Home Invasion by Anton Piller

by Michael Crinson

One April evening, around 5.00 p.m., a ten-year-old boy was playing outside the family home waiting for his parents to return when he was approached by a group of five adults, all strangers to him. The strangers asked the boy for the key to his home and for his father's cell phone number. Neighbours noticed what was happening and intervened.

One neighbour took the boy into her house and another neighbour stopped the strangers getting into the boy's home. A short time later, the boy's parents arrived home. Upon arrival at their home, the parents were handed a large bundle of documents by one of the strangers, named Harrison. The boy's father began to read the documents and asked to consult a lawyer. Fifteen minutes later, having been unable to reach a lawyer, the boy's father claims a second of the strangers said words to the effect that "no one can help you at this point", and that it was time to start a search of the family home. That second stranger was a Sheriff's officer assisting in the execution of an Anton Piller order, granted by the Ontario Superior Court. Once inside the home Harrison stayed with the parents in the kitchen of the home while the other four strangers searched the home. They were joined later by another two strangers. At the conclusion of their search, the group of strangers left with some documents they had seized.

These were the facts placed before the court on a motion to set aside an Anton Piller order and for a return of seized documents. Despite these facts, and its extensive review of Anton Piller orders the Court, in Ridgewood Electric Limited (1990), 74 O.R. (3d) 514 (S.C.J.), held that there was no basis for overturning the order.

Anton Piller orders are used in intellectual property cases, particularly trademark cases, dealing with counterfeit products and copyright cases dealing with illegal copying of music or videos. In exceptional circumstances, an aggrieved party may launch a legal proceeding, without notice, and obtain an Anton Piller style order to prevent the imminent destruction of evidence. Such orders typically amount to a "civil search warrant" in that they require the party on the receiving end of the order to allow a search of premises or vehicles.

The Court found that "Anton Piller orders must evolve to reflect the technological changes in the past 30 years and the broadening context in which they are used". The technological changes considered were the speed with which information can be transmitted or duplicated and the decreasing size of electronic data storage devices and therefore the increasing number of places such data can be secreted. Further, due to the advent of computers places such as residences are often not merely a home but also an office. Accordingly, the Court in Ridgewood noted that to be effective and fair an Anton Piller order must provide immediate access to the premises to be searched and those premises are now often residential.

Building on previous cases in which such orders have been granted, the Court held that Anton Piller orders should include four safeguards: prior judicial authorization; careful judicial scrutiny post-execution; safeguarding of seized materials; and execution by a peace officer. Each of these safeguards listed in Ridgewood is described in more detail as follows:

1. PRIOR JUDICIAL AUTHORIZATION

Prior judicial authorization is satisfied by the applicant meeting the established test on a motion for an Anton Piller order:

(i) the applicant must show a "strong" or "extremely strong" prima facie case for the substantive relief grounding the request for the order;

(ii) the applicant must show that very serious potential harm could occur if the order is not granted;

(iii) the applicant must show that the respondent has in its possession the documents or other items to be seized; and

(iv) the applicant must show that there is good reason to believe that the respondent will destroy or secret the items to be seized if given notice of the motion.

Caution must be taken as to the scope of the order granted so that it does not extend beyond what is justified without notice. As the Court noted in Grenzservice Speditions Ges.m.b.H. v. Jans (1995), 15 B.C. L.R. (3d) 370 (S.C.), relying upon Columbia Picture Industries Inc. v. Robinson (1985), [1986] 3 All E.R. 338 (Ch. D.):

Clearly the order should be drawn so as to extend no further than the minimum extent necessary to achieve its purpose, that is the preservation of documents or articles that might otherwise be destroyed or concealed.

In the Ridgewood case, the plaintiff alleged two defendants, former employees, had taken certain of the plaintiff's property and were using it to their own benefit and to the detriment of the plaintiff. Following execution of the original Anton Piller order and upon review to decide whether that order should continue the Court set aside that part of the original order which prohibited the defendants from certain conduct in competition with the plaintiff.

