Guest Post: Can civil courts appoint technical experts in software piracy suits?

Microsoft Corporation has recently started filing law-suits for copyright infringement before the Madras High Court. This is probably the first time that Microsoft has moved out of its traditional haunt which is the Delhi High Court. The modus operandi, which we have discussed in previous posts over here and here appears to remain the same. It remains to be seen whether the Madras High Court repeats the errors of the Delhi High Court. However the focus of this guest post by Arun Mohan, who has sent us both these orders, available over here and here, is on the legality of appointing technical experts in the software piracy suits filed by companies such as Microsoft Corporation. This post is a must read for all those of you interested in the idea and execution of Anton Piller orders. 

Can civil courts in India appoint technical experts in software piracy suits? 
By Arun C. Mohan,
Advocate, Madras High Court

The Madras High Court has granted an exparte order of injunction to Microsoft on 1st February 2012 in CS No 47/2012 to prevent the defendant from using pirated versions of Microsoft windows/office. There was also an exparte order for appointment of an advocate commissioner to visit the premises of the defendant, and to make note of the systems allegedly bearing infringing copies of Microsoft software. The defendant is one M/s Flutronics, Chennai which is engaged in the sale of various computer systems. Microsoft claimed that the defendant was selling laptops having pirated versions of MS Windows and Office, and made a “trap purchase” for the same. Image from here.
I have been keenly reading the various articles on Anton Pillar orders, and the critique thereof in SpicyIP. The focus of this post is specifically upon the “technical experts” who accompany such advocate commissioners to the defendant’s premises. 
Past incidents shows the experience of defendants in case of such orders. Their premises are visited by the advocate commissioner, along with a team of anywhere from 5-50 “technical experts”. The “technical experts” access the systems of the defendant, take action such as sealing or seizing hard drives, state the same to the advocate commissioner, who in turn files a report before the Court. 
My observation in such cases in Delhi, and now in Chennai has been that the advocate commissioner rarely possesses technical skills to ascertain acts of piracy or to test the veracity of the technical expert’s statements/conclusions. Further, since the appointment is of a singular person, it is usually not possibly to fully assess the extent and nature of piracy of an entire company by an individual. 

This is where the role of the “technical experts” kicks in. They claim to aid and assist the advocate commissioner, and provide necessary technical support. However, this in practise seems to suffer gross lacunaes. 

My reading of the CPC suggests that there is no role for a technical expert, to accompany such advocate commissioner. This is aggravated by the fact that such technical experts are often on the payroll of the plaintiff, and therefore an unbiased report/support to the advocate commissioner cannot be presumed. There is also the problem of logistics. As the advocate commissioner cannot physically access hundreds of systems, he/she has to take the word of the technical expert to such effect. Experience also shows that the identity/numbers of such technical experts is never disclosed in courts, and the report before the court often belies the extent of involvement by the technical experts. In such situation, presumably the advocate commissioner cannot make an impartial observation, as it is colored by persons who are being paid by the plaintiff. The presumption of bias in the support offered to the advocate commissioner seems to be rather strong. Since the technical experts remain unnamed, they can never be cross-examined by the defendant at the time of trial either. This poses a gaping hole in the evidence, and runs prejudicial to the defendant atleast in the interlocutory stage. The question is also left open as to whether the court warrant granted to the advocate commissioner to enter the defendant’s premises and carry out appropriate action be extended to even the technical experts. If the answer is negative, their entry becomes an unauthorized entry and also amounts to illegal access to systems as per the IT Act. 

There are also a host of privacy violation issues as under the guise of “technical experts”, the plaintiff’s employees/agents have unlimited access to a third party’s system. Such access is not monitored, and if sought to be curbed by the defendant, there is omnipresent threat of a “court order”. Since there is only a singular advocate commissioner, he/she cannot monitor as to what is accessed by the technical experts. 

As possible solution, could be to follow the American model of sending a neutral forensics firm along with a court bailiff. The obvious fault in this is the lack of such independent forensic firms in India, atleast to the best of my knowledge. My primary grouse remains the obvious bias, and often an approach of bulling defendants, which is caused by the presence of such technical experts. As an aside, the plaintiff in such cases lays down how it had set a “trap purchase”. The plaintiff demonstrates the purchase invoice of the laptop having the pirated software, report of the investigator and the report by an independent technical audit firm as to the presence of such pirated software. The most obvious error to me, seemed to be failure to file the infringing laptop as an material object, or atleast demonstrate it before the Learned Judge. Would that not be the true test to ascertain if there is indeed pirated copies of the software, and confirm the veracity of the various affidavits filed in the “trap purchase”? Even a reading of the various orders of the DHC, suggests failure to show the actual hardware carrying the allegedly infringing software, and evidence of piracy is based on the report given by the plaintiff by an independent firm to such effect. The big question is, is it sufficient?
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4 thoughts on “Guest Post: Can civil courts appoint technical experts in software piracy suits?”

