Thomas O'Reilly
Thomas O'Reilly
Lawyer, Trademark Agent
Overview
Experience
Professional
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Notable Work

Tom O’Reilly is an Edmonton-based, registered Canadian Trademark Agent and lawyer in Field Law’s Intellectual Property and Technology group. Tom focuses on all legal aspects of registering, protecting and licensing trademarks, copyrights and other intellectual property, including advising on websites, domain names, and related contracts and Internet rights.

Tom's experience over the past 25 years has involved advising local, regional, national and international clients, including major post-secondary institutions, web-based businesses, software developers, book publishers, oil field businesses, property developers, retailers, professional regulatory organizations, government entities, and not-for-profit organizations, on a wide variety of intellectual property protection and litigation matters, including trademark, copyright, domain name, confidential information, and contract negotiation. Tom obtained the first website injunction in Canada, in August 1997, against a domain name pirate highjacking a client’s business name.  

Tom’s clients rely on his detailed knowledge and extensive experience of the complex interaction of government application processes, legislated rules, contract rights and business issues, to effectively help them navigate the process of obtaining and protecting IP rights.

Tom’s specific client experience has included:

  • Supporting clients throughout the brand identity development process to ensure compliance with existing laws and protection of the brand identity against future challenges, including overcoming the often difficult trademark objections of the Canadian Intellectual Property Office to a client’s chosen brand
  • Guiding international businesses operating in the Canadian market with advice and registration of their international brands in Canada
  • Creating and advising on software sale and licensing agreements, both for software developers, and for  licensees buying complex customized software packages, both in traditional form, and for cloud-based applications
  • Advising educational institutions, government entities, and professional regulatory organizations on the unique trademark rights that affect them in relation to official marks, certification marks, and trademark and regulatory protection of professional designations
  • Advising internet service providers, web-based businesses, and website designers on copyright, trademark, domain name and internet liability issues
  • Advising post-secondary institutions in the development of best practices and policies to regulate intellectual property development and ownership, and preparing agreements to protect and commercialize IP and educational content developed at those institutions

Value to Clients

“My in-depth knowledge of “how things work” in the IP and business world means knowing the shortcuts and recognizing the non-starters, that keep my clients from going down unproductive or needlessly expensive paths.“

Outside the Office

Tom enjoys hiking and cycling, the occasional old boys rugby tour, a finely crafted beer (or two), and watching hockey  - Go Oilers! 

Canadian Bar Association Alberta, Technology and Intellectual Property Section (North)
Member
Canadian Bar Association Alberta, Pension and Employee Benefits Law Section (North)
Member
Edmonton Bar Association
Member
Law Society of Alberta
Member
"Distinguished"
Martindale-Hubbell® Peer Review Ratings™
2013, 2016 - 2017
Louise McKinney Undergraduate Scholarship for Academic Achievement
University of Alberta
Abe W. Miller Memorial Prize in Criminal Law
University of Alberta
Canadian Pensions and Benefits Institute (CPBI)
Northern Alberta Council Member
2009 - 2014
United Way
Field Law Campaign Chair
1991 - 2017
United Way Spirit Award Finalist
2005 - 2005
United Way
Legal Division Account Executive
2004 - 2005
2001 World Championships in Athletics
Member - Anti-Ambush Marketing Committee
2000 - 2001
Strathcona Druids Rugby Football Club
Past Executive Member
Antediluvians Rugby Football Club
Past Webmaster
November 30, 2017
Post-Secondary Summit
Conferences
Join us for our second annual summit to focus and collaborate on legal issues facing Alberta's post-secondary institutions. Click here to view the brochure.  Click here to register.   
May 2014
Mommas, Don’t Let Your Babies Grow Up To Be CDAs - The Problem With Trade Marking Professional Designations and Their Acronyms
February 2014
Generic Top Level Domains (gTLD) Update
June 2013
Insane in the Do-main: The New gTLDs and the Trademark Clearinghouse
March 2013
What's the Use? Give Your Trade-Mark's Life Some Meaning
January 2013
$5 Cab Ride SCC - Copyright Decisions Don't take Us Very Far
August 2012
$5 Cab Ride - SCC Copyright Decisions Don't Take Us Very Far
June 2012
Intellectual Property and Technology
Winter 2012
Harper vs. The SCC - Copyright Cage Match?
September 2011
Everything You Wanted To Know About .XXX - But Were Afraid To Ask
January 2010
2010 Pension Basics - Regulatory and Legal Framework
August 2009
Aram Systems Ltd. v. NovAtel Inc.
March 2009
Trademark Basics and DIY Techniques
November 2008
Venture Prize - The Legal Perspective
June 2008
Copyright Act Amendment Bill C-61: Coming Soon?
March 2008
Basics of Trademarks I
December 2007
Copyright and Moral Rights in Academic Work
October/November 2007
Ownership of Copyright in Teaching Materials
November 2007
Venture Prize - The Legal Perspective
December 2006
New Copyright Decision from the Supreme Court of Canada
November 2006
Venture Prize - The Legal Perspective
November 2005
Venture Prize - The Legal Perspective
October 2005
Intellectual Property Plenary
November 2004
Intellectual Property in Educational Institutions
November 2004
Venture Prize - The Legal Perspective
2004
Risks and Rewards of Copyright Infringement
November 2003
Venture Prize - The Legal Perspective
2002
The Game of the Name - The Law of Trade Marks
June 2001
The IP Box of Chocolates
May 2000/2001
Educational Copyright
January 2001
Legal Issues for New Media
July 2000
Legal Issues for E-Business
May 2000
Academic IP Issues
January 2000
Who Wants to be a Multimedia Millionaire
March 1999
Copyright Collections
1999
New Media Copyright Issues
June 1998
Business Structures - Be a Something / Contracts - Handshake My Eye
Periodically
Legal Issues for Professional Writers (Full Semester Course)

Successful counsel on precedent-setting trademark invalidity case:

  • Suzanne's Inc. v. Auld Phillips Ltd., 46 C.P.R. (4th) 81, Federal Court of Appeal
  • Auld Phillips Ltd. v. Suzanne's Inc., [2005] F.C.J. No. 70, Federal Court of Canada
  • Auld Phillips Ltd. v. Suzanne's Inc., 39 C.P.R. (4th) 45, Federal Court of Canada
  • Auld Phillips Ltd. v. Suzanne's Inc., [2005] F.C.J. No. 2084, Federal Court of Appeal

Co-counsel on challenge of taxation of intellectual property:

  • Canada v. Dawn's Place Ltd. (F.C.A.), [2007] 3 F.C.R. 521, Federal Court of Appeal
  • Dawn's Place Ltd. v. Canada, [2006] F.C.J. No. 1600, Federal Court of Appeal

Pro-bono successful appeal of property tax increase on athletic club property:

  • Edmonton Rugby Union v. Edmonton (City), [1996] A.M.G.B.O. No. 123, Alberta Municipal Government Board

In addition to the above, Tom's experience includes:

  • Obtaining the first website injunction in Canada, August 1997
  • Legal member of World Track and Field Championships Anti-Ambush Marketing Committee, 2001
  • Recovering domain names from pirates under the ICANN Universal Dispute Resolution Process
  • Intellectual Property counsel for University of Alberta, 1993 to present
  • Grant MacEwan College Instructor for Writing Works program 
  • Frequent presenter on educational copyright issues at several post-secondary institutions and education-related organizations, 1993-present
  • Guest speaker at Licensing Executive Society regarding gTLDs, 2016
Education
University of Alberta, 1990, Bachelor of Laws
Admissions
Alberta,1991