Stephen practises in intellectual property, commercial law and administrative law. He came to the Bar in 2007 and is an experienced trial and appellate advocate, regularly appearing in the Federal Court and Supreme Court, as well as bodies such as the Trade Marks Office, Copyright Tribunal and Administrative Appeals Tribunal.
He has acted for a wide range of leading companies and brands, including Cadbury, Telstra, Facebook and Monster Energy, and specialises in strategic litigation involving key intellectual property assets. Stephen is particularly interested in the protection and use of intellectual property online, and the intersection of intellectual property and administrative law.
He has been involved in a number of landmark cases involving geographical indications, common law rights in relation to colour, as well as copyright in music, film and television, computer software and databases.
2005 LLM (First Class), University of Cambridge
2000 LLB (First Class Hons), Australian National University
1997 BA in English (First Class Hons and University Medal), Australian National University
2007-present Barrister, Victorian Bar (List G Barristers)
2001-2007 Solicitor, Mallesons Stephen Jaques (now King & Wood Mallesons)
2000-2001 Associate, Justice Peter R A Gray, Federal Court of Australia
Recommendations and Rankings
- Legal 500 Asia Pacific (Australian Bar – Intellectual Property)
- Doyle’s Guide to leading intellectual property barristers
- Doyle’s Guide to leading media, technology and telecommunications barristers
- Best Lawyers Australia
- World Trade Mark Review 1000
- Ice TV v Nine Network (High Court – with David Catterns QC and Adrian Ryan SC) Intervening on behalf of Telstra - breach of copyright in electronic program guides.
- Telstra v Phone Directories Company (Federal Court – with David Catterns QC, Ross Macaw QC and Adrian Ryan SC) First instance and appeal - breach of copyright in the White Pages and Yellow Pages directories.
- TS Productions v Drew Pictures (Federal Court – with Will Houghton QC) First instance and appeal – anti-suit injunction in relation to proceedings for breach of copyright in the script for the film “The Secret”.
- Barrett Property Group v Carlisle Homes (Federal Court – with Noel Hutley SC and Adrian Ryan SC) First instance and appeal – breach of copyright in house plans.
- Acohs v Ucorp (Federal Court - with Rodney Garratt QC and Peter Wallis) First instance and appeal - breach of copyright in source code and software databases.
- Re Application by Pocket Full of Tunes and Woodley (Copyright Tribunal – unled and Federal Court – with Adrian Ryan SC) Determination of licence fee for use by the Commonwealth of copyright in the song "I Am Australian".
- Connect TV v All Rounder Investments (Federal Court - with Colin Golvan QC) Injunction and trial - breach of copyright in foreign television broadcasts.
- Orientile Pty Ltd v Salitrosa Holdings Pty Ltd (Federal Court – with Neil Murray SC) - breach of copyright in stone-look tile designs.
Trade Marks, passing off and misleading or deceptive conduct
- Cadbury Schweppes v Darrell Lea (Federal Court – with Noel Hutley SC and Michael Wyles SC) First instance and appeal – misleading or deceptive conduct and passing off in relation to use of colour purple for chocolate packaging.
- Mitre 10 Australia v Masters Home Improvement (Supreme Court – with Tony Bannon SC and Michael Hall) Injunction – misleading or deceptive conduct and passing off in relation to use of colour blue for store getup.
- Tivo v Vivo International Corporation (Federal Court – With Ross Macaw QC and Michael Wyles QC) First instance and appeal – trade mark infringement and non-use in relation to audio-visual products.
- Australian Postal Corporation v Digital Post Australia (Federal Court – with Will Houghton QC) First instance – trade mark infringement and passing off in relation to digital mailbox service.
- Realestate.com.au Pty Ltd v Real Estate 1 Ltd (Federal Court – with Will Houghton QC) Trade mark infringement and passing off in relation to websites and domain names for property portal.
- Telstra v Phone Directories (Federal Court – with Michael Wyles QC and Peter Creighton-Selvay) Misleading or deceptive conduct and passing off in relation to use of colour yellow for directories.
- Sensis v Senses Direct Mail and Fulfilment (Federal Court – with Ed Heerey QC) Trade mark infringement and non-use in relation to direct mail services.
- Monster Energy Company v Mixi (Trade Marks Office – unled and Federal Court – with Neil Murray SC) First instance and appeal – opposition to registration of trade mark for electronic games and gaming.
- US Dairy Export Council v Consorzio Per La Tutela Del Formaggio Gorgonzola and Consorzio Per La Tutela Del Formaggio Asiago (Trade Marks Office – unled) opposition to registration of certification trade marks comprising geographical indications for cheese.
- Swancom v Jazz Corner Hotel (Federal Court – with Ed Heerey QC) First instance and appeal - Trade mark infringement and revocation in relation to live music services.
- Energy Beverages v Kangaroo Mother (Federal Court – with T Cordiner KC) appeal from Trade Marks Office – opposition to registration of trade mark for food and beverages.
Patents, confidential information and comparative advertising
- NeoBev v Bacchus Distillery (Federal Court - with Tom Cox SC) Declaration as to invention and ownership of patent for alcohol production.
- Gomez and ors v Rawson and ors (Federal Court - with Colin Golvan QC) Patent infringement, breach of copyright and breach of confidence in relation to coal processing technology.
- REA Group v Fairfax Media Pty Ltd (Federal Court - with Will Houghton QC) Trial and contempt proceedings – misleading or deceptive conduct in relation to comparative advertising for property apps.
- Gilbert v J and Facebook (Federal Court – with Will Houghton QC) Injunction – Breach of confidence and breach of copyright in relation to publication of photos on the internet.
- Woolworths Group v Waldron (Supreme Court – unled) Injunction – Breach of confidence in relation to publication of customer details on the internet.
- Cordover v Australian Electoral Commission (AAT - unled) Exemption from access to source code of software used to conduct Federal Senate election count under Freedom of Information Act on the basis it is a “trade secret”.
Technology, regulatory and public law
- Ringtail Asia Pacific v FTI Technology (Federal Court – with John Griffiths SC) Injunction – breach of contract and misuse of market power in relation to software agreement.
- Re HZXD and Innovation Australia (AAT – unled) Registration of “research and development activities” under Income Tax Assessment Act in relation to software development project.
- Collection Point v Commissioner of Taxation (Federal Court - unled) First instance and appeal – obligation to write software to generate computerised records under Freedom of Information Act.
- Re Hanlon and Assistant Treasurer and Australian Securities and Investments Commission (AAT – unled) Refusal to register “Pommiebasher” as an offensive business name under Business Names Registration Act.
- Re Watson and Australian Electoral Commission (AAT - unled) Review of decision to permit registration of political party logo incorporating Eureka flag.
- Honest Reveira v Registrar of Trade Marks (Federal Court – unled) Judicial review of decision to grant an extension of time to file a notice of intention to oppose a trade mark.
- Digicel (Vanuatu) v Telecommunications and Radiocommunications Regulator (Supreme Court of Vanuatu – with Edward Nalyal) Judicial review of pricing determination of Vanuatu telecommunications regulator.
- Trans-Tasman IP Attorneys Disciplinary Board v Massang (Trans-Tasman IP Disciplinary Tribunal – unled) Disciplinary proceeding against patent attorney for failure to warn of material risks associated with patentability.
- Re Clearview AI and Australian Information Commissioner (AAT – unled) Interference with privacy by collection of images from websites hosted on servers located in Australia.
* Liability limited by a scheme approved under Professional Standards legislation