Category Archives: Legal practice

Should clients prefer a non-specialist lawyer?

screenwritingVia Ken Adams and the wonderful world of Twitter, IP Draughts was alerted to this article:
The Business of Screenwriter: Get a damn good lawyer!

The article discusses the lack of foresight of a lawyer who drafted a screenwriting contract for the author in the 1980s. The contract provided for bonus payments for sequels in specified formats, but had failed to include generic language that would cover “direct to DVD” sequels – a format that didn’t exist when the contract was made. As a result of this omission, when a sequel was made in the 2000s, the author failed to secure two bonus payments, each of $150,000, to which he thought he was entitled.

The punchline (punch-paragraph?) of the article was as follows:

So when you sell your script and you get an agent and/or manager, and they talk to you about how you need to get a good entertainment attorney, you smile, and gently correct them:

“No, I want a damn good lawyer.”

The article seems to be suggesting that the lawyer who drafted the contract was too close to the entertainment industry as it existed in the 1980s, and followed convention rather than thinking carefully about what the contract should say, and future-proofing it against new technologies.

It should, of course, be possible to be a damn good lawyer and a good entertainment attorney. Any entertainment attorney who keeps abreast of case law will be aware of a steady stream of cases where the court was asked to apply contract language to new technologies that didn’t exist when the contract was made. See, for example, this article, which provides a short overview of the subject.

specialist2But perhaps in some market sectors, the lawyers who specialise in that sector aren’t very good lawyers. If you have to choose between good and specialist, which should you go for? It is difficult for a lay client to know whether she is choosing a damn good lawyer (a qualitative assessment). It is easier to find evidence of prior experience of the industry sector (a quantitative assessment). In IP Draughts’ experience, many clients prioritise prior experience, sometimes to an excessive extent. He has encountered clients who prefer a lawyer who has done exactly the same type of deal before (eg the development of a particular type of medical device), rather than one who has advised on many other types of development contract in the medical sector. Viewed from afar, the latter category may be thought already very specialist, and perhaps sufficiently specialist for the contract in question.

About 25 years ago, a former senior partner of a leading IP law firm discussed with IP Draughts the choice of barristers (advocates) for a major case. His view was that, if he couldn’t get one of the very top barristers at the intellectual property bar, he would not go down to the second tier, but would instead instruct a high-quality barrister at the commercial bar, and instruct them in the technology and IP issues, with assistance from junior IP counsel. His priority was a damn good lawyer rather than a specialist.

goodenoughComing back to contract drafting, rather than IP litigation, in an ideal world one would choose a lawyer who is both good and specialist (as well as having other qualities like fitting in with the client’s approach, being a good negotiator, etc etc). For a major transaction, it may be worth a client’s time to research carefully who might fulfil all of these criteria. For more routine matters, if you have a lawyer whose abilities and integrity you trust, and they tell you that they are comfortable with the task, then you may prefer to stick with them than find someone more specialist.

Sometimes, you should be reassured when your lawyer tells you “I’m not a specialist in this field (but I think I can help you).”

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International IP transactions and the effect of local laws

Litigating IP rights is such tiring work!

Litigating IP rights is such tiring work!

You have entered into an IP agreement that applies worldwide. It might be a licence agreement in which the licensed territory is all countries of the world. Or it might be an assignment of all of your IP, in all countries of the world.

The parties have agreed the law and jurisdiction of the contract. For present purposes, let us say that English law is to govern it, and that the English courts have exclusive jurisdiction. But the issues mentioned below are likely to apply irrespective of which law and jurisdiction are chosen.

The contract addresses IP-related issues in each country of the world. Take the example of an exclusive licence agreement that includes a term stating that the licensee can sub-license its rights. To what extent will this term override provisions of national IP law that state whether a licensee is permittee to sub-license?

As far as IP Draughts is aware (but he hasn’t done any worldwide research), on this point national IP laws may provide a fall-back position if the contract is non-specific on the issue, but they tend not to be prescriptive in the sense of overriding what the parties have agreed. For example, section 30(4)(a) of the UK Patents Act 1977 provides:

to the extent that the licence so provides, a sub-licence may be granted under any such licence and any such licence or sub-licence may be assigned or mortgaged

This suggests that, in the absence of a provision in the head licence agreement that permits sub-licensing, sub-licensing is not allowed.

