A-1273-82
Nintendo of America, Inc. (Appellant) (Plaintiff)
v.
Coinex Video Games Inc., Joanne Hellewell, Shir-
ley Hoult, Donald F. Guy, David Carnie, Charles
Cochrane, Gordon Goldman, Screengames Manu
facturing Corporation, Harold Friedrich Schnei-
dergruber, Kurt Reichenberger, Metro Fun Fair
Inc., Gordon Lee, Linda Richmond, Videoboard
Industries of Canada Inc., Melvin Bernstein, Ian
Dunn, M & J International, 498440 Ontario Ltd.,
Seok-Hee Ryu, Eun-T Yang, James Toi Hing,
M.J.Z. Electronics Ltd., Zalman Shlyonsky,
Joseph Levitan, Michael Raichelson, Canadian
Amusement Sales and Distributing Ltd., Raymond
Alexander Haladay, Jack Syme, Video Playworld,
Ralph Goldman, Steven Sandler, All Seasons
Amusement Centre Limited, Joseph Rizk, Nick
Garito, Vince Evans, Svetlana Fischbein, Mike
Fischbein, Dan Rice, Frank Renna, Vito Renna,
Matteo Figura, Robin Wayne Kidd, Joseph Chor-
Ming Lau, 493481 Ontario Ltd., Ava Gelbart,
Peg's Pinball Parlour Inc., Margaret Elizabeth
McKinley (Respondents) (Defendants)
Court of Appeal, Heald, Urie JJ. and Cowan
D.J.—Toronto, December 16; Ottawa, December
30, 1982.
Practice — Discovery — Production of documents — Anton
Piller order — Infringement of copyright in video games —
Order sought against manufacturers and distributors —
Affidavit evidence that defendants operating in evasive manner
and that destruction of evidence likely — Strong prima facie
case made out — Three tests set out in Anton Piller case for
granting of order met — Appeal allowed and order granted
subject to conditions for protection of defendants' rights.
Copyright — Infringement — Practice — Video games —
Appeal against denial of Anton Piller order — Affidavit
evidence that destruction of evidence likely — Appeal allowed.
The Trial Division denied the plaintiffs ex parte motion for
an interim injunction restraining the defendants from infring
ing plaintiffs copyrights in the "Donkey Kong" and "Donkey
Kong Junior" audio-video games. The Court further rejected
the application for an Anton Piller order. This appeal is against
the denial of the last-mentioned relief. Like the motion before
the Trial Division, the appeal was disposed of ex parte and in
camera because of certain highly persuasive information con
tained in affidavits and exhibits submitted in support of the
application. This material was to the effect that while the
plaintiffs video games were very popular, their commercial
success had been limited due to wide-spread infringement.
Although some 47 defendants were named in the action, the
Anton Piller order was sought only in respect of 28 who are
allegedly involved in the unauthorized manufacture, sale and
distribution of the games. The plaintiff says that the defendants
operate in an evasive, secretive manner and that the defendant
corporations are vehicles of convenience able to be disbanded
without leaving any trace. It was likely that evidence would be
secreted or disposed of. Very persuasive evidence was before the
Court in the form of the affidavit of a private investigator in
which he related conversations he had, while posing as a
prospective purchaser, with some of the defendants. One
defendant admitted to the investigator that he had sold some
600 of the "Donkey Kong" games and added that "Copies are
copies, and if you have copies they're going to seize them if
they look for them". The investigator was told that the illegal
games were placed in inconspicuous locations because the
arcades were checked often. Another defendant was said to
have advised the investigator that "Whenever you buy from
someone other than Nintendo it's illegal, but it's only a problem
for the makers, like me, not you, the operator".
Held, an Anton Piller type order should be made. The
plaintiff has met all three of the requirements enumerated by
Ormrod L.J. in Anton Piller KG v. Manufacturing Processes
Ltd. and Others, [1976] 1 Ch. 55 (C.A.): (1) an extremely
strong prima facie case; (2) actual or potential damage to
applicant must be very serious; (3) clear evidence that defend
ants have possession of incriminating documents or things and
a real possibility exists that these may be destroyed before an
application inter partes can be made.
