The Federal Court’s decision in Deakin University v Macreadie & Blue Carbon Lab Pty Ltd [2026] FCA 481 serves as a cautionary tale about managing star employees, and highlights the intellectual property risks that can arise if expectations around ownership and branding are not addressed early.

The case concerns Professor Peter Macreadie’s move from Deakin University to RMIT in 2024, and his attempt to continue using the ‘Blue Carbon Lab’ name through a private company. Professor Macreadie had started preparing elements of the brand and operations while a titleholder and before commencing as an employee with Deakin. However, Deakin paid for logo design work and resources, and maintained co-branding with the primary Deakin brand throughout Professor Macreadie’s time at Deakin. On departing the institution, having waited some time for Deakin to respond to his request to register the trade marks, Professor Macreadie then independently established a company using the ‘Blue Carbon Lab’ brand.

While Professor Macreadie had coined the name and built the research group’s profile, the Court ultimately held that the goodwill in that name belonged to Deakin University. The Court’s orders were decisive, restraining further use of the ‘Blue Carbon Lab’ name and requiring cancellation of the respondents’ registered trade mark, but refusing to attribute bad faith to Professor Macreadie’s actions.

In an environment of increasing pressure on universities to commercialise research outcomes, the decision is likely to have broad relevance. The Commonwealth’s ‘Ambitious Australia: Strategic Examination of Research and Development’ report highlights a shift toward greater industry engagement. As research activities become more closely aligned with commercial markets, the legal significance of branding, goodwill and other associated intellectual property correspondingly increases. These dynamics are not confined to the university sector. Businesses more generally face similar risks where employees develop personal brands or pursue entrepreneurial activity within an organisational setting. This suggests that disputes of this kind are likely to become more frequent.

Individual reputations and institutional control of goodwill

Professor Macreadie and his company argued that the Blue Carbon Lab was created by Professor Macreadie and that its reputation was inseparable from his personal standing. The Court acknowledged the strength of this association but did not treat it as determinative.

From 2016, the relevant activities were conducted within Deakin’s institutional framework. Research was undertaken by Deakin employees, contracts were entered into by Deakin, and funding was received and administered by Deakin. The Blue Carbon Lab was consistently presented as a Deakin initiative. Professor Macreadie was therefore held to be a significant contributor to the goodwill, but not its owner.

The Court rejected the notion that the research group was capable of moving with its lead academic as a transferable asset. The Blue Carbon Lab was not an independent entity, but a label applied to activities carried out within Deakin’s structure, and its goodwill could not be separated and relocated.

The Court’s finding that Professor Macreadie’s company had engaged in misleading conduct in presenting itself as ‘Blue Carbon Lab’ followed. By continuing to use the Blue Carbon Lab name through a private entity, Professor Macreadie and Blue Carbon Lab Pty Ltd represented that they owned the name, the goodwill and the right to exploit it commercially. Those representations were incorrect and were likely to mislead, even though the audience comprised relatively experienced research industry participants. A disclaimer used by Professor Macreadie’s company, and reference to the lab having ‘relocated’, did nothing to avoid (and in some respects reinforced) the misleading impression.

The trade mark position adopted by Professor Macreadie and his company also failed. Although the logo had been registered in Professor Macreadie’s company name, Deakin was held to be the first user as a badge of origin and thus the owner of the trade mark, and the registration was ordered to be cancelled. This reflects the broader dynamic that such disputes are often driven by differing assumptions rather than deliberate misconduct.

Lost in transition: entry and exit as key risk points

A central theme in the judgment is that the periods leading into an appointment and immediately before and after departure carry heightened legal risk.

In this case, relevant steps were taken across both phases. On the incoming side, Professor Macreadie undertook early branding activity and engagement around trade mark protection before formally commencing at Deakin, however Deakin paid for the logo design work. This left both parties with the impression that they were the brand owner, but it appears that allocation of ownership was not discussed and agreed clearly. In the lead up to his departure, and lacking engagement in his intellectual property protection efforts from Deakin, Professor Macreadie took more decisive steps, including incorporating a new entity, filing trade mark applications, and purporting to transfer the Blue Carbon Lab to a new institution, all without Deakin’s knowledge or approval.

It is not unusual for prominent academics to see the research unit that they lead, together with the associated technology and brand, as their own, regardless of the legal reality. In finding that he did not act in bad faith, the Court accepted that Professor Macreadie genuinely held this view, however this fact did not determine ownership.

This case is a salutary example of the potential for dispute where those preconceptions are not dealt with clearly and proactively when an academic joins and exits an institution. Honorary or adjunct appointments can further complicate matters by overlapping with obligations to other institutions and creating ambiguity around ownership.

Implications for institutions and academics

The case highlights that institutions and ‘star’ academics share an interest in addressing intellectual property ownership and branding early and clearly.

For institutions, this requires a more proactive and deliberate approach. Intellectual property frameworks should not operate in the background. They need to be clearly articulated, communicated to academic staff, and supported by a documented and shared understanding of how ownership, branding and commercialisation arrangements operate in practice. Delay or fragmentation in addressing issues such as trade mark protection can create the uncertainty that gives rise to disputes. There is a strong case for proactively registering trade marks for valuable research brands, as registered rights are typically more straightforward to enforce than reliance on goodwill and statutory protections.

For academics, the case underscores the importance of raising ownership expectations with a new institution at an early stage. Academics who consider that they are contributing pre-existing intellectual property or who wish to retain control or an economic interest in the branding of a research group should ensure these matters are agreed and documented expressly. Standard institutional intellectual property regimes may not accommodate those assumptions.

Institutions should also consider intellectual property risks arising from an academic’s prior affiliations. Where academics move between organisations or hold concurrent appointments, questions can arise as to whether pre-existing intellectual property, research outputs or branding are subject to competing ownership claims. While no such claim was referenced in this judgment, the case highlights the importance of examining ownership arrangements across the full chain of institutional relationships.

In the absence of clearly negotiated arrangements, courts will focus on the practical reality of how the research activity is conducted. Where it is embedded within an institution’s structures, funding arrangements and contractual relationships, the associated goodwill will ordinarily be treated as belonging to the institution, even where the academic has played a central role in its development.

In addition to open and proactive discussions, research professionals and academics should have regular, targeted intellectual property education and training to align expectations. Together, these measures can avoid disputes turning stars into adversaries.

HWLE’s intellectual property team has extensive experience in advising institutions and other businesses as well as employees in relation to clarifying IP ownership. Please contact us for further information on how we can assist you.

This article was written by Luke Dale, Partner, Nikki Macor Health, Special Counsel, and Ashlee Broadbent, Associate.