Some years ago, when we wrote our loose-leaf work on agreements in the pharmaceutical sector, our German-law contributor included the following comment as a footnote in the licence agreement template:

Under German law, the right to grant sub-licences in case of an exclusive licence follows by law. Thus the parties need to explicitly exclude such right if desired.

IP Draughts suspects that, in most cases, national IP laws on the interpretation of an IP agreement will not override terms that the parties have expressly agreed in their contract.

If we broaden the subject from IP laws affecting the interpretation of IP agreements, to IP laws more generally, can we still assume that the terms of the contract override national IP laws? Probably not. For example, an IP agreement made under English law might state that the licensee can sue infringers. National IP laws may not allow the licensee to bring an action in its own name. Should the agreement be interpreted as requiring the IP owner to sue an infringer on behalf of the licensee in those countries where a licensee lacks locus standi to sue in its own name? IP Draughts cannot offer any universal answer to this question. It may depend on how the court interprets the contract. And even if the English court (in the above example) says that the answer to this question is yes, how enforceable will this decision be in the jurisdiction where the action is to be brought?

lex luthor

lex luthor

This type of question has long troubled IP Draughts, and he regrets that he didn’t take a course in conflict of laws at university. When, occasionally, he scratches the surface of this subject, he sees the liberal use of Latin expressions such as lex situs and lex fori, realises how dry and complicated the subject is, and leaves detailed study for another day. Even apparently helpful documents that seem to be directly on point, such as this one, cause him mild panic.

It was with mixed feelings, therefore, that IP Draughts read last week’s judgment by Arnold J in the case of Gloucester Place Music Ltd v Le Bon & Ors [2016] EWHC 3091 (Ch) (02 December 2016).

Readers may have seen reports in the national press about this case, and the dissatisfaction of the defendants with the outcome. Boiling it down to its essentials:

  1. The defendants are the members of the 1980s pop group, Duran Duran, and their service companies.
  2. In the 1980s they made an outright assignment of the worldwide IP in their songs to the claimant, a UK company, in return for payments including royalties. The agreements were all made under English law and were subject to the jurisdiction of the English courts.
  3. The assignment was very broad in scope (and used excruciating language, but that is a discussion for another day).
  4. US copyright law (section 203 of the US Copyright Act 1976) allows authors who have assigned their copyright to reclaim it after, typically, 35 years, by serving notice on the assignee. Section 203(5) provides: “Termination of the [assignment] may be effected notwithstanding any agreement to the contrary…”
  5. The defendants have served notices under section 203 on the claimant.
  6. The claimant sought and won a declaration in the English High Court that by serving such notices the defendants are in breach of their contracts with the claimant under which the IP was originally assigned.

The judge managed to use another Latin expression from the conflict-of-laws dictionary, namely lex loci protectionis. Applying English law principles of interpretation he concluded, “not without hesitation”, that he should give effect to the assignment as written, and should not make it subject to the rights given to authors by US copyright law to claim, in effect, a reversionary interest in the copyright.

This brief report omits mention of a number of other issues that the judge considered, including the fact that neither party provided expert evidence from a US lawyer.

IP Draughts hopes that this dispute will be appealed to the UK Supreme Court, so that we can get some guidance from Lord Neuberger and his colleagues on the interplay of national IP laws and IP contracts made under another law. Dare he say it aloud, but he would find this a far more interesting subject on which to get the Supreme Court’s ruling than whether the Prime Minister is required to introduce a Parliamentary Bill (which will almost certainly be approved by the House of Commons) before giving notice under Article 50 to leave the European Union.

 

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Filed under Intellectual Property, Legal practice, Legal Updates

Getting the tone right in legal work-product

polishPart of IP Draughts’ job is to review draft documents that have been prepared by junior colleagues, before the document is sent out to a client or another party. The document may contain legal advice, explanation or commentary, argue a case, or ask for further information.

More often than not, IP Draughts has little to say about the substance of any advice or other information that is contained in the draft. Prepared by IP Draughts’ excellent and diligent colleagues, the substance tends to be accurate.

