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Editorial

Index of tables

  1. Intellectual property
  2. Leading individuals
  3. Next generation lawyers

Leading individuals

  1. 1

Next generation lawyers

  1. 1
    • James Ellsmore - King & Wood Mallesons
    • Amanda Engels - King & Wood Mallesons
    • Elizabeth Ireland - Ashurst
    • Duncan Longstaff - Shelston IP
    • James Neil - Clayton Utz
    • Caroline Ryan - King & Wood Mallesons
    • Natalie Shoolman - Clayton Utz

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Ashurstis well resourced to handle large, complex litigation’ and the team is ‘pre-eminent in the intellectual property space with regards to legal skills, application and consideration of the desirable commercial outcomes’. In the Sydney office, Lisa Ritson heads the department with the support of the Melbourne-based Mary Padbury, who acts as the firm’s global vice-chairman and advises clients such as BP and Rolex. Kellech Smith also sits in Melbourne and is representing The Goodyear Tire & Rubber Co in a trade mark opposition and infringement case revolving around the Dunlop trade mark in Australia, while Andrew Rankine – who was recently promoted to partner in the Sydney office – acts for Samsung Bioepis in preliminary discovery Federal Court proceedings against Pfizer and Wyeth regarding patents protecting Pfizer’s drug Enbrel. Moroccanoil also appointed Ritson and her team to handle a three week hearing in the Federal Court against Aldi following allegations of trade mark infringement, consumer law breaches and passing off offenses in connection with ‘copycat’ products. Clients also recommend Anita Cade, who is ‘well regarded for licensing issues’, and the ‘highly skilled and extremely approachable’ litigator Sophie Dawson. Ben Miller retired from the partnership to become a consultant.

Herbert Smith Freehills provides ‘spot-on advice, extremely valuable intellectual property due diligence and a fast efficient service’. Kristin Stammer also attracts much praise for her ‘deep knowledge, major dedication and great relationship management skills with the client as well as the opposing party’; she advised BMG Music on its acquisition of J. Albert & Son, which involved the splitting up of its royalties and interests. On the contentious side, Sue Gilchrist has been representing Becton Dickinson in a complex cross-border dispute against Braun regarding allegations of patent infringement in connection with three patents for IV catheters, and Rebekah Gay is defending a patent infringement claim filed against Ariosa Diagnostics by Sequenom, which owns the patent for non-invasive pre-natal testing, on the grounds that the client’s Harmony test infringes said patent. The Melbourne office hosts litigation experts Shaun McVicar and Patrick Sands, and Celia Davies who heads the trade marks sub-practice.

King & Wood Mallesonsscores highly on a number of key indicators including expertise, practicality, client relationship management and business acumen’, and clients such as global corporations in the pharmaceuticals and technology space engage the group to advise on the full range of intellectual property work. In Sydney, Scott Bouvier is ‘a trusted adviser’ and ‘all-rounder’, who has been representing the University of Sydney alongside the ‘extremely capable’ senior associate James Ellsmore in a longstanding dispute involving allegations of copyright infringement and trade secrets misuse regarding medical technology that was licensed to a company partially spun out of the university. For work in the consumer goods and brands space, clients rely on Katrina Rathie, who heads the Sydney office and the trade marks sub-practice, and works closely with ‘excellent lawyer with excellent integrity’ Kim O’Connell, who has particular strength in the life sciences sector. Other noteworthy contacts include Brisbane office head John Swinson and Matthew Swinn, who sits in Melbourne and works alongside the Sydney-based Cate Nagy to advise Telstra on actions filed by copyright holders under the new provisions in the Australian Copyright Act demanding that the client block access to foreign websites that allegedly facilitate infringement.

Based in Sydney, Melbourne and Brisbane, Allens’ ‘excellent’ offering is led by Miriam Stiel from Sydney and services clients such as the Australian Olympic Committee, PepsiCo and Redbubble. Andrew Wiseman is defending a deceptive conduct claim filed by Unilever on behalf of Beiersdorf from the Sydney office, and Reece received advice from Melbourne-based Tim Golder on trade mark litigation. In the mining sector, Sarah Matheson (also in Melbourne), who is lauded for ‘being patient when explaining complexities and listening to clients’ concerns’, is overseeing a dispute between two equipment manufacturers with regards to issues arising from patents, contractual obligations and equitable duty of confidence, while Sydney-based senior patent counsel Philip Kerr is counselling Seiko Epson in patent infringement proceedings against Calidad with respect to its distribution of ink cartridges that are compatible with the client’s printers.

