2011 Convergence 1 (2011)

handle is hein.journals/convrg2011 and id is 1 raw text is: IBA;r Media CAT scratches the Norwich Pharmacal Order - James T...

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Media CAT scratches the Norwich Pharmacal Order - James Tumbridge
25/05/2011
Media CAT scratches the Norwich Pharmacal Order
By James Turn bridge
Banister Counsel to Gowlings, London
james.tumbridge(#aowlings.com
In MediaCAT v Adam and Others. His Honour Judge Birss QC 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 campaign 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 HHJ Birss QC
said in paragraph 28 of the judgment: 'MediaCAT don't know who [infringed], and know they don't know who [infringed].' Consequently, the judge was critical of the use of the Orders
and has urged better controls.
Background
MediaCAT Ltd v Adam and Others [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 (IP) addresses that are assigned to
particular internet connections. Having used a monitoring service to link each IP address to an illegal downloading of copyrighted films, an application was made for Norwich Pharmacal
Orders, to have the Internet Service Providers (ISPs) disclose the actual names and addresses of the people who used the IP 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 E495 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 HHJ Birss QC 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 Media CAT.'
The letters asserted that MediaCAT was a copyright protection society (which it is not and was therefore risleading) 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 HHJ Birss QC 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; '(Olur client's evidence shows you are responsible for comrnitting 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: '[Tlhis
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, HHJ Birss QC 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 device 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 and Others 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 United Kingdom but could not tell who
was responsible. None of the imports were licensed and thus had to be infringing. The patentee applied to the court for an order that Customs & Excise, 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 Products Inc and Others v Intercen Ltd (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 HHJ Birss QC was clearly concerned that 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 HHJ Birss QC 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 Corp v Granada Television Ltd [1981] AC 1096, HL, Lord Fraser at p1200 C-G and Ashworth
Hospital Authority v MGN Ltd [2002] UKHL 29, 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 (see paragraph 19). However, according to HHJ Birss QC, 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 - there is no doubt that person would be able to take whatever steps to
defend themselves if 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. There was no consideration given
to the potential use or misuse 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 of 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 had been provided under a court order, HHJ Birss QC considered it to be a much smaller step than

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