Category Archives: Book review

Indemnifying the damnified

contractual indemnitiesContractual Indemnities (by Wayne Courtney, Hart Publishing 2014) is an excellent book. It draws upon the PhD thesis of its author, who is a former practising lawyer and is now a Senior Lecturer and Associate Dean of the Law Faculty at the University of Sydney.

Regular readers of this blog will be familiar with the frustration that IP Draughts feels about the typical drafting of indemnities – a frustration that is shared by others whom IP Draughts respects, including contract drafting guru Ken Adams. See some of his commentaries on indemnities here.

Indemnities are often drafted with complex wording and long sentences, so that it is difficult to glean their precise meaning. The reasons for this complexity are various and include:

  1. Broad in scope. Indemnities are typically drafted so as to be broad in scope, and the lawyer sees their task as one of trying to be comprehensive and avoiding loopholes. In some market sectors, eg M&A, there are no prizes for simplifying indemnity wording, only potential claims against the lawyer’s professional indemnity policy if the lawyer’s original drafting fails to achieve the financial result desired by the client.
  2. Difficult issues. It is difficult, even for lawyers, to think through all the legal and practical implications of an indemnification obligation. In the heat of urgent negotiations, it is tempting to use wording that one has seen before, and that seems to cover all the bases.
  3. dryTheoretical. Indemnities are concerned with risk allocation, rather than operational issues such as price and performance obligations. The subject matter can seem very dry and theoretical and, frankly, boring. This combination of theoretical and legal subject-matter tends to make commercial clients run a mile, and leave the drafting and negotiation to their lawyers. As a result, there is less pressure to make the drafting straightforward and understandable.
  4. Case law. There is an extensive body of case law on the interpretation of indemnities. Unfortunately, the case law has not made the drafter’s job any easier; rather it has served to illustrate the many issues of interpretation that are thrown up by indemnity language and the different ways that judges can “jump” when presented with a set of facts about a commercial relationship.

In passing, IP Draughts considers that one of the problems with judges interpreting indemnities is that they often lack experience of drafting and negotiating them. In the UK and, one suspects, many other countries, judges are drawn from the ranks of courtroom advocates, who tend to be a different group from those who draft and negotiate commercial contracts. Increasingly, IP Draughts wonders whether the courts – even highly-respected commercial courts such as those in England and Wales – are the best place to decide matters of interpretation.

Be that as it may, Wayne Courtney has done a very good job of distilling centuries of English and Commonwealth case law on indemnities into a narrative that sets out the main principles of interpretation. His experiences as a practising lawyer and as an academic have undoubtedly contributed to making this a useful work.

aqua vitaeIP Draughts has only two significant criticisms of the text. First, that he would have liked even more distillation of the messy, impure fluid of authorities. He feels it should be possible to keep reducing the liquid down over time, into an aqua vitae of principles that are simple to apply when drafting indemnities. Perhaps this will be Wayne’s life’s work and, by the time of the third edition of this estimable book, the main text will be 150-200 pages, rather than the 302 pages it currently takes to cover the subject.

For example, there is a discussion (at section 7-7) of whether the indemnifier has an obligation to defend an action that is brought against the indemnified party, and is within the scope of the indemnity. It seems to IP Draughts that this question is intimately linked to the questions of whether the indemnity is preventive, and whether it covers claims as well as ultimately liability. These questions are discussed in other chapters. It seems to IP Draughts that these various points, which are each discussed in a useful and authoritative way but in isolation from one another, could be combined and distilled into a master-scheme of analysis.

IP Draughts’ second criticism is that Wayne doesn’t offer any indemnity language to address the main points that he has discussed in the text.

