Picture
Picture
Name and Title
Bill Northcote
Partner
Partner
Year of Call

1982 (Ontario)

Memberships
  • Canadian Bar Association
  • Canadian Tax Foundation
Publications
Description

Bill Northcote Head ShotAn American court has ruled there can't be any monkey business involved in the country's copyright laws, says Toronto business lawyer Bill Northcote.

The U.S. Court of Appeals for the 9th Circuit recently found that American copyright laws do not allow a monkey to hold copyrights, says Northcote, chair of Shibley Righton LLP's business law group. 

"From a copyright perspective, the most important point in the case is that the monkey doesn't have statutory standing," Northcote says. In other words, copyright law only covers humans.

The two sides battling over the photos reached a settlement in September and asked the 9th Circuit to dismiss the case and throw out a lower court ruling in favour of the photographer whose camera was used to take the photographs, according to an Associated Press story. 

"The decision really says they want the litigation to proceed," Northcote tells AdvocateDaily.com.

This is an excerpt from an article that appeared on AdvocateDaily.com.

Please click here to read the rest of the story.

Date_Published
2018-05-03
Description

Bill Northcote Head ShotA large chain of taco restaurants will have a tough time trying to keep others from using “Taco Tuesday,” Toronto business lawyer Bill Northcote tells Metro News.

Claiming it has a trademark on the phrase, the fast-food giant recently told a Calgary taco restaurant to stop using it to advertise its weekly half-priced specials, says the publication.

Northcote, chair of Shibley Righton LLP’s business law group, says the fast-food giant doesn't actually have a registered trademark on “Taco Tuesday” — just the Tuesday part.

“The word taco was disclaimed because it is descriptive of the services (selling tacos),” he says.

According to the report, the chain trademarked “Taco Tuesday” in 1997. The company sent a cease-and-desist letter to the Calgary restaurant last Friday, demanding they stop using the slogan. The company plans to comply, says the report.

Northcote and other trademark lawyers say there’s a good chance the chain wouldn’t win if a legal challenge were to be launched.

This is an excerpt from an article that appeared on AdvocateDaily.com.

Please click here to read the rest of the story.

Date_Published
2018-02-16
Description

Bill Northcote Head ShotThe Federal Court of Appeal (FCA) “got it right” in resolving the issue of trademark confusion in a case involving a Canadian luggage company and a Swiss firm, Toronto business lawyer Bill Northcote tells The Lawyer’s Daily.

As the article notes, the FCA ruled that several of the Canadian company’s logos would be “likely to cause confusion” with the trademark of the Swiss company, which specializes in goods marked with a symbol resembling the cross on the Swiss flag.

“To me, there is a likelihood of confusion to the casual observer, which is, of course, the test,” says Northcote, chair of Shibley Righton LLP’s business law group.

“I can understand why [the Swiss company] pursued this, because [the Canadian company] was infringing on their mark and attempting to appropriate part of the goodwill associated with it.”

In an earlier decision, a Federal Court trial judge ruled there was a lack of resemblance between the marks that was not likely to confuse consumers and thus no “passing off” of the Canadian company’s bags as the Swiss company’s product.

As The Lawyer’s Daily reports, the decision was appealed, with the Swiss company arguing that the judge erred in concluding there was no likelihood of confusion and no passing off. The FCA agreed unanimously, saying the Canadian company’s marks would likely cause confusion with the Swiss product in the “mind of a casual consumer in somewhat of a hurry … [and] does not pause to give the matter any detailed consideration or scrutiny.”

This is an excerpt from an article that appeard on AdvocateDaily.com.

Please click here to read the full story.

Date_Published
2017-11-28
Description

Head Shot Bill NorthcoteA Federal Court decision that backs a copyright collective in its battle to collect royalties from an Ontario university cannot be ignored by Canadian post-secondary institutions, says Toronto intellectual property lawyer Bill Northcote.

“It demonstrates that copyright holders of, presumably, mostly academic works are getting more aggressive in terms of enforcing their rights and getting proper compensation,” says Northcote, a partner with Shibley Righton LLP.

Justice Michael Phelan ruled in favour of a collective that administers reproduction rights for Canadian literary works and ordered the university to pay damages for the millions of pages of materials that the university's staff copied for coursework.

