 On the 20th August, 1997 pursuant to an Ex-Parte Order almost all of the Chinese videotapes of the Second Defendant were seized effectively shutting down the business of the Second Defendant for a few days. The First Defendant runs a grocery store and had only a few Chinese videotapes. After viewing the tapes in the High Court Registry, all of the tapes were released except for 213 videotapes out of which only 63 videotapes consisted of materials from the previous contract period between the Second Defendant and the TVBI Co Ltd. These 63 videotapes were found in the bedroom of the Second Defendant at his residence. The other 150 videotapes which are retained in the custody of the High Court Registry consists of videotapes over which other materials has been recorded not connected with the First Plaintiff but towards the end of those videotapes a logo of the First Plaintiff or an associate company appears for a few minutes when the new materials has ended.

Mr. Kapadia complains that a key ingredient and requirement of Anton Pillar Order has not been fulfilled, namely, that there is no undertaking given by the Plaintiffs in damages.

On 'non-disclosure' he submits that the second Plaintiff has failed to submit that it is TVBI Co. LTD. with whom they had contract and not the First Plaintiff.

Further, the defendants submit that the second Plaintiff YEE JOY CO. LTD does not exist and in fact its name was changed to Y.J. Co. Limited on 10 March 1992 and that this company was wound up on 31 January 1997. Therefore neither Yee Joy Co. Ltd nor Y.J. Co. Ltd., existed when the Writ of Summons herein was issued or at the time when the Order was made. Also one ROBERT CHUNG who wishes to be substituted has had a Receiving Order made against him on 20 August 1997.

The second Plaintiff has not produced any authority from the first plaintiff to say that there is a contract with the first Plaintiff.

Furthermore he says that there is no evidence that these videotapes had been hired out by the defendants and this, he says, is sufficient to set aside the Order.

Mr. Robert Chung in his affidavit gives an account of the transaction relating to Yee Joy Co. Ltd and this has been commented upon as follows by Mr. Kapadia on page 5 of his submission:

1.16 The explanation by Robert Chung in relation to Yee Joy Co Ltd is bordering on the pathetic. Robert Chung says that he purchased the Company in 1992 but produces no evidence thereof. What he annexes in his Affidavit of the 19th September, 1997 is a Sale and Purchase Agreement between Yee Joy Co Ltd and Robert Chung and Wong Wun dated 12th November, 1991. The Agreement in Paragraph 1 clearly states that the purchasers are purchasing the goodwill of the business of the grocery store carried on by the Vendor together with fixtures, fittings and other chattels specified in the schedule. That agreement is for a sale and purchase of the scheduled chattels and stock and not a purchase of shares in the company. Furthermore annexure "B" in the same Affidavit is a Lease Agreement between Yee Joy Holdings Ltd and Robert Chung and Wong Wun. Paragraph 3(d) at page 5 of that Lease Agreement is most odd as it includes a statement that the purchase of the business shall include the purchase of the name Yee Joy Holdings Ltd. This clause is wholly irrelevant in a commercial Lease Agreement and does not make sense.

Further comment is made by Mr. Kapadia as follows on page 3 with the view to giving a full picture of the situation.

1.17 Furthermore it is not disputed by Robert Chung that the present Lease of the premises from Vishal Bhartiya Building is in the name of his wife, Ms Chung Wah Mui who entered into an Agreement on the 24th June, 1996 to sell her business to Shailesh Prasad. See annexure "C" in the Affidavit of Robert Chung dated 19th September, 1997. In Paragraph 10 of Robert Chung's Affidavit dated 19th September, 1997 he says that after having learnt of the winding up of the Second Plaintiff he transferred sometime after the Anton Pillar Order was executed half its interest in the video tape contract to Suva Providores. It is beyond comprehension how a wound up company which has entered into a contract with a foreign Plaintiff can transfer its contract to someone else let alone a non-existent shareholder or director of Yee Joy Co Ltd (in liquidation). The contract is with Yee Joy Co Ltd and if anyone has any rights in the contract it is the Official Liquidator.

Plaintiffs' contention

Mr. Maharaj submits that some 213 Video tapes were seized as offending the plaintiffs' copyright interests. These tapes are in the custody of the Court.

On the alleged "non-existence" of the second plaintiff Mr. Maharaj agrees that there was a change of name and that there is an application before the Court for an amendment of the Statement of Claim.

As for the allegation regarding the status of the First Plaintiff Mr. Maharaj says that "TVB" and "TVBI" 'are one and the same Company'. The letter "I" in the name "TVBI" is the 'international' arm of "TVB".

