• Motion for a Protective Order Drafted and Agreed to by the Parties Dismissed
  • November 3, 2017 | Authors: Beverley Moore; Jillian Brenner
  • Law Firm: Borden Ladner Gervais LLP - Ottawa Office
  • Live Face on Web, LLC v. Soldan Fence and Metals (2009) Ltd., 2017 FC 858

    The Court dismissed the parties’ motion for a protective order. The underlying dispute is a patent infringement action and the Plaintiff made an informal motion for the issuance of a protective on consent of the Defendant. In dismissing the motion, the Court concluded:

    […] absent highly unusual circumstances, it is not necessary for the Court to incorporate in an order the specific or additional protective measures agreed by the parties for them to be effective, and that the Court ought no longer to routinely issue protective orders on consent of the parties.

    The Court added that the majority of the provisions from typical protective orders are already covered by the common law doctrine of the implied undertaking rule. The Court dismissed the parties’ arguments that the proposed order is necessary despite the existence of the implied undertaking rule. Specifically, the parties argued that the proposed order expanded on the rule in two ways: 1) it limits the number of individuals that may access the information; and 2) it provides that parties must give each other prior notice of their intention to file material in Court, to allow the disclosing party an opportunity to seek a confidentiality order to ensure the continued protection of the information.

    In respect of the first argument, the Court noted that a breach of these limits will not necessarily constitute an improper use of discovery evidence, and that it was certainly not obvious that it should be punishable by contempt. In respect of the second argument, the Court agreed that such a provision was unquestionably useful. However, the Court did not consider that its incorporation into an order of the Court was necessary for it to be fully effective. The Court noted that it could not “conceive that anyone would think that a solicitor could, with impunity, breach such an undertaking simply because it has not been made part of an order of the Court”.

    The Court also dismissed the notion that that in the absence of a protective order, a separate agreement is needed to bind third parties to the implied undertaking rule. The Court found that this notion was simply incorrect in law.