As you innovate, so do we, to give you the best advice in commercialising and protecting your intellectual property.
Our team's knowledge of new technologies and science gives us an edge in understanding your innovations and means we can swiftly identify the IP issues - and solutions - you need.
We undertake both contentious and non-contentious IP work, so we can help you with all IP matters, whether you need assistance with the creation, ownership and protection of intellectual property, brand or trade marks; licensing or sponsorship agreements; or the protection and transfer of confidential information.
Our IP litigators have worked on some of the most significant disputes in Australia including major patent litigation, high-profile Copyright Tribunal proceedings, trade mark litigation, the Designs Act and disputes arising from misleading conduct, trade secret and passing off claims. We also understand and are experienced in co-ordinating cross-jurisdictional matters for global clients.
Clients benefit from our extensive expertise in IP enforcement, including in relation to counterfeiting of merchandise, online content and other IP rights violations.
Toyota Motor Corporation Australia Limited: Acted for Toyota in a variety of intellectual property and marketing related matters including drafting and negotiating all of Toyota's significant sponsorship agreements - such as the sponsorship of the AFL, 2006 Melbourne Commonwealth Games, Collingwood Football Club (Lexus) and the AFL Ambassadors.
The Seven Network: Acted for Seven in relation to IP issues including in relation to its television and Internet rights to various sporting events such as the Olympic Games.
Sharman Networks: We represented Sharman Networks and others in Federal Court copyright and Trade Practices Act proceedings commenced by the major record companies arising out of the development, distribution and use of the P2P software known as KaZaA.
This was the first major Australian case, and one of the first in the world, to give detailed consideration to the application of copyright to the internet. It was also one of the largest copyright cases ever run in Australia and was watched with interest by copyright owners around the world. We subsequently represented Sharman and others in an analogous dispute with the Australasian Mechanical Copyright Owners' Society, the Australasian Performing Right Association and their global affiliates (as representatives of music publishers). The parties ultimately reached an international settlement.
Free TV Australia Ltd: Clayton Utz is acting for Free TV Australia Ltd (which represents Australia's commercial free-to-air television broadcasters) in Copyright Tribunal of Australia proceedings commenced by the Phonographic Performance Co of Australia Ltd (PPCA). PPCA grants licences on behalf of the record labels (including the majors) and Australian recording artists. The proceedings relate to a licensing scheme for the television broadcast of commercial sound recordings in Australia.
Following the High Court's 1998 decision in PPCA v FACTS, television broadcasters have required licences to broadcast third party sound recordings included in all their programs. PPCA referred the scheme to the Copyright Tribunal to determine, amongst other things, the licence fees it would seek from Australia's commercial free-to-air television broadcasters for the broadcast of commercial sound recordings within its repertoire. The proceedings would determine, for the first time, the amount payable by the broadcasters for communicating recorded music to the public as part of their broadcasts. The parties have just negotiated a resolution of the matter.
We are also acting for Free TV in its negotiations with the Australasian Performing Right Association Ltd (APRA), who licences the underlying musical works and associated lyrics in virtually all music broadcast on commercial free-to-air television.
ThoroughVisioN Pty Ltd: Acted for ThoroughVisioN Pty Ltd and various companies in their case against Sky Channel Pty Ltd alleging that Sky Channel Pty Ltd's unauthorised taking and use of extracts from coverage of various race meetings amounts to an infringement of copyright in their respective films and television broadcasts and also misleading or deceptive conduct.
Warner Music Australia Limited & Ors vs Swiftel Communications Pty Limited & Ors: We represented two Australian broadband internet service providers (ISPs), a related body corporate, and their parent company, in copyright infringement litigation by the Australian subsidiaries of the world's four major record companies. At the heart of the case were two peer-to-peer file sharing technologies used by a small number of one of the ISP's customers - BitTorrent and Direct Connect. This is the first case in Australia brought solely against an ISP concerning secondary liability for copyright infringement based on the actions of customers that use these peer-to-peer file sharing technologies. It was the first case anywhere in the world to deal with "BitTorrent" technology. It was also the first brought against an ISP since the new Part V Division 2AA of the Copyright Act came into effect at the beginning of 2005, which provides a safe harbour scheme similar to that introduced into US law by the US Digital Millennium Copyright Act, under which the remedies available against an ISP if found liable for copyright infringement are severely limited.
Minova Australia (Part of the Orica Group of Companies): Acted in breach of contract, breach of Corporations Law, misuse of confidential information and breach of copyright proceedings for Minova/ Orica against ex-senior employees of a subsidiary, Ground Consolidation Pty Limited. Ground Consolidation carries out secondary support work and polyurethane resin injection work in underground coal mines throughout NSW and Queensland. The proceedings were commenced by way of a successful ex parte application for civil search and seizure orders (executed at the homes of three former employees).
Eli Lilly & Company: We acted for Eli Lilly in connection with patent infringement and revocation proceedings for its gemcitabine hydrochloride molecule which forms the basis of its successful anti-cancer treatment branded as GEMZAR. Various generic pharmaceutical companies were looking to introduce competing products which Eli Lilly asserted contravened its exclusive patent rights. These cases dealt directly with the complex interplay of patent rights, Therapeutic Goods Administration (TGA) product registration and Pharmaceutical Benefits Scheme (PBS) listing procedures.
Amgen Inc: We are representing Amgen in defending patent revocation proceedings brought by Hospira in the Federal Court of Australia.
The patent in question relates to a protein called pegfilgrastim (Neulasta) used to assist in the treatment of neutropenic cancer patients. Related proceedings are being prosecuted in the UK.
The matter deals with the validity of a biotechnology patent, the extension of its term and the regulation of biosimilars. There have been few biotechnology patent disputes in Australia and this matter could give rise to one of first Federal Court judgments in the area. Our involvement demonstrates our breadth of expertise in advising the life sciences industry in matters dealing with complex scientific and intellectual property issues.
Major global pharmaceutical company: Advised our client on the appropriate patents to be referenced under the new Pharmaceutical Benefits Scheme Reforms. This matter was significant because the new reforms mandate price reductions for certain major pharmaceutical products by reference to remaining patent life
There was disagreement as to which patents should be referenced and our team managed to convince the Government that it had chosen the incorrect patent. It also generated substantial benefits in excess of US $200 million to our client over ten years.
Northern Territory Government: Successfully defended the Northern Territory Government in the High Court in patent litigation against Collins in relation to the production of essential oils from trees removed from Crown land pursuant to statutory licences. In October 2008, after nearly three years of legal proceedings, the High Court agreed with our arguments that the timber supplied by the Territory was a staple commercial product and accordingly did not constitute a patent infringement.
Redberry Enterprises: We successfully acted for Redberry Enterprises Pty Ltd in proceedings commenced in the Federal Court by Review Australia Pty Limited. Review is a designer and retailer of women’s clothing. Review alleged that Redberry infringed its registered design for a ladies' dress. In October 2008 the Federal Court found in our client's favour, and delivered the first judicial decisions on infringement under the Designs Act 2003 (Cth), a decision which has clarified and strengthened the position of owners of registered designs.