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Stephen I. Selznick Picture

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Partner

OfficeToronto

t: 416 860 6883
f: 416 642 7147
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Suite 2100, Scotia Plaza
40 King Street West
Toronto, ON  M5H 3C2
Canada

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Expertise

Year of Call

Ontario, 1979

Education

LL.B., University of Western Ontario, 1977

B.A., University of Toronto, 1974

Stephen I. Selznick

Stephen Selznick is a partner in the firm’s Intellectual Property Group. His practice is concentrated on corporate and commercial structuring, reorganizations and litigation, involving intellectual property causes.

Stephen represents a multitude of domestic and foreign clients in knowledge-based industries, including advertising, marketing, motion picture, television, publishing, recording, theatre, multimedia, electronics, computer software development to systems design and integration, telecommunications, remote sensing and emerging technologies.

Stephen is an adjunct professor of law at Osgoode Hall Law School and has been a guest lecturer at York University’s Faculty of Fine Arts, Queen’s University Faculty of Law, University of Toronto Faculty of Law, Algonquin College (Ottawa), Ryerson Polytechnical Institute (now Ryerson University) and The George Brown College of Applied Arts and Technology.

Stephen has extensive experience with the purchasing, financing, selling, licensing and restructuring of all forms of intellectual property, including re-organizations, in-bound and out-bound licensing agreements, research and development agreements and co-branding agreements. Has appeared before the Ontario Superior Court, the Commercial List of the Ontario Superior Court, Ontario Court of Appeal, Federal Court, Federal Court of Appeal and numerous tribunals, in intellectual property disputes. Representative cases include:

