Background
Lise Bertrand is a partner at our Montréal office. Ms. Bertrand was admitted to the Québec Bar in 1979 and is a graduate of the Université de Montréal (LL.L.) and the University of British Columbia (LL.B.). She has also been a member of the Law Society of British Columbia since 1994. Ms. Bertrand has been a registered trade-mark agent with the Canadian Trade-Marks Office since 1984.
Ms. Bertrand has an extensive and wide-ranging intellectual property and information technology law expertise. She has spent most of her career as a private practitioner in major law firms, providing guidance and advice to a wide range of clients in the IP/IT area, including high-tech companies and numerous clients in the cultural, media and communication industries.
Immediately prior to joining Borden Ladner Gervais, Ms. Bertrand was the Senior Director, Legal Affairs IP/IT at the Canadian Broadcasting Corporation. In addition to addressing the IP issues routinely arising in broadcasting and production enterprises, she provided guidance and advice to senior management with respect to complex intellectual property issues with company-wide implications.
Ms. Bertrand was responsible for the negotiations with the copyright collectives and for all tariff cases having an impact on CBC’s activities as a public broadcaster as well as on its many specialty services. She also represented CBC before policy-making authorities with respect to intellectual property issues.
Both Martindale-Hubbell and Lexpert have ranked Ms. Bertrand as a highly respected, ethical member of the Bar and as a leading practitioner in the areas of computer law and intellectual property.
She is also listed in "The Best Lawyers in Canada" in the specialty of Intellectual Property law.
Areas of Practice
- Ms. Bertrand is the head of the Montréal office’s Intellectual Property and Technology Group.
Professional Experience
- Ms. Bertrand has always practised exclusively in the field of intellectual property (“IP”) and information technology (“IT”).
- Ms. Bertrand has participated in many tariff cases both on the user (opposing a tariff) and applicant (filing a tariff) sides. Most recently, she has been involved in the following tariff cases: the SOCAN Internet Tariff (Tariff 22), ERCC’s Educational Rights Tariff, CPCC’s Private Copying Tariff, SOCAN-NRCC Pay Audio Services Tariff (17.B), SOCAN Pay and Specialty Television Services Tariff (17.A), Retransmission of Distant Radio and Television Signals Tariff, and CMRRA’s Reproduction of Musical Works Tariff.
- She has given advice on a wide range of matters related to the protection, use, management and enforcement of copyright, trade-marks, industrial designs, trade names, trade secrets and patents. She has worked in all aspects of the area including licensing, franchising, merchandising, clearance of rights, infringement opinions and trade-mark opposition proceedings. She has also participated in numerous transactions such as acquisitions, mergers and financings with respect to the intellectual property aspects of these transactions.
- Ms. Bertrand has a comprehensive expertise in computer and information technology law and has acted for numerous clients in transactions such as acquisition of systems, multimedia productions, licensing, technology transfers, development and outsourcing agreements.
- She has also developed an expertise in the entertainment industry and has advised mostly producers on a wide range of issues, such as acquisition and sale of rights, errors and omissions opinions and drafting of agreements with the various contributors to a production, from scriptwriter to distributor.
- Ms. Bertrand has acted as counsel for various announcers and advertising agencies in connection with promotional practices and contests, giving advice with respect to comparative advertising, competition, approval of commercials and labeling matters, drafting and negotiating contractual relationships between various business parties, reviewing advertisements, pre-clearance of broadcast advertisements, sponsorship, media, advertising agency and client, and spokesperson agreements.
- Ms. Bertrand has been involved in numerous IP/IT litigation cases, appearing before the Federal Court of Canada, the Superior Court of Québec, the Trade-Marks Opposition Board, the Copyright Board, and the Régie des alcools, des courses et des jeux.
Professional and Community Activities
- Vice President Québec and Director of the Canadian Information Technology Law Association (IT-Can)
- Member of the Advisory Board of the Law Faculty of the University of Montréal
- Member of the Editorial Committee and Board of Directors of Les Cahiers de propriété intellectuelle, published by Les Éditions Yvon Blais Inc.
