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Cassels on IP: May 2024


In this edition: Cassels lawyers attending INTA 2024 and other news from our team, a review of recent Federal Court of Appeal decisions, updates on the Online News Act and the Online Harms Act, and more…


Hot off the Press

Franchise Trademarks 101 – Part 1: Does A Franchisee’s Trademark Use Accrue to The Franchisor?

This article examines whether a franchisee’s use of the franchisor’s trademark accrues “use” of the mark to the franchisor. Keep an eye out for part two, coming soon!

Writers Guild of Canada Authorizes Strike Action Over Outstanding Issues

On April 25, 2025, the Writers Guild of Canada officially voted in favour of a strike authorization after a record voter turnout, with 96.5% of voters in favour of authorizing a strike. Key issues in negotiations include compensation and minimum participation and artificial intelligence. An authorization to strike is not the same as a strike itself, but a strike is possible as the Writers Guild of Canada awaits the Canadian Media Producers Association’s counterproposal.

Federal Court Considers Canadian Copyright Ownership in Works Created Under a Foreign Employment Agreement

A recent Federal Court decision in GE Renewable Energy Canada Inc. v. Canmec Industrial Inc. (2024 FC 322), has confirmed that copyright protection in Canada is governed by the Canadian Copyright Act, even where the work is created outside of Canada, as long as it is part of a Canadian employment agreement. With many jobs continuing to outsource and recruit foreign employees, the implications of this decision on hiring decisions and contract drafting will be an important consideration moving forward.


Cassels Wins

Cassels Authors Canada Chapter of Chambers’ 2024 Pharmaceutical Advertising Guide

Jennifer McKenzie and Chandimal Nicholas, partners in the Cassels Intellectual Property Group, have authored the Canada chapter of Chambers’ Pharmaceutical Advertising guide for 2024.

Cassels Ranked Among World’s Best in Chambers Global 2024

Cassels has once again been ranked in Chambers Global: The World’s Leading Lawyers for Business, a leading international guide to lawyers and law firms with global expertise throughout the world. Although we congratulate the multitude of lawyers across multiple practice areas at Cassels, with respect to our Intellectual Property team, we would like to extend our congratulations to Casey Chisick, Mark Davis, and Andrew Skodyn.

Cassels Lawyers Ranked Among Canada’s Best by Lexpert’s 2024 Directory

Over 75 Cassels lawyers were recognized as leaders in their field in the 2024 edition of the Canadian Legal Lexpert Directory. The lawyers span across multiple practice areas. In intellectual property, several members of our team, including Casey Chisick, Mark Davis, Leonard Glickman, Karen MacDonald, Jennifer McKenzie, and Andrew Skodyn were recognized as leaders.

Six Cassels Partners Recognized by WTR1000 2024

Cassels is proud to announce that six members of the firm’s Intellectual Property Group have been recognized by the World Trademark Review (WTR) in its latest ranking of leading Canadian trademark professionals. Partners Mark Davis, Steven Kennedy, Karen MacDonald, Jennifer McKenzie, Andrew Skodyn, and Stephen Selznick were all identified as leading individuals. We are also proud to note that our team was listed among the leaders in Canada for both Trademarks and Anti-Counterfeiting.

Casey Chisick Appointed to Inaugural Advisory Board of York University Centre for Artificial Intelligence & Society

Casey Chisick was named as an inaugural member of the Advisory Board for York University’s new Centre for Artificial Intelligence and Society (CAIS). More information about this newly established centre can be found in their task force report.

Cassels Wins Multiple Categories at the 2024 ManagingIP Awards

Cassels is very proud to announce that the firm has been recognized as Canada’s Copyright Firm of the Year for a second year in a row, and Karen MacDonald, a partner in the Cassels Intellectual Property Group, was named Canada’s Trademark Disputes Practitioner of the Year, at the ManagingIP Awards on April 25, 2024, where several members of our team were nominated for awards. ManagingIP is one of the world’s leading trade publications for intellectual property lawyers.

Lina El Mugammar Appointed to Board of Directors of Gallery TPW

Lina El Mugammar has been appointed to the Board of Directors of Gallery TPW. Gallery TPW is a leading artist-run centre dedicated to exhibiting underrepresented artistic and curatorial practices that push the boundaries of lens-based work.


In Case You Missed It

A “Game-Changing” Update: Ontario’s Amended Restrictions on Use of Athletes & Influencers in iGaming Advertising are Now in Effect

With recent amendments to Ontario’s advertising laws for iGaming, the use of athletes and influencers in advertising campaigns has become prohibited. These amendments were introduced as part of Ontario’s campaign to avoid marketing to high-risk and underage persons.

