VIDEO & AUDIO INC.
- and -
UNIVERSAL DVD INC., JEYA AND BROTHERS LTD.,
PHOTO FAST LTD., ELANTHULIR VIDEO INC.,
MURUGAN BOOK DEPOT INC.,
SIVANANTHAN KUNASINGAM CARRYING ON BUSINESS AS LOVELY
DIGITAL MOVIES, LOVELY DIGITAL MOVIES INC., JEYANESAN ETHIRVEERASINGAM CARRYING ON BUSINESS AS LIONERS VIDEO
VISION, 1650045 ONTARIO INC. CARRYING ON BUSINESS AS YAL
1200251 ONTARIO LTD. CARRYING ON BUSINESS AS UTHAYAS SUPER
MARKET, UTHAYAS SUPERMARKET LTD.,
RUBAN THANGARASA CARRYING ON BUSINESS AS NANTHA VIDEO,
1360674 ONTARIO INC. CARRYING ON BUSINESS AS NEW SPICELAND
SUPERMARKET, YARLTON INC., KUMARANS INC., MARKHAM VIDEO
CENTRE LTD., RASIAH ARULANANTHAM CARRYING ON BUSINESS AS
THE PARTY OR PARTIES WHO CARRY ON BUSINESS WITH THE
UNREGISTERED BUSINESS NAMES OF: A.K. VIDEO, V.I.P. VIDEO,
ARROWIN VIDEO, SHRI & BROTHERS, NALLUR VIDEO CENTRE,
R.K.S. SALON & VIDEO;
AND OTHER PERSONS, NAMES UNKNOWN, WHO OFFER FOR SALE, SELL,
IMPORT, MANUFACTURE, DISTRIBUTE, ADVERTISE, OR DEAL IN THE
PLAINTIFF’S WORKS AND THE PERSONS LISTED IN SCHEDULE “A” TO THE
STATEMENT OF CLAIM
REASONS FOR ORDER AND ORDER
 The Plaintiff is an Ontario corporation who acquired the copyright for numerous dramatic cinematographic works. The Plaintiff imports and sells dramatic cinematographic works. It buys the exclusive Canadian rights to Tamil language films and, via its retail store, sells DVD copies to the public for private home viewing.
 On May 4, 2006, the Plaintiff filed a Statement of Claim against 23 named Defendants alleging they were infringing the Plaintiff’s copyright in motion pictures of which 24 have been itemised. The Plaintiff is seeking by way of relief the following:
1. a declaration that the unauthorized copying, selling, renting or public showing or exhibition of the 24 motion pictures listed are an infringement of the Copyright Act, R.S.C. 1985, c. C-42;
2. a declaration that the Plaintiff is the lawful exclusive commercial distributor of the Plaintiff’s works;
3. an injunction against the defendants;
4. damages in the amount of $20,000 for each infringement;
5. punitive damages;
6. an accounting of profits;
7. statutory damages per s. 38.1 of the Copyright Act;
8. an order to disclose revenues; and
9. an order that all materials be delivered to the Plaintiff.
 On May 18, 2006, Justice de Montigny issued an Anton Piller Order that became effective against each of the Defendants from the day it is served and was to remain in effect for 14 days after service of the Order. The Order could be served and executed anywhere in the Province of Ontario for 12 months after the date of issue. Justice de Montigny also issued an order restraining each Defendant from “offering for sale, displaying, advertising, selling, manufacturing, distributing, or otherwise dealing in the Plaintiff’s works”.
 It is undisputed that the Order was executed against the following seven Defendants on May 25th and 27th: Universal DVD Inc., Jeya and Brothers Ltd., Lovely Digital Movies Inc., Photo Fast Ltd., 1360674 Ontario Inc c.o.b. as New Spiceland Supermarket, 6161235 Canada Inc. c.o.b. Kumar Video, and Shri & Brothers.
 The Plaintiff now brings a motion and requests an Order:
1. reviewing the granting and execution of the May 18, 2006 Order;
2. directing the disposition of the DVD’s and equipment seized pursuant to the Anton Piller Order;
3. enjoining the defendants from dealing in the Plaintiff’s works until a final Order is made in respect of the Plaintiff’s claim;
4. adding such names as may be necessary to Schedule A of the Statement of Claim; and
5. requiring the Defendants to pay the Plaintiff’s costs of the May 15, 2006 motion (Anton Piller Motion) and this motion, on a full indemnity basis.
 The Defendants are seeking to have the Order vacated alleging in essence that:
1. there was not full and sufficient disclosure by the Plaintiff when executing the Order; and
2. the Order was not properly executed.
 The Defendant made two procedural objections:
1. there is no affidavit of the attending solicitor; and
2. counsel for the plaintiff is the same person who filed two of the six solicitors reports.
