Clive Elliott
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| Date of Birth: Degrees Held: Barrister Sole: | 4 July 1956 BA, LLB (Natal), LLM (VUW) 2000 |
Areas of Practice
General Background
Professional Background
Case History
Recent Experience
Publications & Relevant Activities
- Intellectual Property Law
- Information Technology Law
- Commercial Litigation
- Arbitration
- Alternative Dispute Resolution
Clive is a registered patent attorney, barrister and arbitrator. Before going to the Bar, he was a partner and headed the litigation team at Baldwin Shelston Waters/Baldwins and was with the firm for just on 17 years.
He is an immediate past council member of the Legal Practice Division of the International Bar Assciation (IBA) and past co chair of the Intellectual Property and Entertainment Law Committee of the IBA. He is president and a member of the management board of the Intellectual Property Society of Australia and New Zealand (IPSANZ).
He is convenor of the Intellectual Property working group of the New Zealand Law Society and past convenor of the Technology and Law Committee of the Auckland District Law Society. He has for some years been a member of the Electronic Commerce Sub Committee of the New Zealand Law Society and was a previous convenor of the Legislation Committee of the Institute of Patent Attorneys.
He is a co-author of the Lexis Nexis loose-leaf texts Copyright and Design, Electronic Business Law and the chapter on Computer Contracts in Lexis Nexis' New Zealand Precedents. He is also the author of the chapter Intellectual Property in the Legal Practice Manual.
He has in the past been a part time lecturer in the post-graduate Masters course at both the Department of Law and the Department of Commercial Law at Auckland University and has taught the course “Selected Aspects of IP”.
He is a frequent writer and commentator on IP and information technology issues.
Educational and Professional Qualifications
- B.A. University of Natal, Durban, 1978
- LL.B. University of Natal, Durban, 1981
- Practicing Certificate, District Law Society, Auckland, 1985
- Registered Patent Attorney, 1990
- LL.M Victoria University, Wellington, 1991
- FAMINZ (Arb) 2008
Membership of Professional Bodies
- AMINZ (Arbitrators' and Mediators' Institute of New Zealand) Fellow and Arbitration Panel Member
- International Bar Association:
Past Council member - Legal Practice Division
Past Co Chair of Intellectual Property and Entertainment Law Committee - Auckland District Law Society:
Spokesperson - information technology law issues
Convenor - Technology and Law Committee - New Zealand Law Society:
Co-convener - Intellectual Property Committee
Member - Electronic Commerce Sub Committee - Intellectual Property Society of Australia and New Zealand (IPSANZ)
Vice President
Member - Trans National Committee of Management - New Zealand Institute of Patent Attorneys:
Fellow; Previously Convenor, Legislation Committee
Clive has acted as counsel in a number of major IP cases. He has handled diverse technologies and all aspects of IP, including patents, trade marks, trade secrets and copyright in the High Court, Court of Appeal and Privy Council/Supreme Court. He has acted as counsel in a number of arbitrations and is a fellow of the Arbitrator's Institute. He was the first New Zealander to be appointed to WIPO's panel of neutrals. He is also a member of the National Arbitration Forum and an Expert in the New Zealand Domain Name Resolution Service.
Has appeared as lead counsel in a number of cases including:
- Ancare v Fort Dodge (Privy Council - patent revocation - 2002)
- McCain Foods v Conagra (Court of Appeal - trade mark registration - 2002),
- Pacific Software v Perry Group (Court of Appeal - software commissioning - 2003)
- Peterson Portable v Lucas (Supreme Court - patent revocation - 2006)
- Fleming v Fletcher Concrete (High Court - copyright infringement 2006)
- Sintes v Harris (High Court - patent infringement and revocation - 2008)
- Peter Ward v Genesis Equipment (High Court - patent amendment - 2009)
- Sanofi-Aventis v AFT Pharmaceuticals Ltd (High Court - interim injunction - patent infringement - 2009)
Publications & Relevant Activities
- Electronic Business Law (Lexis Nexis) (co-author)
- Copyright and Design in New Zealand (Lexis Nexis) (co-author)
- Chapter on “Computer Contracts,” in Lexis Nexis New Zealand Precedents (co-author)
- Contributing author, Law Society’s Legal Practice Manual, on the topic of intellectual property
- Fast Track Update 2006, IP Accelerator, Lexis Nexis, November 2006
- Giving Your IP Protection Some Teeth: [Practical] Monitoring and Enforcement [Strategies], July 2006
- Patent Law and Enforcement - Biotechnology & the Law, Lexis Nexis, February 2005
- Intellectual Property Update, Auckland District Law Society, October 2005
- Internet Specific Issues, IP Accelerator, Lexis Nexis, October 2005
- From Lenah Meats to Le Mans, Recent Developments in New Zealand IP Law, IPSANZ, Adelaide, Melbourne and Sydney, July 2005
- The Copyright/Designs Overlap, IPSANZ National Conference, Noosa, 2004
- Litigation Review - (Some Of) the Latest Developments Here and Abroad, Vision Conferences, 2004
