Legal Lights issue 20 by Thomson Reuters

Featuring ARTICLE Opening Doors Begins with the Rule of Law P28

Bookshop All the latest and greatest new titles from our libraries across the globe P34

Author profile District Judge Robert Hill and The White Book P38

LOOKING INTO THE FUTURE P34 LEGAL LIGHTS â&#x20AC;˘ ISSUE 20

0710504A Legal Lights issue 20.indd 1

12/04/2011 14:31

EXTENSIVE EUROPEAN CONTENT Westlaw International gives you the most up-to-date information on European Law. The user-friendly search tool and seamless cross-linking between relevant documents, makes browsing our online research service easy.

A single search can select as little or as much relevant information as you need for your work. This could include: • Legislative acts and treaties of the Council of the European Union, European Parliament and the European Commission • European Union case law, current awareness materials, journals and law reviews • Relevant citations, modifications and court decisions related to a specific legislative provision Start your free trial today by sending the code 0390618 A to customer.service@westlaw.co.uk

For more information, please contact our Customer Support Team, 24-hours a day, 7 days a week at customer.service@westlaw.co.uk or visit westlawinternational.com/contact.htm for your toll-free number.

0710504A Legal Lights issue 20.indd 2

LEGAL LIGHTS • ISSUE 20

12/04/2011 14:31

FEATURES

CONTENTS

Taking Commercialisation Seriously

Author profile

Opening Doors Begins with the Rule of Law

ALSO INSIDE 4 Welcome 6 OPINION Taking Commercialisation Seriously 12 AUTHOR PROFILE Neil J. Wilkof - Trade Mark Licensing Vincent Kessler/REUTERS

Description: Flags of European Union member states fly in front of the European Parliament building in Strasbourg July 13, 2009, on the eve of the election of its new president.

16 ARTICLE Who Should Pay for a Reasoned Decision in Adjudication 22 OPINION Some Recent Developments 26 PRODUCTS From the City and Beyond 28 ARTICLE Opening Doors Begins with the Rule of Law 34 BOOKSHOP Looking into the Future 38 AUTHOR PROFILE District Judge Robert Hill and The White Book 42 Legal Break

LEGAL LIGHTS â&#x20AC;˘ ISSUE 20

0710504A Legal Lights issue 20.indd 3

12/04/2011 14:31

WELCOME

REUTERS/ Hazir Reka

Welcome to the first issue of Legal Lights for 2011

Cover image: REUTERS/ Kimimasa Mayama Commuters check stock prices on an electronic board at a Tokyo securities office, near Tokyo railway station, August 22, 2005.

As always, we bring you an action packed edition of Legal Lights with more articles than ever before. In this issue we highlight upcoming titles from our Construction, Intellectual Property and City & Financial Library and in case you missed our favourites from 2010, they’re in here too. Ted Sichelman explains what is meant by commercialisation and how to take it seriously. Cliff Wakefield tells us who should pay for a reasoned decision in adjudication. Hui Ling McCarthy brings together a selection of brief reports on decided cases and other developments and we tell you about our partnership with Books For Africa and how we are committed to expanding knowledge in Africa. We hope you enjoy it.

USEFUL INFORMATION HOW TO ORDER Either complete and return the order form enclosed or order through the following:



VISIT www.sweetandmaxwell.co.uk



CALL 0845 600 9355 (UK) or +44 (0)1264 388 560 (International)

EMAIL sweetandmaxwell.international.orders@thomson.com

0710504A Legal Lights issue 20.indd 4

Editor Robyn Clayton robyn.clayton@thomsonreuters.com WRITERS Ted Sichelman, Neil J. Wilkof, Cliff Wakefield, Hui Ling McCarthy, Robert Hill Design Kindle Design aaron@kindledesign.co.uk PHOTOGRAPHY Reuters, Corbis SALES Martin Reed martin.reed@thomsonreuters.com Dominic Smith dominicsmith@thomsonreuters.com Anita Wise anita.wise@thomsonreuters.com PRINTING Abbeystar Print Solutions www.abbeystar.co.uk DISTRIBUTION Document Despatch www.documentdespatch.com

LEGAL LIGHTS • ISSUE 20

12/04/2011 14:31

NEWS

Look out for these supplements coming soon... OUT NOW

OUT IN JUNE

Arlidge and Parry on Fraud 1st supplement to 3rd edition

OUT IN AUGUST

Jervis on Coroners 4th supplement to 13th edition

OUT IN APRIL

Lewin on Trusts 2nd supplement to 18th edition

OUT IN SEPTEMBER

Hague on Leashold Enfranchisement 1st supplement to 5th edition

OUT IN OCTOBER

Charlesworth & Percy on Negligence 1st supplement to 12th edition

Clerk & Lindsell on Torts 1st supplement to 20th edition

WHERE YOU’LL FIND US...

2- 8

31 –

-4

–I

oo rt B kfu ran –F

November

BA , 4 U Duba i IA , –G Mi ha am na i Bo ok Fa ir

air

UK L, IAL –B

1 216

an eri

Ocotober

8-1

4–

Nig

14 18

Int ern 14 ati on 18 al –I Bo NT ok A, Fa Sa ir nF ran cis co

air kF oo nB do on –L 1113

June

May

April

LEGAL LIGHTS • ISSUE 20

0710504A Legal Lights issue 20.indd 5

12/04/2011 14:31

OPINION

REUTERS/Daniel LeClair

Taking COMMERCIALISATION Seriously Ted Sichelman >>

As an initial matter, what is meant by ‘commercialisation’? Here, the term is used to refer to the transformation of an innovative or creative idea or design (be it patentable or copyrightable) into a commercially viable product or method that some end-user can actually put into practice1. For instance, Amazon. com’s infamous one-click patent—which purports to claim the process of ordering goods online with merely ‘a single action’2—is on its own a mere inventive design. Until it is built and implemented

into Amazon.com’s website, it is what we in America used to call a ‘paper patent’3. Similarly, a movie script on its own is certainly copyrightable, but it does little good to consumers—other than Hollywood executives and the most diehard movie buffs—until it is transformed into a motion picture.

See generally, Sichelman, supra note *, at 108-14; Emmett Eldred & Michael McGrath, Commercializing New Technology-I, 40 Res. Tech. Mgmt. 41 (1997); Cong. of the U.S. Office of Tech. Assessment, Innovation and Commercialisation of EmergingTechnologies (1995); Nathan Rosenberg, Perspectives on Technology 191-95 (1976); Robert G. Cooper, A Process Model for Industrial New Product Development, EM-30 IEEE Transactions on Eng’g Mgmt. (1983); Tom Kelley, The Art of Innovation (2001). Claim 6, U.S. Pat. No. 5,960,411 (filed Sept. 12, 1997); see generally Stephen Dirksen et al., Who’s Afraid of Amazon.com v. Barnesandnoble.com?, 2001 Duke L. & Tech. Rev. 3 (2001).

0710504A Legal Lights issue 20.indd 6

As William Kingston—one of the leaders of the commercialisation movement—has aptly pointed out, the earliest patent systems, such

See, e.g., John F. Duffy, The Thirteenth Annual Honorable Helen Wilson Nies Memorial Lecture in Intellectual Property Law: Innovation and Recovery, 14 Marq. Intell. Prop. L. Rev. 237, 257-59 (2010).

William Kingston, The “Thesis” Chapters, in Direct Protection of Innovation (William Kingston ed. 1987); see also William Kingston, Beyond Intellectual Property (2010). See Patents Throughout the World §§ 1:19-20 (2008).

as those in Venice and England, directly promoted commercialisation by requiring inventors to work their inventions into a commercial product or method (the so-called ‘working requirement’).4 Yet, over the centuries, most industrialized countries either jettisoned working requirements (and related requirements to submit a working model of the invention) or watered these requirements down so much as to be meaningless.5

See Henry E. Smith, Intellectual Property as Property: Delineating Entitlements in Information, 116 Yale L.J. 1742, 1761 n.56 (2007) (“If the benefits stemming from nonrivalness are assumed to dominate, then ‘full’ decentralization through the public domain . . . might well be superior [to intellectual property rights].”).

See, e.g., Steven Shavell & Tanguy van Ypersele, Rewards Versus Intellectual Property Rights, 44 J.L. & Econ. 525, 529 (2001) (assuming that the result of “research” is an “innovation,” such that if the “innovation” were made freely “available to competitors” that it would “sell at marginal cost”).

LEGAL LIGHTS • ISSUE 20

12/04/2011 14:31

OPINION

Other than a handful of scholars—such as Kingston, Michael Abramowicz, John F. Duffy, Scott Kieff, Ed Kitch, Hermann Kronz, and Henry Smith— the IP law community in the last 50 years has at worst ignored and at best wrongly dismissed concerns about commercialisation. Specifically, the ‘reward’ theory of intellectual property— and not the ‘natural rights’ sort— became dominant. Under this view, only invention and creation—in particular, the knowledge created during invention and creation—is in need of direct legal protection. In this sense, the fact that patent and copyright protection applies to the stages of the innovation and commercialisation process following invention and creation is an artifact of adopting a ‘second-best’ patent and copyright system instead of a prize system. If a prize system were costless and accurate, it would accord perfectly with the aims of the reward theory, because the information generated during invention and creation would be available to all commercializers, seeding a competitive market and eliminating deadweight losses. The ideal world for the reward theorist is one in which the knowledge of invention magically appears in the public domain.6 Once that occurs, reward theory assumes commercialisation will proceed efficiently. 7 In a well-known article, Ex Ante Versus Ex Post Justifications for Intellectual Property, Mark Lemley makes this reward-based argument explicit.8 On Lemley’s view, patent and copyright law should promote ex ante activity— namely, “the goal of intellectual property is to influence behavior that occurs before the [patent and copyright]

Mark A. Lemley, Ex Ante Versus Ex Post Justifications for Intellectual Property, 71 U. Chi. L. Rev. 129, 129-31 (2004).

comes into being.” 9 Lemley sees no need for patents and copyrights to encourage ex post activity, in particular, “further investment in the improvement, maintenance, or commercialisation of the product.” 10 According to Lemley, if commercialisation were the aim of intellectual property, rights should be made perpetual.11 But doing so, on his view, would lead to inefficient and utterly unnecessary results: It is hard to imagine senators, lobbyists, and scholars arguing with a straight face that the government should grant one company the perpetual right to control the sale of all paper clips in the country, on the theory that otherwise no one will have an incentive to make and distribute paper clips. We know from long experience that companies will make and distribute paper clips if they can sell them for more than it costs to supply them. The market for paper clips functions just fine without this type of government intervention. We can also predict with some confidence that if we did grant one company the exclusive right to make paper clips, the likely result would be an increase in the price and a decrease in the supply of paper clips. 12 Yet, Lemley’s argument depends on several critical assumptions that are not fully borne out in commercial reality. First, for rights to inhere, patent law only requires conception of inventive designs—and copyright, a work inscribed in a tangible medium—neither of which is necessarily a commercial viable product. Thus, Lemley’s characterization of “ex post” activity as “further investment in . . . the product” unfairly splits the ex ante/ex post dividing line

Id. at 130.

Id.

Id. at 131. Id. at 135-36.

