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I am now (2024) almost a full time mediator and arbitrator at ADR chambers. I was formerly senior partner at Norton Rose Fulbright Canada. Prior to that I was National Head of the Intellectual Property Department at McCarthy Tetrault and before that co-founder of the Intellectual Property Depeartment at Blake, Casses.
I have had experience in all aspects of intellectual property (patents, trademarks and copyright), technology and media matters for over 40 years. Typically this means helping to resolve dispute in licensing, intellectual property and technology and computer litigation, most recently in arbitration and mediation. I have represented some of the most creative people in the world such as James Cameron, creator of Avatar, and some of the most iconic brands such as Barbie and Heinz, Weight Watchers and American Eagle. I have represented e-commerce and telecom companies such as Nortel, Research in Motion (Blackberry) in patent disputes. I have represented movie studios, publishers, banks, software developers, chemical companies and theatre companies. I have experience in retail distribution and advertising of consumer and food products.
Please see specific subject headings on this site for specific experience. and including work in media, advertising, technology, almost all creative and technical industries, biotechnology and information technology.
I am a member of the panel of arbitrators of the World intellectual Property Organization and the Canadian International Internet Dispute Resolution Centre. I am also a fellow of the Chartered Institute of Arbitrators and a member of the ADR Institute of Canada and IP Neutrals of Canada since 2010.
Barrister and Solicitor/ Mediator/ Arbitrator
Patent Agent, Trade-mark Agent
416 917-1652
briangray@briangraylaw.com
Ontario Call to the Bar 1979
Trade-mark Agent Canada 1979
Patent Agent Canada 1980
Patent Agent United States 1980
Brian Gray has had extensive experience in all phases of Intellectual Property and Technology: counseling, prosecution, licensing and litigation, and including work in computer subject matter, media, advertising, technology, biotechnology, chemistry and information technology. I have been involved in all phases of product development and distribution.
B.A. (1971, Cornell University) Chemistry and History (Dean’s List for academic excellence 1971), Editor the Cornell Daily Sun 1969-1971 and President of SDX Journalism Honorary.
M.A. (1974, Cornell University) Government, International Relations (Western European Studies Fellowship)
LL.B. (1977, University of Toronto)
Barrister and Solicitor (1979)
Registered Canadian Trade-mark Agent, 1979
Registered Canadian Patent Agent, 1980;
U.S. Patent Agent, 1980;
Fellow Chartered Institute of Arbitrators
Fellow, Intellectual Property Institute of Canada (Member at various times of: Joint Liaison Committee for Patents, Trade-mark Legislation Committee, Trade Related Intellectual Property Committee, Patent Legislation Committee, Copyright Legislation Committee, Litigation Committee)
Overseas Member of the Institute of Trade Mark Agents (UK)1989-2016, International Bar Association (co-chairman of Intellectual Property committee) .American Bar Association,
Canadian Bar Association (member joint task force studying the Competition Bureau draft Intellectual Property Enforcement Guidelines)
American Intellectual Property Law Association
AIPPI (International Association for the Protection of Intellectual Property)
Copyright Society of the U.S.A.
1979-1986 lawyer and patent agent and later partner Ridout & Maybee, patent agents, Hayhurst Dale and Deeth, solicitors
1986-2004 Blake, Cassels and Graydon, solicitors, co-founder of the Intellectual Property Department
2004-2007 McCarthy Tetrault, head of intellectual property department.
2007-2017 Ogilvy Renault, since merged with Norton Rose and then merged with Fulbright and Jaworski to form Norton Rose Fulbright, senior partner.
2018- present Brian Gray Law
Counsel to Nortel Networks Inc. and affiliates in their record-breaking auction of around 7,000 patent assets to Rockstar Bidco, a consortium of Apple, EMC, Ericsson, Microsoft, Research in Motion and Sony for $4.5 billion. Also counsel to Nortel in several other significant sales of multiple Nortel divisions with critical IP assets including Genband, Ericsson and Avaya.
