Non-disparagement clauses in NDAs

Unequal bargaining power

Non-disclosure agreements (NDAs) have been in the news recently. First, there were the revelations about the US film producer, Harvey Weinstein, and the suggestion that some of the women who made allegations about his conduct have broken the terms of NDAs that they have signed.

More recently, there has been political controversy in the UK about the BBC requiring NDAs when settling disputes with female staff about whether they are paid less than men for the same work.

One of the issues that has emerged is the use of so-called non-disparagement clauses in NDAs. In effect, these require a party not to bad-mouth the other party. Here is an example found quickly on the internet:

Executive will not disparage the Employer or any of its directors, officers, agents or Executives or otherwise take any action which could reasonably be expected to adversely affect the personal or professional reputation of the Employer or any of its directors, officers, agents or employees.

Whether such a clause is enforceable will, no doubt, vary between jurisdictions. There are likely to be situations where the clause is not enforceable on public policy grounds, eg if the employee is reporting illegal activity (whistle-blowing) or giving evidence in court. See, for example, this commentary (on a related point) from a leading employment law chambers in London.

IP Draughts notes in passing that the model settlement agreement recommended by ACAS in the UK doesn’t include any non-disparagement clause, but commentary on various employment law firm websites seems to be in favour of such a clause.

IP Draughts doesn’t see these clauses very often, though he is occasionally asked to review (UK) employment settlement agreements. He recalls seeing one in an agreement to settle a dispute between UK academics (not an employment dispute). You might think that there is something about academic disputes that make such a provision useful; I couldn’t possibly comment.

Clauses of this kind seem to be more popular in the USA. He has his doubts over whether, in a UK setting, they are typically anything more than something for the ex-employer to point to, when seeking to dissuade the ex-employee from making negative comments.

Postscript: Since writing this article, IP Draughts has seen a news report about an ex-employee of Redwood, a San Francisco start-up company, who complained of harassment and “declined to sign the nondisparagement agreement offered to her as a condition of severance”.

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Hell is other people’s contracts

Deal or No Deal? This golden oldie is a short story about the procurement process.

IP Draughts

camusWhile browsing in a bookshop in Montmartre recently, IP Draughts discovered what appeared to be an old play synopsis, stuck inside the front cover of a first edition of Albert Camus’ Collected Essays.

As the play synopsis seemed to be concerned with contract drafting, IP Draughts thought readers might be interested to see it.  Link here. If thought suitable by others, IP Draughts would be willing to lead a crowdfunding consortium to develop this synopsis into a Hollywood film. He suggest that suitable actors to play the lead characters might be:

John – Colin Firth

Randy – John Goodman

Simone – Scarlett Johansson

Maitre d’ – Ralph Fiennes

CEO – Meryl Streep*

Please let IP Draughts know if you think this idea has legs.

* The synopsis indicates a male CEO. If investors think it is important to respect the author’s directions on this point, Kevin Spacey would be…

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Potential UN convention on IP licensing

In 2 weeks’ time, IP Draughts will be going to Geneva. The University of Geneva has invited him to give a presentation on IP licensing, as part of an all-day conference on technology transactions, which is jointly sponsored by the university and by LES Switzerland.

Since accepting the invitation, he has learnt that the morning séance is being conducted in English, and the afternoon in French. Thankfully, IP Draughts has been allocated to the morning session. His GCSE French (grade A) is not really up to debating implied terms in licensing transactions. Froggy Hunter (his French teacher; were nicknames ever politically correct?) could have provided language training on this subject, but for some reason it didn’t seem to be a priority in the 1970s classroom. There was more of a focus on not pronouncing faim as femme.

IP Draughts’ talk will propose that the United Nations should develop an international convention on IP licensing, perhaps drawing on some of the approach taken in its existing convention on the international sale of goods. The talk will draw attention to some of the problems with international IP licensing, including:

  • different legal systems approaching the interpretation of licence agreements in different ways, with some countries having limited experience of the subject.
  • different approaches to negotiation and the preparation of agreements in different countries.
  • the use of template agreements of varying drafting quality.

The talk will cite the example of the English High Court case of Unwired Planet v Huawei, where the court scrutinised the terms of a licence agreement between a US company and a Chinese company.
Finally, the talk will mention some areas that the convention might cover, including general principles of interpretation, implied terms, and perhaps even a model agreement.

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When is an exclusive licence not an exclusive licence?

In IP Draughts’ experience, clients sometimes query the use of the term “exclusive” in licence agreements. Different questions arise. Below are some of them, and IP Draughts’ short-form answers (good enough for a rough guide, but more work is required when considering the quesiton in an individual case).

What does “exclusive” typically mean in a licence agreement?

