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Cite as: [2001] 1 ILRM 540, [2000] IEHC 194

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Microsoft v. Brightpoint [2000] IEHC 194; [2001] 1 ILRM 540 (12th July, 2000)

2000 No. 6488P

JUDGMENT delivered by Mr Justice Smyth on the 12th day of July 2000.

1. On 2nd June, 2000 Quirke J. granted the Plaintiffs injunctive relief and made an Anton Piller Order in their favour on an ex parte application. The return date was fixed on 26th June, 2000. Notwithstanding the fact that the order gave “liberty to apply”, the Defendant applied ex parte to Herbert J. on 16th June, 2000 (a vacation sitting) and obtained injunctive relief restraining the Plaintiffs from making any use of information obtained by reason of the execution of the Anton Piller Order save for the prosecution of these proceedings and:-

“2. that the Plaintiffs or either of their or any person with notice of the making of this order be restrained from making any public communication in the print or broadcast media concerning the application for the Anton Piller order made in these proceedings on the 2nd day of June, 2000, the making of the order, the execution of the order or any documentation seized or

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information obtained or otherwise discussing in public the fact of the order or any other matter relative thereto.”

2. Subsequent to 20th June, 2000, the matter came before the court and in effect by agreement it was arranged that both Motions would be returned for hearing together.

3. I have now before me two applications:

a) A Plaintiff’s motion seeking interlocutory relief which follows upon the interim relief granted by Quirke J. and,

b) A Defendant’s motion seeking wide ranging reliefs including:-

(i) an Order pursuant to O. 44 R.3 of the Rules of the Superior Courts for the attachment and/or committal and/or sequestration of the assets, of Business Software Alliance and/or Conor Molloy and/or Kieran O’Connor and/or the Plaintiffs.

(ii) an Order dismissing the proceedings consequent upon the abuse of the process of the Court perpetrated by the Plaintiffs and/or Business Software Alliance Limited or the servants or agents of either of them.

(iii) an Order setting aside the Order of 2nd June, 2000 (of Quirke J.).

(iv) an injunction restraining the Plaintiffs form seeking to litigate their claims herein by the print and broadcast media.

(v) an injunction that the Plaintiffs and/or the Business Software Alliance remove all references to the Anton Piller Order herein, it’s execution and the Defendant from each of their websites.

“as well as the reliefs granted by Herbert J.”

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A) Historically:

4. The first-named Plaintiff is a company incorporated in the U.S.A. and carries on the business of software publishing, developing and producing and is engaged in the creation and development of software programmes for the operation of computer systems and in particular personal computers. This Plaintiff alleged that it is the creator of specific computer software programs and is the owner of the copyright in same and is entitled to the protection afforded by the Copyright Act, 1963 (as amended) and the Intellectual Property (Miscellaneous Provisions) Act, 1998 and is also the proprietor of certain registered trademarks.

5. The second-named Plaintiff is also incorporated in the U.S.A. and alleges it carries on a like business to that of the first-named Plaintiff and is the creator of other specific computer software programs which also have the benefit of the statutes hereinbefore mentioned.

6. The Plaintiffs bring this action not only on their own behalf but on behalf of the Business Software Alliance (hereinafter referred to as “BSA”) a trade association incorporated in the U.S.A. (The expression ‘the Plaintiffs’ will in this judgment include not only the named Plaintiffs but also the BSA members.)

7. The Defendant is an Irish registered company and is in the business of distributing, incorporating, unboxing and securing telephones.

8. The Plaintiffs case is that the Defendant had infringed its many legal rights and in fact operated without the appropriate licenses, this is denied, but with some qualifications and explanations in the Affidavits.

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B) The legal proceedings:

9. On a date on or about 14th April, 2000 the Plaintiffs became aware of the alleged transgressions of the Defendant through a Mr. Gregory Woodley who avers in his Affidavit of 2nd June, 2000 (referring to the Defendants)

“11. I say that it was clear that the company were engaged in the widespread unlawful copying, use, distribution, possession and net-working of the Plaintiffs’ software programs and I was responsible for software compliance which clearly was not forthcoming. I was forced to terminate my position with the company and duly resigned as of the 12th April, 2000.”

