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Cassels on IP: May 2023


In this edition: Cassels welcomes Karen MacDonald, our IP team wins multiple categories at the 2023 Managing IP awards, Manhattan jury finds that Ed Sheeran did not copy Marvin Gaye classic, and the latest from our team…


Team News

Cassels IP Group Welcomes Karen MacDonald to the Team >

Cassels is thrilled to welcome Karen MacDonald as a partner in its national Intellectual Property Group.

Based in Vancouver, Karen is one of Western Canada’s top IP lawyers, well-known for her work in trademark, patent, and copyright litigation, trademark prosecution, and anti-counterfeiting. Among other things, she has been heavily involved with developing and implementing anti-counterfeiting enforcement programs in Canada for major brand owners worldwide, in fields such as luxury goods and software development, and has represented clients in precedent-setting cases at most levels of court in Canada.

Her work has garnered recognition by Chambers, Best Lawyers, Lexpert, Legal 500, Managing IP, and WTR1000, in which she enjoys individual rankings in three separate categories.

Jonas Tylewski Joins as Summer Intern

We are also happy to welcome Jonas Tylewski, a trainee lawyer from Berlin, Germany, as a summer intern in the Cassels IP group. His time with us is part of his two-year legal traineeship (Rechtsreferendariat), which is mandatory in Germany to be admitted to the bar or to enter another regulated legal profession. During his first year, Jonas clerked at the Regional Court of Berlin (chamber for IP matters), served as a criminal prosecutor with the State Attorney of Berlin, and worked in the legal department of the Federal Foreign Office. He has also worked with our good friends at NORDEMANN, a top German IP boutique, and served as a lecturer at Humboldt-University of Berlin. Jonas studied law at Humboldt-University of Berlin (First State Examination, 2018) and Université Paris II Panthéon-Assas (Licence en Droit, 2015 & Maîtrise en Droit, 2016). In his free time, he is a soccer referee, a sports judge, and a passionate sailor.


Cassels Wins

Cassels Wins Multiple Categories at the 2023 Managing IP Awards >

Managing Intellectual Property, one of the world’s leading trade publications for intellectual property lawyers, has announced the 2023 winners of the prestigious Managing IP Awards. Cassels is proud to have been honoured as the winner in three categories: Copyright Firm of the Year, Copyright Practitioner of the Year (Casey Chisick), and Impact Case of the Year.

Alison Hayman Named Among the Top 250 Women in IP for 2023 by Managing IP >

For the seventh year in a row, Alison Hayman has been honoured by Managing Intellectual Property as among the “Top 250 Women in IP” in the world. She is one of a select group of just 17 Canadians recognized on a listing dominated by practitioners from the United States and Europe.

Cassels Lawyers Ranked Among Canada’s Best by Lexpert’s 2023 Directory >

75+ Cassels lawyers, including Intellectual Property team members Casey Chisick, Mark Davis, Len Glickman, Steven Kennedy, Eric Mayzel, and Jennifer McKenzie, were recognized as leaders in their field in the 2023 edition of the Canadian Legal Lexpert Directory. Cassels was also ranked among the nation’s market-leading firms in the categories of “Intellectual Property” and “Litigation – Intellectual Property,” among others.


Hot Off the Press

Manhattan Jury Finds That Ed Sheeran Did Not Copy Marvin Gaye’s ‘Let’s Get It On’ >

Last week, Ed Sheeran won his years-long copyright dispute with the heirs of Ed Townsend, who co-wrote the 1973 hit, Let’s Get It On. A jury determined that Sheeran’s Grammy award-winning song, Thinking Out Loud, did not infringe Marvin Gaye’s soul classic.


In Case You Missed It

FCA Confirms Test for Inducing Patent Infringement >

In Teva Canada Limited v. Janssen Inc., the Federal Court of Appeal confirmed that its previous decision in Corlac Inc. v. Weatherford Canada Inc., did not change the test for patent infringement by inducement. To establish induced infringement, the patentee must prove that the alleged inducer influenced the direct infringer to the point that, without such encouragement, infringement would not have occurred.