See David J. Teece, Competition, Cooperation, and Innovation: Organizational Arrangements for Regimes of Rapid Technological Progress, in Essays in Technology Management and Policy 447, 461 (2003) (“Because of fundamental weaknesses in the system of intellectual property law, leakage and free riding are commonplace.”).

LEGAL LIGHTS • ISSUE 20

0710504A Legal Lights issue 20.indd 7

See, e.g., Alexander Elder, Come Into My Trading Room 59 (2002) (“Imagine you’re . . . running a fruit and vegetable stand. You take a risk each time you buy a crate of tomatoes. If your customers do not buy them, that crate will rot on you. That’s a normal business risk . . . .”). See generally John Craven, Introduction to Economics: An Integrated Approach to Fundamental Principles 248 (1984) (stating that rewards must be commensurate with risks to induce firms to act). See, e.g., Thomas M. Jorde & David J. Teece, Rule of Reason Analysis of Horizontal Arrangements: Agreements Designed to Advance Innovation and Commercialize Technology, 61 Antitrust L.J. 579, 583 (1993) (“[C]ommercialization is both costly and risky, perhaps even more so than R&D activity.”).

at the “product” phase of the innovation process, because there may not yet even be a product at the time the IP right comes into being. Second, even if patent law required a product, the first product embodying an invention or creative work—effectively, a prototype or draft—is usually not the most commercially viable embodiment. Rather, a commercializer will often need to undertake costly and risky scientific testing, market testing, market research, and marketing to determine how to commercialize an invention in the most profitable manner, generating information that—in the absence of robust patent and copyright protection— would typically be subject to free riding by others. 13 Lemley’s paper clip example obscures this aspect of the innovation process, because he implicitly assumes that ex post activity operates on a finished, commercially viable product. Third, although the manufacture and sale of non-innovative, ordinary commercial products, such as paper clips, will involve risks—generally, only ordinary returns are needed to induce a commercializer to take those risks.14 For untested innovative and creative products, however, these risks will tend to be supernormal.15 As Richard Cooper and Elko Kleinschmidt—luminaries in the field of product development and commercialisation—have aptly remarked, “product innovation is plagued by high risks: both the large amounts at stake and the high probability of failure.”16 Rational market actors will only absorb extraordinary risk in commercializing innovative products if they can achieve extraordinary returns. Thus, while “[t]he market for paper >>

R.G. Cooper & E.J. Kleinschmidt, An Investigation into the New Product Process: Steps, Deficiencies, and Impact, 3 J. Prod. Innovation Mgmt. 71, 71 (1986).

See Emmanuel Dechenaux, et al., Appropriability and the Timing of Innovation: Evidence from MIT Inventions 24 (2003), available at http://papers.ssrn.com/sol3/papers.cfm?abstract_ id=404820 (“Our empirical results provide strong support for the view that the ability to appropriate returns [from postinvention patent protection] is important for inventions whose success is highly uncertain.”).

12/04/2011 14:31

OPINION

clips” may “function[] just fine without . . . government intervention,” the market for innovations and creative works often will not.17

that these goods are too frequently “enclosed” by IP rights, and instead should be placed into the public domain and ideally made available for “free.”

A related field of scholarly endeavor rife with unrealistic assumptions about how innovation and the creative process proceed is the ‘information wants to be free’ line of scholarship. These scholars tend to mistakenly assume that the information itself generated in the inventive and creative process is the end-product that is the locus of IP law, which leads to skewed analyses of the IP system. For instance, in the widely cited article, The Second Enclosure Movement and the Construction of the Public Domain, James Boyle contends that it is “informational goods” that are the subject of IP protection. Boyle argues

In order to reach his conclusion, Boyle—like Lemley—assumes that the informational good necessary for IP rights to inhere is essentially the same good as that sold commercially. As such, Boyle implicitly dismisses commercialisation concerns, instead contending that “[t]he concerns in the informational commons have to do with a different kind of collective action problem: the problem of incentives to create the resource in the first place.”

See, e.g., Lawrence Lessig, The Future of Ideas: The Fate of the Commons in a Connected World (2001); Yochai Benkler, An Unhurried View of Private Ordering in Information Transactions, 53 Vand. L. Rev. 2063 (2000).

66 L. & Contemp. Probs. 33 (2003). According to Google Scholar, this article has received 598 citations as of January 15, 2011.

Id. at 41-42.

See id. at 48, 67.

0710504A Legal Lights issue 20.indd 8

Yet, as Ed Kitch recognized in the late 1970s, the creation of the informational resource leads to further, and arguably more intractable, incentive problems—

namely, those of using the resource to create a commercially viable product— which Boyle overlooks. And, in this regard, although the informational resource is—as Boyle discusses at length—non-rival, as Henry Smith has aptly remarked, “the resources used to develop and commercialize . . . information are rival. They cannot be used by more than one person and are often nonrenewable.” Like many others in the ‘information wants to be free’ movement, by focusing on the informational good—and the incentives surrounding the creation of the good— Boyle fails to account for the significant impediments to commercialisation that may result when this information is lodged in the public domain instead of protected by IP rights.

See id. at 41-42.

Smith, supra, at 1747-58.

Id. (emphasis added).

90 Colum. L. Rev. 839 (1990).

See Edmund W. Kitch, The Nature and Function of the Patent System, 20 J.L. & Econ. 265 (1977); see also F. Scott Kieff, Property Rights and Property Rules for Commercializing Inventions, 85 Minn. L. Rev. 697, 707-08 (2001); Michael Abramowicz, The Danger of Underdeveloped Patent Prospects, 92 Cornell L. Rev. 1065, 1066 (2007); Michael Abramowicz & John Duffy, Intellectual Property for Market Experimentation, 83 N.Y.U. L. Rev. 337 (2008); Kingston, supra note Error! Bookmark not defined.; Sichelman, supra note *.

See Patent Scope Revisited: Merges & Nelson’s “On the Complex Economics of Patent Scope,” 20 Years After, http://www. law.indiana.edu/front/special/2010_patent/index.shtml; see also Ted Sichelman, Markets for Patent Scope (forthcoming, IP Theory (2011)), available at http://ssrn.com/abstract=1742454.

LEGAL LIGHTS • ISSUE 20

12/04/2011 14:31

OPINION

“Even economists make grave errors in attempting to refute the commercialisation prong of Kitch’s prospect theory” While Boyle essentially ignores commercialisation concerns, other scholars tend to mischaracterize commercialisation theories. For example, Robert Merges and Richard Nelson, in their well-known article, On the Complex Economics of Patent Scope, purport to refute Kitch’s prospect theory. Yet, in so doing, Merges and Nelson do not even address commercialisation. Rather, as I recently explained at a 20-year anniversary conference on Merges and Nelson’s paper—they inappropriately refashion Kitch’s theory as one of the improvement of existing products and inventions, rather than commercialisation of invention. Indeed, in his closing remarks at the conference, Merges admitted as much. Even economists make grave errors in attempting to refute the commercialisation prong of Kitch’s prospect theory. For instance, in a highly cited response to Kitch’s early work, Donald G. McFetridge & Douglas A. Smith assume (in the key part of their analysis) that the market for R & D that leads to a patent is one of entirely open entry, such that all the potential rents provided by the patent would be dissipated ex ante in a model such a Kitch’s. Contrary to their assertion, the ‘right to invent’ is not a ‘common property right’, because invention often (1) is limited to a small number of actors who have acquired the knowledge or resources necessary to achieve inventive

Patents, Prospects, and Economic Surplus: A Comment, 23 J.L. & Econ. 197, 202–203 (1980).

results in a particular technological field; or (2) is simply serendipitous. In these typical situations, ex ante rivalry will not dissipate all of the gains from a prospect-style patent right that encourages commercialisation.

‘elevator music’, which can generate large license fees. These are hardly the sorts of songs most of us would want to hear. Because these scholars fail to consider these important issues, this lacuna casts serious doubt on their proposals.

Relegation of Kitch’s and similar commercialisation theories to the dust bin by those in the ‘information wants to be free’ movement is extremely problematic given their thesis that the current swath of IP rights should be restricted on efficiency grounds. As a general matter, they typically underestimate or ignore the sizable costs and risks in transforming a creative work or inventive idea into a commercially viable product. For instance, in the poster-child arena of “free music,” these scholars tend to overlook the costs of making multiple recordings of a song, editing the final track, marketing it, managing the band members, and so forth. Without effective copyright protection or anti-copying measures, musicians are more likely to record songs on their laptops, forgo professional production, and engage in unsophisticated marketing of their work. This sort of process will lead to music of inferior quality. Indeed, based on some informal conversations I’ve had of late with professional musicians—other than the small number of new acts that can earn a living through live shows—the current trend is recording songs that are fit for commercials, movies, or so-called

Importantly, academics like Lemley and Boyle are quite indicative of dominant trends in the IP literature. Hopefully this article will have somewhat convinced the reader—to redouble the clichés— that it’s high time IP scholars take commercialisation seriously.

0710504A Legal Lights issue 20.indd 9

See Edmund W. Kitch, Patents, Prospects and Economic Surplus: A Reply, 23 J.L. & Econ 205 (1980). In this regard, acts that gained prominence when copyright protection was effective or through live television (e.g., American Idol) should not be taken into account in the equation. My sense is that many of today’s popular acts fall into one of these categories. On the other hand, I’m strongly in favor of limiting copyright protection on distributive justice grounds, but such arguments are of course of an entirely different flavor. See, e.g., Molly Shaffer Van Houweling, Distributive Values in Copyright, 83 Tex. L. Rev. 1535, 1552-53 (2005).

In this regard, acts that gained prominence when copyright protection was effective or through live television (e.g., American Idol) should not be taken into account in the equation. My sense is that many of today’s popular acts fall into one of these categories.

See id. at 202.

LEGAL LIGHTS • ISSUE 20

See id. at 202.

See Edmund W. Kitch, Patents, Prospects and Economic Surplus: A Reply, 23 J.L. & Econ 205 (1980).

Patents, Prospects, and Economic Surplus: A Comment, 23 J.L. & Econ. 197, 202–203 (1980).

On the other hand, I’m strongly in favor of limiting copyright protection on distributive justice grounds, but such arguments are of course of an entirely different flavor. See, e.g., Molly Shaffer Van Houweling, Distributive Values in Copyright, 83 Tex. L. Rev. 1535, 1552-53 (2005).

