Tara James

Tara James, Partner, Intellectual Property

Contact Information

  • tel: 416.862.5918
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Areas of Expertise

Bar Admission

Ontario, 1998

Education

  • Queen’s University, LL.B.
  • University of Western Ontario, B.A.

Office

Toronto

Language(s)

English

Biography

Tara practises primarily in the areas of intellectual property and information technology litigation. She has a background in general corporate commercial litigation and commercial intellectual property. She has acted as counsel on cases relating to copyright, trade-marks, domain names, trade secrets and confidential information, software licensing and technology related disputes. Tara has significant experience dealing in matters relating to counterfeit products. Tara also has advises clients on a range of issues relating to intellectual property disputes and has an active trade-mark opposition practice. She speaks and writes frequently on intellectual property issues.

Notable Matters

Reported Decisions

  • Microsoft Corporation – Inter-Plus. Co-counsel for Microsoft in Microsoft Corporation v. 9038-3746 Quebec Inc. et al in its successful claim relating to counterfeit software. This is a leading case on statutory damages under the Copyright Act. Microsoft was awarded the largest statutory damage award to date in Canada of $500,000; it is the first case in Canada where a plaintiff received the maximum statutory damages of $20,000 per work infringed; and, punitive damages of $200,000 were awarded. In addition, Microsoft received an award of lump sum costs on a solicitor and client basis totalling over $1.6 million (Federal Court of Canada; 2007 FC 659; 2006 FC 1509). Osler was named Canadian Copyright firm of the year by Managing Intellectual Property in April, 2008, as a result of this case.
  • Microsoft Corporation – PC Village. Co-counsel for Microsoft in Microsoft Corporation v. PC Village Co. Ltd. et al where Microsoft was granted a judgment totalling $250,000 for copyright and trade-mark infringement in regards to hard disk loaded software, including statutory damages of $150,000 and punitive damages of $100,000. (Federal Court of Canada; 2009 FC 401).
  • Microsoft Corporation – Smart Buy. Co-counsel for Microsoft in Microsoft Corporation v. 1276916 Ontario Ltd. et al where Microsoft was granted a judgment totalling $130,000 for copyright infringement, including statutory damages of $80,000 and punitive damages of $50,000 (Federal Court of Canada; 2009 FC 849)
  • Successfully acted for a Australian toy distributor in its challenge to the jurisdiction of the Ontario courts.
  • Acted in the enforcement of letters rogatory against a leading Canadian pharmaceutical company.

Affiliations

  • Canadian Bar Association, National Intellectual Property Law Section
  • Canadian Bar Association, Counterfeiting and Trade Offences Committee
  • Canadian Anti-Counterfeiting Network
  • Intellectual Property Institution of Canada, Resident Associate Member
  • International Anti-Counterfeiting Coalition
  • Toronto Intellectual Property Group

Industry Recognition

  • Chambers Global: The World’s Leading Lawyers for Business 2009: Intellectual Property

Publications/Events/Education

  • Canada lands on U.S. trade rep’s priority watch list, The Lawyers Weekly, August, 2009.
  • Advocacy Before the Court In Intellectual Property Matters: Appeals Proceedings – Stays and Expedites, CLE program for the Canadian Bar Association, National Intellectual Property Section, April 30, 2009.
  • Canada Gets Failing Grade on IP Rights Enforcement, The Lawyers Weekly, July, 2008.
  • Court Awards Hefty Punitive Damages to Circumvent Hurdles in Proving Loss, The Lawyers Weekly, March, 2008.
  • Recent Developments in Anti-Counterfeiting, Presentation at IPIC Annual Meeting, October, 2007.

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