HomeMy WebLinkAboutCOD-048-09CI~i"liC1~;C0Il
Leading Nes Woy
REPORT
CORPORATE SERVICES DEPARTMENT
Meeting:
Date:
Report #:
Subject:
GENERAL PURPOSE AND ADMINISTRATION COMMITTEE
June 22, 2009
COD-048-09 File #
TOTAL HOCKEY OFFICIAL MARK
By-law #ac>J9-~i7
Recommendations:
It is respectfully recommended that the General Purpose and Administration Committee
recommend to Council the following:
THAT Report COD-048-09 be received;
2. THAT the proposal dated June 8, 2009 as provided by Total Hockey Worldwide L.L.C
Lakeville, MN, be accepted; and
3. THAT the attached By-law marked Schedule "A" authorizing the Mayor and Clerk to
execute the necessary agreement be approved.
Submitted by: ~~ Reviewed by:
arie Marano, H.B.Sc., C.M.O.,
l~ Director of Corporate Services
MM\JDB\BH
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Franklin Wu,
Chief Administrative Officer
CORPORATION OF THE MUNICIPALITY OF CLARINGTON
40 TEMPERANCE STREET, BOWMANVILLE, ONTARIO L1C 3A6 T (905)623-3379 F (905)623169
REPORT NO.: COD-048-09
PAGE 2
BACKGROUND AND COMMENT
1.1 At their meeting of December 1, 2008 Council reviewed report #COD-069-08 dealing
with the disposition of the Total Hockey Assets as well as the Total Hockey Trademark.
A copy of the report is attached as Schedule "B" for information.
1.2 In the above noted report staff recommended that authority be granted to explore
opportunities for the licencing or release of the Total Hockey Official Mark and report
back to Council with a recommendation, at the appropriate time.
1.3 The purpose of this report is to provide Council with an update on the outcome of
discussions with the firm Total Hockey Worldwide LLC, Lakeville, MN, who have
expressed an interest in obtaining the release of the Official Mark and subsequently
provided an offer; Copy attached as Schedule "B" .
2. ANALYSIS
2.1. As noted in the attached report, Clarington is not in a position to sell the Official Mark.
We can licence it or we can release the mark. Licensing the mark involves a significant
investment in legal fees to develop the necessary legal agreement and there is an on-
going administrative element involved for both parties; i.e. on-going licence fees to be
collected/paid; tracking the life cycle of the agreement and perhaps dealing with
renewals should the licence be issued for a limited time period.
2.2. For the forgoing reasons Total Hockey Worldwide is not interested in licencing the Mark.
Their preference is to acquire the mark outright and incorporate it into their own trade
mark for registration in Canada.
3. FINANCIAL
3.1. There is little financial implication to this process. In essence Total hockey Worldwide
has offered to make a payment of $3,000.00 to the Municipality of Clarington for the
release of the mark and this will in turn cover some of the cost involved in having the
Total Hockey Official Mark Registered.
REPORT NO.: COD-048-09
PAGE3
4. CONCLUSION
4.1. Staff is recommending that the offer be accepted and that the Mayor and Clerk be
authorized to acknowledge and sign the agreement as well as the notices to the
Registrar of Trade-marks; draft copies attached as Schedule "C°
4.2. This report has been reviewed for recommendation by the Purchasing Manager and the
appropriate department and circulated as follows:
Concurrence: Director of Community Services
Attachments:
Attachment 1 -Schedule "A", By-law
Attachment 2 -Schedule "B", Report #COD-069-08 (Addendum) less attachments
Attachment 3 -Schedule "C", Total Hockey Worldwide proposal.
Schedule "A"
THE CORPORATION OF THE MUNICIPALITY Of CLARINGTON
BY-LAW 2009-
Being a By-law to authorize a contract between the Corporation of the
Municipality of Clarington and Total Hockey Worldwide LLC., Lakeville,
MN, to enter into agreement for the release of the Total hockey Official
Mark.
THE CORPORATION OF THE MUNICIPALITY OF CLARINGTON HEREBY ENACTS AS
FOLLOWS:
1. .THAT the Mayor and Clerk are hereby authorized to execute, on behalf of the
Corporation of the Municipality of Clarington and seal with the Corporation Seal, a
contract between, Total Hockey Worldwide LLC, Lakeville, MN, Ontario, and said
Corporation; and
2. THAT the contract attached hereto as Schedule "A" form part of this By-law.
By-law read a first and second time this day. of , 2009.
By-law read a third time and finally passed this day of , 2009.
Jim Abernethy, Mayor
Patti L. Barrie, Municipal Clerk
Clar~gtt~n
Leading ehe Way
Schedule "B"
REPORT
CORPORATE SERVICES DEPARTMENT
Meeting: GENERAL PURPOSE AND ADMINISTRATION COMMITTEE
Date: December 1, 2008
Report #: COD-069-08 (Addendum) File #_ By-law #.
