John Swinson

John Swinson

John Swinson specialises in intellectual property and technology law.  For over 30 years, John has acted for many high profile technology corporations, internet businesses, investors, and educational and financial institutions. He has considerable experience in the domestic and international aspects of copyright, patent, trademark, trade secret, Internet and privacy laws.

John advises clients on a variety of legal matters involving technology, including obtaining protection for new products and services, commercialising technology, enforcing rights, licensing, procurement, outsourcing, online contracting, project recovery, security, hacking, domain names and plant breeders rights.

John represents clients in a wide range of business sectors including travel, education, gambling, financial services, property, hotels, mining, software distribution, Internet start-ups and government.

John has litigated a number of leading cases, such as cases involving copyright in newspaper headlines, copyright in Java software, ownership of copyright in films, software patent infringement, trade secret misappropriation by employees, trade mark infringement, trade mark ownership, software piracy, misleading online advertising, domain name cybersquatting and failed computer implementations.

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As an expert arbitration panellist for the World Intellectual Property Organisation (WIPO), John has decided over 300 domain name ownership disputes, having decided more UDRP domain name disputes than any other Australian WIPO arbitrator. He has arbitrated disputes with parties including Donald Trump, Ian Fleming, Cindy Crawford, Jonathan Ivy, Holiday Inn and Facebook. John was also the chairman of the 2018 Australian Domain Administration Policy Review Panel that reviewed Australia’s domain name policies.

John is admitted to practice as a lawyer in both Australia and New York State.

John has been recognised as a leading lawyer in a number of prestigious legal directories including Chambers & Partners, where John is a ranked practitioner in Intellectual Property.

John is a Professor of Law at The University of Queensland and a former Adjunct Professor of Law at QUT Law School where he taught the "Cyberlaw" masters course for over 10 years.

John is a Member of the Panel of Arbitrators - South China International Economic and Trade Arbitration Commission (SCIA) also known as the Shenzhen Court of International Arbitration.

John is a former President of the Australian Fulbright Alumni Association and is a Harvard Law School graduate, in the graduating class of 1991 with Barack Obama.

Recent matters

  • Represented TechnologyOne in negotiations and subsequent arbitration proceedings in respect of a GITC contract dispute with Brisbane City Council
  • Represented Glencore Queensland in a software licensing dispute with Ventyx (Mincom) where the Supreme Court decided in favour of Glencore
  • Advising Expedia in relation to allegations of trade mark infringement by an automobile association regarding how properties are rated on Expedia
  • Representing Stolichnaya Vodka in the longest running Federal Court case in Australia, against the Russian Federation, regarding ownership of the famous Stolichnaya brand
  • Advised Queensland Treasury and the Department of Housing and Public Works on the whole of government procurement of a HR and payroll system, and then negotiated settlement of the dispute with IBM regarding the failed implementation of that system
  • Advised Bank of Queensland on major contracts for IT services outsourcing and eftpos implementation and management, including on-going ‘as a service’ provision of both IT and business services
  • Advised Orica in the negotiation of a joint venture between Orica and the University of Newcastle to develop a mineral carbonisation pilot plant at the university using NSW and Commonwealth grants in relation to clean energy
  • Represented Dimension Data in the negotiation of a managed services contract  to provide whole of building IT infrastructure for the 1 William Street building constructed for the Queensland State Government as its flagship office building
  • Successfully represented the iconic Gold Coast Q1 Resort in over six different cases (Trade Mark Office and Federal Court) attacking the validity of the Q1 trade marks
  • Represented Youku on its Tudou Chinese online video platform in copyright litigation against an Australian infringer
  • Advised Topshop on its domain name dispute regarding ownership of topshop.com.au
  • Acts for match.com in relation to its TINDER and SWIPE trade mark portfolios in Australia
  • Provided trade mark enforcement, management and strategy advice to DC Comics and Marvel in respect of their jointly-owned SUPER HEROES trade mark portfolio in Australia
  • Acted for Tatts Group Limited and its subsidiaries in proceedings against Lottoland Australia in the Federal Court for trade mark infringement and misleading or deceptive conduct
  • Acted for Ladbrokes Digital Australia in its acquisition of BetStar
  • Acted on the sale of Neds
  • Assisted TAFE Queensland with the drafting and negotiation of a contract regarding the drafting and negotiation of contract regarding the design and implementation of a new student management system
  • Successfully defended LexisNexis in leading copyright case brought by Australian Financial Review relating to copyright in newspaper headlines
  • Successfully defended computer programmer in Federal Court in relation to allegations of copyright infringement and trade secret misappropriation brought by former employer
  • Successfully defended Canstar Blue in a misleading conduct claim brought by SpecSavers regarding publication of a consumer survey
  • Successfully represented Australian artist, Richard Bell, in copyright dispute regarding film ownership and obtain substantial damages award for unjustified threats
  • Representing Microsoft Corporation in patent litigation in Federal Court in Australia brought by an Australian inventor who claimed to have invented key components of Microsoft Word. The case involved significant jurisdictional and technical issues.
  • Enforced trade mark rights in Queensland Federal Court's first Fast Track case, relating to misleading websites and domain names used by competitor of Mantra Hotel Group.

Memberships

  • Australian Domain Administration Policy Review Panel
  • Digital Media Research Centre Advisory Committee
  • Australian Fulbright Alumni Association
  • American Bar Association
  • American Intellectual Property Law Association
  • Copyright Society of the United States
  • South China International Economic and Trade Arbitration Commission (SCIA) Panel of Arbitrators
  • IPSANZ
  • AVCAL
  • Harvard Law School Association

Experience

  • 1999-present: Partner, King & Wood Mallesons, Brisbane
  • 2017-present: Professor, The University of Queensland
  • 2000-present: Domain Name Arbitrator, WIPO panel
  • 1999-2017: Adjunct Professor, Queensland University of Technology
  • 1997-1998: Senior Associate, Mallesons Stephen Jaques, Brisbane
  • 1995-present: Country Correspondent, Computer & Telecommunications Law Review
  • 1995-1996: New York Correspondent, Computer Law Association Bulletin
  • 1991-1996: Associate, Kenyon & Kenyon, New York City
  • 1991: Master of Laws, Harvard Law School
  • 1990: Fulbright Scholar
  • 1990: Solicitor, Mallesons Stephen Jaques, Brisbane
  • 1989-1990: Law Clerk, Federal Court of Australia
  • 1988: Bachelor of Laws (First Class Honours and University Medal), University of Queensland
  • 1986: Bachelor of Arts (Computer Science), University of Queensland


Location

Legal insights

The Licensing Executives Society Australia & New Zealand held its annual conference in Brisbane this month.

29 May 2019

This article was written by Lisa Huett and Stephanie Swan. Businesses who license their intellectual property (IP) rights need to act now and review their licensing and assignment arrangements to...

14 March 2019

Key takeouts for lawyers and businesses in the food industry

27 November 2018

The reach of the current internet blocking provisions under the Copyright Act 1968 (Cth) is set to be widened in reforms proposed by the Australian Government this month.

25 October 2018

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