Since the remedy granted is a strong one, a number of
conditions are included in the order. Among them are: a
requirement that plaintiff provide a surety bond of $75,000 as
security for its undertaking as to damages; that the right of
entry is restricted to four persons and that only material
directly related to the two video games in question may be
removed.
CASES JUDICIALLY CONSIDERED
APPLIED:
Anton Piller KG v. Manufacturing Processes Ltd. and
Others, [1976] 1 Ch. 55 (C.A.); Yousif y. Salama et al.,
[1980] 3 All ER 405 (C.A.).
COUNSEL:
J. Edgar Sexton, Q.C. and M. Field-Mar-
sham for appellant (plaintiff).
No one appearing for respondents (defend-
ants).
SOLICITORS:
Osler, Hoskin & Harcourt, Toronto, for
appellant (plaintiff).
No one appearing for respondents (defend-
ants).
The following are the reasons for judgment
rendered in English by
HEALD J.: This is an appeal from a decision of
the Trial Division made on December 9, 1982. The
motion before the Trial Division was heard ex
parte and in camera and requested an interim
order for injunctive relief against all of the defend
ants herein, both corporate and individual,
restraining them from infringing the plaintiff's
copyrights in the coin-operated audio-video games
distributed by the plaintiff under the names "Don-
key Kong" and "Donkey Kong Junior") It also
asked for an Anton Piller order 2 which would have
as its objective, inter alfa, the preservation of all
documents, games, apparatus, plans, drawings, cir
cuitry and component parts that concern infringe
ment of the plaintiff's copyrights in the coin-
operated audio-video games described supra. 3 The
Trial Division order of December 9, 1982 dis
missed the ex parte application without prejudice
to the plaintiffs right to file and serve a notice of
motion for the relief claimed in the ex parte
application. This appeal is from that order and is
restricted to the refusal of the Trial Division to
grant the Anton Piller type order. We heard the
appeal on December 16, 1982 ex parte and in
camera because of the highly persuasive nature of
the information contained in the affidavits of
Monoru Arakawa, Harry Lake and Michael
Pobjoy and the exhibits affixed thereto. This ma
terial influenced us to agree that the appeal should
not be made public at the time it was heard and
that a case for an ex parte hearing of the appeal
' This claim for injunctive relief before the Trial Division is
detailed in paragraphs 2 and 3 of the notice of motion (A.B. pp.
2 and 3).
2 The term "Anton Piller Order" is used to describe an order
of the kind issued by the Court of Appeal in England in the
case of Anton Piller KG v. Manufacturing Processes Ltd. and
Others, [1976] 1 Ch. 55 (C.A.).
3 The claim for the Anton Piller order in the Trial Division
was directed against the same 28 defendants as in this Court.
had been made out. After hearing plaintiff's coun
sel at some length, in respect of the plaintiff's
entitlement to an Anton Piller type order, the
Court announced to counsel that it was prepared
to grant such an order provided certain safeguards
were incorporated in the order so that the rights of
the defendants as well as those of the plaintiff
would be protected. The order was issued on
December 17, 1982. I wish now to give my reasons
for concluding that the order given by the Court
was proper, necessary and in the interests of jus
tice. Because an order of this nature should be
made only in the most exceptional circumstances,
it is necessary, in my view, to summarize the facts
as established by the affidavits referred to supra.
