White SW Computer Law Intellectual Property, information Technology & Telecommunications Newsletter June 2004

Anton Piller orders (named after the first case in which they received approval) are often obtained in litigation involving copyright infringement. The orders, if granted, require the Respondent to permit the Applicant access to its premises to inspect its computers and documents to obtain evidence of copyright infringement, so that it may be preserved for the purpose of litigation. This evidence may include information such as infringing copies and customer details.

These orders may sometimes be appealed, as was done in the matter of Universal Music Australia Pty Ltd v Sharman Licence Holdings Ltd ¹⁾. Anton Piller Orders had been obtained by a number of music distributors against a number of parties whom it was alleged were in the possession of documents and computer records relating to an alleged widespread breach of copyright resulting from downloading MP3 music files from the internet using Kazaa software.

The grant of Anton Piller orders is a severe interference with the ordinary rights of a party and so, there must be an extremely strong case, the damage must be very serious for the Applicant, there must be clear evidence that the Respondent has incriminating documents in their possession and there is a real possibility that the Respondent may destroy that evidence.

The evidence filed in support of the application to obtain the Anton Piller orders spoke of the risk of documents and data being destroyed, the difficultly of identifying the people in control of the documents and data, the risk of erasure of logs, the transient nature of the supernodes used to find music files and the large number of people involved in the copyright infringements who would seek to conceal their identity by deleting data.

The Respondents, unhappy with the Anton Piller orders, made an application to set them aside and put the litigation on hold pending resolution of US copyright infringement litigation. The basis of the application was that the Applicant had not disclosed to the Court that some of the Respondents were involved in US copyright infringement litigation. The Court found that this was not a material non-disclosure, although it would have been preferable for it to have been disclosed and dismissed the application to set aside the Anton Piller orders. The Court noted, in particular, that the US proceedings were not at that time seeking documents with respect to transitory information, that is data concerning the moment to moment transactions undertaken by users such as downloading and uploading files. The decision as to whether to put the litigation on hold was adjourned to another day.

If someone arrives at your premises to execute Anton Piller orders, before the inspection process commences, you should request time to consider the orders, which should be quite specific as to what may be inspected and what may be removed from your premises and consult with your lawyer. Although you can refuse permission to enter or inspect your premises, such a refusal may lead to adverse inferences being drawn against you in any subsequent litigation and unless you can provide good reasons for the refusal, it may amount to contempt of court.

The Designs Act 2003 (Cth) comes into effect this month and seeks to streamline the registration process.

Design registration protects the visual appearance of manufactured products, such as shape, configuration, pattern or ornamentation which can be judged by the eye. Registration of designs gives you a legally enforceable right, which can be used to prevent others from using your design without your agreement.

There is a degree of overlap between the various types of intellectual property. To be registered, designs must have an industrial or commercial use. If a design is essentially an artistic work, it is covered by copyright laws and is not eligible for design registration. Unlike patents, registered designs only protect the appearance of an article, not how it works. Examples may include an unusually shaped computer keyboard, mouse or PINpad.

To be registered, a design must be new and distinctive. In assessing this, IP Australia will compare the design against designs used previously in Australia or published anywhere in the world.

If you would like any further information about registering designs, please contact our office or visit the IP Australia website www.ipaustralia.gov.au.