Current practice

Kathryn is a partner specialising in intellectual property, trade practices and commercial litigation, dispute resolution and advice.

As a member of the Intellectual Property–Litigation group in the Sydney office of Freehills, Kathryn has been advising clients in the publishing, advertising, media and entertainment, information technology, pharmaceutical, manufacturing and consumer goods industries for over 15 years. Kathryn is also head of the Freehills pharmaceutical focus group.

Industry experience

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).

Professional background

Kathryn joined Freehills in 1988 working in the general commercial area, specialising in media issues. Kathryn spent six months on secondment to IBM Australia Limited in 1991–92.

She spent two years in the intellectual property department of Linklaters in London before returning to Freehills and joining the firm's intellectual property group in 1995. Kathryn was made a partner of Freehills in 1998.

Kathryn is a member of a number of intellectual property societies and in particular is:

• a former president of the New South Wales Society for Computers and the Law
• a national committee member of the Intellectual Property Society of Australia.

She has written and presented numerous papers on her areas of expertise.

Kathryn has a combined Arts/Law (Honours) degree from the University of Sydney and a Master of Laws from the London School of Economics.

As part of her Masters of Laws Kathryn undertook comparative studies of the legal systems governing intellectual property in the United States, the European Union and Australia.

Kathryn is admitted in the Supreme Courts of New South Wales, the Federal Court of Australia and the High Court of Australia.