Court File and Parties

COURT FILE NO.: CV-17-580401-00CL DATE: 20210303 ONTARIO SUPERIOR COURT OF JUSTICE (COMMERCIAL LIST)

BETWEEN:

DISH NETWORK L.L.C., AL JAZEERA MEDIA NETWORK, ASIA TV USA LTD., B4U U.S. INC., GEO USA LLC, MBC FZ LLC, MSM ASIA LTD., SOUNDVIEW BROADCASTING LLC, SOUNDVIEW ATN LLC, STAR INDIA PRIVATE LTD., and VIACOM18 MEDIA PRIVATE LIMITED Plaintiffs/Moving Parties

– and –

SHAVA IPTV NETWORK LLC, IMRAN BUTT AND NAEEM BUTT, INDIVIDUALLY AND TOGETHER DOING BUSINESS AS SHAVATV, CRES IPTV, IRAA ENTERPRISES AND MAPLE ELECTRONICS Defendants/Responding Parties

Counsel: Ira Nishisato and Ashley Thomassen, for the Plaintiffs/Moving Parties Jerome H. Stanleigh, for the Defendants/Responding Parties, Imran Butt and Naeem Butt

HEARD: February 22 and 24, 2021

KOEHNEN, J.

Endorsement

[1] The plaintiffs seek declarations holding the defendants Imran and Naeem Butt in contempt of the judgment of Justice Pattillo dated August 1, 2018.

[2] The Butts concede that they have acted in contempt of the judgment. The parties differ about the extent of the contempt. For the reasons set out below, I find Imran and Naeem Butt to be in contempt of court for conduct that extends far more broadly than the conduct to which they have admitted.

Background

[3] The plaintiffs are the holders of copyright in a number of television channels around the world, including a significant number of channels that broadcast Asian programming in various languages.

[4] For many years, the defendants Imran and Naeem but have been pirating the plaintiffs’ channels and selling subscriptions to those channels under the brand name ShavaTV. The pirating occurs in two stages. First, a customer must purchase an android television set-top box that is specially programmed to access ShavaTV. Second, the purchaser must subscribe to the ShavaTV service which must generally be renewed (or to use the language of the industry, must be recharged) annually. Once activated, the subscription to ShavaTV allows a consumer to access over 50 of the plaintiffs’ channels.

[5] The plaintiff successfully sued Imran and Naeem Butt and a variety of their companies in the United States and obtained a judgment in January 2017. The judgment required them to stop infringing on the plaintiffs’ trademarks and stop transmitting or providing access to the plaintiffs’ television channels. Imran and Naeem failed to do so. This led to a contempt order against the defendants in the United States on February 22, 2018.

[6] Pursuant to the first U.S. contempt order against the defendants, the domain name shavatv.com was transferred to the plaintiffs. The defendants then simply started selling the ShavaTV Service under a slightly different name, shava-tv.com. After a second contempt order dated June 6, 2018, required the defendants to transfer that domain name to the plaintiffs, the defendants again began operating under a slightly different name, this time, shavatv.co.

[7] More recently, a German web site, shavatv.de, appeared and continues to sell ShavaTV services. Naeem denies owning or operating the German web site, but agrees that the images and the phone numbers it uses were the same as the earlier ShavaTV web sites that he admits to operating.

[8] On August 1, 2018, Pattillo J. granted judgment recognizing and enforcing the U.S. judgment in Ontario. The defendants appealed. On May 16, 2019, the Ontario Court of Appeal dismissed the appeal.

[9] Since Justice Pattillo granted judgment, private investigators retained by the plaintiffs have purchased both set-top boxers able to connect to ShavaTV and subscriptions to ShavaTV on multiple occasions. Many of the purchased set-top boxes were tested by NagraStar, LLC (“NagraStar”), a security and encryption provider, which has confirmed that the set-top boxes were able to access the ShavaTV service and the plaintiffs’ television channels that were illegally carried on that service.