The university argued that its copying of book excerpts, articles, videos and other materials fell within the “fair dealing” exceptions allowed for educational users under s. 29 of the Copyright Act, and that it had developed its own “Fair Dealing Guidelines.”

But Phelan found that the university’s use of the material did not fall under the law’s fair dealing exceptions. Its own “Fair Dealing Guidelines” are “not fair in either their terms or their application,” he wrote. The university made “no real effort” to review or enforce its guidelines, he added.

This is an excerpt from an interview with AdvocateDaily.com.  Please click here for the complete transcript.

Date_Published
2017-10-18
Description

The fight over the ownership of a monkey selfie could soon be resolved as the parties pursue an out-of-court settlement, says Toronto business lawyer Bill Northcote.

“That could leave some of the legal issues unresolved, but to most copyright lawyers, even without litigation, this was a settled point,” says Northcote, chair of Shibley Righton LLP’s business law group.

“The trial court already decided that copyright cannot be owned by an animal,” he tells AdvocateDaily.com. “That decision will be persuasive, although not binding, on another trial court hearing.”

But if the appeal court had heard the case to completion, the decision would be binding on other American trial courts and would be persuasive in some other jurisdictions. Northcote suspects PETA (People for the Ethical Treatment of Animals) was afraid it wouldn’t win.

This is an excerpt from an article that appeared on AdvocateDaily.com.  To read the complete story please click here.

Date_Published
2017-08-24
Description

It is not unusual for law firms to negotiate split-fee agreements that account for lawyers moving on after they have worked on contingency fee matters, Toronto business lawyer Bill Northcote tells Law Times.

“Some firms have got very elaborate compensation systems that reflect the division of an award,” says Northcote, chair of Shibley Righton LLP’s business law practice group.

“Usually, they’re worked out internally without much public scrutiny.” 

However, as Law Times reports, one Toronto litigation and corporate law boutique is suing a former non-equity partner in the firm for $9 million after a dispute over a contingency fee client. The law firm alleges the lawyer breached his contract and fiduciary duty to the firm, claiming he “improperly solicited” some of its clients when he resigned in 2015, including a property development company.

The lawyer denies the claims and is demanding $1.1 million from the firm, alleging it owes him for work he did on the file, says Law Times.

Last year, the law firm also sued the property development company, seeking payment for its success at a 2014 trial. The lawyer won intervener status, asking the court to order any funds received by the firm to be paid into court for his benefit, says the article.

This article appeared on AdvocateDaily.com.  Please click here for the complete story.

Date_Published
2017-02-27
Description

A Toronto litigation and corporate law boutique has sued a former partner in the firm for $9 million after a dispute over a contingency fee client.

BTZ alleges Nguyen breached his contract and fiduciary duty to the firm when he “improperly solicited” some of its clients to come with him when he resigned in early 2015, including Indcondo Building Corporation, a property development company with a $20-million claim against its one-time business partner.

But in a statement of defence and counterclaim also filed with the court, Nguyen denies the claims and demands $1.1 million from BTZ, alleging the firm still owes him for work he did on the Indcondo file, as well as a 25-per-cent cut of any fees the firm collects on the matter.

None of the allegations in either document have been proven in court.

Nguyen tells Law Times that “my lawyer has advised me not to comment while the litigation is pending;” a sentiment echoed by BTZ’s co-managing partner Peter Brauti.

“As this matter is currently before the courts, it is our practice not to comment on the litigation,” he said in a statement.  

Indcondo retained Nguyen on a contingency fee basis in 2007 while he was still a Toronto-based sole practitioner to help it collect on an $8-million judgment it had achieved following a shareholder dispute with former business partner David Robin Sloan. Although the judgment was delivered back in 2001, Indcondo had run into trouble enforcing it thanks to Sloan’s bankruptcy and subsequent discharge. But with interest accumulating at a rate of 15 per cent per year, by 2015, the value of the judgment had ballooned to more than $20 million.

This article appeared on LawTimesNews.com.  To read the complete story please click here.

Date_Published
2017-02-21
Description

In certain matters, clients may benefit from a co-counsel setting where lawyers tackle different aspects of the case — but the success of these arrangements depends on mutual respect and compromise, Toronto lawyers Armand Conant, Bill Northcote and Joel Berkovitz tell Lawyers Weekly.

