Date: 19971128
Docket: T-1459-97
BETWEEN:
ITV TECHNOLOGIES, INC.
Plaintiff
(Defendant by
Counterclaim)
- and -
WIC TELEVISION LTD.
Defendant
(Plaintiff by
Counterclaim)
MacKAY J.:
[1] These Reasons concern disposition of a motion by the defendant (plaintiff by counterclaim), WIC Television Ltd. ("WIC"), for an interim, interlocutory and permanent injunction, and related relief, first requested in its counterclaim, filed October 24, 1997. That counterclaim seeks relief for alleged infringement by the plaintiff (defendant by counterclaim), ITV Technologies, Inc., of WIC's rights in its registered trade-marks, Nos. TMA 467,002 and TMA 286,066 (the "ITV trade-marks"). The alleged infringements are said to arise from the plaintiff's use of WIC's ITV trade-mark in its corporate name, in its trade-name, in its domain name or internet address "www.itv.net", and in its programming from that internet address.
Background
[2] By statement of claim filed on July 4 the plaintiff, ITV Technologies, Inc., a British Columbia corporation with its offices in Vancouver, seeks an order expunging the ITV trade-marks of WIC and a declaration that the plaintiff is not precluded by those trade-marks from using the web address "www.itv.net".
[3] The plaintiff claims to have been operating an internet business, involving inter alia "net-casting" of video productions since November 21, 1995. Since that time it has also used the business name ITV.Net to identify its services with its web address "www.itv.net". The plaintiff's name, ITV Technologies, Inc., was adopted in November, 1996 when the corporation changed its name under B.C. legislation.
[4] The plaintiff claims to act as a network provider, as its internet address ending ".net" is intended to indicate. The plaintiff claims that the defendant does not act as a network provider and thus does not qualify to use an internet address ending ".net".
[5] The bases of the plaintiff's claim for an order expunging the trade-marks are said to be that they are not distinctive and were not distinctive at the time they were applied for, that the defendant was not entitled to secure registration of the ITV trade-marks, that the defendant has abandoned use of the trade-marks entirely or in regard to certain wares or services. Those grounds are all denied in the defendant's statement of defence and counterclaim.
[6] The defendant WIC is a corporation incorporated in British Columbia with offices in Vancouver and Toronto. It is in the business of television broadcasting, program production and multi-media communications. WIC is the licensee of a television broadcasting station, CITV, in Edmonton which carries on business under the name "ITV" and has done so since 1974. The defendant owns nine television stations in British Columbia, Alberta, Ontario and Quebec, and it operates two audio and video production facilities with offices in Vancouver and Toronto and one video post-production facility. WIC produces audio and video programming for use on theatre screens, television stations and on multi-media applications such as computer systems, on CD-ROM disks and on the internet. In its broadcasting, programming and distribution activities ITV, the television station in Edmonton, and WIC's other operations use the ITV trade-marks of which WIC is the registered owner. These include;
| No. TMA 286,066, for "ITV & DESIGN" which is said to have been used since August 1982 in association with the wares of films, video disks and cassettes, records, video tapes and audio tapes, and the services of television programs, radio programs, cable television and animation production; |
| No. TMA 467,002 for "ITV" used in association with the operation of a television station since September 1974 by WIC and its predecessors in title; |
| An anticipated trade-mark for "ITV & DESIGN" used in association with television broadcasting services since July 1994, a mark filed in the Trade-Marks Branch, January, 1996 and then assigned filing No. 801,944. |
[7] WIC's broadcasting from ITV in Edmonton is said to be viewed by a large audience across Canada by means of satellite communications and distribution services. In addition, since January 20, 1995, WIC has been the registered owner of an internet web-site with the domain name "ITV.ca". That registration was obtained by WIC's filing evidence of its ITV trade-marks with the CA Registry authorized in Canada to approve domain names incorporating the suffix or root ".ca". WIC's web-site is "www.ITV.ca" and from that base it broadcasts its television signal on the internet. At least one program, said to have been produced for WIC by an independent producer and broadcast by its ITV television system, has also been broadcast by the plaintiff from its web-site at www.itv.net, without any authorization by WIC.
[8] By its counterclaim the defendant alleges infringement of its ITV trade-marks by the plaintiff, in its corporate name, in its trade-name and in its web-site domain name in a manner that causes confusion or is likely to cause confusion in Canada between the wares of WIC and those of the plaintiff, and that the plaintiff has passed off its wares, services and business as being those of WIC. The plaintiff's use of ITV trade-marks is said to be unauthorized and to result in actual confusion. In protection of its rights under registered trade-marks and its pending trade-mark, WIC seeks injunctive and other relief by its counterclaim.