  • Represented Oracle Corporation in the reclamation of its intellectual property rights in its retail and database management systems on the insolvency of the T. Eaton Company (then one of Canada’s oldest and largest retailer)
  • Represented the producers of Sir Andrew Lloyd Webber’s Cats and Joseph and the Amazing Technicolor Dreamcoat in both long run sit-down Toronto productions and subsequent North American tours of those theatrical productions
  • Represented the successful bidders for the management of the Elgin and Winter Garden Theatre Complex in Toronto, Ontario, in their tender bid, financing and ongoing operation of that facility
  • Represented Metro-Goldwyn-Mayer Studios Inc. in their financing and productions of the Seahunt and Outer Limits television series revivals
  • Represented BFC Berliner Film Companie Studio GmbH, BAF Berlin Animation Film GmbH und Co. Produktions KG in the international production service multi-party outsourcing of computer enhanced graphics and animation for the feature length theatrical production of Happily N’Ever After 
  • Cineplex Odeon Corp., Re, 26 CBR (4th) 21, 2001 CanLII 28465 (ON SC) — represented Sir Andrew Lloyd Webber and his Really Useful Theatre Company in the insolvency restructuring of Cineplex Odeon Corp. and the reclamation of their rights in Phantom of the Opera, Joseph and the Amazing Technicolor Dreamcoat and other productions
  • Evergreen Canada-Israel Investments Limited v Toronto-Dominion Bank, 1998 CanLII 18458 (CA TMOB), Evergreen Canada-Israel Investments Limited v Toronto-Dominion Bank, 1998 CanLII 18471 (CA TMOB), and Evergreen Canada-Israel Investments Limited v Toronto-Dominion Bank, 1998 CanLII 18480 (CA TMOB) — successfully represented Evergreen Canada-Israel Investments Limited in its series of claims against Toronto-Dominion Bank (now TD Bank) for the latter’s use of EVERGREEN as a trademark, including the appeal of the decision launched by TD Bank
  • Oracle Corporation v Oracle Service Networks Corporation, 1999 CanLII 19583 (CA TMOB) — successfully represented Oracle Corporation in its claims against Oracle Service Networks Corporation’s adoption of ORACLE MEDIA SERVER as a trademark in Canada
  • Livent Inc., Re (1998) 45 BLR (2d) 249 — represented Sir Andrew Lloyd Webber and his Really Useful Theatre Company in the insolvency restructuring of Livent Inc. and the reclamation of their rights in Phantom of the Opera, Joseph and the Amazing Technicolor Dreamcoat and other productions
  • Hemosol Corp. (Re), 22 BLR (4th) 58, 2006 CanLII 63699 (ON SC) — represented the purchaser of intellectual property rights in the insolvency of Hemosol Corp., then one of the world's largest blood product fractionators; including the trial of the issues of the scope of in-bound and out-bound intellectual property rights hold by the insolvent Hemosol Corp.
  • Entral Group International Inc. v. MCUE Enterprises Corp., 2006 FC 671 (CanLII) — represented Entral Group as representative plaintiff on behalf of a consortium of US motion picture and recording companies in their successful claim against karaoke copyright infringers and the principals of the corporate infringers
  • Mcue Enterprises Corp. v. Entral Group International Inc., 2006 FCA 289 (CanLII) (Federal Court of Appeal) — successfully represented Entral Group as representative plaintiff on behalf of a consortium of US motion picture and recording companies in the appeal launched by karaoke copyright infringers and the principals of the corporate infringers
  • Represented the international producer and rights holder to the stage play Lord of the Rings in connection with the structuring, production, financing and merchandising of the inaugural $27,000,000 stage production of Lord of the Rings
  • Air Miles International Trading BV v Sea Miles LLC, 2009 CanLII 90465 (CA TMOB) — represented Air Miles International Trading B.V. in its successful clams against SeaMiles LLC and the latter’s improper adoption of the trademark SEA MILES in association with a consumer loyalty coalition marketing program
  • SeaMiles LLC v. Air Miles International Trading B.V., 2009 CanLII 82135 (CA TMOB), SeaMiles LLC v. Air Miles International Trading B.V., 2009 CanLII 82157 (CA TMOB), SeaMiles LLC v. Air Miles International Trading B.V., 2009 CanLII 82145 (CA TMOB), SeaMiles LLC v. Air Miles International Trading B.V., 2009 CanLII 82150 (CA TMOB), SeaMiles LLC v. Air Miles International Trading B.V., 2009 CanLII 82148 (CA TMOB), SeaMiles LLC v. Air Miles International Trading B.V., 2009 CanLII 82149 (CA TMOB), SeaMiles LLC v. Air Miles International Trading B.V., 2009 CanLII 82151 (CA TMOB), SeaMiles LLC v. Air Miles International Trading B.V., 2009 CanLII 82153 (CA TMOB), SeaMiles LLC v. Air Miles International Trading B.V., 2009 CanLII 82154 (CA TMOB) — successfully represented Air Miles International Trading B.V. is the defence of its trademark portfolio in claims brought against it by SeaMiles LLC
  • Air Miles International Trading B.V v. TaxiMiles Inc., 2010 TMOB 62 (CanLII) — represented Air Miles International Trading B.V. in its successful clams against TaxiMiles Inc. and the latter’s improper adoption of the trademark TAXI MILES in association with a consumer loyalty coalition marketing program
  • Air Miles International Trading B.V. v. Deutsche Lufthansa AG, 2010 TMOB 198 (CanLII) — represented Air Miles International Trading B.V. in its successful clams against Deutsche Lufthansa AG and the latter’s improper adoption of the trademark MILES & MORE in association with a consumer loyalty coalition marketing program
  • Air Miles International Trading BV v Rent Check Corporation, 2011 TMOB 253 (CanLII) — represented Air Miles International Trading B.V. in its successful clams against Rent Check Corporation and the latter’s improper adoption of the trademark RENT MILES in association with a consumer loyalty coalition marketing program
  • Air Miles International Trading BV v Cathay Pacific Airways Limited, 2012 TMOB 80 (CanLII) — represented Air Miles International Trading B.V. in its successful clams against Cathay Pacific Airways Limited and the latter’s improper adoption of a group of five ASIA MILES trademarks (in word and design formats) in association with a consumer loyalty coalition marketing program (decision currently under appeal by Cathay Pacific Airways Limited)
  • Successfully represented Air Miles International Trading B.V. in unreported cases against third party use of AWARD MILES, BONUS MILES, NEVER MISS A MILE, MILES METER, MORE MILES, GIFT MILES, ASIA MIES TOP UP, CARE MILES, E MILES, LIFEMILES, HEALTH MILES, NO HASSEL MILES, JETSMILES, MAXIMILES, EYE MILES, CYCLEMILES, RIDE MILES, PREMIER MILES, THE BLUE MILE, TV MILES, MORE MILES MORE MEMORIES, PHONEMILES, ROAD MILES, MILE POSTS, CRUSE MILES, BELAIR MILES, HOTEL MILES, SLEEP MILES, STAYMILES, PERSONAL MILES, DOCUMILES, CLICKMILES, TRAVEL LODGE MILES, CRUISE MILES, EUROMILES, SUPERMILES, AIRPOINTS and WORLDMILES
  • Represented a major market innovator of shopping cart based and wireless value added retail shopping solutions in the development and implementation of an international intellectual property protection and enforcement strategy for their novel apparatus, processes and business methods, and in in-bound and out-bound licensing, manufacturing, service agreements and rights enforcement
  • In Re Summitt Energy Management Inc. EB-2010-0221, In Re Summitt Energy Management Inc. EB-2011-0316 and Summitt Energy Management Inc. v. Ontario Energy Board, 2013 ONSC 318 (Ontario Div Court) (CanLII) — represented energy supplier and retailer Summitt Energy Management Inc. in the defence of agent conduct claims before the Ontario Energy Board and the Ontario Divisional Court
  • Kraft Canada Inc. v. Summitt Energy Management Inc. and Summitt Energy LP, Ontario Superior Court Acton No. CV10-396975 — represented Summitt Energy Management Inc. and Summitt Energy LP in the successful resolution of misleading representation allegations in the commercial sale of energy
  • Part of a team representing Intel Corp. on its bid for the $4 billion Nortel wireless patent portfolio in the cross-border Canadian and US insolvency and restructuring of Nortel Corporation
  • Part of a team representing a consortium of US motion picture and recording companies in the successful reclamation of their intellectual property portfolios on cross-border Canada-US insolvency of Blockbuster Video
  • Hobby Star Marketing Inc. v. Zuffa LLC and Reed Exhibitions Limited Federal Court Action No. T-720-11 — represented Defendants Zuffa LLC (the promoters of UFC – Ultimate Fighting Championships – and one of the worlds largest purveyors of mixed martial arts events) and Reed Exhibitions Limited, a subsidiary of Reed Elsevier, in the successful defence and resolution of multimillion dollar claims advanced by the Plaintiff in connection with the Defendants' use of the term FAN EXPO CANADA
  • Part of a team representing Apogee Enterprises, Inc. in its $52 million acquisition of Toronto-based aluminum fabricator Alumicor Limited, including the target’s intellectual property and trade secret portfolio
  • The Devil's Martini, Inc. v 1713703 Ontario Inc., 2014 TMOB 69 (CanLII) and The Devil's Martini, Inc. v 1713703 Ontario Inc., 2014 TMOB 68 (CanLII) — successfully represented the trademark applicants in these two Trade-mark Opposition Board proceedings, enabling the Applicants to advance their trademarks DIRTY MARTINI and DIRTY MARTINI (& design) to registration
  • Part of a team that represented Ecosynthetix Inc., a developer of biologic polymers, in its $100 million initial public offering
  • Part of a team that representing the Unsecured Creditors Committee in the billion dollar cross-border Canada and US insolvency of Terrastar Networks Inc., a provider satellite retransmission facilities in the telephony and digital communications industry, and the sale of assets of the insolvent to Dish Networks
  • Part of a team representing Warner Home Video and its related entities in the negotiation, conclusion and securitization of its worldwide outsourcing of the disc and media production, packaging and physical distribution of its film, television and music library to Technicolor
  • Represents Canadian Tire Corporation, Limited in the insolvency and restructuring of Piloti, Inc. and the acquisition of the latter’s shoe patent portfolio and trademark family
  • Represents Canadian Tire Corporation, Limited, one of Canada’s oldest and largest retailers in the defence of third party patent and trademark infringement claims

