WHAT IS A CIVIL SEARCH ORDER?
The litigation process is based upon the disclosure of all potentially relevant information through discovery. When pursuing IP claims against dishonest defendants, it may be prudent to seek special relief from the court in the form of a civil search order at the outset of litigation (“Search Order(s)”). Search Orders are frequently referred to as “Anton Piller Orders” after the very first case where one was granted.1
Search Orders are designed to ensure that critical evidence that might otherwise be concealed or destroyed is located and preserved. They compel a defendant to permit the plaintiff's representatives to enter their premises to search for, identify, remove and preserve evidence relevant to a claim. Search Orders do not permit forcible entry. Should the defendant refuse to permit the search, contempt sanctions can be sought, including fines or imprisonment.
OBTAINING A SEARCH ORDER
The plaintiff is required to satisfy the Court that (1) it has a “strong prima facie” case against the defendant, (2) the conduct of the defendant exposes the plaintiff to very serious damage, potential or actual, (3) the defendant has in its possession incriminating documents or things, and (4) there is a real possibility that the defendant will destroy evidence before the usual litigation process can run its course.2 Since the Search Order is obtained without prior notice, the plaintiff has an obligation to make “full and frank disclosure” of all relevant evidence, whether supportive or detrimental to its case. The Search Order must be carefully drafted to ensure it achieves its objectives, tailored to the circumstances of the case, and its provisions strictly respected during enforcement. Safeguards for defendants must be included to ensure the enforcement process is fair and respectful of the legitimate rights of the defendant. These include protection of solicitor-client privilege and the right to seek legal advice.3
Although the plaintiff is not ordinarily provided with access to evidence seized pursuant to a Search Order, early access may be obtained in appropriate cases. Similarly, a Search Order may require the defendant to disclose specific information pertaining to his supply chain and the whereabouts of relevant evidence.
BENEFITS OF SEARCH ORDERS
Search Orders are particularly well suited to cases of IP infringement, trade secret theft and entertainment piracy. Some of the advantages include:
- The preservation of electronic evidence from computers or portable electronic devices that can easily be purged, destroyed or hidden.
- The preservation of all relevant evidence where the defendant is a rogue where such evidence might well be destroyed if the defendant has notice of litigation, or very expensive to get by way of interlocutory motions for orders for production from the defendant or third parties.
- The preservation of evidence that can be used to quantify damages (such as sales record), which can be destroyed, or difficult to obtain.
- Where early access to the evidence is granted, the plaintiff may identify additional locations or wrongdoers working with the defendants and pursue its remedies against them quickly.
- Infringing products and confidential information can be taken out of the hands of the defendants to stop ongoing harm.
- Pressure on defendants increases the potential for early and effective settlement.
THE LAST WORD…
Search Orders have been colloquially referred to as the “nuclear weapon” of civil litigation and they are one of the most powerful and useful tools in ensuring that evidence is preserved and available for litigation. However, Search Orders can also be a potential minefield as the plaintiff is held to a high standard of full and frank disclosure and fair enforcement; failure to meet this standard can have severe consequences to the plaintiff’s case. Search Orders should be obtained and enforced by experienced counsel with a thorough understanding of disclosure obligations, proper investigation, evidentiary burdens, and the expertise to make quick and appropriate decisions to ensure full and fair execution of the Search Order during enforcement.