Experience

IP Litigation

• copyright piracy and trademark counterfeiting cases
• Anton Piller Order actions (obtaining, serving, and enforcing)
• Independent Supervising Solicitor in the service of Anton Piller Orders
• Mareva Orders and Norwich Orders
• Domain Name disputes/transfers
• trademark infringement and passing off litigation
• copyright infringement litigation
• in trademark expungement proceedings
• intellectual property rights border enforcement proceedings
• breach of contract litigation
• misappropriation of confidential information litigation
• trade secrets litigation
• copyright infringement litigation relating to photographic works
• fraud and breach of trust
• breach of fiduciary duties
• employment related issues (wrongful dismissal/breach of trust/ breach of fiduciary duty etc.)

Selected IP Litigation Cases

SELECTED CASES (NON-EXHAUSTIVE)

Juul Labs, Inc. et al. v. 2970201 Canada Inc. et al., Federal Court File No. T-867-20 (Counsel for the Plaintiffs). This case involved allegations that the Defendants tortiously interfered in Juul Labs’ economic interest, and directly or indirectly dealt in unauthorized JUUL products in contravention of the Trademarks Act, and in alleged contravention of other applicable legislation in Canada (and abroad), including the Tobacco and Vaping Products Act; the Vaping Products Labelling and Packaging Regulations; and the Consumer Packaging Labelling Act; the Consumer Packaging and Labelling Regulations.

Arafa Enterprises, Inc. et al. v. 11660691 Canada Ltd. et al., Superior Court File No. CV-20-00645756-0000 (Counsel for the Plaintiffs). This dispute arose over the purchase of personal protective equipment, specifically medical masks and thermometers, in the cumulative amount of approximately 10 million USD, which products were never delivered. The action was subject to interlocutory proceedings and ultimately resolved on consent.

Celine, Societe Anonyme v. Tobey 2019 FC 1053, Norris, J. (Counsel for the Plaintiff and three other Plaintiffs in actions that proceeded concurrently). The Defendant, a recidivist counterfeiter, argued that the sale of counterfeit merchandise would not confuse a reasonably informed member of the public. On summary judgment, the court held that in the absence of evidence to prove this point, this defence had no hope of success whatsoever. Summary judgment on liability for trademark infringement, with a reference on damages, was granted to this Plaintiff and to three other plaintiff groups, in three other actions, who had advanced separate claims against the same Defendant, all heard on the same day.

Parfums Christian Dior et al. v. Harinder Singh Grover et al., Court File No. T-1860-17, decision of Prothonotary Aalto, 2018 (Counsel for the Plaintiffs). This is a case that involved the importation of counterfeit goods into Canada. Acting for numerous right holders, I obtained an order, on consent, for partial summary judgment declaring that the goods detained by the Minister of Public Safety and Emergency Preparedness (the “Minister”) contravened section 51.03(1) of the Trademarks Act and section 44.01(1) of the Copyright Act [being the prohibitions against the importation of counterfeit trademark goods or pirated copyrighted works, respectively] together with an order that the Minister and/or Canada Border Services Agency be and is authorized and directed to release and transfer the detained goods the Plaintiffs, who are expressly authorized to destroy them. I requested that the balance of the action be subject to case management, which was ordered. I believe this is the first case of its kind in Canada dealing with the prohibitions under the Trademarks Act and the Copyright Act associated with the import in Canada of counterfeit goods. The balance of the action was subsequently resolved on consent.

Louis Vuitton Malletier S.A. et al v. Zekria Wakilzada et al., 2017 ONSC 2409 (CanLII), Cavanagh, J. (Counsel for Plaintiffs). The Plaintiffs successfully appealed from an Order striking out paragraphs of Louis Vuitton’s Statement of Claim that the Plaintiffs submitted were material facts supporting a novel extension of the theory of vicarious liability to a landlord arising from its tenant’s sale of counterfeit merchandise. The Court agreed with the Plaintiffs’ submission that the necessary elements for a cause of action founded upon vicarious liability are unsettled and may change depending upon the application of this doctrine and the underlying policy consideration to new situations. This case presents a novel opportunity to apply the principles of tort law to a trademark infringement case and is ongoing.

