As experts in copyright law, we help clients navigate the legal complexities that arise through the convergence of media, and the digital transformation or disruption of their industries. Some of the practice’s landmark copyright law cases include the Cooper and Kazaa cases, IceTV, the Roadshow/iiNet case and Phonographic Performance Company of Australia v Commercial Radio Australia.
These test cases have set the benchmarks in Australia for issues such as authorisation liability in the digital environment, the right of communication, safe harbours, the broadcast right, live streaming, information works and originality in copyright works.
We also have a leading Australian Copyright Tribunal practice which specialises in complex copyright licence rate-setting cases in Australia. These significant cases have involved determining the licence fees payable for the use of copyright content across a wide range of different industries including the music, radio, television, fitness, restaurant and nightclub industries.
As leading copyright lawyers, we act for marquee clients in the media and entertainment industry including both the recording and motion picture industries, a rarity amongst other law firms. We also advise software and database suppliers and users, internet and technology companies, broadcasters, consumer electronics companies, publishers and advertisers, media monitoring agencies, and governments and other public institutions. No other law firm in Australia acts for such a renowned portfolio or such a diverse range of clients with interests in copyright. Our clients invest significant resources into their IP and we are dedicated to ensuring these assets are protected.
Our copyright law experts are known for their fierce advocacy in copyright matters, for partnering closely with their clients to achieve their commercial objectives, and for finding innovative solutions to highly complex copyright disputes, particularly in the digital space.
As a part of our broader IP practice, the group also works closely with our Trade Mark and Patents teams – providing clients with a full suite of IP services.
- Litigation and defence: We run more copyright trials and appeals in our Federal Courts than any other Australian copyright practice. Many of our test cases have been ultimately determined by the High Court of Australia.
- Seeking urgent and extraordinary relief: Our team has extensive experience in urgent interlocutory court processes including obtaining preliminary discovery, Anton Piller and Mareva orders, and additional damages for copyright breaches.
- Anti-counterfeiting: We regularly rely on actions in copyright to deal with counterfeit goods including working with Australian Customs and other government agencies to prevent the import, distribution and sale of infringing products.
- Copyright valuation and rate-setting: We have extensive experience in copyright rate-setting, actions in the Copyright Tribunal and the application of royalty rates across diverse industries dealing with different uses of copyright. This area of copyright is highly specialised and can involve complex issues of valuation and competing economic evidence on the value of the copyright to the copyright owner and user.
- Advice and counselling: We have advised on all aspects of the Copyright Act, including subsistence, ownership, chain of title, disposition and assignment, infringement, fair dealing, defences and safe harbours.
- Clearance, assignment and licensing: We advise on clearance, assignment and licensing in relation to all forms of copyright works and subject matter including digital content on websites, mobile apps and social media.
- Moral rights and performers’ rights: Our team has run leading cases on moral rights duties and infringements.
- TPMs and anti-circumvention: We have advised on and litigated the provisions governing access controls, anti-circumvention and their application to digital content, software and websites.
- Confidential information, trade secrets, data protection and privacy: We have acted in many cases involving claims of breach of confidence, and advised extensively in relation to data protection and cyber security issues.
- Lobbying and thought leadership: We have authored numerous articles, papers and texts on copyright law and regularly provide lobbying assistance to companies and industry groups including the preparation of submissions and representations to government concerning copyright and digital issues. Our team’s test cases in copyright have been studied in law schools across Australia and internationally (including at Oxford and Cambridge).
- Landmark High Court of Australia proceedings brought by international and local film studios against the Australian ISP iiNet in connection with the copyright infringing use of BitTorrent by the ISP's customers: Roadshow Films Pty Ltd v iiNet Ltd (2012) 286 ALR 466.
- Proceedings brought by a major Australian commercial television network in the High Court of Australia concerning copyright in data compilations, with far reaching implications in relation to the standard for originality in Australia: IceTV Pty v Nine Network Australia Pty Ltd (2009) 239 CLR 458.
- Proceedings brought by the music industry in relation to the authorisation of online copyright infringement: Cooper v Universal Music Australia Pty Ltd (2006) 156 FCR 380.
- Proceedings and subsequent global settlement was the largest ever copyright action in Australia on behalf of the Australian and international recording industries against operators of the Kazaa peer-to-peer file-sharing system: Universal Music Australia Pty Ltd v Sharman License Holdings Ltd  FCA 1242.
- John Padgett aka ‘Johnny Jewel’ and Lori Monahan aka ‘Ida No’ who make up the American electronic music ‘Glass Candy’ in the highly publicised copyright infringement proceedings brought in the Federal Court by Vanda & Young, the songwriters of the 1977 disco hit ‘Love is in the Air’.
- Aristocrat Technologies in relation to preliminary discovery proceedings in the Federal Court of Australia seeking production by Ainsworth Game Technology Ltd (Ainsworth) of key documents and information relating to potential multiple causes of action for copyright infringement, breaches of the Australian Consumer Law, common law passing off, breach of confidence, breach of contract and inducement to breach contract.
- Qudos Mutual Limited in a dispute with Infosys relating to Qudos’ IP and confidential information being misused by Infosys for another customer, the Australian Military Bank. Gilbert + Tobin has acted for Qudos in relation to this dispute, including managing the dispute resolution process under the agreement between the parties and ultimately commencing preliminary discovery proceedings relating to potential multiple causes of action for copyright infringement, breach of confidence and breach of contract.
- Ground-breaking copyright enforcement cases and rate-setting Copyright Tribunal proceedings for the recording industry dealing with new technologies and new media rights, including peer-to-peer file-sharing, use of online technologies and internet radio simulcasting.
- State Street Global Advisers (SSGA), in a high-profile case against law firm Maurice Blackburn, and (formerly industry super funds HESTA and Cbus) over the use and promotion in Australia of a replica of SSGA’s iconic Fearless Girl statue that sits outside the New York Stock Exchange, and the use of SSGA’s Fearless Girl trade mark and copyright in the statue.
- Designing and conducting robust anti-counterfeiting programs for leading brands, including Selfcare, iNova Pharmaceuticals, Red Bull, Motion Picture Association; Motion Picture Association of America; Australia New Zealand Screen Association; Alliance for Creativity and Entertainment, Netflix, Take-Two Interactive, Inc and Epic Games.
Awards + Recognition
Intellectual Property Team of the Year – winners 2020, 2017, 2015
Ranked Tier 1 for Copyright and related rights
Best copyright firm
Gilbert + Tobin excels in soft IP, with a particular forte in the copyright space and in contentious matters. It consistently acts on some of the largest and most challenging copyright cases in the jurisdiction and is at the forefront of copyright law developments.
A striking feature of Gilbert + Tobin’s IP practice is its copyright group, widely considered a market leader that acts for the Australian recording and motion picture industries.