10. When a Mr. Jim Doak swore his Affidavit to support the application to Herbert J. he clearly had read Mr. Woodley’s Affidavit and said of Mr. Woodley that he was “dismissed” (paragraph 3) and “did not resign - he was requested to because of complaints” (paragraph 13) “incompetence led to dismissal” (paragraph 14) incompetent, unreliable, general evasiveness” (paragraph 20) and Mr. Doak remarks on the brevity of Mr. Woodley’s Affidavit (paragraph 22). Mr. Kieran O’Connor, the Plaintiff’s solicitor avers in his Affidavit sworn 26th May, 2000 “that Mr. Woodley was in effect constructively dismissed” (paragraph 10) whereas Mr. Doak in his Affidavit sworn on 23rd June, 2000 avers that Mr. Woodley was “requested to resign” (paragraph 9).

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11. Mr. Connolly, S.C., for the Plaintiffs very properly accepts that if the matter goes to a hearing, and if Mr. Woodley is a disaffected former employee, what is of prime importance is his truthfulness.

12. On the making of the order by Quirke J., the Plaintiffs sought to implement it. There is much controversy to what actually took place on the evening of 2nd June. 2000 at the Defendant’s premises which can only be resolved by an oral hearing. It is not possible to determine the dispute as to the facts on the affidavits before the court. I will return to this topic when considering the Defendant’s Motion. If this matter came before the Court, uncomplicated by the Defendant’s Motion I would without hesitation be content to grant the Plaintiff the relief sought on the basis that:-

(a) There is a serious issue to be tried.

(b) Damages are not an adequate remedy (indeed the Defendant through Mr. Doak (paragraph 53 of his Affidavit of 15th June, 2000) avers that its business “has been gravely and irreparably damaged” as a consequence of the publicity following on the Anton Piller Order).

(c) The balance of convenience favours the Plaintiff.

13. However, it was agreed at the hearing before me that no decision should be pronounced on the Plaintiff’s Motion until both Motions were heard.

C) The Anton Piller Order, obtained ex parte :

14. The essence of this Order is surprise. In the instant case it was granted in terms:

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“And IT IS ORDERED that the Defendants it’s servants or agents do forthwith –

(a) deliver up all infringing copies of the Plaintiffs computer programs and any other copies of works which are or appear to be infringing copies whether they be on the hard disk of computers, central processing units or held in any form whether on floppy disk, compact disk, tape or any form whatsoever which are in the possession, custody or control of the Defendant its servants or agents to the Plaintiffs or their authorised agent.

(b) allow representatives of the Plaintiffs to enter onto the Defendant’s premises for the purposes of the inspection, detention and preservation of all copies of Microsoft Office 95, Microsoft Office 97, Microsoft Exchange 5.5, Microsoft Outlook, Windows N. T., Norton Anti Virus and P. C. Anywhere which are or appear to be impinging copies and also all documents if relation thereto which are in the control, possession or procurement of the Defendant its servants or agents together with books, records, agreements, letters, correspondence, accounts, cheques, receipts and credit notes.”

15. On the matter coming on before Quirke J. it is recorded that there was apparently no-one from the press or media in court. Mr. Nesbitt, S.C. for the Defendant submits that it is of the essence that the ex parte application is conducted in camera. I reject this submission for the following reasons:-

(a) There is a constitutional obligation (Art. 34.5.1) that:-

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“Justice shall be administered in courts established by law by judges appointed in the manner provided by the Constitution, and, save in such special and limited cases as may be prescribed by law, shall be administered in public.”

(b) Certain exceptions to this general requirement (e.g. S.205(7)) of the Companies Act, 1963 considered and determined by the Supreme Court in Re: R. Limited [1989] I.R. 126; and statutes touching upon family law matters) have from time to time been prescribed by Statute.