 In my view, both of these objections are well founded. The Order of Justice de Montigny specified in paragraph 21:
A motion for review of the execution of this Order and its further continuation shall be supported by an affidavit from the attending and supervising solicitor setting out a full and accurate report of the execution or executions under review, including any execution with respect to which the Defendant’s identify was not ascertained, and including a full description of all goods, equipment and records seized as described in paragraph 14.
 No affidavit from the attending and supervising solicitor was furnished. Instead, the motion record contains seven documents entitled “solicitor’s report” which are signed by either Mr. Russ Makepeace or Mr. Michael Romoff, both of whom have appeared before the Court as counsel for the Plaintiff. Mr. Romoff argued the review before me.
 It is trite law that Anton Piller Orders are exceptional instruments and require strict compliance with its terms. In the original decision of Anton Piller K.G. v. Manufacturing Process Ltd,  1 Ch. 55 all three judges of the Court of Appeal made that point. Lord Denning said at page 61:
Nevertheless, in the enforcement of this order, the plaintiffs must act with due circumspection. On the service of it, the plaintiffs should be attended by their solicitor, who is an officer of the court. They should give the defendants an opportunity of considering it and of consulting their own solicitor. If the defendants wish to apply to discharge the order as having been improperly obtained, they must be allowed to do so. If the defendants refuse permission to enter or to inspect, the plaintiffs must not force with way in. They must accept the refusal, and bring it to the notice of the court afterwards, if need be on an application to commit.
Lord Ormrod stated at page 61:
I agree with all that Lord Denning M.R. has said. The proposed order is at the extremity of this court's powers. Such orders, therefore, will rarely be made, and only when there is no alternative way of ensuring that justice is done to the applicant.
and Lord Shaw added at page 62:
The overriding consideration in the exercise of this salutary jurisdiction is that it is to be resorted to only in circumstances where the normal processes of the law would be rendered nugatory if some immediate and effective measure was not available. When such an order is made, the party who has procured the court to make it must act with prudence and caution in pursuance of it.
 On review as to the propriety of the Order and its execution, the Court requires affidavit evidence from a solicitor so that it can be satisfied that this extraordinary remedy was properly executed. In the United Kingdom, the affidavit needs to be from a solicitor, other than the Plaintiff’s solicitor; however, no such requirement exists in Canada. Justice Reed commented on this issue in Nike Canada Ltd. v. Jane Doe (1999), 174 F.T.R. 131 at paragraph 19:
I accept that the proliferation of counterfeit goods is a serious problem for intellectual property rights owners such as the plaintiffs. I agree that it was because of the seriousness of this problem that this Court developed rolling Anton Piller orders. I remain concerned, however, that there may be insufficient checks in existence to ensure that abuses do not occur - not all of the defendants against whom searches and seizures were conducted were carrying on business in an "evanescent and surreptitious manner". I note, for example, that in the United Kingdom when specific Anton Piller orders are granted, it is a solicitor other than the plaintiff's solicitor who attends on the execution of the order. It is not clear that rolling Anton Piller orders, as opposed to specific ones, are granted in that jurisdiction. I am of the view that it would be preferable if Anton Piller orders were not granted except on condition that the plaintiff paid for a supervising solicitor or amicus curiae of the Court's choosing, who could both monitor the plaintiff's execution of these orders as well as be independent of the plaintiff's interests. In any event, I do not dispute counsel for the plaintiffs assertion that counterfeiting is a serious problem and the Court should lend its support to addressing that problem.
 Without that affidavit, on which there may very well be extensive cross-examination, the Court has no way of ascertaining the manner in which the Order was executed and what was seized.
 The Plaintiff asserts that, in this case, the affidavits from the interpreter, an officer of the Plaintiff, an accompanying police officer, and from an individual who assisted in the execution of the Order whose affidavit made reference to the solicitor’s report, should suffice to inform this Court.
 I cannot accept such explanation, given the extraordinary nature of the remedy sought and given the specific requirement for the solicitor’s affidavit in Justice de Montigny’s Order. There is no direct evidence before the Court as to what was seized in the execution of the Anton Piller Order. There is only indirect evidence found in the affidavit of Bo Huang where he references the solicitor’s reports. The failure to file a solicitor’s affidavit constitutes a fatal flaw to this application.
 As there is controversy as to what occurred during the execution of the Orders, I also do not see how Mr. Romoff can argue the motion with respect to two of the Defendants on the basis of his own report (assuming the Court was prepared to treat the report as tantamount to an affidavit). It is a basic rule of law that a person cannot be counsel and give evidence at the same time. In cases where the evidence is being contested (as in this case) the Court will not allow counsel to make submissions on evidence furnished by counsel (see Cross-Canada Auto Body Supply (Windsor) Ltd. v. Hyundai Auto Canada, a division of Hyundai Motor America, 2006 FCA 133).