  1. Dear Sir,
    Your legal points for the technical assistants is very valid. But here in delhi specially in District courts if a court commissioner is appointed, he is inavriably asked on what assisatnce or logistics will be required. The appointed commissioner places before the court his specific requirements including the technical or expertise personnel required by him. The court then goes ahead to nominate such persons after getting a no objection from both plantiff and defendent. Or some times it independently suggests randomly the names suggested by both defendents and palintiff. The element of bias or incidental interest is thus minimised
    Patent agent

  2. Very nice to point out the above the kind of anton pillar order passed by Madras High Court. The doubt raised by the author is also well found.

    I want to point out that the Hon’ble Delhi High Court in the cases of Microsoft wherein the court was dealing with 4 suits against the 4 different sets of Defendant and none of them was from Delhi. The suit was filed on the basis of suspicion of infringement of Copyright of plaintiff. The Hon’ble Court appointed the local commissioner subject to deposit of Rs. 2 lakhs by plaintiff towards security to be paid to the defendants in case the court found that the plaintiff instituted false suit in that case the defendant can be compensated. The court had further stated that the court can not act as an investigation agency to a party.

    The court appointed the local commissioner with the direction for visiting premises of defendants along with a technical expert who shall prepare mirror images of the hard disk of the computer of defendant. Immediately thereafter the mirror images shall be sealed by the local commissioner and to be deposited in the court. The court had further directed that the mirror images will be inspect by the technical expert of the plaintiff in presence of representative of the defendant in the court and plaintiff shall prepare the list of software being used and found on hard disk. The court further directed an affidavit to be filed by some responsible officer of the plaintiff who shall take personally liability to suffer consequence in case the affidavit is found false. The above safe guards are highly appreciated and I think that the courts should consider more such safe guards apart from the above. That I am saying because in the same case the same High Court has further stated as under:

    “Once an ex parte injunction is granted by the court, getting and ex parte injunction vacated or a decision on the application on merits by the court becomes Herculean task for the other party. In those cases where computers are sealed adopting a black mailing tactics by plaintiff and defendant, in order to restart their business and lesson their losses, start succumbing to pressure of plaintiff.”
    Above all, in case the plaintiff manages to file an application for alleged contempt against the defendant, then it becomes more difficult for the defendant to have the matter argued and then the blackmailing attitude of the plaintiffs is aggravated. The provisions of Rule 3 (A) of order 39 as in fact being rendered as a useless provisions has I have not seen even a single case bear the application for granted of interim injunction, were the ex perte add interim injunction order has been passed, has been disposed within period of 30 days from the date of granted of ex perte add interim injunction and the court seldom records the reason of its in availability to dispose of the application within 30 days. This is continuing in spite of the Hon’ble Supreme Court having dealt with this seriously.

    In the aforesaid circumstance my opinion is that the ex perte injunction should be granted only in compelling circumstance and in case any application by defendant is made within a short period for the vacating the ex perte injunction, the court should hear both the applications immediately and render justice.

  3. I do not agree with Mr. R. K. Jain in his views. He has stated that in Delhi District Court when court commissioner was appointed, they are invariably asked and what assistant or logistic will be required by the local commissioner. What I understand is that perhaps Mr. R. K. Jain is referring to some patent infringement matter. Besides what I also understand is that he is talking about a court commissioner being appointed for the purpose of recording evidence of the parties. This I am saying because Mr. Jain says that the court then after getting no objection from both plaintiff and defendant nominates such technical person.

    In any case the court trying the suit for infringement of patent has power under Section 115 to appoint independents scientific advisors to assist the court or to enquiry and report upon any question of fact or opinion (not involving for question to interpretation law) as the court may formulate for the purpose of deciding the case.

    The issue raised in the present blog is with respect to the Copyright infringement matter and not a patent infringement matter. Besides it also does not refer to appointment of any court commissioner for recording evidence of party but appointment of local commissioner for collecting evidence of infringement by visiting the premises of the alleged infringers and that too at the ex parte stage

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