The ‘timely, thoughtful, practical and overall excellent’ team at Baker McKenzieworks collaboratively to anticipate the issues and legal questions to ensure the best work product for the client’. Richard Gough sits at the helm of the national intellectual property group, which provides the entire range of enforcement, protection and exploitation advice. Head of the Australian media and content practice Andrew Stewart is representing the Motion Picture Association of America, its members and Village Roadshow in copyright litigation seeking to block access to several websites allegedly infringing copyrights; Elisabeth White is acting for Lion in misleading or deceptive conduct and passing off proceedings commenced by The A2 Milk Company in connection with the client’s claim that two of its products ‘contain A2 protein’. A major global technology entity engaged a team led by the ‘easy-to-work-with’ Robert Arnold to oversee its monitoring and enforcement programme in Australia, and Byron Angelopulo leads the advice to a multinational retailer with regards to the management and protection of its entire trade marks and brand portfolio. Sydney-based senior associate Victoria Bell also receives praise.

Clayton Utz’s lawyers ‘distinguish themselves through their understanding of the product and market they operate in and the strength of advice they provide’. Litigation lies at the very core of the practice, as shown by Richard Hoad’s advice to Maxam on patent infringement proceedings in the Federal Court against Sun Mining, which consists of former Maxam employees. Sydney-based practice head John Collins recently acted for Orion Corporation in a patent infringement and revocation case relating to the drug Stalevo, and is currently defending Telstra in litigation filed by Upaid. Other key names include the ‘professional and commercially minded’ Chris McLeod, who establishes ‘great working relationships’ and handles trade mark issues caused by counterfeit merchandise on behalf of Toyota, and ‘expert litigator’ Timothy Webb, who is based in Sydney and recently represented a leading global airline. David Benson made partner in the Perth office and acted for a geosciences company in connection with allegations of patent infringement by a larger competitor.

Corrs Chambers Westgarth’s ‘responsive’ team is ‘excellent across all fronts’; it recently welcomed high-profile litigation specialist David Fixler to its Melbourne office from King & Wood Mallesons. Eugenia Kolivosunderstands the client’s business’ and is currently acting for a leading investment bank with regards to the drafting and negotiating of intellectual property licensing and commercialisation agreements between a target company and a US-based financial adviser. Clients also recommend Odette Gourley, who is representing Precision Tracking in a multimillion-dollar lost opportunity claim against Domino’s Pizza, and Navman Wireless regarding the implementation and licensing of the client’s GPS pizza driver system. In Melbourne, Kate Hay is handling a number of copyright, patent and design matters in the Federal Court and is supporting national practice head Stephen Stern to oversee Lundbeck’s longstanding claim against four generic companies over the escitalopram patent. Other noteworthy clients include Lacoste, Hugo Boss and the NSW Police Force.

Gilbert + Tobinhas built an expert team of lawyers for litigation and patent defence’, which ‘works at a fantastic pace to meet all deadlines’. Head of the patent sub-practice and ‘diligent communicatorJohn Lee is commended for his ‘extensive industry knowledge, attention to detail and customer focus’, and recently acted for BASF in a longstanding cross-border patent litigation matter regarding chemicals used in the mining sector. A team jointly led by Chris Williams and Siabon Seet advised Edgewell on its defence of injunction proceedings filed by Procter & Gamble in connection with a claim made by the client in an advertisement, and practice head Michael Williams counselled Energizer in a successful contempt action against Procter & Gamble for breaches of an interlocutory injunction. In other highlights, Universal Music Australia engaged the team to handle a joint venture dispute relating to royalties, copyright and distribution fee matters, and the group assisted a leading healthcare provider in a wide range of matters including brand protection, advertising and marketing law.