The Defendants’ Breaches

[10] Imran Butt’s breach of and failure to comply with the Ontario judgment include:

(a) Continuing to sell set-top boxes that allow consumers to access the ShavaTV service thereby allowing access to the plaintiffs’ channels that have been pirated by the defendants, including:

(i) The sale on September 6, 2018 of an SMX set-top box on the IRAA Enterprises Amazon storefront. IRAA is a name under which Imran carries on business. A shipping label on the box identified IRAA Enterprises as the shipper.

(ii) The sale of an S Gold set-top box on shavatv.co on June 1, 2020. The investigator who purchased the set-top box received the product in a box bearing a shipping label with the Imran’s residential address on it as well as Imran’s phone number. The set-top box allowed the investigator to receive at least 50 of the plaintiffs’ channels.

(iii) The sale and shipment of 12 set-top boxes from Chit Chats Express between September-December 2018 through Imran’s customer account with Chit Chats Express

(iv) The sale and shipment of approximately 45 set-top boxes from Cross Border Pickups with the assistance of Umer Butt between October 2019 and April 2020

(b) Continuing to operate, or supporting the operation of, shavatv.co and shavatv.de

(c) Using his PayPal Account No. 1379544778134998382 in January 2019 to pay the web-hosting company WorldStream in January 2019. WorldStream is one of the web hosting services that ShavaTV uses to stream the plaintiffs’ channels illegally.

[11] Naeem Butt’s breach of and failure to comply with the Ontario judgment include:

(a) Continuing to sell set-top boxes that allow consumers to access the ShavaTV service thereby allowing access to the plaintiffs’ channels that have been pirated by the defendants, including:

(i) The sale of an SMX set-top box on shavatv.co on 17,April 2019 which connected to ShavaTV and was able to access the plaintffs’ channels. Payment for the box was made through a PayPal account owed by Good Ace, a company owned by Naeem.

(ii) The sale of an SMX set-top box on shavatv.co on May 21, 2019 again using the Good Ace PayPal account for payment.

(iii) The sale of an S Gold set-top box on shavatv.co on July 14, 2020 with payment through the Good Ace PayPal account. The set-top box was able to connect to ShavaTV and access 50 of the plaintiffs’ channels that had been illegally pirated.

(iv) The sales and shipment of approximately 130 set-top boxes from Cross Border Pickups with the assistance of Naeem’s uncle, Noor Ahmad Shahid between March 2019 and April 2020.

(v) The sales of more than 4,223 ShavaTV Products between August 2018 and December 2020 by means of Naeem’s PayPal account No. 1423601722775332910.

(vi) The sale of more than 4,756 subscription recharges between August 2018 and December 2020 by means of Naeem’s 2910 PayPal account

(b) Continuing to operate, or supporting the operation of, the New ShavaTV Web Site, shavatv.co, and the German Web Site, shavatv.de

(c) Continuing to operate, or supporting the operation of, the ShavaTV Service, by, among other things:

(i) Using Naeem’s 2910 PayPal account to make over 200 payments to various web-hosting companies between August 2018 and June 2020, including to companies that were used by ShavaTV to stream the plaintiffs’ channels illegally.

(ii) Using Naeem’s 2910 PayPal account to pay at least six different web-hosting companies between June 2020 and November 2020.

(iii) Using Naeem’s 2109 PayPal account to pay the web-hosting company OVH Hosting Inc. between November 2018 and May 2019, that was used by ShavaTV to stream the plaintiffs’ channels illegally.

[12] Without going to the painstaking detail of a forensic analysis of each transaction, the transactions above were supported by evidence of investigators, who connected the individual purchases to physical addresses, email addresses and account numbers owned by Imran and Naeem. Investigators on behalf of the plaintiffs were able to access the plaintiffs’ protected content through ShavaTV as late as February 4 and 5, 2021. Although investigators could not access ShavaTV from the United States in late January 2021, when the investigator contacted ShavaTV he was advised that Shava was down for scheduled maintenance but was given instructions on how he could access ShavaTV during the downtime.