On there being no undertaking as to damages, Mr. Maharaj says that, that was "given by counsel" and that "a mere omission of it from the Court order does not render the making of such an order a nullity. He submits that "this Court has the power in its inherent jurisdiction to correct steps or omission if it finds the contents of an order does not fully cover orders made in the court records".

Consideration of the issues

On the affidavit evidence before me on an application made ex parte (as it had to be when applying for Anton Pillar Orders) the Court made the Orders sought. However, upon considering the submissions of both counsel it has now become obvious, on the defendants' application to set aside the said Orders, that there have been material non-disclosures in obtaining the Orders and that the Plaintiffs have not given any undertaking as to damages. Mr. Maharaj agrees that there is no undertaking but then he says to the effect that that is not fatal.

Now to the consideration of the law on these aspects.

In EMI LTD v PANDIT (1975) 1 WLR 312 it was held that there is jurisdiction to grant such an Order ("Anton Pillar) ex parte in "exceptional and emergency cases". In the leading case of ANTON Pillar (supra) the Court of Appeal laid down certain requirements which must be fulfilled and these are [as stated by ORMROD J (ibid)]:

"(i) The applicant must have a very strong prima facie case.

(ii) The potential or actual damage to his interests must be very serious.

(iii) There must be clear evidence that the defendant has in his possession incriminating documents or things, and that there is a real possibility that he may dispose of or destroy such material before any application inter partes can be made."

The history of this procedure which was new at the time of ANTON Pillar (supra) is interesting to indicate the purpose behind it. It has been described by LORD DENNING in his book DUE PROCESS OF LAW (1980) at p.123-124 as follows:

"This new procedure was invented by an ingenious member of the Chancery Bar, Mr. Hugh Laddie. He was consulted by the makers of gramophone records. They have the copyright in all kinds of music and earn their living from royalties on records. Yet these recordings can be easily copied: and there is a vast market for the 'pirates' of them. These 'pirates' reproduce the music illicitly on tapes and records. They have a cheap apparatus. The infringing copies are sold by small shopkeepers in poor surroundings. In the first case in 1974 the owners had a copyright in sound recordings of Indian music. They found out that a Mr. Pandit in a small shop in Leicester was selling infringing copies at a very low price. They issued a writ against him. He swore an affidavit in those proceedings. He said that he had only a very few of these records: that he bought them from a Mr. Hajisayed of Dubai in the Persian Gulf with no proper address. Only a convenient Post Office Box Number. He swore to his own innocence and produced a letter to prove it.

The owners of the copyright discovered that that affidavit was a pack of lies: and that Mr. Pandit had forged the letter. They were sure that Mr. Pandit had large quantities of infringing materials on his premises: but, if they went through all the usual legal procedures - and served him with process - those infringing copies could disappear. In Mr. Justice Templeman's phrase, 'the horse will rapidly leave the stable'. So the owners of the copyright made an application - ex parte - for an order enabling them to enter on the premises and look for the infringing copies. The judge realised that it appeared 'at first blush, to be a trespass of property and invasion of privacy'. But he made the order, see EMI v Pandit. Similarly, orders were made in like cases by other Chancery Judges: until one judge doubted the validity of them. Mr. Laddie then brought a case before us to test the point. It was again ex parte - so that the other side knew nothing of it. We looked into it all carefully and upheld the new procedure. It is Anton Pillar KG v Manufacturing Processes Ltd. That case was not about records, but about drawings and confidential information."

In the Anton Pillar case (supra) the circumstances under which this order should be made has been stated by LORD DENNING at p.61 as follows:

"It seems to me that such an order can be made by a judge ex parte, but it should only be made where it is essential that the plaintiff should have inspection so that justice can be done between the parties; and when, if the defendant were forewarned, there is a grave danger that vital evidence will be destroyed, that papers will be burnt or lost or hidden, or taken beyond the jurisdiction, and so the ends of justice be defeated: and when the inspection would do no real harm to the defendant or his case.... We are prepared, therefore, to sanction its continuance, but only in an extreme case where there is grave danger of property being smuggled away or of vital evidence being destroyed."

