In this edition: A review of recent IP litigation in Canada and abroad, updates on Quebec’s much-discussed Bill 96, Cassels lawyers recognized by Managing Intellectual Property and Best Lawyers, and more…
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Hot Off the Press
Federal Court “Pipes” Up in Copyright Case Over Pipeline Drawing >
In the recent decision of ITP SA v. CNOOC Petroleum North America ULC, the Federal Court dismissed a claim for copyright infringement involving a promotional image of pipeline technology, between parties to a contract for services relating to the construction of a pipeline. The decision comments on issues of particular importance to litigants in the industrial and construction industries, such as the evidence required to prove copyright in project deliverables and the potential right to reuse and adapt deliverables for ongoing repair and maintenance purposes.
This article provides highlights from the United States Copyright Office’s recent report titled Copyright and Artificial Intelligence Part 2: Copyrightability, published as part of the Office’s ongoing study on the intersection of copyright law and artificial intelligence. The report provides some clarity on how the copyrightability of output generated by artificial intelligence systems is currently handled under the law and considers proposed changes.
The Cassels Copyright team has also shared highlights from the Government of Canada’s recently released “What We Heard Report,” which summarizes the comments it received as part of its Consultation on Copyright in the Age of Generative Artificial Intelligence. The report offers important observations on copyright policy issues relating to generative artificial intelligence raised by Canadian stakeholders, including those in the creative and technology industries.
Amendments to Trademarks Act Introduce Changes to Official Marks Procedure >
As part of the amendments to the Trademarks Act that came into force in April 2025, the Registrar of Trademarks can now issue public notices confirming that official mark protection no longer applies to marks whose owners are no longer a public authority or have ceased to exist. This article discusses that new power in more detail, including how interested parties can make a request under the amended provisions for the Registrar to issue a public notice.
The Supreme Court of Canada recently denied leave to appeal from a judgment of the Federal Court of Appeal in the latest chapter of Tommy Wiseau’s unique and lengthy Room Full of Spoons litigation saga. This article briefly revisits the underlying Federal Court of Appeal decision that dismissed Wiseau’s action for circumvention of technological protection measures under the Copyright Act.
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Cassels Wins
Cassels Recognized as One of Canada’s Best Law Firms by The Globe and Mail for 2025 >
Cassels is proud to announce that the firm has been named one of Canada’s best law firms by The Globe and Mail for a fourth consecutive year. Cassels has been recognized as a leader in twelve practice areas, including Intellectual Property and Media, Entertainment & Sport.
Cassels Ranked Among the Best Law Firms in the Country by The Legal500 Canada 2025 >
Cassels is honoured to be ranked among the best law firms in the country in the latest edition of The Legal500 Canada. Two areas that the firm has been noted for are the Intellectual Property and Media, Entertainment & Sport teams. This year, both Casey Chisick and Karen MacDonald have been named as Leading Individuals, and Jessica Zagar has been identified as a Next Generation Partner.
We are proud to note that Casey Chisick and Mark Davis have been included in the 2025 edition of the Lexpert/American Lawyer Guide to the Leading 500 Lawyers in Canada. Produced by Lexpert and American Lawyer Media, this guide comprises an exclusive group of lawyers ranked highest in the annual Lexpert survey in practice areas of importance to an American audience.
Six Cassels Partners Recognized by WTR1000 2025 >
The World Trademark Review (WTR) has ranked six members of the Cassels IP team in its latest ranking of leading Canadian trademark professionals. The partners identified as leading individuals include Mark Davis, Steven Kennedy, Karen MacDonald, Jennifer McKenzie, Andrew Skodyn, and Stephen Selznick. The firm is also proud to note that the IP team was listed among the leaders in Canada for expertise in both Trademarks and Anti-Counterfeiting.
Cassels Lawyers Ranked Among Canada’s Best by Lexpert’s 2025 Directory >
Casey Chisick, Mark Davis, Karen MacDonald, Jennifer McKenzie, and Andrew Skodyn have been acknowledged by Canadian Legal Lexpert as leaders in their respective fields, lawyers prominent in their practice areas and professional organizations, and professionals worthy of significant recognition from their colleagues. The Canadian Legal Lexpert Directory also ranked the Intellectual Property team as a market-leading area at the firm.