Subject: RFP2008-9, SALE OF TOTAL HOCKEY ASSETS & LICENSING OF
TOTAL HOCKEY TRADE MARK
Recommendations:
It is respectfully recommended that the General Purpose and Administration Committee
recommend to Council the following:
1. THAT Report COD-069-08 (addendum) be received for information;
2. THAT the Request for Proposal, RFP2008-9 process for the sale of Total Hockey Assets
and lease of the Total Hockey Official Mark be cancelled and the proponents be advised
accordingly;
3. THAT the artifacts be stored and staff review the options with respect to the disposition
of the artifacts and report back to Council with a recommendation, at the appropriate
time;
4. THAT the requirements of the Purchasing By-law be waived; and
5. THAT staff be authorized to explore opportunities for the licensing or release of the Total
Hockey Official Mark and report back to Council with a recommendation, at the
appropriate time
Submitted by: e ~riGGL~~ Reviewed by: ~ "" _
mo, H.B.Sc., C.M.O.,
Corporate Services
rranKUn wu,
Chief Administrative Officer
of Community Services
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CORPORATION OF THE MUNICIPALITY OF CLARINGTON
40 TEMPERANCE STREET, BOWMANVILLE, ONTARIO L1C 3A6 T(905)623-3379 F (905)623-4169
REPORT NO.: COD-069-08 (addendum)
P~XC,"E Ze .,g„
BACKGROUND AND COMMENT
1.1 At the General Purpose and Administration Committee meeting of November 17, 2008,
Report COD-069-08 (copy attached as Schedule "A") was referred back to Corporate
Services and Community Services staff and the Chief Administrative Officer for a report
providing a response to the following:
• Why the collection is worth less now than when it was originally purchased;
• Why the Municipality can not sell the Trade Mark;
• A complete update of the collection inventory;
• An apples to apples comparison of the inventory appraisals.
1.2 The recommendation as outlined in the report is to continue with only one amendment to
the reference of the Trade Mark, which is now referred to as the Total Hockey Official
Mark.
2. ANALYSIS
2.1. The following is provided for information and in response to the above noted request for
information:
2.1.1 Why the collection is worth less now than when it was originally
purchased? This question is difficult to answer because we are dealing with
items whose value is driven by the market or demand. We have an appraisal
that estimates the value of the artifacts to be in the area of $51,800 whereas we
have a bid that suggests a value of $16,437.00. The appraiser provided an
estimate of what he feels the artifacts are worth on the market. The bidders in
this instance choose to place a value on the artifacts much lower than that of the
appraisal simply because that is what the bidder felt they were worth to him. This
approach or philosophy is confirmed by comments made during the viewing
which indicated that the bidder was not interested in all of the items, for example
lots 2, 7, 12, 15 and 17 to 21, but would provide a token bid. If he was
successful, that would be fine; if not then this was not a concern. It is possible
that the high bidder was planning to break up the lots and resell some or all of
the items. If this was the intent his approach would be to buy as low as possible
hoping to make a profit on the sale. Please note that during a discussion with the
bidder he did indicate that he felt the overall value was close to the appraisal,
however, this is list price.
REPORT NO.: COD-069-08 (addendum)
PAGE 3e "B~,
It is unfortunate that others who expressed interest in the offering were not in a
position to bid. For example there was a museum that obtained the RFP
document and they expressed interest but later learned that they could not
obtain the funding necessary to make a bid submission.
In addition to the above, it is possible that the down turn in the economy may
have influenced the decision of some not to bid.
Although it is not possible to not respond directly to the Committee's request, the
above explanation offers suggestions as to what may have influenced the
response.
2.1.2. Why the Municipality can not sell the Trade Mark? When the municipality
registered the Total Hockey mark it was registered under the legislation covering
intellectual property. As such, when a public body registers a mark it is
designated an Official Mark as apposed to a trade mark that we are familiar with
and registered by the private sector. When a public authority registers an Official
Mark it cannot be sold, however it can be offered for use by another party and the
Municipality may charge a fee but the municipality retains ownership. The other
option is to withdraw the official mark so that a new applicant can apply to Trade
Mark the name Total Hockey. Once again a fee can be applied to this
withdrawal. A copy of the letter provided by the firm of Thomson Law Firm,
Barrister, Solicitor and Trade Mark Agent that speaks to this issue is attached as
Schedule "B".
2.1.3 A complete inventory of the Total Hockey assets (Schedule "C") has been
provided for Council's review. The inventory is separated into 4 sections:
• Appendix 1 -Transferred Assets from Brian McFarlane
• Appendix 2 -Loaned Assets from Brian McFarlane
• Appendix 3 -Items Donated (independent of Brian McFarlane)
• Appendix 4 -Items Purchased (independent of Brian McFarlane)
REPORT NO.: COD-069-OS (addendum)
Schedule "B"
PAGE4
2.1.4 A comparison of the 1998 & 2008 appraisals has been completed and is
attached as Schedule "D". While it is not possible to make a direct comparison on each
item, wherever possible staff have made those comparisons in order identify the major
differences in value.
