Date: 19990924
Docket: T-2192-95
IN THE MATTER OF ss. 7, 9, 19, 20, 22, 25, 50, 52 and 53
of the Trade-marks Act, R.S.C. 1985, Ch. T-13
BETWEEN:
TOMMY HILFIGER LICENSING, INC. and
TOMMY HILFIGER CANADA INC.
Plaintiffs
- and -
PHILLIPE SIMPSON, HARMONY APPAREL, MICHEL SOLIMAN,
GOLDSTAR DESIGN LTD., and JOHN DOE and JANE DOE
and OTHER PERSON UNKNOWN TO THE PLAINTIFFS
WHO OFFER FOR SALE, SELL, IMPORT, MANUFACTURE,
ADVERTISE, OR DEAL IN COUNTERFEIT TOMMY HILFIGER
CLOTHING
Defendants
________________________________________________________________________________________________
Docket: T-2027-97
IN THE MATTER OF ss. 7, 9, 19, 20, 22, 25, 50, 52 and 53
of the Trade-marks Act, R.S.C. 1985, Ch. T-13
BETWEEN:
NIKE CANADA LTD., NIKE INTERNATIONAL LTD. and
NIKE (IRELAND) LTD.
Plaintiffs
- and -
JANE DOE and JOHN DOE and
OTHER PERSONS, NAMES UNKNOWN,
WHO OFFER FOR SALE, SELL, IMPORT, MANUFACTURE, DISTRIBUTE,
ADVERTISE, OR DEAL IN UNAUTHORIZED OR COUNTERFEIT
NIKE MERCHANDISE, AND THOSE PERSONS LISTED
IN SCHEDULE "A" HERETO
Defendants
_________________________________________________________________________________________________
Docket: T-945-98
IN THE MATTER OF ss. 7, 9, 19, 20, 25, 50, 52 and 53 of
the Trade-marks Act, R.S.C. 1985, Ch. T-13
BETWEEN:
FILA CANADA INC.
Plaintiff
- and -
JANE DOE and JOHN DOE and
OTHER PERSONS, NAMES UNKNOWN,
WHO OFFER FOR SALE, SELL, IMPORT,
MANUFACTURE, DISTRIBUTE, ADVERTISE,
OR DEAL IN UNAUTHORIZED OR COUNTERFEIT
FILA MERCHANDISE, AND THOSE PERSONS
LISTED IN SCHEDULE "A" TO THE STATEMENT OF CLAIM
Defendants
_________________________________________________________________________________________________
Docket: T-1058-98
IN THE MATTER OF ss. 7, 9, 19, 20, 22, 25, 50, 52 and 53 of
the Trade-marks Act, R.S.C. 1985, Ch. T-13
AND IN THE MATTER OF ss. 3, 5, 13, 25, 27 and 34-39 of
the Copyright Act, R.S.C. 1985, Ch. C-42, as amended
BETWEEN:
THE WALT DISNEY COMPANY (CANADA) LIMITED, and
DISNEY ENTERPRISES, INC.
Plaintiffs
- and -
JANE DOE and JOHN DOE and
OTHER PERSONS, NAMES UNKNOWN,
WHO OFFER FOR SALE, SELL, IMPORT,
MANUFACTURE, DISTRIBUTE, ADVERTISE,
OR DEAL IN UNAUTHORIZED OR COUNTERFEIT
DISNEY MERCHANDISE, AND THOSE PERSONS
LISTED IN SCHEDULE "A" TO THE STATEMENT OF CLAIM
Defendants
_________________________________________________________________________________________________
Docket: T-1064-98
BETWEEN:
TIME WARNER ENTERTAINMENT COMPANY, L.P.
Plaintiff
- and -
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
_________________________________________________________________________________________________
Docket: T-646-99
BETWEEN:
ADIDAS-SALOMON AG and ADIDAS (CANADA) LIMITED
Plaintiffs
- and -
JANE DOE and JOHN DOE and OTHER PERSONS,
NAMES UNKNOWN, WHO OFFER FOR SALE, SELL, IMPORT,
MANUFACTURE, DISTRIBUTE, ADVERTISE,
OR DEAL IN UNAUTHORIZED OR COUNTERFEIT
ADIDAS MERCHANDISE, AND THOSE PERSONS
LISTED IN SCHEDULE "A" HERETO
Defendants
_________________________________________________________________________________________________
Docket: T-823-99
BETWEEN:
NINTENDO OF AMERICA INC. and
NINTENDO OF CANADA LTD.
