Mark's practice encompasses a broad range of commercial disputes, including technology and intellectual property litigation, protection of trade secrets, breaches of fiduciary obligation, and fraud. He has particular experience with injunctions, trade-mark protection, mining disputes involving confidential information, and the area of preservation and discovery of electronic documents and records in complex litigation. Mark has appeared as counsel in the Supreme Court of British Columbia, the British Columbia Court of Appeal, and in the Federal Court in addition to acting in private arbitrations and other alternative dispute resolution proceedings.
Mark is a regular contributor to Lawson Lundell’s Commercial Litigation and Dispute Resolution Blog, a resource that examines current trends and interesting issues emerging in the legal and business communities.
- Canadian Bar Association, Member
- Canadian Section of the International Commission of Jurists, Member
- Vancouver Bar Association, President (2014 to 2015)
- Vancouver Bar Association, Executive Member (2011 to 2016)
- Western Canada Business Litigation Blog, Contributor
- Greater Vancouver Board of Trade, Member
- The University of British Columbia, Civil Procedure, Guest Lecturer (2007 to present)
- UBC Law Alumni Association, 2003 - 2010, Treasurer (2003 - 2009)
- UBC Faculty of Law Advanced Trial Advocacy Seminar, Course Co-ordinator (2004 - 2006)
Recognitions & Rankings
Recognitions & Rankings
- Benchmark Canada: The Guide to Canada’s Leading Litigation Firms and Attorneys: recognized as a Litigation Star
Representative proceedings include:
- Successfully brought claims for defamation and obtained an order for incarceration for contempt of Court against a defendant located outside Canada, ending an online campaign of defamation and harassment. Passey v. Henry, 2016 BCSC 1766, 2016 BCSC 2330
- Successfully defended against claims for breach of restrictive covenant, breach of easement, and trespass in renovation of residential property where plaintiffs sought mandatory injunctions to remove renovated portions of defendant's home in addition to damages. Erschbamer v. Wallster, 2014 BCSC 2171.
- Successfully represented an electric utility in resisting a claim for additional compensation under a construction contract for approximately $60 million.
- In 2014, successfully obtained an injunction, an enforcement order, and sanctions for contempt of court in the context of a blockade of a refinery supplying fuel for YVR and local emergency services.
- Successfully reinstated portions of a Response to Civil Claim previously struck out, in appeal clarifying law of res judicata and issue estoppel. Erschbamer v. Wallster, 2013 BCCA 76.
- In 2013/14, successfully represented an international mining client in a private arbitration concerning an option agreement related to an exploration property located in Africa.
- Successfully defended a visual effects studio and its principals against claims for breach of fiduciary duty, breach of the duty of fidelity, conspiracy, conversion, breach of confidence, and solicitation of employees, arising from the provision of visual effects for a network science fiction television show. Zoic Studios BC Inc. v. Gannon, 2012 BCSC 1322; 2015 BCCA 1334.
- In 2011, successfully represented a major audit software corporation in an arbitration against an ex-principal, enforcing a non-competition covenant and awarding damages for breach thereof.
- Defended an online residential property search engine against claims for breach of contract and breach of copyright in a significant case on online contract formation. Century 21 Canada Limited Partnership v. Rogers Communications Inc., 2011 BCSC 1196.
- Represented a natural resources company in successfully resisting an application for judicial review, clarifying the unavailability of review for certain letters of advice from Ministry of Fisheries and Oceans. Cassiar Watch v. Ministry of Fisheries and Oceans et al, 2010 FC 152.
- Obtained injunctions, enforcement orders, and successfully prosecuted respondents for civil contempt in connection with a major infrastructure renewal project. B.C. Transmission Corporation v. Lemoignan, 2008 BCSC 1221, 2008 BCSC 1045.
- Successfully represented the Canadian Transportation Accident Investigation and Safety Board in preserving confidentiality defeating a petition and corresponding appeal seeking publication of confidential data from a major marine accident investigation. British Columbia Ferry Services Inc. v. Canadian Transportation Accident Investigation and Safety Board, 2007 BCSC 1434, 2008 BCCA 40.
- Successfully defended claims by a junior mining company against a major for breach of confidence in a case involving significant nickel deposits in the Cape Smith Belt, obtaining dismissal of all claims after summary trial. Novawest Resources Inc. v. Anglo American Exploration (Canada) Ltd. et al., 2006 BCSC 769.
- Successfully obtained an injunction restraining passing off and sale of counterfeit luxury handbags, and an order to seize all inventory. Hermes Canada Inc. v. Henry High Class Kelly Retail Store, 2004 BCSC 1694.
- Successfully obtained a multimillion dollar judgment, an accounting, tracing orders, and a proprietary interest in hotel property on the basis of a constructive trust in a multijurisdictional case involving breach of fiduciary duty, knowing assistance, and knowing receipt, and upheld the judgment on appeal. Ruwenzori Enterprises et al. v. Walji et al., 2004 BCSC 741, 2006 BCCA 448.
