Date: 20000925
Docket: T-1760-00
BETWEEN:
CARL GARDNER
Plaintiff
- and -
LARRY MARSHAK, PINK LACE PRODUCTIONS,
INC., JEFF PARRY PROMOTIONS, CALGARY
HERALD, EDMONTON JOURNAL, WINNIPEG
FREE PRESS, TICKETMASTER CANADA LTD.,
THE VOGUE THEATRE INC., HER MAJESTY THE
QUEEN IN RIGHT OF ALBERTA AS REPRESENTED
BY THE MINISTER OF INFRASTRUCTURE, THE
PERFORMING ARTS CONSORTIUM OF WINNIPEG
INC. (c.o.b. as THE PANTAGES PLAYHOUSE THEATRE),
JOHN DOE I, JOHN DOE II and JOHN DOE III
Defendants
REASONS FOR ORDER
DAWSON J.
[1] The motions brought in Court File Nos. T-1760-00 and T-1765-00 were heard together and these reasons apply to both files.
[2] Before me are motions brought in two actions by which each Plaintiff seeks an interlocutory injunction restraining the Defendants from, directly or indirectly, providing, performing, selling, offering for sale, selling or advertising the sale of tickets for, sponsoring, distributing, promoting or advertising musical services or products in association with the trademarks THE COASTERS, THE CORNELL GUNTHER COASTERS, COASTERS, THE DRIFTERS, and the DRIFTERS.
[3] The Plaintiff Gardner has since July 1996 owned the registered Canadian trademark "THE COASTERS". The Plaintiff Sheppard has, either through a corporation he controlled or personally, owned the registered Canadian trademark "THE DRIFTERS" since June 1976.
[4] The motions arise from a series of concerts at which groups calling themselves "THE CORNELL GUNTHER COASTERS" (or "THE COASTERS") and "THE DRIFTERS" are to perform commencing tomorrow, September 26, 2000 and continuing, I am told, until October 2nd, 2000.
[5] In view of the imminence of the concert dates, these reasons are necessarily brief. I have decided to dismiss the motions for injunctive relief in respect of the concerts to be held from September 26, 2000 to October 2, 2000, on the terms set out in the order.
[6] The order is interim, that is only with respect to the concerts to be held on or before October 2, 2000, because of the necessarily unsatisfactory nature of the evidence in view of the time frames in which the motions were brought. Credibility is very much in issue, there has been no cross-examination on the affidavits, and reply evidence has been tendered based upon information and belief, some second-hand, given to a legal assistant employed by Plaintiff's counsel.
[7] My reasons for not granting injunctive relief are that while the existence of a serious question has been conceded, the Plaintiffs have not satisfied me that the refusal of injunctive relief will so adversely affect their own interests that any harm they may suffer could not be remedied if they are successful at trial. Nor have the Plaintiffs satisfied me that the balance of convenience favours granting injunctive relief.
[8] As to irreparable harm, the validity of the Plaintiffs' trademarks is disputed and I have not concluded that unauthorized use per se results in irreparable harm: see Syntex Inc. v. Novapharm Ltd. (1991), 36 C.P.R. (3d) 129 (F.C.A.).
[9] Further, I find each Plaintiff's evidence as to irreparable harm to be speculative or not supported by sufficient clear and compelling evidence.
[10] The Plaintiff Gardner did not produce evidence of use of his trademark in Canada after 1993, except for evidence of steps taken to enforce his trademark in 1998 in connection with a proposed concert at the CNE. The Plaintiff Sheppard did provide evidence of more recent use, however the Defendant Marshak presented evidence that Mr. Sheppard was paid by Mr. Marshak as an employee for participating in Canadian performances of THE DRIFTERS under Mr. Marshak's management. Mr. Marshak swore that he has used "THE DRIFTERS" in connection with more than one hundred performances in Canada and provided some sample contracts in that regard. The Plaintiff Gardner has been, and is, in litigation in the United States with Mr. Marshak over the use of the trademarks "THE COASTERS" or "THE CORNELL GUNTHER COASTERS".
[11] I make no finding on the basis of the conflicting evidence, but I have not been persuaded as to the existence of irreparable harm flowing from the few concerts at issue.
[12] I have also had regard to Mr. Marshak's uncontradicted evidence that an injunction would adversely impact on his reputation for reliability as a concert promoter.
[13] As to the balance of convenience, the evidence is to the effect that ten thousand tickets have been sold to the public for the concerts, the promoter Jeff Perry Promotions has spent $168,500.00 to promote the tour, which sum may be lost if an injunction is issued and the Defendant Marshak stands to be exposed to potential litigation if the injunction is issued. I have therefore concluded that the balance of convenience does not favour the granting of the injunctions, particularly at this late date.
[14] As owner of registered trademarks, I conclude that the following terms will provide protection to each Plaintiff:
| a. Any Defendant served with notice of this Order is required to pay into Court all moneys then or thereafter in that Defendant's possession or control by way of concert receipts for a series of concerts at issue in this proceeding, to be held on dates commencing September 26th, 2000 and concluding on October 2nd, 2000 ("the concerts"). Such payment is to be made at the Court's Registry in Toronto, Ontario. |
| b. Thereafter, any party Defendant may apply to the Court for payment out of any of those receipts reasonably required for the purpose of paying reasonable disbursements reasonably incurred for the purpose of holding or promoting the concerts. In the absence of the Plaintiff's consent to such payment out, the Court will adjudicate upon the reasonableness of any requests for payment out, and may impose costs if the Plaintiff's consent is unreasonably withheld or if the Defendant's request is viewed to warrant costs. |
| c. The Defendants Larry Marshak, Pink Lace Productions, Inc. Jeff Parry Promotions, and Ticketmaster Canada Ltd. are required to keep and maintain proper and accurate records of all revenues and expenses relating to the concerts and shall keep and maintain such records until the finalization of this action by way of judgment, settlement or other termination recorded in the Court's records. |
[15] In view of the nature of this dispute and the need for prompt action, on my own motion pursuant to Rule 47, I conclude that these proceedings should be specially managed.
[16] The costs of these motions should be reserved to the trial judge.
"Eleanor R. Dawson"
J.F.C.C.
Toronto, Ontario
September 25, 2000