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John Cotter | Intellectual Property Litigation Lawyer

John Cotter

Partner, Intellectual Property

Chair: Intellectual Property

Contact Information

jcotter@osler.com

tel: 416.862.5662

Office

Toronto

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Areas of Expertise
Bar Admission

Ontario, 1988

Education
  • University of Windsor, LL.B.
  • University of Western Ontario, B.A.
Language(s)
English

John is a litigator with a focus on intellectual property and information technology litigation, and has a commercial litigation background. He has extensive experience in disputes relating to copyright (including infringement claims, ownership disputes and Copyright Board tariff proceedings), trademarks (including infringement claims, expungement proceedings and Trademark Opposition Board proceedings), domain names, trade secrets/confidential information, counterfeit products, misleading advertising, software licensing and IT projects, including disputes arising out of software development and software integration projects. John’s commercial litigation includes contractual disputes and tort claims. John also speaks and writes frequently on intellectual property and litigation matters.

    Microsoft Corporation. John was counsel for Microsoft in Microsoft Corporation v. 9038-3746 Quebec Inc. in its successful claim relating to counterfeit software. This is a leading case on statutory damages under the Copyright Act where Microsoft received 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).

    Horn Abbot Ltd. John represented Horn Abbot Ltd., the company formed by the creators of the board game Trivial Pursuit, in its defence in Wall v. Horn Abbot Ltd. This 13 year legal battle relating to the creation of the Trivial Pursuit ended with the case being dismissed after a lengthy trial that spanned 4 months and which was subsequently re-opened to hear additional evidence. In addition to the success at trial, Horn Abbot Ltd. and the other defendants were successful on the issue of costs and were awarded lump sum costs of $1 million. They were also successful on various interlocutory issues throughout the action, including before the Nova Scotia Court of Appeal in having the jury struck prior to trial (Supreme Court of Nova Scotia; 2008 NSSC 4; 2007 NSSC 197; 2006 NSCA 60; 2006 NSCA 36).

Chambers

  • Chambers Canada: Canada’s Leading Lawyers for Business, 2017-2019: Intellectual Property: Litigation
  • Chambers Global: The World’s Leading Business Lawyers, 2012-2018: Intellectual Property: Litigation
    • "...knowledgeable, organised, thorough and responsive."
    • "...[John] brings a great deal of expertise in the copyright area…"

Lexpert

  • The Canadian Legal Lexpert Directory, 2018-2019: Litigation - Intellectual Property
  • The Canadian Legal Lexpert Directory, 2017-2019: Intellectual Property

Best Lawyers

  • The Best Lawyers in Canada, 2014-2019: Intellectual Property Law

Managing Intellectual Property

  • Managing Intellectual Property Magazine, 2016-2018: Trade Mark Star

Expert Guides

  • Expert Guides: The Legal Media Group Guides to the World’s Leading Lawyers, 2018: Trade Marks

Word Trademark Review

  • WTR 1000 – The World’s Leading Trademark Professionals, 2017-2019: Silver Band ranked lawyer in Canada for Anti-counterfeiting; Enforcement & Litigation. John has been described as:
    • “Among the best in the business when it comes to anti-counterfeiting.”
    • "...a firm but polite litigator. He pushes them appropriately and effectively. Plus, he’s easy to get along with."

