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John Cotter | Intellectual Property Litigation Lawyer

John Cotter

Partner, Intellectual Property


Contact Information

jcotter@osler.com

tel: 416.862.5662

Office

Toronto

Bar Admission

Ontario, 1988

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

John practises in the areas of intellectual property and information technology litigation and has a commercial litigation background. He has extensive experience in disputes relating to copyright, trademarks, 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. Examples of his recent cases include: anti-counterfeiting cases; trademark and copyright infringement actions; Copyright Board of Canada hearings; software licensing disputes; trade secrets/confidential information claims; disputes arising from software development and consulting projects; technology licensing and domain name disputes; misleading advertising claims; appeals from decisions of the Registrar of Trade-marks; and trade-mark expungement and opposition proceedings. John’s commercial litigation background includes contractual disputes, product liability matters and tort claims.  John also speaks and writes frequently on intellectual property and litigation matters and has served on the Editorial Board of the Canadian Patent Reporter.

    • 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 Canada: Canada’s Leading Lawyers for Business, 2017-2018, recognized in the area of Intellectual Property: Litigation.
  • The Best Lawyers in Canada, 2014-2018, recognized in the area of Intellectual Property Law.
  • WTR 1000 – The World’s Leading Trademark Professionals, 2017, recognized in the areas of Anti-counterfeiting; Enforcement & Litigation. 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."
  • Managing IP 2016-2017: IP Star, Trade mark (Canada).
  • The Canadian Legal Lexpert Directory, 2016-2017, Repeatedly Recommended in the area of Litigation - Intellectual Property.
  • The Canadian Legal Lexpert Directory, 2017, Repeatedly Recommended in the area of Intellectual Property.
  • The Legal 500, 2017, recognized as a Recommended Lawyer in the area of Intellectual Property.
  • Chambers Global: The World’s Leading Business Lawyers, 2012-2017, recognized in the area of Intellectual Property: Litigation.
    • "...[John] brings a great deal of expertise in the copyright area…"
  • Expert Guides 2016: Trade Marks

  • Chair, Professional Development Committee, Canadian Bar Association (National Intellectual Property Law Section)
  • Anti-Counterfeiting Committee, Intellectual Property Institute of Canada (Past Chair)
  • Litigation Committee, Intellectual Property Institute of Canada
  • Forums and Seminars Committee, Intellectual Property Institute of Canada
  • A former bar representative on the Federal Court IP Users Committee

  • Chapter on “Copyright Infringement” in Intellectual Property Litigation, published by LexisNexis (co-author J. Chong).
  • Chapter on “Copyright – What Is It?” in Canadian Copyright / Industrial Designs Benchbook, Editor Donald M. Cameron, Carswell, 2015 (co-authors G. Bloom and M. Brandsma).
  • Chapter on “Infringement and Depreciation of Goodwill” in Canadian Trade-mark Law Benchbook, 2nd edition, Editor Donald M. Cameron, Carswell, 2014 (co-author A. Monic).
  • Copyright and Industrial Design Developments – 2014, Law Society of Upper Canada, 18th 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, January, 2015 (co-author J. Chong).
  • Chapter on “Copyright Disputes, Resolutions and Remedies” in Intellectually Property Disputes: Resolutions and Remedies, Editor Ronald E. Dimock, Carswell (co-authors G. Bloom and B. Jenkins).
  • Get Ready for “Notice and Notice”, Internet and E-Commerce Law in Canada, November, 2014 (co-author M. Brandsma).
  • Breach of Confidence, Law Society of Upper Canada, 18th Annual Intellectual Property The Year in Review, January, 2014.
  • Copyright and Industrial Design Developments – 2013, 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, The Seventeenth Annual Canadian IT Law.
  • Software Piracy – U.S. States begin to treat matter as unfair trade practice, The Lawyers Weekly, May 11, 2012.
  • Statutory Damages Under the Copyright Act: The Canadian Experience to Date, Insight Conference – Rights and Copyright / Bringing Canada into the 21st Century, December, 2010 (co-author J. Chong).
  • Counterfeiting and Piracy – A Growing Problem, The Lawyers Weekly, August, 2010 (co-authors M. Manson and M. Schonfeld).
  • eBay fights suit over liability for counterfeit sales, The Lawyers Weekly, May 7, 2010.
  • Is eBay’s Generalized Knowledge of Counterfeit Goods Enough to Impose Liability in the U.S.?, The Lawyers Weekly, May, 2010 (co-author T. James).
  • Canada Placed on USTR’s Priority Watch List, The Lawyers Weekly, August 2009 (co-author T. James).
  • Canada gets failing grade on IP Rights Enforcement, The Lawyers Weekly, July 18, 2008 (co-author T. James).
  • Court Awards Hefty Punitive Damages to Circumvent Hurdles in Proving Loss, The Lawyers Weekly, March 7, 2008 (co-author T. James).
  • Lax Border Measures Land Canada on U.S. Trade Watch List Again, The Lawyers Weekly, July, 2007 (co-author T. James).
  • Business Records, 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).
  • Microsoft Wins Maximum Award in Counterfeit Software Dispute, The Lawyers Weekly, March, 2007 (co-author T. James).
  • Kraft Shows How IP Rights Holders Can Best Argue Against Grey Goods, The Lawyers Weekly, April, 2006 (co-author T. James).
  • FCA Decision Relies on Circumstantial Evidence and Imposes Stiff Penalty, The Lawyers Weekly, February, 2006 (co-author T. James).