Georgina Starkman Danzig protects the intellectual property and the intellectual capital of her clients. She designs defensive solutions to combat piracy, theft, and counterfeiting. In addition to strategic defensive work, she actively litigates all manner of anti-counterfeiting cases (copyrights, trademarks, and industrial designs) as well as cases involving theft of confidential information, trade secrets, corporate opportunities and tangible property, by former employees, competitors, or others. Her success is largely attributable to her extensive experience dealing in extraordinary remedies including, Anton Piller orders; preservation orders; and other forms of declaratory and injunctive relief. In addition to civil litigation, she works with law enforcement, customs, and other professionals to secure appropriate remedies for her clients. She commonly assists law enforcement in securing information and evidence necessary to obtain a criminal search warrant and she coordinates and secures the resources necessary to execute criminal search warrants, investigations and enforcements. After seizure, she interfaces between victims and the police to ensure the Crown has the necessary testimonial and evidentiary support. She has extensive expertise in all aspects of Canada’s border enforcement regime in relation to counterfeit goods. She is often engaged as an Independent Supervising Solicitor in respect of the execution of Anton Piller orders in intellectual property and commercial disputes having served these orders in environments ranging from commercial and industrial complexes and shopping plazas to residential environments.
Ranking and Recognition
In reference to Ms. Starkman Danzig, one of the only 2 individuals in the Gold Band for anti-counterfeiting, it states, amongst other things:
“a key player in the market who does an outstanding job for the firms and her clients.”
“…truly knows her stuff. Clients have complete confidence in her.”
“She is a market leader who is extremely adept at raids and police work.”
“Anti-Counterfeiting sage [she]… has matchless dexterity in this [anti-counterfeiting] realm”; “very capable, effective and well prepared”;
Georgina Starkman Danzig is the author or co-author of the following publications, amongst others:
Chapter 8, “Litigation of Counterfeit Goods” in Paul Lomic ed. Intellectual Property Litigation: Forms and Precedents (LexisNexis, 2016: Toronto)
“Counterfeit Perfume and Cosmetics – 2016 OECD Report Quantifies the Problem”, published in the Canadian Cosmetic, Toiletry and Fragrance Association Newsletter, May 2016
Training Sessions & Lectures
Georgina conducts training sessions, workshops and lectures across Canada dealing with anti-piracy/counterfeiting enforcement matter. She has done so on behalf of or in conjunction with:
Her training includes educating law enforcement about the impact of piracy/counterfeiting; particularizing ways in which to distinguish between authentic and pirated/counterfeit products; outlining techniques to assist law enforcement in obtaining criminal search warrants; assisting law enforcement on behalf of brand owners in identifying and prosecuting criminal cases; educating on all aspects of Canada’s new anti-counterfeit, Border Enforcement Regime; as well as on all aspects of civil enforcement.
She has lectured on anti-piracy/counterfeiting matters at various educational meetings and conferences including:
Chair of the Canadian Bar Association – Counterfeiting and Trade Offences Committee.
Member of the International Anti-Counterfeiting Coalition (IACC); the Law Society of Upper Canada; the Canadian Anti-Counterfeiting Network (CACN) and the Intellectual Property Institute of Canada (IPIC).
Ms. Danzig graduated from the University of Windsor, Faculty of Law with a Bachelor of Laws in 1988 and from the University of Detroit with a Juris Doctor in 1990. She studied international law at Regents College in London, England. She was called to the Ontario Bar in 1990. Following her call, she had the privilege of serving as a clerk to the Chief Justice of the Ontario Superior Court [then known as the Ontario Court (General Division)]. Thereafter, she commenced the private practice of law primarily engaged in commercial litigation and customs and trade related matters. Today her practice is exclusively focused on matters relating to counterfeit products and intellectual property infringement.
Federal Court Cases
Ms. Danzig has been counsel in a number of Federal Court cases of significance to anti-piracy/counterfeiting enforcements, as well as others, on behalf of Plaintiffs/rights holders, including:
Louis Vuitton Malletier S.A. et al v. Bhatia et al (May 13, 2015 Mr. Justice Campbell, as yet unreported) in which we acted on behalf of the Plaintiffs in obtaining the largest monetary judgement in a counterfeiting case, in Canadian history in the aggregate of over $3,100,000.00CDN.
Guccio Gucci S.p.A. et al v. Bhatia et al (March 23, 2015 Mr. Justice Brown, as yet unreported) in which we acted on behalf of the Plaintiffs in obtaining the largest monetary judgement for 1 Plaintiff against 1 group of counterfeiters in Canadian history, in the aggregate of over $2,000,000.00CDN.