2.2. In addition to the information requested and provided above, attached to this report is
the following additional documentation:
• Schedule "E" -Brian McFarlane Museum Appraisal, December 8, 1998
• Schedule "F" -Total Hockey Collection Appraisal, June 5, 2008
• Schedule "G" -Agreement of Purchase and Sale, October 29, 2003
• Schedule "H" -Brian McFarlane Hockey Museum, List of Inventory, July 2003
3. CONCLUSION
3.1. The foregoing report responds to the areas of concern raised at the GP&A Meeting of
November 17"'. The possible reasons for the disparity in the appraisal versus the actual
bids have been provided in addition to the "apples to apples comparison" for the
inventory appraisals. It is respectfully recommended that report be received for
information and the recommendations as proposed in Report COD-069-08 as amended
(Trade Mark vs Official Mark) be approved.
3.2. Subsequent to the closing of the RFP, there have been two (2) contacts expressing an
interest in the artifacts. At the appropriated time staff will report back to Council should
any future expression or interest dictate either a re-issue of the RFP or alternative
options for disposal of the artifacts, that may be in the best interest of the Municipality.
REPORT NO.: COD-069-08 (addendum)
Attachments:
Schedule "A" -Report COD-069-OS
Schedule "B" -Letter from the Thomson Law Firm
Schedule "C" -Total Hockey Inventory
Schedule "D' - 1998/2008 Appraisal Comparison
Schedule "E" -Brian McFarlane Hockey Museum Appraisal, December 8, 1998
Schedule "F" -Total Hockey Collection Appraisal, June 5, 2008
Schedule "G" -Agreement of Purchase and Sale, October 29, 2003
Schedule "H" -Brian McFarlane Hockey Museum, List of Inventory, July 2003
PAGE 6e ~~8,~
TOTAL
HOCKEY
TRAINING SYSTEMS
June S, 2009
PRIVATE AN'D CONFIDENTIAL
Sent via email
The Corporation of the Municipality of Clarington
40 Temperance Street
Bowmanville, ON L1C 3A6
Attention:. Jerry Barber
Dear Sirs/Mesdames:
Re: Section 9(1)(n)(iii) Official Marks Recorded in the name of The Corporation of
Municipality of Clarington:
1. TOTAL HOCKEY, File No. 917,597
2. TOTAL HOCKEY & Design, File No. 917,596
Schedule "C"
We write further to our discussions regarding your official. mazks noted above. You have
advised that you have abandoned use of these official marks and have no objection to our use
and registration of our own trade-mark POWEREDBY TOTAL HOCKEY, in Canada.
Accordingly, in consideration of our payment to you of $ 3,000, you have agreed to record your
withdrawal of the above noted official marks with the Canadian Intellectual Property Office.
We enclose two forms of letters addressed to the Registrar of Trade-marks for use for this
purpose. Please transfer the forms to your official letterhead and have them signed by an
officer of your organization. Please then return the signed letters to us and we will arrange to
have our Canadian attorneys fire the withdrawal letters with the Registrar of Trade-marks.
Upon public notice being given of the withdrawal of your official marks, we will provide you
with the agreed payment of $ 3,000.
We ask that you please sign the enclosed acknowledgement copy of this letter, confirming your
consent to our use and registration in Canada of our mark POWERED BY TOTAL HOCKEY
and the other terms of our agreement as set out in this letter, and return it to us together with the
two withdrawal letters.
Schedule "C"
Page 2
We trust you will find the foregoing to be in order, but should you have any questions please do
not hesitate to contact us.
Yours truly,
TOTAL HOCKEY WORLDWIDE Li.c
Per:
~°---
er n
CEO
Enclosures:
1. Acknowledgement copy
2. Withdrawal letters (2)
Acknowledged and agreed this day of
,2009
THE CORPORATION OF THE MUNICIPALITY
OF CLARINGTON
Per:
Name:
Title:
~,iu~nui
Schedule "C"
(TO BE PRINTED ON THE LETTERHEAD OF THE CORPORATION OF THE
MUNICIPALITY OF CLARINGTON)
Registrar of Trade-marks
Canadian Intellectual Property Office
Place du Portage I
50 Victoria Street, Room C-114
Gatineau QC K1A OC9
Dear Sirs/Mesdames:
Re: Section 9 Official Mark Withdrawal Notice
Official Mark: TOTAL HOCKEY
File No.: 917,597
Owner: The Corporation of the Municipality of Clarington
We hereby request withdrawal of the above noted official mark, published under sub-paragraph
9(1)(n)(iii) of the Trade-marks Act in the Trade-marks Journal of July 12, 2006.
Yours truly,
THE CORPORATION OF THE
MUNICIPALITY OF CLARINGTON
Per:
3515043.1
Schedule "C"
(TO BE PRINTED ON THE LETTERHEAD OF THE CORPORATION OF THE
MUNICIPALITY OF CLARINGTON)
Registrar of Trade-marks
Canadian Intellectual Property Office
Place du Portage I
50 Victoria Street, Room C-114
Gatineau QC K1A OC9
Dear Sirs/Mesdames:
Re: Section 9 Official Mark Withdrawal Notice
We hereby request withdrawal of the above noted official mark, published under sub-paragraph
9(1)(n)(iii) of the Trade-marks Act in the Trade-marks Journal of July 12, 2006.
Yours truly,
THE CORPORATION OF THE
MUNICIPALITY OF CLARINGTON
Per:
3527935.1