Counsel in Canada to H.J.Heinz in the acquisition and subsequent sale of Weight Watchers International and subsequent trademark licensing arrangements. Intellectual Property counsel to H.J.Heinz in respect of many acquisitions, reorganizations and divestitures 1986- present.
Trademark counsel to Mac’s Milk (at the time the largest franchiser in Canada) in connection with the protection and licensing of all of their trademarks.
Intellectual Property counsel to Allelix Inc (at the time the largest biotechnology company in Canada) and subsequently counsel to the various divisions and spin offs from Allelix, including Pioneer Hi-Bred (later DuPont), Allelix Biopharmaceucials (later NPS Pharmaceuticals) and Allelix Diagnostics (later ADI Diagnostics and later still Biomira Diagnostics)
Acted for the Stratford Festival and Brian MacDonald Production in respect of the production of several Gilbert & Sullivan plays at Stratford and their subsequent touring of shows in the U.S. including on Broadway and at the Kennedy Centre Washington D.C. and negotiated television rights for broadcast on the CBC.
Acted for eBay as intervener in the Supreme Court of Canada on the Equustek v. Google case involving the court’s order of a worldwide injunction against Google.
Acted for the Canadian Banking Association and the Canadian Life and Health Insurance Association (CLHIA) as intervener in Amazon v. the Commissioner of Patents, the seminal and leading case on the patentability of business methods. Later acted for Insurance Bureau of Canada and CLHIA as intervener in Benjamin Moore v. The Attorney General.
Acted for the Bank of Nova Scotia in a multimillion dollar Canadian and US patent claim by Data Treasury concerning cheque scanning and processing.
Successfully defended Fox and James Cameron in respect of a copyright claim for the movie Avatar.
Successfully defended Fox in respect of a distribution dispute over A Christmas Carol.
Defended Alliance Atlantis in respect of a claim over the production of the series Due South.
Successfully defended Sony Pictures in respect of a dispute over the movies Crouching Tiger, Hidden Dragon and other confidential matters.
Defended Universal Pictures in respect of the movie Charlie Wilson’s War Successfully acted for His Highness the Aga Khan in a copyright claim.
Advised a large Canadian mobile phone manufacturer in connection with the multimillion dollar patent infringement claim.
Acted for Queens University and Parteq Inc and achieved a significant settlement for Queens University based on a patented drug developed there.
Acted for nVidia in the leading Canadian trade secret case on inevitable disclosure Henry v. ATI
Acted for Walt Disney and others in connection with enforcement of a US bit-torrent infringement judgment against a Canadian copyright infringer.
Acted for Warner-Lambert in a Patent Medicines Notice of Compliance proceeding relating to the block buster drug Lipitor.
I have also acted as counsel in an arbitration for Timberjack (John Deere) involving 5 US and Canadian patents before a retired US court district judge and in media and entertainment arbitrations and mediations for Fox, Sony and Marvin Hamlisch as well as numerous mediations relating to all kinds of intellectual property.
I have been an expert witness in a U.S. copyright case, involving rights to Stravinsky’s musical works in Canada, and an expert witness in an EPO patent opposition involving patent ownership and in a Canadian patent and trademark case involving professional negligence.
I am on the panel of arbitrators and mediators for the Canadian International Internet Dispute Resolution Centre and of the World Intellectual Property Association and the International Trademark Association and have completed the WIPO advanced workshop on domain name dispute resolution and arbitration and the INTA mediation training.
See list of reported cases attached. In addition i have been counsel in numerous unreported decisions or cases which settled including patent cases for Queens University, Hewlett-Packard, Beecham, Warner-Lambert, Solvay, Agfa, Lubrizol, Champion Road Machinery and TRW and copyright cases for Sony, Fox and Universal, and the Motion Picture Association and trademark cases for Mattel, Heinz, American Eagle, Baron Philippe de Rothschild SA, and Esselte Pendeflex, and a trade libel case for ShoreTel.
