John focuses on providing advocacy and advice concerning intellectual property and related matters, including protecting trade-marks, copyrights, patents, confidential information and misleading advertising and claims under the Competition Act. A growing component of his work relates to intellectual property claims on the Internet, including domain name disputes. He is certified by the Law Society of Upper Canada as a specialist in Intellectual Property Law (Trade Marks/Copyright). Some of Canada's largest marketers have relied on John's advice.
John supervises obtaining, protecting and licensing trade marks and hundreds of successful trade mark applications have been filed. He is involved in many opposition proceedings before the Trade-marks Opposition Board and actions for infringement. He works with a team of law clerks to deliver cost effective service.
A few noteworthy cases on which John acted as counsel include:
· Successfully argued on appeal that a patent specification should be given a purposive construction and that the defendant had not infringed (Eli Lilly & Company v. O'Hara Manufacturing Ltd.). This decision of the Federal Court of Appeal was applied in many subsequent cases in the Federal Court and eventually affirmed by the Supreme Court of Canada.
· Successfully argued that a defendant could deny the existence of copyright when the statement of claim relied on a certificate of registration so long as sufficient material facts were pleaded (IT Hartford Life Insurance Co. of Canada v. American National Assurance Life Company).
· Successfully used the uniform domain name dispute resolution policy to require that a number of domain names owned by cybersquatters be transferred (Canadian Tire Corporation, Limited v. 849075 Alberta Ltd. and other similar cases).
· Obtained confirmation from the Federal Court of Appeal that hearsay evidence was unacceptable in trade mark expungement proceedings (Canadian Tire Corporation, Limited v. P.S. Partsource Inc.).
· Successfully used survey evidence to overturn a decision of the Trade-marks Opposition Board and helped clarify the standard of review relating to such appeals when the decision was affirmed by the Federal Court of Appeal. (Accessoires D'Autos Nordiques Inc. v. Canadian Tire Corporation, Limited).
John has particular expertise regarding actions relating to copyright. He is the author of Fox, Canadian Law of Copyright and Industrial Designs (3rd Edition, 2000; 4th Edition, 2003), the leading copyright textbook in Canada. The 4th edition has been released in a looseleaf form and builds on the success of the 3rd edition. The text is updated semi-annually. John and the text have been referred to by both the Supreme Court of Canada and the Federal Court of Appeal as an authoritative source.
John's textbook, Brand Management in Canadian Law (1st Edition, 2004; 2nd Edition, 2006; 3rd Edition, 2010) considers brand management from a legal perspective. The components which make up a brand, a consumer's perception of a brand, brand equity, brand leverage and integration are discussed. Additional chapters deal with legal considerations relating to choosing a brand name, branding on the internet, protecting the components of a brand and developing effective brand management policies. A second edition was published in 2006 and a third edition is scheduled to be published in June 2010.
In Canadian Intellectual Property Law and Strategy: Trademarks, Copyright and Industrial Designs, John provides an overview of Canadian law relating to trade marks, copyright and industrial designs along with strategic commentary designed for legal practitioners outside Canada. The book was published in March 2010 by Oxford University Press.
Achievements
· Martindale-Hubbell, BV Distinguished™ rating
· Certified as a Specialist in Intellectual Property Law (Trade Marks/Copyright)
Associations
· American Bar Association (Patent, Trade mark and Copyright Law Section)
· Canadian Bar Association (Competition Law Section)
· Intellectual Property Institute of Canada
· International Trademark Association
· Ontario Bar Association (Alternative Dispute Resolution, Civil Litigation, Information Technology and E-Commerce, Privacy Law)
· Toronto Lawyers Association
Articles
John McKeown Discusses the Potential Impact of New Generic Top Level Domain Names, 04/14/2011
