Monthly Archives: October 2012

Clients who are too grand to read legal documents

Always listen to your consiglieri, and don’t let anyone outside the family know what you are thinking

Question: what happens if your client’s Chairman is too grand to read the documents you send them, is openly contemptuous of “legalese”, and tries to avoid any direct dealing with the company’s legal advisers?

Answer: when it all goes pear-shaped, they sue you.  And lose (you hope).

The recently-published judgment in the case of Newcastle International Airport Limited v Eversheds LLP is the judicial equivalent of a racy thriller.  Buried within its pages are all the elements of a gripping read: the big shot with charisma who doesn’t bother to read papers and makes major decisions based on instinct; the executives who are accused of acting in their own self-interests (one of whom dies at a very young age, half-way through the story); the elected local Government representatives who are out of their depth; the overseas, minority shareholders who keep quiet because it suits them; the brilliant backroom-boys who ask all the right questions and brief their bosses well, but are ignored; the solicitors who have to defend themselves from charges of treason professional negligence when it all goes wrong; and the righteous judge who sees through the fog and vindicates the solicitors’ conduct.

How many of us have experienced a Chairman who, in the words of the judge in this case, is:

a capable, experienced, worldly and intelligent person. She has a long and impressive track record of work in the field of corporate finance. Other witnesses attested to her abilities in glowing terms.

And yet who:

did not bother with minutiae; she concerned herself only with the broader picture. In the course of her oral evidence she used the expression “legalese” in a contemptuous and dismissive manner on countless occasions.

never read definitions in contracts and did not appreciate that phrases with capital letters were defined terms. She did not acknowledge that she would or should want to ensure that notes of meetings were accurate in relation to important points. She seemed to think it was not her job to read any documents which could be categorised as legal documents.

had a special distaste for documents produced by lawyers. Her evidence was that she regarded these as necessary formalities, ‘legalese’, not something she was required to read. Even when she opened such documents she only skim-read them. However she consistently misread, missed or misunderstood contents which were inconsistent with her preconceived understanding of their meaning and effect.

This is not the first time that IP Draughts has come across someone in a senior position who looks only at the “big picture”, cannot bring themself to focus on the details or engage with the detail-merchants, and makes important decisions based on thin air.  Fortunately they are in a minority, but there are enough of them to make IP Draughts wonder.  This problem is particularly serious when the subject under discussion is technically complex, such as IP protection or commercialisation.

This may not matter if there are layers of management beneath the top person who manage the details in an effective way.  But in some smaller organisations, there are no such layers.  In the Eversheds case, the details in question were the terms of employment contracts with senior management, and there were no layers between them and the bigshot.

How should those of us who manage the details (whether as lawyers or business managers) deal with this type of senior person?  Do readers have any suggestions?

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Take 5 and enjoy your sublicence rights

If you have sharp antennae you may have registered the noise surrounding two recent German Federal Court decisions on sublicensing.  The cases, known as the Take 5 case and the M2Trade case, are discussed thoughtfully on pages 7 to 10 of this German law firm’s newsletter, which also gives references for the cases.  These decisions confirmed that, under German law, a sublicence of copyright continues after the head licence has been terminated.

Although decided in the division of the court that deals with copyright and trade marks, the court  consulted with the division that deals with patents before issuing its decision, and the latter division raised no objection.  It is thought, therefore, that the decisions are applicable to all types of IP.  However, the article linked above raises some doubts about whether the case would apply to patent licensing.

Readers who wish to stay calm while reading about this outrageous state of affairs may wish to play the jazz classic Take 5 (so named because of its unusual quintuple – 5/4 – time) on their computer while reading this article  – available on YouTube here. At their own copyright risk, of course.

The conventional English law view is that a sub-licensee can have no more rights than his sub-licensor is entitled to grant, so that when the sub-licensor’s rights come to an end, for whatever reason, so do the sub-licensee’s.  The sub-licensee has no contractual relationship with the IP owner and cannot enforce any rights against him.

Although there is very little case law on the point, support for this view is given by an old pair of English cases, the Austin Baldwin cases (1925) 42 RPC 454.  (But equity may intervene in some situations: see Fomento (Sterling Area) Ltd v Refill Improvements [1963] RPC 163.)

The position under US law is stated by the learned authors of Drafting Patent License Agreements (Brunsvold et al., 6th edition, BNA Books, at page 52) to be as follows:

Unless the agreement with the licensee provides otherwise, an authorized sublicense will continue despite the early termination of the license agreement.*

*But see Rhone-Poulenc Agro, 284 F.3d at 1333 (finding that a sublicensee was not entitled to continue as a bona fide purchaser after the license agreement was rescinded by the licensor because of fraud by the licensee).

IP Draughts is scratching his head over whether “the agreement with the licensee” in this context means the head licence agreement or the sublicence agreement.  If the head licensor can cause a sublicence to terminate by a term in the head licence agreement, then perhaps the position in the US is not so different from the English law position.  But IP Draughts suspects this quoted text is referring to a term in the sublicence agreement.

