Spurious porn e-piracy witchhunt casts doubt on disclosure orders

Norwich Pharmacal orders lose their indefeasibility in light of Media CAT ruling.

For More than a quarter of a century claimants wanting to sue someone whose identity is ­uncertain have been able to ­discover that identity using a ­Norwich Pharmacal order. But a recent Patents County Court ­judgment has the potential to change the way these orders are used.

IP lawyers believe Judge Birss QC’s judgment in Media CAT Ltd v Adams & Ors, handed down on 8 February, could lead to extra safeguards being imposed on the increasing number of claims brought against so-called internet pirates. Norwich Pharmacal orders will also have to be ­considered more carefully.

IT law specialist Andrew Murray, a London School of Economics ­academic, says: “I’d be amazed if any master, on the basis of what Judge Birss has said, would just sign off a Norwich Pharmacal order for peer-to-peer copyright ­infringement in the future.

“I honestly think that this case could bring about the end of the volume litigation practice [in this area of law] for a period.”

The orders used in Media CAT date back to the 1974 litigation Norwich Pharmacal Co v ­Commissioners of Customs and Excise (see box). In 2009 and 2010 Media CAT, acting on behalf of the copyright owners for an adult film, applied for several ­Norwich Pharmacal orders to force internet service providers (ISPs) to disclose the details of thousands of ­subscribers.
These individuals were known to Media CAT only through the unique internet protocol addresses that are assigned to particular internet connections. A monitoring exercise had linked each address to an illegal download of the ­copyrighted film.

Chief Master Winegarten ­granted the Norwich Pharmacal orders and Media CAT, through ACS:Law, began a letter-writing campaign to the tens of thousands of names identified through the orders. The letters claimed ­”compensation” of £495 from each individual for breaching copyright.

However, as Birss pointed out in his judgment, dismissing the claimants’ attempts to discontinue the case, Media CAT did not have evidence to prove that the ­individuals to whom it was writing had been responsible for the illegal downloads. The downloads could have been carried out by other ­people in the same house or even, due to unsecured wireless ­networks, in the same street.

“Media CAT don’t know who did it and know that they don’t know who did it,” said Birss.

Birss said Winegarten granted the order based on the facts put before him, adding that the chief master did not have to decide whether Media CAT would ­succeed in its claims.

“I can’t imagine that the court making the Norwich Pharmacal orders in this case did so with a view to setting in train an exercise that was to be conducted in the manner that has subsequently emerged,” Birss said at the time.

He suggested that courts should consider better management of the actions that follow Norwich Pharmacal orders in volume ­litigation such as Media CAT. He suggested that supervision by an experienced neutral solicitor, a practice that is already common in ’Anton Piller’ search-and-seizure orders, would be a possibility.

Another option would be to impose an order restraining the use of the information received, for example preventing a claimant from pursuing a letter-writing campaign.

But Field Fisher Waterhouse partner Hamish Porter points out that Norwich Pharmacal orders were used to form the basis of the Digital Economy Act, passed last year. However, ISPs BT and Talk Talk succeeded in an application for a judicial review of the act, with the hearing scheduled for early this year, so the legislation may yet change.

Porter adds that the Media CAT judgment is unlikely to alter ­masters’ willingness to grant orders.

“Norwich Pharmacal is an essential part of today’s fact-­finding that won’t disappear by virtue of Media CAT,” he states.

That said, Bird & Bird partner Graham Smith believes the use of the orders in disputes such as Media CAT means more ­safeguards need to be put in place.

With internet piracy still an issue for copyright owners and ISPs resisting legislative attempts to force disclosure of subscribers’ details, it seems clear that the decision by Birss in Media CAT will not be the end of the tale.

How norwich pharmacal orders became a standard legal tool

In Norwich Pharmacal Co v Commissioners of Customs and Excise (1974) pharmaceutical company Norwich Pharmacal discovered that its patented compound furazolidone was being imported into the UK without a licence, thus infringing its patent.

The problem was that the company did not know who was behind the imports. The company applied to the court for an order that HM Revenue & Customs should disclose the identities, which the House of Lords granted in a unanimous five-strong judgment.

Since then ’Norwich Pharmacal orders’ have become an essential tool for litigants. They are used across the dispute resolution spectrum, not just in IP cases, to force disclosure of documents or the identities of unknown respondents. The vast majority of these orders are followed by a court claim or a settlement of a dispute.

In his judgment, Lord Cross of Chelsea said: “In the course of the argument fears were exposed that to order disclosure of names in circumstances such as exist in this case might be […] opening the door to ’fishing requests’ by would-be plaintiffs who want to collect evidence, or to requests for names made to persons who had no relevant connection with the person to be sued or the events giving rise to the alleged cause of action, but just happened to know the name. I think that these fears are groundless.”

joanne.harris@thelawyer.com