Author: Nicolas Charest, Michael Shortt and Brooke Naomi Levy

About Nicolas Charest, Michael Shortt and Brooke Naomi Levy

Michael Shortt is a lawyer and trademark agent. His practice focuses on both litigation and transactional work, with an emphasis on the videogame and artificial intelligence industries. As a member of the Québec and Ontario bars, he advises clients on both common-law and civil-law matters.

Trademark Owners and Franchisors Beware: in Milano Pizza Ltd. v. 6034799 Canada Inc., Lack of Licensor Control Leads to Invalidation of Trademark

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In its recent Milano Pizza Ltd. v. 6034799 Canada Inc. decision, the Federal Court ordered the expungement of a trademark registration because the plaintiff did not exercise sufficient control over the use of the trademark by its licensees. This decision provides a helpful reminder of the dangers of relying on verbal agreements instead of written trademark licenses, and the need for trademark owners to maintain control over their licensees.

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The Federal Court of Appeal has spoken: actual damage doesn’t need to be proved in order to obtain statutory damages under the Copyright Act

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In its February 2022 decision in RallySport Direct LLC, the Federal Court of Appeal (“FCA”) reiterated and confirmed the principle established in the decision of the Ontario Superior Court in Trader. This Court determined that a copyright owner could claim the statutory damages provided in section 38.1 of the Copyright Act (“Act”), even where there was no monetary damage and no loss of business opportunity.

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