Plaintiffs
- and -
JANE DOE and JOHN DOE and OTHER PERSONS, NAMES
UNKNOWN, WHO OFFER FOR SALE, SELL, IMPORT,
MANUFACTURE, DISTRIBUTE, ADVERTISE, OR DEAL IN
UNAUTHORIZED OR COUNTERFEIT POKÉMON MERCHANDISE,
AND THOSE PERSONS LISTED IN SCHEDULE "A"
TO THE STATEMENT OF CLAIM
Defendants
REASONS FOR ORDERS
REED, J.:
[1] These reasons relate to the costs to be awarded consequent on the execution of several rolling Anton Piller orders, when a number of such orders were served on a number of persons on different days and at different locations, and the motions to approve all the executions were brought to the Court by one counsel on one motion's day.
[2] The executions were eighty-five in number, and took place over the long weekend, May 22-24, 1999, as well as on the afternoon of Tuesday May 25, 1999. This activity led to eleven motions being brought to the Court, on June 7, 1999, seeking approval of those executions. The review of the executions against many of those served has already been dealt with. The reviews of some are described in reasons, dated July 7, 1999, on file T-2027-97 and related files, and reasons, dated August 5, 1999, on file T-2521-97. The reviews of some executions were adjourned, and others were issued on consent. As a result, these reasons relate only to the cost orders that are to be made against (1) Guang Zhi Hu and Yuet Hung Zong, and (2) Smile Trading Co. Ltd., Shun Jing Lau and Kam Fun Hui ("Smile Trading Co."). These persons did not consent to an order being made against them, nor did they appear on June 7, 1999, on the review of the execution of the rolling Anton Piller orders that had been served on them. The orders to be issued, to which these reasons relate are therefore default orders.
[3] Guang Zhi Hu and Yuet Hung Zong were served with seven Anton Piller orders. The names of the plaintiffs together with a description of the items seized pursuant to the execution of the respective orders is set out below:
| Tommy Hilfiger: 1 sweatshirt |
| Nike: 4 sweatshirts |
| Fila: 2 sweatshirts |
| Walt Disney: 2 sweatshirts |
| 5 watches |
| 10 hair clips |
| Time Warner: 14 novelty items |
| 1 sweatshirt |
| 8 hair clips |
| Adidas: 2 sweatshirts |
| Nintendo: 3 Brushes in Disney packaging |
(The full names of the plaintiffs and the relevant Court file numbers are found in the styles of cause that precede these reasons.)
[4] The service of the seven Anton Piller orders and the seizure of the goods from Guang Zhi Hu and Yuet Hung Zong occurred at 2:35 p.m., on Saturday, May 22, 1999, at Kingsway Knight Flea Market, in Vancouver. It was part of a larger search and seizure action at that location, on the same afternoon, against a number of flea market stall operators.1
[5] Similar search and seizure activity was conducted on Sunday, May 23, against flea market stall operators at the Terminal Avenue Flea Market, in Vancouver, as well as against Toys in Motion, at 6050 No. 3 Road, Richmond, and on Monday, May 24th, against various premises in the Vancouver Chinatown area.
[6] Smile Trading Co. was served with three Anton Piller orders. Goods on behalf of only two plaintiffs were found and seized. These were:
| Nintendo: 4 novelty items |
| 1 pencil box |
| 2 wallets |
| 2 fans |
| 2 nail clippers |
| 20 stickers (10/pack) |
| 10 stickers (4/pack) |
| 66 figurines (sets) |
| 16 clips |
| Disney: 2 music boxes (Pooh) |
| 12 Pooh figurines (set) |
[7] The service of the three rolling Anton Piller orders and the seizure of the goods from Smile Trading Co. occurred at 2:35 p.m., on May 25, 1999, at Unit 2075 - 8888 Odlin Cres., Richmond, B.C. Other services on other merchants in Richmond occurred on the same day.2 One such occurred at a neighbouring business (AMC Ideal Gifts, at Unit 2095 - 8888 Odlin Cres., Richmond), at approximately the same time.
[8] A review of the various motion records, placed before the Court on June 7, provides the context in which the executions of the orders under consideration occurred. On Saturday, May 22, 1999, between 11:50 a.m. and 3:30 p.m., at the Kingsway Knight Flea Market, twenty-six Anton Piller orders were served on behalf of eight plaintiffs against nine flea market stall operators, leading to requests to the Court for twenty-six orders. On May 25, between 1:30 p.m. and 4:00 p.m., thirteen Anton Piller orders were served on behalf of four different plaintiffs against four businesses located in Richmond, B.C., leading to requests to the Court for thirteen orders. This activity together with the other executions of the rolling Anton Piller orders that took place on May 22 - 24, resulted in eighty-five rolling Anton Piller orders being served, on behalf of eleven plaintiffs against thirty businesses, and as noted above, this led to requests to the Court on June 7, 1999, for eighty-five orders.
