Kathryn has extensive experience in advising on intellectual property issues, including trade marks, passing off, confidential information, copyright, patents and designs and in acting for clients in disputes and commercial negotiations in relation to these intellectual property rights.
Kathryn is regularly recognised both nationally and internationally as a leader in the field of intellectual property in Australia. These recognitions include the ‘Best Lawyer 2008 International’ award in Intellectual Property category and a ‘highly recommended’ individual in Intellectual Property, 2007 and 2008 (PLC Which Lawyer?), a ranking of ‘2’ in Intellectual Property: Trademark & Copyright (Chambers Global 2007 and 2008). Kathryn has also been recognised as she ‘provides “consistently high-quality legal advice” and has over 15 years' experience in advising clients from such diverse industries as publishing, pharmaceuticals, manufacturing and IT’ (Chambers Global 2008)
While Kathryn's litigation experience is clear, she also seeks to resolve disputes wherever possible without litigation. The majority of disputes on which Kathryn has advised have been resolved by alternative methods of dispute resolution, including significant mediations.
Kathryn works closely with her colleagues at Freehills who specialise in the creation and commercialisation of intellectual property to ensure that clients receive appropriate advice on all aspects of their intellectual property portfolio.
Major matters and clients
Kathryn has advised on major intellectual property litigation, including disputes concerning patents, designs, trade marks, passing off, confidential information, copyright and moral rights. Kathryn has also advised on significant Trade Practices Act matters, in particular involving comparative advertising and other breaches of the consumer protection provisions of the Act.
Some of those matters have become leading cases in their field. The following are some reported cases on which Kathryn has advised:
- Al Hayat Publishing Co Ltd v Sokarno (copyright/passing off/section 52 TPA)
- Australian Rugby Union Ltd v The Hospitality Group Pty Ltd (commercial/trade practices)
- Boots Co (Aust) Pty Ltd v SmithKline Beecham Healthcare Pty Ltd (comparative advertising)
- Castrol Australia Pty Ltd v Valvoline (Australia) Pty Ltd (comparative advertising)
- Minnesota Mining & Manufacturing Co v Tyco Electronics Pty Ltd (patents)
- Colgate-Palmolive Pt Ltd v SmithKline Beecham Healthcare Pty Ltd (comparative advertising)
- Reebok International Ltd v SOCOG (intellectual property licensing)
- Rosemount Estates Pty Ltd v CA Henschke & Co (trade marks/passing off/section 52 TPA)
- Sterling Winthrop Pty Ltd v Boots Co (Aust) Pty Ltd (comparative advertising)
- Harry Seidler v GPT Management Ltd and Jimmy's on the Mall Pty Ltd (moral rights)
- Intertrust Technologies Corporation ats Microsoft Corporation (patents),
- GlaxoSmithKline (Australia) Pty Ltd v Boots Healthcare Australia Pty Ltd (advertising) and
- Johansen v Art Gallery of NSW Trust [2006] NSWSC 577 (validity of winner of the Archibald Prize for portraiture).
Kathryn has also been involved in a number of significant publishing and film transactions as well as information technology related transactions (including software licensing, multimedia development agreements, outsourcing arrangements and advising online service providers of their legal risks and obligations).