  • Does it mean that the licensor is not allowed to exploit the IP within the scope of the licence? Yes.
  • Does this need to be stated explicitly (eg through the use of a phrase such as “even as to the licensor”)? No, though IP Draughts would sometimes define exclusive, particularly if the parties have a different view of the world, or there is an EU element (see below).
  • Can you divide up the fields in which the IP is to be commercialised, and grant exclusive licences in separate fields under the same IP? Yes
  • If a licensee sells a licensed product for use in its field, but the purchaser (or a purchaser from that purchaser) uses it outside the field, can they be prevented from doing so and is the licensee in breach of their licence? Difficult legal issues, but often no.
  • Can you grant exclusive licences in different territories under essentially the same IP? Yes.
  • Does this mean that the licensor guarantees that no-one else (eg another licensee) will exploit in the licensed territory? No, particularly in the EU where passive sales by other licensees are allowed.
  • Does this mean that the licensee promises not to sell outside its licensed territory? No, particularly in the EU where passive sales outside the territory are allowed.

Meaning of exclusive in the (UK) Patents Act 1977 (“PA”)

Under the PA, an exclusive licensee has the right to bring proceedings against infringers in its own name. Exclusive licensee is defined in the PA, but only for the purposes of clarifying who has the statutory rights of an exclusive licensee – there is no general assumption that this definition is relevant when interpreting licence agreements. Section 130 of the PA provides:

‘exclusive licence’ means a licence from the proprietor of or applicant for a patent conferring on the licensee, or on him and persons authorised by him, to the exclusion of all other persons (including the proprietor or applicant), any right in respect of the invention to which the patent or application relates, and ‘exclusive licensee’ and ‘non-exclusive licence’ shall be construed accordingly.

A recent case in the English High Court explores what this definition means, and in particular whether a licence that is stated in a licence agreement to be “exclusive” is, in fact an exclusive licence for the purposes of the PA.

The decision in the case of Oxford Nanopore Technologies Ltd & Anor v Pacific Biosciences of California, Inc & Anor [2017] EWHC 3190 (Pat) was published on 14 December 2017. It is a decision of a (part-time) deputy judge, David Stone, who is a solicitor and a partner at Allen & Overy. The deputy judge reviewed the limited case law in this area, including the recent case of Illumina Inc and Ors v Premaitha Health PLC and Anor [2017] EWHC 2930 (Pat), which this blog discussed here. And, helpfully, he came up with 10 propositions in light of that case law and his assessment of the law, which are reproduced below:

i) Whether or not a licence is an exclusive licence for the purposes of section 67(1) of the Patents Act is a matter for English law: Dendron, paragraph 9;

ii) A licence which purports to be an exclusive licence may not necessarily be so. Identifying an exclusive licence depends on a proper construction of the document or documents: Dendron, paragraph 9. An exclusive licence will be expressly so: circumstances in which an exclusive licence will be implied will be rare, if they exist at all;

iii) It is for the party asserting that it is an exclusive licensee to demonstrate that it is: Dendron, paragraph 9;

iv) The assessment of whether or not a licence is exclusive is not a “once and for all assessment”: Dendron, paragraph 11. An exclusive licence may confer upon the patentee a power to convert the licence into a non-exclusive licence: Dendron, paragraph 11;

v) The “essential element” of an exclusive licence is that is it a licence to the exclusion of all other persons, including the patentee or applicant: Dendron, paragraph 11;

vi) It is possible to have a plurality of exclusive licences in respect of any one patent: Courtauld’s, page 210; Illumina, paragraph 475;

vii) But each exclusive licence may only be granted to one person – a licence will not be exclusive if granted to a number of entities, even if they are under the same control: Illumina, paragraph 254;

viii) An exclusive licensee may grant sub-licences to “persons authorised by him”: Dendron, paragraph 11; Illumina, paragraph 254;

ix) There is a distinction to be drawn between a licence and an equitable right to call for a licence: Courtauld’s, page 210; and

x) Where an equitable right to call for a licence is conditional (as it was in Illumina – the Hong Kong Government had to satisfy itself that the public mission of the Commissioner needs to be fulfilled, or that it is in the public interest to request the licence), the otherwise exclusive licence will remain exclusive unless and until the contractual conditions are fulfilled that enable the grant of the licence: Illumina, paragraph 476.

An interesting point of detail mentioned in this case, that IP Draughts had not previously spotted, is that in the Illumina case, Carr J had held that where an academic licensor reserves rights to use the licensed IP for academic research and publication, this does not prevent the licence from being an exclusive one. At paragraph 475 of the Illumina judgment, as reported in Oxford Nanopore, Carr J said:

475. Premaitha argued that since CUHK had reserved rights to use and develop Lo 2 and Lo 3 for academic research and publication at all times, the licence was not exclusive to Illumina. My conclusion on this issue is the same as in relation to the Quake Patents. The reservation does not extend to authorisation of any third party for commercial purposes. The licence [is] an exclusive licence of the right to exploit for commercial purposes and, according to section 130(7) [Stone: I think this was a reference for section 130(1)] an exclusive licence may be in respect of any right.

David Stone

This conclusion, which was focussed on whether a licence was exclusive for statutory purposes, may also be persuasive when considering the contractual issue, ie whether it is appropriate to describe a licence as exclusive when the licensor reserves rights of this kind.

IP Draughts admires the way in which David Stone has reduced the previous case law to a series of propositions, and hopes that we will see many more decisions by this talented judge in the field of IP agreements.

 

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