12/04/2011 14:31

LOOK OUT FOR

OUR titles covering patents, trade marks and copyright

0710504A Legal Lights issue 20.indd 10

LEGAL LIGHTS â&#x20AC;˘ ISSUE 20

12/04/2011 14:31

PRODUCT 4th EDITION

THE LAW OF PASSING OFF: Unfair Competition by Misrepresentation Professor Christopher Wadlow

15TH EDITION

OUT

THIS MAY 2011

The Law of Passing Off is the only specialist practitioner’s reference work dealing with the common law torts of unfair competition by misrepresentation, namely passing-off and injurious falsehood. Make sense of the law • Clear and logical structure which follows the “Classical Trinity” of goodwill, damage and misrepresentation • Includes treatment of misrepresentation in three separate chapters covering general principles, actionable misrepresentations, and misrepresentations conveyed by distinctive signs • Integrated treatment of the law of malicious falsehood in a competitive context • Chapters on defences under European and national law, including the European Convention on Human Rights, and on remedies and enforcement See how the law has developed • Guides you through the past, present and future of passing off, including discussion of case law from the UK • An account of the place of passing off in European Union and International law 9780414042322, £285/ €414

KERLY’S LAW OF TRADE MARKS AND TRADE NAMES David Llewelyn, James Mellor, Richard Meade, Thomas Moody-Stuart, David Keeling

OUT THIS

SEPTEMBER

Consulting Editor: The Rt. Hon. Sir Robin Jacob Now in it’s 15th edition, Kerly is the same authoritative work that you’ve come to expect, but with the all latest cases, legislation, commentary and analysis you need to keep up to date with today’s trade mark practice and procedure. All the knowledge you need to ensure your client’s rights are protected • Provides clear explanations, detailed commentary and authoritative guidance on all areas of trade mark law • Covers classification, registration, different types of marks, enforcement, infringement and litigation A truly European perspective • Not only deals with UK Trade Mark law, but also puts the English law into its European context, discussing relevant European case law and legislation • Incorporates legislative changes such as the Trade Marks Regulations 2008, the Trade Marks (Earlier Trade Marks) Regulations 2008 and the Community Trade Mark (Amendment) Regulations 2008 New to this edition • Now with an additional chapter on the Olympics 9781847037701, £295/ €428

For more information visit sweetandmaxwell.co.uk

LEGAL LIGHTS • ISSUE 20

0710504A Legal Lights issue 20.indd 11

12/04/2011 14:31

AUTHOR profile

Trade Mark Licensing 2Nd Edition Neil J. Wilkof

Trade Mark Licensing, 2nd edition comes by its international flavour naturally. Its founding author, Neil J. Wilkof, was born and educated in the United States and resides and practices law in Tel Aviv. His co-author for the second edition, Daniel Burkitt, is a barrister practicing intellectual property law in London. What prompted you to write this book? I became fascinated with the notion that the source theory of trademarks could be maintained via quality control in order to provide legal justification for trademark licensing. At first blush, one would have thought that a valid trademark (like a valid patent or copyright) is all that is required. Why the difference in the treatment of trademark licensing over the actions of a license? Also, I became interested in the various statutory requirements then in effect in many common law countries in the late 1980s regarding the registration of trademark licenses. I came to realise that trademark licensing, especially in the common-law tradition, was among the most challenging aspects of both trademark theory and practice. Just by way of legal background, originally the source theory of trademarks had held that there

could be no licensing of trademarks at all. This led to an odd result: You could license a patent or a copyright, but you could not lawfully license a trademark. On the other hand, trademark licensing certainly was taking place as a commercial matter all the time. I began to research the topic further. It became clear to me that there was no text that had ever attempted to consider trademark licensing as a separate topic, looking at it from both the conceptual-theoretical point of view and the practice point of view. It seemed to me that a book that focused on the contrast and comparison of the two strands of the commonlaw system with respect to trademark licensing, from both the IP and commercial points of view, was the best way to proceed, both at the theoretical and practical levels. What was involved in writing the first edition? The first thing I had to do was convince Sweet & Maxwell, a London-based publisher, that someone living in Tel Aviv could write knowledgeably about UK and US law. Israel’s law is based on the UK’s, so I had familiarity of English law through practicing here, and I had done all my legal studies in the US.

About the Author Neil J. Wilkof is a member of Herzog, Fox & Neeman, Tel Aviv, whose founders include Chaim Herzog, Israel’s former president and ambassador to the United Nations. Mr. Wilkof heads the firm’s intellectual property and information technology team and also handles technology transfer, computer, and Internet law issues. He has lectured and taught at universities in Israel, Europe, and the US; was special counsel to Israel’s delegation to the WIPO Diplomatic Conference on copyright law; serves as a WIPO arbitrator for Internet domain name disputes; and has chaired a subcommittee of the International Trademark Association’s Parallel Imports Committee. He holds a B.A. from Yale University, an M.A. and J.D. from the University of Chicago, and a Ph.D. from the University of Illinois at Urbana-Champaign.

0710504A Legal Lights issue 20.indd 12

LEGAL LIGHTS • ISSUE 20

12/04/2011 14:31

author profile

I started the project in 1989 and was largely self-taught, since there really were no books or comprehensive articles on the subject. The first edition took five years to research and write. I read over 2,000 cases, principally US decisions, as well as the relevant English judgments, and hundreds of articles. The case citations go back to the 1830s. I had no model for the book’s structure, so I played with that over time. The primary foci were trademark law/IP, contract law, and competition law, with discussions of products liability, tax, and bankruptcy law. Later on I added European Union materials, because England was part of the EU, and it provided yet another layer of comparison and contrast.

registration of trademark licensing has changed in the UK, and the trend, especially since the decision in the Scandecor case, which reached the House of Lords, is to de-emphasize classic quality control considerations as a legal matter. That said, I should add that, even where the qualitycontrol requirement has been deemphasized, it is still perceived in most instances as a good business practice. Other developments we cover in this edition are the increasing challenge of sublicensing; dilution of well-known trademarks; the Internet and licensing issues in domain name disputes; and merchandising and secondary source theory, as well as the issue of the status of licensing of unregistered marks.

The reviews of the book were excellent, right? It was well reviewed. One reviewer in EIPR called it “iconic.” The book is always praised for its ease of style, a reviewer writing that one could read it from cover to cover (even though it spans over 400 pages). One well-known UK licensing and franchising lawyer told me once that he had contemplated writing a book on this topic, but he decided not to do so after my book was published. Anecdotally, last summer when I was giving a lecture on trademark law in India, several people came up to me afterwards and asked me to autograph their copies of the book. I was delighted when one noted person there, trained in England, called it among the best books on trademark ever written. It’s been sold worldwide, and it has been cited by courts in various countries. I think it’s fair to say that this book really created trademark licensing as a subject for both academic and practical analysis. No one had done this before.

Who finds Trade Mark Licensing most useful? The main audience is IP lawyers and commercial lawyers engaged in IP issues, either in private practice or working with a corporate environment. There are a number of chapters that address the commercial law aspects of the topic, including an entire chapter on terminations. You don’t really need to be an IP specialist, though, to reap benefit from the book. It gets a lot of readership in law libraries and by law students, and I remember one student from the main national law college in India (in Bangalore) telling me that the book had “saved” him. Chapter 2 is particularly good for a general understanding of trademark law from the licensing perspective, and it is sometimes cited for this purpose. The chapter also looks at trademark licensing in light of the changing notions of what is the function of a trademark. One of the questions that comes up fairly often in practice is the difference between trademark licensees and distributors, so we devote a chapter to that. We also cover collateral aspects of licensing. Crucially, we provide a sample licensing agreement with extensive annotations, which I am told is widely used.

What changes did you make with the current edition? The second edition, which we began in early 2000, took four years to complete. I took a coauthor, who had just begun a Ph.D. at Oxford on a topic related to licensing. We expanded the book to include treatment of the topic in both France and Germany, each in a lengthy separate chapter. Also, there is a survey of the recordal requirements (“registered users” in commonlaw parlance) in nearly 20 countries. The second edition took a close look at major recent developments in the field. One of these is the decline of the quality-control recordal regime in certain common-law countries. The purpose of

LEGAL LIGHTS • ISSUE 20

0710504A Legal Lights issue 20.indd 13

Trade Mark Licensing is unique, I believe, in the way that it considers both the conceptual and practical, and the way that it focuses on both US law and UK-influenced legal systems. Even if a US practitioner has little interest in the non-US aspects, the treatment of the subject from the US law point of view means that it provides a unique source for the treatment of the topic from all the relevant commercial and IP aspects under US law and practice. The World Intellectual Property Organization (WIPO) lists the book as a basic source for WIPO Worldwide Academy.

12/04/2011 14:31

PRODUCT

BEST OF 2010

In case you missed out on some key titles FROM 2010, here are some of our favourites

Handbook of UNCITRAL Arbitration

TERRELL ON THE LAW OF PATENTS

COPINGER & SKONE JAMES ON COPYRIGHT

Tom Weber • Explains the core principles behind the UNCITRAL Rules • Reviews the UNCITRAL arbitration process from start to finish • Gives you the resources to handle any UNCITRAL arbitration in Model law countries • Includes the French Arbitration Law 2010

Richard Miller QC, Guy Burkill Qc, His Honour Judge Birss QC and Douglas Campbell

Kevin Garnett QC, Gillian Davies and Gwllym Harbottle

November 2010, 9781847038982

0710504A Legal Lights issue 20.indd 14

£195 / €283

Terrell on the Law of Patents is the practitioners’ guide to the law of patents and patent practice in the United Kingdom • Provides detailed commentary and comprehensive guidance on all aspects of UK patent law and litigation practice • Incorporates important case law from the UK Courts at all levels, the UK and European Patent Offices, and the Appeal Boards • New chapters dedicated to Entitlement, to Supplementary Protection Certificates, and to the “Person Skilled in the Art”

Spread over two volumes, Copinger & Skone James on Copyright is the major practitioner text on copyright and other related rights in this area • Contains comprehensive commentary and analysis on relevant UK legislation, EU laws and International Treaties • Structured around four fundamental rights: copyright, moral rights, rights in performances and design rights • Additional chapters cover other related rights such as publication right, database right and public lending right

9781847039033

9780414043312

£325/€472

£415/€602

LEGAL LIGHTS • ISSUE 20

12/04/2011 14:31

PRODUCT

World’s Leading Financial and Trust Centres Dr Angelo Venardos First of its kind in the world, the book provides an indispensible guide on 46 most popular offshore investment jurisdictions globally in a practical and insightful manner. The offshore and trust centers featured include: Anguilla; Antigua and Barbuda, Bahamas, Bermuda, Cook Islands, Delaware, Gibraltar, Isle of Man, Hong Kong, Labuan, Mauritius, Singapore, Switzerland, and many more. Along with a comprehensive index, standard chapter headings and a summary fact sheet at the end of each chapter, searching and comparing across jurisdictions have never been made easier.

