Imaging Orders and their relationship with Search Orders after TBD (Owen Holland) Ltd v Simons

The CA emphasised that imaging orders were often more effective than search orders in proceedings where the main concern was to preserve evidence: in an increasingly digital world, courts should proceed on the basis that, if a case for the grant of an imaging order is made out, a traditional search order should be presumed to be unnecessary unless the applicant shows the contrary. Furthermore, appropriate safeguards were necessary to protect those who were the subject of imaging orders. A standard form of imaging order would reflect the need to strike a proper balance between the rights and interests of the parties. (It was noted that the practice of search orders was placed on a much fairer and more balanced footing for respondents once a standard form of such orders was first promulgated in a 1994 practice direction.)

The facts

TBD issued proceedings against three defendants alleging that the first, S, had breached the terms of his contract of employment by disclosing trade secrets or confidential information to the second defendant company, G. Further it alleged that G and the third defendant company, O, had procured S’s breaches of contract. TBD initially obtained an interim injunction enjoining the defendants from breaching its copyright.

Some months later, having learned of a customer being approached by the defendants, TBD applied for a search order against S and G. The order was granted, including an imaging order that provided for the imaging of devices by computer experts with files to be copied for subsequent analysis.

TBD subsequently brought claims against four further defendants. Various hearings followed. After more than a year of toing and froing, the third, fourth and fifth defendants applied to strike out the claims against them on the ground that TBD had acted in breach of the search order by searching images without the defendants’ consent and using information from those searches in the proceedings. Marcus Smith J held that TBD had breached the search orders and imposed various sanctions. TBD appealed to the Court of Appeal. This appeal was heard together with an appeal by the fifth defendant concerning committal proceedings and litigation privilege.

The order

The search order was not in standard terms but “materially amended” so as to permit the imaging of the respondent’s computers, electronic devices and online data storage and authorising unspecified subsequent analysis of those forensic images. It stated (emphasis added): “…[t]he defendant must immediately give the search party effective access to the computers on the premises to include any online data storage, with all necessary passwords, to enable the computers to be searched, forensic images of the data to be taken, and access to all of the defendant’s email accounts…on which any of the listed items may be stored”. Further, the forensic images would be taken by the computer experts “for analysis by them following the completion of the search”. For its part, TBD undertook that it would not, without the permission of the court, use any information or documents obtained as a result of carrying out the order except for the purposes of the proceedings.

The use of images

During the search it was agreed that the focus should be on the preservation of the contents of the computers and electronic devices being imaged. There would then follow discussion between the parties’ solicitors, after the search, as to how practically to extract listed items from those images. Any disagreement was to be determined by the court on the return date.

Prior to the return date TBD put forward proposals for searching the images, indicating that it wished to apply a keyword search and proposing a list of key words divided into eight categories. Arnold LJ described this broad and comprehensive list as “extraordinary”.

There followed correspondence between solicitors and S, who was acting in person. S made it clear that he did not agree that the keywords should be applied. They were too broad and too generic. TBD’s solicitors simply dismissed his concerns. There was no response from solicitors acting for G and O.

Notwithstanding the earlier accommodation that the court should determine any disagreement, TBD’s solicitors instructed experts to carry out the keyword search to which S had strenuously objected. They then used some of the documents recovered to advise TBD, make applications to the court and communicate with third parties.

It was these actions that caused the application by some of the defendants to strike out the claim. Marcus Smith J found that TBD had breached the search order but that striking out the claim would be disproportionate. Instead he required TBD, among other things, to hand over the images to independent solicitors to weed out privileged and self-incriminatory material and to identify documents falling within the scope of standard disclosure. In the meantime, the proceedings were stayed.

The judgment in the CA

On appeal by TBD, Arnold LJ (with whom Newey and David Richards LJJ agreed) set out in detail the history of search orders. From this he distilled “three fundamental points”: (1) the purpose of a search order was to preserve evidence and/or property; (2) the facts justifying a search order might also justify orders for the disclosure, inspection of documents and/or provision of documents, but the two types of order were distinct, and (3) both search orders and disclosure orders must contain proper safeguards for the respondent.

He then considered the emergence of imaging orders to deal with documents held electronically. He emphasised (paragraphs 180 to 181):

“In my view, any court confronted with…an application [for a search order and imaging order] should first consider whether to grant an imaging order. If the court is prepared to grant an imaging order, then it should be presumed unless the contrary is shown that a traditional search order is unnecessary. Even if the court is prepared to grant a search order…consideration should be given to the scope of the order having regard to the imaging order.

Where an imaging order is made, it should be obvious that appropriate safeguards are required for the protection of the respondents…By contrast with search orders, no standard form of imaging order has been developed. In my view, this case demonstrates there is an urgent need for the Civil Procedure Rule Committee to promulgate a standard form of imaging order. Until such time as a standard form is available…it is incumbent upon solicitors and counsel representing applicants, and judges hearing applications, to give careful consideration to the provision of safeguards.”

Arnold LJ gave the following guidance on the safeguards to be adopted (paragraphs 192 and 193):

• Images should be kept in the safekeeping of a forensic computer expert and not searched or inspected until the return date. This is because an imaging order will generally pursue the preservation of evidence/documents and will not, without more, be a route to early disclosure. It follows that the respondent will then give disclosure in the normal way. If an applicant can show cause why there should be earlier searches of the image it must show why this is necessary on the return date.
• Any departure from the approach that, pending the return date, an imaging order should simply preserve evidence will require a very high degree of justification and must be specifically and explicitly brought to the attention of and approved by the court.
• On the return date, if a case is shown for earlier searches/inspection of forensic images, consideration must be given to the time and methodology of such disclosure/inspection.
• There should be no unilateral searching of images for or on behalf of the claimant: the methodology of any search must be either agreed between the parties or approved by the court.

• Keywords to be used in searching must be agreed between the parties or determined by the court. They should be selected with considerable care and not be too all-embracing.

Following on from the hand-down of judgment in TBD in September 2020, the topic of drafting a standard imaging order was discussed by the Civil Procedure Rule Committee at its October 2020 meeting. It was anticipated that a sub-committee might need to be formed to progress this in due course. Although the issue was intended to be brought back to the Committee as an agenda item at a subsequent meeting, it has not since been included in the agenda for any such meeting. It appears, therefore, that whilst the Civil Procedure Rule Committee has taken up the baton from the Court of Appeal in TBD, there is at present no fixed timeline when a standard form imaging order will be formulated and promulgated. In the meantime, practitioners will need to continue to have close regard to the principles set out by the Court in TBD in formulating and seeking imaging orders. 

This follows the latest in Blackstone Chambers' 2021 webinar series, ‘Employee Competition’, which is now available to watch in the Client Area. Topics included 'Imaging Orders After TBD' and 'Trial Witness Statements: Practice Direction 57AC'. The webinar panel was chaired by Jane Mulcahy QC and comprised Tom Croxford QC, Diya Sen Gupta QC and Craig Rajgopaul. You can email marketing@blackstonechambers.com to request a Client Area account if you do not already have one.