The plaintiff is a corporation incorporated and
existing under the laws of the State of Washing-
ton, U.S.A., and is a wholly-owned subsidiary of
Nintendo Co., Ltd., a company incorporated under
the laws of Japan (Nintendo). The plaintiff
imports audio-video games manufactured by Nin-
tendo. It also manufactures video games in the
U.S.A. In 1981, an employee of Nintendo created,
in the course of his employment, a unique audio-
video game entitled "Donkey Kong". On July 27,
1981, Nintendo assigned all of its right, title and
interest in and to copyright in the "Donkey Kong"
game in the western hemisphere to the plaintiff. It
is therefore the plaintiffs position that it is the
owner of the exclusive right to import, manufac
ture, assemble, distribute and sell "Donkey Kong"
games in North America. The plaintiff registered
its copyright in the "Donkey Kong" game in
Canada on May 12, 1982 (File No. 224128). Prior
to February of 1982, the same Nintendo employee
created "Donkey Kong Junior". On August 24,
1982, Nintendo assigned all of its right, title and
interest in and to copyright in that game in the
western hemisphere to the plaintiff. As in the case
of "Donkey Kong", the plaintiff claims to be the
owner of the exclusive right to import, manufac
ture, assemble, distribute and sell "Donkey Kong
Junior" games in North America. The plaintiff
registered its copyright in the "Donkey Kong Jun
ior" game in Canada on November 16, 1982 (File
No. 229821).
The plaintiff commenced exporting the "Donkey
Kong" games to its Canadian distributors in
August of 1981 and continued to do so until
approximately August of 1982. In so far as the
"Donkey Kong Junior" games were concerned, the
plaintiff commenced exporting to its Canadian
distributors in August of 1982 and continues to do
so at the present time. At this juncture, the
method of operation of these two games should be
explained. Before a coin is inserted in the machine,
`the games operate in a repeated "attract mode",
playing continuously and automatically in repeat
ing sequences which display the name "Donkey
Kong" or "Donkey Kong Junior" as the case may
be. The attract mode also displays the plaintiffs
copyright notice, a sample of the game in the form
of a series of images accompanied by musical and
sound effects, previous game scores and instruc
tions as to how the game is to be played. Upon the
deposit of a coin and the depressing of the start
button, the game shifts into the "play mode". In
this mode, the figure (subject to certain controls
which are exercised by the game player) and other
objects and obstacles move on the screen in a
predetermined sequence according to the stored
information in the electronic circuitry to interact
with the figure controlled by the player in a preset
manner, also according to the stored information
in the electronic circuitry. The material before us
was to the effect that both games are very popular
with those individuals who play audio-video
games. However, their commercial success in
Canada has been limited by wide-spread infringe
ment. Monoru Arakawa, the plaintiffs President,
deposed to his belief that the infringing copies of
the "Donkey Kong" game outnumber genuine
games in the greater Toronto area by approxi
mately a 9 to 1 ratio. The affidavits referred to
supra establish that audio-video game manufac
turers sell to distributors who sell to operators. The
operators install the games in arcades and other
public places. Their profit is primarily derived
from the use of the games by members of the
public.
The defendants in this action are categorized by
the plaintiff in terms of the function which each
performs as follows:
(a) manufacturers and distributors;
(b) distributors; and
(c) operators.
There are some 47 defendants in the action. How
ever, the Anton Piller order sought by this appeal
and granted by this Court is in respect only of 28
of those defendants. They are the defendants who,
it is alleged, are involved in the manufacture, sale
and distribution of unauthorized copies of subject
two video games. Anton Piller type relief was not
asked for nor was it granted against the 19 defend
ants who are solely operators of video games.
The affidavits before us contain detailed evi
dence as to the alleged copyright infringement by
both the corporate and the individual defendants
against whom subject order is directed. The depo-
nents of the affidavits describe the way in which
the infringement is accomplished. The portion of
the games in which the instructions are stored is
the portion which generates the unique video
images and the sounds which accompany the
images. This portion is in the form of tiny digital
memory chips. They are contained in the game-
board which the plaintiff sells only as part of a
completely integrated audio-video game. It does
not sell the gameboard separately. It is alleged
that many of the distributors named as defendants
herein and against whom this order is directed sell
"Donkey Kong" and "Donkey Kong Junior"
gameboards separately, and unconnected with any
cabinet structure whatsoever. It is said that a
manufacturer or distributor of infringing games
can remove a gameboard from a cabinet and
install an entirely new one in a matter of minutes.
