Judgments

A-908-97

A-909-97

Glaxo Wellcome PLC (Appellant)

v.

The Minister of National Revenue (Respondent)

Indexed as: Glaxo Wellcome PLCv. M.N.R. (C.A.)

Court of Appeal, Stone, Létourneau and Robertson JJ.A."Ottawa, March 25; June 17, 1998.

Equity — Equitable remedy of bill of discovery — Form of pre-action discovery — Whether available in F.C.T.D. — Ancient remedy of renewed interest since 1974 House of Lords decision in Norwich Pharmacal Co. v. Customs and Excise Comrs. — Enables person injured by wrongdoing to bring action to discover name of wrongdoer — As equitable remedy is discretionary in nature — Considerations in determining whether to grant — Must have bona fide claim against alleged wrongdoer — Not issued against disinterested bystander — Person from whom discovery sought must be only information source — Necessity for balancing public interests in favour of, against disclosure — Jurisdictions where remedy recognized since Norwich Pharmacal — Federal Court is court of law, equity — Court not dissuaded from recognizing bill of discovery as remedy because of novelty in Canadian jurisprudence — Case at bar involving overlapping of legislation, rules of equity — Necessity for determining legislative intent — Application of principles in Norwich Pharmacal to instant case — Whether courts of equity can compel Crown to submit to discovery not settled by caselaw — In absence of binding authority, Crown not granted immunity.

Federal Court jurisdiction — Trial Division — Equitable bill of discovery permitting Court, exercising equitable jurisdiction, in order to discover name of person responsible for damage to plaintiff, to order discovery of person against whom applicant for bill of discovery has no cause of action and not party to contemplated litigation — Equitable jurisdiction in Court to grant bill of discovery to patent owner to obtain from MNR names of importers allegedly importing drugs into Canada in violation of patent rights.

Practice — Discovery — Production of documents — Equitable bill of discovery — Remedy of ancient origin permitting court, acting through equitable jurisdiction, in order to discover name of person responsible for damage to plaintiff, to order discovery against person against whom applicant for bill of discovery has no cause of action and not party to contemplated action — Application of House of Lords decision in Norwich Pharmacal Co. v. Customs and Excise Comrs. where remedy examined, threshold requirements defined — Where drugs imported into Canada allegedly in violation of patent rights, patent owner may obtain names of importers from MNR by means of equitable bill of discovery.

Customs and Excise — Customs Act — Practice — Decision under Customs Act, s. 108 concerning request for information (names of importers allegedly importing drug into Canada in violation of appellant's patent rights) obtained under Act matter within discretion of Minister — In judicial review of Minister's decision, no basis to interfere with respondent's exercise of discretion where exercised in good faith, in accordance with principles of natural justice and relying on relevant considerations — Herein, no evidence of fettering of discretion or of irrelevant considerations.

Crown — Prerogatives — Crown's common law prerogative against discovery not overriding equitable remedy of bill of discovery — Crown's immunity from discovery not absolute and has been abridged by statute both federally and provincially — Not clear Crown prerogative at common law overriding exceptional equitable remedy of bill of discovery — In absence of binding authority that Crown immunity from disclosure extending to exercise of Court's equitable jurisdiction, should not be considered as doing so.

Based on reports from Statistics Canada, the appellant learned that approximately 68 000 kg of ranitidine hydrochloride (RHCL), for which it holds two Canadian patents, were imported into Canada by companies other than itself or its compulsory licensees. The appellant was concerned that its rights under section 42 of the Patent Act to make, construct and use its invention and sell it to others for use have been and continue to be violated. Furthermore, the appellant believed that the extent of the infringements could only be ascertained by obtaining the names of the importers. After an attempt to obtain that information under the Access to Information Act failed, the appellant applied directly to the respondent under subsection 108(1) of the Customs Act. The respondent rejected the application, citing the necessity of respecting the expectation of confidentiality on the part of those, including importers, who furnish information to the Minister.

This was an appeal from two orders of the Trial Division which rejected the appellant's applications to obtain the names of the importers pursuant to subsection 108(1) of the Customs Act or by way of a bill of discovery pursuant to the Court's equitable jurisdiction.

Held, the appeal should be allowed.

The application for judicial review

The Minister's authority under subsection 108(1) of the Customs Act to disclose information collected pursuant to the Act to any person being discretionary in nature, a reviewing court is therefore restricted to considering whether the Minister exercised his discretion in good faith, in accordance with the principles of natural justice and whether he relied on considerations which are relevant to the Act's purposes.

The appellant submitted that the respondent fettered his discretion by blindly following departmental guidelines and that his decision was based on irrelevant considerations, including the availability of other methods of obtaining the names of the importers. On the facts, however, the respondent did not simply apply a blanket policy of non-disclosure, but rather undertook a detailed review of the appellant's information request and chose to exercise his discretion in favour of preserving the confidentiality of the importers' identity. The Motions Judge's did not err in concluding that there was no basis for interfering with the respondent's exercise of discretion.

The equitable bill of discovery

The availability in the Trial Division of the equitable bill of discovery was a particularly novel issue. This remedy, of ancient origin, permits a court, acting through its equitable jurisdiction, to order discovery of a person against whom the applicant for the bill of discovery has no cause of action and who is not a party to contemplated litigation. It enables a person, who has been injured by wrongdoing, to bring an action to discover the name of the wrongdoer. The appellant relied heavily upon the recent House of Lords decision in Norwich Pharmacal Co. v. Customs and Excise, where the facts were extremely similar to those in the present appeal and where this remedy received renewed interest. Although the applicable legislative provisions did not authorize the Commissioners of Customs and Excise to disclose the names of importers, the House of Lords concluded that the statutory scheme did not forbid the Court from doing so. The House of Lords established threshold requirements for obtaining a bill of discovery: the applicants must have a bona fide claim against the alleged wrongdoers; it may not be issued against a mere witness or disinterested bystander to the alleged misconduct. Furthermore, the person against whom discovery is sought must be the only practical source of information available to the appellants. Then, there must be a balancing of the public interests both in favour and against disclosure.

A preliminary question was whether the Court had jurisdiction to grant relief by way of a bill of discovery. While neither the Federal Court Act nor the Federal Court Rules in effect at the time of the applicant's application contained a provision which specifically permitted pre-action discovery, this was not an obstacle to granting that equitable remedy. In Reekie v. Messervey, it was stated that "as a general principle, the rules of procedure should be the servant of substantive rights and not the master". Further, the case law indicated that as a court of equity, this Court was empowered to grant equitable relief in matters over which it otherwise had jurisdiction, as was the case herein. And it should not be dissuaded from recognizing the bill of discovery as a remedy simply because of its novelty in Canadian jurisprudence. In conclusion, this Court possessed the equitable jurisdiction to grant a bill of discovery. What this appeal ultimately turned on was whether the equitable bill of discovery was appropriate in the circumstances of the case.

The present appeal involved an overlapping of legislation and the rules of equity. The question that arose was whether granting the equitable bill of discovery would be contrary to the intention of Parliament as expressed in subsection 108(1) (which conferred on the Minister the discretion to release information collected pursuant to the Act) and whether it would usurp the respondent's decision-making power. In a case of overlap between statute-based and equitable remedies, the analysis entails an interpretation of the applicable statutory scheme in order to determine the legislature's intention. In the present case, section 107 of the Customs Act specifically barred the communication of information gathered pursuant to the Act and indicated that the information should be kept confidential. Then section 108 contained several exceptions to that prohibition and gave the Minister the discretion to determine which other persons may be granted disclosure. However, the fact that Parliament has assigned this role to the Minister did not mean that it had precluded the Court from intervening in matters of disclosure other than by way of judicial review.

The equitable bill of discovery was a remedy which was within the Court's jurisdiction to award and which was available to the appellant in the present appeal if it otherwise satisfied the conditions for granting such relief.

Applying the relevant principles established in Norwich Pharmacal, the appellant has satisfied the threshold requirement for a bill of discovery in that it has a bona fide or legitimate claim against those who are importing RHCL into the country. The next question was whether the information could be obtained from another source. Contrary to what the Motions Judge has found, hiring a private investigator was not considered an effective method by which to obtain the identity of the importers. Furthermore, while the complaint and judicial review procedures under the Access to Information Act remained open to the appellant to pursue, the efficacy of this source of information was doubtful.

The right of inspection and report under paragraph 7 of the licence agreements would not, given the information obtainable thereby, be an effective method by which the appellant may obtain the identity of those responsible for importing RHCL into Canada.

It then becomes necessary to balance the public interest in preserving the confidentiality of the importers' names against the public interest in the proper administration of justice. Since the names of importers are likely to pass through many hands before reaching those of customs officials, it was not reasonable to regard the identity of importers as particularly sensitive information. In the circumstances of this case, the public interest in ensuring that the appellant was able to pursue in the courts those who have allegedly violated its patents rights outweighed the public interest in maintaining the confidentiality of the importers' names.

Crown prerogative against discovery

The Crown prerogative against discovery exists at common law. It was not clear, therefore, that a Crown prerogative which exists at common law overrides the exceptional equitable remedy of a bill of discovery. In the absence of binding authority that the Crown immunity from disclosure extends to the exercise of the Court's equitable jurisdiction, it should not be considered as doing so.

This being a novel case, the remedy sought, exceptional, and the Minister, innocent of any wrongdoing, refusing disclosure in the absence of a court order was justified and the Minister should have his reasonable costs of the discovery.

statutes and regulations judicially considered

Access to Information Act, R.S.C., 1985, c. A-1, ss. 24(1), 30(1), 41.

Civil Procedure Rules, R. 18.02(c) (N.S.).

Customs Act, R.S.C., 1985 (2nd Supp.), c. 1, ss. 107 (as am. by S.C. 1995, c. 41, s. 27), 108 (as am. idem, s. 28).

Family Law Act, 1986, S.O. 1986, c. 4.

Federal Court Act, R.S.C., 1985, c. F-7, s. 3.

Federal Court Rules, C.R.C., c. 663, RR. 5, 466.3 (as enacted by SOR/90-846, s. 16; 92-726, s. 4), 477.

Federal Court Rules, 1998, SOR/98-106, RR. 224(1)(d), 237(2).

Finance Act 1967 (U.K.), 1967, c. 54, s. 3.

Patent Act, R.S.C., 1985, c. P-4, s. 42 (as am. by R.S.C., 1985 (3rd Supp.), c. 33, s. 16).