As an example, Conant, partner and head of the condominium law group at Shibley Righton LLP, points to a complicated condominium matter where it was clear that drawing in a small team of colleagues in a co-counsel setting to tackle different aspects of the job would be beneficial to the client.

“We needed their skill sets,” Conant says of the decision to bring in Northcote, chair of Shibley Righton’s business law practice group, and Berkovitz, an associate with the firm who practises business and condominium law.

This article appeared on AdvocateDaily.com.  Please click here for the full story.

Date_Published
2016-12-12
Description

Co-counsel arrangements are common in many areas of practice, from criminal trials and litigation, where there’s significant court work, to complicated paper-laden negotiations.

But can too many hands on deck sink the ship? Insiders who have worked collaboratively with other lawyers recommend respecting boundaries, working as a team and striving for harmony all while focusing on the needs of the client.

Armand Conant, a partner at Shibley Righton in Toronto, recalls a complicated condominium matter where it was clear that client interest would benefit from drawing in a small team of colleagues in a co-counsel setting to tackle different aspects of the job

This article appeared on LawyersWeekly.ca.  Please click here for the full story.

Date_Published
2016-11-25
Description

As it can be daunting to take on the role of repairing a dysfunctional executive team, a new CEO should start by ensuring that those in the C-suite have clear roles and responsibilities, Toronto business lawyer Bill Northcote tells Succession Planning, a special supplement published by The Bottom Line and Lawyers Weekly. 

“A lack of clarity can lead to conflict and competition. Infighting and politicking are signs of dysfunction,” says Northcote, chair of Shibley Righton LLP’s business law practice group.

“There will always be some competition,” he says, “but the role of the CEO is to get strong people to perform and co-operate" and to identify stakeholder groups and their interests to get a full understanding of how the organization works.

This article appeared on AdvocateDaily.comPlease click here to read the full story.

Date_Published
2016-09-02
Description

As law firms grow to meet client needs, they often consider joining a firm network or expanding internationally, but Toronto business lawyer Bill Northcote poses an interesting question in Lawyers Weekly: are networks and global firms competitors, or do they serve separate markets and clientele?

As Northcote, chair of Shibley Righton LLP’s business law practice group says in the article, the 18 largest law firm networks each include more than 7,000 lawyers and have members practising in 80 to 100 separate jurisdictions. The largest law firm is Dentons, which reportedly has some 7,000 lawyers in 52 jurisdictions.

While the two concepts often compete for the same business, Northcote says, there are distinct differences.

“Law firm networks are generally non-exclusive, informal, relatively inexpensive to participate in and have a modest number of staff and overhead. Within these networks there is considerable diversity in size, geographic scope, membership fees and non-legal resources available to members,” writes Northcote.

This article was published on advocatedaily.com,  please click here for the full story

Date_Published
2016-07-26
Description

Since the first law firm network was created in 1989, over 150 law firm networks have been formed and are in active operation.

Some large law firms have become “national” and “international’ by opening branches in other domestic and foreign jurisdictions and practising not just the law of their “home” jurisdiction but local law as well.

As law firms strive to fulfil client needs and compete they need to consider whether to become international or to become a member in a network. Are the networks and the international law firms competitors of each other or do they serve separate, distinct markets and clientele?

The 18 largest law firm networks generally each comprise more than 7,000 lawyers and have members practising in on average about 80 to 100 separate jurisdictions. In contrast, the largest law firm (by number of lawyers) is Dentons, which reportedly has about 7,000 lawyers in 52 jurisdictions.

Adam Cooke, the executive director of Multilaw, one of the largest networks, points out:

“Generally large international law firms seem to have extreme difficulty in expanding beyond about 50 jurisdictions. Law firm networks don’t have that problem because they are more nimble and can recognize that some jurisdictions, particularly newly industrializing countries, are importers of legal works while some, particularly the United States and the EU, are exporters of legal requirements. In a network both functions are highly valued.”

The rise of formal law firm networks mirrored the growth of international trade (and the resulting increase in international litigation) which first occurred in large business entities but which increasingly is an integral part of the businesses of small and medium sized enterprises.

