PRACTICE
Discovery
Anton Piller Orders
Application for review of Anton Piller order, to convert interim injunction into interlocutory one, for show cause order in respect of allegations of contempt of Anton Piller order against defendant Sean Eren—Plaintiff corporation offering plasma television sets for sale exclusively through Internet (e‑tailing)—Defendant Sean Eren, computer programmer, working for plaintiff as independent contractor, then as employee, until resigning to join defendant Avery Holdings Inc., which sought to go into e‑tailing business selling plasma television sets—Avery launching e‑tailing Web site one month later—Plaintiff becoming aware of this Web site and concluding text, images, compilation of materials identical to that of its own Web site—Plaintiff contacting, but to no effect, host server for Avery’s Web site in Canada to have it remove offending Web site—Avery commencing action in Ontario Superior Court of Justice against plaintiff alleging interference with contractual relations and economic interests, and plaintiff granted extension of time to file defence—In the meantime, plaintiff commencing action in Federal Court alleging breach of copyright, misuse of confidential information, breach of contractual relations—Plaintiff also seeking Anton Piller order, interim injunction—That order granted, permitting execution at three premises, allowing seizure, inspection, copying of materials concerning infringement of plaintiff’s copyrights, use of plaintiff’s confidential information— Interim injunction restraining defendants from infringing plaintiff’s copyrights, using plaintiff’s confidential information, also granted—Laptop of defendant Susan Katz delivered up, contents inspected, certain materials found— Later discovered defendant Sean Eren also in possession of computer reasonably expected to contain materials, information relating to copyright, confidential information at issue, but by time existence of this computer disclosed, information lost—Anton Piller order arising initially in Anton Piller KG v. Manufacturing Process Ltd., [1976] 1 Ch. 55 (C.A.), where Court explained such order to be given only in most exceptional circumstances—Conditions for order stated in that case adopted by Federal Court—Also, in ex parte proceeding, heavy obligation on moving party to make full, frank disclosure of relevant facts to Court—Application of conditions to case at bar—First condition, extremely strong prima facie case, not met—Plaintiff’s copyright infringement claim not demonstrating particular subject‑matter, how copyright in subject‑matter subsisting in Canada, how plaintiff asserting ownership in copyright—Plaintiff not asserting identity of work, such that it is within meaning of Copyright Act, nationality of author, place of first publication—Order giving no identification as to work(s) subject to order—No facts giving rise to presumption of copyright pleaded or put in evidence—Identity of works in which copyright asserted never clearly particularized—Materials found on defendant’s laptop not showing extremely strong prima facie case—As to misuse of plaintiff’s confidential information, Court not having jurisdiction to hear, grant relief in respect of claims as to “confidential information”—That portion of statement of claim struck out—Second condition, very serious damage to plaintiff, not shown—Any damage speculative, unproven at this stage—Third condition, real possibility evidence may be destroyed, not met as plaintiff’s case rests essentially on publicly available evidence—As to fourth condition (actually a pre‑condition), inspection caused real harm (e.g. effect of attempted execution of order at private residence leased to non‑defendant on teenager’s perception of legal process, courts, dignity of law)—Plaintiff’s evidence, submissions to Judge granting order, lacking candour for that reason—Also lacking candour because of failure to tell Judge ongoing discussions taking place between plaintiff, defendant Avery’s solicitors in context of Ontario action and that plaintiff given delay in filing defence in that actionuntil very day Anton Piller application heard—Anton Piller order vacated—As to interlocutory injunction, plaintiff failing to show irreparable harm, balance of convenience favouringdefendants—Interim injunction vacated—As to contempt, Anton Piller order was, save portion re: confidentialinformation, until that time, valid order of Court entitled to respect and to be obeyed—Prudent, honest person would have turned computer over for inspection when appropriate—For this reason, show cause order issued—Copyright Act, R.S.C., 1985, c. C‑42.
Netbored Inc. v. Avery Holdings Inc. (T‑2289‑03, 2005 FC 1405, Hughes J., order dated 14/10/05, 41 pp.)