A case before the Court of Queen’s Bench of Alberta raises some interesting intellectual property issues.
Corus Radio Inc. and Corus Entertainment Inc. (“Corus”) sued Harvard Broadcasting Inc. for copyright infringement, trademark infringement, and passing off, among other things, relating to a series of registered trademarks, which include the word POWER and the call letters of FM radio stations, namely 97, 107 and 92. The POWER 97 registration is a wordmark but the other marks include design presentations (the Logos) such as:
Corus used the trademark POWER 92 in Edmonton in the 1990s and the early 2000s but in 2003 rebranded its Edmonton radio station in association with another unrelated mark. Corus says this was done so the station could evolve with its audience and crystallize the value of the brand. It is a Corus practice and, they say, a common practice in the entertainment industry, to rebrand radio stations or cancel television programs, but preserve and sustain heritage radio brands to revive them under favourable market conditions.
Corus revived two heritage radio brands in recent years that achieved the height of their success in the 1990s and early 2000s: POWER 97 in Winnipeg and Energy 95.3 in Hamilton/Toronto.
Harvard Broadcasting claims it is entitled to use the trademark POWER 97 and did so in Edmonton. Harvard says that Corus abandoned its claims to the POWER brand over sixteen years ago. Harvard relies on Corus allowing its registration for the trademark POWER 92 to lapse in 2015 when it failed to renew the registration.
Harvard has filed trademark applications for the word mark POWER 107 and the design mark as reproduced below:
Corus has applied for an interlocutory injunction against Harvard Broadcasting which has now been heard.
The Judge said that the application for an injunction must be assessed in light of the plaintiff’s underlying claims. Because all the evidence cannot be assessed in this context the decision is not a final determination.
To obtain an interlocutory injunction the plaintiff must at a minimum demonstrate with respect to any or all of the claims:
there is a serious question to be tried, in the sense that the claims are not frivolous or vexatious;
the plaintiff will suffer irreparable harm if the interlocutory injunction is refused;
the balance of convenience favours granting the injunction, meaning that the plaintiff would suffer the greater harm pending a decision on the merits if the injunction is not granted then the defendant would suffer if the injunction is granted.
Corus asserts that its trademark Logos are also protected as original artistic works and that its advertisements containing the Logos are protected as literary works, all of which have been infringed by the defendant’s logos and advertising.
Although Corus presented no definitive evidence concerning the name of the author of the works or that the author was an employee of Corus’ predecessor or that copyright in the works had been assigned to it by the author, the Judge concluded there was a serious issue concerning the alleged copyright infringement.
Corus alleged infringement of its registered trademarks notwithstanding that its Logo marks had not been used since 2004. The wordmark POWER 97 was presumably in use although the Judge did not say this was the case.
The registrations relating to the Logos were all subject to section 45 proceedings and presumably, these registrations will be expunged by the time this case goes to trial. The registrations for the word mark POWER 92 and POWER 107 had been expunged since Corus did not renew the registrations.
The Judge correctly observed that the validity of the Corus trademark registrations should not be assessed at a preliminary stage. Since she was not convinced that an intention to abandon had been established it was concluded there was a serious issue to be tried concerning trademark infringement.
The claim for passing off related to trademarks owned by Corus. The elements required to be proved, whether at common law or under section 7(b) of the Trademarks Act are: first, the existence of goodwill and the distinctiveness of the marks which identify the source of the services; second, misrepresentation to the public, whether or not willful, causing or likely to cause confusion; and third, actual or potential damage to the plaintiff. Once again, the Judge was satisfied this claim raised a triable issue.
The Judge determined that Corus was required to show irreparable harm on a balance of probabilities with clear and not speculative evidence. The Judge was not satisfied that any of the claims advanced by Corus were adequately connected to the performance of Corus` Edmonton radio station operating as CHUCK 92.5.
Corus also claimed that it had suffered a loss of goodwill and depreciation in the distinctiveness of its trademarks and that it had lost the opportunity to re-enter the market as POWER 92. Corus succeeded in showing there was residual goodwill associated with its trademarks since Harvard acknowledged this implicitly in the promotion of its new station as in effect a successor of the Corus station. This same evidence also was sufficient to support a finding of confusion and loss of distinctiveness. Harvard`s actions invited the average listener to associate the goodwill relating to Corus’ POWER 92 mark and Harvard’s POWER 107 mark.
The Judge concluded that if Harvard was not enjoined the distinctiveness of the Corus trademarks would continue to fade and this was a loss that was not compensable in damages. Irreparable harm would be suffered if an injunction was not granted.
Balance of Convenience
Although Harvard would incur significant costs if an injunction was ordered Corus had given an undertaking to reimburse Harvard concerning the damages it might suffer if, after trial, it was determined that Corus was not entitled to an injunction. The Judge concluded that the balance of convenience favoured granting an interlocutory injunction. Particularly important in her assessment was the fact that Harvard was inviting listeners to recall the POWER 92 station.
Harvard was restrained from directly or indirectly using the POWER 107 wordmark, the trademark logos, any trademark or trade name that includes POWER or any trademark or trade name similar to the POWER 97 wordmark or the trademark logos. Harvard was also enjoined from representing to its listeners or implying in any way that its Edmonton radio station was a revival or a continuation of or was somehow associated or otherwise endorsed by Corus` POWER brand.
It seems inappropriate that the plaintiff could assert a claim for copyright infringement without establishing its title to the works in issue. Virtually all cases concerning copyright require that the author and a chain of title be established. In addition, the test for determining copyright infringement is different and does not involve consumer confusion.
While the claim for trademark infringement may not be available or further limited as the action progresses, a claim for passing off relating to residual goodwill is viable. However, this claim is territorial in nature and restricted to the Edmonton marketplace. In addition, the claim is unlike a claim for trademark infringement since all of the relevant trade dress and the context is considered.
The decision seems to be at the extreme end of the range. Fifteen years had gone by since the initial name change followed by a second name change. In addition, Corus had allowed some of its trademark registrations to lapse and taken no steps to support its other registrations through use.
If you have questions, please contact me at email@example.com.
Goldman Sloan Nash & Haber LLP 480 University Avenue, Suite 1600 Toronto, Ontario M5G 1V2 Direct Line: (416) 597-3371 Fax: (416) 597-3370 Email: firstname.lastname@example.org
These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.
This article originally appeared on The Lawyer’s Daily website published by LexisNexis Canada Inc.