Katarina Klaric is a Director/Principal of Stephens Lawyers & Consultants, a boutique commercial law and business consultancy firm, with specific expertise in intellectual property, e-commerce and information technology, arts, media and entertainment, defamation, franchising, competition and consumer law and international trade. Katarina is skilled in both commercial business transactions and dispute resolution/litigation in these areas.
Directorships and Board Positions
Katarina Klaric is a member of the Australian Institute of Company Directors (AICD) and is also a graduate of AICD having completed the AICD Company Directors Course in 2009.
Katarina is a former non-executive member of the Board of The Mental Health Research Institute which merged with the Florey Research Institute (now known as the Florey Neuroscience and Mental Health Institute). Katarina was also a member of the Institutes’ Intellectual Property and Commercialisation Committee, Audit and Risk Management and Project Development Committees.
Katarina’s legal expertise and experience as a non-executive director and Board member places her in a position to advise and deal with regulatory compliance, corporate governance, risk management and intellectual property commercialisation.
Intellectual Property Law and Dispute Resolution/Litigation
Katarina Klaric holds a Masters in Law degree from Monash University which focused on intellectual property and international trade and investment. Katarina has also undertaken the WIPO Arbitration and Mediation Centre training for mediators in New York. She is a member of the Intellectual Property Society of Australia and New Zealand (IPSANZ). She is a former member of the Editorial Board of “Intellectual Property Forum”, the Official Journal of IPSANZ. Katarina was the editor of Intellectual Forum from 1997 to 2002.
Katarina’s expertise covers all aspects of intellectual property protection, management and commercialisation – copyright, confidential information/trade secrets, patents and trade marks.
As a litigator Katarina has also been involved in leading intellectual property cases involving copyright, trade mark and patent infringement cases. She was a member of the legal team that successfully represented Autodesk Inc. and Autodesk Australia before the High Court of Australia. This was the first case in Australia where the High Court had to consider whether amendments made to the Copyright Act afforded copyright protection to computer software as a literary work. Katarina Klaric also successfully represented Data Access Corporation in the High Court appeal relating to programming languages used in the development of database systems.
Katarina was also the lead lawyer representing Victoria University in a dispute relating to the ownership of an electronic trading system and related patent and other intellectual property rights.
Katarina Klaric has also represented clients in trade mark infringement and ownership disputes. Katarina was the lead lawyer representing Jesse James (who at the time was married to Academy Award Winner actor, Sandra Bullock) and his company West Coast Choppers in a trade mark ownership dispute in respect of the West Coast Choppers trade mark in Australia.
Further information about Katarina Klaric’s recent cases can be found on our website.
E-commerce and Information Technology
Doing business in the on-line digital environment involves consideration of both commercial and legal issues, including:
- Appropriate strategies for protection of intellectual property in Australia and internationally;
- Conducting searches and obtaining intellectual property clearances or releases required for freedom to operate without infringing the rights of third parties;
- Developing business models and strategies for marketing and supply of goods or services via on-line platforms;
- Developing and managing e-commerce platforms appropriate for the business;
- Compliance with consumer, marketing and advertising, privacy and other relevant laws;
- Identification of risk and management of risk associated with on-line trading environment;
- Having appropriate terms and conditions on websites for accessing and using the on-line environment to engage in commercial transactions;
- Where goods and services are intended for supply in countries outside Australia, consideration of regulatory compliance required to export into those market
Katarina Klaric has advised clients in the information technology and e-commerce industry for over 20 years and has extensive knowledge of the digital on-line environment and legal and commercial issues involved in e-commerce. Because of her work in the industry, Katarina participated in a US State Department funded E-commerce and intellectual property program in 2000, which involved the study of intellectual property, e-commerce, entertainment and media issues in the United States. Katarina was one of the founding members of the AIIA Export Club which was set up as forum for Australian ICT companies intending to export or exporting their technology into overseas markets. Katarina has provided briefings to ICT companies in respect of intellectual protection in overseas markets.