Acritas Stars

  • Acritas Stars, 2018-2019: Star Lawyer

Managing IP

  • Managing IP, 2019, (Canada): IP Star, Copyright star, Transactions star

Legal 500

  • The Legal 500, 2019: Recommended Lawyer, Intellectual Property

  • Section Executive, National Intellectual Property Law Section, Canadian Bar Association (Member-at-Large 2017 - )
  • Professional Development Committee (formerly CLE Committee), National Intellectual Property Law Section, Canadian Bar Association (Chair 2011 to 2016; member 2004 to present)
  • Anti-Counterfeiting Committee, Intellectual Property Institute of Canada (Co-Chair 2013 to 2014; Chair 2010 to 2013; Vice-chair 2009 to 2010; member 2005 to present)
  • Litigation Committee, Intellectual Property Institute of Canada (2000 to present)
  • Forums and Seminars Committee, Intellectual Property Institute of Canada (2004 to present)
  • Legislation Committee, Canadian Anti-Counterfeiting Network (Chair 2009 to 2012)
  • Counterfeiting and Trade Offences Committee, National Intellectual Property Law Section, Canadian Bar Association (member 2003 to 2010)
  • Outreach Committee, Canadian Anti-Counterfeiting Network (chair 2004 to 2009; also served as the CACN representative with Global Anti-Counterfeiting Group)
  • A bar representative on the Federal Court IP Users’ Committee for 2 year term (2008 to 2010)
  • Domain Name Committee, Intellectual Property Institute of Canada (2002 to 2005)
  • Finance Committee, International Trademark Association (1998 to 2000)

Publications

  • “Copyright and Industrial Design Developments – 2017, paper for Law Society of Upper Canada, 22nd Annual Intellectual Property Law: The Year in Review, January, 2018 (co-authors S.  Miller, H. W. Choi, J. Chong, E. Creber, B. Fong, Y. Konarski, J. Maddox, D. Meltzer, L. Paulin, and R. Stiles).
  • Chapter on “Copyright Infringement” in Intellectual Property Litigation: Forms and Precedents, Editor Paul Lomic (Toronto: LexisNexis, 2016 (co-author J. Chong).
  • Chapter on “Copyright – What Is It?” in Canadian Copyright / Industrial Designs Benchbook, Editor Donald M. Cameron, (Toronto: Carswell, 2015) (co-authors G. Bloom and M. Brandsma).
  • Chapter (update) on “Infringement and Depreciation of Goodwill” in Canadian Trade-mark Law Benchbook, 2nd edition, Editor Donald M. Cameron, (Toronto: Carswell, 2014) (co-author A. Monic).
  • “Copyright and Industrial Design Developments – 2014”, paper for Law Society of Upper Canada, 19th Annual Intellectual Property The Year in Review, January, 2015 (co-authors B. Sookman, G. Bloom, B. Fong, J. Chong, M. Brandsma, K. Rose, K. Szilagyi, S. Bernstein and L. Wallace).
  • Upgrading the counterfeit regime, The Lawyers Weekly, Vol. 34, No. 34, January 23, 2015 (co-author J. Chong).
  • Chapter on “Copyright Disputes, Resolutions and Remedies” in Intellectually Property Disputes: Resolutions and Remedies, Editor Ronald E. Dimock, (Toronto: Carswell, looseleaf update 2014) (co-authors G. Bloom and B. Jenkins).
  • Get Ready for “Notice and Notice””, Internet and E-Commerce Law in Canada, Vol. 15, No. 7, November, 2014 (co-author M. Brandsma).
  • “’Notice and Notice’ coming for online copyright”, The Lawyers Weekly, Vol. 34, No. 20, October 3, 2014 (co-author M. Brandsma).
  • “Breach of Confidence”, paper for Law Society of Upper Canada, 18th  Annual Intellectual Property The Year in Review, January, 2014.
  • “Copyright and Industrial Design Developments – 2013”, paper for Law Society of Upper Canada, 18th Annual Intellectual Property The Year in Review, January, 2014 (co-authors B. Sookman, G. Bloom, B. Fong, M. Brandsma, K. Rose and V. Cotric).
  • “Trade Secrets and Confidential Information”, paper for The Seventeenth Annual Canadian IT Law Association Conference, October, 2013.
  • “Software Piracy – U.S. States begin to treat matter as unfair trade practice”, The Lawyers Weekly, Vol. 32, No. 2, May 11, 2012.
  • “Statutory Damages Under the Copyright Act: The Canadian Experience to Date”, paper for Insight Conference – Rights and Copyright / Bringing Canada into the 21st Century, December, 2010 (co-author J. Chong).
  • “Counterfeiting and Piracy reach epidemic proportions”, The Lawyers Weekly, Vol. 30, No. 13, August 13, 2010 (co-authors M. Manson and M. Schonfeld).
  • “eBay fights suit over liability for counterfeit sales”, The Lawyers Weekly,  Vol. 30, No. 1, May  7, 2010 (co-author T. James).
  • “Canada lands on U.S. trade rep’s priority watch list”, The Lawyers Weekly, Vol. 29, No. 12, August 7, 2009 (co-author T. James).
  • “Canada gets failing grade on IP Rights Enforcement”, The Lawyers Weekly, vol. 28, No. 12, July 18, 2008 (co-author T. James).
  • “Court awards hefty punitive damages to circumvent hurdles in proving loss”, The Lawyers Weekly, Vol. 27, No. 41, March 7, 2008 (co-author T. James).
  • Editor, Canadian Patent Reporter (2003 to 2007) – write headnotes for numerous cases reported in the Canadian Patent Reporter.
  • “Lax border measures land Canada on U.S. trade watch list yet again”, The Lawyers Weekly, Vol. 27, No. 12, July 20, 2007 (co-author T. James).
  • “Business Records”, paper for the Canadian Bar Association, National Intellectual Property Section, CLE program on Advocacy Before the Federal Court in Intellectual Property Matters – Documentary Evidence, May, 2007 (co-author T. James).


