868756 Alberta Ltd. operating as Urban Metropolis Entertainment Group Plaintiff - v. -, 2011 ABQB 617

Court of Queen ’ s Bench of Alberta Citation: 868756 Alberta Ltd. (Urban Metropolis Entertainment Group) v. 1252654 Alberta Ltd., 2011 ABQB 617 Date: 20111005 Docket: 1103 14939 Registry: Edmonton Between: 868756 Alberta Ltd. operating as Urban Metropolis Entertainment Group Plaintiff - and - 1252654 Alberta Ltd. and Troy Dezwart Defendants Corrected judgment: A corrigendum was issued on October 6, 2011; the corrections have been made to the text and the corrigendum is appended to this judgment. _______________________________________________________ Memorandum of Decision of the Honourable Mr. Justice Brian R.

Burrows _______________________________________________________ [ 1 ] 868756 Alberta Ltd. seeks an interlocutory injunction restraining 1252654 Alberta Ltd. and Troy Dezwart from using the trade- mark “Halloween Thriller” or any name incorporating those words and from using a specific logo which contains those words to promote an event 1252654 is arranging for Halloween weekend 2011.

[2] The evidence in support of the application includes an affidavit affirmed by Mr. Harman Brar. He states that in September2001 he had an idea for a nightclub event to be held over the Halloween weekend which was named, “Halloween Thriller”. His evidenceis that the idea for the event was his. He does not state who thought of the name. The first Halloween Thriller was held on October 26,2001 at the Joint Nightclub in West Edmonton Mall. Troy Dezwart was the majority shareholder of the Joint Nightclub. [3] A “Halloween Thriller” has been held every year since. Mr.

Brar affirms that he has been solely responsible for theproduction of the event every year. For the last 4 years the event has been held at the Edmonton Event Centre which is owned andoperated by 1252654. Mr. Dezwart has been the manager of that facility for the last 4 years. [4] Mr. Brar and Mr. Dezwart are in a dispute concerning a loan made by the former to the latter. Mr. Brar affirmed thatbecause of this dispute he decided to hold the 2011 edition of the Halloween Thriller at another facility. He began to work on securing afacility and on promotional aspects of the event. [5] Counsel for 1252654 and Mr.

Dezwart wrote to the management of the facility with which Mr. Brar was makingarrangements and advised that 1252654 owned the rights to the name “Halloween Thriller” and intended to hold the 2011 edition of theevent at the Edmonton Event Centre. Counsel demanded that facility not contract with Mr. Brar’s company and thereby infringe1252654 and Mr. Dezwart’s rights to the name “Halloween Thriller”.

The facility management declined to contract with 868756. [6] As a result of this letter and other similar communications 868756 has not been able to proceed with arrangements for the2011 edition of the Halloween Thriller in exercise of the right it claims in that name. [7] Mr. Dezwart has sworn a responding affidavit. He states that he “came up with the concept and name for the ‘HalloweenThriller’ before the first event was held in 2001". He states that contrary to what Mr. Brar states in his affidavit, the idea and name werenot Mr. Brar’s. [8] He also swears that for most of the years since 2001 he hired Mr.

Brar to promote the Halloween Thriller and other events. He states that the parties were co-promoting the events and that contrary to Mr. Brar’s affidavit, Mr. Brar has never been solelyresponsible for producing the Halloween Thriller. There were a couple of years when Mr. Dezwart was not involved in the production ofthe event because he was not in the bar and nightclub business and he permitted Mr. Brar to use the name and concept because he was afriend.

But for the 4 editions of the event from 2007 to 2010, the original arrangement was restored – the parties co-produced the eventat 1252654's facility. [9] Determining whether to grant the interlocutory injunction sought requires application of the 3-part test set out in Manitoba(A.G.) v. Metropolitan Stores (MTS) Ltd., (SCC), [1987] 1 S.C.R. 110 and RJR MacDonald Inc. v. Canada (SCC), [1994] 1 S.C.R. 311. [10] First, I must consider whether the applicant has shown a serious question to be tried. Normally this test does not involve aclose analysis of the merits of the applicant’s claim.

Where the right the applicant seeks to protect can only be exercised immediately ornot at all, a closer examination of the merits is in order. [11] 868756's claim is clearly not frivolous or vexatious. There are serious issues of fact and law to be determined.

The evidenceof the two principals is in direct conflict as to important factual issues: whose idea the concept and name “Halloween Thriller” was andin what capacity 868756 was involved in the use of the name and logo associated with it – whether as sole owner, contractor of theowner, licensee at will of the owner for at least some years, or co-owner with 1252654 and Mr. Dezwart.

In my view the first test issatisfied – there is a serious issue to be tried. [12] Second, I must consider whether 868756 has demonstrated that irreparable harm will result if the injunction is not granted. 868756 submits that the harm will take two forms: it will lose the profit that it would earn if it had exclusive use of the name for theevent it is planning at the end of this month and its pending application for registration of the trade-mark will be jeopardised.

[ 13 ] I do not accept that the potential loss of profits is not reparable by the accounting for profits and the award of damages which 868756 has sought in the Statement of Claim it has issued in this action. 868756 has 10 years experience of involvement in the event. That experience and 1252654's records for the event it holds this year should make proof of 868756's loss straight forward. [ 14 ] As to the possible damaging consequences to 868756 in its pending trade-mark registration application, I note that there is no specific allegation of such damage in the Statement of Claim.

In any event, if 868756 is able at trial to prove that its ability to secure the property right it claims has been compromised by wrongful acts on the part of the Defendants, the valuation of that right and the quantification of the loss could be proved and damages awarded. [ 15 ] In my view the second part of the test is not met. [ 16 ] In my view as well, the third part of the test is not met.

The third part of the test requires an assessment of the balance of inconvenience to the parties. 868756 must show that the harm it will suffer if the injunction is not granted will be greater than the harm 1252654 and Mr. Dezwart will suffer if the injunction is granted. [ 17 ] Both parties claim to have the right to use the name “Halloween Thriller” and the logo associated with that name. Both intend to hold events using the name. Neither wants the other to do so.

Practically, 1252654 is better able to hold an event using that name because it owns a facility. 868756 will only be able to hold an event using that name if it can secure a facility which, it appears, will require it to find a facility owner willing to risk being exposed to a liability for participating in what 1252654 claims to be a violation of its intellectual property rights. [ 18 ] Even if an injunction is granted, any risk to which parties contracting with 868756 may be exposed will continue.

An injunction preventing 1252654 from using the name in association with its event will not be a determination that 1252654 has no cause of action against 868756 or any other party who is involved in a violation of 1252654's intellectual property rights. An injunction against 1252654 and Mr.

Dezwart may therefore make no difference to 868756's ability to hold an event using the name “Halloween Thriller”. 868756 may suffer the harm it anticipates regardless of the injunction. [ 19 ] An injunction will however ensure that 1252654 will suffer the harm it anticipates. [ 20 ] In these circumstances, the balance of inconvenience does not justify granting the injunction. [ 21 ] The application is denied. Heard on the 3 rd day of October 2011. Dated at the City of Edmonton, Alberta this 4 th day of October 2011.

Brian R. Burrows J.C.Q.B.A. Appearances: Anna Loparco and Andrea M. Simmonds for the Plaintiff Amie W. Heil for the Defendants _______________________________________________________ Corrigendum of the Memorandum of Decision of The Honourable Mr. Justice Brian R. Burrows _______________________________________________________ The citation on page 1 has been changed to: Citation: 868756 Alberta Ltd. (Urban Metropolis Entertainment Group) v. 1252654 Alberta Ltd., 2011 ABQB 617