[13] In addition to the foregoing, there are other transactions which I find were directed by Imran and Naeem. By way of example, many of the boxes were shipped from Imran’s residence by Umer Butt. Umer testified that he lives with Imran and is visually impaired. He testified that Imran drove him to and from a shipping warehouse known as CBP Fulfillment “many times”. Umer stored the set-top boxes that he shipped at Imran’s residence. Imran was aware that Umer was shipping set-top boxes. While Umer testified that he only shipped “android boxes”, he in fact shipped the S Gold set-top box in the June 2020 purchase, which is not a generic android box. When Imran was asked about the handwritten label bearing his residential address and phone number, he testified that Umer may have “asked somebody to write” it for him. Imran could not explain why his phone number was used.

[14] Records from Naeem’s PayPal account 2910 show that between June 2020 and November 2020, that is to say after the defendants filed their affidavits for this motion, 74 transactions involving ShavaTV or “SMX Shava Box Canada/America” and approximately 610 transactions involving SMX or ShavaTV recharges were processed through that account.

[15] The account was also used in the summer of 2020 to process payments of approximately $16,000 to two Chinese manufacturers of set-top boxes.

[16] In their defence, Imran and Naeem claim that Naeem sold the ShavaTV and related businesses to a business person in Pakistan, Rizwan Ahmed Shams in July 2018. As part of that transfer Naeem allegedly transferred his PayPal account ending in the numbers 2910 to Mr. Shams as well, hence the continued Shava related transactions running through that account.

[17] Imran claims that since Justice Patillo’s judgment, he has shipped only 4 or 5 “android boxes” at the insistence of Mr. Shams and that Umer shipped set-top boxes at Mr. Shams’ request.

[18] I do not accept those explanations.

[19] Mr. Shams has a business relationship with Imran and Naeem that goes back approximately 10 years. Mr. Shams was their employee in the ShavaTV business.

[20] The defendants have not produced a single document to support the alleged transfer of the business to Mr. Shams. Naeem says there was no written agreement but that the business was transferred orally. Even if that were the case, which I do not accept, I would expect at least an email confirming that the business was sold. Especially given that the business was supposedly sold to Mr. Shams because of the orders against the Butts in Canada and the United States. One might think that, if confronted with contempt orders in the United States and a judgment in Canada, the Butts would at least want to paper a transaction that ostensibly relieved them of future liability under the judgments.

[21] Mr. Shams swore an affidavit in support of Imran and Naeem’s explanation. Mr. Shams did not produce a single document to support the allegation that he now owns and runs the business. Documents that could have indicated ownership include things like communications between Mr. Shams and hosting services, communication between Shams and customers, bank account statements, some form of corporate books and records showing ownership of the business or its assets, a domain name registration, accounting records or tax returns. Mr. Shams did not include a single piece of paper as an exhibit to his affidavit to demonstrate that he owned ShavaTV.

[22] Moreover, although Mr. Shams swore an affidavit in support of the Butts’ allegations about ownership, he refused to make himself available for cross-examination.

[23] Naeem explains the use of his PayPal account for the ShavaTV business by asserting that he transferred the account to Mr. Shams as part of the ShavaTV business. Naeem has, however, continued to use the account for his own personal expenditures. Since July 2018, the PayPal account has been accessed at least 138 times from Hesse, Germany where Naeem has lived since October 2018. On January 1, 2020, Naeem’s wife was added to the PayPal account. The account information shows her living at the same address as Naeem does. Naeem not explain why is wife was added to the account if it was truly a ShavaTV account. On August 4, 2020 Mohammed Azeem Butt was also added to the PayPal account. Mohammed is Naeem’s brother. Naeem could not explain how Mohammed’s name became affiliated with PayPal account.