Arts, Media and Entertainment
Katarina Klaric has been involved in advising artists,
writers, musicians, performers, electronic games developers, film producers and
promoters for over twenty years in areas covering:
- drafting joint venture agreements between film production companies;
- advising on and negotiation of film development and production funding agreements and ‘pre-sale’ agreements;
- drafting screenwriter agreements;
- intellectual property protection, commercialisation and management;
- intellectual property rights clearances or releases – including ‘Chain of Title’;
- moral rights protection and clearances;
- licensing, joint venture, funding, commissioning, production and distribution agreements,
- Strategies for maximising the value of intellectual property and related assets;
- review of scripts, manuscripts and other material for intellectual property rights clearances;
- Review of scripts, manuscripts and other material for defamatory content
From her work in the information technology, e-commerce and on-line digital environments, Katarina has an understanding of the issues facing the music and film industries with changing distribution channels and the need to adapt existing business models to the challenges of the on-line digital environment. Copyright infringement of musical works, video games and films continues to be a major issue with the digital on-line environment making it easier for the unauthorised down loading of copyright works. Australia’s copyright laws require reform to deal with the problem and to protect substantial investment made in the creation of these works.
Katarina is a member of the Panel of Referral Lawyers of the Arts Law Centre of Australia.
Franchising involves the licensing of intellectual property such as trade marks, trade secrets/confidential information, patents and copyright material which form part of the franchise system. In Australia, the franchise industry is regulated and all franchisors must comply with the mandatory code prescribed under the Australian Competition and Consumer Act, in addition to other laws having regard to the franchise system and goods and/or services supplied as a part of the system.
Katarina Klaric has over 20 years’ experience in the franchise industry. Katarina has assisted overseas franchisors enter the Australian market and Australian companies franchise their business. Katarina has advised in all aspects of regulatory compliance and prepared all documentation including Master Franchise Agreements, Area Development Agreements, Franchise Agreements and Disclosure Documents for franchise systems ranging from hotels, restaurants, hair replacement, product supply and delivery services, educational and training and entertainment services. The franchise systems that Katarina has represented have included:
- Hard Rock Café
- Hard Rock Hotels
- Advanced Hair Studio
- Aussie Farmers Direct
- StageCoach Theatre Arts
Katarina Klaric, as a litigator, has also been involved in litigation involving disputes between franchisors and franchisees. Further information about Katarina’s recent cases can be found on our website.
Katarina is profiled in “An International Who’s Who of Franchise Lawyers” and “The International Who’s Who of Business Lawyers” published by Law Business Research. Katarina is also a member of the Franchise Council of
Australia (FCA) legal committee.
Regulatory Compliance – Getting Products to Market
The introduction of new products into the Australian markets can be complex and involves consideration of a multitude of laws and regulatory regimes including health and safety standards.
Australia has a strict regulatory regime for the import, manufacture, marketing and supply of medicines, pharmaceuticals, herbal medicines, complimentary medicines, cosmetics, food products including food and nutritional supplements and sports food supplements. Non-compliance with the relevant laws or failure to obtain the relevant registrations or permits can result in products being seized at customs or a product recall by the relevant regulators.
Katarina Klaric has over 20 years’ experience in assisting companies getting products to market in Australia including:
- Undertaking relevant freedom to operate searches to ensure that the product can be marketed and supplied in Australia without infringing the patents, trade marks or other intellectual property rights of third parties;
- Obtaining intellectual property protection for the product;
- Compliance with Australian Consumer Law including labelling and marketing and advertising laws;
- Assisting companies with the obtaining of any necessary permits, registrations, listings or approvals required to market and supply the products into Australia;
- Dealing with relevant regulators and government departments responsible for regulatory compliance;
- Identification and management of risk associated with the marketing and supply of the product;
- Structuring of distribution channels including distribution, agency or licensing agreements and e-commerce.
International Trade and Business
Katarina Klaric has a Masters in Law from Monash University which focused on intellectual property and international trade and investment. Katarina has over 20 years’ experience in assisting Australian companies expand
their business into the global market, and overseas companies enter the Australian market. Ensuring that
appropriate protection for intellectual property is obtained before overseas expansion is a critical part of any global expansion strategy. Katarina has worked with overseas associates to ensure that her clients’ intellectual
property is appropriately protected.
Katarina is a member of Women In Global Business (WIGB) and is involved in the mentor program, mentoring women who are looking at expanding their business globally or are involved in international business. Katarina was one of the founding members of the AIIA Export Club which was set up as a forum for Australian ICT companies intending to export or exporting their technology into overseas markets. Katarina has provided briefings to ICT companies in respect of intellectual protection in overseas markets.
Doing business internationally can be risky business even for large companies and/or experienced traders.
The risks often can be minimised by appropriate research and advice, knowledge of the market, international trade laws and risks of doing business in a particular market and implementation of appropriate risk management strategies.
Other professional organisations
Katarina is also a member of the Law Institute of Victoria.