The majority of Griffith Hack’s work revolves around trade mark and patent litigation, but Derek Baigent’s nationwide team has the capabilities to handle the full gamut of intellectual property matters and is appreciated for its ‘overall combination of depth and breadth of expertise’. The ‘excellent’ Brisbane partner Kellie Stonier draws much praise and is currently acting for an Aboriginal cultural heritage corporate body in an agricultural social enterprise pilot programme and various projects to commercialise pilot technology. The Melbourne office includes Russell Berry, who represents Allergan in a number of brand enforcement and trade mark matters including Federal Court proceedings and several patent oppositions, and Wayne Condon, who leads the advice to an Indian pharmaceutical client in relation to its portfolio of over 50 trade marks and issues arising from the launch of its products in Australia. Susan O’Connor is also a key name; she is overseeing several trade mark and patent oppositions on behalf of a public sector entity. Melbourne partner Justin Lambert departed for K&L Gates.

Minter Ellison’s Sydney partner John Fairbairn ‘is an expert adviser on copyright and privacy matters, and has a deep knowledge of the media and entertainment industry’; he works with ‘determined and consistent’ practice head Robert Cooper, who sits in Melbourne. Also based in Melbourne is Wayne McMaster (‘one of the best lawyers to work with’), who represented a subsidiary of Bristol-Myers Squibb in patent revocation proceedings initiated by Merck Sharpe & Dohme in relation to antibodies with significant use in the treatment of cancer. On the non-contentious side, Melbourne partner Shyama Jayaswal is assisting longstanding client PPG Industries with the day-to-day management of its patent portfolio. Information technology specialist Kylie Diwell services clients in the public and private sector with a focus on higher education, health and government.

Norton Rose Fulbright’s ‘very commercial and responsive’ team is jointly led by the Sydney-based head of intellectual property Frances Drummond, who specialises in all aspects of brands, and Cameron Harvey, who leads the disputes resolution practice from the Melbourne office. The firm handles prosecution, disputes and commercialisation matters for global and local clients. Sydney-based Georgina Hey advises Goodman on the management of its global trade mark portfolio, which involves an international expansion of its registered trade mark protection; she is also assisting Quayeyewear with its IP portfolio. On the litigation front, a team led by Sydney-based Jackie O’Brien is defending Aldi from multiple actions, including trade mark infringements, consumer law breaches and misleading conduct claims filed by Moroccanoil with regards to the client’s hair care range. Associate Alyson Poole is also recommended. Norton Rose Fulbright and Henry Davis York announced their intention to merge in late 2017.

Banki Haddock Fiora provides the full spectrum of intellectual property work in Australia and New Zealand under the leadership of trade mark and branding expert Margaret Shearer and Peter Banki. In recent highlights, Kate Haddock represented APRA AMCOS in its submissions to the Productivity Commission with regards to the copyright aspects of its inquiry into Australia’s intellectual property arrangements. Julie Robb sits at the helm of the department’s IP litigation work and recently advised Clipsal and Schneider Electric on its numerous successful claims against Clipso, which manufactured and imported products from China similar to the client’s. Suzuki and Hanesbrands receive Simon Kneebone’s counsel on design and patent law, and experienced litigator Peter Banki has substantial experience in copyright law.

Bird & Bird welcomed ‘excellent litigation lawyer’ Lynne Lewis from MinterEllison. The team is spearheaded by Jane Owen, who is representing Generic Health as the defendant in an ongoing patent litigation case filed by Otsuka as well as claimant in a Federal Court case for the recovery of compensation under the undertakings as to damages given by Wyeth – now Pfizer – in respect of injunctions granted. Abbey Laboratories also appointed the team to handle a number of cases against the industry regulator, APVMA, and longstanding client Volkswagen received strategic advice on trade mark filing, prosecution and branding issues; Troy Gurnett led the work for both of these clients. Associate Rochelle Schuenker, who joined from MinterEllison, regularly supports Lewis in her work for clients in the life sciences, financial services and fashion industries. Other names to note are special counsel Shehana Wijesena and senior associate Rebecca Currey.

DLA Piper’s five-partner outfit is led by global co-chair of the firm’s trade mark, copyright and media group Melinda Upton, who has substantial experience across the gamut of intellectual property work, and advises a client roster including names such as Fitbit, Lotus Bakeries and Moët Hennessy. Major international clients receive advice on trade mark infringements and enforcement in relation to counterfeit products and parallel distribution, which is frequently provided by Upton and special counsel Rohan Singh. In Melbourne, Robynne Sanders is representing American entity ResMed in a Federal Court appeal filed by Fisher & Paykel Healthcare following its unsuccessful opposition to the client’s patent applications. Heading the life sciences sector group, Nicholas Tyacke regularly handles IP matters. The firm has recently divested its Canberra office, leading to the departure of a number of practitioners, among them Caroline Atkins and Anthony Willis, for Maddocks.

