Inconsistencies in Copyright Chain-of-Title results in the Vacating of Anton Pillar Order
In a recent decision by Mr. Justice von Finckenstein, in the case of Ayngaran International Video & Audio Inc. v. Universal DVD Inc., the Federal Court vacated an Anton Pillar Order on both procedural issues and substantive grounds. The case involves alleged copyright infringement of a number of Tamil language films on DVDs.
Anton Pillar Order:
An Anton Piller Order is a court order allowing for an applicant (usually the plaintiff) to enter the respondent’s premises without notice and then inspect or seize documents or other items; usually because there is a concern that if the respondent were given notice, evidence is likely to be destroyed. However, because of their severity, and because a respondent is not able to argue its side, Anton Pillar Orders are considered to be exceptional instruments and therefore require strict compliance with their terms.
Often on review as to the propriety of the initial Order and its subsequent execution, the Court requires affidavit evidence from a solicitor so that it can be satisfied that this extraordinary remedy was properly executed. In the present case the Order was explicit about such a requirement and, upon review of the Order (after the plaintiff had executed it on 7 of the 23 defendants), the court noted that no such solicitor affidavit was filed.
Procedural Issues:
Thus, in regards to the procedural issues in this case, the Court ruled that the lack of an affidavit from the attending and supervising solicitor was a procedural flaw sufficient enough so that the initial Order could not be sustained; especially because the Order included this requirement explicitly.
The court was also critical of the fact that both solicitors for the plaintiff had signed a solicitor’s report (not an “affidavit”) and filed that in support to uphold the Order. Justice von Finckenstein observed that he could not see how Mr. Romoff (one of the solicitors) could argue the motion on the basis of his own report (assuming the Court was prepared to treat the report as tantamount to an affidavit). It is a basic rule of law that a person cannot be counsel and give evidence at the same time.
Substantive Grounds:
More interestingly, the case went on to also vacate the Order based on substantial grounds.
In last year’s case of Netbored Inc. v. Avery Holdings Inc., which is considered to be the leading case on review of Anton Piller Orders, Justice Hughes established the five criteria that the Court should use to determine whether an Anton Piller Order should continue to be in force or be vacated. The first of these criteria is that the Plaintiff must show an extremely strong prima facie case.
In the present Ayngaran case, Justice von Finckenstein stated that a strong prima facie case, in the circumstances of a copyright infringement claim, requires the Plaintiff to establish good title to the goods in question and that the actions of the Defendants amount to breach of copyright.
However, because the Plaintiff never registered the copyright to the relevant Tamil language films in question in Canada, and because there were numerous discrepancies and inconsistencies in the chain of title evidence, the Court ruled that the Plaintiff had failed to establish that it has a strong prima facie case - i.e. the title is prima facie not free from doubt.
On More Chance:
Because Justice von Finckenstein found the Defendants’ explanation (of allegedly being authorized to copy the videos) devoid of plausibility, he delayed the return of the goods seized until September 1, 2006 to give the Plaintiff an opportunity to remedy both the substantive and procedural defects and to bring another application for an Anton Piller Order.