Bloomsbury Publishing Plc & Anor v Newsgroup Newspapers Ltd

I have before me today an application by Bloomsbury Publishing plc (“Bloomsbury”) and Miss JK Rowling in which an unusual order is sought. Miss Rowling is, of course, the well-known author of the Harry Potter books. Publication of the fifth book in that series, which bears the title Harry Potter and the Order of the Phoenix is due on or about 21 June 2003. It is no doubt eagerly awaited by a very large readership. If the success of the first four books in the series is anything to go by, it will be an enormous commercial success, not just in this country, but elsewhere.

Bloomsbury is the publisher of the book and it has made arrangements for copies of the book to be printed under conditions of extreme secrecy and security. The potential loss, both to Bloomsbury and Miss Rowling, if copies of the book were to slip out of Bloomsbury’s control in advance of the official launch date, are obvious.

The first defendant to the current application is Newsgroup Newspapers Limited (“Newsgroup”). It is the proprietor of The Sun daily newspaper. On 6 May that newspaper carried a front page scoop. Under the banner heading “Out of this World Exclusive” it carried a photograph of the inside cover and frontispiece of Harry Potter and the Order of the Phoenix. There is no reason to doubt that this is a photograph of an authentic copy of the book obtained illicitly from Bloomsbury or the printing works. Underneath the photograph there is a box with the words “New Potter Book found, secret blockbuster dumped in a field”. In smaller print above that are the words “in safe hands two copies of JK Rowling’s new Harry Potter novel, not due out until June 21^st, at the Sun’s London Headquarters last night”.

Pages six and seven of the paper contain a two-page spread with a story relating to the alleged discovery of these two copies in a field. They also carry a photograph showing one of the Sun’s employees placing the proof in a safe on which the words “The Sun” are marked.

The publication of this article resulted in the claimants immediately contacting The Sun to raise their concerns. It said it had been approached by a man called Keith Webb who claimed to have found these two extremely valuable documents lying in a field near the printing works where Harry Potter and the Order of the Phoenix was being produced. Correspondence ensued between the claimants and The Sun. The question of what relief, if any, should be ordered against Newsgroup is not a matter with which this judgment is concerned.

It appears that the two copies of Harry Potter and the Order of the Phoenix, currently held by The Sun and due shortly to be handed over to the claimants, are not the only copies of this book which have escaped the security net created by Bloomsbury. It appears that both The Sun, the Daily Mail and The Mirror have received phone calls from someone offering for sale chapters of the new and unpublished book. He is asking for £25,000 for each chapter. The caller is clearly not anxious to divulge his name.

To the best of the claimants’ knowledge and belief none of the three newspapers have taken the bait, but it appears to be likely that there is indeed at least a third copy of the book which has been extracted, in one way or another, (probably by theft) from the print-works. The person currently holding that copy is more than willing to sell it, or copies of it. It may be that the person offering to sell chapters of the book is not the same person as has extracted the copy from the printing works. There may be a number of people involved in this activity. For the purpose of this judgment I will refer to him in the singular.

As I have said, the person holding the third copy, besides offering chapters for sale, has made it clear that he is anxious not to be identified. The telephone offers to the newspapers have been made from a telephone box and all attempts so far to illicit personal details of the vendor have met with a swift, sharp and knowing rebuttal.

Had the identity of the vendor and any of his accomplices being known, the court would, without hesitation, grant the without notice relief which the claimants seek not only to preserve confidentiality, but also to prevent infringement of copyright and the conversion of stolen property. Further, such an injunction would be effective not just against identified defendants, but also against anybody else who is informed of the terms of the injunction and who assists or tries to assist (directly or indirectly) the addressee to breach its terms. Cases such as Acrow (Automation) Ltd v Rex Chainbelt Inc [1971] 3 All ER 1175 illustrate the effectiveness of an injunction against third parties who assist a defendant to commit contempt.