[9] While there were only eleven motions before the Court, one motion can give rise to a request for several orders (on the Nintendo file, seventeen; on the Disney file, eighteen). I understand that until recently, it was counsel's practice to seek and the Court's practice to award $1,250 in costs for each order that was granted. Under this practice, the services that took place from 11:50 a.m. to 3:05 p.m. at the Kingsway Knight Flea Market on May 22 would have resulted in an award of costs totalling $32,500 (26 x $1,250); the services that took place on the afternoon of May 25 would have resulted in an award of costs totalling $16,250 (13 x $1,250); the award of costs for all the orders sought from the Court on June 7 would have totalled $106,250 (85 x $1,250). (Orders that are signed on consent usually contain no award of costs, but it should not be assumed that no costs are paid by the defendants with respect to those orders.3)
[10] A few of the draft orders passed up to me on June 7 contained a cost provision that reflected the above-described practice. However, counsel was not seeking cost awards at that time and I believe these draft orders were prepared in error. Most of the draft orders that I was asked to sign included a provision that the determination of costs be deferred to a later date. At the time, Mr. Justice Gibson had under reserve a decision with respect to the awards of costs that were being granted on these review motions. He issued reasons, on June 22, 1999, in Nike Canada Ltd. et al. v. Jane Doe and John Doe et al. (T-2027-97).4 Mr. Justice Gibson held that cost awards for these executions should not exceed $500 per order and $5,000 per day in Court, including disbursements. He dealt with a situation in which rolling Anton Piller orders on behalf of several plaintiffs had been served on the same day, at the same flea market location, and made returnable on the same motion's day. He did not address the situation in which search activity takes place over a number of days, at a number of different locations, and the executions are made returnable by one counsel on one motion's day.
[11] Mr. Justice Gibson made three observations in the Nike decision that are particularly relevant to the present situation: costs are not meant to provide a full cost recovery for the party; the amount of work involved is a significant factor in assessing cost awards for these executions and the Court review thereof; the fact that costs are not recovered from some defendants does not justify an increase in costs against the others.5
[12] Counsel for the plaintiffs submits that there were eight different "teams" executing the rolling Anton Piller orders on May 22 - May 25 and that Mr. Justice Gibson's decision indicates that each team is entitled to a maximum of $5,000 in costs, for every day it executed Anton Piller orders. Therefore, counsel submits that each order obtained against Guang Zhi Hu and Yuet Hung Zong should carry a cost award of either $250 or $278 (total costs to be paid by them would be $1,750 - $1,946). Counsel submits that each order obtained against Smile Trading Co. should carry a cost award of $500 (total costs to be paid would be $1,000).
[13] I do not interpret Mr. Justice Gibson's decision in this manner. I understand his decision to establish maximums, not to determine that in every case the maximum is the appropriate award.
[14] An award of costs in these cases can be considered as comprising three components: an amount paid on account of the preparation of the motion; an amount paid on account of attendance at Court; an amount to cover disbursements. The Tariff provides for the first two:
| Item |
Assessable Service |
Column I |
Column II |
Column III |
Column IV |
Column V |
| B. Motions |
||||||
| 4. |
Preparation and filing of an uncontested motion, including all materials. |
1-2 |
1-3 |
2-4 |
2-5 |
2-6 |
| 5. |
Preparation and filing of a contested motion, including materials and responses thereto. |
1-3 |
2-5 |
3-7 |
4-9 |
5-11 |
| 6. |
Appearance on a motion, per hour. |
1 |
1-2 |
1-3 |
1-4 |
1-5 |
[15] A unit under the tariff equates to $100. The columns designate motions of increasing complexity, with column I being the least complex and column V the most complex. There is no doubt that these motions are of the simplest kind.
Preparation and Filing of Motions
[16] As noted, there were eleven motions before the Court on June 7, and Guang Zhi Hu and Yuet Hung Zong were named in seven. In one motion (Hilfiger) they were the only defendants named. In others, e.g., Disney and Nintendo, they were one of 18 and 17 potential defendants respectively. Thus, in the latter cases, if the tariff was applied on a pro rata basis to the allowable costs of the motion Guang Zhi Hu and Yuet Hung Zong would be responsible for 1/18 and 1 /17 respectively. Smile Trading Co. was only named in two motions, Disney and Nintendo and according would also be responsible for 1/18 and 1 /17 of the costs of the relevant motions respectively.
