Ken Clark

Partner Admitted to the Ontario Bar: 2001

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  • Certified Specialist (Intellectual Property: Patent, Trademark & Copyright), LSO
  • Registered Trademark Agent (Canada)

 

  • Bio
  • Awards & Recognition
  • Professional Involvement
  • Representative Matters
  • Selected Speaking Engagements
  • Selected Publications
  • Insights
  • Education

Ken is driven to help his clients resolve their problems, particularly the ones for which it seems there is no answer. He has a reputation for creative solutions that provide both peace of mind and a foundation for action. He strives to identify the underlying issues of a problem, not just the immediate need that is being presented. With a background in engineering and broad experience as a barrister and solicitor in IP, technology and energy law matters, Ken excels at articulating legal concepts and technical matters in a way that is easy for clients and judges to understand. 

Ken is a member of the firm's Intellectual Property, Litigation & Dispute Resolution, Corporate/Commercial, Energy, Technology and Telecommunications Groups. He is a registered Canadian trademark agent. Ken’s practice focuses primarily on intellectual property law enforcement, including copyright, patents and trademarks, and related areas such as internet law. Ken litigates copyright, patent and trademark disputes, and has a particular interest in mass copyright enforcement. He has appeared at the Supreme Court of Canada and at all levels of the Federal Court.

On the solicitor side, Ken’s practice includes trademark prosecution, intellectual property licensing and assistance with strategic IP planning for new and existing businesses.

Having worked as a mechanical design engineer and a computer systems administrator prior to becoming a lawyer, Ken has a wide variety of technical knowledge and expertise. Some of his areas of particular interest and familiarity include computer technology and systems, telecommunication and the Internet and network systems.

Awards & Recognition

  • Recognized in The Canadian Legal Lexpert Directory as a leading lawyer in the area of Intellectual Property
  • Shortlisted for the Practitioner of the Year Award (Copyright) by Managing IP Awards 2024
  • Certified Specialist in Intellectual Property Law (Patent, Trademark and Copyright) by the Law Society of Ontario
  • Recognized in World Trademark Review 1000: The World’s Leading Trademark Professionals as a leading individual in prosecution and strategy
  • Recognized in Managing Intellectual Property's IP STARS Handbook as a Trademark Star - Canada
  • Recognized in Who’s Who Legal: Trademarks as a leading Canadian trademark lawyer
  • Registered Trademark Agent (Canada)

Professional Involvement

Memberships

  • AIPPI Canada
  • Intellectual Property Institute of Canada (Fellow)
  • International Trademark Association
  • Licensing Executives Society
  • The Advocates' Society
  • Canadian Bar Association
  • Ontario Bar Association

Representative Matters

Represented The Niagara Herbalist Ltd. in a trademark opposition against its Leaf Logo.

Represented Voltage Holdings, LLC in a copyright infringement case in regard to internet subscribers using BitTorrent software to make the film “Revolt” available online without authorization.

Represented Voltage Pictures, LLC in a motion to certify a class action against individuals allegedly involved in copyright infringement by uploading and downloading films without authorization.

Represented Ask Cosmetics Inc. in a trademark opposition against its “PURE DEVOTION” mark.

Represented John Schooten & Sons Custom Feedyard Ltd. in a trademark opposition in regard to the “NIULONG & Design” mark.

Represented TBV Productions, LLC in a copyright infringement case in regard to illegal distribution of the movie “I Feel Pretty” over the internet.

Represented WiringPro Corporation Inc. in a trademark opposition against its “MAKE THE CONNECTION” mark.

Selected Speaking Engagements

"Death by a Thousand Cuts: Modern Mass Copyright Enforcement," Toronto Intellectual Property Group, April 18, 2024.

"Copyright Litigation and Procedural Journey from Tip to Tail," IPIC-McGill Copyright Master Class 2023, July 25, 2023.

The Harold G. Fox Moot, February 19-20, 2021.

“Copyright Law Update,” IPIC Year in Review in IP Law, February 16, 2021.

"Intellectual Property: Avoiding the Pitfalls," Aird & Berlis LLP Technology Law Webinar, April 2017.

"Canada's Anti-Spam Legislation (CASL) - Are You Prepared for July 1?," Aird & Berlis LLP Technology Law Webinar, April 2017.

"Top Ten Intellectual Property Mistakes," Aird & Berlis LLP IP Law Seminar, January 2017.

"Technology and Intellectual Property Issues for Startup Businesses," Aird & Berlis LLP Technology Law Webinar, November 2015.

Dealing with Online Anonymous commenters, Aird & Berlis LLP Municipal Law Seminar 2011.

"Retail Businesses: Grey Market and Counterfeit," 14th Annual Anti-Counterfeiting Fraud Conference, December 1 – 4, 2010.

"'Official Marks' for Municipalities: How to Protect Your Place Brand," Aird & Berlis LLP Municipal Law Seminar: Knowledge is Power – Essential Information for Municipalities, October 18, 2009.

"What You Own, What You Don't and What You Should," Aird & Berlis LLP Technology Law Seminar: What Every Business Should Know, February 25, 2009.

Selected Publications

"Use It or Lose It: Summary Trademark Expungement in Canada," The Spotlight, February 23, 2024.

"Too Byosimilar? Federal Court Finds Trademark for BYOOVIZ Infringes BEOVU," The Spotlight, February 6, 2024.

