Date: 20010614
Docket: T-1065-98
Neutral Citation: 2001 FCT 637
Between:
CHIC OPTIC INC. and
CONTOUR OPTIK INC.
Plaintiffs
- and -
HAKIM OPTICAL LABORATORY LIMITED and
KARIM HAKIMI
Defendants
REASONS FOR ORDER
PINARD, J.:
[1] The plaintiffs seek an order pursuant to rule 467 of the Federal Court Rules, 1998, SOR/98-106, (the Rules) directing both Hakim Optical Laboratory Limited (the defendant) and Mr. Karim Hakimi in his personal capacity (the proposed defendant) to show cause in relation to their alleged contempt of court pursuant to rule 466(b) of the same. The plaintiffs collaterally seek an order allowing them to amend the proceedings to add Mr. Hakimi as a co-defendant.
[2] On August 12, 1999, Madam Justice McGillis, upon consent of the parties herein, made the following Order (the Order):
THIS COURT ORDERS:
1. The Defendant Hakim Optical Laboratory Limited, its officers, servants, agents and all those over whom it exercises control are hereby enjoined from importing, transporting, making, using, selling, advertising or offering for sale any eyewear device which infringes the claims of Canadian Patent No. 2,180,714.
2. The Defendant Hakim Optical Laboratory Limited shall forthwith destroy all eyewear devices which infringe the claims of Canadian Patent No. 2,180,714, which are in the possession or under the control of Hakim Optical Laboratory Limited.
3. The Court Orders that the Registrar of the Court forthwith return to the Plaintiff Chic Optic Inc. the sum of $20,000.00 (plus accrued interest), payable to McCarthy Tétrault, in trust, representing security for costs posted by the Plaintiff in the within action.
[3] As outlined in the Rules, the first stage in a contempt proceeding requires that an order be sought from the Court enjoining the person alleged to be in contempt to show cause, in accordance with the following procedure:
| 467. (1) Subject to rule 468, before a person may be found in contempt of Court, the person alleged to be in contempt shall be served with an order, made on the motion of a person who has an interest in the proceeding or at the Court's own initiative, requiring the person alleged to be in contempt (a) to appear before a judge at a time and place stipulated in the order; (b) to be prepared to hear proof of the act with which the person is charged, which shall be described in the order with sufficient particularity to enable the person to know the nature of the case against the person; and (c) to be prepared to present any defence that the person may have. (2) A motion for an order under subsection (1) may be made ex parte. (3) An order may be made under subsection (1) if the Court is satisfied that there is a prima facie case that contempt has been committed. (4) An order under subsection (1) shall be personally served, together with any supporting documents, unless otherwise ordered by the Court. |
467. (1) Sous réserve de la règle 468, avant qu'une personne puisse être reconnue coupable d'outrage au tribunal, une ordonnance, rendue sur requête d'une personne ayant un intérêt dans l'instance ou sur l'initiative de la Cour, doit lui être signifiée. Cette ordonnance lui enjoint : a) de comparaître devant un juge aux date, heure et lieu précisés; b) d'être prête à entendre la preuve de l'acte qui lui est reproché, dont une description suffisamment détaillée est donnée pour lui permettre de connaître la nature des accusations portées contre elle; c) d'être prête à présenter une défense. (2) Une requête peut être présentée ex parte pour obtenir l'ordonnance visée au paragraphe (1). (3) La Cour peut rendre l'ordonnance visée au para-graphe (1) si elle est d'avis qu'il existe une preuve prima facie de l'outrage reproché. (4) Sauf ordonnance contraire de la Cour, l'ordonnance visée au paragraphe (1) et les documents à l'appui sont signifiés à personne. |
The expression "contempt of Court" is defined in the Rules as follows:
| 466. Subject to rule 467, a person is guilty of contempt of Court who (a) at a hearing fails to maintain a respectful attitude, remain silent or refrain from showing approval or disapproval of the proceeding; (b) disobeys a process or order of the Court; (c) acts in such a way as to interfere with the orderly administration of justice, or to impair the authority or dignity of the Court; (d) is an officer of the Court and fails to perform his or her duty; or (e) is a sheriff or bailiff and does not execute a writ forthwith or does not make a return thereof or, in executing it, infringes a rule the contravention of which renders the sheriff or bailiff liable to a penalty. |
466. Sous réserve de la règle 467, est coupable d'outrage au tribunal quiconque : a) étant présent à une audience de la Cour, ne se comporte pas avec respect, ne garde pas le silence ou manifeste son approbation ou sa désapprobation du déroulement de l'instance; b) désobéit à un moyen de contrainte ou à une ordonnance de la Cour; c) agit de façon à entraver la bonne administration de la justice ou à porter atteinte à l'autorité ou à la dignité de la Cour; d) étant un fonctionnaire de la Cour, n'accomplit pas ses fonctions; e) étant un shérif ou un huissier, n'exécute pas immédiatement un bref ou ne dresse pas le procès-verbal d'exécution, ou enfreint une règle dont la violation le rend passible d'une peine. |
[4] It is trite law that in assessing whether to issue an order to show cause in respect of a contempt issue, this Court must determine whether the applicant, in its motion and supporting affidavit evidence, has made out a prima facie case of contempt within rule 467. In the present matter, the factual evidence must specifically establish that the respondent to the motion committed an act that was in disobedience of a process or order of the Court. Indeed, a show cause order will be granted where there is prima facie evidence of a wilful refusal to comply with a Court order (see, for example, Imperial Chemical Industries PLC et al. v. Apotex Inc. (1989), 26 F.T.R. 47 and Frank v. Bottle et al. (1993), 65 F.T.R. 89).