Thus, the position seems to vary between countries.  How is a licensor supposed to deal with this international uncertainty and protect his interests?  A number of alternatives spring to mind:

  1. The licensor requires prior approval of all sublicence agreements, to ensure that they deal explicitly with what happens on termination of the head licence.  Possible alternatives might include (a) stating that the sublicence terminates, or (b) stating that the sublicence continues as an agreement with the head licensor.
  2. The licensor does not attempt to directly control the content of sublicence agreements, and instead merely requires the head licensee to include provisions such as those referred to in item 1(a) or (b) above in the sublicence agreement.  Perhaps the right to sublicense should be stated to be conditional upon such provisions being included.  However, it is not clear to IP Draughts whether this would have any effect on the rights of the sublicensee in those jurisdictions where a sublicensee’s rights continue, unless (perhaps) it could be shown that the sublicensee was aware of these provisions and somehow agreed to them.  In any event, a head licensor should be very cautious about agreeing to be bound by a relationship with a sublicensee, and sublicensing terms, that he has not seen in advance and approved.
  3. The licensor doesn’t even go as far as item 2 above, and merely states in the head licence agreement that one of the consequences of termination of the head licence is that sublicences also terminate.  It seems doubtful whether this provision would work under German or US laws, if the commentaries referred to above are correct.
  4. If the head licensor wishes to clarify the terms on which any sublicence agreement would continue after termination of the head licence, he could enter into a side agreement with the sublicensee, eg at the same time as the sublicence agreement is signed, to deal with these points.

While item 1 above seems to be the strongest of the first three alternatives to protect the interests of the head licensor, it may be considered impractical in some licensing relationships, eg because the head licensor lacks either the bargaining power or the resources to manage sublicence agreements in this way.  Do readers agree with these thoughts?  Do you have any other suggestions?

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Winning IP contract disputes depends on more than good drafting

Good contract drafting provides a baseline for interpreting and enforcing contractual obligations.  Without it, the risk of an adverse interpretation by the court (or an unreasonable commercial stance by one or both parties) is increased.  But good contract drafting alone is often not sufficient to win your contract dispute.

IP Draughts understands from commercial litigation lawyers that many, or perhaps most, breach of contract disputes turn on the detailed facts – who did (or failed to do) what, when and how, and how the other party behaved in response.  There may be legal argument in some cases about the meaning of terms used in the contract – eg a best efforts or reasonable efforts obligations. But it is comparatively rare for the dispute to be limited to a disagreement about the meaning of terms used in the contract with no consideration of the facts.

Here are some of the other issues that IP Draughts has seen, that affect the outcome of contract disputes:

  1. Variation by conduct. The parties are held to have agreed a variation to the strict terms of the contract.  Thus, in one case a franchisor had a right to repurchase equipment at the end of the franchise term, but only if he gave notice within 14 days of the end of the term.  Much to IP Draughts’ surprise, the court held that parties’s conduct meant that this time limit no longer applied.
  2. Waiver. A party does not promptly complain of a breach by the other party, and is held to have waived its rights to terminate for that breach.  In one case in which IP Draughts was involved, counsel advised that a delay of one month was too long, and resulted in a waiver.
  3. Implied term. A party asserts that other terms apply, that are not set out in the written contract.  In one case, a party successfully argued for an implied term of fitness for purpose in a software licence agreement, even though the court accepted that the contract was not a contract for the sale of goods, and therefore the statutory implied term of fitness for purpose did not apply.
  4. Refusal to accept reality.  In another case, the wording of the contract seemed clear, as did the breach.  Our client was entitled to a full refund on the price of some expensive laboratory equipment that did not work.  But the party in breach maintained that it was not in breach and refused to back down.  Only when we incurred the expense of an expert report supporting our case, and commenced proceedings, did the other party come to the negotiating table to agree a settlement.

In all of these cases, good contract drafting helped, but it did not ensure a satisfactory outcome.  This is not an argument for downgrading the importance of getting the drafting right – far from it.  But don’t expect drafting alone to solve the messy realities of contract disputes.

Sometimes, parties attempt to avoid these messy realities by sophisticated drafting, eg by excluding implied terms or including a “no waiver” clause.  These attempts are not always successful, and sometimes they are taken to extremes (eg in some risk-averse contracts drafted on behalf of venture capitalists).  A well-drafted contract may include some of these provisions but will focus mainly on clear, unambiguous drafting of the parties’ obligations.

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When will they learn?

Software commercialisation. If they want to learn about Software Commercialisation, they will learn if they attend the course offered by Isis Enterprise (and featuring our own Stephen Brett) on 28th November.  If they do attend, they will learn about things such as copyright and patent protection for software and about the different software licensing models that might be appropriate for different business models.

Further details are available from Isis Enterprise, here.

Contract drafting. If they want to learn about contract drafting they could do much worse than to attend one of the three courses scheduled to be given by Mark Anderson in London this Autumn.  The course details are available on the Anderson Law website, here.  An overview of the various courses on offer, and dates, appears on this blog here.

Practical licensing. Or, if they want to learn about Practical Licensing, they should sign up to Stephen Brett’s course planned for 7th November and which is also outlined on the Anderson Law website, here.

IP licensing for professionals. Learners who prefer their licensing training to come in one-hour chunks while they look at their office computer screens, should consider signing up for Mark Anderson’s series of four “virtual classroom” lectures on licensing.  These lectures will be run on four successive Monday lunchtimes, in November and December.  Organised by the European Patent Academy (part of the European Patent Office), they cover the main provisions of a licence agreement including grant, payments, performance, warranties, law and jurisdction.  The course is designed for professional managers who have no experience of licensing.  Details here.

Project management. Finally, if they want to learn about pharmaceutical project management, they should consider signing up to the Autumn Meeting of PIPMG – the Pharmaceutical Industry Project Management Group.  Titled Discovery through to Market – Stage 1: Turning Ideas into Projects, the course will be held at the London Clinic on 19th and 20th November.  Details here.  Anderson Law LLP is proud to sponsor PIPMG by providing legal support.

Happy learning!

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