Keeping tabs

For anyone currently searching for a Christmas present for Baker & McKenzie’s Harry Small, think gadgets. The man loves them and is constantly patting his mobile phone and PDA throughout our chat. (For those of you who, like me, have not the first idea what PDA stands for, it is Personal Digital Assistant – as in Palmpilots rather than R2D2.)

From time to time he picks them up, as if to check that they are still okay, briefly holds them, then places them carefully down again. I can never imagine having as much affection for my mobile phone, but then I don’t have a swanky new model like Small’s, preferring to stick with a clockwork model from the late 17th century.

Perhaps it’s natural for an intellectual property (IP) lawyer to want the very latest gadgets. Small has spent several years of his life immersed in the detail of software packages and other techy things, attempting on behalf of clients to curtail endemic pirating. But it is a small red tab that occupied most of his time for the first few years of his career and has brought him to the fore in the past couple of weeks.

That red tab is the one associated with Levi’s 501 jeans and Levi Strauss is Small’s oldest client. He first started working for the company as a newly-qualified solicitor at Linklaters & Paines, as it then was, protecting the precious red label from infringements. The timing was quite good for Small – he qualified in 1981, only a handful of years before Nick Kamen took off his 501s in the launderette and suddenly everyone wanted that little red tab. Small did so much work on the tabs that he can still recall its patent number.

When Small moved to Baker & McKenzie in 1986, Levi’s followed him. As you would expect, after a slight pause Small says that he does own a pair of Levi’s and several pairs of Dockers – the “number-one khaki pant brand in the US”, according to the company’s website.

“I would wear them more if my figure was more suited to jeans,” laughs Small, who lacks the snake hips of Kamen. “They’re top of the market as far as what they sell is concerned and I am a great believer in brands and brand loyalty because you get a level of stability and a level of comfort. As for quality, I would honestly tend towards them anyway.” Not bad for Levi’s, huh? It pays the legal bills and gets a marketer thrown in for free.

Recently, Small has helped score a victory for the jeans company in front of the European Court of Justice (ECJ) against self-styled consumer champion Tesco. As you will probably know by now, Tesco was fighting for the right to be able to stock Levi’s jeans sourced from the grey market, in this case Eastern Europe and the US. The court found that a retailer has to show that the brandowner gave express consent for goods (EEA) bought outside the European Economic Area to be resold within that territory. If the retailer cannot show that consent then it can be sued by the brandowner for infringing its brand.

One of the arguments Levi’s deployed in fighting the case was that anyone selling its jeans needed special training to help us ignorant consumers decide whether our boot cut, hipster or marble wash jeans fit us or not.

I ask Small whether he needed help in assessing whether his fitted or not. But he doesn’t really like my line of questioning and gets a bit red and flustered. Rather like many do in the changing room of a jeans store in fact – but obviously not at Levi’s where the staff guidance is so accurate that you could never even get as far as the changing room with a pair that don’t fit.

“I tried them on, does it matter?” he replies, as if that has obliquely proved Levi’s point about Tesco not being up to the task of stocking Levi’s.

“The argument is more simple than that,” continues Small, stressing that he is not an economist or a politician, but a lawyer. He continues to get flustered when asked about the pricing of Levi’s in the US, which I know he’s not personally responsible for, but it was certainly the background to his recent case. I dare not ask whether he plans to bring back any cheap jeans from his Christmas trip to New York.

He argues: “The law is perfectly clear – the brandowners have invested a huge amount of money in their brands. As a consumer, I would say it’s up to them how they sell them. Cheapest isn’t always best. If you want the cheapest, nothing is stopping you buying unbranded jeans.”

Admittedly that is true, but there is now a judgment that will hinder us buying the same jeans at nearly half the price. Later on, he returns to his theme. “I have often wondered how Tesco would react to an attempt by Safeway to sell Tesco-branded products in Safeway stores. Or perhaps more to the point in a big discount store,” he says.

Small says that the ECJ judgment did not come as a surprise to him, as England is the only place in Europe where the issue is unclear. “The courts [elsewhere] have affirmed, and affirmed, and affirmed that the rule is that branded goods can’t be imported from the US, even when they were bought from legitimate outlets.”

But the ECJ did go against what Mr Justice Laddie ruled in the Davidoff case a little more than two years ago. In the related High Court case, which was joined with the Levi’s action to go before the ECJ, Laddie said that no prohibition on unfettered distribution could be implied on behalf of the brandowner and suggested the formation of a “chain of prohibitions”, as Small puts it.

“That’s impracticable,” says Small. “You might as well stamp something on the product.” But at the end of the day, Laddie referred the case to the ECJ for clarification and Small’s side won. However, this was not before the Advocate General had given her preliminary opinion, which both sides managed to interpret as being in their favour, such was its clarity.

Now all that remains is for the case to return to the High Court to re-examine the facts and decide whether the two brandowners expressly waived their rights to redistribution within the EEA.

An introduction by Levi’s brought Small into the world of the IP lawyer and a liking for the law has ensured that he stayed there. Small likes reading law reports and the discipline, he says, needs much more law than, say, doing deals. He is certainly enthusiastic about his subject, emphasising points with whirling hand movements. In fact, Small’s liking for law meant that he spent only a year in the Hong Kong office of Baker & McKenzie, where he started his career with the firm working on software piracy. “With all due respect to Hong Kong, the more interesting law is in London,” he says. “There is more high-tech law work, which interests me. In Hong Kong you’re enforcing the law of the UK or increasingly China, you are not creating law yourself. You are seeing what you can import into the market conditions from a legal point of view.”

In his time, Small has become a mini-expert in lots of areas, including farmhouse cheese making. That case involved a wrangle over whether the positioning of holes in cheesetowers put in to drain the whey was protected by confidentiality. Another case between Orange and Vodafone over an advertising claim helped to settle in English law what is meant by “an average”. For those curious to know, it is the mean average rather than the median. For that case, Small became an instant expert in the way phone charges are worked out, an issue that rose to public awareness during the case. And there we are again, back to mobile phones. Clutching his shiny silver talisman, Small is off again in an enthusiastic blur.
Harry Small
Baker & McKenzie