CRTC Launches Public Consultation Process for the Online News Act Regulatory Framework

The Canadian Radio-television and Telecommunications Commission (CRTC) has recently announced a call for comments with regard to the framework under which the CRTC intends to implement the Online News Act. This consultation period is targeted towards comments regarding the bargaining process, undue preference, discrimination, and disadvantage, and data collection.

Canadian Government Introduces Online Harms Act to Combat Harmful Social Media Content

Earlier this year, the Canadian government introduced Bill C-63, or An Act to enact the Online Harms Act, to amend the Criminal Code, the Canadian Human Rights Act and an Act respecting the mandatory reporting of Internet child pornography by persons who provide an Internet service and to make consequential and related amendments to other Acts (the Online Harms Act). This Act is intended to protect Canadians, particularly children, from exposure to inappropriate content on social media. In this article, we highlight the objectives, duties, and powers outlined in the Online Harms Act.


A Few More Things

On The Horizon

Members of the Cassels Intellectual Property team will be in attendance at INTA 2024 – hosted this year in Atlanta, Georgia, USA. Our attendees will include Steven Kennedy (Brands and Innovation Committee), Karen MacDonald (Internet Committee), Casey Chisick (Law Firm Committee), Stephen Selznick (INTA Bulletins Committee and the Panel of Trademark Mediators), Sebastian Beck-Watt (Copyright Committee), Chandimal Nicholas (Emerging Issues Committee), and Mark Davis (Enforcement Committee).

Members of the Cassels Intellectual Property Group will also be in attendance at the BIO International Convention. Our attendees will include Chandimal Nicholas, Kassandra Shortt, and Dakota Bundy. The Convention will run from June 3 to 6, 2024, in San Diego, California.

Mark Davis, is Co-Director of the IPIC/McGill School of Continuing Studies 9-week course on “IP Strategy for Business.” The course is designed to provide in-house counsel, business leaders, entrepreneurs, corporate executives, and IP portfolio managers with the tools to understand and develop winning IP strategies.

Claire Stempien will present “Intellectual Property and the Top Five IP Mistakes Entrepreneurs Unwittingly Make” at The Forum’s upcoming E-Series conference being held in May. The Forum is a Canadian-based charity that energizes, educates, mentors, and connects self-identified women entrepreneurs to be wildly successful, promoting strengthened economies and thriving communities.

At this year’s IPIC/McGill Summer IP Program, Jennifer McKenzie will present “Fundamentals of the Madrid System for Canadian Practitioners” during the Understanding Trademarks Course running July 8-12, 2024, and Casey Chisick will present “Technological Neutrality in Copyright” as part of the Copyright Master Class being held July 22-24, 2024..

Where We’ve Been

Cassels hosted the 2024 Wine Law Conference of the International Wine Law Association (AIDV) on April 24, 2024. The AIDV’s annual conference brings together experts from across industries to discuss the current legal issues facing the wine industry in Canada, amongst other topics of common interest. Jennifer McKenzie is on the AIDV Conference Committee.

Members of Cassels Intellectual Property group also organized the brown bag lunch webinar held on March 27, 2024, entitled “Unpacking the Process: 4 Ways to Challenge False Advertising.” The webinar was jointly sponsored by the Marketing Practices and Corporate Counsel and Compliance Committees of the Competition Law and Foreign Investment Review Section of the Canadian Bar Association. Jennifer McKenzie is the Chair of the Marketing Practices Committee and Eric Buist, a member of that same committee, moderated the webinar.

Mark Davis, Steven Kennedy, and Kassandra Shortt attended the DRI Superconference in March 2024. Steven Kennedy is program vice-chair for the intellectual property litigation section of DRI. Mark Davis spoke on an international panel addressing Bad Faith Trademark Filings.

Casey Chisick, Stephen Henderson, and Lindsay Dykstra attended the 2024 JUNO Awards held in Halifax, Nova Scotia from March 21 to March 24, 2024.

Stephen Selznick has been quoted in the article “Toronto Singer Reclaims Remix That Went Viral,” published by CBC News on March 23, 2024.

Lina El Mugammar spoke at the “Artists Legal Drop-In: Navigating Public Art” held by Artists’ Legal Advice Services (ALAS) and CARFAC Ontario on March 20, 2024.

Lindsay Dykstra and Lina El Mugammar represented Cassels at the second annual Women in Music Canada Honours held at The Phoenix Concert Theatre on March 5, 2024.

Gerrit Yau was a panelist at Sports Industry Night: Tech and AI in Sports event hosted by University of Toronto Sports & Business Association (UTSB), which took place in Toronto on February 15, 2024.

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 and Mark Davis.

The editors gratefully acknowledge the contributions of Tushar Sharma and Andrew Stavros in the preparation of this edition.