This is possible because of the development of a
special universal adapter, which allows any proper
ly suited gameboard to be inserted into a cabinet
which is fitted with such an adapter. It is alleged
that these adapters are manufactured by one of the
defendants against whom this order is directed and
distributed by two other such defendants. Thus,
according to the Lake affidavit, an infringer can
create an entirely new audio-video game merely by
replacing the gameboard and then installing a
different front name plate with the entire process
taking only approximately twenty minutes.
The plaintiff's memorandum of fact and law
summarizes the basis for the order sought, in
paragraphs 23 and 24 thereof, as follows:
23. Many of the manufacturers and distributors named as
Defendants in this action carry on business on a cash basis.
Representatives of these Defendants behave in an extremely
evasive and secretive manner.
The corporations themselves are, in many cases, vehicles of
convenience, and if necessary are able to relocate or dispose of
their machines or components and disband without any trace
with little difficulty. Often the same Defendants emerge subse
quently in a different corporate guise and again engage in the
same types of infringing activities. The actions of the manufac
turers and distributors named as Defendants in this action
evidence a cavalier disregard of the rights of the Plaintiff.
Many are fully cognizant of the fact that their activities
infringe the Plaintiff's copyright. This knowledge has not fet
tered the infringing activities of these Defendants in any way.
There is a serious risk that these businesses, and the individuals
associated with them, are likely to secrete or dispose of
evidence.
Affidavit of Monoru Arakawa,
paragraph 43
Appeal Book, pp. 20-21
24. The Plaintiff is suffering irreparable harm in the following
manner. Its relationships with its distributors are seriously
impaired; its distribution network in Canada is now at risk; its
reputation with distributors and operators as a manufacturer of
quality, high marketable audio-video games is being destroyed;
and the legitimate audio-video game industry in Canada is
jeopardized and thus the Plaintiffs ability to carry on business
in Canada is similarly jeopardized.
Affidavit of Monoru Arakawa,
paragraph [sic] 37, 38, 39
Appeal Book, pp. 18-19
It is my view, after a careful perusal of all of the
material, that the appellant [plaintiff] has made
out an extremely strong prima facie case. By way
of example, I quote from only a few of the conver
sations which the deponent, Lake, a licensed pri
vate investigator, swore he had with some of the
defendants:
(a) Conversation with the defendant, Bernstein
(Lake affidavit, para. 31) A.B. pp. 93 and 94:
31. I returned to Videoboard on December 2nd, 1982, and on
this occasion met Mr. Bernstein. He offered to sell me a
Donkey Kong Junior video game which, in his opinion, was
superior to the product marketed by Coinex. Mr. Bernstein's
game came complete with two marquees as opposed to the
single marquee which Coinex games displayed. In fact, the
game marketed by Videoboard was adaptable to a two-game
format, in which two different games could co-exist in the same
cabinet. Mr. Bernstein went on to explain that his low prices
were attributable to the fact that he owned 38% of Screen-
games, in partnership with Kurt Reichenberger, and conse
quently received the Screengames product at wholesale prices.
When asked about a competitor, M & J International, Mr.
Bernstein informed me that Videoboard supplied M & J Inter
national with all of the game boards sold by that company. At
one point in the conversation Mr. Bernstein informed me that
while the distributors ran the risk of having their infringing
games seized by the authorities, this was of no concern to
operators. He added that such seizures could only occur if the
legitimate manufacturers registered their copyrights in Canada,
and maintained that because very few manufacturers did com
plete the registration process in this country, there was only a
small risk of seizure even if copy games were discovered. He
went on to say that in the event that any seizure order was
made, only the memory chip of the game would be seized, and
not the gameboard or cabinet.