[17] While this type of pro rata calculation seems inappropriate, it must be noted that the documentation used for presenting motions to the Court for review of the executions is of a standard form type. For example, the Notices of Motion are virtually identical except for file number, style of cause, and the identification of the Anton Piller order. The written representations for each are also virtually identical. One is aware that with today's computer technology, all that is required to produce much of this documentation is the changing of a few elements of the parent document and a pushing of the print button. The solicitors' reports filed by the supervising solicitors are, in part, in a standard format. The original solicitor's report usually deals with all executions over the relevant period of time and is placed on only one file (in this case the Nike file), with photocopies of it, or parts of it, being placed on the other files. The commonality of the documentation used for these motions is a significant factor when assessing costs, as is the fact that the plaintiffs seek costs per order, not costs per motion.
Court Appearance
[18] The tariff provides for amounts per hour. A review of any of the files, on which rolling Anton Piller orders have been issued, reveals that the review of the execution of a rolling Anton Piller order, together with the issuance of an order adding the particular individual as a defendant to the action can take as little as a few seconds to process in Court. They rarely take more than five minutes in total. Counsel's estimate to the Court of the time required for review is usually, as it was in the present case, 5 to 10 minutes per motion.
[19] The proceedings on June 7 took longer than is usual for the review of executions of rolling Anton Piller orders. A significant number of those who had been served appeared in Court. Usually, the persons served do not appear; plaintiffs' counsel seeks to settle with them before the return of the motion; sometimes the person served simply ignores the whole proceeding.
[20] On June 7, many of the individuals who had been served did not understand why they were there, only that they had received a notice to attend; many did not speak English. Thus, the processing of the 85 orders took a whole day. Those that were uncontested, however, such as those to be issued against Guang Zhi Hu and Yuet Hung Zong, and Smile Trading Co. did not consume much time. In total they did not take more than five minutes of the Court's time. In addition, the costs of the court attendance would be shared by the several plaintiffs, since one counsel appeared for them all.
Disbursements
[21] The most significant cost will be the disbursement associated with the execution itself. The Court requires that the executions be supervised by a lawyer. There will also likely be at least one investigator in attendance and a police officer. In the case of the executions that took place May 22 - May 25, the police officers were apparently on duty, during at least part of the days in question, since some of the goods seized were taken into police custody (see reasons dated July 7, 1999, on T-2027-97 and related files). This is relevant for present purposes, because the plaintiffs would not have incurred disbursements with respect to the presence of on-duty police officers.
[22] While counsel states that eight different teams undertook the executions, in fact, there were only five people in addition to the police officers involved: two lawyers and three investigators. These were Messrs. Lipkus, Ovadia, Hunter, Shoreman and Leswick. It is my understanding that Mr. Lipkus is a lawyer who comes from Toronto, Mr. Ovadia is a lawyer from Montreal, and Messrs. Hunter, Shoreman and Leswick are private investigators, with offices in Toronto or Montreal. Messrs. Ellis, Rennie and Knibbs are members of the Vancouver Police. (Sometimes Mr. Ellis' name is written as Ens. in the affidavit material - unless there was a fourth police officer named Ens.) Mr. Leswick appears to have been involved only in the executions on file T-2521-97, and Mr. Shoreman's role appears also to have been limited to three or four executions, other than those on T-2521-97. In any event, the limited time required for the execution of several rolling Anton Piller orders, simultaneously, against one defendant is clear from the description set out above (page 6, n. 1). It is also obvious that the disbursements associated with the executions of the Anton Piller orders that took place May 22 - May 25 are the joint expenditures of the several plaintiffs and should be apportioned amongst them.
Conclusion
[23] I turn then to the cost awards that should be included in the orders in question. Given the commonality of the documents, I am of the view that an award of $250 against Guang Zhi Hu and Yuet Hung Zong for the preparation of the parts of all the motions that relate to them is generous. The time taken by counsel's appearance in Court was no more than 2 - 3 minutes in total. The time spent in executing all seven orders did not likely exceed thirty minutes. Taking all these factors into account, as well as considering that there will have been other disbursement and related costs to which I have not specifically referred, I have decided that the lump sum costs to be borne by Guang Zhi Hu and Yuet Hung Zong should be no more than $490, that is $70 per order.
[24] Smile Trading Co. is named as defendant in two motions, those relating to the Disney and Nintendo files. The circumstances of the executions against Smile Trading Co. are not appreciably different: there is a commonality of documentation on the files; the time spent on court attendance was not more than 2 minutes; this is obvious on a review of the transcript of the June 7 proceeding; the amount of time spent executing the Anton Piller order was not great (in fact executions at two different but closely situated locations appear to have taken place simultaneously). I accept that disbursements per order would be greater than in cases where more Anton Pillers were served. I consider a cost award of $100 per order to be generous.