[5] Here, the affidavit evidence adduced by the plaintiffs contains serious, detailed allegations that the defendant, on the advice of its president, the proposed defendant, engaged in a deliberate scheme for the purpose of importing, transporting, selling and offering for sale the infringing eyewear device and further, that it did not destroy the approximate 1,000 pairs of infringing eyewear devices it had stored in its warehouse. According to the affiant Hussein Sumaida, a former consultant for the defendant, the proposed defendant, Mr. Hakimi, in late July 2000 or early August 2000, called a meeting which was attended not only by Mr. Hakimi and Mr. Sumaida themselves, but also by Mr. Tony Boni, the warehouse manager of the defendant, Mr. Ricco Haras and a number of area managers of the defendant for the Toronto area, including Jeff Cockburn, Scott Rose, and a certain Sarah. It is during this meeting that Mr. Kakimi would have explained to them the above scheme. In response to these grave allegations, the defendant merely attempts to attack the credibility of Mr. Sumaida while the proposed defendant merely denies the latter's testimony, in addition to explaining what he has done to avoid that Madam Justice McGillis' Order be disobeyed. However, no one else denies their attendance at the meeting where the proposed defendant would have explained the alleged scheme to contravene that Order. At this stage, given the seriousness of Mr. Sumaida's allegations, I can only draw a very negative inference from the unexplained lack of affidavit evidence from any of the defendant's warehouse manager and/or area managers who are alleged to have attended the meeting.
[6] In such a context, the plaintiffs' evidence of the use by the defendant of some seven infringing eyewear devices, in contravention of Madam Justice McGillis' Order, becomes more significant and important.
[7] I am satisfied, therefore, that the evidence, at this stage, raises a prima facie case of contempt against both the defendant and the proposed defendant.
[8] As I am satisfied that this matter could not be effectually and completely settled unless Mr. Hakimi, in his personal capacity, is a party to this action, I find that, pursuant to paragraph 104(1)(b) of the Rules, the latter ought to be added as a defendant. In light of the prima facie evidence of his personal involvement in breaching the Order, it is certainly not plain and obvious that the cause of action against him would fail (see Norac Systems International Inc. v. Prairie Systems and Equip. Ltd. et al. (1997), 72 C.P.R. (3d) 303 (F.C.T.D.)). It is in the interest of justice that he be bound by the result of the proceedings (see Stevens v. Parker, J., et al. (1998), 228 N.R. 133 (F.C.A.)).
[9] For the above reasons, I would grant the plaintiffs' motion for a show cause hearing, add the defendant's president Mr. Karim Hakimi, in his personal capacity, as a defendant in these proceedings and order that the defendants Hakim Optical Laboratory Limited and Karim Hakimi appear before the Federal Court of Canada, sitting in Motions Court, in the City of Montreal in the province of Quebec, on Monday, the 30th day of July, 2001, at 9:30 a.m., to hear proof of the following acts, purportedly committed by the defendant Karim Optical Laboratory Limited on the instructions or orders of the defendant Karim Hakimi, with which they are charged herein and to urge any grounds of defence that they may have in order to avoid being found guilty of contempt of Court and be sentenced pursuant to rule 472 of the Rules:
(a) having knowingly and intentionally imported, transported, used, advertised, offered for sale and sold eyewear devices which infringe the plaintiffs' Canadian Patent No. 2,180,714 (the Patent);
(b) having knowingly and intentionally failed to destroy all eyewear devices which infringe the Patent;
(c) having knowingly, intentionally and recklessly failed to put into place the necessary procedures to ensure that the terms of the Order were respected by its officers, servants, agents and all those over whom it exercises control or authority;
(d) having purposely, knowingly and intentionally orchestrated and executed a scheme to disobey the Order;
(e) having knowingly and intentionally distributed to some or all of its greater Toronto area stores, eyewear devices which infringe the Patent having done so in a clandestine manner in a deliberate attempt at avoiding detection, said infringing eyewear devices being either new orders, and/or being infringing eyewear devices which the defendant failed to destroy following the Order;
(f) having knowingly and intentionally ordered some or all of its greater Toronto area stores to take special measures to display clandestinely and discretely offer for sale eyewear devices which infringe the Patent.
[10] If an interested party is of the opinion that the above hearing is likely to exceed two hours, such a party shall, within twenty (20) days from the date of this Order, make a request pursuant to rule 35 for an appointment of a special time and place for the sitting of a judge of the Trial Division to hear the matter.
[11] Costs in the cause.
JUDGE
OTTAWA, ONTARIO
June 14, 2001
FEDERAL COURT OF CANADA
TRIAL DIVISION
NAMES OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: T-1065-98
STYLE OF CAUSE: CHIC OPTIC INC. and CONTOUR OPTIK INC.
v.
HAKIM OPTICAL LABORATORY LIMITED and KARIM HAKIMI
PLACE OF HEARING: Montréal, QC
DATE OF HEARING: May 31, 2001
REASONS FOR ORDER OF The Honourable Mr. Justice Pinard
DATED: June 14, 2001
APPEARANCES:
Mr. Daniel Artola and FOR PLAINTIFFS
Mr. Laurent Debrun
Mr. Mark K. Evans FOR DEFENDANTS
SOLICITORS OF RECORD:
McCarthy Tétrault FOR PLAINTIFFS
Montréal, QC
Smart & Biggar FOR DEFENDANTS
Toronto, ON