Flemings the Law of Tort Carolyn Sappiddeen and Prue Vines The Law of Torts by Professor John Fleming is distinguished throughout the world of tort scholarship as a work of enormous significance. This text is known for its distillation of the essence of tort legal principles and its critical evaluation of them. Major new developments include the impact of tort reform processes; the impact of human rights instruments on tort law; the contraction of liability, with the impact of civil liability legislation with its emphasis on personal autonomy; the new consumer law legislation; and the new uniform defamation code. December 2010 9780455217987 £79 / €110

December 2010 9789810860455 £186 / €270

Clerk & Lindsell on Torts General Editor: Professor Michael A Jones Consultant Editor: Professor Anthony M Dugdale Associate Editor: Mark Simpson QC YOUR REMEDY FOR CIVIL WRONGS • Major revision on the chapter on Economic Torts to take account of two House of Lords’ decisions in OBG Ltd v Allan and Revenue & Customs Commissioners v Total Network SL • The chapter on Breach of Confidence has been restructured to give greater prominence to the developing law of Privacy • There have been a number of highprofile privacy cases since the last edition, and the litigation in Douglas v Hello! reveals the extent to which privacy concerns and commercial confidences are now protected. October 2010 9781847037961

LEGAL LIGHTS • ISSUE 20

0710504A Legal Lights issue 20.indd 15

Competition Cases from the European Union

EU Competition Law Handbook 2011

Joannis Kokkoris

• Provides detailed summaries of the most important competition case law and legislation for the all the EU Member States, all in one book • Lays out cases and legislation by country, making comparisons easy • Clarifies how competition law has been applied by the authorities and courts in each of the 27 EU member states and European Commission, EFTA Secretariat, General Court, Court of Justice

Professor Marc van der Woude; Christopher Jones • Provides a complete digest to every published EU competition law case, regulation, notice, judgment and decision • Updated to include all EU competition law developments since the last edition, as well as a selection of more than 500 leading national cases • Highly regarded among competition lawyers as a research tool for the identification of the key competition cases and legislation, and the location of decisions, commentaries and documentation

November 2010, 9780414043305

November 2010, 9780414045101

THE ONLY GUIDE YOU NEED TO AGENCY LAW The 19th Edition includes:

£245 / €356

£190 / €276

£335 / €469

12/04/2011 14:31

ARTICLE

Who Should Pay For A Reasoned Decision In Adjudication? By Cliff Wakefield*

Without exception every Referral in Adjudication, which drops on to one’s desk invariably comes with a request for a Reasoned Decision. Whether or not the Adjudicator has an obligation to provide reasons for his Decision is determined either by the Adjudication provisions of the Contract between the Parties and/or the Adjudication Rules contained therein and/or the Scheme.

Reasons The purpose of reasons in an Adjudicator’s Decision has been explained in the following judgments: In the case of Joinery Plus Limited (In Liquidation) – v – Laing Limited 1 by His Honour Judge Thornton QC stated:

0710504A Legal Lights issue 20.indd 16

“40. Indeed, although adjudicators are, under some adjudication rules, permitted to issue a decision without reasons, it is usually preferable for the parties for reasons to be given so that they can understand what has been decided and why the decision has been taken and so as to assist in any judicial enforcement of the decision. Moreover, judicial enforcement, being a mandatory and compulsory exercise imposed by the state, should only be ordered by a court once it has been satisfied that the underlying adjudication decision is valid, is in accordance with law and complies with all applicable contractual and statutory procedures. For that purpose, a court will always be greatly assisted by cogent, albeit succinct, reasons.”

LEGAL LIGHTS • ISSUE 20

12/04/2011 14:31

ARTICLE His Honour Judge Davies in his judgement in the case of Thermal Energy Construction Limited – v- AE & E Lentjes UK Limited 2 stated: “First of all, as I have said it is common ground between the parties that the Adjudicator was obliged to give reasons. However, nonetheless it seems to me the fact remains that an Adjudicator is obliged to give reasons so as to make it clear that he has decided all of the essential issues which he must decide as being issues properly put before him by the parties, and so that the parties can understand, in the context of the adjudication procedure, what it is that the Adjudicator has decided and why.” It is generally accepted in the industry that the main purpose of reasons is for the parties and, in particular, the losing party to understand the Adjudicator’s Decision. The judge’s point in the Joinery Plus case on enforcement is, in the main, no longer relevant given the judgments of the courts, over the last 7 years since this case. This is because the chances of a successful defence to enforcement are limited to only the rarest of circumstances. Of course, matters may develop during the Adjudication proceedings, which may result in one of the parties requesting reasons because it feels it has been unfairly treated, that is, there has been bias or there has been a material breach of the rules of natural justice.

Sufficient Reasons There have been several cases in the courts regarding what is required of Adjudicators when they are obliged to give reasons, for example, in the case of Carillion Construction Limited – v – Royal Devonport Dockyard 3 Jackson J stated: “.5 If an Adjudicator is requested to give reasons pursuant to paragraph 22 of this Scheme, in my view a brief statement of those reasons will suffice. The reasons should be sufficient to show that the adjudicator has dealt with the issues remitted to him and what his conclusions are on those issues.”

* Cliff Wakefield LLB(Hons) FRICS FCIArb is a sole practitioner, Chartered Quantity Surveyor, Chartered Arbitrator and Adjudicator.

Payment For Reasons What is not so easily answered is who should pay for the cost of the Adjudicator’s additional time in providing a Reasoned Decision, because there is an additional cost? In the context of payment the author has set out below examples of the adjudication provisions in various contracts in respect of the different requirements on providing reasons in Adjudicators’ Decisions.

[2003] HT-02-323 (TCC)

[2009] EWHC 408 (TCC) at 21

[2005] EWHC 778 (TCC) at 81

>> LEGAL LIGHTS • ISSUE 20

0710504A Legal Lights issue 20.indd 17

12/04/2011 14:31

ARTICLE

Paragraph 28 of the TeCSA Adjudication Rules 2010 Version 3.0 provides: “...The Adjudicator shall provide written reasons for his decision.” Given the agreement of the parties to use these rules it is clear that the additional cost of the Adjudicator providing a Reasoned Decision must be part of his fees for conducting the proceedings, which are to be allocated by the Adjudicator between the parties. At the other end of the spectrum, clause 41A.5.4 of the JCT Standard Forms of Building Contracts 1998 Edition provides: “The Adjudicator shall not be obliged to give reasons for his decision.” If no party requests reasons then it is clear that the Adjudicator should not provide reasons, notes or any other outlines. To do otherwise, the author contends would result in the Adjudicator not being entitled to payment of all of his fees because he has gone further than he is obliged to do and neither party has asked him to provide such services. Furthermore, if both parties agree that neither requires reasons for the Decision then the Adjudicator should respect their wishes. However, pursuant to such a provision above the question, which often arises, is what if one of the parties requests the Adjudicator to provide reasons in his Decision. The general consensus is that in such circumstances the Adjudicator should provide a Reasoned Decision, except in very exceptional circumstances. For example, if the request for reasons is made too late and there is insufficient time for the Adjudicator to comply with such a request. If the other party raises no objection then the author sees no reason why such additional costs for providing a Reasoned Decision should not be part of the Adjudicator’s fees for conducting the proceedings and should be left to the Adjudicator’s discretion in the allocation of his fees. However, what if

0710504A Legal Lights issue 20.indd 18

the other party requests the Adjudicator not to give reasons and expressly states that it will not pay for the additional cost of the Adjudicator’s fees for producing a Reasoned Decision. In such circumstances, the author considers that the requesting party should be liable for the cost of this additional work it has requested the Adjudicator to carry out, irrespective of the outcome of the adjudication. Pursuant to this contract the author is not aware of any Adjudicator immediately responding to a party’s request for a Reasoned Decision by stating that he would provide a Reasoned Decision, as requested, but the additional cost would be to the requesting party’s account, irrespective of the outcome of the adjudication. One wonders why not?

The default provision in the JCT Standard Forms of Building Contracts 2005 Edition in respect of Adjudication is that the Adjudication provisions of the Scheme for Construction Contracts (England & Wales) Regulations 1998 (hereinafter referred to as “the Scheme”) apply. Paragraph 22 of Part I of the Scheme provides: “If requested by one of the parties to the dispute, the adjudicator shall provide reasons for his decision.” The Scheme expressly provides that once a party requests the Adjudicator to provide reasons for his Decision the Adjudicator is obliged to do so. What this provision does not address is who is liable for the cost of the additional Adjudicator’s fees for the extra work involved in producing the Reasoned

LEGAL LIGHTS • ISSUE 20

12/04/2011 14:31

ARTICLE

“ If no party requests reasons then it is clear that the Adjudicator should not provide reasons, notes or any other outlines.”

Decision. Unless the parties are agreed on this issue through their written submissions, the author sees no reason why the requesting party should not pay for the additional work it has requested the Adjudicator to carry out, irrespective of the outcome of the adjudication. Such an allocation could readily be made by the Adjudicator as part of his discretion under Paragraph 25 of Part I of the Scheme. Paragraph 24 of the CIC Adjudication Rules Fourth Edition provides: “He shall be required to give reasons unless both Parties agree at any time that he shall not be required to give reasons.” The Adjudicator is under a clear obligation to provide reasons in his Decision unless notified otherwise in an agreement of the parties not to do so. In these circumstances the author

LEGAL LIGHTS • ISSUE 20

0710504A Legal Lights issue 20.indd 19

believes that this additional cost should form part of the costs of the Adjudicator conducting the proceedings to be allocated by him between the parties. Whilst to date there have been cases concerned with whether or not the Adjudicator has given sufficient reasons for his Decision, to date there has been no case in which a party has alleged the Adjudicator gave far too many reasons and, as a consequence, the parties were charged too much by the Adjudicator in respect of his fees for providing a `long-winded’ Reasoned Decision, for example, some decisions have been over 200 pages long. The author has little doubt that in respect of this matter there will and have been complaints by the parties who whilst wishing to have reasons then do not want to pay the costs thereof because they consider the cost is disproportionate to the amount in dispute.

The author has yet to receive from any party a request for a Reasoned Decision, which qualifies its request by stating that the Adjudicator is to limit the numbers of pages of his Decision to a definite number, e.g. 20 or 30 pages etc. In light of the high fees charged by Adjudicators perhaps the parties should now consider such an option. Unfortunately, the reality is that the representatives of the parties will continue to ask the Adjudicator for reasons, without any qualification, and the parties themselves, at the end, will not wish to pay for the additional work the Adjudicator has been involved in producing the Reasoned Decision. May be there is now a case that such requests for a Reasoned Decision should come with a financial health warning to both the Adjudicator and the parties!

12/04/2011 14:31

PRODUCT

OUR

CONSTRUCTION SUITE FOR 2011 KEATING ON NEC3

OUT IN

Author: David Thomas QC assisted by a team from Keating Chambers

OCTOBER

New Engineering Contracts 3 (NEC3) is a suite of standard contracts used by the construction and engineering industry. The NEC3 suite includes: • the Engineering and Construction Contract (ECC) (the main contract) • the Engineering and Construction Subcontract (ECS) • the Professional Services Contract (PSC) NEC3 is used across the construction sector in building, civil engineering, utilities and power. Major projects on which NEC has been used include BAA’s Terminal 5, Channel Tunnel Rail Link and the Eden Project. The Olympic Committee has also expressed the view that it will be interventionist in getting their main contractors to use the NEC Sub-Contract and PSC. This title is written by leading barristers from Keating Chambers who are experienced in advising on NEC3 contracts October 2011 9781847033314

£179 / €260

A Contractual Guide to Major Construction Projects John Scriven; Nigel Pritchard; Dan Cocker

Intended as a general guide to the components of construction contracts, this book adopts a chronological step-by-step approach from the conceptual idea, the choice of a contractor and form of contract, to the preparation of the contract. With an emphasis on practical guidance for industry professionals, each chapter contains a general introductory guide to the components of major infrastructure projects and includes references to market practice and particular industry sectors where relevant. Its comprehensive coverage includes: • Construction financing, procurement and competitive bidding • Letter of intent, international construction contracts and design risk allocation • Environmental matters, insurance, insolvency and shareholder issues • EPC contracts and the construction aspects of PFI projects July 2011 9780414045187

