In MediaCAT v Adam et al, His Honour Judge Birss considered the appropriateness of the Norwich Pharmacal Order and when it should be used, as he noted that there is a potential difficulty with the Norwich Pharmacal process:  In short the judge was concerned about the lack of safeguards on the use of information obtained under these orders.  In this case MediaCAT and their lawyers ACS:Law conducted a letter writing campaigning alleging infringement of copyright when they knew they could not be certain the named user of the address was the infringer.  The infringer if any could be someone else in a home or office, or indeed a total stranger if they had accessed a wireless network, in short as the judge said “MediaCAT don’t know who [infringed], and know they don’t know who [infringed].”1  Consequently the judge was critical of the use of the Orders and has urged better controls.

MediaCAT v Adam et al [2011] EWPCC 6 came before the Patents County Court following ACS:Law’s sending out of ‘speculative invoicing’ letters to people accused of illegally downloading content on behalf of its client MediaCAT.   The recipients were known to MediaCAT only through the unique internet protocol addresses that are assigned to particular internet connections.  Having used a monitoring service to link each address to an illegal downloading of copyrighted films, an application was made for Norwich Pharamacal Orders, to have the Internet Service Providers (‘ISPs’) disclose the actual names and addresses of the people who used the internet addresses.  Chief Master Winegarten granted the Orders and MediaCAT, through ACS:Law, began a letter-writing campaign to tens of thousands of names identified through the Orders, claiming £495 from each individual for breaching copyright.  In 2009 and 2010 MediaCAT, acting on behalf of the copyright owners for an adult film, began the letter writing campaign to the names identified through the Orders.  In that process ACS:LAW wrote letters to tens of thousands individuals, naturally causing great distress to the recipients.  Indeed as Judge Birss noted in paragraph 21 of his judgment; “[The Patents County] court’s office has had telephone calls from people in tears having received correspondence from ACS:Law on behalf of MediaCAT.”

The letters asserted that MediaCAT was a copyright protection society (which it is not and was therefore misleading) with exclusive rights granted by the copyright owner to bring proceedings (again this was misleading because MediaCAT did not have the rights purported to be held).  As Judge Birss noted the letter would be understood by many people as a statement that they have been caught infringing copyright in a pornographic film, that MediaCAT has evidence of the infringement and that a court has already looked into the matter (a copy of the Order of Chief Master Winegarten having been provided with the letter).  The letters also stated that; “[O]ur client’s evidence shows you are responsible for committing one or more of these infringements whether directly yourself or by you authorising (inadvertently or otherwise) third parties to do the same.”  Finally the letter ended with a statement that; “[T]his letter complies with the Code of Practice for Pre-Action Conduct in Intellectual Property Disputes (January 2004) a copy of which is available on [ACS:LAW’s] website.”   However, as the judge noted there is in fact no formal Pre-action Protocol for Intellectual Property and thus again the letter was misleading.

As is apparent from even a short review of the judgment, His Honour Judge Birss was not impressed by the conduct of either ACS:Law or MediaCAT.  In short the claimant and their legal advisor were all too happy to intimidate the defendants into payments for alleged copyright infringements when they could not prove they were pursuing the correct people.  Whilst the claimant had sought to determine the identities of alleged infringers their method of doing so only took them so far.  Claimants wanting to sue someone whose identity is uncertain have since the mid 1970s been able to discover that identity using a Norwich Pharmacal Order, and this was the devise used.  However, as noted by the judge in this case, the claimant did not know who the infringers were, even after obtaining the disclosure under the Norwich Pharmacal Orders.

Norwich Pharmacal Orders

Norwich Pharmacal Co. v Commissioners of Customs & Excise [1974] AC 133 arose from a patent case about a compound called furazolidone which was incorporated into chicken feed. Furazolidone was covered by a patent, and the patentee could see that consignments of furazolidone were being imported into the UK but could not tell who as responsible.  None of the imports were licensed and thus had to be infringing. The patentee applied to the court for an order that Customs, who had in their possession documents which identified the importers, should disclose these identities so that Norwich Pharmacal could take proceedings for patent infringement against them. Customs argued on various grounds that Norwich Pharmacal had no right to the information.  However, the House of Lords held that a person innocently caught up in the wrongdoing of another, so that he is more than a mere witness, can be compelled to disclose the identity of the wrongdoer, so that proceedings may be brought against the proper defendant. The identities were accordingly disclosed.

Morton Norwich v Intercen [1978] RPC 501 was a follow up case to the House of Lords decision of 1973, and it arose as a result of the information obtained from Customs.  In Morton Norwich, Mr. Justice Graham addressed the question of whether a Dutch defendant who consigned furazolidone by air from Holland on ‘cost insurance and freight terms’ (‘cif’) to Gatwick but denied liability for patent infringement was liable in English patent proceedings.   The Court found that they were liable as joint tortfeasors, and the judgment records that validity of the patent was admitted.  Therefore Norwich Pharmacal’s underlying cause of action was tested in court against the persons identified, who were free to take whatever point was properly open to them and defend themselves.  However, in this case Judge Birss was clearly concerned the same could not be said, as the claimant did not intend to pursue claims against all alleged infringers, nor from the manner of their conduct were they behaving toward those alleged infringers as they should.