Highlighting a few of those points:

  1. damnifyIndemnities can be interpreted as “preventive” (requiring the indemnifier to ensure that the indemnified person does not suffer a loss) or “compensatory” (requiring the indemnifier to make good any loss that the indemnified person has suffered – referred to in the text as “damnification” – a wonderful word). Often, the courts will adopt a preventive interpretation. This does not seem to depend on using words such as “hold harmless” although, having read the book, IP Draughts suspects that the lawyers’ practice of using this phrase may have its roots in a desire to make the indemnity preventive in scope. There are better ways, in IP Draughts’ view, of making this point clear, than using a formulaic and unclear phrase such as “hold harmless”. (Incidentally, Wayne discusses and dismisses the idea that a preventive interpretation was to be found in the courts of equity, while a compensatory interpretation was to be found in the courts of law, prior to the merger of those courts under the Judicature Acts of 1875.)
  2. It is not always clear, from the wording of the indemnity, whether it applies to all or just some of the following: (a) third party claims against the indemnified party, (b) losses suffered by the indemnified party as a result of the indemnifier’s breach of contract, and (c) claims that might otherwise by brought by the indemnifer against the indemnified party, eg for breach of contract – this type of indemnity is effectively an exclusion clause.
  3. Whether the wrongdoing of the indemnified party cancels or qualifies the indemnity, eg if they are negligent.
  4. Whether claims that have not yet resulted in a liabilty are in some way covered by the indemnity.
  5. Whether costs are recoverable.
  6. Whether an indemnity that covers the same ground as a liability for breach of contract (eg where the contract includes an indemnity against breach of a warranty) can be broader in scope than the underlying breach of contract claim, or is subject to the same limitations and qualifications (eg as to causation, remoteness and mitigation). Wayne discusses the different viewpoints on this subject, eg that an indemnity provides an “agreed damages” mechanism that overrides the usual contract law rules (similar in effect to liquidated damages), but concludes that there are relatively few clear cases that support this analysis of the effect of indemnities, and that each clause must be construed individually. IP Draughts is reassured to hear this conclusion. He has encountered this “agreed damages” approach in the world of M&A and has long wondered where it came from.  More generally, IP Draughts has encountered commonly-held assumptions about the legal effect of contract terms in the world of M&A that are not always obvious to those whose contract experience has been in another market sector, and he wonders whether an element of “group think” has developed in that closed world.

IP Draughts may attempt some drafting of indemnities from first principles and with these points in mind, in a later blog posting. Most of these points are familiar, but some of them, eg the distinction between preventive and compensatory indemnities, have been brought into sharper relief by the book’s analysis.

 

 

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Really nice review of our book on contract drafting

drafting neg comm cons 3rd ednThank you to Amanda Gibbs and the International Company and Commercial Law Review for this really nice review of one of our books, Drafting and Negotiating Commercial Contracts (Anderson & Warner, third edition, Bloomsbury Publishing), which we have just seen.  A great Christmas present!

International Company and Commercial Law Review – review of Drafting and Negotiating Commercial Contracts 3e

The review concludes with the following words:

“The style of writing is reassuring, confident and generous.  The content reflects the experience of its authors.  The standards advocated for contract drafting are high.  The advice is practical, helpful and encouraging.  This book offers a valuable masterclass for anyone interested in contract drafting skills.”

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Guidebook to Intellectual Property: Book Review

guidebook to ipHow should we view intellectual property?  As a set of legal rules, derived mostly from legislation, to be studied at university?  Or as a business asset, to be valued, packaged, exploited and recorded on a balance sheet?  Or as a professional mystery, which initiates – patent attorneys – take many years to master?  As they journey to enlightenment, European patent attorneys are required to take and pass (on the Nth attempt) some of the toughest exams in the known world.  The 10,000 hours rule seems pitifully inadequate for such a demanding profession.

Or should we view IP as a threat to the market-place, as anti-trust authorities would have us believe?  Or as a route to economic development, as recent British Prime Ministers have vaguely seemed to hope, which has led them to commission a fleet of half-baked policy reviews.  These reviews, led by journalists and academics – Gowers, Hargreaves and Wilson spring to mind – have gone out of their way to avoid contamination by IP lawyers, who might actually know something about the subjects under discussion.

Or should we recognise that IP is a weapon to be used in a battle for commercial supremacy between competing businesses, whether they are giants like Apple and Samsung, or the small businesses for whom the Intellectual Property Enterprise Court has been devised?  The warring parties will use whatever weapons they have to hand, and they often include IP rights.  Sometimes, the parties don’t even know what weapons they have until their IP lawyers investigate and report.