The problem here is that the identity of the vendor and any accomplices is not known. Because of that, at first blush, it appears that it is not possible for the claimants to obtain an effective relief against a person who, quite clearly, is engaged in a course of activity which, on the evidence before the court, is a breach of the claimants’ rights and which, from the very manner in which he is trying to conduct his trade, is known to him to be a breach of the claimants’ rights. The result is that Mr Kitchin QC, who appears on this application on behalf of the claimants, asks for the injunctive relief against a defendant referred to as follows:

“The person (or persons) who have offered the publishers of the Sun, the Daily Mail and the Daily Mirror newspapers a copy of the book Harry Potter and the Order of the Phoenix by JK Rowling.”

This is effectively a “John Doe” order made against a person whose identity cannot be described by the usual methods adopted for describing individuals, that is to say by name.

Mr Kitchin has drawn to my attention a number of cases in which the court have touched upon the question of whether it is possible to obtain relief against a person or persons who cannot be identified by name. Amongst other cases, he has drawn my attention to two quite recent decisions. The first is EMI Records v Kudhail [1985] FSR 36 in which the plaintiff, EMI Records, sought injunctive relief on an ex parte application against a Mr Kudhail and other unnamed persons in respect of alleged infringements of its copyright in certain sound recordings and for passing off. The product being pursued in that action was counterfeit, that is to say it was dressed up to look like the original material of the plaintiff. Mr Kudhail was a market trader.

Although Mr Kudhail’s identity was known, the plaintiff did not know the identity of the other parties engaged in distributing the counterfeit recordings. The Court of Appeal considered whether or not it was appropriate in those circumstances to make an order not just against Mr Kudhail but also against the others involved in the dissemination of the counterfeit products even though their numbers and identities were not known. It thought that it was appropriate to do so, at least for the short period during which an ex parte injunction was to be in place. It made Mr Kudhail a defendant in a representative capacity, it being said by the Court of Appeal that “there was sufficient commercial interaction between counterfeiters to treat them all as a group”.

The result was that the knowledge of the identity of one individual defendant enabled the Court of Appeal to fashion an order which could be effective against others and, in practice, effective against others who had very little if any connection with Mr Kudhail. For example it would be effective against other market traders. It appears that the other members of the “group” were unknown as to names and numbers.

The other case which was drawn to my attention was Tony Blain Pty Ltd v Splain [1994] FSR 497 a decision of the High Court of New Zealand. Insofar as material, the head note reads as follows:

“The plaintiff was the exclusive authorised merchandiser for the musical group Metallica and also for the singer, Paul McCartney. The plaintiff’s activities involved inter alia the manufacturing and selling of badges, T-shirts and other memorabilia at concert locations. The second and third defendants were a group of persons unknown who set up stalls outside the same concert locations and sold unauthorised memorabilia, the same type as the plaintiff. The first defendant was a person whose identity and activities were known to the plaintiff.

The Defendants set up stalls that could be quickly dismantled, such that detection and prevention of their activities by the plaintiff was difficult. The quality of the defendant’s goods was lower and hence, it was said, there was a risk of damage to the plaintiff’s goodwill. The plaintiff sought Anton Piller relief against the defendants, despite the fact that their names and precise activities were known.

Held, granting the order sought:

(1)

The plaintiff had established a proprietary right to sell authorised memorabilia and the court would act to protect that right. …;

(2)

Because of the low quality of the defendants’ goods, it was likely that the defendants’ activities would damage the goodwill associated with the musical group or singer concerned;

(3)

The court was satisfied it would be near impossible to ascertain the names and addresses of the defendants unless they were served with the order at the concert locations; …”

Mr Justice Anderson did not adopt the same approach as that adopted by the Court of Appeal in EMI Ltd v Kudhail. First, there was no individual who had been adequately identified and, second, he did not construct a notional commercial group so as to justify making an order against a representative defendant. He said:

“Conceptually the relief sought in this proceeding and the relief in terms of Anton Piller orders are similar. Each involves an intrusion on privacy but is an intrusion which has been justified on the basis of the court’s equitable jurisdiction can properly be extended to meet the realities of modern commercial situations. It is an ancient maxim of the law that wherer there is a right there is a remedy: Ubi jus ibi remedium. In circumstances were it is plain that persons are infringing proprietary interests which the law recognises, or deceiving the public by way of trade in a manner which may indirectly affect the commercial interests of others, the law should, if it reasonably can, provide a remedy.” (p 499)

He then went on to describe the case as a “John and Jane Doe application” and said:

“The fact that persons cannot be identified at this stage of the proceedings is no bar to relief against persons who may be identified at a relevant time. It is not the name but the identity and identification of the infringing persons which is relevant. The identity may not be immediately established, but persons infringing will be identified by their act of infringements. Jane Doe and John Doe will be known by their works.”