Development of Anton Pillar jurisdiction

The circumstances under which and the facts (as disclosed) on which the Anton Pillar Order was made here leads one to always bear in mind the absolute necessity to comply with the requirements of the principle pertaining to the grant of Anton Pillar Orders. As stated earlier Anton Pillar jurisdiction was invented in 1974 "and the ultimate weapon against fraudulent copyright pirates" (Hoffmann J in Beswick p.1279); but in COLUMBIA PICTURE INDUSTRIES INC. v ROBINSON (1987 Ch 328) SCOTT J drew attention to the "scope for abuse of this sharp instrument". The difficulties encountered in the application and implementation of Anton Pillar Orders is highlighted by SCOTT J in BHIMJI v CHATWANI (1991) 1 All E.R. 705 when he said at 712:

'[Anton Pillar orders] stand...at the extremity of the court's jurisdiction. Some may think that they go beyond it. They involve the court in the hypocrisy of pretending that the entry and search are carried on because the owners of the premises have consented to it. They impose on the plaintiffs' solicitors the almost impossible task of describing fairly to non-lawyers the true effect and nature of the orders. They present respondents with orders of great complexity and jurisprudential sophistication and give little time for decisions to be taken as to the response to be made to them. They vest the plaintiffs, one side in what is usually highly contentious litigation, with the trappings of apparent administrative authority to carry out the search. The usual presence of a policeman adds to this illusion.'

There are certain very unsatisfactory features of this case. To be able to successfully apply for Anton Pillar Order and to maintain it the requirements of the Order have to be fulfilled. Certain non-disclosures are fatal to the Plaintiffs' case. On the facts as revealed in the affidavits and as admitted by Mr. Maharaj, the Court is unclear as to the proper status of the second plaintiff. This is a most unsatisfactory state of affairs. There is also mention of it having been wound up. There is an attempt by counsel to put his house in order by intending to apply to amend his Statement of Claim which, if granted will result in adding a new Plaintiff or Plaintiffs and this can be gathered from the affidavits already filed. In the situation prevailing I am in grave doubts that proper plaintiffs are before the Court. That being the position of this case I cannot let the Order remain. The above therefore was a material non-disclosure. Hence the court did not have the benefit of considering the matter before it with proper disclosures as required in an application of this nature. In an application for discharge of Anton Pillar Order it was held in BESWICK (supra) at p.1268:

"that the plaintiff had not made a fair disclosure of its financial position in connection with the cross-undertaking in damages, and the failure to disclose the 1988 accounts, although inadvertent, was a material non-disclosure entitling the defendants to have the order discharged, subject to the court's discretion to maintain it; that the evidence did not justify any form of ex parte relief, let alone an Anton Pillar order; that since the question of non-disclosure was not concerned with the merits of the plaintiff's case, and the question whether the order should have been made did not involve an investigation of conflicting evidence, and since the parties were in competition with each other, it was right to discharge the order now in order to show that no prima facie case of dishonesty had been shown against the defendants; and that, accordingly, the defendants should have leave to proceed on the cross-undertaking as to damages and an order for the return of the material seized (post, pp. 1279D-E, 1283C-E, 1285A-E, H-1286A)."

There is one other aspect which is fatal to the Plaintiffs' case and that is there is no undertaking as to damages. How can the Court rectify the situation without an application from the Plaintiffs? It is noticed that the deponent to some of the Affidavits filed herein is one Robert Chung against whom there is a Receiving Order in bankruptcy and who is holding himself out as a leading player in the alleged transaction between the parties. Is he the one who is going to give the undertaking if at all? The undertaking is not only such a fundamental requirement of justice but also indispensable to fairness between the parties, that it cannot be waived. (HOFFMANN - LA ROCH(F) & CO AG v SECRETARY OF STATE FOR TRADE AND INDUSTRY (1974) 2 All E.R. 1128 C.A.).

The question now is, should the Order be discharged. In BESWICK (supra) at 1279 HOFFMANN J said that:

"But the usual penalty for material non-disclosure, whether inadvertent or not, is the discharge of the ex parte order, although I have a discretion to maintain the Order (see BRINK'S MAT LTD v ELCOMBE (1988) 1 W.L.R. 1350) and if I were satisfied that no injustice had been caused to the defendants, I would do so. In this case, however, I am firmly of the view that the Order should never have been made."

Similarly, in the case before I am of the same view bearing in mind the facts of this case as disclosed subsequent to the application for the Order.

In granting the application for discharge, for the reasons I have given, I bear in mind the following statement of SCOTT J in ROBINSON (supra) at p.76:

"the practice of the court has allowed the balance to swing much too much too far in favour of the plaintiffs and that Anton Pillar orders have been too readily granted and with insufficient safeguards for respondents".

Conclusion

For the above reasons, after having considered the submissions of both counsel, I shall order that the Anton Pillar Order made by me on 19 August 1997 be discharged with costs against the plaintiff's to be taxed if not agreed. I shall now hear submission from counsel in the matter of video tapes retained by the Court.

D. Pathik
Judge

At Suva
16 January 1998

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