Depending on our perspective of the IP world, we may require a particular mix of knowledge of IP law and practice. We may need a wide but shallow overview, or a deep insight into points of detail.  We may need to focus on pure legal issues, or on practice points, or on commercial objectives. Or we may want an accessible blend of all of these aspects, as an introduction to the subject.

Where can we get the particular blend of knowledge that we require, other than by learning on the job?

Professor Sir Robin Jacob, PC, QC

Professor Sir Robin Jacob, PC, QC

Guidebook to Intellectual Property (Jacob, Alexander and Fisher, 6th edn, Hart Publishing) gives us part of the picture.  It provides an introduction to IP law.  In the words of the frontispiece, “it is aimed not only at law students …but also at interested users of IP – business people, inventors, scientists, designers and the like.”

The book is suitable as an introductory text for law students, and it is written by experts who have academic credentials: two of them have established positions at the UCL Faculty of Laws and the third has a visiting appointment there.  But the perspective of the book is that of the practitioner, rather than the academic.  Or rather a particular type of practitioner, the English IP barrister.  This reflects the history of the book and the background of most of its authors.  The book was originally written as a set of pamphlets in the 1940s by Thomas Blanco White QC, a barrister who went on to be head of chambers at a leading set of IP barristers’ chambers in London.  His successor as head of those chambers, Robin Jacob QC (more recently a Lord Justice of Appeal and now Professor of IP Law at UCL), is one of the authors of the present, 6th edition, along with Daniel Alexander QC (a senior member of the same chambers) and Matt Fisher, a senior lecturer in Robin’s team of IP academics at UCL.

This practitioner perspective is one of the book’s strengths.  The book explains some of the context of IP laws, and how they are used in practice, particularly in litigation.  Every so often, the authors (or, we might guess, mainly the senior author) express an opinion in terms that are the opposite of mealy-mouthed.  Whether you agree with these opinions or not, they bring the subject to life in a way that many legal textbooks fail to do. For instance, consider the following choice quotes from the book:

·         The USA …has some bizarre aspects like jury trial in patent cases.

·         [IP legislation] is a mishmash of compromise, some of it the result of effective lobbying by particular interest groups, some a result of muddled thinking or questionable drafting by legislators and some which is actually sensible and practical.

·         One can tell this area of law is still in need of clarification when our own Supreme Court is unable to be sure whether it is an infringement of copyright to read articles on the internet.

·         Even larger cases do not need more than the addition of a good solicitor and perhaps one assistant.  Sensible businessmen will ask why their lawyers want to use so many people on their case.

This last point might provoke some comments among experienced IP litigation solicitors, and raises a wider point, which is that we are all the products of our own, partial experiences.  Barristers and judges tend to see litigation from a different perspective to that of the solicitor, and both tend to have a different perspective to that of the businessman client.  The book benefits from the practitioner and academic perspectives of its authors.  But there are other perspectives to be had.

Daniel Alexander QC

Daniel Alexander QC

A distinctive feature of this book is that it is written in a classical style, in the sense that it is simply a stream of well-written prose, interspersed with short headings.  It does not pander to the internet generation.  There are no text boxes, case studies, diagrams, bullet points or other aids to comprehension.  There are no statistics culled from the internet, quotations from “thought leaders” (other than occasional references to court cases), or other attention-grabbing features, as might be found in many a management textbook.

In other words, the authors stick to what they know, which is the oral and written tradition of English court-room advocates.  They have a great deal of useful information to impart, and they put it across well.

Matt Fisher

Matt Fisher

Occasionally, IP Draughts wished they would go to the next level.  For example, the book briefly discusses the pros and cons of filing a patent application with the UK Intellectual Property Office or with the European Patent Office.  IP Draughts wanted the authors to discuss the statistic that 85% of UK patents are now filed via the European route rather than the UK route.  What are the implications of this extraordinary statistic for the inventor who has to decide which route to take? That sophisticated patentees generally use the European route?  That the UK route is mainly used by small-scale UK inventors who don’t know any better?   That the UK Intellectual Property Office as a stand-alone entity is a busted flush and that the UK Government should wind it up or make it simply a branch office of the EPO?  Or none of the above?  Perhaps it is unrealistic to expect the authors to comment on such a sensitive topic; perhaps this point is outside their direct experience.