A New Era of Broadcast Regulation Begins: The Online Streaming Act Receives Royal Assent >

On April 27, 2023, Bill C-11, also known as the Online Streaming Act, received royal assent, becoming law more than two years after the precursor Bill C-10 was tabled by the former Liberal government and died on the order paper, and after nearly 15 months of extensive parliamentary debate and public controversy. The Online Streaming Act serves as the most expansive refresh of the Canadian Broadcasting Act in over 30 years, responding to rapid technological change by providing, among other things, a framework for the regulation of online broadcasters, including online streaming platforms.

The Competition Bureau Continues to Focus on the Online Marketplace >

On April 17, 2023, the Competition Bureau released Volume 6 of the Deceptive Marketing Practices Digest, which gives insight into issues of concern for the Competition Bureau. Volume 6 focuses on two substantive issues in the online economy: fake scarcity cues and drip pricing.

New Rules of Practice for Copyright Board of Canada Proceedings Are Now in Effect >

On March 1, 2023, the Copyright Board of Canada published the final version of its Rules of Practice and Procedure in the Canada Gazette. The Rules, which are the Copyright Board’s first time adopting formal rules of procedure, are now in effect.

Cassels Academy 2022 (Cassels Webinar) >

On November 30, 2022, Cassels Academy (Virtual Campus) re-opened its doors, offering a wide and varied curriculum. All sessions are available online, including these offerings from our IP team:

  • Patents and Trade Secrets: Identifying, Protecting, and Enforcing Your Competitive Advantage | Kassandra Shortt & Mark Davis
  •  Copyright Essentials for In-House Counsel | Casey Chisick, Eric Mayzel & Jessica Zagar


On The Horizon

  • Cassels is headed to the International Trademark Association (INTA)’s 2023 Annual Meeting Live+, the global IP event of the year! Karen MacDonald, Steven Kennedy, Jennifer McKenzie, and Stephanie Roberts all look forward to connecting in person in Singapore, starting May 16!
  • Stephanie Roberts will be speaking to a group of women-identifying entrepreneurs about intellectual property at The Forum E-Series Spring 2023 on May 30.
  • Chandimal Nicholas and Kassandra Shortt are attending the Biotechnology Innovation Organization (BIO)’s International Convention, from June 5-8 in Boston.
  • Casey Chisick, Eric Mayzel, and Jessica Zagar are attending the Copyright Society 2023 Annual Meeting from June 11-13 in Newport, Rhode Island.
  • Stephen Selznick will be participating in the Stanford Law School, Silicon Valley Arbitration and Mediation Center and the California Lawyers Association, Advanced IP/Tech Mediation and Arbitration conference being convened at the Stanford University Law School in Palo Alto, California, from June 8-9, for experienced counsel to share legal knowledge and current practical expertise in technology and IP alternative dispute resolution.
  • Jessica Zagar and Casey Chisick will be speaking at the Intellectual Property Institute of Canada (IPIC) Copyright Master Class at the McGill School of Continuing Studies in Montreal from July 24-26.


A Few More Things…

  • Eric Mayzel moderated and presented at the Ontario Bar Association Franchise Law Program titled “Hot Topics in Franchise Trademark and Intellectual Property Protection” which took place on April 12.
  • Casey Chisick presented on “Rethinking Technological Neutrality in Canada” at the 30th Annual Fordham University Intellectual Law & Policy Conference on April 14.
  • Steven Kennedy and Kassandra Shortt attended the DRI Business and Intellectual Property Litigation Super Conference from April 26-28 in New Orleans.
  • Mark Davis attended Canadian Bar Association (CBA) IP Day April 26 in Ottawa.
  • Eric Mayzel, Jennifer McKenzie, and Stephanie Roberts attended the 2023 Managing IP Awards in New York on April 27, 2023.
  • Stephen Henderson was Co-Chair, Casey Chisick was Honourary Chair, and Jessica Zagar and Casey Chisick presented at the Entertainment & Media Law Symposium 2023 on May 3.

This publication is a general summary of the law. It does not replace legal advice tailored to your specific circumstances.

Cassels on IP – a round-up of recent items of interest along with new and timely updates – is brought to you by our Intellectual Property Group and is edited by Sebastian Beck-Watt and Kassandra Shortt with Jessica Zagar. The editors gratefully acknowledge the contributions of Steven Adler in the preparation of this edition.