The following questions have been asked of me ever since I opened NIPC Law in 1997, particularly since I qualified to accept public access work. If there is anything that you want to ask that is not already covered or if there is anything not answered to your satisfaction, call me on 0800 862 0055 or send me an email..
What exactly do you do?
I try to keep people out of trouble and, where that is not possible, to extricate them as quickly and as cheaply as possible.
How do you try to keep people out of trouble?
By identifying possible legal hazards and showing them how to avoid them.
Give me an example
Suppose a businessman or woman needs some specially written software for his or her company. The only supplier that can develop it is a small software house specializing in the technology. The parties discuss what the customer needs. They agree a price. The supplier starts work. The only evidence of a contract is perhaps an exchange of emails and maybe a quotation with some contract terms gathered from a variety of sources including a dry cleaner’s waiver and a US software house’s shrink wrap licence on the back. If the parties leave the paperwork at that they are storing up the potential for a whole heap of expensive litigation which could ruin them both. They may be lucky and not run into problems but, then again, they may not.
If either the customer or the supplier or, indeed, both of them consult me, I would ask exactly what the customer has agreed to buy. I would record the answer in, say, a list of deliverables and a specification (that is to say, a statement of what the software will do). Another question I would probably ask is: how do we know whether the software house has delivered what it has promised? The answer may be: if the software passes some sort of acceptance tests. I would find out exactly what those tests are and what the correct results should be. I would ask when payment should be due and get the parties to agree a timetable that is acceptable to both. Another question I would ask is: who should own the copyright in the source code and other work. That may depend on who needs the copyright most. If it is to be the customer it would be a good idea to find out whether the supplier can use part of the code he wrote for the customer in other applications and if so on what terms. I would probably ask about continuity of support and maintenance in view of the financial problems beset small specialist software houses. In the absence of any better arrangement I might suggest depositing the source code in escrow with the NCC or some other agent. In all cases, I would ask how the parties would wish to settle a dispute. The default is litigation in the High Court which can cost each side tens if not hundreds of thousands of pounds. I would discuss other possible dispute resolution processes such as arbitration and expert determination.
Once I had gathered all the answers, I would craft a software development contract which would be clear and reflect the bargain that the parties had made. The chances are that they would both treat such a contract as a reference guide rather than a weapon. There is a much greater chance that the transaction will proceed smoothly. Both parties would be satisfied and they might well do business with other again.
Give me an example of how you can extricate someone from trouble quickly and cheaply.
A trader may run a business that is recognized in the area by its distinctive trade name or trading style. Suppose a bitter ex-employee or competitor registers that name or style as a domain name and uses its website to divert enquiries. Until the end of 1999 the only remedy available to the trader would have been an application for an injunction in the Chancery Division taking months to come on and costing thousands of pounds.
Since 1999 anybody who applies for a domain name must consent to the referral of any dispute with a third party to determination by an expert in intellectual property or technology law. This process costs a few hundred pounds and takes only a few weeks. The UDRP (Uniform Domain-Name Dispute-Resolution Policy) applies to disputes over the aero, .biz, .com, .coop, .info, .museum, .name, .net, .org and .pro domain names and Nominet’s DRS (Dispute Resolution Service) to disputes over the .uk domain.
Many lawyers in small firms (and even some in large practices) have not heard about the UDRP or DRS. Their instinct is to advise litigation. The client then has the unenviable choice of risking thousands of pounds on litigation, which could go wrong, or put up with the registration.
There have been several occasions when I have asked by solicitors to settle proceedings for a trade mark infringement or passing off action and interim injunction application in cases of this kind. Their clients have been delighted when I have been able to suggest the UDRP or Nominet as a faster, cheaper and probably more predictable alternative. Sometimes, people come to me to see if there is a cheaper alternative after they have consulted solicitors. One such instance is set out in “Always consider the UDRP First”(31 Aug 2005).
Why aren’t you in London?
Two good reasons. I prefer to live in Holmfirth. Most of my clients are in the North.
Why are you on your own?
Because I have found from experience that there is no better way of practising intellectual property law outside London.
If you are in general chancery chambers there is terrific pressure from your clerks and clients to do other types of work. If you don’t do what they ask, they lose interest in you. If you do, you cease to specialize with the result that you lose your edge. Also, some intellectual property work, such as setting up an application for a search order, requires a lot of clerking time which a busy general set cannot afford. Finally, a lot of people like to have a go at passing off and copyright. Much of that work is easy enough but not all of it. Some of it is quite technical. And if someone holding your brief gets into difficulties against a specialist. a black mark is scored against everyone in chambers and not just the barrister who got it wrong.
How much do you charge?
That depends. My standard hourly rate is £250 + VAT. But as I know my subject pretty well I don’t have to spend a lot of hours on quite a lot of my work. I can usually settle particulars of claim for a copyright infringement case or a defence and counterclaim for a patent case in an hour or so which means that my charges rarely exceed £350. Where there is something difficult or risky, like an opinion for an insurer contemplating an after-the-event policy I am very careful and may take as much as a day.
I am aware that some clients just can’t afford those rates or that the matter at stake is just not worth that much in money terms to the client. For that reason, I have tried to tie my billing to the value of the work in hand with the hourly rate as the ceiling rather than the floor. I also do quite a lot of pro bono, that is to say, free work.
Do you work on legal aid?