(c) Subject to the Constitutional requirement and settled case law, there may be occasions (necessarily rare) where in the interests of justice and for good and proper reason a judge may direct a hearing in camera .

(d) In exercising it’s inherent jurisdiction a judge sitting in open court may direct or limit or inhibit publication of the order made in open court.

16. The publication of the existence (not to mind the exact contents) of an Anton Piller Order in advance of it’s execution could weaken or deprive it of the element of surprise. The Defendant submits and the case law ( Columbia Picture Industries Limited & Ors -v- Robinson & Ors [1986] 3 ALL ER 338) sustains the view that Affidavit in support of the application for the order ought to err on the side of excessive disclosure, because in the case of material which falls into the area of possible relevance, the judge, and not the Plaintiffs or their advisors should be the judge of relevance. In this regard it is contended that there were three important elements of non disclosure:-

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(a) The status or size of the Defendant and it’s operation.

17. Notwithstanding the legal biographical details of the Defendant at paragraphs (5) and (6) of Mr. Doak’s Affidavit of 15th June, 2000 and his assertion in paragraph (7) that the Defendant is part of an established and reputable group of companies, I am satisfied that Mr. Woodley’s Affidavit of 2nd June when read with it’s exhibits indicates that the Defendant is an operation of substance and significance. Furthermore the question of licenses was a live issue in December, 1999 and April, 2000.

(b) The full to true status of Mr. Woodley is not disclosed.

18. Assuming the relevance of this matter, I am satisfied from the tenor of Mr. Woodley’s Affidavit and his ceasing to be employed by the Defendant as of 12th April, 2000 (para (ii) of his affidavit) and Mr. O’Connor’s averments in paragraphs (22) and (23) of his affidavit (of 2nd June, 2000) that a judge would have no difficulty in drawing the clear inference that Mr. Woodley was a disaffected former employee. The provision of relevant information does not impose an obligation to be exhaustive. This case is clearly distinguishable from the Columbia Pictures [1986] 3 All F 338 @ p.349 (letter(e)) case where the Affidavit failed to disclose Mr. Robinson’s role as an informant.

(c) No grounds of fear of destruction are advanced to warrant the intervention of the Court.

19. In my judgment Mr. O’Connor’s Affidavit at paragraphs 23,24,25,26,28 and 29 seem reasoned deductions from opinions formed on the actual facts averred to in the nature of the expression of an apprehension there is an element of speculation: that is not to say that the

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20. Court should be moved on a hunch of the Plaintiff. In the instant case there were problems for months prior to 2nd June, 2000 - there are still problems with the licenses. In my judgment a court could come to the view - on the Affidavits that the fact that the Defendant was operating without licenses would not be something they would wish to be discovered and understandably (if it valued it’s reputation and business, as it did) might well seek to dispose of any unfavourable records of such operations. Generally commercial enterprises do not maintain for inspection by third parties, especially potential adversaries, confessional records of wrongs done by themselves.

21. In my judgment there was such full and proper disclosure as the circumstances of the case warranted to seek and obtain an Anton Piller Order, which was to the purpose and not unduly wide in its teams. I am satisfied that there was strong prima facie evidence of dishonest conduct by the Defendants which indicated a strong probability that they would be likely to destroy the records (e.g. Tate Access Floors -v- Boswell [1990] ALL ER 303 at 315(e).)

D) The execution of the Anton Piller Order

22. The complaint of the Defendant is that the order was oppressively and excessively executed.

23. The application was sought and obtained in the time scale set out in Mr. O’Connor’s Affidavit of 22nd June, 2000 paragraph (4). I am unconvinced that the Plaintiffs and their solicitor sought deliberately to disadvantage the Defendant to the greatest degree possible in the whole timescale of the application and the implementation of the Order.