DibbsBarker’s ‘excellent’ intellectual property team grew out of the firm’s commercial offering and is lauded for its ‘high level of technical expertise and business-minded approach’. A translational research institute focused on cancer and other complex disorders and diseases received Rob McInnes’ advice on its licensing and collaborative activities with third parties, and Scott Sloan is representing Alphapharm in a number of patent opposition proceedings regarding technologies designed to treat HIV and multiple sclerosis. Commercialisation expert and special counsel Catherine Boxhall supports the advice to key clients such as Bauer Media, Dexus and Yamaha, while practice head Stuart Green assisted longstanding client Breville with the consolidation of its global brand and its expansion into new markets, and assisted CIMIC group with a global rebranding and brand protection strategy. Senior associate Natasha Marshall Teoh joined from Phillips Ormonde & Fitzpatrick and Melissa McGrath departed to K&L Gates.

Jones Day is noted for its patent litigation work in the life sciences space and recently made new client gains such as AbbVie, Biogen and Sanofi. Anthony Muratore and Lisa Taliadoros jointly head the firm’s Australian intellectual property group from the Sydney office and are advising Merck in proceedings arising from an allegation by Gilead Sciences that the client’s patent for compounds used in the treatment of HCV infection – among others – is invalid, as well as Merck’s counter-claim of patent infringement against Gilead. The team’s recent workload also includes high-value patent registration application oppositions, and a high-profile test case in which the Australian government sought compensation from an originator company arising from its behaviour in obtaining a patent against a generic manufacturer entering the market. Other noteworthy clients include Bradken, Johnson & Johnson, SharkNinja Operating and Toolgen.

MaddocksBrendan Coadycan be relied on in times of emergency to provide advice and calm clients’; he co-heads the intellectual property practice from Sydney with Robert Gregory who sits in the Melbourne office. Hosting ‘a good spectrum of IP expertise’, the group is currently assisting Sydney Airport with a whole brand audit and filing strategy under the supervision of Sydney-based Jeff Goodall, while Melbourne-based Greg Hipwell routinely acts for a number of clients – including Pizza Religion and Cuts Colour – in strategic expansion strategies and the rollout of new network structures. Consultant Shelley Einfeld is part of a team that advised Aristocrat on its response to online infringement, and Samsung on the registration for its ‘pocket patrol’ mark in a highly anticipated app launch. The team was recently expanded through the arrival in Canberra of Caroline Atkins, Anthony Willis and Gavan Mackenzie from DLA Piper, and consultant Fiona Wallwork’s arrival in Sydney from Norton Rose Fulbright.

Simpsons Solicitors is jointly led by Adam Simpson, Jules Munro and Mark Bamford, and was recently strengthened by the arrival of Kris Darmody from an in-house position. In recent highlights, Simpson continues to advise Eight Mile Style and Martin Affiliated – Eminem’s music publishers – on their dispute with the New Zealand National Party regarding the use of a ‘soundalike’ track in a television advertisement during the 2014 general elections, and Munro is defending a non-use removal claim filed against two of Hillsong Church’s trade mark registrations. The group’s client roster includes global household names in the music, film and publishing sectors, as shown by its advice to The Wiggles with respects to the management, protection and enforcement of its vast portfolio of trade marks in over 20 jurisdictions. The sub-partner echelon of the team includes senior lawyers Michelle Eadie and Clare Young as well as special counsel Ian McDonald, all of whom play a key role in the department.

Spruson & Ferguson Lawyers is ‘especially efficient in opposition work’ and ‘the overall level of service is outstanding’. The firm recently opened its Melbourne office, where experienced trade mark attorney Tim Allen oversees the team. Tracey Berger’s ‘advice is clear and concise’; she spearheads the firm’s trade mark work, while John Afaras leads on the department’s litigation matters. The group’s recent caseload includes patent litigation for clients such as Ansell, opposition matters, and trade mark prosecution, strategy, enforcement and protection. Andrew Blattman jointly heads the firm’s patent sub-practice with a particular focus on the chemical and life sciences industries, and Greg Gurr focuses on the engineering and information technology sectors.