- Content on the Internet - the Competing Rights of Control and Access, Butterworths, 2002
- Business Online - The Legal Issues, How to Identify, Protect and Capture Value in an Online Business, New Zealand Law Society, May 2002
- The New Zealand Law Journal, August 2001 - Butterworths "The Napster Saga"
- Venture Magazine, May 2001 - Contributions to "Cover story"
- New Zealand member of Editorial Board of International Journals: IP Asia
- “Domain Name Disputes in a Cross-border Contract”, EIPR vol 21 issue 8, August 1999
- The Internet - A New World without Frontiers - New Zealand Law Journal, November 1998
- The Oggi Case - New Zealand Domain Grabber Dealt To - Trademark World, August 1998
- “Informed Discussion Name of the Game,” NZ Infotech Weekly, December 9, 1996
- “Infoline Names and Telephone Numbers: A New Form of Intellectual Property?” Trademark World, p. 13, October 1996
- “The Design/Copyright Overlap--Update on Reform Process,” Lawtalk, p. 7, July 22, 1996
- “CER at the Crossroads: Business Law Harmonisation--Where to Now,” Commercial Law, p. 47, February 1995
- “New Copyright Act,” International News, p. 10, February 1995
- “Once a Copy Always a Copy,” Copyright World, Issue 43, p. 28, September 1994
- “The Primetime Case in New Zealand--TV3 Network Services Limited v. Television New Zealand Ltd Fisher J, HC-Auckland CP50/93; 8th February 1993. Application for Interim Injunction Regarding Television Programme Name,” Copyright World, Issue 32, p. 44, August 1993
- “The Common Law: Unfair Competition and sui generis Legislation--A Time for Reappraisal,” Copyright World, Issue 20, p. 25, January/February 1992
- “Crucial Issues in IP Commercialisation,” Managing Intellectual Property, p. 13, November 1992
- “Copyright Law--The ABC’s,” Design Z, December 1988
- “Call for New Copyright Laws to Cover Computer Field,” Mercantile Gazette International, August 22, 1988
- “Service Mark Registration Arrives,” NZ Business, p. 6, March 1988
- “New Zealand--Imprudent Use of ‘Prudential’ Trademark,” IP Asia, p. 28, November 25, 1988
- Marketing Magazine, contributing columnist on intellectual property topics (1985-1989)
- Infolene Names & Telephone Numbers. A New Form of Intellectual Property, Trademark World, October 1996
- Papers/Public Speaking Engagements
- Chair, Biotechnology Law Conference, 2003, sponsored by LexisNexis "Where Biotechnology, Law and Commerce Converge"
- Guest Speaker, The Protection of Traditional/Cultural Rights - Part II - Legal Perspectives, November 2000
- Digital Copyright Seminar, April 2002, "Content on the Internet"
- Workshop, September 2001 "Effectively Structuring Joint Ventures Between Traditional Businesses and E Business"
- NZLS - Guest Speaker at Seminar, August 2001 - "Enabling Your Clients to do Business Online"
- Guest Speaker Conference, July 2001 "Intellectual Property Rights - An update on Key Developments"
- Guest Speaker at Conference, June 2001 - "Untangling Web Law"
- “Making the Rules Up As You Go!”, Multimedia Agreements, Australia and New Zealand LES Conference, Rotorua, April 1996
- “Legal Issues for Intellectual Property and Packaging,” Intellectual Property--A Seminar sponsored by the International Trademark Association and the Packaging Industry Advisory Council
- “Outline of the Major Provisions of the Copyright Act 1994 as They Relate to the Computer/Communications Industry,” The New Copyright Act, New Zealand Society for Computers and the Law Inc., Wellington, March 1995
- “Intellectual Property Law--Understanding the Interface Between Australia and New Zealand,” Maximising Profit through Internationalising and Commercialising Intellectual Property, Sydney, November 1994
- “Patents Update,” Intellectual Property, University of Auckland, July 1994
- “Government Reform of Industrial Design and Copyright Law,” Auckland Manufacturers’ Association Inc., October 1992
- “Workshop II--Commercialising Research from Universities and Crown Research Institutes,” The Commercial Benefits and Realities of Intellectual Property--Protect your Assets and Profits, Auckland, June 1992
- “Maximising your Legal Protection, Part A: The Basic Issues, Part B: Advanced Issues in Software Copyright,” Computer and Database Law, Wellington, September 1992
- “The Legalities of Computer Fraud,” Combating Fraud and Improving Security, Auckland, May 1991
- “Market Entry Strategies,” Agents, Distributors and Licensees Seminar, Auckland Regional Chamber of Commerce, August 1991
- “A Licensing Success Story and a Disaster: What went Right and Wrong?”, member of the panel of commentators, Licensing and your Export Business, Licensing Executives Society Australia and New Zealand, Auckland, November 1990
- “Unfair Competition and sui generis Legislation--Necessary Evils?”, Institute of Patent Attorneys, September 1990
- “Aspects of Copyright and Intellectual Property in GIS,” Getting it all Together with GIS, The First National GIS Conference, Wellington, June 1989
- Presentation at Patents and Trademarks Seminar, Chamber of Commerce, Auckland, May 1990
- “Legal Protection and the New Technologies--The Need for Reform,” thesis for LL.M. degree, Victoria University