Michael is the Head of the Intellectual Property Group at Gilbert + Tobin and one of the firm's senior litigators.
He has a wide-ranging practice that spans IP litigation, complex contractual disputes (particularly software), product liability, entertainment law, media law, technology law (data protection and cyber security) and innovation (IP commercialisation). Unusually for the field, his IP litigation experience covers the spectrum of copyright infringement, trade secrets, trade mark infringement, false advertising, anti-counterfeiting and patent litigation – and he has run leading cases in each area of IP.
Michael has a leading ranking in major legal directories (Chambers and Partners, Legal 500, Best Lawyers and Doyles). In 2019 he was named Intellectual Property Partner of the Year at the Lawyers Weekly Partner of the Year Awards. In 2020 the team he leads was named Intellectual Property Team of the Year at the 20th Lawyers Weekly Australian Law Awards (for the third time in the last 6 years).
Michael is known for his outstanding track record of success in litigation and extracting clients from disputes on favourable terms. Strategic, decisive and timely advice and advocacy are the hallmarks of his approach. He is well known for identifying and implementing creative legal solutions to business problems. He is the lawyer that leading local and international companies turn to when they need intelligent and strategic representation and advice to navigate their most complex issues.
He has substantial trial experience in State Courts and in the Federal Court and has run numerous appeals, including several before the High Court of Australia. He recently acted for the successful appellant in Calidad Pty Ltd v Seiko Epson Corporation  HCA before the High Court, which resulted in a landmark judgment on the rights of repair and modification of patented products and the recognition of the doctrine of exhaustion for the first time in 112 years under Australia law. Gilbert + Tobin client Calidad succeeds in landmark High Court patent appeal. Read the High Court of Australia’s full decision on Calidad Pty Ltd & Ors v. Seiko Epson Corporation & Anor.
Michael is also a leading entertainment lawyer, having acted for major entertainment companies, creators and local and international trade associations in relation to online infringement, complex entertainment law disputes and law reform for over two decades. He played an instrumental role in advocating for the introduction of site blocking under Australian copyright law.
Michael is widely published on IP law, including patents, copyright and cross-border IP disputes. His most recent paper is “Patenting Software Inventions, Abstract Ideas, and Judicial Characterisation: The Shift Away from Recognising Patentability of Computer Software in Australia after Encompass, Rokt and Aristocrat” (2020) 30 AIPJ 182.
He is also a regular commentator on developments in IP law and the future of legal practice in Australia. Michael was recently interviewed by the ABC’s Law Report concerning the Calidad decision.
Michael holds degrees in Economics and Law (First Class Honours, prize list) from the University of Sydney. His professional memberships include INTA, the ABA, AISA, Copyright Society of Australia and IPSANZ.
Representative litigation experience includes:
- Calidad Pty Ltd v Seiko Epson Corporation  HCA 41 (PATENTS, REPAIR, PATENT EXHAUSTION): Successful High Court appeal overturning findings of infringement, affirming right of repair and modification of patented articles and recognising of doctrine of exhaustion after 112 years in place of the previous doctrine of implied licence.
- Taxiprop Pty Ltd v Neutron Holdings Inc  FCA 1565 (TRADE MARKS, ACL, NON-USE): Successful defence of trade mark infringement and ACL claim against the use of LIME for electric scooters in Australia, successful prosecution of non-use application, and exercise of discretion to cut services of a registered trade mark for non-use.
- BCI Media Group Pty Ltd v Corelogic Australia Pty Ltd  FCA 1556 (COPYRIGHT, CONFIDENTIAL INFORMATION, PRELIMINARY DISCOVERY): Successful application for discovery of information based on suspected copyright infringement and breach of confidence, arising out of alleged unauthorised access to online subscription database.
- State Street Global Advisors Trust Company v Maurice Blackburn Pty Ltd  FCA 1464 (ACL, TRADE MARKS, COPYRIGHT): Successful application for release from the Harman undertaking to use a class of documents discovered in Australian proceedings in proceedings before the Southern District of New York involving similar claims.
- Freelancer International Pty Ltd v Matthew O’Kane  NSWSC 159 (NSWSC) (CONFIDENTIAL INFORMATION): Successful application for plaintiff seeking orders dismissing preliminary discovery action after threat to destroy company information carried out by ex-employee.
