PARRY SOUND – You can welcome visitors to Parry Sound, just be careful how you phrase your welcome.
A local businessman launched a lawsuit seeking more than $23,000 from the non-profit Parry Sound Snowmobile District for using the words “Welcome to (insert town name here).”
Nick Slater, owner/operator of internet provider Zeuter Development Corporation, has also sent letters to the Town of Parry Sound asking it to cease using the four-word welcome and compensate him for use so far.
The snowmobile club plans to fight the charges. The town, so far, has ignored the request to remove the words from its website.
Slater, according to his website, holds 31 trademarks. Four of them, including “Welcome to ___ ___” are recognized by the Canadian government, according to the Ministry of Industry’s trademark website.
In court documents, Slater said he developed a copyrighted website for the Parry Sound area called Welcome to Parry Sound in 1997. On February 8, 2007, he applied for a trademark for the words and was granted the trademark on January 8, 2009.
The trademark prohibits the use of the term in promotional items, including hats, pens and mouse pads; as well as internet websites, books and printed items including maps, business listings, listings of local accommodations, restaurants and flyers.
Slater argues he is just protecting what’s his. Town and snowmobile club officials, through legal spokespeople and documents, say the trademark goes too far.
Slater said he first began using the phrase when the internet was first brought to the region in the mid-1990s.
“The Welcome to Parry Sound page came as a way to put Parry Sound on the map; to give local businesses a way of getting known on the internet,” said Slater on Thursday. “Basically putting Parry Sound on the World Wide Web. There really wasn’t any kind of Parry Sound page before that…we’re very proud of the website we developed and we copyrighted all of our work way back.”
Slater said in order to trademark something; you don’t necessarily need to have it approved by the government. Slater said that in 2006 he began emailing the snowmobile club, requesting they change the heading, ‘Welcome to Parry Sound Snowmobile District’ on its website.
“I emailed them right away and said, you can’t really use ‘Welcome to Parry Sound,’ that’s our copyright and our trademark, all you have to do is put the word ‘the’ in there and you defeat the copyright, it’s so simple. That would not violate our trademark,” he said. “Instead of making the small change, they refused to do it. I was amazed that they just didn’t make the change. I mean, I waited about three years before I decided to take action on it….I’m really not sure why they were so resistant to doing it.”
The court documents include email transcripts between Slater and the club’s administrator Tracey Rand; the first was sent on June 4, 2009, with Slater requesting the removal of the trademark from their website within 48 hours.
“We require your immediate reply,” wrote Slater again on June 11, 2009. “We have faxed to you today the email below for your prompt attention. Should you wish to license our trademarked phrase, ‘Welcome to Parry Sound,’ we can make that arrangement with you amicably. Otherwise you must remove our trademarked phrase…before the end of business on Friday, June 12, 2009 or be subject to license fees and possible damages from infringement to date.”
On Monday, June 15, 2009, Rand responded.
“I have had the opportunity to discuss this matter with the PSSD executive,” wrote Rand. “On this matter, we don’t use ‘Welcome to Parry Sound,’ we use, ‘Welcome to Parry Sound Snowmobile District.’ As Parry Sound Snowmobile District is our company name we are welcoming visitors to our company as we have done for at least the past 10 years. At this time, the executive of PSSD does not feel that there is any infringement on your trademark by our welcoming phrase. As a community-minded organization working towards the betterment of the town and the communities we serve we will continue to welcome visitors to both the PSSD and the Parry Sound area.”
Slater said he would overlook the infringement if the club would insert the word “the” in its welcome statement.
“Please work with me to resolve this amicably as suggested above,” wrote Slater on June 15, 2009. “Should our trademark be further infringed after this weekend, then we will have to take action to safeguard our trademark which may involve PSSD paying license and infringement fees for the time during which our trademark was and continues to be infringed.
“Our purpose for the ‘Welcome to Parry Sound’ website has always been as a community service not as an income generator. I would be very reluctant to pursue legal action, but I will do what I have to do to ensure our intellectual property is protected. Please do not put me in that position.”
Slater then submitted several licensing bills to the club for their use of the phrase, many totaling more than $1,000; and he filed a small claim against the non-profit organization seeking infringement damages of more than $23,000.