Rules of Court, R. 1802(1)(c) (P.E.I.).

cases judicially considered

applied:

Norwich Pharmacal Co. v. Customs and Excise Comrs., [1974] A.C. 133 (H.L.); Maple Lodge Farms Ltd. v. Government of Canada, [1982] 2 S.C.R. 2; (1982), 137 D.L.R. (3d) 558; 44 N.R. 354; affg Maple Lodge Farms Ltd. v. R., [1981] 1 F.C. 500; (1980), 114 D.L.R. (3d) 634; 42 N.R. 312 (C.A.); Dawkins v. Canada (Minister of Employment and Immigration), [1992] 1 F.C. 639; (1991), 45 F.T.R. 198 (T.D.); Reekie v. Messervey, [1990] 1 S.C.R. 219; (1990), 66 D.L.R. (4th) 765; [1990] 3 W.W.R. 673; 43 B.C.L.R. (2d) 145; 39 C.P.C. (2d) 1; 104 N.R. 387; Teledyne Indust. Ltd. v. Lido Indust. Products Ltd. (1982), 31 C.P.C. 285; 68 C.P.R. (2d) 204 (F.C.T.D.); Canada (Minister of Citizenship and Immigration) v. Tobiass, [1997] 3 S.C.R. 391; (1997), 151 D.L.R. (4th) 119; 1 Admin. L.R. (3d) 1; 118 C.C.C. (3d) 443; 14 C.P.C. (4th) 1; 10 C.R. (5th) 163; 40 Imm. L.R. (2d) 23; 218 N.R. 81; Visx Inc. v. Nidek Co. (1996), 72 C.P.R. (3d) 19; 209 N.R. 342 (F.C.A.).

distinguished:

Crompton (Alfred) Amusement Machines Ltd. v. Customs and Excise Comrs. (No. 2), [1974] A.C. 405 (H.L.); Attorney General (Que.) and Keable v. Attorney General (Can.) et al., [1979] 1 S.C.R. 218; (1979), 90 D.L.R. (3d) 161; 43 C.C.C. (2d) 49; 6 C.R. (3d) 145; 24 N.R. 1.

considered:

Johnston and Frank Johnston's Restaurants Limited, Re (1980), 33 Nfld. & P.E.I.R. 341 (P.E.I.C.A.); Rawluk v. Rawluk, [1990] 1 S.C.R. 70; (1990), 71 O.R. (2d) 480; 65 D.L.R. (4th) 161; 36 E.T.R. 1; 103 N.R. 321; 38 O.A.C. 81; 23 R.F.L. (3d) 337; Zaidan Group Ltd. v. London (City) (1990), 71 O.R. (2d) 65; 64 D.L.R. (4th) 514; 35 E.T.R. 162; 47 M.P.L.R. 1; 36 O.A.C. 384 (C.A.); affd [1991] 3 S.C.R. 593; (1991), 5 O.R. (3d) 384; 85 D.L.R. (4th) 448; 44 E.T.R. 193; 7 M.P.L.R. (2d) 235; 129 N.R. 227; 50 O.A.C. 1; Canada Deposit Insurance Corp. v. Code (1988), 84 A.R. 241; 49 D.L.R. (4th) 57; [1988] 3 W.W.R. 481; 57 Alta. L.R. (2d) 289 (C.A.); Attorney-General v. London (Corporation of) (1850), 2 Mac. & G. 247; 42 E.R. 95 (Ch.).

referred to:

British Steel Corpn v Granada Television Ltd, [1981] 1 All ER 417 (C.A.); Bankers Trust Co v Shapira, [1980] 3 All ER 353 (C.A.); Wilson v. Church (1878), 9 Ch. D. 552 (C.A.); MacRae v. Lecompte; The Queen in right of Ontario, Third Party (1983), 143 D.L.R. (3d) 219 (Ont. H.C.); RCA Corporation v Reddingtons Rare Records, [1975] 1 All ER 38 (Ch. D.); X Ltd. v. Morgan-Grampian (Publishers) Ltd., [1991] 1 A.C. 1 (H.L.); Pressed Steel Car Co. v. Union Pac. R. Co., 240 F. 135 (S.D.N.Y. 1917); Sinclair Refining Co. v. Jenkins Pet. Process Co., 289 U.S. 717 (1932); Comeau, Re (1986), 77 N.S.R. (2d) 57; 191 A.P.R. 57 (S.C.T.D.); Leahy v. Dr. A.B. (1992), 113 N.S.R. (2d) 417; 309 A.P.R. 417; 8 C.P.C. (3d) 260 (S.C.T.D.); Deare v. Attorney-General (1835), 1 Y. & C. Ex. 197; 160 E.R. 80 (Ex. Div.).

authors cited

Baker, P. V. and P. J. Langan. Snell's Equity, 29th ed. London: Sweet & Maxwell, 1990.

Barron R. F. "Existence and Nature of Cause of Action for Equitable Bill of Discovery" (1996), 37 ALR5th 645.

Halsbury's Laws of England, vol. 13, 4th ed. London: Butterworths, 1975.

Halsbury's Laws of England, vol. 16, 4th ed. reissue. London: Butterworths, 1992.

Hogg, Peter W. Liability of the Crown, 2nd ed. Toronto: Carswell, 1989.

Hughes, R. T. and J. H. Woodley. Hughes and Woodley on Patents. Toronto: Butterworths, 1984.

Lordon, Paul. Crown Law. Toronto: Butterworths, 1991.

McLachlin, Hon. Beverley M. "The Place of Equity and Equitable Doctrines in the Contemporary Common Law World: A Canadian Perspective" in D. W. M. Waters (ed.), Equity, Fiduciaries and Trusts, 1993 . Toronto: Carswell, 1993.

Mitford, John F. A Treatise on the Pleadings in Suits in the Court of Chancery by English Bill, 5th ed. by J. W. Smith. London: Stevens and Norton, 1847.

Story, Joseph. Commentaries on Equity Jurisprudence as Administered in England and America, 13th ed. Boston: Little, Brown and Company, 1886.

Sullivan, Ruth. Driedger on the Construction of Statutes, 3rd ed. Toronto: Butterworths, 1994.

Wigram, James, Sir. Points in the Law of Discovery, 2nd ed. London: Maxwell, 1840.

APPEALS from Trial Division orders (Glaxo Wellcome PLC v. Canada (Minister of National Revenue — M.N.R.), [1997] F.C.J. No. 1636 (T.D.) (QL); Glaxo Wellcome Plc v. M.N.R. (1997), 77 C.P.R. (3d) 136 (F.C.T.D.)) rejecting the appellant's applications under subsection 108(1) of the Customs Act and by way of an equitable bill of discovery to obtain the names of the importers allegedly importing drug into Canada in violation of appellant's patent rights. The appeal concerning subsection 108(1) of the Customs Act should be dismissed. The appeal concerning the equitable bill of discovery should be allowed.

appearances:

Simon V. Potter, Brenda C. Swick-Martin and Sally A. Gomery for appellant.

Christopher M. Rupar and Janice Palmer for respondent.

solicitors of record:

Ogilvy Renault, Ottawa, for appellant.

Deputy Attorney General of Canada for respondent.

The following are the reasons for judgment rendered in English by

Stone J.A.: These appeals are from two orders of the Trial Division dated November 27, 1997, which rejected the appellant's applications to obtain the names of the importers of shipments of the drug ranitidine hydrochloride (RHCL) into Canada. The first order [[1997] F.C.J. No. 1636 (T.D.) (QL)] dismissed the appellant's application for judicial review of the respondent's refusal to release the names of those importers pursuant to subsection 108(1) [as am. by S.C. 1995, c. 41, s. 28] of the Customs Act, R.S.C., 1985 (2nd Supp.), c. 1 (the Act). By the second order [(1997), 77 C.P.R. (3d) 136 (F.C.T.D.)], the Motions Judge denied the appellant's request to obtain the same information from the respondent by way of a bill of discovery pursuant to the Court's equitable jurisdiction.

Before examining the issues raised in these appeals, I will briefly summarize the relevant facts as well as the reasons of the Motions Judge for the orders under appeal.

Background facts

The appellant is one of the world's largest pharmaceutical companies. It holds two Canadian patents for RHCL. Patent No. 1 099 268, which expired on April 14, 1998, was directed at protecting the appellant's proprietary interest in ranitidine base and all forms of its hydrochloric salt (Form 1 RHCL). Patent No. 1 202 638, which expires on April 1, 2003, is said to protect a second and previously unknown crystalline form of ranitidine hydrochloride (Form 2 RHCL). The validity of these patents is not in dispute. The patented drug was first marketed by the appellant in 1981 under the trade-mark "Zantac". By 1987 "Zantac" had become the leading anti-ulcerant product on the market and the world's most widely prescribed medicine.

The Patent Act, R.S.C., 1985, c. P-4 as amended by R.S.C., 1985 (3rd Supp.), c. 33, as it stood prior to March 12, 1993, established a system of compulsory licensing of patented medicines. Such licences would allow generic pharmaceutical companies to import and market the patented drug for a determined period of time and at a fixed rate of royalty. Six companies hold compulsory licences from the appellant permitting them to import into and sell Form 1 RHCL in Canada.¹ No such licences have been issued for the importation into and sale in Canada of Form 2 RHCL.

Based on reports from Statistics Canada, the appellant learned that approximately 68 000 kg of RHCL were imported into Canada between January 1, 1995 and September 30, 1996 by companies other than the appellant and its compulsory licensees. The Statistics Canada reports did not identify any of the importers. While most of these allegedly unauthorized imports pertained to Form 1 RHCL, the appellant became aware that approximately 5 150 kg of Form 2 RHCL was imported into Canada in 1996.

The appellant is concerned that its rights under section 42 of the Patent Act as amended by R.S.C., 1985 (3rd Supp.), c. 33, s. 16, to make, construct and use its invention and sell it to others for use have been and continue to be violated. Furthermore, the appellant believes that the extent of the infringements can only be ascertained if it is provided with the names of the importers of the shipments of RHCL which were revealed in the Statistics Canada reports.