0710504A Legal Lights issue 20.indd 20

OUT IN JULY

£215 / €312

LEGAL LIGHTS • ISSUE 20

12/04/2011 14:31

PRODUCT

UNDERSTANDING THE FIDIC RED BOOK Author: Jeremy Glover and Simon Hughes QC

OUT IN

OCTOBER

The book is a clause-by-clause commentary book covering the new FIDIC “Red Book”. • Examines the effect and operation of each contract clause through clauseby-clause commentary • Helps you to interpret contract clauses correctly and decide whether amendments need to be made to suit your situation • Reproduces each clause followed by bullet points of key features plus additional commentary on the clause’s operation, points of interest and relevant cases • Compares the new contract with previous versions of the FIDIC Red Book and other widely used standard contracts, such as the ICE forms • Features an overview chapter dealing with thematic issues such as the contract’s history and purpose, the concept of the engineer, time and money, dispute resolution, and enforcement of arbitral awards • Discusses problems frequently encountered in practice in relation to clauses • Discusses the MDB version and how this differs from the standard Red Book contract • Features new sections on Claims, Disputes and Arbitration October 2011 9780414044609

LEGAL LIGHTS • ISSUE 20

0710504A Legal Lights issue 20.indd 21

£250 / €363

12/04/2011 14:31

OPINION

Some Recent Developments Hui Ling McCarthy This article brings together a selection of brief reports on decided cases and on other developments.1

Foreign Affairs Private international law position following Radmacher v Granatino2 The Supreme Court’s judgment in the case of Radmacher v Granatino (handed down on October 20, 2010) has added some clarity to the private international law (PIL) position of England & Wales and the confusions between nuptial agreements and choices of matrimonial property regimes. However, some areas of uncertainty still remain. Paragraph 107 of the judgment makes it clear that the exercise of the court’s powers under the Matrimonial Causes Act 1973 does not relate to a matrimonial property regime. Notwithstanding that Katrin Radmacher was domiciled in, and a national of, Germany and Nicolas Granatino was domiciled in, and a national of, France, the issues in the

I record my appreciation for contributions under Foreign Affairs to Richard Frimston, under Succession to Lesley King and under Residue (Pensions reform 2011/12) to Matthew Hutton.

0710504A Legal Lights issue 20.indd 22

case were governed solely by AngloWelsh law. The relevance of German law and the German choice of law clause in their notarial agreement was that they clearly demonstrated the intention of the parties that the agreement should if possible be binding on them. The agreement recited that the parties intended to establish their first matrimonial residence in London and that the law of England and Wales might come to apply to their legal relationships. In her dissenting judgment, Lady Hale points out3 that the particular agreement in this case did more than provide for what was to happen should the couple separate or divorce. Each party waived the right to a compulsory portion of the estate of the first to die. We private client practitioners are therefore still left with uncertainties as to the PIL of England & Wales: • Is the law applicable to the effects of marriage on property rights governed by the law of the domicile of the parties?

• If the parties have different domiciles, is the law applicable that of the jurisdiction with which the marriage is most closely connected? • Is immovable property governed by the same rules or by the law of the place of the immovable property? Will we have to wait for another 100 years before the Supreme Court rules on these matters? A case note on the Court of Appeal’s judgment in Radmacher by C. Jenkins will be published in P.C.B. Issue 1 of 2011.

Succession Will writing — future regulation? On September 22, 2010, the Legal Services Consumer Panel called for opinions and evidence from members of the public, lawyers and interested organisations on the Will writing industry, with a view to considering possible future regulation. Will writing is not currently a reserved legal activity under the Legal Services Act 2007 (although probate activities

Radmacher v Granatino [2010] UKSC 42.

LEGAL LIGHTS • ISSUE 20

12/04/2011 14:31

OPINION

are) and so the writing of Wills is not restricted to regulated lawyers such as solicitors and barristers, who are independently regulated. Scotland is introducing new legislation to make Will writing a regulated activity there, and this move, coupled with concerns recently expressed by a number of professional and trade bodies (for example, a recent Panorama programme highlighting various problems), has prompted the investigation. However, it is by no means certain that regulation will arrive in England and Wales. Dr. Dianne Hayter, Chair of the Legal Services Consumer Panel, said: “The case for regulating Will writers may rest on whether there are abuses across the industry or just a few rogues who can be dealt with under existing laws. Finding evidence of badly written Wills and underhand sales practices will be crucial to establishing this. Regulation could result in less choice and higher prices for consumers, so the Panel will only recommend this step if there is

Radmacher v Granatino at para.184. Harris v HMRC [2010] UKFTT 385 (TC).

LEGAL LIGHTS • ISSUE 20

0710504A Legal Lights issue 20.indd 23

convincing evidence that Will writing businesses are failing consumers.”

by guarantee, operating as a “social enterprise” selling donated furniture, furnishing and electrical items, but not exclusively to persons in need. Whilst the taxpayer company provided low cost furniture and other goods to those of limited means, HMRC contended that in this particular case, “it was quite possible that those whose means were not so limited might equally avail themselves of the benefits of the [company’s] activities” because the company’s Memorandum of Association did not limit the company’s activities to exclusively charitable purposes.

The deadline for submissions is December 15, 2010, so it will be interesting to see the results. Gift aid relief following Harris v HMRC4 The decision in Harris v HMRC (TC) (that gift aid relief is not available on donations to charity made by postdeath variation because the reduction in inheritance tax is a benefit received in consequence of making the gift) has provoked heated debate. It is, however, believed to be going on appeal.

The directors of the taxpayer gave evidence to the effect that the company’s operation was essentially a charitable rather than a commercial one because the surplus funds generated from sales of donated items were used to defray the expense of operation. Accordingly, in this respect, it was not the principal aim of the company to make a profit.

Charities The importance of the existence of a charitable purpose for VAT zero-rating — Furniture Finders of Winsford Ltd v HMRC5 The First-tier Tribunal has dismissed an appeal against a decision by HMRC to refuse zero rating of VAT under the provisions relating to the sale of donated goods by charities. In this case, the taxpayer was not a registered charity but was a company limited

Harris v HMRC [2010] UKFTT 385 (TC).

The Tribunal concluded, however, that this was not sufficient for the purposes of the relevant zero-rating provisions.

Furniture Finders of Winsford Ltd v HMRC [2010] UKFTT 426 (TC).

12/04/2011 14:31

OPINION

Because the company did not have exclusively charitable purposes, it could not properly be considered a charity whether registrable under the Charities Act 1993 (as amended) or not. The position is considered to remain the same under the new definition of charity in the Finance Act 2010.

An announcement was made on October 14, 2010 that from 2011/12:

Residue

• a three-year carry-forward rule will allow individuals to carry forward unused annual allowance from the last three tax years, provided they were a member of a registered pension scheme in those years;

Pensions reform 2011/12 As presaged by the discussion document issued on July 27, 2010, the Coalition Government proposes significant changes to the previous Government’s preferred solution for tax relief on pension savings from 2011/12. The Labour Government had suggested that pension contributions within the annual allowance made by those with taxable incomes (earned or unearned) in excess of £180,000 would attract only basic rate relief, with tapering entitlement to 40 per cent higher rate relief for taxable incomes between £150,000 and £180,000. For 2010/11, the “anti-forestalling” provisions continue to apply to pension contributions by “high income individuals” (viz those whose “relevant income” is £130,000 or more). Broadly, higher rate relief is given on contributions of up to £20,000, subject to increase to the lesser of £30,000 and the mean of the “infrequent money purchase contributions” made in the three tax years preceding the relevant tax year.

• the annual allowance will be reduced from £255,000 to £50,000; • an annual allowance charge will be applied to pension inputs which exceed the annual allowance;

• the exemption from the annual allowance in the year benefits are taken will be repealed, except in the case of either serious ill-health or death in that year; and • the transitional special annual allowance rules introduced in Finance Act 2009 will be repealed. It is proposed further that, from 2012/13, the lifetime allowance for tax-privileged savings will be reduced from the present figure of £1.8 million to £1.5 million (the level introduced with the current pension regime on April 6, 2006). Draft legislation and an explanatory note have also been published, providing also for transitional provisions for 2011/12.

As a matter of interest, it has not been stated that tax relief will be limited to 40 per cent, so we must assume that where appropriate relief will be given at the additional 50 per cent rate. For the remainder of 2010/11 it remains open for a high-earning individual to contribute up to the annual allowance of £255,000 (within relevant UK earnings), provided that that does not cause breach of the lifetime allowance of £1.8 million, and secure basic rate relief. That is, a net contribution of £204,000 will secure a payment from the Government of £51,000 into the pension scheme. Timetable announced for the revision and extension of disclosure regime On October 20, 2010, HMRC published an update6 about the work being undertaken on the revision and extension of the direct tax disclosure of tax avoidance schemes (DOTAS) rules. A package of five measures was originally announced as part of the March 2010 Budget. HMRC describe four of the five measures as concerning: • “a new ‘trigger point ’ for the disclosure of actively marketed schemes — the point at which a promoter first communicates information (including information about the expected tax advantage) about a substantially designed scheme to a third party with a view to obtaining clients for that scheme;

Disclosure of Tax Avoidance Schemes (DOTAS): Update (October 2010) at http://www.hmrc.gov.uk/avoidance/ dotas-update-oct10.htm.

0710504A Legal Lights issue 20.indd 24

LEGAL LIGHTS • ISSUE 20

12/04/2011 14:31

OPINION

“For the remainder of 2010/11 it remains open for a high-earning individual to contribute up to the annual allowance of £255,000” • an information power which gives HMRC the power to require a scheme ‘introducer’ (an intermediary whose function is to introduce clients to the promoter) to identify the promoter; • increased penalties for failure to comply with a disclosure obligation; and • a new requirement for promoters to provide HMRC with periodic information about clients who implement a notifiable scheme.” These four measures were enacted in Finance Act 2010 s.56 and Sch.17, to have effect from a date to be appointed by HM Treasury. HMRC has now stated that they expect regulations implementing these changes to come into force on January 1, 2011. The fifth measure involves revision and extension of the hallmarks. This will be advanced in two tranches. The first tranche involves changes to the existing hallmarks (primarily to the confidentiality and premium fee hallmarks) as well as the removal of the off market terms hallmark. This will be implemented with the Finance Act 2010 provisions. The second tranche involves the addition of new hallmarks targeting specific areas of risk will take account of post-Finance Act 2010 changes. This is expected to be implemented later in 2011–12.

R (on the application of Prudential plc and another) v Special Commissioner of Income Tax and another [2010] EWCA Civ 1094.