News & Publications
News & Publications
- Chapter 13 – Intellectual Property Disputes, in the CLEBC BC Business Disputes Manual, October 2016, Co-author
- Record Retention Policy for E-Discovery, BarTalk, December 1, 2015, Author
- BC Business publishes Mark Fancourt-Smith's article, "Trademark Doesn't Trump Usage", November 6, 2013, Author
- Chapter 13 – Intellectual Property Disputes, in the CLEBC BC Business Disputes Manual, October 2013, Co-author
- "Opt-in not an option: How to comply with the new anti-spam law", Business in Vancouver, May 16, 2013, Author
- "New anti-spam laws target a safer online world", The Vancouver Sun, May 14, 2013, Author
- "Why Startups Need to Start by Protecting their Company", Business in Vancouver, November 13, 2012, Author
- “Keeping a Lid on Pandora's Box: Best Practices in Locating and Collecting Electronic Evidence", Electronic Evidence and Electronic Trials Course, Continuing Legal Education Society of BC, January 28, 2011, Speaker
- “International Report – Be wary of paid advertisements: keyword advertising in Canada”, Internet and E-Commerce Law in Canada, Volume 11, Number 7, November 2010, Author
- “Competition Act upgrade imposes ‘fundamental change of approach’”, BC Legal Management Association Topics", December 2009
- “Think Inside the Box”, CMA Update", Fall 2009, co-author with David Wotherspoon
- “Protecting the Olympic Marks: Statutory Protection for Games Branding”, Bartalk, October 2009
- “Breach of Confidence and Mining Contracts 2009”, September 2009, co-author with David Wotherspoon
- “Banking Basics, Primer for Junior Banking Litigators”, Continuing Legal Education Society of British Columbia", June 2003
- Orders Without Borders: Supreme Court of Canada affirms ability of Courts to grant worldwide injunctive relief against non-parties”, Commercial Litigation and Dispute Resolution Blog, July 4, 2017
- Search and Ye May Find Something Else: Use of Competitors’ Names in Keyword Advertising and Domains, Commercial Litigation and Dispute Resolution Blog, February 9, 2017
- Supreme Court Of Canada Dismisses Appeal Alleging Freedom of Expression Breach, Commercial Litigation and Dispute Resolution Blog, January 23, 2017
- SCC Rules Debtors Impliedly Consented to Disclosure of Mortgage Discharge Statement, Commercial Litigation and Dispute Resolution Blog, November 24, 2016
- Ledcor Decision Considers Standard of Review and Insurance Policy Exclusion Clause, Commercial Litigation and Dispute Resolution Blog, September 26, 2016
- The little search engine that could, but would prefer not to: Google’s appeal to the Supreme Court of Canada against a new kind of worldwide injunction, Commercial Litigation and Dispute Resolution Blog, February 26, 2016
- The Franchises Act, Shifting the Balance of Power to Protect British Columbia's Franchisees, Commercial Litigation and Dispute Resolution Blog, October 30, 2015
- “But I’m a lawyer…” Supreme Court of Canada clarifies mental element necessary for contempt, Commercial Litigation and Dispute Resolution Blog, April 17, 2015
- Apples, Patents and Trolls, Oh My!, Commercial Litigation and Dispute Resolution Blog, March 2, 2015
- “Much Ado About Parking”: Contempt and the power to punish, Commercial Litigation and Dispute Resolution Blog, February 7, 2015
- Dragooning Google: How long is the online arm of the law?, Commercial Litigation and Dispute Resolution Blog, October 31, 2014
- “Intellectual Property Disputes,”CLEBC Live Course Seminar: BC Business Disputes 2016, Vancouver, BC, (November 18, 2016), Course Lecturer
- "Using Injunctions Effectively", Pacific Business & Law Institute Seminar, Vancouver, BC, March 25, 2015
- "Cutting edge developments in cyber internet defamation," Defamation and Media Law 2014 CLE BC, November 21, 2014, Speaker
- Online Defamation: Practical Tips on Managing the File and Advising Your Client”, Professional Development Webinar, Canadian Bar Association, BC Branch, April 3, 2014, Speaker
- "Importance of a Collaborative Approach", Electronic Discovery Course, The Continuing Legal Education Society of British Columbia, February 7, 2013, Speaker
- "Identifying and Obtaining Electronic Evidence”, January 28, 2011, Speaker
- “Social Media: Tips to avoid a Risk Management Nightmare”, June 15-16, 2010, Speaker
- “Stories from the Trenches: Protect your business & your customers”, April 7, 2010, Speaker
- “Intellectual Property: What you need to know to protect your business, Intellectual Property – Trademarks, Patents and Designs Seminar”, October 23, 2006, Speaker
- “Discovery Fundamentals for In-House Counsel Records Management & Information Professionals”, June 19-21, 2006, Speaker
- Kerstina Kane
- Legal Assistant
- T: 604.408.5421
- British Columbia (2003)
Queen’s University (B.A., (Hons), 1994)
University of British Columbia (LL.B., 2002)