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Intellectual Property Forum Issue 123

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Intellectual Property Forum Issue 123 Issue 123 Intellectual Property Forum Issue 123 Journal of The Intellectual Property Society of Australia and New Zealand Inc. March 2021 Co-Editors Fiona Phillips Fiona Rotstein Editorial • In Conversation with Jo Oliver • Obituary: John Adrian Sterling, 17 April 1927 – 29 November 2020 • Articles • Finding Harmony between “Commonplace” and “Copyright”: a Contents Sound Legal Approach to Borrowing in Popular Music • Parameteritis in Patent Claims – New Diagnosis, Old Cures • Geographical Indications and the Australia-EU FTA Negotiations: an Assessment of the Potential Costs and Benefits to Australia • Store Layouts and the Trade Mark Apple: Will Australia Take a Bite? • Reports • The INTELLECTUAL PROPERTY FORUM Decision of the Full Federal Court of Australia in Sandoz v Lundbeck and its Implications in Pre-Grant and Post-Patent Term Environments • Review of Art Law and the Business of Art • Current Developments • Australia • New Zealand • Asia • Europe • North America • Africa Intellectual Property Forum The Intellectual Property Society of Australia and New Zealand Inc The Journal of The Intellectual Property Society of Australia Subscriptions to the Journal Trans Tasman National Committee of Management and New Zealand Inc ABN 056 252 558 Four issues of the Journal are published annually. President: Shelley Einfeld Co-Editors Membership of the Society entitles you to receive the Journal. Subscriptions to the Journal can be purchased from the Society. Contact the Society for Fiona Phillips Vice Presidents: Clare Cunliffe and Fiona Rotstein subscription and membership information: c/- National Secretariat Gillian Woon Editorial Board The Intellectual Property Society of Australia and New Zealand Inc The Honourable Judge Julia Baird, GPO Box 2491 Secretary: Ian Horak Judge of the Federal Circuit Court of Australia Melbourne Victoria 3001 Australia The Honourable Dr Annabelle Bennett AC SC, Telephone: (+61 3) 9761 2833 Former Justice of the Federal Court of Australia Email: [email protected] Treasurer: Thomas Huthwaite Ms Angela Bowne SC, Website: www.ipsanz.com.au Barrister, Sydney Members Professor Kathy Bowrey, Contributions to the Journal Contributions to Intellectual Property Forum are invited on intellectual property subjects Victoria Bell, Nadia Braad, *David Cox, Katrina Crooks, Luke Dale, Megan Evetts, Dean Gerakiteys, Kevin Glover, Mark Goldblatt, Faculty of Law, University of New South Wales and related issues dealing with commercial law, trade practices, licensing, innovation and *Ann-Kathrin Goller, Lauren Gore, John Hennessy SC, *Daniel Kiley, *Elizabeth Lawson, Alexia Mayer, *Melissa McGrath, *Stephanie Rowland, Mr Andrew Brown QC, technology transfer. Barrister, Auckland, New Zealand Robynne Sanders, Natalie Shoolman, David Stewart, Chris Williams and *Garry Williams. Prospective contributors should write to: The Honourable Justice Brendan Brown, Court of Appeal of New Zealand Editor Past President The Honourable Justice Stephen Burley, Fiona Rotstein Justice of the Federal Court of Australia c/- National Secretariat Luke Merrick The Intellectual Property Society of Australia and New Zealand Inc Mr Julian Burnside AO QC, GPO Box 2491 Barrister, Melbourne Melbourne Victoria 3001 Australia New South Wales Committee The Honourable Susan Crennan AC QC, Telephone: (+61 3) 9761 2833 Former Justice of the High Court of Australia Chairperson: Melissa McGrath Email: [email protected] Mr Clive Elliott QC, Barrister, Auckland, New Zealand Tommy Chen, Dean Gerakiteys, Stuart Green, Alison Jones, Roseanne Mannion, Angela McDonald, Hazel McDwyer, Shauna Ross, Contributor’s Guidelines Ms Shelley Einfeld, By submitting material for publication in Intellectual Property Forum (“the Journal”), you Catherine Sedgley, Natalie Shoolman, Rebecca Simpson, Anna Spies, Frances St John, Vineetha Veerakumar and Gillian Woon. Shelley Einfeld IP, IPSANZ President, Sydney agree to the following terms and conditions: Mr Anthony Franklin SC, 1. Material submitted for publication in the Journal is critically appraised by the Editor (having Barrister, Sydney New Zealand Committee regard to the Editorial Policies) who retains absolute discretion as to whether or not the material Chairperson: Garry Williams The Honourable Robert French AC, should be published. Former Chief Justice of the High Court of Australia 2. Contributors grant to the Intellectual Property Society of Australia and New Zealand Inc. (“the Mr Andrew Goatcher, Society”) a non-exclusive, irrevocable, perpetual, worldwide licence to publish, reproduce and Sarah Chapman, Kate Duckworth, Clive Elliott QC, Kevin Glover, Sonya Hill, Thomas Huthwaite, Tim Mahood, Hamish Selby and Daisy Williams Principal, Griffith