Presentations and Teaching (Selected)

  • “Copyright Update” (speaker), Law Society of Upper Canada, 22nd Annual Intellectual Property Law: The Year in Review, January, 2018
  • "Acting Against Unrepresented Counterfeiters in Civil and Criminal Cases" (speaker), 22nd Annual Fraud and Anti-Counterfeiting Conference, December, 2017
  • “Copyright: Fair Dealing and Technological Protection Measures” (moderator), Intellectual Property Institute of Canada Annual Meeting, September, 2017
  •  “Millennials in the workforce – expectations and responsibilities” (luncheon round table moderator), Intellectual Property Institute of Canada Annual Meeting, September, 2017
  • "Foundations of Copyright: Defences and Users Rights" (speaker), IPIC/McGill  Copyright Master Class, McGill, School of Continuing Studies, August, 2017
  • "Case Study Penalties in Fraud/Counterfeiting Cases" (speaker), 21st Annual Fraud and Anti-Counterfeiting Conference, December, 2016
  • “Rights and Remedies under the Copyright Act” (speaker), Intellectual Property Litigation, Ontario Bar Association, Professional Development, November, 2016
  • “Remedies – Quick Relief in Trade-mark Cases: Myth or Reality” (moderator), Intellectual Property Institute of Canada Annual Meeting, September, 2016
  • "Foundations of Copyright: Defences and Users Rights" (speaker), IPIC/McGill  Copyright Master Class, McGill, School of Continuing Studies, August, 2016
  • "Case Study: Penalties in Fraud/Counterfeiting Cases" (speaker), 20th Annual Fraud and Anti-Counterfeiting Conference, December, 2015
  • "Top IP Cases of the Year" (speaker), Intellectual Property Institute of Canada Annual Meeting, October, 2015
  • “The IP Debates” (Program Chair), Canadian Bar Association, National Intellectual Property Section, May, 2015
  • "The Year in Review in IP Law, Copyright" (speaker), Intellectual Property Institute of Canada, February, 2015
  • “Copyright Update” (speaker), Law Society of Upper Canada, 19th Annual Intellectual Property The Year in Review, January, 2015
  • “The IP Debates” (Program Chair), Canadian Bar Association, National Intellectual Property Section June, 2014
  • “IP Responses to New Technologies” (speaker), Law Society of Upper Canada, 18th Annual Intellectual Property The Year in Review, January, 2014
  • “Annual Update on IP Issues for Information Technology: Trade Secrets and Confidential Information” (speaker), Canadian IT Law Association, Annual Conference, October, 2013
  • “Contingency Fees: Opportunities and Limitations in IP Cases” (moderator), Intellectual Property Institute of Canada, Annual Meeting, September, 2013
  • “Advocacy Before the Courts in Intellectual Property Matters: When Time is of the Essence – Getting a Quick Result” (Program Chair), Canadian Bar Association, National Intellectual Property Section, May, 2013
  • "Advocacy Before the Courts in Intellectual Property Matters: The Art of Discovery” (Program Chair), Canadian Bar Association, National Intellectual Property Section, May, 2012