Cassels Shortlisted for Multiple Awards at 2025 Managing IP Gala >
Cassels is proud to see that its IP team has once again been shortlisted for the Managing IP Americas Awards. The Managing IP Awards recognize remarkable achievements and developments within the intellectual property field in the last year. The firm has been shortlisted in three categories: Copyright, Trademark Disputes, and IP Transactions. Additionally, both Casey Chisick (for Copyright) and Andrew Skodyn (for Patent Disputes) have been shortlisted for Practitioner of the Year.
Kassandra Shortt Named OBA’s Rising Star for Information Technology/Intellectual Property >
Cassels IP partner Kassandra Shortt has received the Ontario Bar Association’s 2025 Rising Star Award in Information Technology/Intellectual Property. This award recognizes and celebrates exceptional junior members of the OBA’s IT/IP section for their achievements, ongoing service, and contributions to the IT/IP bars.
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Recent Work
The Cassels IP team recent secured important IP litigation victories:
- Andrew Skodyn, Sean Jackson, and Eleanor Wilson successfully represented the Fédération Internationale des Conseils en Propriété Intellectuelle (FICPI), an international organization of patent attorneys, in a motion for leave to intervene at the Supreme Court of Canada (SCC) in Pharmascience Inc. v. Janssen Inc., et al. (SCC Court File No.: 41209), an appeal relating to the patentability of methods of medical treatment. The SCC granted FICPI’s motion, allowing FICPI to file a factum and present oral arguments at the hearing of the appeal. FICPI, as the only international organization intervening on the appeal, will provide an international perspective on the issues in the case and advocate for harmonizing Canada’s approach to patentable subject matter for pharmaceutical products with that of peer jurisdictions. The appeal is expected to be heard in 2025.
- In Seylynn (North Shore) Development Limited Partnership v Denna Homes Group et al, 2025 FC 491, Mark Davis, Jessica Zagar, Carly Valentine, Nicola Ladd, and Raysa Marcondes successfully defended a motion seeking relief from the implied undertaking rule to use Dr. Abo Taheri’s examination for discovery transcripts in another proceeding. The Cassels team represents Dr. Taheri in a trademark dispute. Following examinations for discovery, one of the defendants by counterclaim brought a motion for relief from the implied undertaking rule to use Dr. Taheri’s discovery transcripts from the trademark action in a shareholder oppression proceeding in the British Columbia Supreme Court, arguing that Dr. Taheri’s evidence was inconsistent as between the two proceedings. The Court dismissed the motion, finding that there was insufficient commonality between the issues and parties in the two proceedings and that the moving party failed to explain how he intended to use the transcripts in the shareholder oppression proceeding.
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Recent Publications
Cassels Contributions to Prominent IP Publications
The Cassels IP team has authored the Canada chapter of several intellectual property guides published by Chambers as part of its Global Law and Practice series:
- Jennifer McKenzie and Chandimal Nicholas have authored the Canada chapter of Chambers’ Pharmaceutical Advertising Guide for 2025. The guide provides the latest information on the regulatory framework for pharmaceutical advertising; the scope of advertising and general principles; advertising of medicinal products on the internet and through digital and electronic platforms including social media; inducement and anti-bribery; enforcement; and more.
- Casey Chisick, Steven Kennedy, Karen MacDonald, Jessica Zagar, Dian Howard, and Steven Henderson have authored the Canada chapter of Chambers’ Trademarks & Copyright Guide for 2025. The guide provides the latest information on various topics, including initiating trademark and copyright lawsuits, litigating trademark and copyright claims, authorship, collective works, copyright management systems, domestic law, and international conventions/treaties as they apply to trademarks and copyright, and more.
- Mark Davis, Andrew Skodyn, Sean Jackson, Kassandra Shortt, and Mackenzie Stewart have authored the Canada chapter of Chambers’ Patent Litigation Guide for 2025. This guide provides important updates and information to patent litigators on various topics, including initiating a patent infringement lawsuit, patent infringement, patent revocation/cancellation, patent remedies, appeals, litigation costs, alternative dispute resolution (ADR), and assignment and licensing of IP rights.