 Accordingly, based on these procedural flaws the Order cannot be sustained. However, should I be wrong in respect of this finding I also found the Order to be deficient for substantial reasons.
 In Netbored Inc. v. Avery Holdings Inc., 2005 FC 1405, which is considered to be the leading case on review of Anton Piller Orders, Justice Hughes established the five criteria that the Court should use to determine whether an Anton Piller Order should continue to be in force or be vacated. These can be summarized as follows:
1. The Plaintiff must show an extremely strong prima facie case;
2. Damage, potential or actual, must be very serious for the applicant;
3. There must be clear and convincing evidence that the Defendants have in their possession incriminating documents and that there is a real possibility that they may destroy such material before an application inter partes could be made;
4. The inspection would do no real harm to the Defendant or his case; and
5. Whether full and frank disclosure of all relevant facts was made to the judge granting the Order.
 A strong prima facie case, in the circumstances of this case, requires the Plaintiff to establish good title to the goods in question and that the actions of the Defendants amount to breach of copyright.
 The Plaintiff never registered the copyright to the 24 films in question in Canada. Instead, the affidavit of Nithiyaluxmy Mathysoody, sole shareholder and officer of the Plaintiff, establishes a chain of title regarding the copyright for all 24 films from the original producer. In some cases it is from the original producer to an Indian intermediary to Ayngaran International Films PVT Limited (“Ayngaran India”) and then to the Plaintiff. In others, it is from the producer direct to Ayngaran India and then to the Plaintiff.
 If we look at one film, AATHI, the following discrepancies in the chain of title appear:
1. The rights assigned by the producer, Sooriyan Arts, to Ayngaran India make no reference to the copyright in CD format (see M.R. p.47 schedule ‘C’). On the other hand, the assignment from Ayngaran India to the Plaintiff specifically includes copyrights in CD format (see M.R. p. 23 schedule B).
2. The assignment from Sooriyan Arts to Ayngaran India provides that any VCD, DVD or LD of the picture will only be released 100 days from the release in India (see M.R. p. 46 para 13). On the other hand, the assignment from Ayngaran India to the Plaintiff provides that the period of assignment subsists for the period of 10 years from the date of general release in India (see M.R. p. 43 schedule F). No mention of the 100 days delay is made. In addition, the assignment from Sooriyan Arts to Ayngaran India indicates that the expected release date for India is January 2006 (see M.R. p. 46 schedule A). The assignment from Ayngaran India to the Plaintiff is dated January 25, 2006 and there is nothing to indicate that it did not take effect as of that date.
 I only use the film Aathi as an example. The same type of inconsistencies can be found in other films all of which are set out in detail in the Defendants’ memorandum of fact and law.
 It is not for me to determine at this point whether these inconsistencies impair the Plaintiff’s title. However, it is up to the Plaintiff to establish that it has a strong prima facie case. It has failed to do this. Rather on the face of it, the title is prima facie not free from doubt.
 Accordingly, I fail to see how it can be held that the Plaintiff has established a strong prima facie case in terms of title.
 For the reasons quoted above, both on procedural and substantive grounds, I find that the Plaintiff’s application must fail. I hasten to add, however, that I have in no way accepted the Defendants’ explanation that they were authorized to make copies of the films in question by one Ganesh (no first name nor any address or phone number has been provided for this individual), allegedly an employee of the Plaintiff. The Plaintiff claims not to know or to have employed Ganesh.
 Nothing herein shall be taken as restricting the Plaintiff from applying for another Anton Piller Order or from proceeding with its action for copyright against the Defendants. Costs for this application to follow the cause.
I find the Defendants’ explanation (that an employee of the Plaintiff called
Ganesh, whom no one can produce, allegedly authorized the copying of videos and
CD’s) devoid of plausibility, I will delay the return of the goods seized until
September 1, 2006 to give the Plaintiff an opportunity to remedy the
substantive and procedural defects above mentioned and to bring another
application for an Anton Piller Order.
THIS COURT ORDERS that the Anton Piller Order granted on May 18, 2006 is vacated and costs for this application are to follow the cause. The goods seized are to be returned to the Defendants no earlier than September 1, 2006.
NAME OF COUNSEL AND SOLICITORS OF RECORD
STYLE OF CAUSE: AYNGARAN INTERNATIONAL VIDEO & AUDIO INC
AND ORDER: Mr. Justice von Finckenstein
Simon Schneiderman FOR DEFENDANT
SOLICITORS OF RECORD:
Makepeace Romoff FOR PLAINTIFF
Barristers & Solicitors
Simon Schneiderman FOR DEFENDANT