Karen MacDonald's practice covers litigation in all areas of intellectual property, including patents, trade-marks, copyright, industrial designs and confidential information. She has extensive experience with preparing written documents such as pleadings, arguments, and cease and desist letters, as well as with conducting negotiations with opposing counsel. She has appeared before the Federal Court of Canada, the Federal Court of Appeal and the British Columbia Supreme Court.
Ms. MacDonald also has particular expertise in the field of anti-counterfeiting enforcement work. She is heavily involved with developing and implementing anti-counterfeiting enforcement programs in Canada for major brand owners worldwide, operating in fields such as luxury goods and software development.
Trade-mark prosecution is another significant element of Ms. MacDonald's practice. She regularly files applications, prepares responses to Office Actions, and appears before the Trade-marks Opposition Board and in section 45 proceedings. She is also regularly involved in arranging for filing of foreign trade-marks.
Ms. MacDonald has worked with clients ranging in size from small companies to large multinational corporations and operating both in Canada and internationally.
Experience
Summary judgments/trials
Louis Vuitton Malletier S.A. and Burberry Limited et al. v. Singga Enterprises et al., 2011 FC 776 - Louis Vuitton and Burberry were granted the highest award of damages and costs to date in Canada against purveyors of counterfeit goods, for a total of $2.48 million in damages, including punitive and exemplary damages, not including legal fees, which were awarded on a solicitor and client basis against each of the defendants. The defendants included three groups of individuals and shell corporations operating businesses engaged in the sale of counterfeit goods across Canada, with one business operating in the Greater Vancouver area and other businesses, based out of the Greater Vancouver and Greater Toronto areas, engaged in importation, distribution and sale across Canada, including Alberta and Quebec, of counterfeit LOUIS VUITTON and BURBERRY merchandise.
The judgment was rendered using the new Federal Court summary trial rules, which were modeled after the British Columbia Supreme Court summary trial "18A" rules and intended to give the Court greater flexibility in granting judgment on a summary basis. In awarding judgment against the defendants, Mr. Justice Russell adopted the leading British Columbia jurisprudence, which provides that if the judge can find the facts as he or she would upon a trial, the judge should give judgment based upon the affidavit evidence, unless to do so would be unjust, regardless of complexity or conflicting evidence.
Damages were awarded against each group of defendants based on a multiplicity of $30,000 in damages (based on the importer/distributor starting point), per plaintiff and per infringement instance/turn-over of inventory, following the damages calculations in the decisions of Madame Justice Snider in Louis Vuitton Malletier S.A. et al. v. Pi-Chu Lin et al. (2007 FC 1179 - see below) and Madame Justice Boyd in Louis Vuitton Malletier S.A. et al. v. 486353 B.C. Ltd. et al. (2008 BCSC 799 - see below), for a total of $1,860,000 in damages for trade-mark infringement, passing off and depreciation of goodwill. The Court also awarded full statutory damages of $20,000 per work for the instances of copyright infringement by the various defendants, citing the defendants' misconduct both before and during the proceeding. The Court similarly awarded punitive and exemplary damages against each of the various groups of defendants, granting the highest award of its kind in a counterfeiting case in Canada, in the amount of C$250,000, against the "Altec" group of defendants, for a total of $500,000 against all of the Defendants. Such awards reflected the defendants' knowing, planned and deliberate actions, their attempts at concealing the counterfeiting activities and their continued importation and distribution of the counterfeit goods after both the commencement of the proceeding and the plaintiff's application for summary trial judgment.
Nintendo of America Inc. and Sony Computer Entertainment America Inc. v. COMPC Canada Trading Inc. and Qian (Kenneth) Chen (22 September 2009) Vancouver S082517 (BCSC) - The British Columbia Supreme Court upheld and granted liquidated damages of $75,000 for a breach of settlement agreement where the defendants had agreed to cease selling "circumvention devices" and "circumvention software," which allow purchasers to play counterfeit video games by allowing them to bypass technological measures on video game consoles that prevent the playing of counterfeit games. Notwithstanding corporate shell games and a purported transfer of businesses, the Court held the defendants to be in breach. The Court also awarded punitive and exemplary damages of $100,000 against each of the defendants for breach of contract and granted an injunction preventing the defendants from continuing to breach the settlement agreement; such remedies being granted notwithstanding that the Court was not asked to consider the broader question of whether the manufacture and sale of circumvention devices and software in fact constitutes an infringement of intellectual property rights in Canada.