Another distinctive feature of the book is how little it says about IP transactions.  There is brief mention of competition laws affecting IP transactions, and of compulsory licensing, but hardly anything on what might be called voluntary licensing.  There is slightly more in the copyright chapter than in the patent chapter.  In this respect the book reminded IP Draughts of the content of Terrell on Patents or Kerly on Trade Marks, both of them serious, leading textbooks written by IP barristers, including some of the present writing team, but neither of which has much to say about licensing.  For example, the 13th edition of Kerly, of which Robin was the consulting editor, devotes 5 pages to the licensing of registered trade marks, out of a total of 1,600 pages.  This is understandable (perhaps) in a heavyweight textbook on the details of IP laws, less so in an introductory guide that takes a wider approach to the subject.

In summary, Guidebook to Intellectual Property is an excellent introduction to IP, well-written, interesting and insightful, and several steps above the typical student textbook.  Most newcomers to IP, whether as lawyers or business managers, will find the book very useful, both as an introduction to IP law and as a practical overview of how the IP system works, particularly in relation to applications for IP and IP litigation.

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Improve your contract drafting. Step 1: read MSCD, 3rd edn

MSCD3When IP Draughts first started in legal practice, he was taught many wise and noble things by the elders of the profession.  Barristers do not shake hands with one another.  A barrister should address a magistrate as “Sir” and eschew the practice of some solicitors who refer to him as “Your Worship”.  A junior barrister should not use the moveable lecturn that sits on the bench in front of him in court, until he has been qualified for 7 years.  Outside of court, a barrister should address a judge as “Judge” (using the vocative) and not with his judicial title.  A barrister must wear a three-piece suit in court, with the waistcoat buttoned (except for the bottom button); alternatively he may wear a double-breasted suit, with the buttons done up.  If counsel’s clothes are regarded as loud or inappropriate, the judge may say “I cannot hear you, Mr Anderson” to signal his displeasure.

Another pearl of wisdom that was lovingly passed down to IP Draughts, like grandpapa’s hand-made dinner suit, was that you should not cite legal textbooks in court, unless the author is dead.  The President of the UK Supreme Court, Lord Neuberger, has recently explained the history of this “rule” in a lecture to the Max Planck Institute, recorded here.  It seems that the rule no longer applies, and may not have applied when IP Draughts was taught it thirty years ago.  Thus, traditional wisdom lingers in the minds of practitioners long after its usefulness has come to an end.

The reverence that the legal profession has for familiar practices is demonstrated, day-in, day-out, by the appearance and content of commercial agreements.  This is as true in the UK as it is in the USA, Australia and many other jurisdictions. That the style of those agreements differs from jurisdiction to to jurisdiction makes not a jot of difference to the principle, which might be summarised as: familiarity breeds complacency.

Another Adams who worked on an important drafting project

Another Adams who worked on an important drafting project

For the last decade, Ken Adams has made it his professional mission to improve the quality of contract drafting.  At the heart of his mission has been his book, A Manual of Style for Contract Drafting (MSCD), which was first published in 2004.  The 3rd edition of this work (MSCD3) has recently published by the American Bar Association. He also maintains a blog on contract drafting, and he has taught the subject to many people; he is currently in the Orient on a lecture tour.

Although he has fine academic credentials, and is a visiting lecturer at the University of Pennsylvania Law School, Ken is not an academic. Rather he is someone who has come from legal practice and invented a discipline of his own, one that is focused on the needs of practitioners yet written with all the rigour and thoroughness of an academic treatise.

Anyone who is serious about developing their skills as a contract drafter needs to read this book.  That is not to say that you have to agree with every word of it, but you should at least consider the arguments that Ken makes.  You will probably end up agreeing with most of them.  Even where you don’t agree, you may find that, over time, some of his recommendations have crept into your thinking without you realising it.  It is said that the best way of persuading someone is to make them think they had the idea themselves.  IP Draughts previously thought that his practice of starting the operative clauses of contracts with the phrase “The parties agree as follows” was original to him, but after reading MSCD3 he realises that he may have picked this idea up from an earlier edition of the book.