2. SAFE RETENTION AND LISTING OF MATERIALS SEIZED IN A MANNER THAT RESPECTS CLAIMS OF PRIVILEGE THAT MAY BE ASSERTED SUBSEQUENTLY

The Court expects seized materials to be returned before it, on notice to the party from whom they were seized, in order to determine the appropriate process for dealing with those documents. However, from the moment of the search until the Court has, on notice, determined the appropriate procedure for dealing with the documents, it is important that the interest that the subject of the search has in the seized materials be protected. The Court noted four considerations for protecting interests in the seized documents:

(i) The seized materials should be held safely by a non-party, such as an independent solicitor, until the Court can determine the proper procedure for dealing with the documents in a given case;

(ii) An inventory of seized materials, and returned materials if any, should be prepared for use by all parties;

(iii) Some of the seized documents may be the subject of privilege claims by the subject of the search. The opposing party or its counsel must not review documents over which privilege is claimed until that claim has been determined by the Court; and

(iv) Seized materials which are required urgently by the subject of the search for legitimate purposes should be returned promptly. It may be appropriate to copy those materials quickly, or there may occasionally be reasons to withhold the materials for a longer time.

3. CAREFUL JUDICIAL SCRUTINY OF EXECUTION OF ANTON PILLER ORDERS TO BALANCE THE INTERESTS OF BOTH SIDES TO ENSURE A FAIR DISPOSITION OF THE SUBSTANTIVE ISSUES IN THE CASE IN A PROCESS THAT IS FAIR TO BOTH SIDES

In Ridgewood, the Court reviewed the Anton Piller order. The purpose of that review was not to determine whether the original order should have been granted, but rather to determine whether the order should be continued. The defendant, subject of the search, raised several complaints about the conduct of the search including, explanation of the order, opportunity to consult counsel, supervision of execution of the order, overbreadth of the seizure, the number of people conducting the search and the treatment of the ten year old boy.

In the preferred execution of an Anton Piller order the entire order will be read and explained to the subject of the search. Circumstances such as urgency may justify a departure from this ideal, however. In such circumstances the Court may be satisfied if the substance of an Anton Piller order requiring that the subject permit entry and search for particular property and materials was explained and if the subject understood its substance.

The importance of the reasonable opportunity to consult counsel in the context of an Anton Piller order has been recognised by the Courts:

The defendant must have the right to consult counsel before being required to permit entry to his or her premises; the defendant must be advised of that right.

In Ridgewood, the plaintiff's search team arrived at the home at 5.00pm, gave a copy of the Anton Piller order to the homeowners (the Robbies) at 5.30pm, and gave the Robbies fifteen minutes to review the order and contact their counsel before they commenced the search. The order required that the search commence before 6.00pm. The Court was willing to accept the statement from counsel, unsupported by affidavit evidence, that the availability of the sheriff's officers had dictated the timing of the search rather than any calculated plan by the plaintiff. The Court also recognised the importance of timing and the ease with which electronically stored information could have been deleted or transferred had there been prior notice of the search.

The Court then found that if the Robbies had reached counsel and been given appropriate advice there was no "reason to believe there would have been any material difference in the result of the search." The Court also commented that appropriate advice would mean that the solicitor could not counsel his client to refuse permission to search the home since that would be a contempt of court. The Court therefore concluded that the potential prejudice of the plaintiff losing the benefit of the Anton Piller order outweighed the prejudice to the Robbies in not obtaining immediate legal advice.

The role of Harrison, a solicitor retained to act as an officer of the Court, was to supervise the execution of the Anton Piller order. Specifically he was to explain the order to the defendant, ensure the terms of the order were complied with and be available for consultation by the persons conducting the search. However, the impression created for the defendants was that is role was to keep them in the kitchen of their home and away from the search. The Court concluded that Harrison had satisfactorily briefed those carrying out the search and did provide direction to the searchers. While the Court would have preferred Harrison to be watching the search in the area of the search, the fact that he was not, and notwithstanding the negative impression created, supervision was satisfactory in this case since no harm resulted.

The material seized in Ridgewood included information belonging to the defendant which was not part of the Anton Piller order. The difficulty was that the wrongly seized information was on the defendant's computers along with material which was part of the order. Those computers were returned to the defendant within two business days. The Court found that any prejudice resulting from the overbroad seizure was minimal and that the cause of the overbroad seizure was likely the result of the defendant's own commingling of materials belonging to him with materials rightfully seized. In the result the Court held that the defendant Robbie, from whom the materials were seized:

cannot rely on his own handling of improperly taken materials to justify setting aside the order.