- State Street Global Advisers v Maurice Blackburn & Ors (VID113/2019) (ACL, TRADE MARKS, COPYRIGHT): Acting for State Street Global Advisers in its high-profile case over the promotion in Australia of a replica the Fearless Girl statue outside the New York Stock Exchange. This is an important test case for protection of global corporate brand assets in Australia. The case is going to trial in late November 2019.
- Qudos Mutual Limited v Infosys Limited  FCA 702 (COPYRIGHT, CONFIDENTIAL INFORMATION) (Trial): Acting for financial institution in successful application for discovery from an IT supplier contracted to deliver an integrated banking platform.
- Encompass Corporation & Anor v InfoTrack (NSD734/2018) (PATENTS): Acting for the patentee and licensee of online search technology in patent infringement proceedings against a competitor. It is one of the most significant cases concerning software patents in decades with the Court considering when computer software can meet the threshold for "manner of manufacture". The appeal attracted a rare 5 member judicial bench to determine the eligibility of software under Australian patent law.
- Boomerang Investments v John Paggett & Ors (NSD1738/2017) (ENTERTAINMENT, COPYRIGHT): Currently acting for the band “Glass Candy”, in defence of infringement claims relating to the song “Love is in the Air”. The decision will clarify the extent of copyright protection over a short lyrical phrase (“Love is in the Air”) and accompanying musical phrase. A decision is anticipated in 2020.
- Crescent Funds Management (Aust) Ltd v Crescent Capital Partners Management Pty Limited (TRADE MARKS)  123 IPR 412: Acting successfully in defence of an appeal in a case where there was a finding of misleading of deceptive conduct against a business in the financial service industry (under ss 12DA, 12DB and 12GF of the Australian Securities and Investments Commission Act 2001).
- Australian Mud Company Pty Ltd v Coretell Pty Ltd  351 ALR 83 (PATENTS) (Full Court appeal): Acting for the successful appellant an award of damages for unjustified threats of patent infringement. The appeal decision delivered important guidance on the requirements to prove the necessary causation to recover damages for unjustified threats. The award was overturned, resulting in no damages being payable.
- Coretell Pty Ltd v Australian Mud Company Pty Ltd  FCAFC 54 (PATENTS) (Full Court appeal, trial): Acting for a patentee in successful patent infringement proceedings against a competitor in connection with the use of core sample orientation technology used in connection with geological surveying operations and other drilling operations. Challenges to validity of the patents were dismissed.
- Aristocrat Technologies Australia Pty Ltd v Global Gaming Supplies Pty Ltd  FCAFC 22 (TRADE MARKS) (Full Court appeal, trial): Acting for a major gaming machine manufacturer in its trade mark infringement proceedings against the participants in a joint venture from 1 October 2004 supplying refurbished gaming machines with counterfeit parts to overseas markets including the South American market.
- Aristocrat Technologies Australia Pty Ltd v Allam  327 ALR 595 (ENFORCEMENT): Successfully having writ issued in High Court set aside based on material non-disclosure in application.
- Kafataris v Davis  120 IPR 206 (PATENTS) (Full Court appeal, trial): Acting in successful defence of an appeal in dispute over ownership of and entitlement to an innovation patent for betting options using a secondary or supplemental card game in a game of baccarat.
- Energizer Australia Pty Ltd v Procter & Gamble Australia Pty Ltd  FCA 347 (BRANDS) (Trial): Successfully obtaining a finding of contempt against a supplier of batteries following a successful claim for misleading or deceptive conduct over battery advertising.
- Samsung Electronics Australia Pty Limited v LG Electronics Australia Pty Limited  113 IPR 11 (ADVERTISING) (Trial): Acting for a major electronic manufacturing in claims for misleading and deceptive advertising against a competitor concerning comparative advertising claims over 3D television screen technology. The decision also provided key guidance on the use of survey evidence.
- Pavlovic v Universal Music Australia Pty Limited  NSWCA 313 (ENTERTAINMENT) (NSW Court of Appeal, trial): Acting for a major recording company in connection with a dispute over a label joint venture. The decision provided guidance on the requirements for holding parties to a settlement negotiated between their legal practitioners.