LEGAL LIGHTS • ISSUE 20

0710504A Legal Lights issue 20.indd 25

Refusal to extend privilege to nonlawyers - R (on the application of Prudential plc and another) v Special Commissioner of Income Tax and another7 The Court of Appeal has confirmed that legal professional privilege (LPP) does not apply, at common law, to any professional other than a qualified lawyer (namely, a solicitor or barrister, or an appropriately qualified foreign lawyer). This decision will come as a disappointment (although perhaps not a surprise) for accountants, chartered tax advisers and other tax professionals in particular who have been calling for LPP to be extended to any tax law advice that they might give in the exercise of their profession. The Court of Appeal has made it clear that (for reasons of certainly) any such extension will have to be by way of Parliamentary, rather than judicial, intervention. In this respect, Lloyd LJ concluded:8 “83. It is of the essence of the rule that it should be clear and certain in its application, since it is not the subject of any ad hoc balancing exercise but is, to all intents and purposes, absolute. As applied to members of the legal professions, acting as such, it is sufficiently clear and certain. If it were to apply to members of other professions who give advice on points of law in the course of their professional activity, serious questions would arise as

to its scope and application. To which accountants should it apply, given that “accountant” does not byitself denote membership of any particular professional body, or the obligation to complywith any, or any particular, professional obligations? To which other professional advisers would it apply? To what areas of the law would it apply as regards the advice of any adviser who is not a lawyer as such? These questions are serious and important, and would require a clear answer in order that the scope and application of the extended LPP should be known and understood. 84. In my judgment, only Parliament can provide the answers to such questions as these. It is not a proper task for the courts to undertake. In other countries where LPP does apply in relation to accountants it is as the result of statutory intervention. In our jurisdiction, Parliament has conferred limited protection in respect of accountants by [Taxes Management Act 1970 (TMA)] section 20, and its successor, the Finance Act 2008. The enactment of an extension of LPP to accountants, more general than that of TMA though not as general as that for which Lord Pannick argues, was proposed by the majority of the Keith Committee, but that recommendation has not been taken up.”

R (on the application of Prudential plc and another) v Special Commissioner of Income Tax and another at paras.83 to 84.

12/04/2011 14:31

PRODUCT

FROM THE CITY A Practitioner’s Guide to the AIM Rules 6TH Consultant editors: Hugh Maule EDITION and Tom Nicholls, Lawrence Graham LLP • Gives a complete picture of the current AIM regime including guidance on the admissions procedures and ongoing obligations enabling you to stay up to date with the latest requirements • Includes in-depth coverage of tax issues to reflect significant changes to the tax regime for AIM companies • Gives important guidance on corporate governance and the duties of directors • Introduces a new chapter on fund structures, explaining how they have been affected by new rules, and a new chapter covering implications for US companies June 2011 9780414046894

0710504A Legal Lights issue 20.indd 26

£125 / €182

A Practitioner’s Guide to the FSA Listing Regime 24TH 2011/2012 EDITION • The definitive, annual guide to the requirements of the Listing, Prospectus, and Disclosure and Transparency Rules • Offers practical guidance on the eligibility criteria and continued obligations for listing on the London Stock Exchange • Introduces the three rulebooks and the statutory framework, and goes on to examine their requirements in detail to help you ensure you are complying with the rules at all times. • Fully updated to include all the latest London Stock Exchange and FSA developments as well as developments at the European level July 2011 9780414047389

£125 / €182

A Practitioner’s Guide to the City Code on Takeovers 23RD and Mergers 2011/12 EDITION • The definitive, annual guide to the Takeover Panel’s role in administering the City Code on Takeovers and Mergers • Describes the role and purpose of the Panel, and gives guidance on the responsibilities and actions of each party throughout a transaction • Fully revised and updated each year to take into account any changes in the Code and their implications for practitioners • Includes an introduction from the Director General of the Panel, and the full text of the Code itself July 2011 9780414047372

£115 / €167

LEGAL LIGHTS • ISSUE 20

12/04/2011 14:31

PRODUCT

A Practitioner’s Guide to Basel III and Beyond Consultant Editor: Richard Barfield, Pricewaterhouse Coopers LLP

A Practitioner’s Guide to Commodity Finance

• The complete practitioner’s guide to the new Basel Accord

• Guides the reader through all the steps involved in commodity financing operations, from pre-export financing to enforcement of security and insolvency issues

Consultant Editor: Geoffrey Wynne, SNR Denton LLP

• Looks in depth at the aspects of the Accord, discussing all of the changes from the existing regime, and what they will mean in practice • Gives detailed guidance on the systems and controls that banks will need to have in place in order to ensure continuing compliance • Deals with all the major themes that arose during and after the financial crisis: leverage; liquidity; remuneration; governance; and how each will be treated under the new framework September 2011 9780414045385

£125 / €182

• Covers the impact of post credit crisis reforms, including the latest revised Basel Accord and other national and international regulations to help ensure that you are aware of your compliance obligations • Includes in-depth discussion of risk and risk transfer issues, regulation and due diligence, and also covers Islamic finance aspects September 2011 9780414045392

£150 / €218

AND BEYOND Practical Company Law and Corporate Transactions Mark Stamp, Linklaters LLP

3RD

EDITION

• A complete guide to the principles, practice and procedure for all aspects of corporate transactions • Fully updated to cover all aspects of the Companies Act 2006, FSA and City Coderelated developments, the new UK Corporate Governance Code and the Stewardship Code • In-depth analysis of takeovers and mergers, private company and business sales, acquisitions and demergers • Includes a wealth of worked examples, case studies and flow charts, all cross-referenced to the main text August 2011 9780414043121

£125 / €182

A Practitioner’s Guide to Inside Information Brian McDonnell, Olswang

2ND

EDITION

• Provides expert commentary on the current UK legislative and regulatory requirements relating to inside information including coverage of the FSA Listing Rules, Takeover Code, Corporate Governance Code and other civil and criminal issues, and how they interact • Gives you detailed guidance on the establishment and maintenance of appropriate systems and controls and the steps to take to ensure effective risk management • Substantially revised to cover the FSA’s current stance on “credible deterrence,” the Takeover Directive and changes to the AIM rules and rules of relevant exchanges • Discusses important new market abuse cases September 2011 9780414048584

LEGAL LIGHTS • ISSUE 20

0710504A Legal Lights issue 20.indd 27

£135 / €196

12/04/2011 14:31

ARTICLE - FEATURE

Opening Doors

Begins with the Rule of Law

Already this year, civil unrest in North Africa and the Middle East has demonstrated the importance of the rule of law to nations across the world. The rule of law – intended to protect the rights of citizens from arbitrary and abusive use of government power – is a critical guide for emerging democracies. In Africa, for example, Egyptians and Tunisians are currently wrestling with fundamental questions of how they will organize their government and provide essential services. According to a recent analysis by Freedom House, an international nongovernmental organization (INGO), only nine countries across the African continent are free today, while 39 are considered partially free or not free. Thomson Reuters, including its Londonbased publisher Sweet & Maxwell, launched a significant partnership last fall with the

0710504A Legal Lights issue 20.indd 28

nonprofit organisation Books For Africa to help advance the rule of law in African nations. Through this US$1.2 million partnership, the legal and regulatory businesses of Thomson Reuters will provide 15 law libraries, along with teaching and international law texts, to law schools and governing institutions in emerging democratic nations. In particular, through this partnership, Africa’s future lawyers and civil leaders will receive complete law libraries to equip law schools, courts and governing bodies with the tools needed to establish and maintain the rule of law. Recipient organisations also will receive International law texts to equip Africa’s lawyers with the knowledge and context to act in the global arena. Finally, the partnership will provide more than 22,000 books each

LEGAL LIGHTS • ISSUE 20

12/04/2011 14:31

ARTICLE - FEATURE

In particular, through this partnership, Africa’s future lawyers and civil leaders will receive complete law libraries to equip law schools, courts and governing bodies

year to fill desks and shelves at public schools and libraries. The collaboration builds on a long history of commitment from Thomson Reuters which has already contributed 3,500 legal texts and 50,000 general interest books to legal and public schools across 12 African nations. But this partnership is much more than books. In those countries where democracy is struggling for traction, leaders and lawyers will be equipped with the knowledge and tools needed to develop modern regulatory systems. Court systems will be better positioned to conduct proceedings based on good information and due process, rather than the whims of dictators.

LEGAL LIGHTS • ISSUE 20

0710504A Legal Lights issue 20.indd 29

“For the United States and developed nations worldwide, the recent unrest in North Africa and the Middle East has reminded us all how the fundamental rights we so often take for granted – the freedom to vote, to get a job, or to live without fear of law enforcement – would not be possible without the rule of law,” observed Vice President Walter Mondale, co-chair of the Jack Mason Law & Democracy Initiative and an integral steward of the Initiative’s partnership with Thomson Reuters. “This partnership is bringing a key building block of the rule of law – legal texts – to help build these legal institutions across Africa.” The collaboration ultimately aims to empower African leaders, governments and INGOs to help achieve four key goals: 1. Stabilise governments to ensure that the will of the people, rather than militias, sets society’s standards to act. 2. Instill democracy: protecting citizens’ right to elect leaders and voice dissent in a peaceful and productive way. 3. Encourage investment by giving international investors and businesses the confidence needed to start investing in and growing economies.

4. Develop health and educational institutions by creating the stability governing institutions and INGOs will need to rebuild schools, establish safe drinking water, and reestablish hospitals and clinics across once war-torn nations. In March 2011, Thomson Reuters and Books For Africa forces with Room to Read, an INGO working to increase literacy across Africa, to implement another delivery for this partnership. The organizations delivered more than 1,200 law texts to law schools and legal institutions in Zambia. “The majority of Africa’s nations, including Zambia, are working to strengthen schools, businesses and the principles of democracy,” noted Patrick Plonski, executive director of Books For Africa. “These legal texts will help the nation’s government, nongovernmental organisations and legal professionals to advance these goals and the rule of law through the power of knowledge.” The experience of delivering this shipment also offers a clear example of why the rule of law is so critical to this and other nations. The books are shipped in freight containers, and when they arrive in a port city in Africa, the logistics for transporting the books to their final destination is a coordinated

12/04/2011 14:31

ARTICLE - FEATURE

“ We work to help legal systems perform better every day, worldwide, and we try to reflect this through our philanthropy every day,” >>

effort of transport expertise. By train, truck or car, the arrival dates are almost never known until they arrive onsite. The partnership is one of several philanthropic initiatives spearheaded by Thomson Reuters. In addition, the company leads two long-standing programs of note: - TrustLaw, a program of the Thomson Reuters Foundation, pairs local, national and international NGOs with lawyers and legal professionals willing to offer their pro-bono services. Through this matching service, INGOs working to advance human rights, bring clean water to developing nations and meet other critical needs are connected with competent and free legal services to help them achieve their missions across the globe. - Do Justice, a Thomson Reuters program, provides attorneys working pro-bono with access to WestLaw and other legal publications. Since 2008, the company has donated more than $US 49 million in Westlaw access to attorneys in support of individuals and organizations who could otherwise not afford legal counsel.

0710504A Legal Lights issue 20.indd 30

“We work to help legal systems perform better every day, worldwide, and we try to reflect this through our philanthropy every day,” added Sharon Sayles Belton, vice president, Government Affairs and Community Relations. “TrustLaw, Do Justice and our partnership with Books For Africa all provide our world’s passionate advocates with access to the legal tools needed to achieve their missions.”

For more information about Thomson Reuter’s work to expand the rule of law and the power of knowledge in Africa and worldwide, visit www. thomsonreuters.com/legalcr. If you would like more information or to find out how to donate books to Books For Africa, please email bfa@booksforafrica.org

The commitment to delivering law texts to Africa will provide unique resources to African nations seeking change. Instead of starting from scratch, these emerging democracies can benefit from the experience of developed countries in Europe and the United States. In these places, government continues to evolve, and each step forward is reflected in the rules and procedures in these texts. Answers about how to best organize government and provide vital services will be different for each region, but governments will have the opportunity to learn from volumes of practice.

