The University of Western Australia

UWA Staff Profile

Ipsum Lorem

Robert Burrell

Professor Robert Burrell

Professor

Contact details
Address
The University of Western Australia (M253)
35 Stirling Highway
CRAWLEY WA 6009
Australia
Email
robert.burrell@uwa.edu.au
Qualifications
LLB LLM Lond., PhD Griff.
Biography
Robert now splits his time between UWA and the University of Sheffield, where he also holds a Professorial position. Robert’s previous academic positions include posts at the Australian National University and King’s College London. He has also been a Herbert Smith Visiting Fellow at the University of Cambridge and Visiting Professor at the Benjamin N. Cardozo School of Law in New York. Robert teaches and researches in the field of intellectual property law, focusing on copyright and trade mark law. His work has been cited by the High Court of Australia, the Federal Court of Australia, the Court of Appeal of England and Wales and in an Opinion of an Advocate General to the European Court of Justice.
Publications
BOOKS

Australian Trade Mark Law (Melbourne: Oxford University Press, 2010), 568+lxxii pp (with M. Handler)

Copyright Exceptions: The Digital Impact (Cambridge: Cambridge University Press, 2005; paperback 2009), 410+xxxvii pp (with A. Coleman)

Copinger and Skone James on Copyright (London: Sweet & Maxwell, 1997), subeditor and author of pp 491-569 (sole author); 875-899 (with L. Bently); 1543-1593 (with L. Bently)

REPORTS

A Farmer’s Choice? Legal Liability Of Farmers Growing GM Crops (Canberra: Department of Agriculture, Fisheries and Forestry 2006), 41+x pp (with M. Lunney)

Commercialisation and Management of Intellectual Property – Guidelines for Researchers and Research Managers (Canberra: RIRDC, 2005), 52+x pp (with M. Handler)

REFEREED JOURNAL ARTICLES
'A Requiem for Champagne Heidsieck: Trade Mark Use and Parallel Importation' (2016) 26 Australian Intellectual Property Journal, pp. 110 - 130 (with M. Handler)

'Parliamentary Rewards and the Evolution of the Patent System' (2015) 74(3) Cambridge Law Journal, pp. 423-449 (with C. Kelly)

'Public Rewards and Innovation Policy: Lessons from the Eighteenth and Early Nineteenth Centuries' (2014) 77 Modern Law Review, pp. 858-887 (with C. Kelly)

'Reconciling Use-Based and Registration-Based Rights within the Trade Mark System: the problems with Section 58A of The Trade Marks Act and what these problems tell us' (2014) 42(1) Federal Law Review, pp. 91-119 (with M. Handler)

'Understanding the "Safe Harbour": The Prohibition on Engaging in Legal Practice and its Application to Patent and Trade Marks Attorneys in Australia (2013) 24 Australian Intellectual Property Journal, pp. 74-93 (with F. Bartlett)

'Zombie Marks? Ceased Registrations, Failed Applications and Citation Objections under Section 44 of the Trade Marks Act' (2013) 24 Australian Intellectual Property Journal, pp. 206-221 (with M. Handler)

'Rethinking the Presumption of Registrability in Trade Mark Law' (2012) 38 Monash University Law Review, pp. 148-172 (with M. Handler)

‘Copyright, Abandonment and Orphaned Works’ (2011) 35 Melbourne University Law Review, pp. 971-1004 (with E. Hudson)

'Providing Services to Copyright Infringers – iiNet in the High Court’ (2011) 33(4) Sydney Law Review, pp. 801-830 (with K. Weatherall)

‘The Personal Property Securities Act and Registered Trade Marks: When Bureaucratic Systems Collide’ (2011) 34 UNSW Law Journal, pp. 600-627 (with M. Handler)

‘Because You’re Worth It: L’Oreal and the Prohibition on Free-Riding’ (2010) 73 Modern Law Review, pp. 282-295 (with D. Gangjee)

‘Trade Marks and Freedom of Expression: A Call for Caution’ [2010] International Review of Intellectual Property and Competition Law, pp. 544-569 (with D. Gangjee)

‘Dilution and Trademark Registration’ (2008) 17 (3) Transnational Law and Contemporary Problems, pp. 713-755 (with M. Handler)

‘Exporting Controversy? Reactions to the Copyright Provisions of the US-Australia Free Trade Agreement: Lessons for US Trade Policy’ [2008] University of Illinois Journal of Law, Technology and Policy, pp. 259-319