[25] Orders will issue in accordance with these reasons.
Judge
OTTAWA, ONTARIO
September 24, 1999
__________________1 The records filed with the Court give a picture of that search and seizure activity. They show that at 11:50 a.m., Messrs. Lipkus, Hunter and Ellis served Lieu Anh Man Le with five Anton Piller orders (Nike, Fila, Disney, Adidas, Time Warner ); at 12:10 p.m., Messrs. Lipkus and Rennie served Kim Fong with one Anton Piller order (Nintendo); at 1:30 p.m., Messrs. Ovadia and Ellis served Mr. Sobieski with two Anton Piller orders (Disney, Nintendo); at 1:40 p.m., Messrs. Lipkus, Shoreman and Rennie served Natalia and Sergei Artemova with two Anton Piller orders (Nike, Adidas); at 1:50 p.m., Messrs. Lipkus and Ellis served Van Hahn Do with three Anton Piller orders (Nike, Disney, Adidas); at 2:00 p.m., Messrs. Ovadia, Hunter and Ellis served Nand and Madhur Lal with two Anton Piller orders (GTFM Inc. (T-2295-98), Adidas); at 2:35 p.m., Messrs. Lipkus, Shoreman and Ellis served Anh Thi Vo with two Anton Pillers (Nike, Disney); at the same time, 2:35 p.m., as noted, Messrs. Ovadia, Hunter and Ellis served Guang Zhi Hu and Yuet Hung Zong with the seven orders mentioned above; at 3:05 p.m., Messrs. Lipkus, Shoreman and Knibbs served Yaming Huang with two Anton Piller orders (Nike, Adidas). Messrs. Lipkus, Ovadia, Hunter and Ellis then left the Kingsway Knight Flea Market and, at 3:50 p.m. served C & C Gifts and Stationary, at 2063 - 8700 McKim Way, Richmond, with five Anton Piller orders (Disney, Time-Warner, Ragdoll Productions (UK) Limited (T-551-99), Viacom Ha! Holding Company (T-550-99), Nintendo). I should also note that in the morning of May 22, between 10:15 a.m. and 12:00 a.m., Messrs. Ovadia, Leswick, Shoreman and Knibbs served three cigar merchants, in Vancouver, with Anton Piller orders issued on behalf of Havana House Cigar and Cubatabaco (T-2521-97). The three merchants were: Cigar Market, at 555 Dunsmuir; 2000 Cigar Inc., at 881 Dunsmuir; Mammobar Bain, at 925 Davie.
2 At 1:30 p.m., on Tuesday, May 25, Messrs. Ovadia, Hunter and Ellis served Sunnyland (Funnyland) Trading Co. at Unit 2172 - 3779 Sexsmith Rd., Richmond, with four Anton Piller orders (Disney, Time Warner, Viacom Ha!, Nintendo ), at 2:30 p.m., they served AMC Ideal Gifts, at Unit 2095 - 8888 Odlin Cres., Richmond, with two Anton Piller orders (Disney, Nintendo); at approximately the same time, they served Smile Trading Co. at Unit 2075 - 8888 Odlin Cres., Richmond, with three Anton Piller orders (Disney, Viacom Ha!, Nintendo); at 4:00 p.m., Messrs. Lipkus, Ovadia, Hunter and Ellis served Jesamine Handicrafts at Unit 1645 - 4311 Hazelbridge Way, Richmond, with four Anton Piller orders (Disney, Time Warner, Viacom Ha!, Nintendo).
4 The decision relates to a number of files in addition to T-2027-97.
5 Mr. Justice Gibson noted that where a prospective defendant consents to an order, there is no costs award sought or made by the Court vis à vis that defendant. He did not address however whether it was likely or not that such had been paid, only that costs were not part of the Court's orders. I do not assume that no money is paid by a defendant who has consented to an order (and I do not think Mr. Justice Gibson assumed such). The representations made by some of the individuals before me on June 7 made it very clear that counsel for the plaintiffs seeks costs from them as part of any settlement agreement. Indeed Mr. Tejani (Toys in Motion) filed with the Court a letter he sent to Mr. Lipkus in which he agreed to pay $1,290 as costs. Ms. Kuan of Fairyland Gifts Inc., 103 - 180 Keefer Street, stated that she had been asked to pay costs as part of a settlement agreement. She also stated that while she had agreed that she would pay, she had no intention of doing so.