- Aristocrat Technologies Australia Pty Ltd v Global Gaming Supplies Pty Ltd  297 ALR 406 (High Court appeal, Full Court appeal, trial): Acting in High Court appeal in case concerning alleged copyright infringement by participants in a joint venture from 1 October 2004 supplying refurbished gaming machines with counterfeit parts to overseas markets including the South American market.
- Roadshow Films Pty Ltd v iiNet Limited  248 CLR 42 (COPYRIGHT) (High Court appeal, Full Court appeal, trial): Acting for the motion picture studios in their copyright infringement action against an Australian ISP. The case, one of the first in the world to consider the liabilities of ISPs, and determined key issues including the how infringements occur on file sharing systems, liability for authorisation and safe harbours under Australian law. The case was the precursor to the enactment of the Australian site blocking regime.
- Fernandez v Perez  NSWSC 1242 (ENTERTAINMENT): Acting in the successful defence of a major international artist (PitBull) against a contract claim brought by a music promoter.
- Procter & Gamble Australia Pty Limited v Energizer Pty Limited (No 2)  FCA 1347 (ADVERTISING) (Trial): Acting for the successful defendant against claims of misleading of deceptive conduct relating to advertising and promotion of personal razors.
- IceTV Pty Limited v Nine Network Australia Pty Limited  239 CLR 458 (COPYRIGHT) (High Court appeal, Full Court appeal, trial): Acting for a major Australian television network in its claim for infringement in program schedules. In its first judgment considering the scope of copyright protection in compilations since 1918, the High Court gave an authoritative ruling on copyright protection in Part III original works.
- Venus Adult Shops Pty Ltd v Fraserside Holdings Ltd  FCAFC 188 (COPYRIGHT) Full Court appeal, trial): Acting for successful copyright owner in claims of infringement in adult films. Defences based on claims of illegality in the films and their sale were dismissed in the appeal.
- Spatialinfo Pty Ltd v Telstra Corporation Ltd  FCA 950 (COPYRIGHT, CONFIDENTIAL INFORMATION) Settled before trial): Acting for Autodesk in major copyright infringement and confidential information action against Autodesk and Telstra by the creator of several computer programs used in a cadastral network system.
- Cooper v Universal Music Australia Pty Ltd  FCAFC 187 (COPYRIGHT) Full Court appeal, trial): Acting for the Australian recording industry in its landmark case against an operator of a hyperlinking pirate music website for copyright infringement. The case established the principles still in use today in copyright actions involving online file downloads from overseas websites. Special leave was refused.
- Universal Music Australia Pty Ltd v Sharman License Holdings Ltd  222 FCR 465 (COPYRIGHT) (Full Court appeal, trial): ("the Kazaa case"): Acting for the Australian recording industry in its landmark win against the operators of the Kazaa file-sharing system. In conjunction with parallel legal action the United States, the case produced 16 judgments on the way to a historic multi-million dollar settlement.
- Nine Films & Television Pty Ltd v Ninox Television Limited  67 IPR 46 (COPYRIGHT) (Trial): Acting for a major Australian television network in defence of claims of copyright infringement in a television format. This is one of the very few decisions on the scope of copyright in television formats and provides guidance on when such formats will be infringed.
- Datadot Technology Ltd v Alpha Microtech Pty Ltd  FCA 962 (PATENTS) (Trial): Acting for the patentee in the first successful infringement action brought in relation to an innovation patent certified in Australia.
- CDPP v Ng, Tran and Le  NSWLC 17 (COPYRIGHT, CRIMINAL LAW): Acting for the Australian recording industry in support of the first criminal prosecution of internet pirates in Australia, relating to the download service known as "mp3wmaland". The two principals (Tran and Ng) were convicted and received prison sentences of 18 months, suspended for three years.
Awards and Recognition
Winner: Intellectual Property Partner of the Year
Ranked in Band #1 for Intellectual Property: Trade Mark & Copyright
Ranked in Hall of Fame for Intellectual Property
Preeminent – Leading Contentious Intellectual Property Lawyers – NSW; Preeminent – Leading Intellectual Property Lawyers – Australia
Ranked Silver for Enforcement and Litigation
Ranked Bronze for Litigation
Recognised as a Copyright Star, Trade Mark Star and Patent Star (Australia)
Recognised for Intellectual Property Law, Litigation, Alternative Dispute Resolution and Entertainment Law
Recognised for "his technical knowledge, gravitas and strategic thinking." and his ability to "provide a higher-level perspective."
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