On July 15, 1996, the appellant made a request pursuant to the Access to Information Act, R.S.C., 1985, c. A-1, to obtain information regarding the sale, importation or exportation of RHCL and two other pharmaceutical products (zidovudine and acyclovir). The appellant's request was denied on October 1, 1996, on the ground that the information is exempt from disclosure pursuant to subsection 24(1) of the Access to Information Act.² The appellant declined initiating a complaint to the Information Commissioner pursuant to subsection 30(1) of that Act. Instead, by letter dated February 25, 1997, the appellant applied directly to the respondent under subsection 108(1) of the Act for the names of those who imported RHCL into Canada in 1995 and 1996.³

By letter dated July 11, 1997, the respondent rejected the appellant's application on the basis of the confidentiality of the information sought. The following paragraphs of that letter contain the crux of the respondent's reasons for denying the appellant's request:

Departmental officials have now completed their review of your request. This involved a complete tariff classification review of the over 700 entries covered by the Statistics Canada report you provided to me at our meeting. They also examined available jurisprudence covering requests similar to the one you have made. After having reviewed and carefully considered their report, as well as the cogent arguments you made on behalf of your client, it is the Department's decision that the information you have requested should not be released to your client.

Information given to Revenue Canada for the purposes of Customs legislation is by statute to be held in confidence by the Department. Revenue Canada cannot cede its responsibility to guarantee confidentiality of importers' information. The Department cannot jeopardize its confidential relationship with the importing community in order to assist a private company in its pursuit of a civil action. Intellectual property right is a private right and the responsibility of protecting that right remains squarely on the shoulders of the right holder. Glaxo has the means and the statutory provisions at its disposal to take action against licensees, or anyone else, who is infringing its patent rights without the necessity of compromising confidentiality provisions of the Customs Act.

Confidentiality is an extremely sensitive and highly contentious issue. Not only does the Department obtain information for customs purposes, it also obtains information on behalf of many other government departments. The Department must respect the expectations of the donors of such information that it will not be used for a purpose other than that for which it was obtained. It should be noted that Glaxo has already been denied this information under the Access to Information Act. Protection against patent infringement is not provided for anywhere in customs legislation.⁴

On July 16, 1997, the appellant brought an application for judicial review of this decision. The grounds for the application as set forth in the originating notice of motion include the following:

5. Except through the disclosure of the identities of the importers of certain shipments of ranitidine hydrochloride into Canada in 1995 and 1996, Glaxo has no other reasonable means by which to identify the party or parties who have infringed its patent rights, and to act to defend its propriety interests.

6. The Minister has already disclosed to Glaxo detailed information regarding importation of ranitidine hydrochloride including, on a transaction-by-transaction basis, volume and value and origin, but has withheld the importers' identities which would allow Glaxo to protect the rights which have been and are clearly being violated.

7. It is in the interests of justice that Glaxo not be forced to sue blindly in order to stop the infringement, and that any eventual suit be directed only against parties whose importations appear prima facie to constitute an infringement, and that that suit be for no more than those importations justify.

8. It is in the interests of justice that the information easily available from the records of the Respondent, regarding clear breaches of the law and of proprietary rights not be withheld from the party aggrieved, Glaxo.⁵

In paragraph 19 of the affidavit of Laurence D. Jenkins which accompanied the appellant's originating notice of motion, Mr. Jenkins emphasized the considerable financial loss to the appellant which the unauthorized importation represents:

19. Glaxo's research therefore indicates 70,650 kg of ranitidine hydrochloride has been imported into Canada between January 1, 1995, and September 30, 1996 for which no legal explanation exists. Tableted in the U.S. market prior to U.S. patent expiry, at current U.S. prices, this quantity of bulk material would have a net sales market value of approximately $588 million (U.S.). Tableted in the Canadian generic market, at current Canadian prices, this quantity of bulk material would have a net sales market value of approximately $83 million (Cdn.) of which Glaxo would receive a 4% royalty amounting after tax to $3 million (Cdn.).⁶

The appellant applied twelve days later for an order permitting it to examine the respondent on discovery in order to obtain the identity of the importers of shipments of RHCL into Canada in 1995, 1996 and 1997. This application was likewise supported by the affidavit of Mr. Jenkins. The reasons for which discovery is sought are virtually identical to those articulated by the appellant in its application for judicial review. In essence, the appellant contends that its patent rights are being infringed and that the respondent is the only "reasonable means" by which to identify the suspected wrongdoers and act to defend its proprietary interests. Paragraphs 10 and 11 of the appellant's originating notice of motion state that the bill of discovery is sought pursuant to the Court's equitable jurisdiction, as well as Rules 5, 466.3 [as enacted by SOR/90-846, s. 16; 92-726, s. 4] and 477 of the Federal Court Rules [C.R.C., 663].⁷

The Motions Judge heard both applications together. With respect to the application for judicial review, the principal issue before the Motions Judge was whether the respondent fettered his discretion by simply adhering to departmental guidelines and failing to consider the facts of the case before him. The appellant also contended that the respondent misinterpreted section 108 of the Act and relied on irrelevant considerations in rendering his decision. The Motions Judge was of the view that while the respondent followed the policy guidelines set out in "Memorandum D1-16-1"⁸ and cited them in his letter of July 11, 1997 as the predominant reason for rejecting the appellant's request, this did not amount to a fettering of his discretion. On the contrary, the Motions Judge observed, at paragraph 5 of his reasons for judgment that the respondent "put much time and effort into reviewing the individual merits of the request." The Motions Judge found that the appellant was given an ample opportunity to present its case and that the respondent and his staff were attentive to the particular circumstances of the appellant's request. Among the steps which the respondent took in reviewing the appellant's application were the following, which the Motions Judge narrated, at paragraph 5 of his reasons:

Representatives of the applicant and respondent met to discuss the request. Following the meeting, action was taken to determine the accuracy of the Statistics Canada information obtained by the applicant. The applicant had mentioned that the unaccounted for importations of RHCL may affect the health of Canadians and the respondent immediately turned those concerns over to Health Canada. The respondent asked for further assistance in reviewing the applicant's request in the form of an independent audit of the licensees of the applicant but the applicant did not assist in this manner. The respondent contacted the applicant to seek additional information with respect to "new information" alleged by the applicant. The respondent also sought opinions of legal issues brought forward by the applicant's request.

In the Motions Judge's view, the respondent's letter of July 11, 1997 when read as a whole demonstrates that he carefully considered the appellant's arguments for disclosure and did not adhere slavishly to the guidelines. Furthermore, the Motions Judge found that the respondent took into account relevant considerations in making his decision, including the existence of other available avenues of obtaining the names of the importers and the public interest in seeing that justice is done.

With respect to the application for an equitable bill of discovery, the Motions Judge accurately observed that the Court has never granted this type of remedy before. He was of the opinion that the basic requirement for granting such equitable relief is the applicant's inability to obtain the desired information through other means, whether they be court procedures or sources personal to the applicant. In his view, the appellant had not yet exhausted all of the other avenues of recourse available to it. He noted for example that while the appellant's information request pursuant to the Access to Information Act was refused, the appellant had not yet invoked the complaint and judicial review procedures which that statute provides. Moreover, the Motions Judge stated that the appellant could have engaged the services of a private investigator to discover the identity of the importers, although he acknowledged that this method had produced "unsatisfactory results" in the past. The Motions Judge also maintained that the appellant possesses the right pursuant to its compulsory licences to require that the licensees submit to an independent audit, and that the appellant had not yet pursued this avenue of redress. Last, he noted that the appellant has already ascertained the identity of one potential infringer, Torpharm Inc., on its own without the respondent's assistance.

During the hearing before the Motions Judge as in the present appeal, the appellant relied heavily on the decision of the House of Lords in Norwich Pharmacal Co. v. Customs and Excise Comrs., [1974] A.C. 133. However, the Motions Judge was of the view at page 138 of his reasons that Norwich Pharmacal, supra, was distinguishable from the case before him because the Commissioners in that case were "not granted the discretion to make public the information received by [them] and, accordingly, it was in the Court's discretion." He concluded that the principles enunciated by the House of Lords in Crompton (Alfred) Amusement Machines Ltd. v. Customs and Excise Comrs. (No. 2) , [1974] A.C. 405, were applicable to the facts before him. To grant an equitable bill of discovery in the circumstances of the appellant's case would, he maintained at page 139 of his reasons, effectively usurp the respondent's statutory role:

The Minister is performing his statutory duty in collecting this information and, unlike in Great Britain, the Minister is the person the Canadian Parliament has designated to decide if the information should be released. His decision is subject to judicial review. By granting the bill of discovery, I would be ignoring Parliament's view in this area.

Analysis

Both of these appeals concern section 108 [ss. 108(2) (as am. by S.C. 1995, c. 41, s. 28), (3) (as am. idem)] of the Act, which provides several exceptions to the general prohibition in section 107 [as am. idem, s. 27] against disclosing information gathered pursuant to the Act. Sections 107 and 108 read in part as follows:

107. (1) Except as authorized by section 108, no official or authorized person shall

(a) knowingly communicate or knowingly allow to be communicated to any person any information obtained by or on behalf of the Minister for the purposes of this Act or the Customs Tariff or by an authorized person for the purpose of carrying out an agreement made under subsection 147.1(3);

(b) knowingly allow any person to inspect or to have access to any book, record, writing or other document obtained by or on behalf of the Minister for the purposes of this Act or the Customs Tariff or by an authorized person for the purpose of carrying out an agreement made under subsection 147.1(3); or

(c) knowingly use, other than in the course of the duties of the official or authorized person in connection with the administration or enforcement of this Act or the Customs Tariff, any information obtained by or on behalf of the Minister for the purposes of this Act or the Customs Tariff or by an authorized person for the purpose of carrying out an agreement made under subsection 147.1(3).

. . .

108. (1) An officer may communicate or allow to be communicated information obtained under this Act or the Customs Tariff, or allow inspection of or access to any book, record, writing or other document obtained by or on behalf of the Minister for the purposes of this Act or the Customs Tariff, to or by

(a) any officer or any person employed in the Department of National Revenue;

(b) any person, or any person within a class of persons, that the Minister may authorize, subject to such conditions as the Minister may specify; or

(c) any person otherwise legally entitled thereto.

(2) An officer may, on the order or subpoena of a court of record,

(a) give evidence relating to information obtained by or on behalf of the Minister for the purpose of this Act or the Customs Tariff; or

(b) produce any book, record, writing or other document obtained by or on behalf of the Minister for the purpose of this Act or the Customs Tariff.

(3) An officer may show any book, record, writing or other document obtained for the purposes of this Act or the Customs Tariff, or permit a copy thereof to be given, to the person by or on behalf of whom the book, record, writing or other document was provided, or to any person authorized to transact business under this Act or the Customs Tariff as that person's agent, at the request of any such person and on receipt of such fee, if any, as is prescribed.