[24] On that record, I find that Naeem never transferred the PayPal account to Mr. Shams, that Naeem continued to exercise direction and control over the account and that all payments through the account that were related to ShavaTV occurred with Naeem’s knowledge and consent and were part of his continued involvement in and an official ownership of the business.

[25] Finally, Naeem uses the email address, goodacehk@gmail.com which he agrees was not transferred to anyone and to which only he has access. That address was copied on email correspondence for the July 2020 purchase of a subscription recharge for ShavaTV. Naeem had no explanation for this on cross-examination.

Legal Principles

[26] The importance of enforcing court orders has been pointed out on numerous occasions. By way of example, in Surgeoner v Surgeoner, Blair as he then was, noted:

No society which believes in a system of even-handed justice can permit its members to ignore, disobey, or defy its laws and its courts’ orders at their whim because in their own particular view, it is right to do so. A society which countenanced such conduct is a society tottering on the precipice of disorder and injustice.

[27] The test for civil contempt has three elements that must be established beyond a reasonable doubt: Carey v Laiken, 2015 SCC 17 at paras. 32-35

(i) The order must state clearly and unequivocally what should and should not be done.

(ii) The party alleged to have breached the order must have had actual knowledge of the order.

(iii) The party allegedly in breach must have intentionally done the act the order prohibits.

[28] I am satisfied that all the requirements are met here beyond a reasonable doubt.

[29] Imran and Naeem do not defend on the basis that they were unaware of what conduct they could or could not engage in. Indeed, both Imran and Naeem admit their contempt although not to the extent that the plaintiffs allege or that I find. Imran admitted that he “never should have shipped any products from his home” although he claims he was assured “that these boxes did not contain the allegedly infringed content”. Naeem admits that he challenged Shams one month before his examination about using the channels he was and asked him to remove them.

[30] There is no dispute that Imran and Naeem had knowledge of the order.

[31] The requirement that Imran and Naeem intentionally did the act that the order prohibits, does not require the plaintiffs to demonstrate that the defendants intended to breach the order. The only intention required is to perform the acts that contravene the order.

[32] I am satisfied that the record before me establishes beyond a reasonable doubt that Imran and Naeem intended to continue selling access to the plaintiffs’ channels through the ShavaTV service after the judgment of Pattillo J. was issued.

[33] Their conduct after the judgment fell into the same pattern as their conduct in the face of contempt orders from American courts. They continued engaging in the prohibited conduct but under thinly veiled mechanisms to supposedly avoid the effect of the orders. In the cases of the American orders, they simply changed the website name to evade the orders. In the case of the judgment of Justice Pattillo, they assert that they transferred the business to Mr. Shams.

[34] As set out above, I do not accept that they transferred the business to Mr. Shams. The transfer consists of nothing but a bald allegation. The facts are entirely inconsistent with the transfer. Not a single piece of paper has been produced to suggest that Mr. Shams owns or runs ShavaTV. The absence of any documentation to support the allegations that one would ordinarily expect to be associated with some form of documentation entitles me to infer that the allegation is untrue. Drosophilinks Consulting Inc. v. Canadian National Railway, 2010 ONSC 3576 at para. 52.

[35] It is well established that filing a self-serving affidavit in the absence of any documentary evidence that one would expect to exist does not create a triable issue for purposes of summary judgment. Park v. Carvalho, 2020 ONSC 1340 It does not create a reasonable doubt either.

[36] As McEwen J. noted in Citti v. Klein, 2020 ONSC 2228, at para. 45, where affidavits filed by alleged contemnors defy common sense, the judge can have confidence that findings on a criminal standard of proof can be made.

[37] Mr. Shams’ refusal to be cross-examined also entitles me to infer that the evidence he would have given on cross-examination would not have been helpful to the defendants. Health Genetic Center Corp. v. Reed Business Information Ltd., 2014 ONSC 6449 at para. 18. I draw that inference.