In addition, our IP Group has published the following:
- Mark Davis and Claire Stempien wrote an article entitled “Why the Definition of Bad Faith Is Set to Expand in Opposition and Invalidity Proceedings in Canada” that was published by the International Trademark Association on April 23, 2025. This article explores the 2019 amendment to the Canadian Trademarks Act to expressly incorporate the concept of “bad faith” into Section 38(2)(a.1) as a ground of opposition to a trademark application and into Section 18(1)(e) as a ground for invalidating a trademark registration. The article reviews how Canadian courts and the Trademarks Opposition Board have started to interpret and explore the boundaries of bad faith.
- A Cassels Comment by Andrew Skodyn, Kassandra Shortt, and Andrew Boyes has been republished by Wolters Kluwer in IP Litigator. The article, titled “The Patent Act Prevails – The Court of Appeal of Alberta Clarifies the Law on Limitation Periods for Patent Infringement Claims,” looks at the highly anticipated decision in JL Energy Transportation Inc. v. Alliance Pipeline Limited Partnership.
- Two articles by Stephen Selznick were recently published in the International Trademark Association’s Law & Practice bulletin: “Federal Court Clarifies Requirements for Expert Evidence in Trademark Litigation” and “Costs, Confidentiality, and Case Management Included in Trademark Law Amendments.” The full articles can be accessed by members of the International Trademark Association.
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In Case You Missed It
The Federal Court’s Back-to-Back Guidance on the Implied Undertaking Rule >
This article examines the implied undertaking rule through two Federal Court intellectual property decisions: GE Renewable Energy Canada Inc. v. Canmec Industrial Inc. and Seylynn (North Shore) Development Limited Partnership v. Denna Homes Group et al. Both decisions reaffirm the importance of the implied undertaking rule in encouraging fulsome pre-trial disclosure and protecting litigants’ privacy rights, while providing useful examples of how the rule can be applied in proceedings before the Federal Court.
A Round-Up of Developments at the CRTC – Winter 2024-2025 >
On February 20, 2025, the Canadian Radio-television and Telecommunications Commission (CRTC) launched a public consultation seeking industry and consumer comments on the definition of “Canadian Content” (CanCon) within the audio broadcasting sector. The CRTC will also be hosting a public hearing as part of its concurrent public consultation on market dynamics within the broadcasting system. On the news side, the CRTC also introduced the mandatory bargaining framework contemplated by the Online News Act in anticipation of the emergence of digital news intermediaries who choose to carry or stream news content in Canada.
New Amendments to the Trademarks Act and the Trademarks Regulations Coming into Force on April 1, 2025 >
This article explores the amendments made to the Trademarks Act and the Trademark Regulations through Bill C-86, which came into force on April 1, 2025. These amendments expand the powers of the Registrar of Trademarks and give the Trademarks Opposition Board the power to award costs, make confidentiality orders, and case manage proceedings. These amendments demonstrate the Canadian Intellectual Property Office’s efforts to streamline trademark proceedings, reduce or eliminate conduct that causes unnecessary delays or costs, and ensure that parties act in good faith during these proceedings.
The New Due Care Roadmap: How to Avoid Deemed Expiry or Abandonment of Your Patent and Design Rights >
The Federal Court and the Federal Court of Appeal recently released two separate decisions that provide more clarity on the due care standard for reinstating patents and patent applications that were deemed expired due to unpaid fees. This article explores the two decisions, which offer a useful roadmap of how the “due care” standard will be applied and what patent owners need to consider when seeking reinstatement.
Canadian Patent Law in Review 2024: Notable Decisions and Updates >
This “Year in Review” provides an overview of the 2024 Canadian landscape of patent law. The article discusses topics such as the evolving landscape of artificial intelligence, whether conceptual designs constitute infringing use of a patented object, clarity on accounting of profits in patent infringement cases, the jurisdiction of the Patented Medicine Prices Review Board, mining technology patents, and much more.
This article covers the CRTC’s continued efforts to modernize the broadcasting regulatory landscape in Canada following the passage of the Online Streaming Act and recent CRTC stakeholder listening sessions. Specifically, the article discusses the CRTC’s launch of two additional public consultation sessions seeking public feedback on the CRTC’s current definition of “Canadian content” (CanCon) for CRTC certification purposes and the CRTC’s proposal to create more flexible regulatory requirements for radio stations.