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24. In my judgment the period between 14th April, 2000 when it came to Mr. O’Connor’s attention ‘that the Defendants ... were using unauthorised illegal copies...’ and 2nd June, 2000 when the application to court was made is not a delay such as would disentitle injunctive relief. A reasonable time to gather the facts, perhaps assess Mr. Woodley as a witness, the engagement of Counsel, allowing for the Easter Holidays, indicate a timescale similar to that in the Columbia Pictures case. There is no good time for a Defendant to receive an Anton Pillar Order. The conflict of evidence on the occasion of the execution of the Order can only be resolved by an oral hearing and I am not disposed to setting aside an order of the Court in the circumstances of this conflict. The Columbia Pictures case was determined after a full and oral hearing of several weeks. It would be improper of me to express any view on the conflict of evidence given its extent.

25. I am unable to accept that the servicing of the Order was irregular and as to the time of its execution it is clear that immediate effect was given to it. The question of obtaining legal advice was raised before any inspection took place and while a Defendant to an Anton Piller Order has no real choice but to comply with it, Mr. Doak’s attitude (as conveyed in paragraph (31) of his Affidavit of 15th June, 2000) was:-

“I advised Mr. O’Connor that the Defendant had nothing to hide from Microsoft, and that the Defendant was prepared to fully co-operate.”

26. That attitude accords with Mr O’Connor’s record of paragraph (31) of his affidavit of 22nd June, 2000.

“Mr Dock confirmed to me that he understood the reason why I was there and the terms of the Order and declined the opportunity to seek legal advice.”

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27. Submissions were made on behalf of the Defendant, that the Plaintiffs, through their agent(s) failed to advise the Defendant (through it’s officers and/or employees) as to it’s right against self-incrimination. As the pleadings stand at the moment there is no plea of fraud or conspiracy. Amongst the cases cited in support of this contention in Access Floors -v- Boswell [1990] 3 All ER 303 which in the judgment of Sir Nicholas Browne-Wilkinson V.C. (as he then was) considered the question “Was there a risk of self-incrimination” (p3 12 of the report) and in the ‘conclusion’ of his judgment (p.315 of the report) he declined to set aside the Anton Piller Order as against the company defendants since no one had shown any risk of the company Defendants being incriminated. Mr. Dock insists that the company is compliant with the law if he is correct and so found to be on a full hearing then self-incrimination simply cannot arise. Accordingly this is not a basis for setting aside the Anton Piller Order.

28. In the matter of records, the following brief extracts from the papers seem appropriate: -

1. Mr. Dock’s Affidavit of 23rd June, 2000 paragraph (8) states:-

“The main concern of the Defendant is to have this matter litigated in Court, and its rights and the liabilities of the Plaintiffs determined at the soonest possible opportunity.”

2. At paragraph (11) of the same Affidavit:-

"At present a very small percentage of the programs the subject of this claim are programmes for which a license is not yet physically available or in respect of which no evidence exists to show the program is in fact enjoy a license. The time and effort now being spent searching out documents from storage to

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complete the licence trail is now becoming inconvenient. The cost is greatly disproportionate to the cost of buying the latest version of the software. Rather than continue this proportionately expensive (in terms of time and cost) search lam minded to simply buy new programs. I do not make this statement as an admission that licences do not exist, but rather to undersee the fact that the allegation of international copyright infringements is quite misplaced. The Defendant is a compliant company when it comes to its licence obligations. Any inability to produce licences now is for an innocent reason and does not mean the program is unlicensed. If it proves impossible to establish the whereabouts of the few outstanding program licences within the next 4 weeks, the Defendant intends to purchase new programs or delete its old programs”

3. Mr. O’Leary in his Affidavit of 25th June, 2000 paragraph (12) (1) under the title “office” noted that he has “not yet been able to locate the licences”.

4. Mr. Delaney in his Affidavit of 23rd June, avers (at paragraph (5):-

“I say that even allowing for the documentation furnished by the Defendant on the 16th June, 2000 and comparing same to the results of my inspection of the disks containing the results of the search on the 2nd June, 2000 the Defendant has significant shortfalls in respect of licences in particular in relation to Microsoft Office and is substantially not in compliance with his licensing obligations.”