Stephen acted as a consulting editor of Paul Sanderson’s book “Musicians and the Law in Canada.” He is a frequent speaker on intellectual property matters, has spoke on cross-border enforcement of intellectual property rights for the American Bar Association, has presented and published papers on "grey" market issues before the Canadian Cosmetic, Toiletry and Fragrance Association and the International Anti-Counterfeiting Coalition, on computer crime and fraud before the Institute of Internal Auditors, on copyright Reform for The Society of Composers, Authors and Publishers of Canada, on enforcement of copyrights and trademarks, and on e-discovery issues for IntelPro (Thomson & Thomson) and Federated Press educational symposiums, on e-discovery and digital rights issues for Federated Press, and on new media financing at the Banff International Television Festival and New Media Institute.

ACHIEVEMENTS ACHIEVEMENTS
  • Dean's Honour List (University of Toronto)
  • Dean's Honour List (University of Western Ontario)
  • Arthur Wentworth Roebuck Prize (Law Society of Upper Canada)
  • Certified Licensing Professional
  • Martindale-Hubbell, AV DistinguishedTM rating
  • American Registry, America's Most Honored Professionals
  • Named one of Canada's top lawyers in 2012 by Lawyers Weekly's "In-House Counsel Magazine"
  • Has served as Canadian representative on the Appeals, Ethics and Discipline Committee of Certified Licensing Professionals licensing body

 

ASSOCIATIONS ASSOCIATIONS
  • ABA Forum on Communications Law, ABA Patent, Trademark and Copyright Law Section, and the ABA Science and Technology Section
  • American Bar Association (Associate Member)
  • American Intellectual Property Law Association
  • Association Littéraire et Artistique Internationale
  • Beverly Hills Bar Association
  • Canadian Bar Association
  • Certified Licensing Professional (CLP) Program (Co-Chair, Examination Development and Maintenance Committee)
  • International Bar Association
  • Intellectual Property Institute of Canada (Associate)
  • International Trademark Association
  • International Trademark Association Mediators Network
  • Licensing Executives Society (USA and Canada)
  • Ontario Bar Association
Publications, Newsletters and Articles Publications, Newsletters and Articles
Conferences, Speaking Engagements, Events Conferences, Speaking Engagements, Events
PRO BONO/COMMUNITY INVOLVEMENT PRO BONO/COMMUNITY INVOLVEMENT
  • Former Chairperson of the Small Business Administration Advisory Committee to the faculty and Board of Governors of The George Brown College of Applied Arts and Technology 
  • Former member of the Multi Media Advisory Panel for New Media Institute at the Banff Centre
  • Board of Directors of the Community Hebrew Academy of Toronto (CHAT), one of the world's largest multi-campus Jewish high schools
  • Bridge Officer of the Canadian Power and Sail Squadron, the largest Canadian recreational boating association
  • Former Treasurer and Board member for the Bialik Hebrew Day School in Toronto