[9] The defence and counterclaim of WIC was filed October 24 and on November 10 it filed, by separate notice of motion, an application for interim, interlocutory and permanent injunctive relief, and damages and related remedies as earlier included in its counterclaim. That notice of motion was made returnable at Edmonton, on November 24, 1997, a regular motions day. The plaintiff filed a statement of defence to the counterclaim on November 20, 1997 and by that statement it denies the claims raised by the defendant.
[10] Although the plaintiff had notice of the defendant's application being set down for hearing on November 24, 1997, the only response to that application was by letter dated November 20, 1997, sent by fax, addressed to the Registry of the Court in Edmonton and Vancouver, stating that counsel for the plaintiff was applying for an adjournment of the defendant's motion to a two-day hearing in Vancouver. The letter further urges that the matter be heard in Vancouver rather than in Edmonton since both parties have offices in Vancouver where the action was commenced, and it urges further that the plaintiff have opportunity to examine documents of the defendant before any hearing of the matter. The letter further agrees to an expedited trial.
[11] A letter, of course, is not an accepted way to seek action by the Court, even if its words state "I apply for the notice of Motion...[to] be adjourned...I apply for an order requiring the Defendant to provide an affidavit of documents...". Such a letter, from counsel, does not qualify as a motion, and it is not supported by any affidavit. The letter gives no indication whether the plaintiff would be represented when the matter was set for hearing.
[12] When the Court commenced on November 24 in Edmonton, the plaintiff was not represented. I invited comments from counsel for the defendant, who was there to speak to the defendant's motion. The defendant had received no direct communication from the plaintiff or plaintiff's counsel concerning the motion before the Court. At the request of counsel for the defendant, I agreed that the Court would proceed to consider the application as one for an interim injunction for which adequate notice had been provided to the plaintiff, with service of all of the affidavit material before the Court, including an affidavit of James B. MacDonald, President and Chief Executive Officer of WIC, which was provided to the Court at the hearing, and the affidavits earlier filed.
[13] The only other matter of significance in the background concerns the efforts of the parties to resolve their differences. WIC, having learned of the plaintiff's use of its name and web-site, made inquiries, and sought to resolve any differences with the plaintiff, first directly by correspondence initiated in January 1997, and later through the international organization established by internet providers to sort out difficulties in domain names or web-site addresses. The defendant believed the latter process was progressing, until it was advised, by the international organization, not the plaintiff, that the plaintiff had filed a statement of claim in this Court, a statement of claim not then served upon the defendant. The defendant then arranged to accept service and thereafter responded to the statement of claim, originally filed July 4 in this matter.
The application for an interim injunction
[14] While I was not prepared to consider an application for an interlocutory injunction in the circumstances, without representation from the plaintiff, though it had full notice of the hearing, and had taken no formal step in relation to that application, in my opinion the circumstances did warrant consideration of the application for an interim injunction, if the defendant so desired. On that basis the Court proceeded having established a date in Vancouver when the Court could hear the application for interlocutory relief pending trial. The available date is December 17, slightly more than three weeks from the date of the hearing of the interim application.
[15] At the conclusion of the hearing, the Court granted an interim injunction pending the hearing on the interlocutory application. While Rule 469(2) speaks of an interim injunction extending for a period not exceeding ten days, as I read it, that provision relates to an application made without notice in a case or urgency. Those were not the circumstances here applicable, rather, in this case adequate notice was provided and no response to the motion was formally made by the plaintiff. The interim Order granted extends to the date fixed for hearing of the application for an interlocutory order pending trial.
[16] The action initiated by the plaintiff, and the defendant's counterclaim, raise serious issues, in my opinion. That requirement in the test for considering an application for injunctive relief is clearly met.
