Date: 20070116
Docket: A-139-06
Citation: 2007 FCA 46
CORAM: DÉCARY
J.A.
NOËL J.A.
PELLETIER
J.A.
BETWEEN:
OSMOSE PENTOX INC.
Appellant
et
SOCIÉTÉ LAURENTIDE INC.
Intimée
REASONS FOR JUDGMENT
PELLETIER J.A.
[1]
As the Memoranda of Fact and Law were prepared
in English, these reasons for judgment have been prepared in English as well.
[2]
This is an appeal from the decision of de
Montigny J. (the motions judge) sitting on appeal from an order of Prothonotary
Morneau dated December 14, 2005. In a decision reported at 2006 FC 386, the
motions judge affirmed the prothonotary’s order dismissing the appellant’s
motion for a confidentiality order with respect to the Motion Record which it
filed in support of its motion for an Anton Piller order and “another remedy”.
The nature of that remedy remains a mystery to the respondent, but it was the
subject of a second ex parte motion filed October 11, 2005, which was
also dismissed by the prothonotary at the same time as he disposed of the
motion for a confidentiality order. The appellant alleges that the prothonotary
and the motions judge erred in concluding that the subject matter of the
October 11, 2005 motion had been dealt with when the motion for the Anton
Piller order was dismissed. Finally, the appellant appeals from the award of
costs against it in the amount of $3,500.
[3]
The matter has a long history in which
allegations of inadequate disclosure and production of documents figure
prominently, particularly in relation to documents relevant to the issue of the
respondent’s profits from the alleged infringement of the appellant’s
trade-mark.
[4]
The appellant made an ex parte motion for
an Anton Piller order. While expressing the opinion that the motion was
premature, the judge who heard the motion, Lemieux J. dismissed it in an order
dated September 9, 2005. The appellant therefore takes the position that it is
entitled to a confidentiality order depriving the respondent access to its
motion record since it may be entitled to rely on that motion record at a later
time to make a second motion for an Anton Piller order if, in its view, the
respondent does not comply with its disclosure obligations. Further, the
appellant argues that the disclosure of its motion record will disclose to the
respondent evidence and perhaps documents of which it is unaware, thereby
giving the respondent unfair disclosure of the appellant’s evidence.
[5]
The appellant also appeals from the
prothonotary’s finding, affirmed by the motions judge, that Lemieux J.
dismissed the appellant’s motion for the other remedy which it sought. The
appellant says that Lemieux J. has not decided that issue and that the
prothonotary and the motions judge erred in failing to hear and decide its
October 11, 2005 motion for essentially the same relief.
[6]
The appellant’s motion for a confidentiality
order is based upon a misconception of the nature of an Anton Piller order and
of the role of confidentiality orders generally, and more specifically in the
context of Anton Piller orders.
[7]
The confidentiality associated with an Anton
Piller order relates to the execution of the order and not to the grounds upon
which the order is obtained. The motion seeking the Anton Piller is made ex
parte because notice of the order would provide the opportunity to destroy
the evidence which the order seeks to protect. Once the order is executed, the
party against whom it has been executed is entitled to see the applicant’s
motion record in order to contest the issuance of the order. See Rule 399(1)
of the Federal Courts Rules. Had the appellant obtained the order it
sought, it would have faced the same problem it now faces, with the same
result. The respondent would be entitled to see the appellant’s motion record.
[8]
This is not changed by the fact that the motion
for the Anton Piller order was dismissed. The dismissal of the motion means
that there is no further need to protect the right to execute the order without
notice. The motion record is part of the public record. In cases involving
sensitive proprietary information, as often occurs in pharmaceutical cases, the
Court will limit a party’s access to another party’s information, but will
allow a party’s advisors access to that information, on the condition that
appropriate assurances are given. See Rules 151 and 152. That is not the
case here. While it may be that the lifting the existing confidentiality order
will allow the respondent access to information which the appellant would
prefer to avoid disclosing, that information would have been subject to
disclosure in any event if its motion had been successful.
[9]
As a result, there is no justification for
ordering that the motion record filed by the appellant in support of its
application for an Anton Piller order be the subject of a confidentiality order
which would deny the respondent, as well as the public, access to the
appellant’s motion record. The prothonotary, and the motions judge, were
correct to dismiss the appellant’s motion for a confidentiality order.
[10]
As for the appellant’s claim for a further
remedy, the prothonotary and the motions judge held that it had been implicitly
dismissed by Lemieux J. when he dismissed the appellant’s motion for an Anton
Piller order, which also contained a claim for the additional remedy. Counsel
for the appellant advised the Court that certain representations were made at
the time the file was put before a judge, which lead him to believe that the
matter of the additional remedy was to be dealt with separately. The silence
of Lemieux J.’s reasons on this issue lends credence to counsel’s assertion. For
that reason, and in light of the confusion which appears to have developed on
this issue, I would allow the appeal in part so as to allow the appellants to
re-submit their motion for the additional remedy but only upon notice to the
respondent.
[11]
Finally, there is the matter of costs. Costs,
while discretionary, must nonetheless be awarded according to settled principles.
In the particular circumstances of this case, the motions judge saw no reason
to interfere with the prothonotary’s exercise of his discretion. I can see no
reason to interfere with the motion judge’s disposition of this issue.
[12]
For those reasons, the appeal should be allowed
in part to allow the appellant to resubmit their motion for the additional
remedy upon notice to the respondent. Having regard to the fact that the
respondents have achieved substantial success in the appeal, they should be awarded
their costs but only on a party and party basis, to be assessed at the midpoint
of Column III of Tariff B of the Federal Courts Rules.
"J.D.
Denis Pelletier"
“I
agree.
Robert Décary J.A.”
“I
agree.
Marc Noël J.A."
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