Federal Court Publishes Updated Guidance on Complex Proceedings and PM(NOC) Proceedings >
On November 28, 2024, the Federal Court published two updated practice directions: Case and Trial Management Guidelines for Complex Proceedings and Proceedings under the PM(NOC) Regulations, and an updated Timetable Checklist for Proceedings under the PM(NOC) Regulations. This article sets out a summary of the main updates to these practice directions and their impact on intellectual property litigants.
CRTC Approves First Online News Act Exemption Application >
On October 28, 2024, the CRTC released its first decision under the Online News Act Application and Exemption Regulations, approving Google’s application for an exemption from the mandatory bargaining framework established by the Online News Act. This article explores the exemption in more detail and what it may mean for future exemption applicants.
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A Few More Things
On the Horizon
- Andrew Skodyn will present on the topic, “Working with Expert Witnesses,” at a virtual session hosted by The Advocates Society on May 21, 2025.
- The Cassels IP team is once again headed to the International Trademark Association Annual Meeting. Mark Davis, Steven Kennedy, Karen MacDonald, Jennifer McKenzie, Chandimal Nicholas, and Stephen Selznick will be heading to San Diego, California from May 17 to May 21, 2025, where they look forward to connecting with clients and other members of the trademarks bar.
- Chandimal Nicholas and Kassandra Shortt will be heading to the 2025 BIO International Convention hosted by the Biotechnology Innovation Organization in Boston, starting on June 16, 2025.
Where We’ve Been
- On May 8, 2025, brand experts from the Cassels Intellectual Property Group joined with Goodlawyer to share insights, trends, and challenges facing brand owners in 2025 and beyond at the event “Brand Masterclass for GCs: Driving Growth & Maximizing Value,” held at the Cassels office in Toronto. Thank you to everyone who attended!
- Sean Jackson and Dian Howard served as panelists at the 2025 Harold G. Fox IP Moot from February 21-22 in Toronto. Stephen Selznick was on the sponsorship committee, and Cassels was a proud sponsor of the competition. Cassels IP lawyers Chandimal Nicholas, Eric Mayzel, Kassandra Shortt, Eleanor Wilson, Mackenzie Stewart, and Steven Henderson also coached the teams from Osgoode Hall Law School and congratulate the Osgoode respondent team on their semi-finals appearance!
- Jessica Zagar co-chaired the Law Society of Ontario’s 29th “Intellectual Property Law: The Year in Review” event, on January 17, 2025, in Toronto.
- Lindsay Dykstra attended the Canadian Media Producers Association’s (CMPA) annual Prime Time conference in Ottawa in January 2025.
- Casey Chisick, Jessica Zagar, and Eric Mayzel attended the Copyright Society’s Mid-Winter Meeting in New Orleans from January 30 to February 1, 2025. Cassels was pleased to sponsor this conference.
- Kassandra Shortt served as moderator for the Patent Law discussion during the Year in Review in IP Law 2025 series presented by the Intellectual Property Institute of Canada (IPIC). The Patent Law discussion was held on February 27, 2025, and discussed the most recent and pressing intellectual property jurisprudence from the last year.
- Larry Weinberg, Kassandra Shortt, and Steven Kennedy took part in DRI’s 2025 Business and Intellectual Property Litigation Super Conference. Larry Weinberg spoke on “When a Trademark License Becomes an Accidental Franchise” and Steven Kennedy co-chaired the conference, which took place from March 26-28, 2025 in Atlanta, Georgia.
- Jessica Zagar presented “The Fine Print: AI, Catalogues & the Future of Music Rights,” during Juno Week in March as part of a session sponsored by the Society of Composers, Authors and Music Publishers of Canada (SOCAN).
- Dakota Bundy represented Cassels at the University of Toronto’s recent FemSTEM Pitch Competition. This competition gives up-and-coming female healthcare innovators the opportunity to present their ideas to the public and the chance to win in-kind legal services from Cassels, which includes funding in order to scale their projects.
- Mark Davis attended the ABA Intellectual Property Spring Meeting from April 30-May 2, 2025, in Washington, DC.