These same forces have driven the diversification of large international law firms as they opened offices in new jurisdictions to meet client requirements.

Of course the two are quite different. Law firm networks are generally non-exclusive, informal, relatively inexpensive to participate in and have a modest number of staff and overhead. Within these networks there is considerable diversity in size, geographic scope, membership fees and non-legal resources available to members.

In contrast, large international law firms are exclusive and have significant overhead but can deliver a worldwide brand and a more closely integrated billing process. For many clients, particularly small and medium sized enterprises, law firm networks have more affordable legal fees and generally more ready access to senior lawyers. International law firms have the advantage of larger marketing budgets used to build brand awareness and pitch the largest of cross-border transactions.

While it is tempting to say that small and medium size enterprises gravitate to networks while large multinational corporations are serviced by international law firms, it is not so simple. Often the two compete for the same business.

Indeed, Dentons seems to have recognized the shortcomings of its business model when it announced in May the formation of Nextlaw Global Referral Network that it touts as a new form of network, one without membership fees or territorial exclusivity. Its stated goal is to recruit, vet and admit a large number of law firms as members in the next few months, clearly a very ambitious and costly goal, particularly when no application or membership fee is charged. The attraction to applicants is obvious — the possibility of referrals with no cost. Hope Krebs, Multilaw’s chair, believes that: “…this is a way for Dentons to expand its relationships with law firms in other jurisdictions. It is implicitly an acknowledgement that their growth within a single law firm structure can be difficult and not sustainable. For example the conflicts of interest that arise in a single large law firm are frequently insurmountable.”

Michael Siebold, the chair of Interlaw, another large law firm network, disputes Dentons’ focus on the negative effects of territorial exclusivity: “Our member firms are sometimes part of other referral networks — my own firm being a case in point — firstly because they are completely independent, and secondly because Interlaw is so much more than a referral network… Finally, paying membership dues covering the cost of a very lean management appears to be normal procedure, and even fully integrated international firms need to make contributions for marketing, business development, etc., and I believe Dentons follows the same model.”

The most recent trend in law firm networks is a focus on internal quality assurance programs, in part, in response to the brand equity enjoyed by the large multijurisdictional law firms.

In essence, law firm networks can flourish by providing international legal services in a cost-efficient manner to small and medium sized enterprises through reduced overhead and simpler structures, while international law firms can provide a more integrated offering (including invoices covering multiple jurisdictions) but at a greater cost due to higher hourly rates and more overhead which is less significant in only the largest international transactions and “bet the company” international litigation. Between these two extremes the two compete.

This article origionally appeared in the July 15, 2016 issue of The Lawyers Weekly published by LexisNexis CVanada Inc.

Date_Published
2016-07-13
Description


Even covers can be infringement, lawyer says, let alone staging three numbers from a smash-hit Broadway musical like a Scarborough, Ontario high school did. 

Lawyer Bill Northcote has a message for the high school students and teachers in Scarborough, Ont. who staged three numbers from the hit Broadway musical Hamilton, only to have them removed from YouTube:

Be willing to wait for it.

The musical — a hip-hop retelling of the life of American founding father Alexander Hamilton — is not yet licensed for amateurs.  

Reproducing it is infringement under the Copyright Act, said Northcote, chair of business law at Shibley Righton LLP in Toronto, and it doesn’t matter that the play is American. The rules are essentially the same.

The singing, rapping and dancing chops of students from Wexford Collegiate School for the Arts earned accolades from around the Internet before the videos were taken down at the request of Hamilton’s PR rep Thursday.

Although a takedown request or cease-and-desist letter usually does the trick in cases like this, the copyright owners could be within their rights to get a court order preventing the school from performing Hamilton any more and could seek damages (monetary compensation) for its unauthorized use, Northcote said.

That is, unless the Wexford kids could successfully argue they qualify for an exception.

One way would be through fair dealing: Copyrighted works may be used for research, private study, education, parody or satire.

Just how much copying is fair is defined case-by-case. Even a cover of a single song can be infringement, and “reproduction of the whole work is certainly not fair,” in the case of a musical, Northcote said.

There’s also a special exception for performances at schools.