Hack, Melbourne communicate their copyright material in the Journal and for services, including but not limited Mr Mark Goldblatt, to, libraries and educational institutions, as approved by the Society from time to time. Queensland Committee Barrister, Melbourne 3. The material is submitted by a contributor for publication on the basis that it has not been Chairperson: Elizabeth Lawson The Honourable William Gummow AC QC, previously published and is an original work of the contributor. Former Justice of the High Court of Australia 4. The contributor is responsible for the accuracy of the material, including citations and Nadia Braad, James Cameron, Georgia Campbell, Andrew Clarke, Taryn Lovegrove, Elisa McCutcheon, Fraser Smith, Kellie Stonier and Dr Francis Gurry, references. Former Director General, WIPO, Geneva 5. Contributors, in preparing material for publication in the Journal are required to have regard to Sandy Zhang Professor Michael Handler, the following guidelines: Faculty of Law, University of New South Wales a. Articles written for the Journal are to be approximately 5,000-10,000 words South Australia Committee (including endnotes), with endnotes at the end of the article. Ms Katrina Howard SC, Chairperson: Daniel Kiley Barrister, Sydney b. Reports written for the Journal are to be approximately 1,000-4,000 words (including endnotes), with endnotes at the end of the report. The Honourable Judge Christopher Kendall, Judge of the Federal Circuit Court of Australia c. The following information must be included with the material: Niomi Abeywardena, Amy Bishop, Alastair Donaldson, Louise Emmett, Eugene Reinboth, Adam Rosser, Josh Simons, Greg Tye and Paula Zito The Honourable Justice Susan Kenny, d. the contributor’s name, title, contact details: address, telephone and e-mail Federal Court of Australia details and a summary of the article or report (50-100 words). Victorian Committee The Honourable Michael Kirby AC CMG, e. The material is to be supplied in electronic form and to comply with the Chairperson: Ann-Kathrin Goller Former Justice of the High Court of Australia, Journal’s Style Guide. The Honourable Dr Kevin Lindgren AM QC, 6. In consideration of the Society publishing the material in the Journal, the contributor agrees Former Justice of the Federal Court of Australia that any proceeds for such publication received by the Society may be retained by and vest in Lucy Davis, Sue Gatford, Sarah Huang, Karin Innes, Lauren John, Ben Mawby, Rebecca Pereira and Jack Shan Mr Luke Merrick, the Society. Barrister, Melbourne Western Australian Committee The Honourable Justice John Middleton, Federal Court of Australia Submission Dates for Contributions: Chairperson: David Cox and Stephanie Rowland Dr Tania Obranovich, Journal Issue Submission Dates Chief IP and Legal Strategy Officer, Invivoscribe, Melbourne June 2021 before 1 May 2021 Bronte English, Stephanie Gan, Lauren Gore, Bindhu Holavanahalli, Adam Kearney, Clare Mould, Madeleen Rousseau, David Stewart, Ms Jackie O’Brien, September 2021 before 1 August 2021 Ebony Sweetnam, David Wilson Amanda Wong Partner, Norton Rose Fulbright, Sydney December 2021 before 1 November 2021 Emeritus Professor Sam Ricketson AM, March 2022 before 1 February 2022 Faculty of Law, University of Melbourne Executive Secretary The Intellectual Property Society of Australia and New Zealand Inc is an independent Ms Helen Rofe QC, society whose principal objectives are to provide a forum for the dissemination and Caroline Reznik Barrister, Melbourne discussion of intellectual property matters. Ms Rosemary Wallis, Barrister, Auckland, New Zealand The Honourable Justice David Yates, *State Chairperson Federal Court of Australia ©2021 The Intellectual Property Society of Australia and New Zealand Inc. All rights reserved. ISSN 0815-2098 The views expressed are those of the authors and contributors to this Journal and are not necessarily those of the Society or its members. No claims are made by the Society as to the accuracy or authenticity of material published and it is the responsibility of readers to avail themselves of the latest information or advice in respect of matters reported or discussed in the Journal. Contents 3 Editorial Fiona Phillips and Fiona Rotstein 5 In Conversation with Jo Oliver Fiona Phillips 8 Obituary: John Adrian Sterling, 17 April 1927 – 29 November 2020 Emeritus Professor Sam Ricketson AM Articles 10 Finding Harmony between “Commonplace” and “Copyright”: a Sound Legal Approach to Borrowing in Popular Music Chelsea Wong and Thomas Huthwaite 19 Parameteritis in Patent Claims – New Diagnosis, Old Cures Craig Smith 33 Controversial Geographical Indications and the Australia-EU FTA Negotiations: an Assessment of the Potential Costs and Benefits to Australia Sini Karoliina Riipinen 48 Store Layouts and the Trade
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