1727363 Ontario Ltd. et al. v. Patrick Skuce et al., Ontario Superior Court File Number, CV-16-550294 (Counsel for the Plaintiffs). This case involved allegations of unlawful conduct by the Defendants, who were involved in a construction project that consisted of the partial restoration of a century farmhouse. The case involved allegations of breach of contract, fraud, self-dealing, negligence, and breach of duty of goods faith, amongst other causes of action. The action was resolved at mediation.

Louis Vuitton Malletier S.A. et al. v. Bhatia et al. (May 13, 2015, Mr. Justice Campbell, unreported) Acted on behalf of the Plaintiffs against a recidivist counterfeiting operation and obtained the largest monetary judgment in a counterfeiting case in Canadian history, in the aggregate of more than three million Canadian dollars.

Guccio Gucci S.p.A. et al. v. Bhatia et al. (March 23, 2015, Mr. Justice Brown, unreported) Acted on behalf of the Plaintiffs against a recidivist counterfeiting operation and obtained a monetary judgment of more than two million Canadian dollars.

Certainteed Canada, Inc. v. Sky Acoutics Inc. et al., Ontario Superior Court File Number, CV-14-511630, unreported (Counsel for the Plaintiff). The case involved allegations that former employees of the Plaintiff established a business to compete with the business of the Plaintiff, using confidential information of and belonging to the Plaintiff, spring boarding the Defendants into a competitive position, in breach of their fiduciary duties and/or their duties of loyalty and fidelity owed to the plaintiff, their confidentiality obligations owed to the plaintiff, and the plaintiff’s code of conduct and conflict of interest rules. The case was resolved at mediation.

Guccio Gucci SpA v. Mazzei (2012), 101 CPR (4th) 219 (FCTD), Zinn, J. (Counsel for Plaintiffs). Following a well-orchestrated undercover investigation, including a clandestine meeting at a Toronto gas station and hidden cameras — disclosing a wholesale counterfeiting operation run from a storage facility, owned by a third party — the Plaintiffs, in a contested summary judgment motion, secured a judgment of trademark infringement and an award of $85,000 in damages, injunctive relief, plus costs.

Harley-Davidson Motor Co. et al. v. Manoukian et al. (2013), 112 CPR (4th) 404 (FCTD), de Montigny, J. (Counsel for the Plaintiffs). The court granted summary judgment in favour of the Plaintiffs for trademark infringement and awarded damages, including punitive damages. The court also issued injunctive relief and ordered the delivery up of infringing merchandise. The Court was satisfied the matter could proceed on a motion for summary judgment notwithstanding conflict in some of the evidence. In determining the damage award, the Court noted that where Defendants provide no records to substantiate the manufacture and sale of counterfeit wares, it is difficult to assess damages. The Court applied a minimum compensatory damage award on a per infringing activity basis.

Moroccanoil Israel Ltd. v. Shoppers Drug Mart Corporation, 2010 FC 901, Pinard, J. (Counsel for Plaintiff). Motion for security for costs was advanced by the Defendants and was denied by Prothonotary Aronovitch. On appeal, this case clarified that there is no prima facie right to security for costs and that such awards are within the discretion of the Court. The Court reaffirmed that while security for costs will generally be required if one of the conditions listed under Rule 416(1) is met, the Court retains discretion to deny a request, which it did in this case. The Plaintiff, for whom we acted, being a company incorporated pursuant to the laws of Israel, and ordinarily resident outside Canada, established that security for costs should not issue against it because, in part, it is the owner, in Canada, of a registered trademark; it has a distribution network in Canada, and as a result, it is owed significant monthly receivables with a Canadian company. It also has a 50 percent undivided and unencumbered title and interest in lands and premises situated in Canada. I successfully argued the motion in the first instance, and my colleague successfully responded to the appeal.