But the show has to be primarily by students, for an audience of mainly students and teachers, on school property and not put on for profit. That’s why lip-syncing to the Spice Girls at your school talent show is OK.

But Wexford students performed for the media and posted recordings to YouTube.

The more people see a grifted work, the higher the damages could be, Northcote explained.

Wexford's rendition of the song Right Hand Man had 21,000 views.

This was students' and teachers' “love letter” to Hamilton, the school’s artistic director Ann Merriam told Torstar News Service. They wanted to catch the attention of its cast and creators.

But they hoped it would be in a positive way.


That’s not the same as waiving intellectual property rights, Northcote explained, but could encourage “a false sense of comfort that he won’t mind.”  

It’s reasonable to hold off on allowing amateur productions, Northcote added, especially while Hamilton is still booming on Broadway. It’s part of the creators’ rights to cash in on the time and effort they put into making it.

U.S. and international tours of Hamilton are planned into 2018 and beyond. So it will likely be years before it’s heard at high schools. Current secondary students — young, scrappy, hungry and Hamilton-crazy as they are — may not get their shot at it.

This story appeard on metronews.ca

Date_Published
2016-06-21
Description

For those building a successful business, it can be hard to also maintain good family relationships — the key is to draw a distinct line between the two, Toronto business lawyer Bill Northcote tells Succession Planning, a special supplement published by The Bottom Line and Lawyers Weekly. 

“Every family dynamic is different and every family business is different, so there are many possible causes of friction. The trick is to try to divorce the family dynamic from the business dynamic, and some families are better at this than others,” explains Northcote, chair of Shibley Righton LLP’s business law practice group.

For the full story please click here

Date_Published
2016-05-19
Description

News that Canadian residents will no longer be able to apply to appear on Jeopardy! due to international privacy law concerns is likely just a way for the popular TV quiz show to avoid the burden of investigating and complying with Canadian law, Toronto business and entertainment lawyer Bill Northcote tells AdvocateDaily.com.

Global News reports the quiz show hosted by Canuck Alex Trebek has long accepted Canadian contestants but as of this year, Canadians are shut out from applying for the time being. In a statement, the show’s producers stated:

For the full story please clikc here

Date_Published
2016-03-21
Description

A recent decision that ruled a reader had violated new provisions of the Copyright Act when he bypassed a publication’s paywall to access an article raises questions about technological neutrality, as similar facts in the analog world would yield a different result, Toronto business lawyer Bill Northcote tells Law Times.

As the article reports, 13595804 Ontario Limited (Blacklock’s Reporter) v. Canadian Vintners Association (CVA) centred around a subscription-only news publication focused on the workings of Parliament, which quoted the president and CEO of the CVA. Although the CEO was concerned about “inaccuracies” in the preview, he was unable to see the full story behind the paywall, and asked a subscriber friend to send him a copy.

When he contacted the publisher to discuss the story and disclosed how he managed to view the article, he soon received a letter alleging a breach of copyright, as well as an invoice for two subscriptions. After refusing to pay, Blacklock’s took the case to Ottawa Small Claims Court, winning $11,5000 plus $2,000 in punitive damages, says the article.

Deputy Judge Lyon Gilbert ruled that the fair dealing exception to copyright infringement was not available to the winemakers’ group “because it had violated the new technological protection measure provisions of the Copyright Act when bypassing the online publication’s subscriber paywall to access a news article,” Law Times reports.

As Northcote, chair of Shibley Righton LLP’s business law practice group, says: “If I buy a newspaper, and you ask to see an article about you in it, there is no copyright infringement there in the traditional analysis.”

Northcote also tells Law Times that he was troubled by the suggestion in the judgment that something must come of research or private study in order for that fair dealing purpose to be considered genuine. 

“There are all kinds of good tactical reasons why you may decide to do nothing with your research, rather than getting into an argument with a publisher,” he says.  

Northcote says the CEO’s call to Blacklock’s publisher to discuss the story could be regarded as the sort of action the judge found lacking, adding that the punitive damages award “seems excessive.”

This story also appeard on advocatedaily.com and lawtimesnews.com

Date_Published
2016-02-11
Description

SAN FRANCISCO — A federal appeals court Monday cleared the way for a trial in a copyright lawsuit over a YouTube video showing a baby dancing to the Prince song "Let's Go Crazy.''