(b) Conversation with the defendant, Eun-T Yang
(Lake affidavit, paras. 32 to 36) A.B. pp. 94-96:
32. On September 22nd, 1982, posing as a prospective purchas
er, I visited M & J International ("M & J") at 1230 Sheppard
Avenue West, Unit 15, in Downsview, Ontario. There I met
Mr. Eun T. Yang, also known as "Peter". Mr. Yang explained
to me that the most popular game available at that time from
M & J International was Crazy Kong 2. Mr. Yang advised me
that in August, 1982 alone, his company had sold approximate
ly 500 of the Crazy Kong 2 games. Mr. Yang also showed and
offered for sale a number of distinctive looking cabinets,
designed to house a variety of video games. Some of the
cabinets were primarily white in colour and had the name
"Yujin" outlined in red on the side of the upper portion of each
cabinet. According to Mr. Yang, these cabinets are manufac
tured in the Orient and sold through his company for $1,500.00
each. Other cabinets were primarily black, and bore a front
name plate which read "Donkey Kong". The perimeter of the
screen and the control panel was decorated with futuristic
spaceship illustrations, and had the words "E.M.I. Internation
al" printed on the front panel of the cabinet. Mr. Yang advised
me that to install a new game, a purchaser would only have to
replace the printed circuit board and the front name plate
describing the board, complete with name plate, for $700.00.
He stipulated that a service fee of $25.00 would be charged for
installing the game board into the "Yujin" cabinet.
33. Mr. Yang explained that Crazy Kong 2 is virtually identical
in both operation and appearance to the original DONKEY
KONG game, the only major distinction between the games
being the faster speed at which Crazy Kong 2 operates. He
offered to sell used DONKEY KONG games for approximately
$2,000.00.
34. Mr. Yang went on to explain that M & J International is
the principal supplier of both Donkey Kong and Crazy Kong 2
game board to MJZ Electronics Ltd. ("MJZ"). According to
Mr. Yang, these boards are sold to MJZ for either $650.00 or
$700.00, depending upon the quantity of boards being sold.
35. On October 28, 1982 I again visited M & J, and saw Mr.
Yang installing three Donkey Kong Jr. printed circuit boards
into cabinets. Mr. Yang informed me that in the month of
October alone he had sold 60 Crazy Kong games to a single
customer, and that M & J had sold a total of over 600 of these
games. He offered to sell me Donkey Kong Jr. games for
$2,300.00 cash, and told me that no receipt would be given to
me if I was to purchase a game and that no tax would be added
onto the purchase price. He anticipated that M & J would sell
even more Donkey Kong Jr. games than it had Crazy Kong
games. Mr. Yang went on to inform me that M & J places its
legal games in arcades and illegal games in smaller, less
conspicuous locations because the arcades are checked often.
36. I returned to M & J on December 1, 1982, and observed a
Donkey Kong Junior game, which I subsequently played. This
game was identical to the original game in all respects, except
that the scenes after the first scene were in a different order,
and the attract mode, instead of showing three initials of those
individuals who had achieved the highest scores while playing
the game, showed 12 letters. The audio portion of the game was
identical to that of the original game. I again spoke with Mr.
Yang, who informed me that M & J had sold approximately
600 Donkey Kong games and 147 Donkey Kong Junior games.
Mr. Yang informed me that while games had been seized in
Niagara, Hamilton and Montreal, none had been seized in
Toronto. He explained that the lack of seizure in Toronto was
attributable to the fact that no one had looked for infringing
games in that city. Mr. Yang went on to say: "Copies are
copies, and if you have copies they're going to seize them if
they look for them".
(c) Conversation with the defendant, Michael
Raichelson (Lake affidavit, paras. 40 and 41) A.B.
pp. 97 and 98:
40. On October 28th, 1982, I returned to MJZ and again spoke
with Mr. Raichelson. He showed me a marquee, unattached to
any game, which displayed the words "Donkey Kong Junior",
and included drawings of the same man and gorilla figures as in
the genuine DONKEY KONG game. He informed me that MJZ
had designed the marquee and has copies of it made by
someone else. Mr. Raichelson informed me that two of his best
selling games at that point in time were Crazy Kong and
Donkey Kong Jr. In response to my question as to why New
Way's (the plantiff s distributor) price was twice that of his, he
replied in the following or very similar words: "they've got the
licence from Nintendo but look at their price. Whenever you
buy from someone other than Nintendo it's illegal, but it's only
a problem for the makers, like me, not you, the operator".