"Transportation Companies Beware: Shipping to Counterfeiters With Notice Could Result in Criminal Sanctions," The Spotlight, October 11, 2023.

"Ken Clark Has Successfully Sued Thousands of Canadians for Streaming Pirated Movies. Is He a Troll — or a Hero?" featured, Toronto Star, February 11, 2023.

"Why Those AI-Generated Portraits All Over Social Media Have Artists on Edge," quoted, As It Happens, CBC Radio One, December 9, 2022. 

"The Beginning of the End of Online Piracy in Canada? Federal Court of Appeal Approves Site-Blocking Order: The Consequences," The Spotlight, June 7, 2021.

"The Swiss Shield: A Trademark Registration Is a Defence to Damages Even if Later Invalidated," The Spotlight, December 14, 2020.

"The Federal Court of Appeal Upholds $640 Million Accounting of Profits Award for Patent Infringement," The Spotlight, September 22, 2020.

"Retrograde in Taurus: Ninth Circuit Upholds Judgment That Stairway to Heaven Did Not Infringe Taurus," The Spotlight, April 7, 2020.

"The Supreme Court of Canada’s Clarifies Standard of Review for Trademark Appeals," The Spotlight, February 28, 2020.

"Changes to Canada’s Trademarks Act," The Spotlight, June 4, 2019.

"The Dawning of a New Dark Age for Europe," The Spotlight, April 5, 2019.

"The Competition Bureau Publishes Final Version of its Revised Intellectual Property Enforcement Guidelines," The Spotlight, March 22, 2019.

"“BIG MAC” Attack!" The Spotlight, January 31, 2019.

"What Do You Mean I Don’t Own My Own Logo?" The Spotlight, November 19, 2018.

"Will the EU Copyright Directive Break the Internet?" The Spotlight, November 12, 2018.

"IP Budget 2018 – Changes to Canada’s IP Laws," The Spotlight, November 7, 2018.

"Get into the Octave-gon with the New MMA," The Spotlight, October 16, 2018.

"SLAPP Fight!: Ontario Court of Appeal Clarifies SLAPP Legislation," The Spotlight, October 10, 2018.

"Tales from the Crypt(ocurrency)," The Spotlight, October 9, 2018.

"Court of Appeal Sends “Stairway to Heaven” Back to Trial," The Spotlight, October 2, 2018.

"The Dangers of Discount Patent Services - You Get What You Pay For," The Spotlight, August 22, 2018.

"The Value of a Copyrighted Photograph Is Not Necessarily in the Eye of the Beholder," The Spotlight, July 19, 2018.

"Quebec Court Denies Exclusive Use Of Geographic Location in Car Dealership’s Name," The Spotlight, June 18, 2018.

"Google Fails to Amend Canadian De-indexing Injunction Despite California Court Order," The Spotlight, April 23, 2018.

"U.S. Court of Appeals Finds That the Lines Remain Blurred," The Spotlight, April 20, 2018.

"Human Rights Complaint on “Chief Wahoo” (Cleveland Indians) Logo to Proceed – Update on Law of Controversial Sports Logos," The Spotlight, February 8, 2018.

"Cannabis Trademarks Remain Unregistrable in U.S. Despite Federal Circuit’s Ruling in Re: Brunetti," The Spotlight, January 31, 2018.

"The Future of the Internet: Less "Walking Dead" and More "House of Cards"? The FCC and CRTC Consider Implications of Data Caps and Differential Pricing," The Spotlight, September 22, 2016.

"How the (Copyright Test) Was Won: Led Zeppelin Victorious in "Stairway to Heaven" Suit," The Spotlight, July 27, 2016.

"Blockchain and Smart Contracts: The Future of Doing Business?" The Spotlight Newsletter, June 9, 2016. 

"Music Industry Rocks the Copyright Boat," The Spotlight Newsletter, June 7, 2016.

"The Copyright Act Reformed – Provisions of the Copyright Modernization Act Proclaimed into Force," co-Author, Lexology, November 12, 2012.

"The Copyright Act Reformed – A Brief Look at Bill C-11," co-Author, Lexology, July 30, 2012.

"ICANN Releases List of New Proposed Top-Level Domain Names," co-Author, Lexology, June 26, 2012.

"Top Court Rules ISPs are Not Broadcasters," co-Author, Lexology, March 1, 2012.

"Googlers and Gmailers, Be(a)ware! Google to Implement New Privacy Policy," co-Author, Lexology, February 29, 2012.

"Proposed Introduction of Internationalized Domain Names in the Canadian .ca Registry," co-Author, Lexology, December 15, 2011.

"Century 21 v. Rogers: A Look at Online Copyright Infringement and Breach of Contract," co-Author, Lexology, September 21, 2011.

"The Canadian Telecom Saga," co-Author, A&B Blawg Briefs, March 16, 2011.

"Product Labelling with Expired Patent Numbers Can Lead to Lawsuits in the U.S.," co-Author, A&B Blawg Briefs, September 3, 2010.

"LimeWire and its CEO taken to the canvas. Score one pyrrhic victory for the RIAA," A&B Blawg Briefs, May 20, 2010.

Education

  • LLB and BCL (Great Distinction), McGill University, 1999 
  • B.A.Sc. (Mechanical Engineering) (First Class Honours and Dean's Honour List), University of Waterloo, 1992