(1) The application for judicial review

I propose to address first the appellant's appeal from the order of the Motions Judge dismissing its application for judicial review. The appellant's submissions before this Court were for the most part the same as those put forth in the Court below"that the respondent fettered his discretion by blindly following departmental guidelines and that his decision was based on irrelevant considerations, including the availability of other methods of obtaining the names of the importers. By contrast, the respondent argues that he did not simply apply a blanket policy of non-disclosure, but rather undertook a detailed review of the appellant's information request and chose to exercise his discretion in favour of preserving the confidentiality of the importers' identity.

The language of paragraph 108(1)(b) of the Act reveals that the Minister's authority to disclose information collected pursuant to the Act to "any person, or any person within a class of persons" is discretionary in nature. As such, a reviewing court is restricted to considering whether the Minister exercised his or her discretion in good faith, in accordance with the principles of natural justice and whether he or she relied on considerations which are relevant to the Act's purposes: Maple Lodge Farms Ltd. v. Government of Canada , [1982] 2 S.C.R. 1, per McIntyre J., at pages 7-8. The case law also indicates that it is entirely appropriate for administrative decision makers to indicate the kind of considerations which they will take into account in exercising their discretion. The essence of discretion requires nevertheless that each matter be examined on its own merits and in relation to its own particular facts and circumstances. As McIntyre J. cautioned in Maple Lodge Farms, supra, at page 7, quoting from the decision of Le Dain J.A. in this Court [[1981] 1 F.C. 500 (C.A.), at page 514], an administrative decision maker "cannot fetter his discretion by treating the guidelines as binding upon him and excluding other valid or relevant reasons for the exercise of his discretion". Cullen J. echoed this concern in Dawkins v. Canada (Minister of Employment and Immigration) , [1992] 1 F.C. 639 (T.D.), at page 649, where he stated that "[i]f the discretion of the administrator becomes too tightly circumscribed by guidelines, the flexibility and judgment that are an integral part of discretion may be lost."

The appellant has failed to persuade me that the respondent fettered his discretion by relying too closely on the departmental guidelines. While the respondent's letter of July 11, 1997 may, as the Motions Judge pointed out at paragraph 12 of his reasons, be worded "more absolute[ly] than the law requires", in my view the record as a whole suggests that the respondent carefully considered the merits of the appellant's request. In particular, the Motions Judge found that a meeting was held between the respondent's staff members and the appellant's representatives, and that the appellant was asked on several occasions to submit additional materials in respect of its information request. The Motions Judge reasoned as follows, at paragraph 10 of his decision:

It is clear that the Minister did not restrict himself to the guidelines. If the guidelines were inflexible, why should the Minister have spent three and one half months investigating the concerns of the applicant. This is not a case where the Minister made up his mind in advance, as submitted by the applicant.

In addition to the meeting of the parties, the respondent highlights in his written arguments the various correspondence which passed between his office and that of the appellant regarding its application pursuant to subsection 108(1). Furthermore, the respondent's letter of July 11, 1997 itself indicates that he took into account the unique facts of the appellant's case in rendering his decision. I would note for example that the letter refers to the purpose for which the appellant is seeking the information. It also demonstrates that the respondent balanced its own interest in maintaining the confidentiality of the importers' identity against the appellant's interest in obtaining this information. As we have seen, he opted in favour of preserving confidentiality which he clearly regarded as the paramount consideration.

To my mind, the Motions Judge was also correct in finding that the respondent's determination was not based on irrelevant considerations. The respondent's letter of July 11, 1997 reveals that he took into account the federal government's statutory duty under section 107 to hold information collected pursuant to the Act in confidence. He also considered the importance of maintaining confidentiality in the context of his department's own relationship with the importing community. In addition, the respondent observed that the appellant had other means at its disposal of obtaining the importers' names. In my opinion, all of these factors are relevant to the objective of sections 107 and 108, which is to preserve the confidentiality of information gathered in the administration of the Act and to disclose it only in limited circumstances. I am also of the view that these considerations are consistent with one of the Act's purposes, which is presumably to encourage individuals to be candid in reporting goods which they import into Canada. I respectfully agree with the conclusion of the Motions Judge that there is no basis for interfering with the respondent's exercise of discretion. Accordingly, I would dismiss the first appeal with costs.

(2) The equitable bill of discovery

The second appeal raises a particularly novel issue, which is the availability in the Trial Division of the equitable remedy of a bill of discovery. The equitable bill of discovery is in essence a form of pre-action discovery.⁹ It is of ancient origin. It developed alongside the procedures for discovery which are ordinarily available in the course of litigation and which, it is worth noting, also originated in the courts of equity.¹⁰ This remedy permits a court, acting through its equitable jurisdiction, to order discovery of a person against whom the applicant for the bill of discovery has no cause of action and who is not a party to contemplated litigation. While it appears that an independent action for discovery cannot be brought against a person who is in the position of a "mere witness" or bystander to the cause of action, the case law suggests that a bill of discovery may be issued against an individual who is in some way connected to or involved in the misconduct.¹¹

Although the bill of discovery enjoys a long history in the courts of equity, it recently received renewed interest by the House of Lords in Norwich Pharmacal, supra. Lord Reid articulated the basic principles surrounding this equitable remedy as follows, at page 175:

. . . if through no fault of his own a person gets mixed up in the tortious acts of others so as to facilitate their wrong-doing he may incur no personal liability but he comes under a duty to assist the person who has been wronged by giving him full information and disclosing the identity of the wrongdoers . . . . justice requires that he should co-operate in righting the wrong if he unwittingly facilitated its perpetration.

Lord Denning M.R. in British Steel Corpn. v Granada Television Ltd, [1981] 1 All ER 417 (C.A.), at page 439 characterized the decision in Norwich Pharmacal as having "opened a new chapter in our law." As he succinctly put it, the bill of discovery "enables a person, who has been injured by wrongdoing, to bring an action to discover the name of the wrongdoer." Lord Denning M.R. cautioned in Bankers Trust Co v Shapira , [1980] 3 All ER 353 (C.A.), at page 357, however, that "[t]his new jurisdiction must, of course, be carefully exercised."

(a)  The decision in Norwich Pharmacal

As I have already mentioned, the appellant relies on the decision in Norwich Pharmacal, supra, as an important precedent for granting a bill of discovery and urges this Court to follow the House of Lords' reasoning in that case. The facts in Norwich Pharmacal are extremely similar to those in the present appeal and may be briefly summarized. The applicants for the bill of discovery, who were the appellants in the hearing before the House of Lords, were the owners and licensees of a patent for a chemical compound. Upon learning that unlicensed quantities of the compound were imported into the United Kingdom by unnamed parties, the appellants sought the identity of the alleged wrongdoers. They were ultimately unsuccessful in their independent attempts, and therefore turned to the Commissioners of Customs and Excise to reveal the names of the importers. The Commissioners denied the request on the basis that they were barred by subsection 3(3) of the Finance Act 1967 (U.K.), 1967, c. 54, from disclosing the importers' names.¹² The appellants accordingly applied to the Court to compel the Commissioners to submit to discovery.

The Commissioners argued that disclosure of the names of the importers would be inconsistent with the legislative provisions at issue. They further submitted that releasing the importers' identity would be contrary to the public interest, in that it would impede the Commissioners in the conduct of their statutory duties by discouraging importers from making full and candid reports of their imports. The House of Lords concluded that the statutory scheme did not forbid the Court from disclosing the importers' names. Lord Morris of Borth-y-Gest acknowledged at page 182 that while the legislative provisions at issue empowered the Commissioners to disclose some information regarding importers, they did not authorize the disclosure of the price of goods or the names of importers. In his view, this demonstrated that "the names of importers come within an area indicated by the legislature as being one of special sensitivity." He noted, however, that there was no statutory provision specifically prohibiting the courts from ordering disclosure of the information where the circumstances of the case and the interests of justice require. Similarly, Lord Cross of Chelsea maintained at page 198 that the prohibition in section 3 of the Finance Act 1967 against the Commissioners releasing the importers' names "has nothing to do with disclosure under an order of the court for the purpose of legal proceedings"whether criminal or civil". He added that the mere fact that information has been disclosed in confidence "is not"in the absence of an express statutory prohibition"any bar to the court ordering its disclosure."

While the bill of discovery as an equitable remedy is discretionary in nature, the House of Lords in Norwich Pharmacal, supra, enumerated a number of considerations which are key to determining whether to grant it. Lord Cross of Chelsea stated at page 199 that important factors include:

. . . the strength of the applicant's case against the unknown alleged wrongdoer, the relation subsisting between the alleged wrongdoer and the respondent, whether the information could be obtained from another source, and whether the giving of the information would put the respondent to trouble which could not be compensated by the payment of all expenses by the applicant.

Lord Kilbrandon echoed many of these considerations at page 205:

In my opinion, accordingly, the respondents, in consequence of the relationship in which they stand, arising out of their statutory functions, to the goods imported, can properly be ordered by the court to disclose to the appellants the names of persons whom the appellants bona fide believe to be infringing these rights, this being their only practicable source of information as to whom they should sue, subject to any special right of exception which the respondents may qualify in respect of their position as a department of state.

It seems to me that the requirement that the appellants have a bona fide claim against the alleged wrongdoers is intended to ensure that actions for a bill of discovery are not brought frivolously or without any justification. Likewise, the criterion that the appellants must share some sort of relationship with the respondents may be conceptualized as an alternative formulation of the principle that a bill of discovery may not be issued against a mere witness or disinterested bystander to the alleged misconduct. I would therefore characterize these two considerations as threshold requirements for obtaining an equitable bill of discovery.

The above-quoted passages from the reasons of Lord Cross of Chelsea and Lord Kilbrandon also signal that a basic condition for granting a bill of discovery is that the person from whom discovery is sought must be the only practical source of information available to the appellants. Lord Reid underscored the importance of this criterion at page 174, where he made the following finding:

Here if the information in the possession of the respondents cannot be made available by discovery now, no action can ever be begun because the appellants do not know who are the wrongdoers who have infringed their patent. So the appellants can never get the information.