Louis Vuitton Malletier S.A. v. 486353 B.C. Ltd et al., 2008 BCSC 799 - Louis Vuitton was granted what is believed to be the highest award of damages in Canada against purveyors of counterfeit goods. In a summary trial decision, Justice Boyd ordered a first group of defendants to pay a total amount of $980,000, including compensatory, punitive and exemplary damages, to the plaintiffs, Louis Vuitton Malletier S.A. and Louis Vuitton Canada, Inc. The Court also awarded special costs and adjourned its deliberation of damages against a remaining defendant until later in the year. The defendants had defended the action and had been examined for discovery, yielding evidence that their turnover of inventory occurred approximately three times per year, enabling the Court to apply the $7,250 damages award on a per turnover of inventory basis. Moreover, as the traditional award of $7,250 was designed to reflect the activities at a single retail location for a single plaintiff, the Court also made this per inventory turnover award at each retail location and for each of the two plaintiffs. The Court also made an additional award of damages against the principal player and importer of the counterfeit goods, Wynnie Lee, using $29,000 ($24,000 adjusted for inflation) as a starting point for nominal damages against her as an importer/distributor. In addition, the Court awarded full statutory damages of $20,000 per work for the instances of copyright infringement by the various defendants. Further, the Court also granted an award of $200,000 in punitive and exemplary damages against Wynnie Lee and $100,000 in punitive and exemplary damages against the other three defendants acting in concert with Wynnie Lee. The Court also granted special costs against this group of defendants.
Louis Vuitton Malletier S.A. v. Yang et al., 2008 FC 45 - The defendants applied to set aside the decision in 2007 FC 1179 (see below). The motion was denied and 2007 FC 1179 was upheld.
Louis Vuitton Malletier S.A. v. Yang et al., 2007 FC 1179 - The defendants were recidivist counterfeiters trading in counterfeit Louis Vuitton goods. The plaintiffs brought an action in copyright and trade-mark infringement. As the defendants did not file a statement of defence, the plaintiffs brought a motion for default judgment. The Court held that the defendants were liable for both copyright and trade-mark infringement. Statutory damages for copyright infringement were awarded at the maximum of $20,000 per work. With regard to trade-mark infringement, loss of profits were awarded in the amount of $87,000. Punitive or exemplary damages were awarded in the amount of $100,000 and a permanent injunction was ordered. The plaintiffs were awarded solicitor-client costs and disbursements in the amount of $36,699.14. The total damages awarded to the plaintiffs totalled $263,699.14.
Applications
Vancouver Association for Injured Motorcyclists v. Alliance for Injured Motorcyclists Canada, 2010 FC 1207 - Successfully expunged a trade-mark registration based on prior use of a confusingly similar trade-mark by the applicant.
Interlocutory injunctions
Thorne Research Inc. et al. v. Thorne Research (Canada) Ltd. et al., (22 August 2003) Vancouver L032365 (BCSC) - Obtained interim and interlocutory injunction in a trade-mark and copyright infringement case for a U.S. manufacturer against a Canadian distributor.
Procedural motions
Qi Mei v. Camillo Ricordi, Paul R. Sanberg, Cognizant Communication Corporation, Cell Transplantation and Robert Gross (August 4, 2009, T-1754-08, Federal Court) - Successfully had plaintiff's claim struck in its entirety. While the plaintiff was a Canadian citizen, there was no real and substantial connection with the Canadian Court: the plaintiff's research was undertaken in the U.S., the publication alleged to infringe the plaintiff's rights took place in the U.S. (though it was available via the Internet, that was a tenuous connection), and the defendant does not do business in Canada, had no connection to Canada, had not availed himself of Canadian law or attorned to the Court's jurisdiction, and had no assets in Canada.
Peak Innovations Inc. v. Meadowland Flowers Ltd., 2009 FC 661 - Successfully defended an appeal to the Federal Court, which upheld a Prothonotary's decision striking paragraphs from a statement of claim on the basis that a declaration of non-infringement of an industrial design registration is not a cause of action within the jurisdiction of the Federal Court.
Robbins & Myers Canada, Ltd. v. Torque Control Systems Ltd. et al., 2008 FC 332 - Successfully defended an appeal to the Federal Court, which upheld a Prothonotary's decision to order the removal of counsel for the defendants for conflict of interest, on the basis that defendants' counsel had acted as the patent agent in drafting and filing the application for the patent at issue. Notwithstanding that the patent application had subsequently been assigned, the Court held that there was a risk that confidential information would be used to the prejudice of the plaintiff with the Court looking beyond the strict solicitor-client relationship. The previous relationship between the responsible solicitor and the assignor established a clear nexus between the responsible solicitor and the plaintiff. Further, there was not sufficient evidence that steps had been taken by the law firm to ensure that confidential information in the responsible solicitor's possession would not be disclosed to other members of such firm.
