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: June 2003
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,
our last edition before the end of financial year. We are now
six months into the year, and already 2003 sees some big changes
for Cornwall Stodart.
The most significant has been the closure of our Sydney office
on the 31st of May. As difficult as this decision was, we are
confident, from feedback received from clients in both Sydney
and Melbourne, that the impact will be minimal. This gives
us a golden opportunity to consolidate our presence in the
Melbourne market, continuing to enhance our profile in the
core areas of commercial and property transactions, corporate
advice, litigation, reconstruction and insolvency, and workplace
relations.
Since our last edition Cornwall Stodart has been getting its
share of positive exposure in the marketplace:
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Two of our partners and one of our consultants,
have been invited to present at legal seminars locally,
interstate and internationally. Following the success of
his presentation last year in Western Australia, Queensland,
South Australia New South Wales, and Victoria, Chairman John
Hutchings, was invited to conduct the Law
and Finance Seminars’ Contract Law for Non-Lawyers held
in Brisbane and Melbourne in May. Recently, Melbourne hosted
the 8th Annual Law Conference, at which Rima
Newman, our partner heading our Workplace
Relations group, presented the topic How to Conduct
an Employment Law Audit, discussing how organisations
can meet the challenge of complying with the multiple federal
and state laws. And looking ahead to 2004, Barry
Woods, the consultant heading our Revenue
and Taxation group, has been invited to present at the 14th
Offshore Postgraduate Seminar at Jesus College, Oxford
in England, being held next August/September. Barry will
be discussing International Tax issues.
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Levent
Shevki, who specialises in our Sports
and Entertainment Law area, was instrumental in the
organisation of the recent Sports Marketing and
Sponsorship Conference, an event which Cornwall
Stodart was very proud to sponsor. Lev is profiled
in this edition of Reflections.
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Partner, Stephen
Newman, was sought out recently to be
interviewed on The World Today on ABC’s
Radio Melbourne regarding the use of suppression orders
in the Supreme Court of Victoria in the context of
the recent case brought against the former Governor
General, Dr Peter Hollingworth.
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Leneen
Forde was selected by the Real Estate
Institute of NSW Journal for publication of her article
on Landlords and Mitigating Loss.
On a lighter note, our in-house netball team, the William
Street Whackers, have recently come to the end of their second
season. And just like last year they fought tooth and nail
upholding their place high on the Melbourne City Sports Corporate
Competition ladder, only to be pipped to the post at their
semi-final play off. So until next season our sporting luminaries
are in training for their triumphant return.
With only a couple of weeks before the end of June, we are
gearing up for the end of another financial year. A time
we all look forward to being on the other side of.
Michelle
McLean,
CEO
CS Update
With the closure of our Sydney operation, Leneen
Forde, returns to our Melbourne office along with her expert
skills in litigation. Leneen, who has maintained an active role in servicing
some of our Melbourne clients whilst working in the Sydney office, relocated
back to our Dispute Resolution team on June 10th.
We also welcome Suzanna Szalinski who
joins our tax and revenue work group. Suzanna is a qualified accountant
and lawyer with over 4 years experience with KPMG.
By the time our next issue of Reflections hits the press we will have
sent Marelda Hibberd on
her way to take nine months maternity leave. Due in September, this will
be Marelda’s first baby. I am sure you will join all of us here
at Cornwall Stodart in wishing Marelda good health and happiness over
the coming months.
Cornwall Stodart rated highly in two recent industry reviews. Discussing
the National Legal Market, Nexis Lexis quoted our firm as “narrowing
its fields of practice to areas such as IT, insolvency and workplace
relations, the firm scores well in the client survey in the areas of
insolvency, workplace relations and corporate and commercial”.
And in its article Death of the Medium Tier we were one of only three
firms singled out as mid tier firms which“…better their bigger
siblings when it comes to keeping their clients happy”.
Source: http://www.legalprofiles.com.au/industry_review/market_melbourne.htm
http://www.legalprofiles.com.au/industry_review/death_of_mt.htm
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Joe
Naccarata - Partner
Joe heads the firm’s Insurance group.
He manages a wide variety of matters for leading insurers,
corporations and government.
His work involves assessing property damage and personal
injury claims arising out of professional indemnity, general
liability, workers’ compensation and multi-risk policies
including occupiers liability and toxic tort disputes.
Joe also provides advice to insurers in relation to the drafting
and interpretation of insurance policies.
With the depth of experience he has gained from a practice
based on insurance law and litigation, Joe is known for his
commercial, cost-effective and prompt advice.
Joe is a member of the Law Institute of Victoria Accident
Compensation Committee and the Australian Insurance Law Association
(Vic) Committee.
He has published many practical articles in insurance journals,
including the Australian Insurance Institute Journal and The
Adjuster.
