Intellectual Property by dfsdf224s


									                                                                           Intellectual Property
                                                                                        December/January 2005

           Anton Piller Orders: A Powerful Tool to Protect Your Rights
Most businesses today know that protecting their                      Me Éric Lalanne is in charge of the
trademarks, copyrights and patents should be one of their            Litigation Group. He specializes in
                                                                    corporate and commercial litigation.
legal priorities.                                                       He has been involved in various
                                                                         decisions shedding light on the
At a time when forgeries of all kinds and the pirating of              interpretation of some of the new
                                                                    provisions of the Civil Code and the
digital materials (such as CDs, DVDs and software) are an                   laws governing the business
unfortunate part of the daily concerns of a large number of                                  community.
businesses, traditional procedural law has adapted to
provide efficient means to combat these threats.

The issuance of an Anton Piller order is one of the tools        WHAT ARE THE CONDITIONS FOR                                   THE
available to you.                                                ISSUANCE OF AN ANTON PILLER ORDER?
                                                                 Over time, the courts have established the conditions to be
WHAT IS AN ANTON PILLER ORDER?                                   met for the issuance of an Anton Piller order. It goes without
An Anton Piller order—which bears the name of the plaintiff      saying that the intrusive nature of this type of order favours
in the case in which this type of order was first issued—is,     a narrow and strict interpretation of the criteria. In essence,
for all intents and purposes, an injunction to which the         the criteria are as follows:
characteristics of a seizure before judgment have been
                                                                 1. There must be very solid prima facie evidence—that is,
                                                                    you must prove that, in all likelihood, you are entitled to
The purpose of this type of order is to ensure compliance           the issuance of the order sought;
with your ownership rights over property which you are
                                                                 2. You must prove the existence of very serious harm, be
presumed to own.
                                                                    it real and present or potential and future; and
Indeed, the order authorizes your representatives and
                                                                 3. You must present clear evidence that the defendants
lawyers to enter upon the premises occupied by the person
                                                                    have in their possession documents or items which you
targeted by the order and carry out the searches required
                                                                    can use as incriminating evidence, and that there is a
for the seizure of all materials or documents allowing you to
                                                                    real possibility that the defendants will destroy this
prove that the defendant is infringing your rights—be they
                                                                    evidence before you can present an application in
intellectual property rights or other rights.
                                                                    which all the parties can be heard.
As discussed below, such an order will be issued only if
                                                                 When seeking the issuance of an Anton Piller order in
there is a serious fear that this evidence may be destroyed.
                                                                 connection with the protection of intellectual property rights,
Furthermore, the application must be made ex parte,              it is often easy to fulfil the first two conditions by providing
namely without the adverse party being called to defend          the court with proof of title to the intellectual property and by
itself or present its point of view. Clearly, the element of     providing clear evidence of an infringement.
surprise is crucial to the enforcement of this type of order.
                                                                 However, as stated by the Federal Court in the now famous
In practice, a defendant will usually learn of the issuance of
                                                                 Adobe ruling, fulfilling the third criterion is not as easy: [i]t is
an order against it only when your representatives arrive at
                                                                 difficult to prove with tangible evidence that an infringer has
its premises to seize the evidence.
                                                                 a history of destroying evidence or will dispose of important
                                                                 evidence.1 However, the courts have accepted evidence
 Anton Piller Orders: A Powerful Tool to Protect Your Rights                                                                   2/2

showing the ease with which the defendant could destroy           defendant’s job particularly difficult, because it is placed in a
compromising evidence in its possession.                          position that will be difficult to defend within the scope of
                                                                  imminent proceedings.
QUÉBEC AND COMPLIANCE WITH THE CHARTER                            Furthermore, it should be understood that the order does
OF HUMAN RIGHTS AND FREEDOMS                                      not give you the right to enter upon the premises occupied
Since the ruling of the Québec Court of Appeal in Raymond         by the defendant without the latter’s approval. As the courts
Chabot SST inc.,2 it is acknowledged that although Anton          have stated, the order is an injunction requiring the person
Piller orders are creatures of the common law, they are           in question to allow itself to be subjected to a seizure.
entirely compatible with the rules set forth in the Code of       Therefore, the defendant’s refusal to comply with the order
Civil Procedure of Québec (C.C.P.). Indeed, it was held that      and allow your representatives to enter upon the premises
pursuant to articles 20 and 46 of the C.C.P., there is            referred to in the order may result in the defendant being
nothing preventing the application, in Québec, of Anton           found to be in contempt of court. This finding generally
Piller orders, notwithstanding the existence of specific rules    leads to a fine being imposed upon the defendant; in
regarding injunctions (751 to 761 C.C.P.) and seizures            extreme cases, the defendant may be sentenced to prison.
before judgment (733 to 740 C.C.P.).
                                                                  These are the two primary factors which make an Anton
In Raymond Chabot SST inc. it was also held that despite          Piller order your protective weapon of choice.
the fact that the issuance of an Anton Piller order might
entail significant violations of a party’s fundamental rights,
in particular the right to privacy, this type of order could be   Clearly, an Anton Piller order is an effective tool, notably in
seen as being consistent with the Charter of Human Rights         circumstances in which, for example, a firm is seeking to
and Freedoms, insofar as the conditions mentioned                 prevent the unhindered circulation of counterfeit goods, the
hereinabove had been fulfilled at the time of issuance of the     illegal copying of a trademark or the violation of a trade
order as well as at the time of its enforcement.                  secret.

EFFECTIVENESS OF ANTON PILLER ORDERS                              Given the scope of the potential effects of an Anton Piller
                                                                  order, the lawyer’s role is particularly important, both for the
Anton Piller orders are popular and numerous, particularly
                                                                  party seeking to obtain and enforce the order as well as for
in matters involving intellectual property Their
                                                                  the party targeted by the order.
effectiveness—and their resulting popularity—are based on
several factors. Firstly, as mentioned above, the fact that
the order is issued in the absence of the adverse party
                                                                  1 Adobe Systems Inc. v. KLJ Computer Solutions Inc. [1999] 3 F.C.
necessarily results in an element of surprise which the
                                                                  621 (p.490-491).
defendant cannot easily avoid. Consequently, more often           2 Raymond Chabot SST inc. v. Groupe AST (1993) inc., REJB
than not, upon the enforcement of the order, you will             2002-35030 (C.A.).
discover several pieces of compromising evidence.
Evidently, the seizure of that evidence makes the

                                                                                       The lawyers in our Litigation Group who are
                                                                                       highly familiar with Anton Piller orders are:

                                                                                       Julie Bourduas
                                                                                       Les (L.B.) Erdle
                                                                                       Éric Lalanne
                                                                                       Ronald H. Levy

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