Last, the House of Lords took into account the public interests both in favour and against disclosure. Lord Reid maintained at page 175 that his task was to "weigh the requirements of justice to the appellants against the considerations put forward by the respondents as justifying non-disclosure." In his view, the Commissioners were obliged to disclose the names of the importers "unless there is some consideration of public policy which prevents that." The House of Lords approached this balancing exercise from a variety of perspectives. The Law Lords recognized that because of the statutory bar on disclosure of the importers' names, there may be an overriding public interest in preserving the confidentiality of the information. They acknowledged that the importers may accordingly have an expectation that their names would remain confidential. The public interest in non-disclosure was also examined from the standpoint of the state and its stake in ensuring the effective administration and enforcement of the legislative scheme at issue. At the same time, the Law Lords appreciated that disclosure of the names of the importers may very well serve the public interest in the fair and efficient administration of justice. As Viscount Dilhorne stated at page 188:

Subject to the public interest in protecting the confidentiality of information given to Customs, in my opinion it is clearly in the public interest and right for the protection of patent holders, where the validity of the patent is accepted and the infringement of it not disputed, that they should be able to obtain by discovery the names and addresses of the wrongdoers from someone involved but not a party to the wrongdoing.

In upholding the judgment at first instance to grant the bill of discovery, the House of Lords assumed that the appellants' patent for the chemical compound was valid, that their belief that their patent was being infringed was well founded and that a claim against the importers would therefore be legitimate. The Law Lords also found that the Commissioners were the only practicable source of information available to the appellants. Furthermore, they concluded that the public interest in the proper administration of justice outweighed the public interest in safeguarding the confidentiality of the importers' names. In assessing the degree of confidentiality to be accorded to the names of the importers and the manner in which they were divulged to the Commissioners, Lord Cross of Chelsea stated at page 198 that this information

. . . is given to many others besides the commissioners. The shippers, the master of the ship and the employees of the owners of the transit sheds or warehouses in which the goods are stored will all know or have means of getting to know the names of the importers. This information accordingly cannot fairly be regarded as highly confidential information in the hands of the commissioners.

Likewise, Lord Kilbrandon observed at page 206 that the names and addresses of the importers would be recorded in "bills of lading, ships' manifests, masters' `reports,' and the records of the keepers of transit sheds", quite apart from the Commissioners' own records.

The House of Lords was similarly dismissive of the Commissioners' contention that disclosure of the importers' names would discourage members of the importing community from fulfilling their reporting requirements in a full and frank manner. As Viscount Dilhorne surmised at page 190:

I really cannot conceive it to be realistic to suggest that the vast majority of importers who do not infringe patents or do other wrongs, will be in the least deterred from giving proper information to Customs by the knowledge that pursuant to an order of the court the names of the wrongdoers are disclosed by Customs.

Lord Kilbrandon also rejected this argument, adding at page 206 that he "would not favour refusing to stop one glaring fraud lest another be substituted for it."

I would note that the principles in Norwich Pharmacal, supra, have been followed in a number of other decisions emanating from the English courts, in particular British Steel, supra, RCA Corporation v Reddingtons Rare Records, [1975] 1 All ER 38 (Ch. D.), Bankers Trust, supra, and X Ltd. v. Morgan-Grampian (Publishers) Ltd., [1991] 1 A.C. 1 (H.L.). It was distinguished in Alfred Crompton, supra, which I shall examine later on in these reasons. A number of courts in the United States have also recognized the existence of the equitable bill of discovery.¹³

It is of interest to note that several Canadian courts have adopted the Norwich Pharmacal approach to interpreting their own rules of civil procedure authorizing pre-action discovery.¹⁴ For instance, the Prince Edward Island Court of Appeal in Re Johnston and Frank Johnston's Restaurants Limited (1980), 33 Nfld. & P.E.I.R. 341, at pages 348, 351 and 353, specified three main criteria which an applicant must satisfy in order to be entitled to discover a third party before launching legal proceedings. The applicant must demonstrate that he or she has a bona fide claim. The Court added that the applicant's claim must be likely to succeed at trial, which according to my reading of the decision in Norwich Pharmacal was not an invariable requirement enunciated by the House of Lords. In an action for the infringement of patent rights, quite apart from a general denial, a defence of invalidity is often raised on the ground of lack of novelty, obviousness, insufficiency of specification or claims or some other recognized basis.¹⁵ It seems to me to go too far to insist that with respect to this kind of anticipated litigation, an applicant for a bill of discovery must show that he or she is likely to succeed at trial. As we have already seen, Lord Cross of Chelsea required that "the strength of the applicant's case" be considered as a factor, while Lord Kilbrandon spoke only of disclosing the names of persons "whom the appellants bona fide believe to be infringing" their patent rights. Finally, the applicant must also establish that he or she shares some sort of relationship with the third party against whom discovery is sought (i.e. that the person is in some way involved in the wrongdoing), and that the third party is the only practicable source of information available. These three requirements were likewise endorsed by the Nova Scotia Supreme Court, Trial Division in Comeau, Re (1986), 77 N.S.R. (2d) 57, at pages 59-60 and in Leahy v. Dr. A.B. (1992), 113 N.S.R. (2d) 417, at page 419.

(b) The Court's jurisdiction to grant a bill of discovery

The preliminary question which this appeal raises is the Court's jurisdiction to grant relief by way of a bill of discovery. Unlike the rules of civil procedure in Nova Scotia and Prince Edward Island, neither the Federal Court Act [R.S.C., 1985, c. F-7] nor the Federal Court Rules in effect at the time of the appellant's application contains a provision which specifically permits pre-action discovery. In my view however, the absence of such a rule is not an obstacle to granting the equitable remedy which the appellant seeks. I call to mind here Sopinka J.'s statement in Reekie v. Messervey, [1990] 1 S.C.R. 219, at page 222, that "[a]s a general principle, the rules of procedure should be the servant of substantive rights and not the master". Sopinka J. went on to recognize that this principle is subject to the caveat that the Court may not act in a manner which is contrary to the express provisions of a rule. No such provision exists in the present case.

As section 3 of the Federal Court Act provides, in addition to being a court of law, the Federal Court is a court of equity. That section reads:

3. The court of law, equity and admiralty in and for Canada now existing under the name of the Federal Court of Canada is hereby continued as an additional court for the better administration of the laws of Canada and shall continue to be a superior court of record having civil and criminal jurisdiction.

The jurisprudence indicates that as a court of equity, this Court is empowered to grant equitable relief in matters over which it otherwise has jurisdiction. The parties in the present appeal do not challenge the Court's jurisdiction over the subject-matter of their dispute, which involves an alleged patent infringement. Addy J. described the scope of the Court's equitable jurisdiction in Teledyne Indust. Ltd. v. Lido Indust. Products Ltd. (1982), 31 C.P.C. 285 (F.C.T.D.), at page 296 in the following manner:

Notwithstanding that the Federal Court of Canada is a creature of statute and not a Court of general jurisdiction since it is a Court of equity, when the subject-matter is otherwise within its jurisdiction and where equitable principles are applicable to the issue, it may exercise all the powers and enforce all the remedies available to a Court of equity dealing with that same issue.

In my opinion, the Court should not be dissuaded from recognizing the bill of discovery as a remedy simply because of its novelty in Canadian jurisprudence. As McLachlin J. commented in "The Place of Equity and Equitable Doctrines in the Contemporary Common Law World: A Canadian Perspective", in D. W. M. Waters, ed., Equity, Fiduciaries and Trusts, 1993 (Toronto: Carswell, 1993), at page 39, over the last few decades Canadian jurists have not shied away from developing new equitable causes of action to temper the rigidity of the law where the circumstances require. I would therefore conclude that as a starting point, this Court possesses the equitable jurisdiction to grant a bill of discovery.

What this appeal ultimately turns on, in my opinion, is whether the equitable bill of discovery is a remedy which is appropriate in the circumstances of the case before us. The Motions Judge found that given the scheme of the Act and the availability of alternative sources of information, the bill of discovery was not an appropriate remedy and he exercised his discretion accordingly. The jurisprudence clearly indicates that the role of an appellate court in reviewing a discretionary order is not to substitute its own discretion for that of the decision maker below, but rather to determine whether he or she erred in principle: Canada (Minister of Citizenship and Immigration) v. Tobiass, [1997] 3 S.C.R. 391, at pages 426-427; Visx Inc. v. Nidek Co. (1996), 72 C.P.R. (3d) 19 (F.C.A.), at page 22.

(c) The interplay between equitable and statute-based remedies

In examining the propriety of ordering a bill of discovery in the present case, a central concern is the interplay between this equitable remedy and the legislative provisions at issue. The main thrust of the respondent's argument before this Court is that by virtue of subsection 108(1), Parliament has specifically conferred on him the discretion to release information that is collected pursuant to the Act. The respondent contends that to grant an equitable bill of discovery in a case such as this would be contrary to the intention of Parliament and would usurp the respondent's decision-making power. In his submission, once the statutory discretion has been exercised the only remedy available to the appellant is that of judicial review. By contrast, the appellant contends that this reasoning neglects to take into account subsection 108(2) of the Act, which empowers a court of record to order disclosure. The appellant argues that this provision signals that Parliament intended a court to have the authority to render its own decisions regarding disclosure.

In my view the appeal before us involves an overlapping of legislation and the rules of equity. As Ruth Sullivan states in Driedger on the Construction of Statutes, 3rd ed. (Toronto: Butterworths, 1994) at page 298, a statute which is validly enacted is paramount over judge-made law. She adds at page 305 that in cases of overlap, the courts are charged with determining "whether the legislation displaces or precludes resort to the common law or whether, conversely, the common law applies in addition to or in spite of the law set out in the legislation." Cory J. emphasized in Rawluk v. Rawluk , [1990] 1 S.C.R. 70, at page 90 that as a general principle, the legislature "is presumed not to depart from prevailing law `without expressing its intentions to do so with irresistible clearness'". However, the case law indicates that this presumption may be rebutted if it is clear that the legislature intended to modify existing common law or equitable rights by providing a comprehensive regulation of the matter at issue: Driedger , supra, at pages 307 and 309.

