Justine Beaumont BA, LLB (Hons) - Allens Arthur Robinson

Justine Beaumont, Special Counsel at Allens Arthur Robinson, is an intellectual property lawyer with expertise in trade mark, copyright, patent, design, passing off and trade practices litigation in a variety of industries including retail, building, entertainment, media, fashion, finance, telecommunications and eCommerce. Justine Beaumont manages litigation from initial brief through to resolution and has advised on and run a number of Federal Court applications for interlocutory injunctions and expedited final hearings

Justine Beaumont advises high profile clients on brand name protection including the registration, licensing and enforcement of trade marks and acts in proceedings on their unauthorised use. In the area of copyright, Justine Beaumont advises clients on licensing, protection and infringement issues and has acted in important copyright cases such as the FOXTEL Retransmission of Free-to-air Programs case. Justine Beaumont has particular expertise in passing off disputes, and one of the significant cases on which she has acted include the Duff Beer (’The Simpsons’) passing off litigation for Twentieth Century Fox.

Gadens - Does size count? Protecting computer programs under the Copyright Act

Martina Stevens of Gadens reviews the Federal Court’s decision in Dais Studio v Bullet Creative.

According to Martina Stevens, Petro had been an employee of Dais Studio during which time Dais developed its own specialised content management system (CMS). When Petro left Dais to work for Bullet, Petro took 2 JavaScript files which were part of Dais’ CMS and used them to design internet pages for Bullet’s client. According to expert evidence, the relevant files represented less than 1% of the entire CMS.

Martina Steven reports that Dais sued Bullet alleging infringement of copyright in the reproduction of the individual files or alternatively, infringement of copyright in the CMS as a whole. Although Dais’ copyright claim failed (for evidentiary reasons), Martina Steven notes that interesting questions were raised as to the qualitative and quantitative assessment of the relevant computer programs in the context of the Copyright Act 1968 (the Act)..

“Potentially, any piece of computer code can constitute a “computer program” as defined by the Copyright Act and therefore be protected on its own. Furthermore, a very small part of a larger program can be protected on the basis that it is a “substantial” part of the program, depending on its relative importance and what went into creating it. So, in some cases, a computer program’s bark might be a lot bigger than its bytes.”

Gadens - Does size count? Protecting computer programs under the Copyright Act

Mallesons - Federal Court aims to streamline Australian patent litigation

Mallesons report that the Federal Court will roll out an intensive case management procedure for patent litigation due to a need to streamline Australian patent litigation. According to Mallesons, the Federal Court has been trialling a case management procedure which focuses on narrowing the issues at an early stage of the proceeding in order to reduce the scale of discovery and limit the amount of technical expert evidence required. The scheme involves having one patent list Judge in each State, who will manage all patent proceedings until the case is ready for hearing, at which point it will be assigned to a docket Judge.

The case management procedure for patent litigation focuses on:

- narrowing the issues before discovery is ordered (parties have to meet to discuss the issues to be addressed by discovery, and the nature of the documents sought, before the patent list Judge will order targeted discovery)
- identifying common ground between experts (parties should consult as to procedures in relation to evidence, such as concurrent evidence of experts and prior meetings of experts to explain or narrow the issues in dispute)

The patent list judge for Sydney is Justice Annabelle Bennett, who has been running the pilot of the scheme for the past 12 months. The patent list Judges for the other states have yet to be announced.

Mallesons - Federal Court aims to streamline Australian patent litigation

Alfresco quadrant appeal dismissed

The Federal Court has dismissed an appeal by Metricon Homes against a decision that it had breached the copyright of the Barrett Property Group (trading as Port Davis Homes) by using the “alfresco quadrant”, an outdoor space bordered by a kitchen, food area, rumpus room and family room under a single roofline.

Mallesons - Nufarm Ltd v Jurox Pty Ltd - a lesson in construction of claims

Shyama Jayaswal, Indra Bhattacharya and Katie Hamilton of Mallesons have reviewed the Federal Court decision in Nufarm Ltd v Jurox Pty Ltd.

According to Mallesons, Nufarm v Jurox has highlighted the importance of carefully considering the language used in the body of the specification when drafting patents and serves as a timely reminder that even commonly used technical terms may be held to be ambiguous due to slight variations in definitions in different contexts.

