IPIC Member Profile: Richard Levy
This is the second edition of IPIC's member profile series on the UnscrIPted blog, which features a monthly interview with a Canadian IP professional to discuss their career accomplishments, interests and overall outlook on the IP profession. Richard Levy has been an IPIC member since 1986 and has served on multiple IPIC Committees, as well as being the Chair of the Alternative Dispute Resolution Committee. He is based in Montreal, where he runs his private practice, Levy IP Law and Dispute Resolutions.
IPIC: What encouraged you to pursue a career in IP?
RL: It began in 1983, when my law firm was doing due diligence for a client’s acquisition of the hockey assets of CCM Inc. and I was asked to review the company’s patents, industrial designs and trademarks for skates, jerseys and helmets. Now these were all products I had used myself, so my interest was keen. Some years later I was on the legal team defending a tri-ski sled manufacturer who was sued for passing off (look of the sled) and infringement of a patent for a runaway prevention device mechanism. My interest and confidence in IP grew. Soon, I was hired as General Counsel of CCM Hockey and its affiliate that made recreational products and toys. In those businesses, IP casts a long shadow and I emerged from that 7-year tenure knowing a great deal more about U.S. trademark, copyright, and patent law. When I decided to return to private practice in 1997, I was connected with a general law firm in Montreal that was looking for an IP specialist. I jumped at the chance.
IPIC: What is the most memorable case/client you’ve worked on/with and why?
RL: When snowboarding first became the rage, the company I worked for engaged a famous industrial designer to design plastic blow-moulded snowboards for the entry-price market. Our patent agent called to say he had surprising news. He had found a non-expired U.S. patent that appeared to cover all snowboards on the market- a “Pioneer Patent”. Since it had not been assigned to any company, including the well-known ones, this meant that if we bought it we would not infringe and, what's more, could earn a royalty for every snowboard sold in the US. Soon, I arranged to meet the inventor. I asked him what made him realize that having both feet strapped into bindings at the proper angles would allow the rider to better maneuver the board than just placing the feet on the board and steering with the help of a rope. His answer - that banking a helicopter as a pilot in Vietnam taught him about G-forces - made perfect sense and I made an offer to buy the patent. A few days later his patent agent called to tell me that the #1 snowboard company, which had earlier shown no interest in the patent, now “woke up” and a deal with it had been done! Before long, that company demanded royalties from us and every other snowboard maker. But they had to back off when many popular snowboard magazines eviscerated them for “acting corporate” in violation of the snowboard “dude” and “basement workshop” ethos. In the words of Alanis Morissette - “And isn't it ironic, don't you think?”
IPIC: How has being an IPIC member benefitted you?
RL: Amongst many benefits, my participation in the ADR Committee, which led to my becoming its Chair, has been the most rewarding. It allowed me to think more deeply about and write articles on mediation and arbitration for IPIC publications, as well as plan and participate in related webinars. Most of all, it introduced me to many IPIC members across Canada passionate about ADR, some of whom have since become good friends.
IPIC: Where do you see the industry headed over the next five years?
RL: I see the current trend towards speedier, more economical, and more practical resolution of disputes picking up momentum. This will be due to the efforts by the Federal Court to use online technology and the expertise of prothonotaries to streamline and mediate disputes. It will also be due to dispute channeling early on to online platforms and to private mediators who are experts in the relevant field of dispute.
IPIC: What is your biggest challenge as an IP professional?
RL: I would say creating a culture of mediation in Quebec and the rest of Canada. Not enough businesspeople and lawyers, outside of those who practice in the Federal Court, think of mediation as a credible route to resolution. This is partly because of the instinct to vilify the other party (“They will never see reason”), partly because some think it is a sign of weakness to suggest mediation, partly because many don’t understand how the process itself creates a momentum to settle that is simply absent in direct negotiations between lawyers.
IPIC: Which area of IP interests you the most, and why?
RL: In the area of trademarks, I am very interested in the use of psychology and other social sciences to cast light on issues such as inherent similarity of marks. For instance, it is settled law that the first part of a trademark carries the most weight in assessing confusion. Is there psychological data to back up this rule of thumb or is it simply dogma? This is the kind of question that psychologists excel in testing. Copyright is another area where scientific findings can be helpful. Faced with a U.S. claim that my client’s plastic pony head looked too similar to a best-selling plastic pony protected by copyright, I countered with an article by a famous evolutionary biologist that explained why the faces of baby mammals all shared common round features. [The opposing attorney then switched his focus to the similarity of the ponies’ thighs and rumps!]
IPIC: If you could change anything about the field of Canadian IP, what would it be and why?
RL: I would like to see harmonized legislation in Canada regarding trade secrets. Statutes exist in many other jurisdictions and such legislation here would be an improved guidepost for practitioners.
IPIC: What is something your peers wouldn’t know about you?
RL: I love solo style canoeing. I was lucky enough to attend a summer camp in Algonquin Park which taught solo canoeing as a highly developed skill. You perfected a medley of paddle strokes after hours of practice and many unscheduled tumbles into the lake! In my late teens, I spent many healthy summers as Head of Canoeing (and chief canoe re-racker). Today, at our country house on a Laurentian lake, I paddle my canoe up to the loons and ducks to watch them teach their toddlers the ways of the wild. I am also passionate (my wife would say “obsessed”) about researching the etymology of English words.
IPIC: Advice to those entering the profession?
RL: Be bold about asking for advice from more experienced colleagues; they will be flattered and often eager to share their interesting tales. It is never too late to polish up your knowledge of an IP area you practice but feel you could learn more about. Last year I enrolled in two of the four IPIC modules on patents, taught by IPIC members, and designed for those, unlike myself, planning to take the patent agent exams. I learned a great deal. Finally, become familiar with the benefits of IP mediation and arbitration. Your clients will thank you for that.