“It’s $1,000 a year for the trademark license. That’s from 2008, 2009 and 2010. From my last invoice I think I waited 30 days to give them a chance to do something about it. Not one person contacted me, emailed me, faxed me, there was no contact. They were just hoping it would go away I guess,” said Slater. “I will meet the Parry Sound Snowmobile Club (in arbitration) and they will either agree to remove or amend or change the website so that they’re not breeching my trademark. The $20,000 is a copyright issue. It’s not a trademark issue, $20,000 is the mandatory fee, if you do go to court for copyright infringement. If we don’t go to court, then there’s no $20,000. So if they’re smart, they’ll come to the arbitration ready to cure the problem and we can all go our merry little way. The $20,000 is the slap upside the head, you know you’re really playing with fire, stop ignoring me and do the right thing.
“I was unhappy that I had to do it, but obviously they weren’t listening to me. Unfortunately if you allow somebody to breach your trademark that way, you may lose the trademark. That’s a dangerous thing. If you don’t defend your trademark you can lose it. I really had no choice to take some action against this. I think I was pretty patient – three years. I couldn’t wait any longer, because of the statute of limitations, obviously.”
Due to the sensitivity of the issue, Parry Sound Snowmobile District president Marilyn Derks was hesitant to comment on the charges.
“I don’t think right now we should really be making comment,” said Derks, who was consulting with the club’s attorneys.
Last week, the Parry Sound and Area Chamber of Commerce also declined to comment on the feud between two of its members.
“I don’t think it’s proper for the chamber to comment on the business practices of its members,” said chamber president Andrew Ryeland.
Slater said he’s not looking for financial gain from this suit; he’s simply looking to protect his intellectual property.
“If you own a house and people walk through the corner of your house as a matter of course and they do it regularly and continuously over 10 years they can then claim an easement and they will get to do that and you can’t stop them. That’s a property easement,” he said. “The same thing is true for intellectual property. If you allow people to tread on your intellectual property then you lose it, because you’re not maintaining it. You can’t selectively say, it’s okay for you to do it, but you can’t do it. If you let people get away with it, then everybody can get away with it.”
The snowmobile club wasn’t the only organization from which Slater demanded money.
On April 28, Slater sent a letter to Lynn Middaugh, the Town of Parry Sound’s director of economic development and leisure services, offering her the opportunity to clear the town’s outstanding invoices that he said have accumulated since 2008 for infringing on his trademark.
“I talked to Cheryl Ward (Bobby Orr Hall of Fame manager) and she said you are responsible for the Bobby Orr Hall of Fame invoice as well,” wrote Slater. “I am attaching statements for both the town - $5,488.80 - and the Bobby Orr Hall of Fame - $1,050 – together with the individual invoices for your records. The total of $6,358.80 is now due and payable. Please remit this amount before May 1, 2010 to avoid finance charges, interest and other collection action…I do note that neither the Bobby Orr Hall of Fame sign nor the town’s website have been updated to show our trademark notice as specified in the related invoices. Please be advised that Zeuter will take whatever legal action is necessary to protect our intellectual properties, including our trademarks and copyrights. The penalties for trademark infringement and or copyright infringement are significant and you are not above the law. Please keep in mind.”
However, Parry Sound Mayor Richard was very nonchalant about Slater’s accusations regarding the use of his trademark phrase and said the town will “certainly” continue to use it.
“The trademark, welcome to Parry Sound has been used by the Town of Parry Sound and others, let the courts sort it out. He sent us a couple bills and we’re not paying them,” he said. “We’ve contacted our solicitor and our instructions are not to pay the bill.”
The town’s solicitor, Lisa James offered this statement: “It is the town’s position that Zeuter misunderstands the limits of its trademark rights and is attempting to extract ransom from the town for use of a simple generic phrase. The town considers Zeuter’s action to constitute a nuisance and an abuse of the Canadian trademark system. To date, the town has taken no formal legal action in an effort to limit costs. Should the matter be pressed further by Zeuter, however, the town may seek redress in the Federal Court of Canada, that being the venue with jurisdiction over the validity of trademark registrations.”
Slater said if the town thinks that his trademark is a generic phrase, then they’re taking issue with the wrong person.
“Then they have an issue with the trademark people. If the trademark people didn’t think it was trademarkable, then they wouldn’t have allowed it to be trademarked,” he said.
“It’s a lengthy process to trademark, which is expensive in time and money. It’s publicly advertised, if they had an issue with it that was the time to do something about it. I’m not really looking for financial gain here either, I just want to (give them) kind of a slap upside the head and say, wake up, why didn’t you change it? You should change it.”