Stagliano (John) Inc. et al. v. Elmaleh et al., (2006) 292 F.T.R. 208 (FC)

• Judge: Gauthier, J.
• Court: Federal Court (Canada)
• Case Date: April 19, 2006
• Jurisdiction: Canada (Federal)
• Citations: (2006), 292 F.T.R. 208 (FC);2006 FC 585

Stagliano v. Elmaleh (2006), 292 F.T.R. 208 (FC)

MLB headnote and full text

Temp. Cite: [2006] F.T.R. TBEd. MY.047

John Stagliano Inc., Jules Jordan Video Inc. and Ashley Gasper (plaintiffs) v. Alain Elmaleh, Jacky Elkeslassy, Gerald Ouzzan, 144942 Canada Inc. (cob Kaytel Video Distribution), Leisure Time Canada Inc., Transworld Sales Agency Ltd., Jacky's One Stop Distribution Inc., Sylnet Distribution Inc., John Doe, Jane Doe and other persons, names unknown, who deal in unauthorized or counterfeit Ea Merchandise (defendants) and Alain Elmaleh and 144942 Canada Inc. (cob Kaytel Video Distribution) (plaintiffs by counterclaim) and John Stagliano Inc., Jules Jordan Video Inc., Ashley Gasper, Sabin Brunet and Jacky Elkeslassy (defendants by counterclaim)

(T-1779-05; 2006 FC 585)

Indexed As: Stagliano (John) Inc. et al. v. Elmaleh et al.

Federal Court

Gauthier, J.

May 10, 2006.

Summary:

The plaintiffs obtained an Anton Piller order which was subsequently executed. The plaintiffs then brought a motion to confirm that the Anton Piller order was properly granted and executed and sought permission to use the evidence produced or obtained by the defendants in two pending actions in the United States. In response, two of the defendants sought an order vacating the Anton Piller order as well as the return of all documents and materials seized.

The Federal Court dismissed the plaintiffs' motion and ordered that all items seized during the execution of the Anton Piller order be returned to the defendants, except for material that had been filed with the court. The material filed with the court was ordered to be kept sealed at the court registry and any copies of such material in the possession of the parties was to be treated as confidential.

Practice - Topic 3378.9

Interim proceedings - Preservation of property - Anton Piller order - General - The Federal Court reviewed the legal principles applicable to Anton Piller orders - See paragraphs 101 to 111.

Practice - Topic 3379.3

Interim proceedings - Preservation of property - Anton Piller order - Setting aside - The plaintiffs, who were involved in the adult film business, claimed that the defendants were involved in copyright infringement and obtained an Anton Piller order - The defendants' premises were searched and material seized - The plaintiffs moved to confirm the order and sought permission to use the evidence produced or obtained from the defendants in two pending actions in the United States - Two of the defendants sought an order vacating the Anton Piller order as well as the return of all documents and materials seized - The Federal Court set aside the Anton Piller order - The court found that although the plaintiffs established an extremely strong prima facie case for issuance of the order, they failed to establish that they would have suffered "very serious damage" if the order was not granted or a "real possibility" that the defendants might have destroyed the material in issue - The court opined that even if it was wrong in these conclusions, the order would nevertheless be set aside because of deficient and incomplete disclosure provided by the plaintiffs on their ex parte motion - The court ordered that all items seized during the execution of the Anton Piller order be returned to the defendants, except for material that had been filed with the court, which was ordered to be sealed and kept confidential - See paragraphs 101 to 229.

Cases Noticed:

Adobe Systems Inc. et al. v. KLJ Computer Solutions Inc. et al., [1999] 3 F.C. 621; 166 F.T.R. 184 (T.D.), refd to. [para. 101].

Titan Sports Inc. et al. v. Mansion House (Toronto) Ltd. et al. (1989), 31 F.T.R. 25 (T.D.), refd to. [para. 102].

WIC Premium Television v. Levin et al., [1999] F.T.R. Uned. 295 (T.D.), refd to. [para. 102].

Procter & Gamble Inc. et al. v. John Doe et al., [2000] F.T.R. Uned. 26 (T.D.), refd to. [para. 102].

Top Star Distribution Group Inc. et al. v. Sigma et al., [2000] F.T.R. Uned. 62 (T.D.), refd to. [para. 103].

Netbored Inc. v. Avery Holdings Inc. et al., [2000] F.T.R. Uned. B02; 2005 FC 1405, refd to. [para. 104].

Nike Canada Ltd. v. Jane Doe - see Viacom Ha! Holding Co. et al. v. Jane Doe et al.

Viacom Ha! Holding Co. et al. v. Jane Doe et al. (2000), 187 F.T.R. 305 (T.D.), affd. (2001), 286 N.R. 392; 2001 FCA 395, refd to. [para. 106].

Canadian Private Copying Collective v. Amico Imaging Services Inc. et al. (2004), 249 F.T.R. 312; 2004 FC 469, affd. (2004), 329 N.R. 233; 2004 FCA 412, refd to. [para. 106].

Chum Ltd. et al. v. Stempowicz et al. (2003), 236 F.T.R. 215; 2003 FCT 800, refd to. [para. 108].

Nintendo of America Inc. v. Coinex Video Games Inc. et al., [1983] 2 F.C. 189; 46 N.R. 311 (F.C.A.), refd to. [para. 130].

Fila Canada Inc. v. Jane Doe et al., [1996] 3 F.C. 493; 114 F.T.R. 155 (T.D.), refd to. [para. 163].

R.S.M. International Active Wear Inc. v. Quality Goods I.M.D. Inc. et al. (1994), 82 F.T.R. 104; 57 C.P.R.(3d) 353 (T.D.), refd to. [para. 191].

Canada v. ICHI Canada Ltd., [1992] 1 F.C. 571; 49 F.T.R. 254 (T.D.), refd to. [para. 206].

Kirkbi AG et al. v. Ritvik Holdings Inc. et al. (2000), 196 F.T.R. 214 (T.D.), refd to. [para. 207].

Merck & Co. et al. v. Apotex Inc. (1996), 106 F.T.R. 114; 65 C.P.R.(3d) 292 (T.D.), refd to. [para. 208].

Counsel:

George Karayannides and Mark Edward Davis, for the plaintiffs;

Serge Segal and Maxime Bourret, for the defendants.

Solicitors of Record:

Heenan Blaikie LLP, Toronto, Ontario, for the plaintiffs;

Segal, Laforest, Montreal, Quebec, for the defendants.

This motion was heard at Ottawa, Ontario, on April 19, 2006, by Gauthier, J., of the Federal Court, who released the following decision on May 10, 2006.