[38] The documented facts that I do have, point squarely to Imran and Naeem continuing to be centrally involved in the ShavaTV business after the alleged transfer. Both of their PayPal accounts continued to be used for the purposes of ShavaTV as well as for personal expenses. Naeem’s PayPal account has since also been associated with his wife and his brother. Mr. Shams has never been associated with the account.

[39] It is entirely implausible that a visually impaired person living in Imran’s basement who needs Imran’s help driving to and from shipping warehouses would be shipping Shava set-top boxes other than at Imran’s direction.

[40] Imran claims he was unaware that the set-top boxes being shipped from his home were enabled to access ShavaTV. He claims Mr. Shams assured him that “the boxes did not contain Dish Network content”. There is no evidence to suggest that Imran made any inquiries to verify that the “assurance” was accurate. That is particularly odd given that, according to Imran, the ShavaTV business was transferred to Mr. Shams. Imran does not explain why, if Mr. Shams was now the owner of ShavaTV, he would be selling boxes that do not connect to ShavaTV.

[41] Naeem also claims that Mr. Shams assured him that the plaintiff’s content had been removed from ShavaTV. Even on Naeem’s evidence that assurance was given only in November 2020. Naeem never checked to see whether that was true.

[42] Naeem admits to making an error in judgement and allowing Mr. Shams to use the ShavaTV name and website. He admits that this is a violation of the court order. In his affidavit, Imran admits that he made an error in allowing the ShavaTV business to continue and by allowing the continuing business to use Naeem’s PayPal account. Those statements suggest that Imran had far deeper involvement than merely helping ship four or five set-top boxes as he claims.

Understanding of the Order

[43] Although Imran and Naeem do not say anywhere in their affidavits or in their cross examinations that they did not understand the extent of the order and, even though they admit to contempt, their factum suggests that there may have been some ambiguity about the order or their understanding of it. I do not accept that as a defence. Justice Pattillo already addressed this issue in paragraph 41 of his that reasons where he stated as follows:

“[41] The findings of fact and recommendation of Magistrate Davis clearly and unequivocally identify the infringement of the plaintiffs' copyrights and trademarks. The terms of the injunction are clear and specific. They set out exactly what must be done to comply. There is no risk the Defendants will not be able to identify which activities are prohibited under the Judgment Order. While the scope of the injunction is broad, I am satisfied it is fair and reasonable and necessary in circumstances of ongoing infringement of intellectual property rights through a variety of technological means.

Jurisdiction over Naeem

[44] Naeem says he has lived in Germany since the fall of 2018. While his counsel did not do so, I raised a question about the court’s jurisdiction over him. I am satisfied that there is a sufficiently real and substantial connection with Ontario to give this court jurisdiction over the contempt issue.

[45] The contempt at issue is of course, contempt of an Ontario court order over which this court has jurisdiction.

[46] The record before me discloses that many of the sales of set-top boxes and subscriptions were made to purchasers in Ontario. In addition, Naeem has used a Canadian hosting company to stream the infringing channels. One of the realities of internet offences is that they can be conducted from anywhere in the world. As a result, the concept of territorial jurisdiction may require some elasticity when dealing with copyright and trademark infringements via internet commerce.

Disposition

[47] For the reasons set out above, I find Imran and Naeem Butt contempt of the order of Justice Pattillo.

[48] I provided the parties with my dispositive endorsement on February 24, 2021. I noted at that time that, if the defendants wished to purge their contempt, they must within 7 days of February 24 take all steps necessary to shut down the ShavaTV service and the Shava website and to ensure that they have no further involvement in pirating any of the plaintiffs’ content. I suggested that counsel discuss between themselves what steps that would entail. Given past efforts by Imran and Naeem Butt to avoid their obligations under judgments of various courts, I strongly recommended that they err on the side of complying with whatever steps the plaintiffs require.

Koehnen J. Released: March 3, 2021