‘Unregistered Marks and the Registered Trade Mark System’ (2007) 53 Federal Law Review, pp. 375-397 (with M. Handler)

‘Copyright Reform in the Early Twentieth Century: The View from Australia’ (2006) 27 The Journal of Legal History, pp. 239-267

‘Trade Mark Non-Use: Recent Developments in Australia’ (2005) 16(4) Australian Intellectual Property Journal, pp. 231-248

‘Patent Liability and Genetic Drift’ [2005] Environmental Law Review, pp. 278-286 (with S. Hubicki)

'Making Sense of Trade Mark Law' [2003] Intellectual Property Quarterly, pp. 388-410 (with M. Handler)

'Fair Dealing and Freedom of Expression in the United Kingdom' (2003) 14 Australian Intellectual Property Journal, pp. 45-64 (with J. Stellios)

'Liability for the Escape of GM Seeds: Pursuing the 'Victim'?' (2002) 65(4) Modern Law Review, pp. 517-537 (with M. Lee)

'The Requirement of Trade Mark Use' (2002) 13(4) Australian Intellectual Property Journal, pp.181-198 (with L. Bently)

'Shaving the Trade Marks Directive Down to Size?' (2000) 63(4) Modern Law Review, pp. 570-580 (with H. Beverley Smith)

'Reining in Copyright Law: Is Fair Use the Answer' [2001] Intellectual Property Quarterly, pp. 361-388

'Defending the Public Interest' [2000] European Intellectual Property Review, pp. 394-404

'The Publication Right: Europe's First Decision’ [1998] European Intellectual Property Review, pp. 210-213 (with E. Haslam)

‘Copyright and the Information Society in Europe: A Matter of Timing as well as Content' (1997) 34(5) Common Market Law Review, pp. 1197-1227 (with L. Bently)

ESSAYS IN EDITED COLLECTIONS

'Registering Security Interests Over Trade Marks In Australia: Theory And Practice’, forthcoming in Irene Calboli and Jacques de Werra (eds), Law and Practice of Trade Mark Transactions (Edward Elgar, 2015) (with M. Handler).

'Property Concepts in European Copyright Law: The Case of Abandonment' in Howe and Griffiths (eds) Property Concepts in Intellectual Property Law (Cambridge: Cambridge University Press, 2013), pp. 205-231

'GI Blues: The Global Disagreement over Geographical Indications', in Bowrey, Handler and Nicol (eds), Emerging Challenges in Intellectual Property Law (Melbourne: Oxford University Press, 2011), pp. 126-144 (with M. Handler)

‘Trade Mark Bureaucracies’ in Dinwoodie and Janis (eds), Trademark Law and Theory: A Handbook of Contemporary Research (Northampton, MA: Edward Elgar, 2008), pp. 95-131

'Copyright and Freedom of Political Communication in Australia' in Griffiths and Suthersanen (eds), Copyright and Freedom of Expression: Comparative and International Analyses (Oxford: Oxford University Press, 2005), pp. 257-286 (with J. Stellios)

'The Future of Copyright Exceptions' in McClean and Schubert (eds), Dear Images: Art, Copyright and Culture (London: Ridinghouse, 2002), pp. 455-472

'The Information Society: Chances and Challenges' in Heath and Kamperman Sanders (eds), Intellectual Property in the Digital Age: Challenges for Asia (London: Kluwer, 2001), pp. 3-25

'Three-dimensional Trade Marks: Should the Directive be Reshaped?' in Dawson and Firth (eds), Trade Marks Retrospective (London: Sweet & Maxwell, 2000), pp. 135-165 (with H. Beverley Smith and A. Coleman)

‘A Case Study in Cultural Imperialism: the Imposition of Copyright on China by the West’ in Bently and Maniatis (eds.) Intellectual Property and Ethics (London: Sweet & Maxwell, 2000), pp. 195-224

SUBMISSIONS

'Response to Review of the Personal Property Securities Act 2009, Consultation Paper No. 2 (2014)’, available at: http://www.ag.gov.au/Consultations/Documents/PPSReview/ResponsesToPaper2/PPSReviewConsultationPaper2Response01.pdf (with M. Handler)

'Addressing Copyright Infringement Online Through Secondary Liability and Website Blocking: A Submission to the Australian Government' (with. I Alexander, M. Handler, E. Hudson and K. Weatherall): http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2490744