LEGAL LIGHTS • ISSUE 20

12/04/2011 14:31

REUTERS/Denis Sinyakov

BE INSPIRED Sweet & Maxwell is the leading dedicated publisher of legal books and information services in the UK. We have been inspiring students and practitioners for over 200 years with authoritative law books covering a range of areas. Look out for Nutcases and Nutshsells - our essential revision and starter guides.

sweetandmaxwell.co.uk/lecturers-students

SWEET & MAXWELL

0710504A Legal Lights issue 20.indd 31

12/04/2011 14:31

PRODUCT

LawteL LawteL gives more LAWTEL GIVESyou YOU MOREgives yo Keeping on top of legal developments isn’t an optional extra. Lawtel is the online research service that delivers the law to you as it happens. Providing same day coverage for the Supreme Court and overnight reporting of selected cases from the higher courts, Lawtel makes sure you’re up to speed with the latest legal developments. Our very popular Daily Updates service means that you don’t even need to visit Lawtel to keep current with your areas of interest – just get the latest information straight in your inbox. But bringing you the latest news and developments in case law and legislation isn’t all Lawtel does. It’s got lots of other tools and features which can help you work smarter. We’ve compiled a guide to elements of the service that you might not be aware of: TranscripTs Official or unofficial, Lawtel has thousands of transcripts online for you to read. Unofficial

transcripts are available the same day, Keeping so you on top of legal developments isn’t an optional extra. Lawtel is the online don’t have to wait to study the official version service that delivers the law to you (although they’re published on Lawtel research as soon as they’re available). And you canas it happens. Providing same day coverage for the Supreme Court and overnight read up on thousands of cases that aren’t reporting of selected cases from the higher published in Official Law Reports. courts, Lawtel makes sure you’re up to speed TranscripTs ExprEss with the latest legal developments. If you can’t find a case, or you find that a Our very popular Daily Updates service transcript isn’t available yet, then Lawtel means that you don’t even need to visit Transcripts Express service is the answer. Just Lawtel to keep current with your areas of submit a request and our tracking team will interest – just get the latest information find the information for you. straight in your inbox. ExTEmporE JudgmEnTs But bringing you the latest news and Lawtel has a team of qualified lawyers developments in case law and legislation who go to the Royal Courts of Justice and isn’t all Lawtel does. It’s got lots of other report on the most important extempore tools and features which can help you work judgments from the High Court and both smarter. We’ve compiled a guide to elements Courts of Appeal. The reports are available of the service that you might not be aware of: the next morning, and if you have a Daily TranscripTs Update set up you can have them delivered straight to your inbox – letting you keepOfficial your or unofficial, Lawtel has thousands of edge without breaking a sweat. transcripts online for you to read. Unofficial

transcripts are available don’t have to wait to stu (although they’re publis soon as they’re available read up on thousands of published in Official Law

TranscripTs ExprE If you can’t find a case, o transcript isn’t available Transcripts Express serv submit a request and ou find the information for y

ExTEmporE JudgmE Lawtel has a team of qu who go to the Royal Cou report on the most impo judgments from the Hig Courts of Appeal. The re the next morning, and if Update set up you can h straight to your inbox – l edge without breaking a

REUTERS / Toby Melville

LAWTEL

0710504A Legal Lights issue 20.indd 32

LAWTEL

LEGAL LIGHTS • ISSUE 20

12/04/2011 14:31

PRODUCT

es you more

scripts are available the same day, so you ’t have to wait to study the official version hough they’re published on Lawtel as n as they’re available). And you can d up on thousands of cases that aren’t lished in Official Law Reports.

LiTigaTor This service is actually included in your Lawtel subscription. It’s a collection of Civil Procedural Guides, giving you a ‘how to’ explanation of litigation processes. They cover the most common areas of dispute, and give you step-by-step instructions laid out in chronological order so you always know where you are. They’re supplemented with expert commentary and links to other relevant materials, so you’ve got everything you need in one place.

anscripTs ExprEss u can’t find a case, or you find that a script isn’t available yet, then Lawtel nscripts Express service is the answer. Just mit a request and our tracking team will the information for you.

pi BuLLETin Written by one of personal injury’s most respected barristers, Gary Thornett, PI Bulletin is packed full of news and insights into recent developments in personal injury litigation.

TEmporE JudgmEnTs wtel has a team of qualified lawyers o go to the Royal Courts of Justice and ort on the most important extempore gments from the High Court and both rts of Appeal. The reports are available next morning, and if you have a Daily date set up you can have them delivered ight to your inbox – letting you keep your e without breaking a sweat.

Most importantly, Gary also outlines what the cases mean in practice through his Practice Points. These are unique to PI Bulletin and offer insights into cases that can’t be gleaned from anywhere else. Gary

LiTigaTor uses his years of experience as a solicitor, barrister, and judge to pick out the points This service is actually inc you really need to know, and tells you how Lawtel subscription. It’s a you can draw on them in cases you might Procedural Guides, giving encounter. This lets you take the most salient explanation of litigation p points and work from them quickly andcover the most common a easily. He also highlights the most useful and give you step-by-step and interesting parts of the judgment for out in chronological order lawyers to refer to, saving you time. know where you are. They with expert commentary The Bulletin also has article abstracts and relevant materials, so you links to the full text, personal injury news you need in one place. items from the national press, an overview of forthcoming legislation, and recent pi BuLLETin PI quantum reports. So you’ll never findWritten by one of persona yourself out of the loop. respected barristers, Gary

is packed full of news and developments in personal

Most importantly, Gary al the cases mean in practic Practice Points. These are Bulletin and offer insights can’t be gleaned from any

REUTERS / Toby Melville

For more information For more information and support, give us a call 0800 018 9797 or drop us an email helpdesk@lawtel.com give us a call 0800 0

LEGAL LIGHTS • ISSUE 20

0710504A Legal Lights issue 20.indd 33

12/04/2011 14:31

PRODUCT

BOOK SHOP

Looking into the future INSOLVENCY

Construction Insolvency, 4TH EDITION Richard Davis • Includes comprehensive coverage of the case law across Commonwealth jurisdictions and across related legal disciplines. It includes many unreported cases and overseas cases unfamiliar to UK practitioners. • Commentary on principles of law includes critical analysis of legal principles. Among many examples: • The juridical status of an adjudication decision, and more broadly the relation between adjudication and insolvency enforcement procedures • The ways in which contractual and procedural remedies take effect as security for payment or performance • The problems which occur when equitable concepts such as the trust are grafted onto complex construction contracts April 2011  9780414046092

£180/ €261

Principles of Corporate Insolvency, 4TH EDITION Professor Sir Roy Goode, QC • Explores the framework and fundamental principles of corporate insolvency law • Is a substantial revision and expansion of a work used extensively and regularly cited by all courts from the House of Lords/ Supreme Court downwards • Provides a comprehensive and up to date coverage of key features of increasingly complex insolvency legislation and a mass of case law • Contains a detailed treatment of the EU Insolvency Regulation and of the Cross-Border Insolvency Regulations which incorporate the UNCITRAL Model Law May 2011 9780421966109

£175 / €254

Sealy & Milman: Annotated Guide to the Insolvency Legislation, 14TH EDITION Volumes 1 & 2 Professor Len Sealy; Professor David Milman • Gives comprehensive coverage of the principal insolvency legislation, fully updated, annotated with full commentary on the legal and practical consequences • Includes the latest updates from the legislative reforms to the Insolvency Act and the Insolvency Rules, including the Legislative Reform (Insolvency) (Miscellaneous Provisions) Order 2010 and the Insolvency (Amendment) Rules 2010 • Highlights the ongoing case developments on the EC Regulation on Insolvency Proceedings 2000 and the Cross Border Insolvency Regulations 2006 • Discusses the latest developments to the Company Directors Disqualification Act 1986 • The legislation has been brought fully up to date and includes discussion of over 100 new cases May 2011  9780414048119

0710504A Legal Lights issue 20.indd 34

£230 / €334

LEGAL LIGHTS • ISSUE 20

12/04/2011 14:32

PRODUCT

REUTERS/Bobby Yip

COMMERCIAL LAW

Hewitt on Joint Ventures, 5th edition  Ian Hewitt • Covers the practicalities of drafting, negotiating and setting up joint venture transactions • Covers specialist tax planning, competition and regulatory, intellectual property, employment and accounting issues • Looks at deadlock and breakdown and the mediation, litigation and arbitration of disputes • Deals with international joint ventures, with specialist chapters on key overseas jurisdictions such as China, India, Brazil, Russia and South Africa • Provides the precedents on an accompanying CD-ROM for rapid drafting and amendments  September 2011  9780414044821

LEGAL LIGHTS • ISSUE 20

0710504A Legal Lights issue 20.indd 35

Sinclair on Warranties and Indemnities on Share and Asset Sales 8th Edition Robert Thompson • Expert guidance on warranties and indemnities from a purchaser and vendor perspective • Fully updated to include references to the Companies Act 2006, Income Tax Act 2007 and Corporation Tax Acts of 2009 and 2010 • Anticipates the introduction of the Bribery Act 2010 by way of alternative drafting templates • Warranties have been updated to reflect new areas of potential liability, updated legislation and changes to convention • Includes a CD-ROM of complete precedents for easy use and reference March 2011  9780414043169

£219.30 / €312

£229.50 / €327

12/04/2011 14:32

PRODUCT

ACCOUNTANCY

INSURANCE

BANKING & FINANCE

INSIGHTS INTO THE IFRS, 8TH EDITION

Rowlatt on Principal and Surety, 6TH EDITION

• Provides the conclusions reached by the KPMG International Financial Reporting Group on many interpretative issues

Gabriel Moss, QC and David Marks, QC

• Emphasises the application of IFRS in practice • Organised by topic to follow the structure of a set of financial statements September 2011  9780414047860

£135 / €155

• New edition of a highly regarded work cited extensively in court and in text books on the subject • Revised throughout in line with recent developments, such as the Consumer Credit Act 2006 and those relating to performance bonds and misrepresentation/ undue influence • Contains examples of key documents, including a draft bond and draft performance bond, with practical drafting guidance  August 2011 9780421966406

0710504A Legal Lights issue 20.indd 36

£175 / €254

Riley on Business Interruption Insurance, 9TH EDITION Harry Roberts Riley is the complete international reference work, presenting a comprehensive examination of business interruption and consequential loss insurance in jurisdictions around the world, with the emphasis on practice and procedure. • Provides detailed guidance on over 200 charges in company accounts • Looks at the principles, conditions, and available scope of modern consequential loss policies September 2011 9780421925809

£195 / €283

LEGAL LIGHTS • ISSUE 20

12/04/2011 14:32

REUTERS/Bobby Yip

PRODUCT

LITIGATION

SHIPPING

O’Hare and Browne: Civil Litigation, 15TH EDITION

Scrutton on Charterparties and Bills of Lading, 22ND EDITION

John O’Hare and Kevin Browne

Mr Justice Eder, QC, Andrew Burrows QC (Hon), David Foxton, QC, Steven Berry, QC, Christopher Smith and Professor Howard Bennet

• Widely regarded as the ‘bible’ on the subject, this highly accessible work explains how the Civil Procedure Rules work in practice • Covers all stages of litigation in chronological sequence, from pre-action to enforcement and appeals • Provides reference to court forms and relevant rules • Fully up to date with the latest changes relating to the ongoing reform and consolidation of the civil litigation process October 2011 9780414047785