The decisions in Rawluk, supra and in Zaidan Group Ltd. v. London (City) (1990), 71 O.R. (2d) 65 (C.A.), affd [1991] 3 S.C.R. 593, are particularly illustrative of the interplay between statutory and equitable remedies and are worthy of note. The Ontario Court of Appeal in Zaidan, supra, addressed the issue of whether the equitable remedy of restitution is available for an unjust enrichment caused by the operation of a statute. In this case, the appellant paid its municipal taxes as assessed, successfully appealed the assessment and was refunded the overpayment. The appellant then sought to recover the interest which the respondent earned on the amount of the overpayment. Pursuant to the provincial legislation at issue, a municipality had the discretion to enact a by-law permitting such interest payments. The respondent City of London had not done so. The appellant argued that the respondent was unjustly enriched by refusing to pay interest on the overpayment, and that the appellant should therefore receive restitution. In refusing to order restitution, the Court characterized the statutory provisions at issue as "a complete statutory code which excludes the common law" and which effectively prohibits the Court from grafting on the equitable remedy sought by the appellant. Carthy J.A. summarized the Court's reasoning as follows, at page 69:

The common thread of unfairness recognized by the common law [in cases of unjust enrichment] breaks when a legislative body acts within its jurisdiction and stipulates, as here, that the municipality shall levy assessed amounts, the taxpayers shall pay those amounts, the municipality may use the money it has collected, and must refund it if adjusted downward on appeal, with interest if it has passed a by-law. . . . There is no question of a gap being left in the legislation for the common law to fill. The taxes are a statutory creation and the conditions surrounding their payment and repayment must be in the statutes associated with their creation. The common law cannot characterize competent legislation as unjust, and it would be doing so if it imposed an additional duty to pay interest on a statutory duty to levy and to refund a specific amount of money.

Rawluk, supra, signifies the difficulty which courts sometimes face in determining whether recourse to an equitable remedy is appropriate in a given legislative context. At issue in that case was the propriety of imposing a constructive trust in a case to which Ontario's Family Law Act, 1986, S.O. 1986, c. 4 applied. More specifically, the legislation stipulated that each spouse was entitled to receive one-half of the matrimonial property valued at the time the couple separated. The equitable doctrine of constructive trust permits valuation at the date of trial. The value of the couple's property had increased considerably between those two dates, and Mrs. Rawluk sought to have the property valued at the later date by way of a constructive trust. A slim majority of the Court concluded that the remedial constructive trust co-exists alongside the remedies provided by the legislation in question. After a detailed review of the statute, Cory J. speaking for the majority, maintained at pages 89-90 that "far from abolishing the constructive trust doctrine, the Family Law Act, 1986 incorporates the constructive trust remedy as an integral part of the process of ownership determination and equalization established by that Act."

The minority decision in Rawluk, supra, adopted a somewhat different approach to resolving the issue. Its central concern, as expressed by McLachlin J. at page 99, was whether the doctrine of constructive trust as a remedial device is necessary and appropriate where the legislation already provides relief from an alleged unjust enrichment. While she agreed with Cory J.'s view that the Family Law Act, 1986 does not oust the constructive trust as a remedy, McLachlin J. concluded at page 110 that it was inappropriate to apply the doctrine in the circumstances as the statute already afforded a remedy for unjust enrichment:

As a matter of legal principle, the Legislature having provided a remedy for the unjust enrichment which would otherwise have occurred in this case, it is not for this Court to impose an additional equitable remedy aimed at correcting the same wrong.

In her view, to affix the remedy of constructive trust to the legislative scheme would create uncertainty and might disrupt the operation of other remedies.

Among other things, these two decisions reveal that in a case of overlap between statute-based and equitable remedies, the analysis entails an interpretation of the applicable statutory scheme in order to determine the legislature's intention. The Ontario Court of Appeal in Zaidan, supra, construed the legislative provisions in question as an exhaustive code which regulated the payment of municipal taxes and all matters incidental to it, including compensation for interest on an overpayment. The Court concluded that to grant equitable relief where the municipal government had specifically declined to enact any remedy would have frustrated that policy choice. In Rawluk, supra, the majority of the Supreme Court interpreted the legislation at issue as incorporating the equitable doctrine of constructive trust. The Court held at page 97 that the statute was not intended as an "exclusive code for determining the ownership of matrimonial property." Rather, the remedy of constructive trust continued to play an important role in enabling the courts to bring an "essential measure of individualized justice and fairness to the more generalized process of equalization provided by the Act."

Turning to the provisions of the Act at issue in the present case, I would note that section 107 specifically bars customs officials from knowingly communicating, using or allowing others to access any information which is gathered for or on behalf of the Minister pursuant to the Act. This provision indicates that data collected in the course of administering and enforcing the Act, including information provided by importers, should be kept confidential. Yet section 107 is expressly made subject to section 108 of the Act, which reveals that the information is not absolutely immune from disclosure. Section 108 contains several exceptions to the general prohibition against disclosure in section 107. While paragraphs 108(1)(a) and 108(1)(c) provide that a customs officer may release information gathered pursuant to the Act to employees of the Department of National Revenue and persons who are legally entitled to have access to it, paragraph 108(1)(b) states that the Minister has the discretion to determine which other persons may be granted disclosure.

As the Motions Judge noted, Parliament has specifically designated the Minister as the decision-making authority regarding which persons or classes of persons may have access to information collected pursuant to the Act. However, I respectfully disagree with the Motions Judge that by assigning this role to the Minister, Parliament has precluded the Court from intervening in matters of disclosure other than by way of judicial review. Subsection 108(2) of the Act expressly empowers a court of record such as this to order a customs officer to give evidence regarding information gathered pursuant to the Act, or to produce any document obtained for the purpose of the Act. The customs officer would surely be required to comply with such a court order. Given the inclusion in the Act of subsection 108(2), I am unable to conclude that the Minister is intended to be the sole arbiter of disclosure. To my mind, the Act cannot be characterized as an exhaustive statutory code which directly or by necessary implication excludes equitable remedies. The judicial discretion which is implicit in subsection 108(2) is a broad one indeed, and I cannot interpret the language as prohibiting the courts from considering equitable principles in exercising that discretion. Rather, in my view subsection 108(2) can be construed as incorporating equitable remedies, including the bill of discovery, where a court of record determines that such relief is otherwise appropriate in the circumstances.

To summarize, in my opinion the equitable bill of discovery is a remedy which is within the Court's jurisdiction to award and which is available to the appellant in the present appeal if it otherwise satisfies the conditions for granting such relief.

(d) The application of the Norwich Pharmacal principles to the present case

The next task is to determine whether the appellant has satisfied the criteria for issuing a bill of discovery. To my mind, the principles articulated in Norwich Pharmacal, supra, have direct application to the circumstances of the present case. Turning now to those principles, in my view the appellant has satisfied the threshold requirement for a bill of discovery in that it has a bona fide or legitimate claim against those who are importing RHCL into the country. There is no dispute that the appellant owns two patents for the drug RHCL, the validity of which is not in question. The record also indicates that approximately 68 000 kg of the substance were imported into Canada by persons other than the appellant and its licensees. In addition, the respondent is not a mere witness or unrelated party to the alleged wrongdoing. Much like the Commissioners in Norwich Pharmacal, customs officials working on the respondent's behalf were innocently involved in the importation of RHCL, in the sense that they authorized its conveyance into the country and thereby "unwittingly facilitated" the alleged infringement of the appellant's patent rights.

It is apparent from Norwich Pharmacal, supra, that a bill of discovery is not available where the information sought can be procured from another source. One of the primary reasons for which the Motions Judge declined to grant a bill of discovery was his finding that the appellant had alternative sources of information at its disposal. It is this issue which I now propose to address. As I highlighted above, the Motions Judge found that the appellant could have hired a private investigator, pursued the complaint and judicial review procedures under the Access to Information Act, or required its licensees to submit to an independent or "secondary" audit. The Motions Judge further maintained that the appellant had discovered the identity of a non-licensee importer, Torpharm Inc., through its own independent means, although I would note that he neglected to indicate what those means were. The appellant has, of course, already exhausted judicial review of the respondent's decision pursuant to subsection 108(1) as an avenue of recourse.

At the outset, I must respectfully disagree with the Motions Judge that hiring a private investigator is an effective method by which to obtain the identity of the importers. The only evidence in the record on this point is that of Mr. Jenkins, who testified that the appellant had engaged the services of a private investigator in the past in order to enforce its patent rights and that these services yielded "totally unsatisfactory results".¹⁶ The respondent has failed to controvert this evidence. In my view, the record suggests that hiring a private investigator is not a practical option.

With respect to the Access to Information Act as an alternative avenue of recourse, the appellant submits that an appeal of the denial of its information request would have been futile because neither the Information Commissioner nor the Court is empowered to override the mandatory exemption in subsection 24(1) of that Act. The respondent contends that by virtue of section 30 of the Access to Information Act, the appellant has a right to lodge a complaint with the Information Commissioner regarding the refusal of its information request, and that it should have pursued this complaint procedure.

As I mentioned above, the appellant's access request was denied on the basis of subsection 24(1) of the Access to Information Act, which reads as follows:

24. (1) The head of a government institution shall refuse to disclose any record requested under this Act that contains information the disclosure of which is restricted by or pursuant to any provision set out in Schedule II.

Among other provisions, Schedule II lists section 107 of the Act. According to paragraph 30(1)(a) of the Access to Information Act, the Information Commissioner is obliged to investigate complaints from any person who has been refused access to a record which is requested pursuant to that Act. Section 41 of the Access to Information Act stipulates that any person whose access request has been denied and who has initiated a complaint with the Information Commissioner may apply to the Court for judicial review of the matter.

I cannot agree with the appellant's argument that lodging a complaint under paragraph 30(1)(a) would have been futile because the Information Commissioner is not authorized to overrule the exemption in subsection 24(1). It is important to note that the Commissioner is not empowered to overturn any decision regarding an information request rendered under the Access to Information Act. Rather, the Commissioner's statutory role is restricted primarily to investigating complaints and reporting his or her findings and recommendations to the complainant and the head of the government institution implicated. If the Commissioner concludes that the complaint is well founded, he or she may recommend that the information be released. Such a recommendation is not, however, binding on the head of the government institution.

While the complaint and judicial review procedures under the Access to Information Act remain open to the appellant to pursue, I have grave doubts about the efficacy of this source of information. It seems to me that to invoke these procedures would merely duplicate the efforts already undertaken by the appellant in its application for judicial review. Indeed, the Motions Judge appears to have been sensitive to this practical reality when he stated at page 138 of his reasons for denying the bill of discovery that "[a]ll of the arguments made here could have been made under this [the Access to Information Act ] procedure." The most a complaint under paragraph 30(1)(a ) would yield is a recommendation by the Information Commissioner that the respondent as the head of the government institution in question release the information which the appellant seeks. Given that the respondent has refused to do so on two separate occasions on the ground that the need for confidentiality must prevail, it is highly unlikely that he would agree to disclose the names of the importers at the Commissioner's behest.

