Harry Potter and the folk band from Manitoba: latest instalment

The Ontario Superior Court of Justice has released the latest sequel to Baryluk v Warner Bros Entertainment Inc (Case 05-CV-297404PD3, September 28 2007) and ruled that the plaintiff could bring contempt proceedings against Warner.

The plaintiff, Kim Baryluk, has a non-registered trademark in the name The Wyrd Sisters that she has used for the past 15 years for her folk singing group from Manitoba. On November 4 2005, two weeks before Warner Bros Entertainment Inc released Harry Potter and the Goblet of Fire, Baryluk applied to the Ontario Court of Justice for an injunction restraining Warner from featuring a performance by a band in the upcoming movie. Baryluk also claimed $40 million in damages. The book upon which the movie was based mentioned a fictional band called the Weird Sisters and was published by a company unrelated to Warner. The movie contained the six-second appearance of a three-member band, which was not named in the movie and was composed of three male British rock stars.

According to Baryluk, the appearance of a three-person musical group in Harry Potter and the Goblet of Fire; was likely to cause confusion, as persons who attend her band's shows may think that the band is associated with Harry Potter.

To grant an interlocutory injunction, Baryluk had to establish the following:

• there was a serious issue to be tried;
  
  
• there would be irreparable harm to the plaintiff if relief was not granted; and
  
  
• the balance of convenience favoured the restraint sought.

Baryluk failed to meet all three of these requirements and the motion for injunctive relief was dismissed.

Subsequently, Baryluk instituted a similar passing off action in the Federal Court of Canada. The test for a passing off action consists of three elements:

• the existence of goodwill;
  
  
• deception of the public due to a misrepresentation; and
  
  
• actual or potential damage to the plaintiff.

Whether she will be successful remains to be seen. However, as Justice Campbell stated in the application for an interlocutory injunction:

"Three female folk singers from Manitoba are in my view not likely to be confused with the fictional characters from a novel portrayed in a movie by three recognizable British rock stars."

On September 13 2007 Baryluk applied to the Ontario Superior Court of Justice for a partial dissolution of a stay against bringing contempt proceedings against Warner and its counsel. The court imposed a stay because Baryluk's counsel had health problems and could not schedule contempt proceedings in a timely manner. Baryluk argued that Warner succeeded in having the injunction motion dismissed partly on the basis of perjured testimony.

Warner argued that the general policy in the Ontario Rules of Court is that costs incurred between parties should be paid before the party liable for the costs proceeds further against the party entitled to the costs. The court held that the public interest in determining Baryluk's contempt allegations outweighed Warner's private interest in recovering costs.

While Baryluk was permitted to bring contempt proceedings before the court, the court expressed no opinion on the merits of the proposed proceedings. The court also expressed no opinion as to whether Baryluk should proceed with her action for passing off in the Ontario Superior Court of Justice or the Federal Court of Appeal.

The contempt proceedings and passing off action may drag on for a considerable period of time in the Ontario courts and the Federal Court of Canada. While the Ontario Court of Justice seems to have suggested in its reasons for not granting the interlocutory application that Baryluk's passing off claim was not well founded, this conclusion is in no way certain.

Mark Gustafson, Fasken Martineau, Vancouver