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29. Mr Delaney’s supplemental Affidavit contains a reply to Mr. Dock’s second Affidavit and Mr. O’Leary’s Affidavit clearly raises very serious issues of new compliance.

5. While it might have been a sensible thing at the time of inspection for an agreed list or inventory of the copy documents taken to have been made and signed -there was no obligation on the Plaintiff to provide a list as requested in the Defendant’s solicitor letter of 9th June, 2000. However, the tone of the Plaintiffs’ solicitor’s letter of 12th June, 2000 was an unhelpful response. As there is already an obligation to preserve all copies taken (under the Anton Piller Order), the furnishing of a list was a courtesy that should have been accorded between officers of the Court.

30. In my opinion the law in this issue is very properly put by Scott J. in Columbia Picture Industries -v- Robinson [1986] 3 All ER 338 at p.371:-

“It is essential that a detailed record of the material taken should be made by a Solicitor who executes an Anton Piller Order before the material is removed from the respondent’s premises. As far as possible, disputes as to what material was taken, the resolution of which depends on the oral testimony and credibility of the solicitor on the one hand and the respondent on the other hand, ought to be avoided because, in the absence of any sworn corroboration of a respondents’ allegation that particular material was taken, a solicitor’s

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sworn and apparently credible denial is likely always to be preferred and such a state or affairs is unfair to the respondent and ought to be avoided.”

E) Conduct Post 2nd June, 2000 .

1. Mr. Molly on behalf of BSA was a proper person to have attended the inspection. His interview with “Good Morning Ireland” did not identify the Defendant, and accordingly the Defendant’s submission of impropriety is rejected.

2. If the report on “Ireland on Sunday” is correct, and its content is not put in issue, it concludes:-

“Representatives of Brightpoint were contacted by Ireland on Sunday to comment on the raid, but they did not return any calls.”

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31. On the basis that an opportunity was given to the Defendants to comment and none was forthcoming; I find no basis in law as at present advised for criticising the article.

3. Subsequent to the order and search, a Press Release and item on the website of the Plaintiffs informed those who might contact the website of the fact of the order, its date, the identity in effect of BSA and the Defendant and that the purpose of the exercise was “to seize and preserve evidence or suspected end-user piracy at Brightpoint and is the first Anton Piller raid conducted by the BSA in Ireland. End-user piracy involves the use of software in greater numbers than is permitted by the licenses the relevant organisation has.”

32. The Defendant’s response was also of a public relations character suffused with a tone of moral outrage.

33. Both parties to the litigation would be much better served in devoting their energies and resources to either trying to resolve their differences by agreement or on foot of the ‘liberty to apply’ in the order of 2nd June, 2000 to both return to court and move the legal process forward.

34. I reject the Defendant’s submissions on implied undertakings; in effect this is to seek to import into this jurisdiction the legal rights duties and responsibilities in England and Wales where legislative and rule provisions deal with the type of undertakings spoken of.

35. On the basis of the documentary evidence and information placed before me I am satisfied that the Anton Piller Order was justified in its making and that the subsequent conduct in this case was not such as should or could be regarded as contemptuous (the

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standard of proof in which is ‘beyond a reasonable doubt’ per Keane J. (as he then was) in National Irish Bank -v- Graham [1994] 1 I.R. 215 at p.225) or scandalising the court or warrant the relief sought by the Defendant. Notwithstanding the Defendant’s perception that the disclosure of the existence of the High Court Order - a public document, being the written record of the decision made in open court, the manner of it’s publication was perhaps subjectively inappropriate, but it was not illegal or prohibited expressly or by implication nor in my opinion was it improper. The Anton Piller Order and its extent is a matter of true fact, whether the evidence that supported the application at the ex parte stage will be sustained when tested at a hearing is another matter. It is unfortunate that the difference between the parties have been exacerbated by the engagement of press officers, public relations consultants or spin doctors. Having entrusted the dispute to the legal process both parties might make more progress in giving it their attention than engaging in charge and countercharge in “the media”.