Mr Justice Anderson also commented that it would be desirable for the court to consider the question of whether or not it could or should make such John and Jane Doe orders on the basis of argument from both sides. For that reason he suggested it would be appropriate to appoint an amicus curiae. However because of the urgency of the case, there was no time to appoint an amicus to help him come to his conclusion.

In much the same way, I am faced with a very urgent application today. The potential loss to the claimants may well be measured in millions of pounds and be inflicted in a very short time. As noted already, whoever is involved in trying to distribute copies of this fifth book in the Harry Potter series must know full well that what he is doing is illicit. Therefore it is necessary to decide now whether to make the order sought in the absence of full argument.

It seems to me that, ignoring the question of balance of convenience, there are at least four factors which need to be addressed before a court can grant an injunction at an interlocutory stage. First, the claimant needs to demonstrate that he has a good arguable case against the defendant. The stronger the order, no doubt the stronger that case should be. Second the order has to be in terms which clearly state what the defendant must and must not do. Third it must be possible to identify the defendant against whom the order is sought. Fourth, it will only be effective against a person who, when made aware of the terms of the order, will understand that it applies to him. There is no problem here with the first two of these requirements. On the material presented on this application, the claimants have a very strong case and the relief sought is clear. The problems, if they exist, relate to the third and fourth factors. These overlap.

An injunction granted against a defendant is effective in personam. Where possible, which will be in the overwhelming majority of cases, the order will identify the target by name. In most cases that will mean that the most ready and convenient means of identification of the defendant will be used so as to ensure the defendant knows that he is the subject of an injunction. Were somebody to be known by an alias, it would be satisfactory to sue him under his alias. Were somebody to be known only by a photograph, it seems to me it would be appropriate to sue him by reference to his photograph. If somebody can be identified clearly enough, it seems to me, that in a suitable case the court should do what it can to allow injunctive relief to be ordered against him even if it is not possible to identify him by name. If the court can be confident that the order is directed at particular wrongdoers and those assisting them and the targets would understand that the injunction is directed at them, then the third and fourth factors referred to above are met.

In fact there are many cases in which the courts grant injunctions designed to bind parties not named on the order. In some cases their names and their numbers may not be known to the court at the time the order is made. Representative orders such as that made in EMI v Kudhail is one example. Furthermore, one of, if not the, main objectives of freezing orders is to serve them on third parties, frequently not identified at the time the order is made, who are then bound by the terms of the injunctions granted. In each of these cases, no hardship is caused because there party bound by the order will have no difficulty in appreciating that the order, when served on him or brought to his attention, binds him.

If the claimants manage to serve the order sought here on the vendor, he would know that it applied to him, even if the claimants do not know his name. Similarly the injunction would be effective if brought to the attention of others assisting in the attempted distribution of the copy of this book. As Mr Justice Andersen said in Blain, the vendor and his colleagues will be known by their works and they will know that it is they who are the target of the order.

Like Mr Justice Anderson, I think it would be preferable for the issue of John Doe orders to be the subject of mature reflection, which is not possible in an application like this, which is done at great speed and without the benefit of submissions on both sides.

Nevertheless, for the reasons that I have indicated, I do not think it is outside the court’s power to grant injunctive relief against parties who are not identified by name, but who are known to exist and who will not be in any doubt that the order is directed at them.

Furthermore, if such an order is made, it seems to me it will be effective once brought to the attention, not only of the person (or persons) directly offering this stolen volume for sale, but all those, who knowing of the order, assist in attempts to sell it.

I will make the order that Mr Kitchin requests.