IP Fundamentals: Trade Marks and Copyright
Take a guided tour through some of the key fundamental issues in copyright law and trade mark essentials. You will take away an essential toolkit for protecting your trade marks on and offline including trade mark selection, clearance and registration. Gain insights on the Copyright Act and work through the ins and outs of copyright protections, trade secrets, infringement, copyright contracting, licensing and more.
Description
Attend and earn 6 CPD units in Substantive Law
This program is applicable to practitioners from all States & Territories
Session 1
IP Fundamentals: Trade Marks
Wednesday, 28 October 2020
Gain a practical understanding of trade mark essentials. Delve into trade mark selection, clearance and registration. Examine the pitfalls and practical strategies of trade mark law in both Australia & China. Consider how to assess and maximise the value of trade marks and IP portfolios generally. You will take away an essential toolkit for protecting your trade marks on and offline. Experienced IP lawyers will walk you through the key information and strategies you need when dealing with trade marks.
Chair: Nicola Scheepers, Principal, Griffith Hack
2.00pm to 2.45pm: Trade Mark Selection, Clearance and Registration
- Trade mark selection: What is registrable?
- Types of trade marks
- Distinctiveness
- Prohibited/scandalous
- Cultural considerations
- Prior marks
- Trade mark clearance: Why perform a clearance search?
- Identical screening search
- Full availability search
- Overseas reach
- Trade mark ownership: application and maintenance considerations
- Filing the correct person/entity name
- Assignments and licenses
- Trade mark registration: best protection and strategy
- Goods and services
- Black and white or colour
- Series applications
- Convention priority
Presented by Sally Foreman, Principal, Davies Collison Cave
2.45pm to 3.30pm: A Guide to Protecting Your Trade Marks Online
- Online use examples, domain names, social media tags, meta tags
- Differences between online and offline infringement
- Challenges facing traders regarding online use
- Case authority regarding online infringement
- auDRP Disputes regarding the .au domain space
Presented by Sandy Zhang, Senior Associate, EAGLEGATE; Intellectual Property & TMT Rising Star, Doyle’s Guide 2018; Lawyers Weekly 30 Under 30 2018, Intellectual Property
3.30pm to 3.40pm: Break
3.40pm to 4.25pm: Trade Mark Registration in China: Pitfalls and Practical Strategies
- Relative advantages: Madrid Protocol vs direct filing
- Benefits of registration
- Common objections and how to avoid them
- Timeframes and hidden costs
- Overcoming conflicting trade marks and other objections: legal argument, non-use cancellation and letters of consent
Presented by Blake Knowles, Principal and Trade Mark Attorney, Spruson & Ferguson
4.25pm to 5.10pm: IP Valuation: How Understanding the Economic Value of Trade Marks Can Help Your Clients
- Overview of the benefits of obtaining a valuation of trade mark portfolios, particularly in the context of COVID-19 crisis recovery
- Insights into how the economic value of these assets can be determined
- Importance of understanding the economic worth of brands in the context of litigation, transactions, setting strategic direction, capital raising and insolvency
Presented by Karen Hallenstein, Managing Principal, ipervescence
Register here for Session 1 only
Session 2
IP Fundamentals - Copyright
Thursday, 19 November 2020
Take a guided tour through some of the key fundamental issues in copyright law including how it’s attained, duration, international considerations and fair dealing issues. Gain insights into the world of copyright contracting, licensing, and commercialisation. Work through the ins and outs of copyright protections, trade secrets, infringement and more. Experienced intellectual property lawyers will walk you through the maze while providing step by step guidance.
Chair: Glenn McGowan QC, Partner & Chief Counsel, Gadens
9.00am to 10.00am: Introduction to Copyright Law
- Definition of copyright
- Copyright ‘Works’ and ‘Other Subject Matter’
- How copyright is attained
- Duration of copyright
- International reach of copyright
- Fair dealing exceptions
Presented by Shaun Miller, Principal, Shaun Miller Lawyers; 2020 Lawyer of the Year,Entertainment Law, Best Lawyers
10.00am to 11.00am: Copyright Contracting
- A guide to licences, including: exclusivity, scope, interaction with legislative exceptions, statutory licences, creative commons licences
- Commissions: ownership, use, warranties and remedies
- Collaborations: ownership arrangements and treatment of existing and future copyright
- Understanding moral rights and performers' rights
- Practical examples from creative industries including drafting tips
Presented by Janine Lapworth, Senior Consultant, Simpsons Solicitors
11.00am to 11.10am: Break
11.10am to 12.10pm: A Guide to Protecting Copyright, Confidential Information and Trade Secrets
- Overview of protections under the Copyright Act
- Spring boarding; protection of confidential information
- Protecting trade secrets
- Case study: software protections and how to save hundreds of thousands of dollars in a copyright infringement court case
Presented by Nicole Murdoch, Founding Director and Trade Mark Attorney, EAGLEGATE; Recommended Intellectual Property Lawyer, Doyle’s Guide 2020
Register here for Session 2 only
Presenters
Nicola Scheepers, Principal, Griffith Hack
With extensive experience both here and overseas, Nicola provides strategic advice on a wide range of trade mark issues for banking, FMCG, food service, fashion, pharmaceutical and SME clients. She’s renowned for her thoroughness, straightforward advice and in depth understanding of trade mark issues, particularly the varying requirements of different countries around the world.