Mr. Raichelson quoted me a price of $550.00 for a Crazy Kong
game board and $680.00 for one of the Donkey Kong Jr.
variety. He also offered to sell me a universal cabinet, capable
of housing either of these game boards, for $1,700.00. In the
course of our conversation I asked him at least twice whether I
would have a problem with a copy game and he insisted that it
is only a problem for the manufacturer. Mr. Raichelson
informed me that MJZ sells games to Canadian Amusement
Sales and Distributing but that Canadian Amusement Sales
and Distributing also makes its own games and is an operator.
While at MJZ I noticed a purchase order from Canadian
Amusement Sales and Distributing which included an order for
a Crazy Kong game.
41. On November 25, 1982 I again visited MJZ and asked Mr.
Raichelson about extended terms of payment on Crazy Kong
and Donkey Kong Jr. games and boards. He offered to sell me
a Crazy Kong board for $450 and a Donkey Kong Jr. board for
$500 with delivery in 5 days. When I asked him about the
danger of operating counterfeit games, he replied that it was
only a problem for the manufacturer, like him, not the
operator.
In the Anton Piller case supra, Lord Justice Orm-
rod enumerated three essential pre-conditions for
the making of the type of order which the Court
has made in this case. At page 62 of the report he
stated:
First, there must be an extremely strong prima facie case.
Secondly, the damage, potential or actual, must be very serious
for the applicant. Thirdly, there must be clear evidence that the
defendants have in their possession incriminating documents or
things, and that there is a real possibility that they may destroy
such material before any application inter partes can be made.
In my opinion, the plaintiff has met all three of
these conditions. With respect to the first test, I
said earlier that in my view the plaintiff had made
out an extremely strong prima fade case. I say
this because in the material there are admissions
by the manufacturing defendants that plaintiffs
gameboards have been copied and installed in
cabinets enabling them to be operated. Some of
the defendants' distributors have ackowledged
importing infringing copies of plaintiffs games for
purposes of sale or hire and have further acknowl
edged selling, leasing and distributing those same
infringing copies. Secondly, I believe that the
plaintiff has established that the resultant damage,
potential or actual will be very serious for it. The
plaintiffs business in Canada is the manufacture
and sale of audio-video games to legitimate dis
tributors. The material before us shows that the
market is being flooded with less expensive infring
ing games which, if allowed to continue, will quite
possibly jeopardize the plaintiffs entire operation
in this country. Thirdly, there is, in my view, clear
evidence that the defendants have in their posses-
sion infringing copies of plaintiff's video games
which they have offered to sell to plaintiff's inves
tigators. I am also satisfied that it has been shown
that there is a real possibility that the infringing
gameboards will be removed or disposed of since,
as mentioned earlier, they can be removed from
the cabinets and disposed of in a matter of
minutes. Accordingly, there is, in my view, a real
possibility of destruction of the infringing material
before any application inter partes could be made.
I think it relevant to observe that while I have
been persuaded, on the affidavit evidence in this
case, that the rather stringent criteria of the Anton
Piller case, supra, have been satisfied, there
appears to have been a somewhat less onerous test
adopted by the Court of Appeal in England in a
subsequent decision. I refer to the case of Yousif v.
Salama et al. 4 In that case the plaintiff purchased
goods for the defendants to resell under an agree
ment under which the defendants agreed to pay a
commission to the plaintiff for the goods so sup
plied. Pursuant to that agreement, a number of
transactions were completed over several years,
and commission accrued to the plaintiff but was
not paid. The plaintiff visited the office of the
defendants where he saw the accounts showing the
amount of commission owing to him. The plaintiff
then issued a writ claiming the amount due and,
fearing that the defendants might destroy the two
files containing the accounts and a diary contain
ing details of the transactions, he applied for an
Anton Piller order permitting him to enter the
defendants' premises to search and locate the files
and diary and remove them to the custody of his
solicitor. The order was granted. The judgment of
Lord Justice Brightman [at page 408] reads as
follows:
In my view the order sought in this case is justified if, but only
if, there is prima facie evidence that essential documents are at
risk. If essential documents are at risk, then it seems to me that
4 [1980] 3 All ER 405 (C.A.).
this court ought to permit the plaintiff to take such steps as are
necessary to preserve them.