Member, National Biotechnology Advisory Committee 1989 – 1999, appointed by the Minister of Industry to advise on science policy
International Bar Association, Chairman Committee on Intellectual Property and Entertainment (L), 1994 – 1998; Chairman Trade mark Sub-committee of Committee L, 1990 – 1994
International Trade-mark Association (Chairman, Canada Sub-committee of International Trade-mark Committee, 1988-1989); member 1991-1994 of Trade Barriers Committee; Editorial Board, Trade-Mark Reporter 1995-1997, Chairman, Canada sub-committee of the North America Anti-counterfeiting Committee 2011-2013, Copyright Committee 2016-2017.)
Editorial Advisory Board and Correspondent for Canada, Bureau of National Affairs, World Intellectual Property Reporter 1989 – 2007
Editorial Advisory Board, Federated Press Intellectual Property Quarterly 2004-2016
Editorial Advisory Board, American Intellectual Property Law (AIPLA) Quarterly Journal 2013-2018
Member, Intellectual Property Committee of the Industrial Biotechnology Association of Canada (now BIOTECanada) 1990-1999.
Member, Joint Copyright Committee of the Canadian Bar Association and the Intellectual Property Institute of Canada. (2002-present).
Member, Joint Intellectual Property and Competition Committee of the Canadian Bar Association to study the draft Competition Bureau Intellectual Property Enforcement Guidelines.
International Association for the Protection of Industrial Property, (AIPPI) (Chairman, Canadian Group Committee on Q.93 Protection for Biotechnology 1992; Member, Committee on Patent Novelty 1995; Chairman Q130, Unfair Competition and Misleading Advertising 1998); Member Q.194, 2007, Impact of Co-ownership of IP Rights, program committee and organizing committee for AIPPI Toronto 2014, Chairman Q246 Exceptions and Limitations to copyright protection for libraries archives and educational and research institutions 2015, Canadian and Global Chairman 2016 Liability for linking and framing on the internet; Canadian Chairman 2017 Graphical User Interfaces.
American Intellectual Property Association: Program Committee 2007-2017; International Education Committee 2000-2004; Patent Law Committee 2000-2017, Copyright Law Committee 2008-2017
Instructor, Trade-marks, Law Society of Upper Canada Bar Admission Course, 1982-1984
Lecturer – Trade-marks and Patents (assisted W.L. Hayhurst), University of Toronto Law School, 1980 – 1985
Lecturer- Osgoode Law School Program on Intellectual Property Licensing- 2017
Lecturer, Copyright, McGill University 2002, 2003, 2004
Lecturer, Graduate Seminar, Patent Law, University of Toronto, 2004
Board of Directors, Toronto Field Naturalists 1975-1980
Board of Directors, Protein Engineering Network of Centres Excellence (PENCE) 1994 – 2006
Board of Directors, TechLaw Inc., 1996 -2004
Board of Directors, Canadian Biosciences Commercialization Institute (Sciences Sans Frontieres) 2001 – 2006
Board of Directors, Parteq Innovations (technology transfer corporation of Queen’s University), 2006 – 2013
Board of Directors, the International Consortium on Anti-virals, 2006 – present
Board of Directors and Vice-Chairman, Canadian Frailty Network, a Network of Centres of Excellence 2010-2024
Active in numerous international organizations such as AIPPI but especially the International Bar Association where I was chairman of one of the largest committees of the business law section, the Intellectual Property and Entertainment Committee and helped run meetings all over the world, in Berlin, New Delhi, Strasbourg, Melbourne, Hong Kong, Chicago, Boston, London, Paris and Barcelona to name a few and I also helped support local regional meetings in Mexico, Turkey and Brazil and coordinated the IBA representation at the WIPO in Geneva. As noted above in January 2011, I was an instructor on Intellectual Property for a three day program for judges from Ukraine and Moldova for the Central and Eastern European Law Institute (CEELI) , Prague, Czech Republic.
I co-founded the IP group at Blake Cassels which became one of the largest and most respected IP groups in Canada in a general practice firm and I also headed the IP department at McCarthy Tetrault, one of the largest law firms in Canada at that time.
For seven years I was on the board of one of the most successful university technology transfer organizations in Canada at Queens University, Parteq Inc. For ten years, I served on the Canadian Government policy body to advise on intellectual property policy as it related to biotechnology issues.
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