The Anton Piller order in Ridgewood allowed for a total of five people at the search. Concurrently, in the same case, another search was being conducted at a second defendant's premises. Once the search of the second defendant's search was completed, a sheriff's officer and private investigator who had been participating at that search joined in towards the end of the first defendant's home such that there were seven people present at the end of that search. The Court noted that the "limits on the number of persons present at the execution of an Anton Piller order are intended to make the search process manageable and to minimize intimidation". The Court rationalized the additional two late comers, in excess of the maximum noted in the Anton Piller order, on three bases:

(i) strict adherence to the term of the order restricting the number of persons to participate in the search is most important at the commencement of the search since that is when intimidation is most significant;

(ii) the search was likely completed faster given the additional two persons meaning the searchers would be gone from the home faster; and

(iii) the fact that one of the additional searchers was a sheriff's officer should have served to enhance confidence in the search process. This consideration may have been different had the additional searchers been employees of the plaintiff.

The fact that the persons intending to conduct the search approached a ten year old boy and asked when his parents would be home and to be let into the home was raised as a ground to set aside the order. The Court acknowledged that asking the boy to be let them into his home was not appropriate and declined to decide whether the approach and questioning of the boy by these strangers to him was "legally wrongful". Nonetheless the Court concluded that the terms of the Anton Piller order had not been breached.

4. EXECUTION BY A PEACE OFFICER PROPERLY TRAINED IN THE EXECUTION OF SEARCH WARRANTS

The spectacle created for the neighbours as a consequence of strangers approaching the small boy and asking to be let into his home was the most problematic for the Court:

There was a reason for this scene: people do believe, rightly, that uninvited private persons are not entitled to barge into a private residence without permission. People do believe, rightly, that this sanctity of the hearth does give way to a properly authorized police search. People do believe, rightly, that misconduct in a police search can be addressed in the courts. I suggest, with respect, that the use of Anton Piller orders in private residences is not understood by the public, and creates an atmosphere that is not consistent with a free, open and democratic society.

The Court recognised the theoretical distinction between a search warrant which authorizes a searcher to enter premises, by force if necessary, versus an Anton Piller order which orders the person subject to the search to permit entry or else face the spectre of jail or some other punishment. The differences only exist if the subject of the search resists or refuses entry. The Court noted that to a defendant, there was really no difference since both orders are intended to obtain entry, search and seizure of material. The public would not readily accept a search of a private home by someone other than the police. It is for this reason that the Court recommended that the execution of Anton Piller orders, particularly on residences, should require the participation of a police officer. Such participation by a police officer could have benefits both from the experience of such officers in executing search warrants, and from the public perspective since a police officer is more likely to be seen as a neutral person who would be answerable to the Court if there was impropriety in the execution of that search. The Court bore in mind the sanctity of the home, though recognized that the home may also be a place of work:

It is simply not acceptable that people may come to a private residence and demand entrance, unless they are duly authorized peace officers.

The Court specifically did not consider whether participation by a police officer would attract the Charter protection in section 8 to be secure against unreasonable search or seizure. However, the Court did comment that there would be no conceptual difficulty in "blending" search and seizure jurisprudence under the Charter with Anton Piller jurisprudence. This would be particularly appropriate when a private residence is involved which should attract some level of public law protection.

5. CONCLUSIONS

The Court reviewed the execution at a private residence of the Anton Piller. Clearly there were some serious concerns about the execution of the order but the Court generally characterised those concerns as technical in nature. The Court seemed to consider the failure to provide the homeowner with reasonable time to consult counsel to be technical based on the rationale that "if counsel had been reached and had given appropriate advice, there is no reason to believe there would have been any material difference in the result of the search". The Court, despite followed the prevailing decisions of the Court that the Charter does not apply to Court orders per se. However, the Court in Ridgewood does suggest, without deciding, a way in which the Charter can apply to the execution, rather than issue, of an Anton Piller order, by suggesting that peace officers be required to execute such orders. Such an approach could lead to a blending of law under Anton Piller orders and search and seizure jurisprudence under the Charter.

Michael Crinson practices intellectual property law with Dimock Stratton LLP in Toronto.
This article was originally published in WestlaweCarswell’s IPSource™, October 1, 2005.

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