Professional Involvement
Memberships
· Fellow, Intellectual Property Institute of Canada
· Member, International Trademark Association; member of the Young Practitioners Committee
· Member, Patent and Trade-mark Association of British Columbia
· Member, Canadian Bar Association
Speaking engagements
· Presentation on the recent Louis Vuitton/Burberry decision, Toronto Intellectual Property Group Anti-counterfeiting seminar, Toronto, September 2011
· "Counterfeiting: The Crime of the 21st Century," Canadian Bar Association, BC Intellectual Property and Technology Law Section, Vancouver, June 2010
· "Identifying Counterfeit Products - A Training Session for Law Enforcement," Vancouver, January 2010
· "Patent Disputes," The Continuing Legal Education Society of British Columbia, Vancouver, September 2009
· "Global Enforcement: Fighting Counterfeiting in the U.S., Canada, Europe and China," seminar co-hosted by Fulbright & Jaworski LLP, Smart & Biggar and the Association of Corporate Counsel's Greater New York Chapter, New York City and Toronto, June 2009
· "Counterfeiting and the Money Chase," Vancouver Chapter of the Association of Certified Fraud Examiners, Vancouver, January 2009
· "Copyright Law has No Place in the Modern iWorld," Great Debate jointly hosted by Boughton Law Corporation and the British Columbia Law Institute, Vancouver, October 2008
· "Counterfeiting: The Crime of the 21st Century," Vancouver Chapter of Association of Certified Fraud Examiners, Vancouver, October 2005
Teaching activities
· "Intellectual Property" (with Timothy P. Lo and J. Christopher Robinson), University of British Columbia Faculty of Law, Winter session, 2008 through 2010
Media
Publications
· "When looks matter: Trade dress protection in Canada," IP Connections, March/April 2012
· "Chanel S. de R.L. and Chanel Inc. v. Jiang Chu" - case brief in Canadian ReMARKS, November/December 2011
· "Summary judgment and summary trial: factors affecting availability of summary disposition in IP disputes under the new Federal Court Rules" (co-author: Elizabeth Farries), IP Perspectives, Autumn 2011; Lexology, November 17, 2011; International Law Office Intellectual Property Newsletter, December 19, 2011
· "BBM Canada v. Research In Motion Limited," Case Brief in Canadian ReMARKS, July/August 2011
· "Federal Court applies new summary trial rules" (co-author: Michael D. Manson), Litigation Commentary & Review, August 2011
· "Licensing your brand: it's all about control," Canadian ReMARKS, May/June 2011
· "Federal Court issues largest anti-counterfeiting award in Canadian history," Smart & Biggar/Fetherstonhaugh IP Update, June 2011; World Trademark Review, July 5, 2011
· "Supreme Court of Canada to hear trade-mark appeal," Trademark World, April 26, 2010; International Law Office Intellectual Property Newsletter, April 26, 2010; IP Perspectives, Spring 2010
· "Louis Vuitton awarded record-setting damages against counterfeiters," International Law Office Intellectual Property Newsletter, July 14, 2008; IP Perspectives, June 2008
· "Canada's proposed amendments to the Copyright Act" (co-author: Jeffery D. Morton), IP Connections, March/April 2008
· "Canadian courts get tough - recent trilogy of precedent-setting cases against counterfeiters" (co-author: Brian P. Isaac), International Law Office Intellectual Property Newsletter, March 17, 2008; IP Perspectives, February 2008
· "Government steps back from copyright reforms after widespread protests," World Copyright Law Report, January 2008
· "CRIA looks weakened as musicians speak out on copyright," World Copyright Law Report, 2006
· "Copyright board rules on ringtone tariffs," World Copyright Law Report, 2006
· "Appeal court refuses to ID file sharers but opens door to future suits," World Copyright Law Report, 2005
· "Counterfeiting and Online Auction Houses" (co-author: Michael D. Manson), The Lawyers Weekly, July 2005
· "The Internet: A Counterfeiter's Paradise?" (co-author: Michael D. Manson), paper presented at the International Trademark Association's CyberSpace Forum, September 2005
· Chapter on Litigation Process (co-author: Michael D. Manson), Carswell's Intellectual Property Disputes: Resolutions and Remedies (Dimock), 2002 (including periodic updates)