Calvin Klein Trademark Trust et al. v. Beauchamp, 2010 FC 1107 (CanLII), Zinn, J. (Counsel for the Plaintiffs). Acted for the Plaintiff in securing default judgment. The Defendants advanced a motion seeking to (1) set aside the noting in default and Default Judgments issued by Justice Hughes of this Court on March 8, 2010; (2) vacate all writs of seizure and sale issued pursuant to the Default Judgment; and (3) release to the Defendant all assets seized pursuant to such writs. The motion was denied. The Court clarified that a simple denial of the allegations in a claim, without offering some evidence to show that the defence has some merit, such as an affidavit from the supplier attesting that the goods were manufactured under licence, does not meet even the low threshold for showing that a prima facie defence is available. I prepared the written materials filed in respect of the default judgment and filed in response to the motion to set aside the default judgment, which motion was denied.

Tejani v. Nintendo of America Inc. 2001 FCA, (reasons for judgment provided by Malone, J.A., with Noel, J.A., and Rothstein J.A. concurring) Acted as counsel for the respondents on this appeal, and as counsel for the Plaintiffs at the review motion. The Federal Court of Appeal decision affirmed the trial court decision that the Charter of Rights and Freedoms is not applicable to the issuance and execution of Anton Piller orders and sustained the review of the execution of the Anton Piller order.

ANTON PILLER CASES

Counsel to obtain and/or serve and/or review the execution of numerous John Doe rolling Anton Piller orders, including, but not limited to the following:

• Bauer Hockey Corp. v. Jane Doe et al., T-1013-14
• Calvin Klein Trademark Trust et al. v. Jane Doe et al., T-2066-09 (and in prior years)
• Disney Enterprises, Inc. et al. v. Jane Doe et al., T-1968-09 (and in prior years)
• Guccio Gucci S.P.A., et al. v. Jane Doe et al., T-410-09 (and in prior years)
• Harley Davidson Motor Co. Group LLC et al. v. Jane Doe et al., T-2015-09 (and in years prior)
• Louis Vuitton Malletier S.A. et al. v. Jane Doe et al., T-1250-05 (and in prior years)
• Molson Canada 2005 et al. v. Jane Doe et al., T-1463-07 (and in prior years)
• Moroccanoil Israel Ltd. et al. v. Jane Doe et al., T-1701-14 (and in prior years)
• New Era Cap Co. Inc. et al. v. Jane Doe et al., T-1155-11 (and in prior years)
• Nike Canada Corp. et al. v. Jane Doe et al., T-1503-09 (and in prior years)
• Ragdoll Productions (UK) Limited et al. v. Jane Doe et al., T-552-99
• Vancouver Organizing Committee for the 2010 Olympic and Paralympic Winter Games v. Jane Doe et al., T-51-10.

Represented clients in various industries including:

• apparel
• accessories
• beauty products
• cosmetics
• consumer goods
• e-commerce
• eyewear
• footwear
• foods
• fintech
• handbags
• luxury goods
• manufacturing
• perfume
• sports
• sporting equipment
• sports apparel
• toys and games
• vaping

Commercial Agreements

• influencer agreements
• Distribution agreements
• NDA Non-disclosure Agreements
• Employment Agreements
• Confidentiality Agreements
• License agreements
• Advising on enforceability of variety of agreements
• Advising on restrictive covenants, limitations of liability, and indemnification provisions

IP Agreements

• Drafting copyright assignments, licences and waivers of moral rights
• Drafting assignments and licences of intellectual property rights
• Drafting confidentiality and non-disclosure agreements
• Advising on ownership of IP where IP has been created by employees or contractors with and without written agreements
• Advising on existing contracts relating to IP
• Identifying the forms of IP protection that are applicable to a new product or service
• Investigating and identifying a company’s IP assets and opportunities to better protect the company’s IP assets and increase their value
• conducing due diligence of IP assets
• Investigating and evaluating the IP assets owned by a competitor

Negotiation and Mediation

• Numerous out of court settlements
• Negotiating directly or via mediation of resolution of complex litigation
• Negotiation directly or via mediation of commercial disputes without recourse to litigation