That would leave the appellant with the further option of applying for judicial review of the respondent's denial of its access request pursuant to section 41. In my view, such an application would in effect involve the same issues as were addressed in the application for judicial review which the appellant filed on July 16, 1997, and which is currently before this Court on appeal. More specifically, the respondent based its refusal of the appellant's access request on subsection 24(1) of the Access to Information Act, which indicates that information which is protected from disclosure under section 107 of the Act is also restricted under the Access to Information Act. As I discussed above, the prohibition against disclosure in section 107 is subject to several exceptions in section 108, including the Minister's discretionary authority in paragraph 108(1)(b) to determine which persons may obtain access to information collected pursuant to the Act. An application under section 41 of the Access to Information Act would, as I see it, necessarily be directed at examining the respondent's discretionary decision pursuant to that paragraph. This is precisely the issue that was fully argued before the Motions Judge and before this Court on appeal. In my view, the procedures available under the Access to Information Act are unlikely to bring the appellant any closer to ascertaining the names of the importers. It would therefore be impractical to expect the appellant to pursue this avenue of redress.

I turn now to an assessment of the viability of the secondary audit procedures available to the appellant pursuant to the compulsory licence agreements which bind its licensees. The licence agreements oblige each licensee to provide the appellant with quarterly and annual statements which show the quantity of RHCL sold, the selling price and the resulting royalties. These statements must be certified by the licensee's auditor. The licence agreements also permit the appellant to require that an independent audit of the licensees' books be conducted by an accountant acting on its behalf. I would note that the appellant's licence agreement with Apotex Inc. is typical of those which bind other licensees. The relevant paragraphs of that agreement read as follows:

5. The Licensee shall prepare quarterly statements, certified by its auditors, during the continuance of this licence showing the descriptions and quantities of the medicine in all forms sold, the net selling prices of the medicine sold in final dosage form wherein the medicine is the only active ingredient, and the royalty computations resulting from its operations. The first such statement shall be made with respect to the first full quarterly period following the issuance of this licence. In any quarterly period in which there have been no sales of the medicine, the Licensee shall prepare a statement to that effect.

6. The Licensee shall forward its statements made under paragraphs 4 and 5 above, together with certified copies of statements (if any) made under paragraph 3 above, to the Patentee, together with payment in full of the royalty as computed therefrom; such forwarding shall be done within thirty (30) days of the receipt of the statements (if any) made under paragraph 3 above, or within sixty (60) days of the end of each quarterly period referred to, whichever occurs first. The forwarding of royalties (if any) and statements, shall continue to be done quarterly during the life of this licence.

7. The Licensee shall, at all reasonable times, but after forty-eight (48) hours' notice, and until complete settlement of all transactions which have taken place during the existence of this licence, permit an independent chartered accountant (who is not an employee of the Patentee) acting on behalf of the Patentee but approved of by the Licensee, to inspect and take copies of its records or books pertaining to its operations pursuant to this licence, but not otherwise, and such accountant shall only be entitled to report to the Patentee as to whether the statements furnished pursuant to paragraph 6 are correct or substantially so, or incorrect.

8. The Licensee shall, within sixty (60) days after the end of each calendar year, transmit to the Patentee a statement, certified by its auditors, showing the descriptions and quantities of the medicine sold in all forms, and the selling prices of such medicine in final dosage form, produced pursuant to this licence, and sold during the preceding calendar year.¹⁷

The appellant contends that the secondary audits are not a practicable source of the information because they will not disclose whether the licensees are importing quantities of RHCL. They have also failed in the past, the appellant submits, to uncover any inaccuracies in the licensees' sales and royalty statements. The appellant further observes that this avenue of recourse presupposes that the importers whose names it seeks are licensees, which is not necessarily the case. By contrast, the respondent argues that there is evidence that at least one licensee, Apotex Inc., under-reported its sales of RHCL and that an independent audit might bring further discrepancies to light.

I am not convinced that the right of inspection and report under paragraph 7 of the licence agreements is an effective method by which the appellant may obtain the identity of those responsible for importing RHCL into Canada. In my view, the utility of the independent audit is limited in several respects. It bears repeating that paragraphs 5 and 8 of the licence agreements require a licensee to disclose only the "quantities of the medicine in all forms sold". The licensees are not obliged to divulge the amount of RHCL which it has imported into the country or that it has on hand at any given time. Indeed, the transcript of the hearing before the Motions Judge suggests that the sales and royalty statements do not, in practice, contain any measure of the importation of RHCL. The following exchange between counsel for the respondent and Mr. Jenkins on cross-examination is illuminating in this regard:

Q. So you will agree with me, then, that these royalty statements merely provide royalties for ranitidine hydrochloride and do not have any measure of the importation of ranitidine hydrochloride.

A. They do not expressly state or refer to importations so far as I can judge; that is correct.¹⁸

An inspection pursuant to paragraph 7 of the agreement would therefore only reveal whether a licensee was correct in calculating the quantum of its sales of RHCL. Furthermore, according to paragraph 7 the auditor is only permitted to advise the appellant of whether the licensee's computations are correct, substantially correct or incorrect. As such, an inspection would not necessarily uncover the precise extent of a licensee's miscalculation of its sales. Nor would an independent audit permit the appellant to deduce from the quantum of sales reported the exact amount of RHCL that a licensee may have imported into Canada in a given year.

Moreover, there was evidence before this Court that when actually carried out, the independent audit procedure failed to reveal any errors in the licensees' calculation of their sales and royalties. In January 1998, the appellant retained an accountant to inspect the records of Genpharm Inc. pursuant to paragraph 7 of the licence agreement. The accountant's report dated January 30, 1998 confirmed that Genpharm Inc.'s sales and royalty statements were "substantially correct".¹⁹ The appellant also arranged for an auditor to examine the records of Novopharm Ltd. By letter dated February 10, 1998, the accountant related that this licensee's sales and royalty reports were "correct".²⁰ The appellant also attempted to initiate an inspection of the records of Apotex Inc., which as of March 9, 1998 had not yet been performed.²¹

As a final comment on this issue, I find compelling the appellant's argument that to propose the independent audit as an alternative source of information assumes that the importers in question are licensees. As the Motions Judge noted, the appellant has already identified one of the importers of RHCL to be Torpharm Inc., which is not a licensee. The record clearly indicates that the independent audits of two of the appellant's licensees, Genpharm Inc. and Novopharm Ltd., were unsuccessful in uncovering the information which the appellant seeks. In my view, the right of inspection pursuant to paragraph 7 of the licence agreements would not enable the appellant to ascertain the names of the importers of the shipments of RHCL at issue. It is therefore not a practicable or effective source of the information which is sought by the appellant.

The non-existence of a practical alternative source of information is not in itself a sufficient basis for granting an equitable bill of discovery. As we have seen, section 107 places an obligation of confidentiality on the respondent as a matter of government policy, an obligation which is no doubt intended to facilitate the administration and enforcement of the Act. It accordingly becomes necessary to balance the public interest in preserving the confidentiality of the importers' names against the public interest in the proper administration of justice. Such an exercise was undertaken by the House of Lords in Norwich Pharmacal, supra, which found in the circumstances that the latter interest should prevail. The Motions Judge in the present case determined that the House of Lords' analysis of the competing public interests in Alfred Crompton, supra, was applicable to the facts before him and preferable to the approach adopted in Norwich Pharmacal.

In my view however, Alfred Crompton, supra, is distinguishable from both Norwich Pharmacal, supra, and the present appeal in several respects. First and foremost, Alfred Crompton was not strictly speaking a bill of discovery case. The appellant in that case had complained to the Commissioners of Customs and Excise that their assessment of its purchase tax was inaccurate, and asked that the amount be submitted to arbitration. The Commissioners initiated an investigation into the appellant's complaint and obtained information relevant to the anticipated arbitration from customers as well as other vendors in the industry. The appellant sought an order for discovery of the documents which the Commissioners gathered in the course of their investigation. Unlike the facts in the present case therefore, there was at the relevant time an existing lis or dispute between the appellant and the Commissioners. The appellant in Alfred Crompton did not seek disclosure of the information for the purpose of commencing an action against an unknown wrongdoer. On the contrary, the Commissioners and not the third party informants were the appellant's intended adversaries.

Furthermore, the type of information sought by the appellant and the statutory scheme in Alfred Crompton, supra, are markedly different from those at issue in the appeal before us. As Lord Cross of Chelsea noted at page 426, the appellant sought a number of documents from the Commissioners including invoices, credit notes, confidential price lists, extracts from ledgers, correspondence and agreements between third parties. Many of those documents are undoubtedly of a commercially sensitive nature. By contrast, the appellant in the present case seeks only the names of those who imported RHCL into Canada in 1995, 1996 and 1997. Moreover, the information at issue in Alfred Crompton was collected in the course of an investigation authorized by statute. The Commissioners' main concern in that case was that disclosure of the documents which they gathered in the course of their inquiry would have a chilling effect on informers and jeopardize their ability to conduct future investigations. Indeed, Lord Cross of Chelsea found at page 434 that the case for non-disclosure was "far stronger" than it was in Norwich Pharmacal , supra, because:

There it was probable that all the importers whose names were disclosed were wrongdoers and the disclosure of the names of any, if there were any, who were innocent would not be likely to do them any harm at all. Here, on the other hand, one can well see that the third parties who have supplied this information to the commissioners because of the existence of their statutory powers would very much resent its disclosure by the commissioners to the appellants and . . . that the knowledge that the commissioners cannot keep such information secret may be harmful to the efficient working of the Act.

I turn now to a closer examination of the public interests at stake in the present appeal. The appellant contends that the names of the importers are not confidential and that the public interest in seeing that justice is done must take precedence over the importers' privacy interest. The respondent for his part submits that the information which the appellant seeks was supplied to customs officials in confidence, and that disclosure of the importers' names would breach their expectation that this information would remain confidential.

