The decision in Vinod Chopra Films Private Limited et al. v. John Doe 2010 FC 387 by Hughes, J. concerns a review of a “rolling” Anton Piller order granted by the Federal Court of Canada in a copyright infringement case to an Indian film production company and its Canadian licensee against various un-named persons who (according to the claim) “deal in counterfeit video recordings.”
Pursuant to Justice Zinn’s Order of January 26, 2010, the plaintiffs seized allegedly counterfeit copies of a film entitled “3 Idiots” from a number of defendants who then sought review of the Order.
An Anton Piller order is an extraordinary equitable remedy that permits the representatives of a plaintiff to request entrance into a defendant’s premises to search for and seize relevant documents and other materials that the defendant is likely to destroy. If the defendant refuses to allow entry, he or she may be held in contempt. Because these orders are almost always sought without notice to the defendant, a plaintiff is required to make “full and frank disclosure” to the court, including the weaknesses in the plaintiff’s case. The order will generally stipulate that the parties are to return to the Court after execution of the order so that the defendant may challenge the basis on which the order was granted or the manner in which it was executed. Anton Piller orders granted against unidentified (or “John Doe”) defendants are often referred to as “rolling” Anton Piller orders.
In Vinod Chopra, Justice Hughes set aside the order of Justice Zinn on April 12, 2010 and awarded full indemnity costs to the defendants, stating that the evidence that the plaintiffs had relied upon in seeking the order was “insufficient, careless and misleading.” His reasons (summarized below) are the latest authority on how and, more particularly, how not to obtain an Anton Piller order in the Federal Court. Justice Hughes also dismissed the copyright infringement action against the affected defendants because he found that the plaintiffs knew the defendants’ identity when they commenced the action against “John Doe.” The “John Doe” name was therefore not merely a “misnomer” that could later be fixed by a simple amendment to the style of cause.
Justice Hughes stated the following in his reasons:
- The criteria for obtaining an Anton Piller order are the traditional four requirements that:
- the plaintiff has a strong prima facie case on the merits;
- the potential or actual damage to the plaintiff relating to the defendant’s activities is “very serious”;
- the defendant likely has in its possession incriminating evidence;
- there is a real possibility that the defendant may destroy such evidence before the discovery process
plus the two more recent requirements described in Netbored Inc. v. Avery Holdings Inc. 2005 FC 1405 that:
- the execution of the order would not harm the defendant or its case; and
- the interests of justice would not be brought into disrepute.
- Each of those points must be clearly established by the plaintiff’s evidence in the request for the order. There must be sufficient proof to support an allegation that relevant evidence will likely be destroyed, not a mere allegation to be supported later by evidence of the defendant’s conduct after the order was granted. The affidavit evidence must be specific, must be based on the personal knowledge of the affiant as much as possible and should specify that the actual or potential damage to the plaintiff is “very serious”. In Vinod Chopra, Justice Hughes found it “highly improper” for the plaintiff’s representative to swear an affidavit on the nature of the defendants’ activities that simply reported information he received from his lawyer.
- Where the evidence obtained during the execution of the order fails to disclose “very serious” harm to the plaintiff, a negative inference will be drawn as to whether there was foundation for the order. For instance, in Vinod Chopra, Justice Hughes drew a negative inference from the fact that only a handful of admittedly counterfeit videos were seized during the execution of the order.
- Where the defendants had notice of the plaintiff’s complaints before the order was executed, the Court, on review of the order, will look to whether the defendant took steps to hide or destroy relevant evidence after receiving notice. A negative inference will be drawn in the absence of such evidence.
- The naming of “John Doe” as a defendant in an action is permissible only if the defendant’s true identity is unknown and not easily ascertainable. It cannot be used an attempt to introduce a new party by way of addition or substitution.
- An Anton Piller order obtained for the primary purpose of allowing the plaintiff and its agents to harass persons suspected of infringing the plaintiff’s rights will bring the interests of justice into disrepute.