The lawsuit was filed by the baby's mother, Stephanie Lenz, after Universal Music sent a notice to YouTube demanding the video be taken down for violating the song's copyright.

Toronto intellectual property and entertainment lawyer Bill Northcote tells AdvocateDaily.com this case is not surprising given U.S. law, and adds that the Canadian Copyright Act includes parody and satire within the definition of fair use.

Please click here for the full story

Date_Published
2015-09-15
Description

Transitioning out of professional practice through a two-step arrangement can help ensure a level of continuity, but there is no guarantee clients will want to move over to the incoming firm, says Toronto business lawyer Bill Northcote.

“Ultimately the clients have got complete autonomy. If the client says ‘you’re moving to X law firm, but I don’t want to go there,’ there’s nothing you can do about that,” Bill Northcote,, chair of Shibley Righton LLP’s business law practice group, says in Succession Planning, a special supplement published by The Bottom Line and Lawyers Weekly.

Click here for a complete summary of the article.

Date_Published
2015-08-21
Description

The provincial government should be going further than simply trying to keep pace with corporate legislation in other jurisdictions, Shibley Righton's business lawyer Bill Northcote tells Law Times.

Bill makes his comments in an article about the recently released report, "Business Law Agenda: Priority Findings & Recommendations Report."

Date_Published
2015-07-31
Description

The recently passed Bill 17 is the first legislation in the province that expressly addresses child performers and protects a portion of their income, says Toronto entertainment lawyer Bill Northcote.

Northcote, partner with Shibley Righton LLP, says the Protecting Child Performers Act won’t be a big shift for those in the entertainment industry who already follow guidelines and best practices, but it will be a change for those outliers who do not.

See the full story on AdvocateDaily.com

Date_Published
2015-06-23
Experience
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BIO

Bill Northcote, Chair of Shibley Righton LLP’s business law practice group, enjoys an eclectic variety of interests outside practising law - such as blues and roots music, travel (about 56 “countries” and counting) and a serious pursuit of still photography. Bill brings that same dedication and thoroughness to his practice of business law with particular emphasis on mergers, acquisitions, divestitures, and financing. He understands that the practice of law is essentially about serving the needs and expectations of clients and he recognizes that his relationship with his clients is essentially a personal relationship.

Bill believes that to meet the needs and expectations of clients he has to understand his client’s business and its business environment. He has served on the boards of a number of clients, both public and closely-held, that carry on diverse types of businesses (including life reinsurance consulting, trade and direct investment consulting in the East Asia, postage meter and equipment distribution, software development and licensing, marketing and distribution of consumer products). Bill uses his skills to find legal solutions that are effective and economical. Client’s often ask for Bill’s business advice in addition to his legal expertise knowing that they can benefit from his over thirty-five years of experience. For many clients Bill fills the role of trusted advisor.

Bill’s 35 years of legal experience complement a strong academic background. Bill received an LL.M. (International Business Law) from Osgoode Hall Law School in 1992, an LL.B. (cum laude) from the University of Ottawa and a Bachelor of Arts (Economics and History) from the University of Toronto. While in law school, Bill served as member of the Board of Editors of the Ottawa Law Review.  Bill is also the author of the Canada Chapter in Media, Advertising and Entertainment Law Throughout the World published and updated annually by Thomson Reuters, and a number of published articles on legal topics such as Merger and Acquisitions representations, Cultural Industries under the FTA, International Commercial Arbitration and Equipment Leasing. Bill has taught at York University in Toronto and in Nankai University, Tianjin, in China on business law issues and was an instructor in the Law Society of Ontario’s Bar Admission Course for over ten years.

Bill has served for over 10 years as a director of Multilaw, one of the law firm networks in which Shibley Righton is an active member. He also currently serves as its Vice-Chairman Americas Region (North America) and as the chair of its Rules and Governance Committee.

Contact Information

T: 416.214.5252
F: 416.214.5452
bill.northcote@shibleyrighton.com

vCard
Education

Osgoode Hall Law School, LL.M. (International Business Law), 1992
University of Ottawa, LL.B. (cum laude), 1980
University of Toronto, B.A. (Economics and History), 1977

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