  • “Ethics in IP Enforcement” (moderator), Intellectual Property Institute of Canada, Annual Meeting, September, 2011
  • “The Art of Settling a Dispute: A Step-by-Step Guide to Negotiation, Papering the Deal and Enforcement” (moderator), Canadian Bar Association, annual Canadian Legal Conference, August, 2011
  • “Bill C-32: Statutory Damages” (speaker), Insight conference “Rights and Copyright, Bringing Canada into the 21st Century”, December, 2010
  • “Intellectual Property Crime, Copyright Offences” (speaker), RCMP, D Division Border Integrity Conference, September, 2010
  • “Knocking Out Knockoffs: What you Need to Know about Counterfeit and Grey Market Goods” (moderator), Canadian Bar Association, annual Canadian Legal Conference, August, 2010
  • "Drawing the Line: Is Your Representation Zealous Advocacy Before the Courts, the Patent  Office and the Trade-mark Office, or Unprofessional Conduct?" (moderator), Intellectual Property Institute of Canada, Annual Meeting, October, 2009
  • “Gray Markets: The Changing Law of Parallel Imports” (speaker), West LegalEdcenter, June, 2009
  • International Anti-Counterfeiting Coalition (Conference Co-Chair), Annual Conference, May, 2009
  • “Update on Copyright Law” (webinar moderator), Intellectual Property Institute of Canada, April, 2009
  • “Courts: Trends and Tendencies” (speaker), 13th Annual Kestenberg Siegal Lipkus LLP Anti-Counterfeiting Training Conference , December, 2008
  • “Shhh... I’ve Got a Secret!  How to Stop Others from Spilling the Beans” (moderator), Canadian Bar Association, annual Canadian Legal Conference, August, 2008
  • Advocacy Before the Federal Court in IP Matters, Expert Witnesses (moderator), Canadian Bar Association, National Intellectual Property Section, May, 2008
  • “Parallel Imports in Canada - Can Copyright be Used Defensively to Block Imports?” (Table Topic Moderator), International Trademark Association, Annual Meeting May, 2008
  • “Developments by National Anti-Counterfeiting Groups” (speaker), International Anti-Counterfeiting Coalition – Annual Conference, May, 2008
  • “Internet Trade-mark and Copyright Issues in Canada and the U.S.” (moderator), Intellectual Property Institute of Canada, Spring Meeting, April, 2008
  • “Grey Marketing & Counterfeiting” (moderator), Intellectual Property Institute of Canada, Annual Meeting, October, 2007
  • “Anton Piller Orders: Is the Bar Changing?” (moderator), Intellectual Property Institute of Canada, Spring Meeting, April, 2006
  • “European Patent Prosecution” (moderator), Intellectual Property Institute of Canada, Seminar, March, 2005
  • “Comparative Approaches to Grey Goods & Counterfeiting: Canada, U.S. & Europe” (moderator), Intellectual Property Institute of Canada, Annual Meeting, October, 2004
  • “Anti-Counterfeit Enforcement: Challenges and Opportunities” (moderator), American Bar Association, Section of Intellectual Property, Summer IPL Conference, June, 2004