Sadly I don’t. I used to do a lot of work on legal aid and I wish I still could. Legal aid did a lot to level the playing field between powerful interests and the general public. The problem is that paragraph 1 (h) of Schedule 2 to The Access to Justice Act 1999 abolished funding of “help (beyond the provision of general information about the law and the legal system and the availability of legal services) in relation to …….. matters arising out of the carrying on of a business.” That statute did more than anything to put the courts beyond the reach of the inventors, fashion designers, publishers and so that I used to represent. Had it still been available I could have provided even better representation in the Microsoft cases. I think the cost and difficulty of enforcing IPR is one of the reasons why the UK trails not just France and Germany in European patent applications but even the Netherlands and Switzerland with a third and an eighth of our population respectively.
But I do try to help my clients find funding. I encourage clients to consider IP insurance whenever they see me in conference or an IP clinic. I can’t recommend insurers but I can certainly tell clients where to check them out. I advise them to factor premiums into their business plans when they are launching new brands, products or services.
Some of my advisory and drafting services are also funded by business support agencies such as Business Link Yorkshire and Business Link East Midlands.
Can I instruct you on a “No Win, No Fee” Basis?
No win no fee or conditional fee agreements in England are very different from no win no fee or contingency fee agreements in the USA. In that country lawyers can get a share of the damages if they win which can be very large indeed. In this country the most a lawyer can get is 100% of her normal fee. IP litigation goes on much longer and involves far more uncertainties than say accident or defamation claims. The uplift just does not compensate those risks and delays. Although I will consider carefully every single case there have been very few occasions when I have been able to accept a conditional fee retainer. I would strongly advise clients to seek IP insurance before trouble starts rather than try to find a lawyer who will take a case on a conditional fee.
How can I consult you?
If you have a solicitor, patent agent. trade mark attorney or other professional advisor in the UK you can leave it all to him or her to contact me. If you don’t have such an intermediary you can contact me direct. You can call me on 0800 862 0055 or send me a message through this website. I have to stress that I do not conduct litigation or handle clients’ legal affairs. Solicitors are trained for that work and they are organized to do it well. If a client can’t do these jobs for himself I usually insist on his or her finding a solicitor and I can usually help to find one if so asked.
What’s your best win?
This was one of my very earliest cases. Practically the first I one I did when I came back to the Bar after leaving VISA. A whole series of defences against a well known central heating company. My client took out an installation franchise and for a while he made very good money. But the franchisor changed unilaterally the terms of his franchise quite radically and quite suddenly with the result that he could no longer make a living. He could not keep up his payments and the central heating contractor took proceedings against him in the High Court.
As the most junior member of chambers I was given the work. My clerk put it this way, “The poor man’s going bankrupt. There’s not much anyone can do about it. They haven’t got any money. You’re about as much as they can afford.” My instructions were actually to consider ways of transferring the house to my client’s wife to put it out of the control of his creditors. His daughter was about to get married and this claim could not have come at a worse time.
Fortunately, I had a pretty good grounding in EC antitrust law at VISA. I had just read Case 161/84 Pronuptia de Paris GmbH v Pronuptia de Paris Irmgard Schillgallis  ECR 353 and checked whether the franchise agreement had been notified. It had not been which meant that the Commission could not retrospectively exempt it under art 85 (3) of the Treaty of Rome (now art 101 (3) TFEU). I settled an affidavit in response to the RSC Order 14 (equivalent to CPR Part 24 application). The Queen’s Bench master was very, very sceptical but he had to accept that there might be a triable issue and the case was adjourned to counsel’s list.
Shortly before the adjourned hearing the claimant offered to walkaway on a contribution towards its costs. My Mancunian solicitor offered half a crown (£0.175) which was slightly less than the other side’s solicitors had in mind – but not much less. I think my client paid £1,000 and won a complete release from his contract.
I got a few other instructions from other franchisees around the country at about the time and in those cases I won complete settlement without any contribution towards the claimant’s costs at all. My client gave his daughter away. He kept his very comfortable house. And he treated my instructing solicitor, his wife, and me to a sumptuous banquet at The Last Drop hotel in Bolton.
What was your worst defeat?
This was a software copyright infringement case where my client had made the alleged infringing copy. I thought we had a case on title to the copyright but not on copying but my client and his customer insisted on our fighting that issue. He did not survive cross-examination. There were all sorts of objective similarities that he could not explain. He lost the judge’s ear and sympathy. I learned a lot from that case, mainly about the importance of meticulous preparation of cross-examination.
If you weren’t a barrister, what would you be doing?
I think I would be a systems designer. There is a lot of similarity between drafting a deed and programming. You have to have an eye for detail in both. I think software house’s clients are a bit more grateful than barristers’ clients and, in view of the ruinous expense of civil litigation nowadays, I can often see why.
Do you have a life outside the law?
I certainly do. I love the theatre particularly opera and ballet. I have been a Friend of Covent Garden off and on since I was a teenager.
I also love our country’s history and its countryside. That is why I belong to English Heritage, the National Trust for Scotland. I read whenever I can. My favourite author is Walter Scott. I also read a lot of French. I am very much a Francophile.
I take an interest in local, national and international politics. I am fiercely committed to fair play here, which is why I support Liberty and the American Civil Liberties Union.
Finally, the lift (elevator) question. Why should I come to you rather than anyone else?
Advising and representing small and medium enterprises effectively in intellectual property is a specialization in itself. Such clients have limited budgets so text book solutions such as Patents Court litigation and massive worldwide patent and trade mark portfolios are not usually available to them. Over the years I have learned through trial and error what works for such clients and what doesn’t. This knowledge can be acquired only through experience which I have gained through specializing in IP law in the North. Few, if any, other barristers have that experience.