Global can continue with “ITV” trademark, but Vancouver company owes no damages

WIC Television Ltd., now a subsidiary of CanWest Global Communications Corp., will continue to own the trademark "ITV" in Canada. But a veteran Vancouver webcasting company hasn’t violated that trademark by using the initials in its corporate name, ITV Technologies Inc., or its web site domain name ITV.net, the Federal Court of Canada ruled on September 10. The decision, rendered by Justice Danièle Tremblay-Lamer in Ottawa, upholds the status quo for both companies, though ITV Technologies’ lawyer says he’ll continue the case to pursue damages for losses suffered when WIC successfully won an injunction shutting ITV Technologies’ web site down for three weeks in 1997. The case, had it been brought before the court today, may have turned out very differently. Much of the judge’s reason for judgment focuses on whether or not ITV was commonly thought of as standing for interactive television, or whether interactive TV is different from conventional broadcasting. Though some of the findings give the reader pause in an age of convergence, the judge was forced by law to consider the environment in 1997 when ITV Technologies asked the court to expunge WIC’s trademark. The case began in 1995 when ITV Technologies incorporated and set up shop archiving and transmitting live video events. At the same time, WIC was operating an Edmonton-based television station also called ITV, and had registered the initials ITV as a trademark in 1996 and also the initials with a graphic design in 1998. The TV station also had a web site at ITV.ca. In late 1996, WIC discovered ITV Technologies’ operations and its lawyers asked the Vancouver start-up to stop using its trademark. While ITV Technologies was initially set to comply and had worked out a compromise through the domain name dispute process to change its domain name to eyetv.net, the company changed its mind. Instead of cooperating, it filed suit in July 1997 with the federal court to expunge WIC’s trademark from the system. WIC predictably counter-sued, seeking damages on the grounds that ITV was passing itself off as connected with WIC, and for harm to the goodwill associated with the ITV brand. In deciding against ITV’s plea that the trademark be removed, the court heard from several experts, including Seventh Floor Media’s Julie Zilber, that the acronym was commonly understood to stand for interactive television, or Internet television. As such, ITV Technologies’ lawyers argued that ITV should have been unusable as a trademark. But WIC lawyers and their witnesses, including Internet expert Jim Carroll, said there was likely to be confusion between the two web sites since people don’t commonly differentiate between .net and .ca domain names. Further, WIC argued that it had spent millions on promotional and branding material on the ITV name during the time it carried on business from 1974 to 2000. Through a lengthy legal reasoning contained in her judgment, Tremblay-Lamer ultimately concludes that while the mark ITV was well recognized in Alberta and identified with WIC’s TV station, not enough people would be familiar in 1997 with Internet or interactive television to render the mark unregisterable. On the other hand, she says in dismissing WIC’s counter-suit, it’s unlikely anyone confused the two companies since they offered different wares. In rejecting the argument that webcasting and traditional broadcast are similar, she may raise some eyebrows when she writes: "Although I agree that broadcasting and web casting are related in that they both provide audio-video content to a mass audience, I do not believe that they are similar. Broadcasting does not allow any interaction between the viewer and the broadcaster. A viewer watches the broadcast passively. By contrast, web casting allows a significant amount of interaction between the viewer and the web caster. Web casting allows a viewer to interact with the video, with such features as streaming on demand, pausing, rewinding, multiple selections, multiple split or virtual browser screens with different content, links to related sites, program guides, alternative commentaries, and viewer feedback. In my view, an ordinary person at the relevant date, would have been able to grasp these differences between broadcasting and web casting." Vancouver lawyer Paul Gornall, working for ITV Technologies, said in a brief conversation with Canadian NEW MEDIA that the matter won’t end here, but that he’ll pursue damages for a brief injunction against the company in 1997.

Global can continue with “ITV” trademark, but Vancouver company owes no damages

Broadcast | September 26, 2003

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