F) The Defendant’s ex parte application :

36. Notwithstanding the liberty to apply in the order of Quirke J.; the Defendant after entering an appearance and having had correspondence with the Plaintiff’s solicitor, applied ex parte to Herbert J. the explanation given to me was that the Defendant was not entitled to go before the Court under the order of Quirke J. until the return day, and the Defendant had to apply ex parte to seek the relief it wished to have. I regard this as spurious science. I say this notwithstanding the decision in Columbia Picture Industries -v-

Robinson [1986] 3 All ER 338 at p. 367 per Scott, J. (as he then was

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“... in relation to any Anton Piller Order, the liberty to apply to have it discharged is of little, if any value to the respondent. He does not know that the order had been made until it has been served on him. At the same time as the order is served, the respondent comes under the immediate obligation to consent to the entry onto and search of his premises and the removal of material from his premises specified by the order. If he does not consent he is at risk of committal to prison for contempt of court. This is so even if the reason for his refusal to consent is his intention to apply to have the order discharged.”

37. To the extent that a view can be formed on affidavit evidence and argument advanced at this stage (and it cannot be a concluded view given the controversies and conflicts to which I have alluded) I am of the opinion that it was the publication of the making of the order that fuelled the fires of discontent, more than that an Order was sought and made, the search made and maybe the manner of the search and the tone of the letter of Mr. O’Connor of 12th June 2000. However, proceedings were in being, an Appearance entered, a known solicitor on record and there was nothing to prevent the type of application made ex parte before Herbert J. from being on notice, with the Defendant’s entitlement to seek on the date of that application an abridgement of the time prescribed by the rules (if at all necessary), given the “liberty to apply” in the order of Quirke J. The Defendants did not have to await the return date in the order of Quirke J. “. The significance of the return date is that it provides a fixed date on which the Respondent, if so advised, can apply to vary or set aside the Order first made. It does not, in my judgment, preclude a respondent who does not take advantage of the return date from applying subsequently” (per Scott, J. in Colombia Picture Industries -v-

Robinson [1986] 3 All ER 338 at p. 378). With or without an expressed “liberty to apply”

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provision in the order Of June, 2000, in my judgment a Court should be most responsive to a Defendant/Respondent in an appropriate case without waiting for the return date because of the nature of an Anton Piller Order. I am left with the clearest impression that the second ex parte order was sought to try and off-set the first ex parte order. Court orders are not designed by the courts to be used as instruments of commercial warfare.

38. For the avoidance of further unnecessary doubt or controversy I order and direct that until the final determination of this action neither party ‘directly or indirectly’ through any other person or persons or body corporate or unincorporated make any communication in the print or broadcast media of the matters in issue in this suit and that if either has on its website any information whatsoever concerning this suit that same be erased and removed not later than 12 noon Wednesday 12th July, 2000.

39. I dismiss the Defendant’s Motion. I grant the interlocutory relief sought by the Plaintiff.


40. Plaintiffs ex parte & two-thirds of this interlocutory applications against Defendants - Defendants Motion - bear its own costs of ex parte and this Motion. but no execution until final determination.

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National Irish Bank Ltd -v- Graham [1994] 1 I.R. 215
Kelly -v- O’Neill & Anor (S.C. 2nd December, 1999).
Rank Film Distributors Ltd -v- Video Information Centre [1981] 2 ALL ER 76
Thermax Ltd -v- Schott Industrial Glass Ltd [1981] F.S.R. 289
Columbia Picture Industries -v- Robinson [1986] 3 ALL ER 338
Tate Access Floors -v- Boswell [1990] 3 ALL ER 303
Bhuigixers -v- Chatwari & Ors [1991] 1 ALL ER 705

41. Mareva Injunctions and Anton Piller Order Relief S. Gee

(4th Solicitor - Sweet & Maxwell)

42. Contempt - Arlidge, Eady & Smith (1999 - London - Sweet & Maxwell)

[The Common Law Library].

© 2000 Irish High Court

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