Sally Foreman, Principal, Davies Collison Cave
Sally advises on all aspects of trade marks including, selection, searching, prosecution, opposition and infringement and related issues under the Trade Practices Act 1974 and passing off. She has experience on all aspects of European trademark law and practice. Sally interest in International Registrations under the Madrid Protocol and Internet related issues and provides advice in relation to International Registration filing strategies and domain name registration and disputes. She was a member of the 2007 auDA Names Policy Panel Review Committee and a member of the 2010 auDA New 2LDS Advisory Panel. Sally is a committee member of the Law Institute of Victoria IT/IP Committee and editor of the Internet Law Bulletin.
Sandy Zhang, Senior Associate, EAGLEGATE
Sandy specialises in IP, commercial and competition law and dispute resolution. He acts for businesses and individuals who need to commercialise or protect their IP assets, including complex and cross border matters. Clients in digital and IT industries utilise his web programming background and understanding of IT and business to meet their IP and commercial legal needs. Sandy also supports foreign entities to transact business and protect their IP rights in Australia. Sandy is also an experienced litigator. He has both appeared personally and instructed counsel to appear in Australian and international courts over IP, commercial and competition law disputes.
Blake Knowles, Principal and Trade Mark Attorney, Spruson & Ferguson
Blake specialises in trade mark due diligence, registration, oppositions and dispute resolution. He has acted on behalf of clients in relation to trade mark applications, oppositions and disputes in many countries. Blake held a number of positions at the Australian Trade Marks Office. He was a Principal Examiner of Trade Marks, and also Assistant Director of the Trade Marks Hearings and Oppositions section. At IP Australia, Blake was responsible for developing practice and procedure. As a former Principal Examiner, Blake is an expert in Australian Trade Marks Office practice. Since commencing private practice, Blake has been successful in having over 100 examination decisions successfully reviewed, based on legal argument alone.
Karen Hallenstein, Managing Principal, ipervescence
Karen is the Co-Founder and Managing Principal of new startup, ipervescence where she offers tailored intellectual property consulting and flexible resourcing. Previously, Karen was an in-house lawyer at Telstra for 18 years, specialising in intellectual property, data governance and procurement. She sits on the Law Institute’s IP&IT Committee and is part of the LIV’s mentoring program. In addition to a Masters of IP from the University of Melbourne, she has a BA, a BSc (Honours in psychology) and an LLB (with Honours) all from Monash University. She is a graduate of the Australian Institute of Company Directors and a qualified LSV lifesaver.
Shaun Miller, Principal, Shaun Miller Lawyers
Shaun has specialised in film and entertainment law for over 20 years. He has over 230 “legals” credits and over 35 “executive producer” credits which can be found on his IMDb profile. He has a background working in film distribution and exhibition and is a Senior Fellow at the University of Melbourne within the Faculty of Fine Arts and Music. Shaun’s firm specialises in film and entertainment law. It acts for production companies that make film content. The firm provides legal services at each stage of film making including: development, financing, production, distribution and marketing stages.
Janine Lapworth, Senior Consultant, Simpsons Solicitors
Janine practices in the creative industries. She has worked in corporate, commercial, intellectual property, entertainment and litigation experience; gained at national and international law firms and in senior in-house legal positions at the Australian Broadcasting Corporation in Sydney and ESPN Star Sports in Singapore. She has enjoyed working with a wide range of clients based in Australia and overseas, including international studios, industry groups, technology start-ups and other creative businesses. She currently sits on the board of Australian Theatre for Young People.
Glenn McGowan QC, Partner & Chief Counsel, Gadens
Glenn has over 30 years’ experience almost exclusively in the superior and appellate courts. He spent 27 years at the independent Bar, taking silk in 2004, before joining Gadens in 2015 as its inaugural Chief Counsel. His practice is heavily dominated by large intellectual property cases (patents, trade marks, copyright, confidential information, trade practices and designs), mostly in the Federal Court, involving all areas of technology including chemistry, software, biotechnology, pharmaceuticals, engineering, polymers, etc. Glenn is a qualified mediator and arbitrator. He also appears in and advises in general commercial disputes in all courts, briefed by Gadens and other firms.