Brian W. Gray

Biography

Brian Gray practises litigation and dispute resolution for patent, copyright, trade-mark and advertising matters. He counsels and represents clients with large patent and trade-mark portfolios and has appeared before the Federal and Ontario courts on patent, trade-mark and copyright matters.

His experience includes parallel imports and grey market trade-mark cases, copyright authorship and ownership disputes in the motion picture industry, trial and appeal of patent infringement cases, brand name pharmaceutical patent litigation and notice of compliance cases, inventorship claims and patent disputes in the academic sector, trade secret cases, television and motion picture co-production and financing, technology transfer and patent licensing, patent drafting and patent opinions, patent and trade-mark portfolio management and counselling, and advertising litigation and counselling.

Prior to joining the firm, Mr. Gray was a partner at another major law firm in Toronto.

Year of Call

• Ontario Bar 1979

Year of Registration

• Canada (patents) 1980
• United States (patents) 1980
• Canada (trade-marks) 1979

Law School

• LL.B., University of Toronto, 1977

EDUCATION

• M.A., Government, Cornell University, 1974
• B.A., Chemistry and History, Cornell University, 1971

Selected Client Work

Mr. Gray's client work includes:

• considerable recent experience advising financial institutions on business method patents and business software and policy issues and litigation relating thereto
• parallel imports and grey market trade-mark cases
• copyright authorship and ownership disputes for major motion picture studios
• trial and appeal of patent infringement cases for a major forest machinery company
• brand name pharmaceutical patent litigation and notice of compliance cases
• inventorship claims and patent disputes for one of Canada's leading universities
• trade secret cases for a graphic chip manufacturer
• television and motion picture co-production and financing
• technology transfer and patent licensing
• patent drafting and patent opinions
• patent and trade-mark portfolio management and counselling
• advertising litigation and counselling

Publications

• "Internet Jurisdiction" (co-author Charles Morgan), April 2007.
• "Canadian Copyright Collective Seek iPod Levy," April 2007.
• "Copyright Licensing Grant and Scope," April 2007.
• "Movie Piracy,"  World Copyright Law Report, April 2007.
• "Duty of Good Faith Comes to Canada," Case Comment, World Intellectual Property Law Report, March 2007.
• Database Protection - The limits of copyright, Queen's University, Kingston, September 29, 2006.
• "Proposed Changes to Canadian Drug "Linkage" PM (NOC) Regulations and Data Exclusivity Provisions,"  Federated Press Intellectual Property Quarterly, July 10, 2006.
• "Unfair Competition - Comparative Advertising - Canada," IBA Product Law and Advertising Committee Newsletter, June 2006.
• "Canadian Court upholds United States Judgment against Canadian Internet Business,"  World Copyright Law Report, April 2006.
• "Canadian Court Restrains Grey Market Goods," World Trade-mark Law Report, March 2006.
•  "Protection and Enforcement of Five Essential IPRs Q&A," Managing Intellectual Property, IP&IT Handbook 2006/07, February 2006.
• "Trade-marks Q&A," Managing Intellectual Property, IP&IT Handbook 2006/07, February 2006.
• "Drawing the Lines in Court,"  Managing Intellectual Property - IP Focus, February 2006.
• "Peer to Peer File Sharing,"  Lawyers Weekly, November 2005.
• "Supreme Court of Canada Decides LEGO case,"  World Intellectual Property Law Reports, November 2005.
• "Nanotechnology in Canada"  (co-author Anita Nador), Nanotechnology Law and Business, Vol. 2, Issue 2, April 2005.

Media Highlights

• "Amazon Appeals Adverse Ruling," Law Times, September 21, 2009.
• "Business Method Patents: Here To Stay?," Lexpert, December 1, 2008.

Rankings and Recognitions

• The Best Lawyers in Canada, 2010 - Biotechnology Law, Intellectual Property Law
• The International Who's Who of Trademark Lawyers, 2010
• The International Who's Who of Patent Lawyers, 2010
• The International Who's Who of Life Sciences Lawyers, 2008
• Lexpert
• Guide to the Leading 500 Lawyers in Canada
• Who's Who Legal
• Global Counsel 3000
• Chambers Global
• Managing Intellectual Property

Memberships and Activities

• Joint Copyright Committee, Canadian Bar Association and Intellectual Property Institute of Canada
• Intellectual Property Institute of Canada
  • Litigation Committee
• Ministerial science advisory committee
• International Bar Association
• Former Chair, Intellectual Property Committee
• Editorial board, World Intellectual Property Report
• Editorial board, Federated Press Intellectual Property Quarterly
• Editorial board, World E-Commerce Report
• Editorial board, Trade-Mark Reporter
• Lecturer, patent and trade-mark law, University of Toronto
• Lecturer, copyright law, McGill University

Directorships

• Director, technology transfer company of one of Canada's major universities
• Past director, technology network of one of Canada's major research universities