According to Shyama Jayaswal, Indra Bhattacharya and Katie Hamilton, the decision provides an example of how the Courts are likely to approach the construction of technical terms which are capable of having more than one meaning and demonstrates that in cases where there is ambiguity in the definition of such terms, the Courts will look carefully at the specification to determine the context in which the term is used instead of trying to resolve the issue in theoretical abstract.

Nufarm Ltd v Jurox Pty Ltd - a lesson in construction of claims

Blake Dawson - Patent claim interpretation by reference to dependent claims

Joe Mok and David Clark of Blake Dawson report on Termite Tite (NZ) No 2 Limited v Term-Seal (Aust) Pty Limited [2007] FCA 1493, in which the Federal Court considered whether it is permissible to interpret a claim for a patent by reference to its dependent claim. The Court also re-affirmed the strict conditions under which prior art may be admitted when invalidating a patent.

According to Joe Mok and David Clark, dependent claims may be used to help construe claims on which they depend, but should not limit the scope of these inherently broader claims. Patentees can be reassured by this decision that the scope of their monopoly as broadly defined by the independent claims is still maintained whether or not dependent claims are included. The decision should also be welcomed by patentees as it demonstrates that prior art can only be admitted under strict conditions when invalidating a patent.

Blake Dawson - Patent claim interpretation by reference to dependent claims

Blake Dawson - “Glenn oaks” bourbon not likely to mislead or deceive

Elizabeth Ireland and Lisa Ritson of Blake Dawson report on Scotch Whisky Association v De Witt [2007] FCA 1649, in which the Federal Court has upheld a decision of the Trade Marks Office that the use of the mark “Glenn Oaks” in relation to a bourbon product was not likely to confuse, deceive or mislead consumers to think the product was of Scottish origin, or was a whisky, not a bourbon. In reaching the decision, the Court examined market differentiation between bourbon and whisky products, and consumer habits in relation to both products. Whilst the mark was accepted for registration, the Court modified the class of goods for which the mark could be used to explicitly exclude products labelled as “whisky”.

Scotch Whiskey was refused leave to appeal the decision in Scotch Whiskey Association v De Witt [2008] FCA 73 on 14 February 2008.

Blake Dawson - “Glenn oaks” bourbon not likely to mislead or deceive

Blake Dawson - Ownership and licensing of copyright by States and the Commonwealth: High Court grants leave to appeal

Matthew Baldwin and Georgina Adams of Blake Dawson reports that the Copyright Agency Limited has been granted special leave by the High Court of Australia to appeal the decision of the Federal Court in Copyright Agency Limited v State of New South Wales (2007) 73 IPR 1, which dealt with ownership and licensing of survey plans by the NSW Registrar-General. Accordingn to Matthew Baldwin and Georgina Adams, the appeal will consider whether the Federal Court was correct in holding that the NSW government has an implied licence to do everything that, under the statutory and regulatory framework that govern registered plans, the State is obliged to do with, or in relation to, registered plans.

Blake Dawson - Ownership and licensing of copyright by States and the Commonwealth: High Court grants leave to appeal

Corrs Chambers Westgarth - End of the Line for Trade Mark Oppositions

Corrs Chambers Westgarth reviews a recent decision of the Federal Court of Australia of The Scotch Whisky Association v. Marlon de Witt [2008] FCA 73, which they consider raises a bar to avenues of appeal in unsuccessful trade mark oppositions.

According to Corrs Chambers Westgarth, this case sounds a note of caution for unsuccessful opponents in the Trade Marks Office considering appealing the decision to the Federal Court. This case demonstrates that subsequent appeals, even where there are good grounds for the matter to be reconsidered by the Full Court, may be stymied by an overly strict approach to other traditional requirements for leave. By contrast, an unsuccessful opponent who permits the mark to become registered and then commences cancellation proceedings in the Federal Court has an unfettered right of appeal to the Full Court against the decision at first instance. Accordingly, Corrs Chambers Westgarth notes that this may become the preferred avenue for an unsuccessful opponent before the Trade Marks Office to progress its case in the courts.