The perspective that Ken takes is one of making contracts clearer and more accurate in their language; one of the benefits of doing this is to reduce the opportunities for disputes over interpretation.  However, he is not directly concerned, as a practitioner should be, with “winning in court”.  It is not part of his brief to pander to the quirkiness of courts, or the encrustation of national or State case law.  He is particularly critical of how some courts go about the business of interpreting contracts.  For instance, he despairs of how the English courts make fine (and, in Ken’s view, misguided) linguistic distinctions between representations and warranties, or between best endeavours and reasonable endeavours, when these terms are used in contracts.

English practitioners will want to keep a weather eye out for how an English judge is likely to interpret a particular form of words, before deciding how far they are prepared to take Ken’s recommendations in this area.  To take another, small example (and one that Ken analyses in detail) IP Draughts is not yet convinced that he can abandon the phrase “including without limitation”, although he does relegate it to an interpretation section, so that it only appears once in the contract.

times new romanMSCD discusses, and make recommendations on, all aspects of the appearance and drafting style of a contract.  This breadth of coverage is very helpful, but does mean that some of its recommendations are on subjects that might be thought a matter of personal preference, eg whether to type the document in a Times New Roman or Calibri font.  Put another way, some of the recommendations are core to the Adams drafting approach and are radical in some of their ideas (eg those in chapter 3 – Categories of Contract Lanugage), while some others reflect conventional practice among lawyers and writers (eg many of those in chapter 4 – Layout).  To quote from Ken’s “model statement of style” at page 454, MSCD “works within the prevailing idiom”.  This is sometimes the idiom of US contract lawyers and that idiom is sometimes, in IP Draughts’ view, sub-optimal.  He will continue to prefer English drafting practices where he considers these to have advantages over US drafting practices, eg by numbering the parties,  putting definitions in two columns, avoiding tab spacing, and referring to contractual provisions (at several levels in the hierarchy of provisions) as clauses.

A short review can only scratch the surface of the hundreds, or perhaps thousands, of detailed recommendations that are made in MSCD.  As IP Draughts read through MSCD3, he wondered whether there might be some way of summarising the key recommendations of each chapter, to aid the reader’s comprehension.  It seems to IP Draughts that there is a danger of overwhelming the casual reader with detailed information that cannot all be remembered.

The sample “before” and “after” agreements at the end of the book are helpful in this respect, but might there be other ways of presenting the information in an easily-digestible way, eg an interactive online presentation of an agreement, with  dialogue boxes that come up as one moves the cursor over the text, perhaps colour-coded to deal with different types of recommendation?

Once an author has published his work, he loses control over it, except at the margins in areas such as copyright infringement and defamation.  People can read it, and use it, in whatever way they choose. Ken has spent many thousands of hours in debating, thinking and writing about the points discussed in MSCD.  The book reflects his well-considered conclusions on drafting best practice.  Therefore it is natural for him to take the view that the recommendations of MSCD should be adopted wholesale by contract drafters internationally. While some drafters will take this approach, IP Draughts thinks it likely that a larger number of readers will make a gradual shift towards the principles of MSCD over time, with people moving at different speeds and adopting more or less of those principles as they consider appropriate.

A project of this kind benefits all who are involved in contracts, whether as drafters, negotiators, implementers of contractual obligations, or judges of disputes over those obligations.  In this sense, Ken has chosen to perform a national, or international, service.  IP Draughts hopes that the service gets the financial and other recognition that it deserves.

harrison clockIn an earlier age, innovators who performed valuable national service were rewarded with Government prizes and royal pensions.  For example, in the eighteenth century John Harrison received Government funding for his work to develop accurate chronometers.  This innovation enabled people on ships to calculate their longitudinal position.  Perhaps MSCD is not quite in that league, but it surely merits recognition for the service it provides to people involved in commercial contracts.

Coming back to a point made earlier, MSCD certainly deserves to be cited in court, even though the author is very much alive and kicking.  Long may he remain in this condition!

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