Joe speaks fluent Italian.
Ph: +61 3 9608 2215 Email: j.naccarata@cornwalls.com.au
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Levent
Shevki - Lawyer
Levent is a lawyer in our Sports and Entertainment
group where he has a strong commercial and transactional practice
focusing on clients and transactions in the sports industry.
With particular expertise in the areas of sponsorship and
marketing law, personality and image rights, and event and
player management, Levent has advised a number of high profile
sporting clients.
He is also a member of the Australian and New Zealand Sports
Law Association (ANZSLA) and is General Counsel for international
sports consultancy Premiership Strategies International.
Levent holds a Bachelor of Laws (Hons) from the University
of Melbourne, where he majored in marketing and commercial
law respectively and is currently undertaking a Masters in
Commercial Law at the University of Melbourne.
Ph: +61 3 9608 2278 Email: l.shevki@cornwalls.com.au
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| Intellectual
Property - Unlocking Value in Your Business | James
Samargis |
Intellectual property (“IP”) is a phrase that traditionally
encompasses:
• Patents for inventions including
novel or innovative business processes;
• Trademarks registered to protect many features of a
brand such as words, logo shapes, aspects of packaging, jingles and even scents;
• Designs registered to protect the shape of manufactured
articles;
• Copyright including written works such as business brochures,
artistic works such as web-site content, drawings, photographs, technical plans
and specifications, software developed in-house, customer lists;
• Trade Secrets Confidential Information; and
• Licensed rights to import, manufacture, distribute or
offer goods for sale or to provide services.
When a business is bought, sold or the subject of a merger, the existence
of one or more IP asset can support a valuation for that business.
Preferably, IP assets will be registered rights and identified separately
in a balance sheet and not simply as part of the goodwill of a business.
Preferably, IP assets should be held separately from the trading entity
of the business, such as a holding company. Where IP assets are held
this way, their value is protected against trading losses or failure
of the business.
Recognising and protecting the IP assets of a business should be an
on-going task. It cannot be left unattended without the risk that some
rights may be lost forever. For example, if the design of manufactured
goods is not protected before mass producing the goods and offering
them for sale, protection will be lost.
Obtaining various IP registrations cannot be left until the last minute
because obtaining registration is not automatic. It is a condition
of registration that the application pass various statutory tests and
the assessment process requires administrative processing time and
inevitable delay.
For standard patents it takes about two years before a registration
is obtained. For innovation patents the time taken is much shorter
but the nature of the protection is also different. Trademarks can
be obtained in about six months to a year – depending on whether
the application is straight forward or not. Designs usually take about
two months to be registered.
Instructing an IP lawyer to audit a business will involve looking at
the business branding and the operation of the business in terms of
its contributors and its output. Both products and services can be
potential IP assets. An audit may expose a need to make applications
to formally protect intellectual property.
The expense associated with some applications for IP protection can
form the basis for a tax deduction. For patents, designs and copyright,
the value of the IP asset is a depreciable cost over the fixed life
of the IP asset (Section 40-95 Income Tax Assessment Act 1997). Similarly,
there is a tax deduction allowable for software developments that occur
in-house. Trademarks do not fall within a tax deductible category because
the life of a trade mark is indefinite.
An IP audit will not only identify and catalogue the IP assets, it
will also have the advantage of:
• reviewing existing management and employee contracts
to ensure that all developments of an IP nature benefit
the business and not the individual;
• reviewing agreements/licences with external parties to highlight any
risks or short-comings in contractual terms relating to IP; and
• reviewing labels on products and notices and warnings on business literature
to check that they meet current legal requirements.
Reviewing the knowledge
that runs a business and provides market advantage will enable
that business to unlock its IP assets. It will sharpen the
focus on what the business may need to develop and protect
for future growth.
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Trade Marks & Protecting
an Athlete's Personality | Levent
Shevki
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Reform
to Australian trademark law in 1995 now allows trademarks to
play a greater role in the legal protection of an athlete’s
personality in Australia. Under the Trademarks Act 1955 (“the
Act”) a potential major problem existed with trademarks
in the context of personality merchandising. Where a person other
than a registered owner of a trademark, proposed to use the trademark
under licence, s 74 of the Act permitted that person to be registered
as a registered user of the trademark. The principal effect of
such registration, subject to any terms of a licence agreement,
was that the registered user may call upon the owner to commence
infringement proceedings against third parties, and in the event
that these did not eventuate, could commence such proceedings
itself.
Section 74(4) of the Act, however, contained the following restriction
on the registration of a user of a trademark:
‘ The Registrar
shall not register a person as a registered user of a trademark
if it appears to him that the registration would tend to
facilitate trafficking in the trademark.’
