Viacom Ha! Holding Co. et al. v. Jane Doe et al., (2001) 199 F.T.R. 55 (TD)

• Judge: Pelletier, J.
• Court: Federal Court (Canada)
• Case Date: January 11, 2001
• Jurisdiction: Canada (Federal)
• Citations: (2001), 199 F.T.R. 55 (TD)

Viacom Ha! Holding Co. v. Jane Doe (2001), 199 F.T.R. 55 (TD)

MLB headnote and full text

Temp. Cite: [2001] F.T.R. TBEd. FE.020

The Walt Disney Company and Others (plaintiffs) v. Jane Doe and John Doe and Persons, Names Unknown, Who Offer For Sale, Sell, Import, Manufacture, Produce, Print, Distribute, Advertise, Display, Store, Ship or Deal in Unauthorized or Counterfeit Disney Merchandise, and Those Persons When Listed in Schedule "A" (defendants)

(T-1058-98)

Viacom Ha! Holding Company and Others (plaintiffs) v. Jane Doe and John Doe and Persons, Names Unknown, Who Offer For Sale, Sell, Import, Manufacture, Produce, Print, Distribute, Advertise, Display, Store, Ship or Deal in Unauthorized or Counterfeit South Park Merchandise, and Those Persons When Listed in Schedule "A" (defendants)

(T-550-99)

Nintendo of America Inc. and Nintendo of Canada Ltd. (plaintiffs) v. Jane Doe and John Doe and Persons, Names Unknown, Who Offer For Sale, Sell, Import, Manufacture, Produce, Print, Distribute, Advertise, Display, Store, Ship or Deal in Unauthorized or Counterfeit Pokémon Merchandise, and Those Persons When Listed in Schedule "A" (defendants)

(T-823-99)

Time Warner Entertainment Company, L.P. (plaintiff) v. Jane Doe and John Doe and Persons, Names Unknown, Who Offer For Sale, Sell, Import, Manufacture, Produce, Print, Distribute, Advertise, Display, Store, Ship or Deal in Unauthorized or Counterfeit Looney Tunes Characters Merchandise and Those Persons When Listed in Schedule "A" (defendants)

(T-1064-98)

Indexed As: Viacom Ha! Holding Co. et al. v. Jane Doe et al.

Federal Court of Canada

Trial Division

Pelletier, J.

January 11, 2001.

Summary:

The plaintiffs in copyright and trademarks infringement actions obtained rolling Anton Piller Orders which were executed on the defendants. At a review motion, Tremblay-Lamer, J., dismissed the defendants' objections and granted the review order. Statements of defence and counterclaims were filed. The counterclaims sought damages for wrongful seizure and the manner of the execution of the orders. The plaintiffs moved to strike the counterclaims on the ground that they were frivolous and vexatious or an abuse of process as they put into issue matters which were decided on the review motion.

The Federal Court of Canada, Trial Division, struck the counterclaims as being outside of the court's jurisdiction. Also, to the extent that the defendants' argument that the execution of the Anton Piller Orders was an abuse of process attempted to relitigate the issues raised on the review motion, it was a matter that had already been decided and that decision was binding.

Editor's Note: See 187 F.T.R. 305 for the decision rendered on the review motion.

Courts - Topic 4048

Federal Court of Canada - Jurisdiction - Trial Division - Trademarks - The plaintiffs in copyright and trademarks infringement actions obtained rolling Anton Piller Orders which were executed on the defendants - Statements of defence and counterclaims were filed - The counterclaims sought damages for wrongful seizure and the manner of the execution of the orders - The Federal Court of Canada, Trial Division, struck the counterclaims as being outside of the court's jurisdiction - While s. 53.2 of the Trade-marks Act gave the court jurisdiction to issue an Anton Piller Order and to assess damages upon proof of counterfeiting at trial, it did not confer jurisdiction on the court to deal with any other claims arising between subject and subject - The court had no jurisdiction to award damages between subject and subject for wrongful seizure - See paragraphs 11 to 16.

Estoppel - Topic 381.1

Estoppel by record (res judicata) - Res judicata as a bar to subsequent proceedings - In intellectual property proceedings - The plaintiffs in copyright and trademarks infringement actions obtained rolling Anton Piller Orders which were executed on the defendants - At a review motion, Tremblay-Lamer, J., dismissed the defendants' objections and granted the review order - Statements of defence and counterclaims were filed - The counterclaims sought damages for wrongful seizure and the manner of the execution of the orders - The Federal Court of Canada, Trial Division, held that to the extent that the defendants' argument that the execution of the Anton Piller Orders was an abuse of process attempted to relitigate the issues raised on the review motion, it was a matter that had already been decided and that decision was binding - While the review motion was an interlocutory proceeding, on the issues canvassed on the review motion it was a final decision - See paragraphs 17 to 18.

Estoppel - Topic 382

Estoppel by record (res judicata) - Res judicata as a bar to subsequent proceedings - In interlocutory proceedings - [See Estoppel - Topic 381.1 ].

Estoppel - Topic 386

Estoppel by record (res judicata) - Res judicata as a bar to subsequent proceedings - Issues decided in prior proceedings - [See Estoppel - Topic 381.1 ].

Injunctions - Topic 1785

Interlocutory or interim injunctions - Preservation of status quo - Seizure (Anton Piller Order) - [See Courts - Topic 4048 ].

Trademarks, Names and Designs - Topic 3005

Trademarks - Infringement actions - Jurisdiction - [See Courts - Topic 4048 ].

Cases Noticed:

Ordon et al. v. Grail, [1998] 3 S.C.R. 437; 232 N.R. 201; 115 O.A.C. 1, refd to. [para. 11].

Innotech Pty. Ltd. v. Phoenix Rotary Spike Harrows Ltd. et al. (1997), 215 N.R. 397 (F.C.A.), refd to. [para. 13].

Stamper v. Finnigan et al. (1984), 57 N.B.R.(2d) 411; 148 A.P.R. 411 (T.D.), refd to. [para. 17].

Ruby Trading S.A. v. Parsons et al. (2000), 194 F.T.R. 103 (T.D. Protho.), refd to. [para. 17].

Statutes Noticed:

Trade-marks Act, R.S.C. 1985, c. T-13, sect. 53.2 [para. 12].

Counsel:

Lorne M. Lipkus, for Walt Disney Co., Viacom Ha! Holding Co. and Nintendo of America and others;

Colleen Spring Zimmerman and May M. Cheng, for Time Warner Entertainment Co., L.P.;

Alnashir Tejani and Ghanwa Elmerhebi, on their own behalf.

Solicitors of Record:

Kestenberg Siegal Lipkus, Toronto, Ontario, for Walt Disney Co. and Viacom Ha! Holding Co.;

Blaney McMurtry LLP, Toronto, Ontario, for Nintendo of America Inc. and Nintendo of Canada Ltd.;

Fasken Martineau Dumoulin LLP, Toronto, Ontario, for Time Warner Entertainment Co., L.P.

This motion was dealt with in writing without the appearance of parties by Pelletier, J., of the Federal Court of Canada, Trial Division, who delivered the following decision on January 11, 2001.