LEGAL LIGHTS • ISSUE 20

0710504A Legal Lights issue 20.indd 37

£79/ €115

• Covers time charters, voyage charters and demise charters as well as bills of lading • Considers the performance of the contract during loading, during the voyage and during unloading of cargo • Includes coverage of over 100 new cases since the last edition including The Antiparos, The Ailsa Craig, The Silver Constellation and The Bremen Max September 2011 9780414045903

£280/ €406

12/04/2011 14:32

AUTHOR PROFILE

DISTRICT JUDGE ROBERT HILL THE WHITE BOOK

Could you tell us about your professional background? I think it is fair to say that my background is unusual. I went to Salford Grammar School and left after GCE “O levels” aged 16. I am the eldest of five children and come from a working class background. With the benefit of hindsight it is clear that I ought to have done “A levels” and gone to university but no-one from my family had ever done so and somehow it didn’t seem to register. I did enquire of the Careers Master about becoming a barrister but was told that without any connections that would be impossible for someone like me (while that advice was given in good faith I now know that it is utter rubbish) and was told to become a solicitor instead and that I could do so while working and that is what I did. So I started work for what was then a large firm of solicitors in Manchester in 1964. After three years I qualified as an Associate of the Institute of Legal Executives in 1967 and with that qualification was able to take articles. I worked in the Litigation Department and was hooked! During this period I was introduced to the “Annual Practice” (as the White Book was then called). I did notice that, by the end of each year, the clerk who was regarded as the procedural expert had a White Book that was falling apart from use whereas that of the partner in charge was still it its cellophane

0710504A Legal Lights issue 20.indd 38

wrapper! One day I plucked up courage to ask the partner if I could borrow his White Book. He agreed and I started to look things up for myself. I found the White Book surprisingly easy to navigate and could see the logic of and purpose of the rules. I got married in 1967 and needed a living wage. After placing an advertisement in “The Law Society’s Gazette” I secured articles with a small firm in Minehead, Somerset. I was articled for five years from 1968. I spent the whole period doing all kinds of litigation. I attended the College of Law in Lancaster Gate where I studied for Part I, and two years later, for Part II of The Law Society’s Qualifying Examinations. I passed them all first time and was awarded the “John Mackrell Prize”. I was both surprised and delighted when the College of Law offered me a lecturing job at its new branch in Chester. By the time I was admitted as a solicitor I had 10 years experience as a litigation clerk. At the College of Law I initially lectured in Tort and Family Law. When the Law Society’s Part II was replaced by “Finals” I became team leader at Chester and taught Civil Procedure, Criminal Procedure and the Law of Evidence which together comprised “Head 4-Litigation” in the Finals.

LEGAL LIGHTS • ISSUE 20

12/04/2011 14:32

AUTHOR PROFILE

“By the time I was admitted as a solicitor I had 10 years experience as a litigation clerk.“ I did not just lecture to students. The College had a massive programme of Continuing Education for solicitors and it was during this time that I worked closely with practitioners and the judiciary which led to me being appointed a Deputy in 1985. In 1988 I left Chester for York in charge of the College’s new branch there. I also became Director of Advocacy Training as we knew that enhanced rights of audience for solicitors were imminent and that training would be required. In preparation I attended courses and participated in courses in Eire (the first common law jurisdiction to have compulsory advocacy training), the USA (where advocacy training has existed since 1948), Canada and Australia. I had written many articles and co-authored a major textbook. In 1992 I was appointed a District Judge. In 1995 I began lecturing for the Judicial Studies Board (which I still do); in 1996 I became an Assistant Recorder and a Recorder in 2000. I was appointed a Regional Costs Judge and joined the Civil Procedure Rules Committee in 2006. Why did you choose to specialise in Civil Procedure? Frankly I didn’t choose. I was appointed to do civil litigation but I enjoyed it and have never wanted to change.

LEGAL LIGHTS • ISSUE 20

0710504A Legal Lights issue 20.indd 39

How has practice changed since you first started? When I started in Manchester all male solicitors wore bowler hats and there were few females in the law. But there was always a strong personal relationship with clients which is not always so today. I had a minor personal injury claim recently. It was handled very efficiently but I never met my solicitor nor anyone from the firm. That never happened when I started. I was engaged in a huge variety of civil work whereas today everyone specialises in increasingly narrower areas. However, the rewards are much greater and the CFA has had a huge impact. What do you think are the key challenges facing practitioners today? Unfortunately the legal profession has trained (and continues to train) too many people. There is now immense competition and everyone wants more for less. It will be difficult to maintain the traditional professional standards but it is essential that they are maintained otherwise we shall cease to be a profession. Can you describe any interesting cases you have dealt with? I think it is crucial to remember that every case is important to the parties and that is so whether the lawyers find it interesting or not. Sometimes the most routine case can develop a

12/04/2011 14:32

AUTHOR PROFILE

THE COMPLETE PICTURE

“As the Preface to the 1996 edition records, I was the first District Judge to join the White Book team.“ surprisingly interesting aspect. In 1964 the firm I worked for secured what was then the highest sum ever awarded as damages and was the first English case where over £1,000,000.00 was awarded. I found it very interesting to help prepare that case for trial and to help prepare the bill for taxation (now called assessment) afterwards. We always did our own bills and that was the origin of my continuing interest in costs. I found it interesting to sit in the Court of Appeal when Lord Denning reversed the trial judge and ruled in our favour. I have to say that I still find nearly all my work interesting.

You have worked on the White Book since 1995. What led you to become involved? As the Preface to the 1996 edition records, I was the first District Judge to join the White Book team. As already mentioned I have always been a fan of the White Book but in the early days of my career never expected I would end up helping to write it. I was delighted when I was asked to join the team. Lord Woolf’s “Access to Justice” Enquiry was underway and we knew that major changes were required. Traditionally, the White Book dealt

0710504A Legal Lights issue 20.indd 40

with the High Court but not the county courts. As the CPR 1998 introduced a common procedural code my initial brief was to ensure that county court coverage was adequate. It was my idea to begin each Part of the CPR with an “Editorial Introduction” to set the scene and to follow each Part with its supplementing Practice Direction rather than include PDs in a separate section. There have been 55 sets of amendments to the CPR since and two more sets are imminent and the White Book has had to evolve accordingly.

What are the key recent developments that have affected the contents of the White Book? There are several. The expanding role of the Administrative Court; the PreAction Protocol for Low Value Personal Injury Claims in Road Traffic Accidents (which may soon find the £10,000.00 limit increased and be extended to other areas), electronic disclosure, the Equality Act 2010, and what seems to be a never ending series of amendments to Part 6 (Service) many of which are required to comply with EU Directives. Although it could easily be missed by a non patent specialist I regard the new costs regime for the

Patents County Court to be particularly interesting and possibly a model which should be extended to other areas. It is still unclear to what extent amendments will be required as a result of Lord Justice Jackson’s Report on Civil Costs. Potentially that is the biggest change since the introduction of the CPR. The CPR Committee is still working on incorporating Schedule 1 (the RSC 1965) and Schedule 2 (the CCR 1981) into the main body of the CPR. This task has already taken far too long but major movement is expected this year.

How do you relax in your spare time? I write in my spare time so would not do it if I did not enjoy it. But I also like to keep fit and enjoy gardening and a modest amount of DiY. I have just joined the local pub quiz team. I particularly enjoy a winter holiday and like to get away both to new and familiar places. I live in a pleasant part of East Yorkshire and must have one of the most pleasant drives to work of anyone. I do think it is important to take pleasure from the simple things.

LEGAL LIGHTS • ISSUE 20

12/04/2011 14:32

REUTERS / Karoly Arvai

THE COMPLETE PICTURE T H E W H I T E B O O K 2 0 1 1 • OUT C O MNOW ING IN MARCH PRINT • CD • ONLINE

sweetandmaxwell.co.uk/whitebook

LEGAL LIGHTS • ISSUE 20

0710504A Legal Lights issue 20.indd 41

12/04/2011 14:32

LEGAL BREAK

Legal break

Take some time out with a FEW brain teasers

WHERE IN THE WORLD?

Can you name these three cities from our Reuters image bank?

REUTERS/Lisi Niesner

Henrik Andersen

SUDOKU Fill in the numbers. Look out for the answers in the 21st issue.

7 5

7 5 4

1 9

1 2

1 5

8 8

9 8

• • • • •

9 9

Easy

ID go fol th

3 2

5 7

ID N

3 2

5 1

• • •

Hard

The answers from the 19th issue

• 9

Easy

0710504A Legal Lights issue 20.indd 42

*Av

Co Ca

Hard

LEGAL LIGHTS • ISSUE 20

12/04/2011 14:32

REUTERS/Pierre Ducharme

IDS EMPLOYMENT LAW HANDBOOKS NOW ON WESTLAW UK IDS Employment Law Handbooks are the most popular go-to commentary for employment lawyers. The following eight core Handbooks are now available for the first time ever online via Westlaw UK*:

INSTANT ACCESS TO THE INFORMATION YOU NEED

• • • • •

Contracts of Employment Disability Discrimination Industrial Action Maternity and Parental Rights Redundancy

All Handbooks are updated weekly by the expert in-house author

• • •

Transfer of Undertakings (TUPE) Unfair Dismissal Working Time

•

Equal Pay and Wages will be added during the course of 2011 and included in the add-on service

*Available as an add-on to a Westlaw UK subscription.

The Handbooks offer detailed and comprehensive guidance to employment law and provide clear advice on the law and how it applies in practice.

team at IDS, so you have access to the latest information in the field. WHY CHOOSE IDS EMPLOYMENT LAW HANDBOOKS ON WESTLAW UK? • You can search the information you need quickly and easily , using Westlaw UK’s intuitive functionality • With direct links to the case law and legislation referred to in the text of the Handbooks, you can quickly jump between the texts and primary materials • With weekly updates you can work safe in the knowledge that you have the most current information at your fingertips

0710504A Legal Lights issue 20.indd 43

12/04/2011 14:32

REUTERS/Arko Datta

TRUSTLAW REUTERS/Arko Datta

EMPOWERING PEOPLE THROUGH TRUSTED INFORMATION AND FREE LEGAL ASSISTANCE

TRUSTLAW

TrustLaw is a global center for free legal assistance and anti-corruption news and information. We are a one-stop shop for news and information on good governance and pro bono work. TrustLaw Connect is a free vehicle to spread the culture and practice of pro bono internationally, connecting NGOs and social enterprises that need legal help with lawyers willing to work EMPOWERING PEOPLE THROUGH TRUSTED INFORMATION AND FREE LEGAL ASSISTANCE with them at no cost. To learn more, visit trust.org/trustlaw TrustLaw is a global center for free legal assistance and anti-corruption news and information. We are a one-stop shop for news and information on good governance and pro bono work. TrustLaw Connect is a free vehicle to spread the culture and practice of pro bono internationally, connecting NGOs and social enterprises that need legal help with lawyers willing to work with them at no cost. To learn more, visit trust.org/trustlaw

trust.org/trustlaw 44

0710504A Legal Lights issue 20.indd 44

LEGAL LIGHTS • ISSUE 20

12/04/2011 14:32