Arnold Bloch Leibler’s team consists of ‘capable operators who put clients first’, among them Zaven Mardirossian, who provides ‘clear advice’ with strong expertise in defending local and international clients in litigation. Richard Gower appointed the team to handle its dispute with Clive Wilson with respect to the use of ‘racey’ in the context of the promotion, recording, sale and performance of music; and Matthew Lees is representing TPI Enterprises in an opposition to the granting of a biotechnology patent to Tasmanian Alkaloids, an Australian subsidiary of Johnson & Johnson. Another noteworthy highlight saw the team act for Industry Super Australia with regards to multiple separate disputes in connection with the use of an image of two hands cupped in the shape of a diamond, for which the client owns the trade mark. Also singled out is senior associate David Robbins, who ‘understands clients’ needs and industries’.

Luke Dale spearheads HWL Ebsworth’s national intellectual property, technology and media offering from the Adelaide office, and Matthew Craven – previously at Corrs Chambers Westgarth – recently reinforced the team in Melbourne. Acting for government bodies, media companies, publishers, manufacturers and retailers, the practice covers the full gamut of IP matters. Government agency Tourism NT entrusts all of its portfolio management, brand protection and trade mark registration work to Dale, and Melbourne-based Nicholas Pullen is representing a music festival promoter in a copyright dispute with the Australian Performing Rights Association with regards to licensing issues and fee calculation. Bill Singleton sits in Brisbane and is opposing the trade mark registration of an event mascot for a cultural heritage body on the grounds of the unauthorised use of aboriginal material. The names to note in Sydney are John Gray and special counsel Elizabeth Skelly, who recently joined the firm from Sparke Helmore Lawyers; experienced litigator Peter Campbell is also singled out.

The ‘excellent’ team at Henry Davis York, which operates as a sub-team in the dispute resolution department, handles ‘innovative and complex matters’ in a ‘timely and professional manner’. It defended Challenger in opposition proceedings following CEB’s international application for a number of trade marks containing the word ‘challenger’, while Stephen Gorry represents Beatbox Music as a third party in trade mark infringement proceedings filed against the New Zealand National Party by Eminem, Eight Mile Style and Martin Affiliated regarding a television commercial played during the 2014 general elections. On the non-contentious front, William Inglis engaged the group to secure the protection of new trade marks following its move to a new Warwick Farm complex, and Alison Walshe is also recommended. Donna Short and special counsel Hazel McDwyer left for Addisons in October and December 2017 respectively. Henry Davis York and Norton Rose Fulbright have announced their intention to merge in late 2017.

At IP Gateway, patent attorney Alison McMillan heads the life sciences department and jointly with Wayne Slater advised Longhorn Vaccines and Diagnostics on oppositions to patent applications in Australia to defend its vast international portfolio. Mark Metzeling heads the trade marks sub-team and recently represented a client in the dairy industry in the attainment of a certified trade mark for an Italian cheese; his recent caseload also includes protection and enforcement work in the cosmetic, aviation and sports sectors, where an Argentinian client appointed the team to register the name ‘Maradona’ in numerous classes. Daniel Rosenthal leads the designs sub-group and is also a key contact.

K&L Gates added nine fee-earners to its ranks across all levels, including Simone Mitchell from DLA Piper and special counsel Melissa McGrath from DibbsBarker in the Sydney office, and special counsel Justin Lambert from Griffith Hack in Melbourne. Branhaven appointed the firm to oversee its widely publicised appeal against a decision by the Australian Patents Office regarding the client’s application claiming the provision of means to determine genetic potential in bovines, and the Melbourne-based practice head Tony Watson has been representing SNF Australia in the Federal and High Court with regards to the opposition of competitors’ patent applications and the defence of infringement claims. Also based in Melbourne is trade mark expert Jonathan Feder, who has substantial experience in running anti-counterfeit initiatives, and Lisa Egan, who is acting for Magi in a range of brand protection and enforcement claims in Federal Court litigation. Other key names include Nigel Lokan, who was recently promoted to partner in the Sydney office, and Chris Round in Melbourne.