Understanding Bill C-32: Copyright Modernization Act, 11/19/2010
Brand Management in Canadian Law, Third Edition, 08/20/2010
Copyright Reform, 07/30/2010
Protection of Geographical Indications, 07/30/2010
How Not to Treat a Trade Mark, 07/30/2010
What's in a Name? A Rose by any Other Name Would Smell as Sweet, 07/30/2010
Coloured Stripes in Toothpaste Protected, 06/03/2010
Attacking Secondary Pharmaceutical Trade-Marks, 06/03/2010
Liability for Authorizing or Procuring Infringement, 06/03/2010
General
Podcast: John McKeown Discusses ICANN's Expansion of Top-Level Domains, 02/02/2012
Newsletter Articles
Coping with Social Media, 04/26/2012
Retail Business Services?, 04/26/2012
24 du 24?, 04/26/2012
A Short Story About a Red Bus on a Monochrome Background, 04/26/2012
A Trade-Mark Registration for Trade Dress, 02/02/2012
MARCHÉ EXPRESS, 02/02/2012
New Domain Names, 02/02/2012
An Equitable Interest in a Patent, 02/02/2012
A Matter of Deference, 11/22/2011
Trade-mark Licences and Controlled Corporations, 11/22/2011
Summary Trial, 11/22/2011
Interpreting Industrial Design Registrations, 11/22/2011
Infringement of Design Trade-marks, 09/21/2011
Trade-mark Genericism, 09/21/2011
The Status of the New gTLDs, 09/21/2011
What Is a "Sculpture" for Copyright Purposes? Can an Action Be Brought for the Infringement of a Foreign Copyright?, 09/20/2011
BAM!, 07/26/2011
CHAMPAGNE Domain Names, 07/26/2011
Back-Dated Copyright Assignments, 07/26/2011
Online Trade-mark Use, 05/25/2011
The Distinctiveness of a Trade-mark is Not Static, 05/25/2011
An Ethical Dilemma, 05/25/2011
Trade-mark Bullies Revisited, 05/25/2011
Trade-marks North of the Border Podcast, 05/10/2011
Use of a Composite Mark may not be Use of a Registered Mark, 03/31/2011
The New gTLDs and How to Cope with Them, 03/31/2011
BC-BUD, 03/31/2011
The Edible Play Dough, 03/31/2011
Trade-Mark Bullies, 02/01/2011
Motor Vehicle and Bicycle Marks, 02/01/2011
Interlocutory Injunctions in the Federal Court, 02/01/2011
When Should a Trade Mark Opposition be Stayed?, 02/01/2011
Initial Interest Confusion, 11/30/2010
The Transcendence of Famous Marks, 11/30/2010
Federal Court's Jurisdiction is Limited, 11/30/2010
Technical Protection Measures, 11/30/2010
The Importance of the Date of First Use, 09/20/2010
The Spirit of Cuba, 09/20/2010
The Scope of Protection for Industrial Designs, 09/20/2010
Protection of Geographical Indications, 07/15/2010
How Not to Treat a Trade-Mark, 07/15/2010
What's In A Name? A Rose by Any Other Name Would Smell as Sweet!, 07/15/2010
Copyright Reform, 07/15/2010
Newsletters
1286 Applications for Top Level Domain Names - Reveal Day Delayed, 05/03/2012
The Cassels Brock Report - April 2012, 04/26/2012
839 Applicants for New Top Level Domain Names. What Brand Owners Need to Do - A Podcast, 04/24/2012
The Cassels Brock Report - February 2012, 02/02/2012
The Cassels Brock Report - November 2011, 11/22/2011
The Cassels Brock Report - September 2011, 09/21/2011
The Cassels Brock Report - July 2011, 07/28/2011
A Brave New World Wide Web: A Collection of Recent Media Addressing the Impact of the New gTDLs, 07/18/2011
gTLD Changes That Will Rock Your World Wide Web: A Podcast, 06/07/2011
The Cassels Brock Report - May 2011, 05/25/2011
The Cassels Brock Report - March 2011, 03/31/2011
The Cassels Brock Report - February 2011, 02/02/2011
The Cassels Brock Report - November 2010, 11/30/2010
New Podcast: Brand Management in Canadian Law, 10/18/2010
The Cassels Brock Report - September 2010, 09/28/2010
The Cassels Brock Report - July 2010, 07/28/2010
In The News
05/10/2012, ICANN gTLD Applications Threaten Brands
05/10/2012, Get Ready for Domain Name Reveal Day as ICANN Prepares to Post Plethora of Website Options
03/20/2012, Cassels Brock Trade-Mark Lawyers Recognized in WTR 1000
10/04/2011, Cassels Brock is Pleased to Announce INTA Committee Appointments
09/02/2011, John McKeown Disputes gTLD Threat to Branding in the Toronto Star
08/24/2011, John McKeown Refutes Concerns over New gTLDs in the Globe and Mail
06/20/2011, John McKeown Deciphers the Recent ICANN Decision on gTLDs for BNN's The Close
06/20/2011, John McKeown Discusses ICANN Decision to Allow New Domain Suffixes on 680 News
09/15/2010, John McKeown Interviewed About Online Brand Jacking on BNN
Presentations
The New gTLDs: What Trademark Owners and Their Attorneys Need to Know
Understanding Bill C-32: Copyright Modernization Act