The main task, in many cases, is making sure that the content of the document is expressed in the best way possible. ‘Best’ may vary between types of document, but often includes providing information in a helpful way, or arguing a case persuasively. In most cases it is important to use clear language and to structure the document in a way that helps the reader to find their way through the details. For example, if the document is lengthy, it may be better to put it in a Word document, with plenty of headings and a summary at the beginning, rather than just paste it into a lengthy email.

mindreadingIt is also useful to try to put oneself into the mind of the intended reader. How do they process information? Are they looking for reassurance, or a simple overview, or chapter and verse? Are they likely to be ‘difficult’ and should the tone be checked for anything that might give them an excuse to react in an unproductive way? Are they expecting a recommendation, rather than just a setting out of options? Is the purpose of the document to try to steer the reader in a particular direction, and is it likely to have this effect? Predicting some of these points may require several years’ experience and a degree of empathy. Adjusting the document to take account of these points will similarly require experience and well-developed drafting skills.

too-hardSometimes, the task is to make the document more user-friendly and less lawyerly. At other times, the drafter may have gone too far in this direction. In a well-intentioned effort to be helpful, he may have stated his views with too much certainty, based on too little knowledge of the client’s commercial objectives. The result may be a document that appears useful but isn’t. It may be necessary to rein back on the recommendations and make them more robust, or to make clear the limits of the author’s expertise.

All of this requires thought and care. IP Draughts tries to follow an approach that he learnt as a junior lawyer, that there should be no personal pride in a document, and it should be critically scrutinised by the author or others before it is sent out. Sometimes, this results in more than one draft.

Sometimes, IP Draughts finds it helpful to think hard about the following points:

  1. Purpose. What is the document trying to achieve? In the case of a letter of advice, what has the client asked for and how will they use the advice?
  2. Reader. Who is the reader, and how will they understand and react to the document?
  3. Clarity and presentation. Is there a logical structure and flow to the document? Is it signposted with headings, an overview and other aids to reading? Is the language clear?
  4. Content. Is the document providing the right information and the right amount of information? Or is it too detailed or not detailed enough? Are there any inconsistencies in content between different parts? Is it answering questions that weren’t asked or which are not needed by the reader?
  5. Boundaries. Are there any limits on the scope of the document, eg that it is not intended to be comprehensive (because the work involved would require disproportionate expense), or depends on information provided, or is focused on one aspect of the problem, or that the reader is responsible for taking commercial decisions in light of the content of the document? Do these limits need to be stated explicitly?
  6. Professionalism. Is the document a professional piece of work, that would withstand scrutiny by a hostile regulator? While this criterion should usually flow naturally from dealing with the earlier points, and one should avoid being too defensive, there may be occasions where something in the document sticks out as not looking quite right, and where some tweaking of content or tone may be required.

working-outTypically, a well-drafted document will not show these workings, even if the drafter has made use of them in the background. They are part of the toolkit of the lawyer, perhaps less obvious than other elements such as understanding of the law, or even the ability to draft clear contract terms, but no less important when it comes to providing an excellent service.

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Leading UK licensing lawyers 2017

leaguesFor several years, this blog has produced a table of leading IP licensing lawyers, created by the simple but imperfect method of identifying all the lawyers who are recommended in both of the following directories for that year:

(a) the IAM Patent 1000 list of leading UK patent licensing lawyers; and

(b) the Chambers Directory list of leading UK transactional lawyers in the field of life sciences.

The latter list  was published earlier today; the IAM list was published some months ago.

So, who is on the IP Draughts list for 2017? Drum roll…

Laura Anderson  Bristows LLP
Mark Anderson  Anderson Law LLP
Malcolm Bates  Taylor Wessing LLP
Alison Dennis  Fieldfisher LLP
Patrick Duxbury  Gowling WLG
Jim Ford  Allen & Overy LLP
Michael Gavey  Simmons & Simmons LLP
Mark A Lubbock  Ashurst LLP
Nicola Maguire  Cooley LLP
Lucinda Osborne  Covington & Burling LLP
Daniel Pavin  Covington & Burling LLP
Stephen Reese  Olswang LLP
Chris Shelley  Penningtons Manches LLP
Sally Shorthose  Bird & Bird LLP
John Wilkinson  Cooley LLP

 

Most of the names on this list have been on the list for several years. A few names have dropped off but there are no new names. As a result, there are 15 names on the above list compared to 20 last year.

vennAn advantage of this list over the Chambers Directory list is that this list omits some individuals who are really corporate lawyers rather than IP lawyers. A disadvantage of this list is that it omits some fine IP lawyers who are not particularly focused on life science work, eg Matthew Warren of Bristows, or who are up-and-coming (eg IP Draughts’ partner Lisa Allebone, who has been named in the IP section of Chambers Directory for the first time).

Despite these defects, the list continues to be a fairly good indicator of the leading technology licensing lawyers in England and Wales.

Congratulation to all who appear!

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