Belinda Breakspear’s team at McCullough Robertson advises clients such as Flight Centre, Absolute Board and Riviera Australia on brand protection and management matters. The team has recently grown its contentious capacities; one example was John Kettle and Breakspear’s opposition of approximately 120 new trade mark applications across nine jurisdictions on behalf of the Australian Agricultural Company. Clients such as Thr1ve appointed the group to handle international enforcement mandates, and litigation partner Peter Stokes represented a religious entity in Federal Court proceedings against Victorian and Tasmanian companies with regards to the sale of healthcare products. Alex Hutchens and Paul McLachlan are the names to note in Sydney.

Mills Oakley Lawyers’ team is based in Sydney and includes James Lawrence and Teresa Nicoletti, who both joined from Piper Alderman, and Blair Beven, who has substantial experience in IP litigation but also acts for retail and fashion clients in transactional matters. Lawrence is an expert patent litigator and acts for clients in the pharmaceuticals and life sciences industries; he is defending Dr Reddy’s Laboratories in patent infringement and revocation proceedings filed by Helsinn with regards to the launch of its palonosetron generic product, while Nicoletti leads the advice on strategic patent portfolio management regarding a biotech product on behalf of the University of Sydney and the product’s exclusive licensee. The practice also defends personal brands, as shown by Beven’s work on a global protection strategy, which involved the filing of trade marks in over 25 countries in multiple classes, on behalf of a household name individual.

Appreciated for its ‘great value for money and innovative service’, Piper Alderman’s ‘responsive’ team is prominent in the life sciences and IT sectors. Head of the Melbourne office and practice leader Tim Clark represented the Australian Digital Health Agency in a patent opposition matter and is currently acting for a healthcare client in the potential commercialisation of a vaccine technology, including vendor due diligence and contractual arrangements. Tim O’Callaghan spearheads the Adelaide office and ‘is great at finding solutions instead of setting huge litigation budgets’; he is currently conducting work on the social media front, such as the enforcement of copyright infringement claims on behalf of Jukin Media, and is representing Drybar Holdings, a California-based hair salon, in brand protection and infringement prosecution in Australia and New Zealand.

Litigation sits at the core of Shelston IP’s practice but the Sydney-based team of 44 partners covers the full gamut of intellectual property work. Patents expert and experienced litigator Katrina Crooks is representing Fuchs Lubricants in proceedings filed by Quaker Chemicals regarding allegations of patent infringement and questions about the validity of the patent. Mark Vincent led a team advising InfoTrack on patent infringement claims brought by Encompass and SAI Global Property and its cross-claim seeking to revoke the patents – which was heard in a three and a half week hearing in the Federal Court – with the help of senior associate Duncan Longstaff, who also assisted with advice to a major global pharmaceutical client on the potential entry of generic products into the market. Noteworthy names also include Grant Shoebridge, who leads the firm’s immunology team and has significant expertise in the pharmaceutical and biotech industries.

Sparke Helmore Lawyers’ team is led by Shannon Platt who specialises in brand protection, IP litigation and commercialisation. The Department of Veterans’ Affairs engaged the team to obtain and enforce a trade mark for its ANZAC centenary signs, and a leading medical technology and healthcare company benefited from Platt’s advice with regards to its worldwide filing strategy for ten of its distinctive decorative designs. Senior associate Joanna Lee has substantial experience in trade mark litigation and worked alongside senior associate Wyn Davies to assist Platt in her work for the Canterbury District Health Board, a New Zealand Crown Entity, in connection with its trade mark for a medical database designed to facilitate the treatment of health issues. On the transactional front, the department oversaw a client’s acquisition of over 100 trade marks in 27 countries.

Thomson Geer works with clients such as major manufacturers, universities, life sciences companies and software developers – among others – to create, exploit, acquire and enforce intellectual property assets. Bronwyn Furse was recently made partner in the Adelaide office and jointly with Josh Simons represented Harcourts International in longstanding proceedings arising from the rebranding of a leading franchised real estate network. Sydney-based special counsel Dianne Beer led the advice to Guess? with regards to the Australian front of a complex trade mark dispute with a high-profile competitor whose opposition to one of Guess?’s prominent trade marks is being appealed. In the technology space, Gotop International received Peter Le Guay’s advice in connection with proceedings brought by Fascinations, which claimed the client’s imported 3D metal model kits infringed its copyright. Ben Coogan and Tony Conaghan are names to note in Brisbane; they were recently joined by special counsel Katrina Chambers from Gadens Lawyers.

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