[17] Whether irreparable harm is here established was the major concern for the Court. The evidence before the Court includes the following:
| 1. By his affidavit, James A. Carroll, a consultant in relation to computers, present and future internet technology and trends, and the convergence of internet and television technologies and consumer use, states that it is his opinion there is a reasonable likelihood that a user of the internet would presume that the "www.itv.net" web-site of the plaintiff is associated with or related to the ITV television station whose web-site is "www.itv.ca". |
| 2. By affidavit, Wallace Kirk, Executive Vice-President, Programming, of WIC Television Ltd. deals, inter alia, with the harm to WIC, in some detail. It is Mr. Kirk's opinion that the plaintiff's activities "are likely to cause public confusion as to the affiliation, connection or association of WIC and its ITV broadcasting operations with those of the Plaintiff", or "confusion as to the origin, sponsorship and approval of the goods, services and activities being carried on by the Plaintiff, all of which will cause irreparable harm to WIC and the public". The plaintiff's unauthorized use of the ITV trade-marks is said to have resulted in a loss of WIC's control over the substantial good will associated with the trade-marks. It is said that WIC has always been careful to control the quality and standards of its broadcasting, programming and program development activities in order to comply with its corporate standards of taste and quality and with standards and requirements for Canadian broadcasters operating under CRTC licensing arrangements, which have no application to the plaintiff in its activities from its itv.net web-site. Further, it is urged that if "third parties distribute or sell broadcasting or programming, using or in connection with the initials 3ITV3, WIC's exclusive control over the distribution and programming of such services in connection with the ITV Trade-Marks would be forever lost. The result is immediate and substantial harm to WIC's rights and business which is not only impossible to quantify, but impossible to recoup.". |
| 3. By his affidavit, James B. MacDonald, President and Chief Executive Officer of WIC, comments on the plaintiff's broadcasting of a particular program series, originally produced for WIC by a third party, but then displayed, or "net-cast" or broadcast by the plaintiff from its web-site, using ITV trade-marks, without any authorization by WIC, though the plaintiff's advertising alludes to cooperation between the plaintiff and WIC in the programs. |
| 4. By his affidavit, William Mutual, President of the plaintiff, filed on November 20, 1997, it is urged that if an injunction is granted to the defendant as requested in its notice of motion the plaintiff's business "will be ended and this proceeding will be determined". However, that appears to be concerned not only with the effects of any injunction but with the effects of orders originally requested by the defendant for transfer of the itv.net web-site to the defendant. Relief of that sort is not here contemplated in regard to interim relief. Moreover, in Mr. Mutual's affidavit, paragraph 20 reads as follows: |
| |
20. If an offer satisfactory to Technologies is made, Technologies would sell the itv.net web address to the Defendant (and to cease using ITV in any manner) and to put the entire proceeds into Court pending a determination of whether Technologies is entitled to the ownership of the domain name itv.net. This motion is merely about money. I believe the Defendant is attempting to use the Courts to get for free what it would otherwise have to purchase in the marketplace. Technologies has received no offers from the Defendant in this regard. |
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[18] In my opinion, the evidence before the Court at this stage clearly supported the following conclusions. The defendant is the registered owner of the trade-marks in issue, TMA 286,066 and TMA 467,002. The latter is a trade-mark for the initials "ITV", in association with services for the operation of a television station. The defendant broadcasts some of its television wares on the internet from its web-site www.itv.ca. The plaintiff has used the ITV initials in its corporate name, in its business name, and in its web-site address and in "net-casting" or broadcasting television programs on the internet from its web-site address, www.itv.net. WIC's rights in relation to its registered trade-marks will be irreparably harmed by the plaintiff's continued use of those trade-marks, not simply by loss of goodwill in the trade-marks in issue but more particularly by the defendant's loss of control over production of wares appearing to bear its trade-marks.
[19] The evidence is that harm to the defendant is irreparable; it is not possible to quantify it or to measure it in damages, and even if it were measurable in damages there is no evidence the plaintiff is in a position to meet a substantial award of damages. In my opinion the harm is not merely speculative, it is continuing and on the evidence before me the circumstances warrant the grant of an interim restraining order.
[20] As to the balance of convenience or inconvenience, I am not persuaded that interim relief here granted will terminate the action. In my opinion, the balance of convenience in this case favours the grant of relief to the registered owner of trade-marks which it seeks to protect. While the plaintiff may suffer loss if an injunction be granted and that is subsequently found to have been inappropriate, the affidavit of Mr. Mutual, on behalf of the plaintiff, by paragraph 20 quoted earlier, indicates that the loss could be recompensed by damages. It would not be irreparable in those circumstances.
[21] I note that in his affidavit, Mr. Kirk on behalf of WIC, gives an undertaking, not questioned in this proceeding, that should an injunction be granted until trial, the defendant WIC will pay to the plaintiff any damages ordered by the Court to be paid as having resulted from the granting of an injunction should it be found at trial that the injunction should not have been granted. That undertaking is made a term of the Order.
[22] In my opinion, the defendant has established grounds for the award of an injunction on an interim basis, pending a hearing on its application for an interlocutory injunction until trial. (See generally, Syntex v. Novopharm Ltd. (1991), 36 C.P.R. (3d) 129, 126 N.R. 114 (F.C.A.) (leave to appeal to S.C.C. denied, [1991] 3 S.C.R. xi, 39 C.P.R. (3d) v.); Nature Co. v. Sci-Tech Educational Inc. (1992), 41 C.P.R. (3d) 359 (F.C.A.); Business Depot Ltd. v. Canadian Office Depot Inc. et al. (1993), 47 C.P.R. (3d) 325 (F.C.T.D.); Mascot International v. Harman Investments Ltd. (1993), 62 F.T.R. 29, 46 C.P.R. (3d) 161 (F.C.T.D.)).
[23] For these reasons an Order issued, dated November 25, 1997, restraining the plaintiff, its officers and others involved with or employed by the plaintiff from using the ITV trade-marks. The Order is effective on the date of service, or such other date as counsel may agree upon, pending a hearing on the application for an interlocutory injunction, ordered to be heard in Vancouver on the afternoon of December 17, 1997.
Judge
OTTAWA, Ontario
November 28, 1997.
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