Moroccanoil Israel Ltd v Lipton, 2013 FC 667, Moroccanoil brought a motion for summary judgement relating to the infringement of its registered trade-marks against one of the Defendants, Edward Sivitilli. Sivitilli filed a Statement of Defence, denying the allegations. The court evaluated whether the genuine issues for trial, raised by the Defendant, were indeed, ‘genuine’. Moroccanoil established the claims through affidavit evidence, including that the product sold in association with it trade-marks was counterfeit, and that harm and damage caused by the offering for sale of the counterfeit product. In particular, the Court noted that the Defendant was required to put its “best foot forward” and not rely on unsupported statements to argue that there is a genuine issue for trial. Damages were assessed and awarded.
Guccio Gucci SpA v Mazzei (2012), 101 CPR (4th) 219 (FCTD). Following a well-orchestrated undercover investigation including, a clandestine meeting at a Toronto gas station, and hidden cameras – disclosing a wholesale counterfeiting operation run from a storage facility, owned by a third party, the Plaintiffs, in a contested summary judgement motion, secured a judgement of trade-mark infringement and an award of $85,000.00 in damages, injunctive relief, plus costs.
Harley-Davidson Motor Co et al v Manoukian et al (2013), 112 CPR (4th) 404 (FCTD). The court granted summary judgement in favour of the Plaintiffs for trademark infringement and awarded damages, including punitive damages. The Court was satisfied the matter could proceed on a motion for summary judgement notwithstanding conflict in some of the evidence. In determining the damage award, the Court noted that where Defendants provide no records to substantiate the manufacture and sale of counterfeit wares, it is difficult to assess damages. However, the Court applied a minimum compensatory damage award on a per infringing activity basis.
Moroccanoil Israel Ltd. V. Shoppers Drug Mart Corporation, 2010 FC 901. On appeal from a Prothonotary’s order, this case clarified that there is no prima facie right to security for costs and that such awards are within the discretion of the Court. The court reaffirmed that while security for costs will generally be required if one of the conditions listed under Rule 416(1) is met, the Court retains discretion to deny a request, in which it did in this case. The Plaintiff, whom we acted for, being a company incorporated pursuant to the laws of Israel, and ordinarily resident outside Canada, established that security for costs should not issue against it because, in part, it is the owner, in Canada, of a registered trade-mark; it has a distribution network in Canada, and as a result, it is owed significant monthly receivables with a Canadian company. It also has a 50% undivided, and unencumbered, title and interest in lands and premises situated in Canada.
Calvin Klein Trademark Trust v. Beauchamp, 2010 FC 1107 (CanLII). Successfully stopped defendants from setting aside default judgement and vacating writs. Court clarified that a simple denial of the allegations in a claim, without offering some evidence to show that the defence has some merit, such as an affidavit from the supplier attesting that the goods were manufactured under license, does not meet even the low threshold for showing that a prima facie defence is available.
Gianni Versace S.p.A. v. 1154970 Ontario Ltd., 2003 F.C. 1015 [clarifying the legal and evidentiary bases to obtain Court Orders preserving infringing merchandise in actions where destruction or disposition of infringing merchandise is an issue].
Ragdoll Productions (UK) Limited et al v. Doe,  2 F.C. 120 (F.C.T.D.) [clarifying and validating awards of minimum compensatory damages for infringement of intellectual property rights in circumstances where the Defendants conduct their business in a manner that renders traditional damage and profit analysis unavailable].
Tejani v. Nintendo of America Inc. 2001 FCA [Federal Court of Appeal decision affirming decision that Charter of Rights and Freedoms is not applicable to the issuance and execution of Anton Piller Orders].
Gianni Versace S.p.A. et al v. V. K. Design Inc. c.o.b. Laco Sac et al, unreported (Court File No. T-1575-01 – December 10, 2001) [application of principles of minimum compensatory damage awards for conduct pre-dating and post-dating notice of infringing conduct (i.e. ‘double damages’)]
Club Monaco Inc. v. Woody World Discounts Ltd. (1999) 2 C.P.R. (4th) 436 [examining the sufficiency of evidence and detailing the requirements to be contained in affidavits filed to obtain Anton Piller Orders]
Nike Can. Ltd v. Doe (1999) 174 F.T.R. 131 [reviewing the procedures required for execution of Anton Piller Orders]