- Former head of the Editorial Committee of the Canadian Intellectual Property Reports, published by Carswell
- Member of the International Literary and Artistic Association (ALAI), of which she was a member of the Canadian Board of Directors for several years
- Member of the International Trademark Association (INTA), and has been involved in the proceeding of its Executive Communications Committee
- Member of the Canadian Bar Association and former member of the Executive Committee of the Media, Telecommunications and Intellectual Property Section, as well as of the Publicity Public Awareness Committee of the National Intellectual Property Section
- Member of several associations devoted to the protection of intellectual property and communications, including the Patent and Trademark Institute of Canada (PTIC), the Licensing Executives Society (LES) and the Computer Law Association (CLA)
Selected Publications
- Co-editor of the annual publication “Consolidated Intellectual Property and Regulations”, Thomson Canada Limited.
- Co-author of "Intellectual Property and Related Commercial Litigation in Canada" (2008), Border Ladner Gervais LLP.
- “L’œuvre multimédia et le droit d’auteur“ (1999), Développements récents en droit de la propriété intellectuelle, Les Éditions Yvon Blais Inc. 165.
- “Droit de l’informatique – rétrospective canadienne“, (1997) 1 Les Cahiers de propriété intellectuelle 237.
- “Trade-mark Licensing: Has the Abolition of the Registered User Regime Changed Anything?“, Conference Meredith Lectures 1996, Making Business Sense of Intellectual Property, Faculty of Law, McGill University 125.
- “Marques de commerce“, Proceedings of the November 1995 Study Session, La publicité et le droit d’auteur, ALAI Canada.
- “Intellectual Property in Secured Transactions“, Canadian Intellectual Property Review, vol. 8, no. 2, December 1991, co-authored with Leslie Dunlop and Colleen Spring-Zimmerman.
Selected Lectures
- National Judicial Institute – Kanata, Ontario – Federal Court and Federal Court of Appeal Education Seminar: Intellectual Property – “Recent Developments in Copyright Law” – Speaker, April 22, 2005.
- International Literary and Artistic Association (ALAI Canada) – “The Supreme Court of Canada decision in the Tariff 22 Case: Good news or bad news for the ISPs?” – Speaker, September 16, 2004.
- International Literary and Artistic Association, 2001 ALAI Congress – New York - Adjuncts and alternatives to copyright, Session Chair, “Situating Legal Protections for Technological Measures and the Broader Legal Landscape” – June 13-17, 2001.
- Canadian IT Law Association – The Third Annual Conference – Montréal – Co-chair, October 21-22, 1999.
- Québec Bar – CLE – Développements récents en droit de la propriété intellectuelle – Speaker, “La créativité, avec ou sans filet” –May 14, 1999.
- Canadian IT Law Association – The Second Annual Conference – Toronto – Speaker, “Digital Signatures and Québec Law” – November 26-27, 1998.
- Patent and Trade-Mark Institute of Canada – Ethics in Intellectual Property Practice – Speaker, “Conflicts of Interest” – November 6, 1997.
- Canadian IT Law Association – The First Annual Conference – Ottawa – Moderator, “Government Contracting Update” – November 27-28, 1997.
- Meredith Lectures – Faculty of Law, McGill University – Making Business Sense of Intellectual Property – Speaker, “Trade-mark Licensing: Has the Abolition of the Registered User Regime Changed Anything?” – May 3-4, 1996.
- IntelPro 1996 Annual Forum – Montréal – Impact of new technologies on Intellectual Property - Speaker, “Technology Revolution and New Copyright Issues”.
- International Literary and Artistic Association (ALAI Canada) – Montréal Study Session, Advertising and Copyright – Speaker, “Advertising and Trade-Marks” – November 24, 1995.
- Patent and Trademark Institute of Canada – 65th Annual Meeting – Pointe-au-Pic, Québec – Speaker, “Intellectual Property in Secured Transactions”, September 11-13, 1991.
- Les Journées Maximillien Caron 1991 – Faculté de droit, Université de Montréal – Femmes et droit – Panelist, “Women and the Practice of Law” – March 8, 1991.
