CITY PURSUES BID TO LICENSE PARKPLUS
Legal battle won’t stop marketing plan
City council and the Calgary Parking Authority are moving forward with plans to licence ParkPlus to other cities, even as they are mired in a legal battle over who owns the parking technology.
The city has an Oct. 15 court date set in a $42-million lawsuit against former Calgary Parking Authority managers Dale Fraser and Al Bazar, who claim they invented and are rightful owners of the ParkPlus system.
The pair have transferred ownership of their claim to ParkPlus to a newly created company, Intelli-Park, led by Toronto lawyer Loudon Owen, who famously won a U.S. Supreme Court patent fight between his upstart software company and Microsoft.
Fraser and Bazar, both let go by the city last year, struck back at the city and authority in a statement of defence filed Nov. 30. They demand the lawsuit be dismissed and that the former officials be named the sole owners on ParkPlus patent applications.
Despite the recent heat engulfing the long-simmering patent dispute, council voted this week to take further steps toward spreading ParkPlus to other customers. From Banff and Edmonton, to Toronto and the Calgary Stampede, there has been interest and inquiries into applying the made-in-Calgary system that combines cellphone payment and photo enforcement.
Council asked for a progress report by March on the authority’s exploration of marketing opportunities of the system long thought to be a solid money-maker for the city.
“We have an obligation to maximize the potential of the ParkPlus system. At the same time, we need to be cognizant there are risks associated with the intellectual property,” said Ald. Gael MacLeod, who sat on the parking agency’s board when Fraser and Bazar were terminated.
Should the city and its parking authority lose ownership of the ParkPlus technology in next fall’s trial, it could not only lose any royalties it gets from other licensees, but may also have to pay royalties to Fraser and Bazar. But there are risks of not pursuing other takers now, or of waiting in an increasingly competitive field for high-tech parking systems, MacLeod said.
If the city delays, “then nobody gets any value out of it. Because somebody will leapfrog (the technology) and it will be redundant.”
In court documents, Bazar and Fraser — former enforcement manager and general manager, respectively — assert they invented the ParkPlus system through their own initiative, and weren’t obligated in their jobs to create parking technologies for their employer. The city and parking authority disagree, stating that council and the parking authority’s board directed the development of ParkPlus, and that it was created by a team of Calgary Parking Authority staff and contractors.
Fraser and Bazar had put their names on international patent applications. While still employed they rebuffed offers of $50,000 each to renounce their ownership claims to ParkPlus patents, documents filed in court reveal.
Singapore granted a patent to the ParkPlus system last month, the first country to do so. The U.S. Patent and Trademark Office gave an initial rejection to the patent application earlier this year because it was too similar to the widely used Netherlands-based Parkmobile system, but Calgary Parking Authority is still actively pushing for approval.
Fraser and Bazar had assigned their own lawyer to provide response to the U.S. patent office this fall, triggering the city’s lawsuit and its successful bid for an injunction against such “interference.”
Dickson Wood, chairman of the parking authority, said any future licensee shouldn’t be affected by any outcome of the dispute.
“If the existing litigation over ownership of ParkPlus intellectual property adversely impacts our current marketing initiative, we could apply for appropriate directions from the court and would anticipate the defendants’ co-operation in facili- tating the licensing of ParkPlus to third parties for their use,” he said Tuesday.
Owen declined to comment in an e-mail Tuesday.
The October trial date means the trial will likely be ongoing in the home stretch of the civic election campaign. Calgarians vote for their next council on Oct. 21.