Blake Dawson IP

Blake Dawson’s Intellectual Property team comprises the foremost legal experts in this field in Australia. Blake Dawson’s award winning team provides a complete range of contentious and non-contentious specialist intellectual property services. Blake Dawson is one of the few Australian law firms which provide a completely integrated full service intellectual property offering. Their team is able to register, commercialise and enforce any intellectual property (IP) right. Blake Dawson’s technical skills in IP to provide the best strategic advice to local and international companies operating in the pharmaceutical, manufacturing, publishing, food, media, financial services, airline, life sciences, chemistry, electronics, computer engineering, mining and engineering sectors.

Chambers Global, 2007 stated that Blake Dawson’s “team has a strong practice across the board”, while Chambers Global, 2006 commented that “Clients get a lot of attention, no stone is left unturned”. Asia Pacific Legal 500, 2006/2007 also noted Blake Dawson’s strong client base: “The firm acts for a long list of companies, including many globally famous brands, as well as government bodies, life sciences organisations and research institutes”. In the Managing Intellectual Property World IP Survey, 2006 the Blake Dawson IP practice received recognition in all categories: patent prosecution, patent contentious, trade mark/copyright contentious, and trade mark prosecution. They have a first-tier ranking in IP, IT and Communications and Media from Asia Pacific Legal 500, 2006/2007 and in PLC Which Lawyer? Yearbook, 2006. Blake Dawson’s life sciences practice has received particular accolades. They are judged to be a leader in Life Sciences (all categories) in PLC Cross-border Handbooks, 2006/2007. Interviewees for Chambers Global, 2007 singled out the life sciences sector as an area of “overwhelming strength” for our practice.

Blake Dawson is one of only three Australian firms listed in the top 20 IP practices in the Global Intellectual Property Super League Tables, 2006. Three of the firm’s IP partners were named in the Legal Media Group Guide to the World’s Leading Trade Mark Law Practitioners, 2007.
Our perspective

Blake Dawson’s Intellectual Property practice offers Australian and international clients a full range of intellectual property services, including:
* Advising on identification, protection and management of patents, trade marks, designs and plant breeders’ rights, and related services such as drafting, filing, prosecution, opposition and strategic portfolio management
* Negotiating and drafting a full range of IP agreements, including agreements regarding commercialisation, research and development, licensing, distribution, franchising, sponsorship, joint venture and international technology transfer
* Advising on copyright, confidential information, passing off and unfair competition
* Enforcing all IP rights, including conducting IP litigation and alternative dispute resolution and developing anti-counterfeiting strategies.
* Advising on marketing, advertising and promotions and on sponsorship and merchandising agreements
* Advising on food, pharmaceutical, therapeutic goods and agricultural and veterinary chemicals regulation.

Blake Dawson’s recent Intellectual Property experience includes:

* World’s first vaccine against cervical cancer - Blake Dawson acted for CSL Limited in the Federal Court of Australia in a dispute concerning the world’s first vaccine against cervical cancer. The dispute was satisfactorily resolved. CSL subsequently successfully applied to the PBAC and federal government to annually vaccinate all Australian females aged 12 and to conduct catch up vaccinations over a two year period.
* Gambro v Fresenius - Blake Dawson acted for Gambro in its long running patent litigation against Fresenius Medical Care relating to haemodialysis systems and disposables in Australia. We represented Gambro in victories on infringement and validity in the Federal Court at first instance and before the Full Court on appeal. We also successfully defended Fresenius’s application for special leave to appeal to the High Court of Australia. Blake Dawson is currently acting for Gambro in the damages phase of the case.
* Conor Med Systems Inc v Angiotech & UBC - Blake Dawson acted for Conor who sought revocation of patents held by Angiotech Pharmaceuticals, Inc and the University of British Columbia over taxol-coated stents in the Federal Court. This was the first case to consider whether the inclusion of an additional patentee, who has no entitlement to the claimed invention, renders the patent liable to be revoked under section 138(3)(a) of the Patents Act 1990.

IP Partners at Blake Dawson

Peter Chalk
David Clark
Belinda Findlay
Grant Fisher
Ben Miller
Mary Padbury
Lisa Ritson

Senior Associates at Blake Dawson

Annika Barrett
Anita Cade
Karen Gettens
Natalie Hazel
Joanna Lawrence
Nik Ramchand
Kellech Smith
Melinda Upton