Brian Gray, MFCIArb

Barrister/Arbitrator/Mediator

Professions: Lawyer/ patent and trademark agent

Certifications: Have written the FCIArb exam and expect results in may. On the panel of arbitrators for WIPO and panel of mediators of the INTA.

Languages: English

Brian Gray Law
Toronto, ON, Canada

I was formerly a senior partner at Norton Rose Fulbright Canada. Prior to that I was National Head of the Intellectual Property Department at McCarthy Tetrault, and before that co-founder of the Intellectual Property Group at Blake Cassels. I have had experience in negotiation and settling disputes in intellectual property (patents, trademarks and copyright), technology, licensing, advertising and media matters for over 40 years.

Practice Areas

Intellectual Property, Technology, Software, Licensing, Trademarks, Advertising, Entertainment, Media, Art Law, Publishing, Copyright, Defamation, Small Technology Start-ups in pharmaceutical and other fields of technology.

Professional Experience

WIPO  Arbitrator;  INTA Panel of Trademark Mediators.  World Intellectual Property Organization (WIPO)  Advanced Workshop on Domain Name Dispute Resolution. WIPO Advanced Workshop on Arbitration Disputes, Basic Mediation Training by International Trademark Association, member IP Neutrals of Canada.  Lead counsel in many mediations and arbitrations concerning entertainment contracts, copyright infringement, patent infringement, trade-secrets, trade-libel, and including mediations which involved multiple patent lawsuits.  Mediator regarding contracts relating to software, entertainment, trademarks and licensing disputes.

I have advised some of the most creative people in the world such as James Cameron, creator of Avatar, and some of the most iconic brands such as Barbie and Heinz, Weight Watchers and American Eagle. I have represented e-commerce and telecom companies such as Nortel in licensing disputes. I have represented movie studios, publishers, banks, software developers, chemical companies and theatre companies. I have been counsel in some of the largest technology licensing disputes in Canada. Please see specific subject headings at www.briangraylaw.com for specific experience and including work in media, advertising, technology, almost all creative and technical industries, biotechnology and information technology.

I have been a judge of the Fox Intellectual Property Moot for ten years and recently a judge on the Vis International Commercial Arbitration Moot.

Arbitration Experience

Counsel in entertainment arbitrations concerning entertainment and movie distribution contracts and adviser to an International Chamber of Commerce arbitration in New York.

I was an arbitrator in a misleading advertising dispute conducted by Advertising Standards Canada,

I am on the panel of arbitrators for the World Intellectual Property Association.

I have been a mediator in a number of trademark disputes, and a computer licensing dispute. And I have been counsel in many cases that went to mediation regarding copyright, trademark and patent matters. I have been counsel in international patent arbitration concerning US and Canadian patents.

I have been an expert witness in two mediations concerning professional responsibility concerning IP practice.

Professional and Other Activities

Have given presentations on Arbitration and Mediation to the International Association for the Protection of Intellectual Property (AIPPI) and to the Intellectual Property Institute of Canada (IPIC). Many other papers and presentations on intellectual property matters to the International Bar Association, International Trademark AssociationFellow, Intellectual Property Institute of Canada (Member at various times of: Joint Liaison Committee for Patents, Trade-mark Legislation Committee, Trade Related Intellectual Property Committee, Patent Legislation Committee, Copyright Legislation Committee, Litigation Committee)Overseas Member of the Institute of Trade Mark Agents (UK)1989-2016,International Bar Association (co-chairman of Intellectual Property committee)Consistently ranked as one of the leading Intellectual Property Lawyers in Canada and have been listed as one of the top 500 lawyers in Canada multiple times. See details at www.briangraylaw.comOn the panel of arbitrators for World Intellectual Property Organization and panel of mediators of the International Trademark Association

Publications

Numerous papers given to  IP organizations and committees and many other papers too numerous to mention. See list at www.briangraylaw.com

Notably I wrote a chapter on Trademark Opposition for the National Judicial Institute to train judges on opposition matters.

I authored and edited a book “Industrial Design Rights, An International Perspective” Kluwer ((2020)  and contributed chapters in “The Law of Raw Data” by Czychowski and Nordemann Kluwer (2021) and a chapter in “The Art Collecting Legal Handbook” Boesch & Sterpi, Thomson Reuters (2016), new edition 2013  (Edward Elgar Publishing)

Academic Qualifications

Barrister and Solicitor

Patent Agent, Trade-mark Agent

Ontario Call to the Bar 1979

Trade-mark Agent Canada 1979

Patent Agent Canada 1980 Patent Agent United States 1980

B.A. (1971, Cornell University) Chemistry and History (Dean’s List for academic excellence 1971), Photography Editor the Cornell Daily Sun 1969-1971 and President of SDX Journalism Honorary.

M.A. (1974, Cornell University) Government, International Relations (Western European Studies Fellowship)

LL.B. (1977, University of Toronto)

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