'Addressing Copyright Infringement Online Through Secondary Liability and Website Blocking: A Submission to the Australian Government
'ALRC Inquiry into Copyright and the Digital Economy Submission in response to Discussion Paper No. 79 (DP 79)' 39 pp. (with M. Handler, E. Hudson and K. Weatherall): http://www.alrc.gov.au/sites/default/files/subs/716._org_r_burrell__
m_handler_e_hudson_k_weatherall.pdf

'ALRC Inquiry into Copyright and the Digital Economy Submission in response to Discussion Paper No. 79 (DP 79)' 6pp. (submission of International IP Researchers):http://
www.alrc.gov.au/sites/default/files/subs/ 713._org_internationalipresearchers.pdf

'ALRC Inquiry into Copyright and the Digital Economy Submission in response to Issues Paper No. 42' 76pp (with M. Handler, E. Hudson and K. Weatherall): http://www.alrc.gov.au/sites/default/files/subs/278.burrellhandlerhudsonweatherall.pdf

'Comment on the Exposure Draft of the Intellectual Property Legislation Amendment Regulation 2012 (Cth), Schedule 3, Trade Mark Regulations' 5pp (with M. Handler)

'Submission on Draft Intellectual Property Laws Amendment (Raising the Bar) Bill 2011' 6pp (with M. Handler): http://www.ipaustralia.gov.au/pdfs/Submission_Handler_and_Burrell.pdf

OTHER PUBLICATIONS

‘Copyright and Archives: the UK Position’ in J. Besek, M. Crespin and J. Ginsburg (eds.), The Legal Treatment of Archives, Part II (New York: Kernochan Center for Law Media and the Arts, 2007), pp. E1-E33 (with L. Bently)

Review of Birnhack, "Colonial Copyright: Intellectual Property in Mandate Palestine" (2013) 34 Journal of Legal History, pp. 236-241

Review of Taplin, “Valuing Intellectual Property Rights in the Japan, Britain and the United States” (2005) 25 Japanese Studies, pp. 210-213

Review of Monotti and Ricketson, "Universities and Intellectual Property: Ownership and Exploitation” (2003) 31(2) Federal Law Review, pp. 409-413

Review of May, “A Global Political Economy of Intellectual Property Rights: The New Enclosures”’ [2001] European Intellectual Property Review, pp. 548-549

Exceptions and Defences (London: IBC, 2001-2013) introductory guide for postgraduate students, updated annually), 56 pp.

Infringement and Remedies (London: IBC, 2001-2013) (introductory guide for postgraduate students, updated annually), 46 pp.

'Continued Difficulties with Ethical Objections to Patenting: The Greenpeace Decision' (1997) 7 King’s College Law Journal, pp. 129-132
Funding received
2011 Testing Trade Mark Law's Image of the Consumer (ARC Linkage with IP Australia, the Federal Court of Australia, Treasury Wine Estates and Carlton & United Breweries) $400,000 (project leader, team of five researchers)

2010 Testing Trade Mark Law's Image of the Consumer (UQ Collaboration and Industry Engagement Fund) $49,760 (project leader, team of five researchers)

2008The US-Australia Free Trade Agreement Five Years On (Fulbright Commission) $30,000 (project leader, team of 2 researchers)

2007 Intellectual Property Education and Training for the Australian Horticulture Industries (Horticulture Australia Limited) $410,557 (project member, team of 7 researchers)

2005 Copyright reform in Australia 1900 - 1913 (Frederick Watson Fellowship, National Archives of Australia) $8,181 (sole researcher)

2005 Improving Understanding and Awareness of Intellectual Property amongst Grain Growers in Australia (Grains Research & Development Corporation) $599,850.00 (project member, team of 2 researchers)

2005 Review of the Cotton Research and Development Corporation Intellectual Property Policy and Procedures (Cotton Research & Development Corporation) $29,118 (project leader, team of 3 researchers)

2004 Intellectual Property and the Rural Sector: Harvesting the benefits of science and technology (ARC Linkage Grant) $117,809 (project member, team of 3 researchers)

2003 Gene Patents in Australia: Options for Reform (ARC Discovery Grant) (project member, team of 3 researchers)

Current external positions
Consultant and Registered Trade Marks Attorney, Go Trademarks. In this capacity Robert has appeared in a number of Hearings before the Trade Marks Office. Most significantly, he appeared for the applicant in Re Lorne Bobart [2010] ATMO 43, in which he successfully resisted a request for revocation in one of the first cases of its kind.
Research profile
Research profile and publications
 

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Last updated:
Tuesday, 3 November, 2015 2:39 PM