The potential problem posed
by this section 74(4) to personality merchandising and sports
marketing in general was brought to the fore in the English
Hollie Hobbie case, Re American Greetings Corp's Application
[1984] 1 WLR 189. In that case, American Greetings Corp carried
on the business of licensing manufacturers to use depictions
of one of its characters "Hollie Hobbie" - a child
in a pinafore and bonnet. American Greetings Corp sought to
register Hollie Hobbie as a trademark in various classes. American
Greetings Corp did not make or trade in the goods for which
it sought registration but applied on the basis that the trademark
would be used on these goods by various registered users with
which it had entered into licensing agreements.
The Court concluded that there must be a trade connection between the
proprietor of the mark and the goods of the licensee on which the mark
is to be used.
In delivering his judgment,
Brightman LJ stated that:
‘ If there is no
real trade connection between the proprietor of the mark
and the licensee of his goods, there is room for the conclusion
that the grant of the licence is trafficking in the mark.’
The Hollie Hobbie case
cast doubt on the suitability of trademark protection given
the very basis of personality merchandising, that is, licensing
the use of logos and certain indicia of personality in respect
of exclusive product categories.
In 1988, however, the Industrial
Property Advisory Committee recommended that the principle
against trafficking in Australian trademarks legislation be
amended specifically to allow greater protection for personality
or character merchandising. Subsequently, the Act recognised
trademarks as a form of personal property, abolished the prohibition
on "trafficking" of trademarks without their accompanying
business goodwill, and made provision for multi class applications.
As such, trademarks have
evolved and become a valuable marketing tool for athletes who
wish to capitalise on their public standing by licensing certain
indicia of their personalities to selected manufacturers and
service providers for association with their goods and services.
Athletes are now, more
than ever, cognisant of these facts and have recently been
very active in registering certain indicia of their personality
as trademarks. Kieren Perkins, whose personality has been the
subject of unauthorised use on several occasions, has obtained
registrations for his name, signature, his nickname, "Superfish"'
and various photographs of his head.
Notwithstanding the expansion of the law considered above, and an expansion
of the definition of trademark under the Act, it is the writer’s
view that trademarks continue to have a limited role in the protection
of an athlete's personality. This is because trademarks can only be applied
to certain indicia of personality as opposed to personality per se.
In addition to that,
another overriding restriction on the protection given to
the indicia of an athlete's personality under the Act is
the proviso that not all uses of the trademark will constitute
an infringement. Pursuant to section 120(1) of the Act, it
is fundamental to an action for infringement that the defendant
use the mark as a trademark. That is, for an infringement
to occur, a pivotal question is whether the use complained
of is use by the alleged infringer as a trademark. What was
meant by use as a trademark under the Act was clear enough.
Phrases such as "badge of origin" were used to
summarise what was meant. The same ‘badge of origin’ notion
is plainly to be seen in the definition of trademark contained
in section 17 of the Act which defines a trademark as:
‘… a
sign used or intended to be used, to distinguish goods
or services … in the course of trade by a person
from goods or services … [of] any other person.’
In the end the question
is whether the alleged infringer's use of that the trademark
is use as a badge of the trade or origin of the alleged infringer's
goods or services. Where the use is not used in such a way
as to indicate and distinguish commercial origin, infringement
will not occur.
It is clear that
athletes cannot expect that all uses of their trademarks
will be protected. In the Rolling Stones case, for example,
it was found that the use of the words ‘Rolling Stones’ on
the cover of an unauthorised compact disc of an early recording
by the rock group was held not to be use as a trademark.
Specifically it was held that the use did not indicate the
source or commercial origin of the goods and services and
did not, therefore, infringe the registered trademark ‘Rolling
Stones’. Many athletes will encounter similar problems
when seeking to enforce their registered trademarks. In fact
it is submitted that alleged infringer's will rarely use
indicia of an athlete's personality to indicate the commercial
origin of the goods, making trademark protection of an athlete's
personality redundant in many instances.
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New
generation mobile phones equipped with cameras allow security
and people’s personal privacy to be breached with ease.
The law will have to quickly adapt to the problems the new
technology poses. Already the media is reporting unauthorised
photos being taken in change rooms at sporting facilities,
at ATMs and in prisons.
For the present, some protection already exists in state legislation
that prohibits stalking and other criminal conduct. Also privacy
law legislation may offer some protection, particularly in
situations where personal information such as ATM pin numbers
are being photographed as they are inputed into ATM machines.
The Attorney General, Rob Hulls has asked the Law Reform Commission
to investigate the application of the State’s privacy
laws to mobile phone cameras. It is believed that the issue
will also be on the agenda at a meeting of the Attorneys-General
in August 2003
Community self-regulation and an evolving new etiquette in
relation to mobile phones may ultimately prove the most effective
way to control misuse.
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