I am not persuaded that this is a sufficient justification for refusing to disclose the identity of the importers in the present case. While section 107 implies that information collected pursuant to the Act will be treated as confidential, section 108 indicates that it is susceptible to disclosure in certain situations. I am thus doubtful that importers have a high expectation of confidentiality regarding the information which they furnish to customs officials. More important, I am sceptical about the expectation and degree of confidentiality associated with the nature of the information which the appellant seeks. As the House of Lords observed in Norwich Pharmacal, supra, the names of the importers are likely to pass through many hands before reaching those of customs officials. It is therefore not reasonable to regard the identity of the importers as particularly sensitive information. In my opinion, in the circumstances of this case the public interest in ensuring that the appellant is able to pursue in the courts those who have allegedly violated its patent rights outweighs the public interest in maintaining the confidentiality of the importers' names.

(e)  The Crown prerogative against discovery

I must now address a final point advanced by the respondent. It is that the respondent cannot be compelled to submit to discovery because the Crown enjoys a prerogative against such compulsion. The respondent finds support for this proposition in Attorney General (Que.) and Keable v. Attorney General (Can.) et al., [1979] 1 S.C.R. 218 at page 245, where Pigeon J. stated for the majority of the Court that "at common law, the Crown enjoys a prerogative against being compelled to submit to discovery". As any litigant who has brought a suit against the Crown is aware, the Crown's immunity from discovery is not absolute and has been abridged by statute both federally and provincially.²² I would note, for example, that paragraph 224(1)(d) and subsection 237(3) of the Federal Court Rules, 1998 [SOR/98-106] imply that the Crown is subject to the same discovery obligations as any other party to an action before the Court.²³

The Crown prerogative against discovery was not explicitly raised in Norwich Pharmacal, supra. In my view this is significant, because the Crown immunity from discovery is characterized by Pigeon J. in Attorney General, supra, as existing "at common law". It is not clear, therefore, that a Crown prerogative which exists at common law overrides the exceptional equitable remedy of a bill of discovery. As I mentioned above, the right of discovery which is available in the ordinary course of litigation has its origins in the courts of equity. Indeed, Kerans J.A. maintained in Canada Deposit Insurance Corp. v. Code (1988), 84 A.R. 241 (C.A.), at page 248 that the practice in the English Court of Chancery was to permit discovery of Crown officials. He referred specifically to the decision in Attorney-General v. London (Corporation of) (1850), 42 E.R. 95 (Ch.), where Lord Cottenham remarked as follows at page 100:

Now, it was said that the statute of James, as pleaded in the answer, gives a party against whom the Crown is litigating, an advantage different from that which belongs to every other Defendant. I do not at all so understand it. The object of the statute was to put a party who was contesting with the Crown in the same situation as a party contesting with any other Plaintiff; but here in equity the Crown and the subject always were on the same footing, and they are on the same footing now; there was no evil therefore to be remedied. At law, however, there was, arising from technical reasoning, a great injury accruing to a Defendant in litigation with the Crown. The Crown's title was taken to be proved, unless a contrary title was set out and pleaded. That was a privilege which the Crown maintained against a Defendant at law; but no such privilege has ever been asserted here; nor am I at all aware of there being any different rule, as far as discovery is concerned, applicable to a suit between the Crown and a subject, and a suit between ordinary parties. [Emphasis added.]

However, Kerans J.A. indicated that whether the courts of equity could compel the Crown to submit to discovery is not entirely settled in the jurisprudence. See for example the statements of the Lord Chief Baron in Deare v. Attorney-General (1835), 160 E.R. 80 (Ex. Div.), at page 85. In the absence of binding authority that the Crown immunity from disclosure extends to the exercise of the Court's equitable jurisdiction, I do not think that we should accede to the respondent's argument.

(f) Concluding remarks

I have concluded that the limited discovery of the name or names of the importers of RHCL into Canada in 1995, 1996 and 1997 is an appropriate remedy in the circumstances of this case. I have likewise found that no policy reason exists for refusing to grant it.

Before leaving the matter I wish to draw attention to views that were expressed by certain of the Law Lords in Norwich Pharmacal, supra, that the customs authorities should not be criticized for refusing voluntarily to disclose the importers' names. Nor, they maintained, should customs officials be required to bear the actual costs of the discovery. I note for example the following views of Lord Cross of Chelsea at page 199, to which I subscribe:

. . . in any case in which there was the least doubt whether disclosure should be made the person to whom the request was made would be fully justified in saying that he would only make it under an order of the court. Then the court would have to decide whether in all the circumstances it was right to make an order. . . . The full costs of the respondent of the application and any expense incurred in providing the information would have to be borne by the applicant.

Similarly, in the present case it is clear that the respondent is quite innocent of any wrongdoing connected with the imported shipments of RHCL. The case is a novel one and the remedy sought is exceptional. I think the respondent was justified in refusing disclosure in the absence of a court order. I am also of the view that the respondent should have its reasonable costs of the discovery.

I would allow the second appeal, set aside the order of the Trial Division and direct that the respondent submit to an examination for discovery by the appellant for the purpose only of disclosing the name or names of the importers of RHCL into Canada during the years 1995, 1996 and 1997. The appellant should pay to the respondent forthwith upon the completion of the examination for discovery the respondent's reasonable party and party costs and its out-of-pocket disbursements arising from the examination for discovery. Should the parties be unable to agree to these amounts, they should be taxed as if the examination were in an action. If they are unable to agree to a time and place for the examination or of the individual to be examined, the appellant may apply for an order to resolve the dispute. This Court will remain seized of the matter for that purpose only.

Létourneau J.A.: I concur.

Robertson J.A.: I agree.

¹ See e.g. compulsory licence in favour of Apotex, Inc., Appeal Case, Vol. II, at p. 259 et seq.

² Appeal Case, Vol. II, at p. 399.

³ Appeal Case, Vol. I, at pp. 22-34.

⁴ Appeal Case, Vol. III, at p. 501.

⁵ Appeal Case, Vol. I, at p. 8.

⁶ Appeal Case, Vol. I, at p. 20.

⁷ Appeal Case (A-909-97), at p. 8.

⁸ Appeal Case, Vol. II, at pp. 402-407.

⁹ The remedy is discussed in the following works: Sir James Wigram, Points in the Law of Discovery, 2nd ed. (London: Maxwell, 1840), at pp. 2 and 5; Mitford, John F. A Treatise on the Pleadings in Suits in the Court of Chancery by English Bill, 5th ed. by J. W. Smith (London: Stevens and Norton, 1847), at pp. 36, 64 and 172; J. Story, Commentaries on Equity Jurisprudence as Administered in England and America, Vol. 2, 13th ed. (Boston: Little, Brown and Company, 1886), at pp. 810-830; and P. V. Baker and P. J. Langan, Snell's Equity, 29th ed. (London: Sweet & Maxwell, 1990), at p. 582.

¹⁰ Snell's Equity, supra, note 9, at pp. 28 and 582. See also Halsbury's Laws of England, vol. 16, 4th ed. reissue (London: Butterworths, 1992), at pp. 655-656.

¹¹ Halsbury's Laws of England, vol. 13, 4th ed. (London: Butterworths, 1975), at pp. 18-19. Note that the bill of discovery differs from a case in which a party is named as a defendant to a cause of action for the sole purpose of obtaining discovery from him or her, a practice which Jessel M.R. found to be inappropriate in Wilson v. Church (1878), 9 Ch. D. 552 (C.A.). For a Canadian treatment of this principle, see MacRae v. Lecompte; The Queen in right of Ontario, Third Party (1983), 143 D.L.R. (3d) 219 (Ont. H.C.), at pp. 224-225.

¹² The relevant portions of s. 3 of the Finance Act 1967 (U.K.), 1967, c. 54, read as follows:

3."(1) On being notified at any time by the Secretary of State that he is satisfied that it is in the national interest that the information in question should be disclosed to persons other than the Commissioners, the Commissioners may disclose through such person as may be specified in the notification such information to which this section applies in respect of imported goods of such descriptions as may be so specified.

(2) The information to which this section applies is information contained in any document with which the Commissioners have been provided after 7th March 1967 in pursuance of the Act of 1952 for the purpose of making entry of any goods on their importation, being information of the following descriptions only, namely"

(a) the description of the goods, including any maker's catalogue number;

(b) the quantities of the goods imported in a particular period, so, however, that if any quantity is given by value it shall not also be given in any other form;

(c) the name of the maker of the goods;

(d) the country of origin of the goods;

(e) the country from which the goods were consigned.

(3) The Secretary of State may by order add to the descriptions of information to which this section applies any further description of information contained in any document such as is mentioned in subsection (2) of this section other than the price of the goods or the name of the importer of the goods; and any such order shall be made by statutory instrument and . . . . [Emphasis added.]

¹³ A survey of these various decisions may be found in R. F. Barron, "Existence and Nature of Cause of Action for Equitable Bill of Discovery" (1996), 37 ALR5th 645. The decisions of Learned Hand J. in Pressed Steel Car Co. v. Union Pac. R. Co. , 240 F. 135 (S.D.N.Y. 1917) and Cordozo J. in Sinclair Refining Co. v. Jenkins Pet. Process Co., 289 U.S. 717 (1932) are also illustrative of the use of the remedy of the bill of discovery in the United States.

¹⁴ See for example R. 18.02(c) of the Nova Scotia's Civil Procedure Rules and R. 18.02(1)(c) of Prince Edward Island's Rules of Court.

¹⁵ See R. T. Hughes and J. H. Woodley, Hughes and Woodley on Patents (Toronto: Butterworths, 1984), at para. 36.

¹⁶ Transcript of the cross-examination of Laurence D. Jenkins, Appeal Case, Vol. III, at pp. 579-580.

¹⁷ Appeal Case, Vol. II, at pp. 261-262. See also the compulsory licence agreement between the appellant and Novopharm Ltd., at pp. 289-290, and between the appellant and Genpharm Inc., at pp. 297-298.

¹⁸ Appeal Case, Vol. III, at p. 609.

¹⁹ Affidavit of Paul Herbert, February 4, 1998, paras. 11-12.

²⁰ Affidavit of Paul Herbert, March 9, 1998, para. 1.

²¹ Ibid., at para. 2.

²² Paul Lordon, Crown Law (Toronto: Butterworths, 1991), at pp. 522-523 and Peter W. Hogg, Liability of the Crown, 2nd ed. (Toronto: Carswell, 1989), at pp. 30-31.

²³ Ss. 224(1)(d) and 237(2) of the Rules, 1998 read as follows:

224. (1) The deponent of an affidavit of documents shall be

. . .

(d) where the party is the Crown, an authorized representative of the Crown.

. . .

237. (1) . . .

(2) Where the Crown is to be examined for discovery, the Attorney General of Canada shall select a representative to be examined on its behalf.