So there are two questions to be asked. First, are the
documents sought to be seized essential to the plaintiffs case?
If so, are such documents at serious risk? Might they be
dishonestly destroyed?
It is difficult to form any confident view on the merits of the
application because inevitably the evidence is one-sided. The
defendants have had no opportunity to answer it. But I think on
the plaintiffs evidence that there are grounds for saying that
the documents in question are essential to the plaintiffs case. I
also think that on balance there is sufficient evidence to justify
the court in concluding that the documents are at risk. There
fore I would myself favour the grant of an appropriate order.
In my view, applying the tests enunciated therein
to the circumstances in the case at bar, there is
considerable prima facie evidence that documents,
machines and equipment essential to the plaintiffs
case are at risk so that the Court is justified in
allowing the plaintiff to take such steps as are
necessary to preserve them. In the Yousif case,
supra, Lord Denning M.R. also agreed that the
Anton Piller order should issue. He said at page
406:
But in this case there is evidence (if it is accepted) which shows
the defendant to be untrustworthy. The plaintiff has a legiti
mate fear that the documents will be destroyed. ... There is a
genuine fear that, if the plaintiff waits till after the application
is heard, the defendant may destroy the documents before the
date of the hearing. That is the sort of danger which the Anton
Piller order is designed to prevent.
... it seems to me that the granting of the order can in no way
harm the defendants. It is an aid to justice as far as the
plaintiff is concerned. Instead of having to speculate or try and
get evidence from elsewhere, it should all be available in the
files. It can do no harm to the defendant at all. If he is honest,
he will produce the documents in any case. If he is dishonest,
that is all the more reason why the order should be made ....
Lord Denning speaks in terms of legitimate fear or
genuine fear that the defendant may destroy essen
tial documents before the hearing date. In this
case, the plaintiffs President Arakawa makes spe
cific reference to his belief and his fear that the
defendant manufacturers and distributors "are
likely to secrete documents or dispose of evidence".
(Paragraph 43, A.B., page 20.) Therefore I con
clude that the evidence before us clearly meets the
tests enunciated by both Lord Denning M.R. and
Brightman L.J. in the Yousif case.
Accordingly and for the above reasons, I con
cluded that the Court should make an Anton Piller
type order in this case.
However, since the remedy granted herein is a
strong one, the plaintiff must, in enforcing it, "act
with due circumspection". 5 Likewise, the interests
of the defendants must be preserved and protected
as well as those of the plaintiff. With this principle
in mind, the order provides, inter alia:
(a) that subject order together with copies of all
supporting material be served forthwith and
with all due dispatch;
(b) that the plaintiff undertakes to be bound by
any order of the Court as to damages and
further agrees to provide a surety bond in the
amount of $75,000 as security for the undertak
ing as to damages;
(c) that the documents or things seized shall be
transmitted by plaintiff's solicitor to the sheriffs
in the appropriate jurisdiction of the respective
defendants and may be utilized solely for the
purpose of civil proceedings against the defend
ants or other persons in relation to the plaintiffs
copyrights in subject two audio-video games;
(d) that entry into the defendants' premises on
behalf of the plaintiff is restricted to not more
than four persons in number;
(e) that the right of entry and removal is
restricted to documents and "games, apparatus,
plans, drawings, circuitry and component parts"
directly related to the plaintiffs games "Donkey
Kong" and "Donkey Kong Jr." Each of these
games is specifically and particularly described
in the order; and
(f) that the defendants may move the Court to
(i) vary or discharge the order, or (ii) to
5 This is the language used by Lord Denning in the Anton
Piller case, supra, at p. 61.
increase the amount of security ordered, on
24-hours notice to the plaintiffs solicitor.
In my view, these safeguards fully protect the
rights and interests of the defendants while at the
same time enabling the plaintiff to proceed with its
action for copyright infringement against the
defendants.
URIE J.: I agree.
COWAN D.J.: I agree.
You are being directed to the most recent version of the statute which may not be the version considered at the time of the judgment.