As Judge Birss noted in paragraph 13 of his judgment, the Norwich Pharmacal jurisdiction plays an important role in the courts armoury to see that justice is done.   Admittedly, it is not a requirement that the applicant will be bringing court proceedings, see British Steel v Granada Television [1981 AC 1096 HL, Lord Fraser at p1200 C-G and Ashworth Hospital Authority v MGN Ltd [2002] UKHL 29 [2001] 1 WLR 2033, Lord Woolf CJ at paragraphs 41-47.  In Ashworth the reason for seeking the identity of the person in question was to discipline the person, which in practice would mean they would be dismissed.2 However, according to Judge Birss there is a potential difficulty with the Norwich Pharmacal process which this case illustrates.  The respondent to the Norwich Pharmacal application for disclosure - while obviously wishing to ensure that an order is not made when it would be inappropriate to do so – has no direct interest in the underlying cause of action relied on.  The respondent is not going to be sued.  A Norwich Pharmacal application is not and cannot be the place in which to try the cause of action.  That happens when the person’s identity is revealed and then usually proceedings are commenced. Even if proceedings are not commenced – in a situation like Ashworth where a single name is being sought in order to discipline the person – no doubt that person would be able to take whatever steps to defend themselves they wished to and if necessary the matter could come to an appropriate court or tribunal.  Therefore the only test which should have been applied by the Chief Master was that; a wrong must have been carried out or arguably carried out by an ultimate wrongdoer in order to grant the Norwich Pharmacal Order.   No thought being given to the potential use or miss use of the information obtained from the Orders.

Judgment on the Norwich Pharmacal Aspects

The origin of the MediaCAT claim and associated letter writing campaign was in the series Norwich Pharmacal Orders.  The Norwich Pharmacal process is nothing more than a process of disclosure.  It should be remembered that the courts have always retained control over the use of documents and information obtained by the disclosure process. CPR Part 31.22 specifically providing that a party obtaining a document via the disclosure process is not free to use it in any way they please.  They may only use it for the purposes of the action in which it was disclosed, unless it has been read or referred to in open court or the court gives permission, or the person who disclosed it (and its owner) give permission for such additional use.  Since the information on which the letter writing campaign was based, was provided under a court order, Judge Birss considered it to be a much smaller step than it might otherwise appear to hold that the court can regulate the use of that information. An order restraining the use of the information disclosed under the Norwich Pharmacal process could be nothing more than an order varying the original Norwich Pharmacal Orders.  The County Court has power to vary orders of the High Court, (see s38(1) of the County Court Act 1984 and see also the County Court Remedies Regulations 1991/1222 paragraphs 2 and 3) and no one challenged that point.  As the Judge noted, whether such an order should be made by a County Court or whether the proceedings should be transferred to the High Court in such circumstances is another matter.

Further, the County Court’s jurisdiction includes Civil Restraint Orders though, the power to make such orders is limited relative to the High Court.   Such an order where contemplated is clearly much wider in effect than a Civil Restraint Order in that it relates to correspondence and not applications to court or claim forms.  Yet in other ways it is much narrower as such an order would be specific to the use of information itself, that has been obtained by means of a previous order of the court.

In some ways an order of the kind contemplated is no more than an injunction to restrain threats of particular copyright proceedings. There has never been a statutory jurisdiction to restrain threats of copyright proceedings but the courts have statutory jurisdiction to grant injunctions to restrain threats of proceedings in relation to a number of intellectual property rights including patents, trade marks and unregistered design right. Therefore an injunction to restrain threats of proceedings for IP infringement is not an order unknown to the law.

His Honour Judge Birss could not imagine that the court making the Norwich Pharmacal Orders in this case did so with a view to setting in train the events that occurred. In Judge Birss’ judgment when a Norwich Pharmacal Order is sought of the kind made in this case, it may well be worth considering how to manage the subsequent use of the identities disclosed. Perhaps consideration should be given to making a Group Litigation Order under CPR Part 19 from the outset and providing a mechanism for identifying tests cases at an early stage before a letter writing campaign begins. When Anton Piller (search and seizure) orders are made the practice is for a supervising solicitor who does not act for the claimant to be closely involved in order to ensure that the orders are not abused, and perhaps Norwich Pharmacal Orders should have similar restrictions and require some similar form of supervision from an experienced neutral solicitor.

Comment

Whilst the Patents County Court is not a senior Court binding other Courts, under the stewardship of His Honour Judge Birss it seems certain that its decisions are worthy of close observation.  The MediaCAT case has not altered the rules or law on the obtaining of a Norwich Pharmacal Order, but it has certainly raised questions that should be considered before future applications.  Indeed the decision may have opened the way to a re-visitation of the Orders and how they operate.  It could be imagined that Courts may well be attracted to the notion of requiring a neutral supervising solicitor, or indeed to placing restrictions upon information obtained, or perhaps requiring a return to the judge who made the Order, to allow them to provide directions upon use once the information has been obtained and can be considered.  It will additionally be interesting to see what impact if any this decision has on the ongoing debate concerning the Digital Economy Act rushed through parliament in 2010, since that act envisaged use of Norwich Pharmacal Orders, and is being judicially reviewed following claims by ISPs, British Telecom and Talk Talk, who had concerns about its operation.  In short His Honour Judge Birss has reminded us of the dangers of unchecked power, and the need for Courts to be vigilant to the use their Orders may ultimately be put.