White & Case: crossing the transatlantic divide

Many IP lawyers have a broad practice that stretches beyond patent, trademark and copyright law.

One of these is Lindsey Canning, partner at law firm White & Case who works in the firm’s global IP practice.

She is dual-qualified in the US and UK and previously spent five years working as a counsel in the New York office of Freshfields Bruckhaus Deringer.

Her practice can be described as having “three main pillars and one all-pervasive element”.

“I focus on IP transactional work—that’s any way possible to deal with IP in a transactional context (whether as part of a technology or brand-driven M&A transaction or joint venture or on a freestanding basis), with the aim being effective commercialisation and maximisation of IP value in a contractual context,” she explains.

“The second pillar is complicated commercial agreements, some of which have an IP bent while others are more general in nature. These include IT projects such as systems integration, for example when I helped a bank replace its global payment processing systems, but also outsourcing, strategic alliances, manufacturing and supply, distribution and other long-term commercial agreements.

“The third pillar marries the technical IP knowledge that I wield in a transactional environment with commercial contract strategising and negotiation experience,” says Canning, who leads business separation and integration transactions, helping clients with separation analysis and putting in place all required commercial agreements.

A focus on privacy advice completes the key aspects of Canning’s practice and is the all-pervasive element that links the three pillars together.

“I mention all of this because with the title of IP lawyer, you wouldn’t necessarily know that my practice covers all these elements too,” she explains.

Canning joined White & Case as a partner in April this year and is based in the firm’s London office. White & Case was founded in 1901 by Justin DuPratt White and George Case. They started the firm by opening it in a two-room office on Nassau Street in New Jersey. In 1926 the firm opened its first non-US office in Paris, which in turn made it one of the first US law firms to establish an office outside the country. Since then, the firm has grown to have 38 offices in 26 countries including in Europe, the Middle East, Africa, Asia and the Americas.

This international footprint was something which appealed to Canning before joining the firm.

“It fits with what I do and the breadth of my job,” she says.

“The practice of IP law is very broad,” Canning says. “From patent litigation to M&A and technology transactions—including those big commercial and separation agreements—it all comes under one umbrella.”

Future goals

In November 2015, White & Case published its 2020 strategy in which it highlighted a focus on targeted, profitable growth, particularly in the US and London. To achieve this, it aims to strengthen its work in four key sectors: financial institutions, private equity, technology, and oil and gas. It also plans to focus on three key practices—M&A, capital markets and disputes—to complement its strength in handling complex, cross-border work.

“Part of the strategy is continuing to build a world-leading technology practice,” says Canning. “That is exciting to me. Technology is one of the areas where you see your area of expertise as an IP transactional lawyer brought into sharp relief.”

The firm’s focus on M&A transactions is also music to Canning’s ears because “it means that I can get stuck in right at the centre of such a strategy”; the targeted growth on both sides of the Atlantic will mean that Canning can focus on strengthening and maximising the ‘transatlantic bridge’, which is a key element of her practice.

“I’ve got clients on both sides of the Atlantic and I’ve frequently worked on both English and New York law deals and contracts,” she says.

Canning is able to switch hats and advise on both New York and English law, explaining what the differences are and their impact for clients.

“These differences mean that a US-style document looks very different from a UK document. Although there is a lot of commonality when you do an M&A deal or a commercial agreement, there are some very stark differences as well,” she explains.

One area where Canning has helped clients navigate these differences is IP licensing.

Technology is one of the areas where you see your area of expertise as an IP transactional lawyer brought into sharp relief.”

“US licensing practitioners deal with IP in a way that would make total sense under US law, but once they shift that focus abroad they’re often not aware of the overlaps between IP and other laws in those jurisdictions.

“This is where I can help them: highlighting the licensing implications that arise due to the application of other national and EU laws irrespective of a choice of law clause,”
she adds.

“For example, there are different rules in different jurisdictions about whether a licensee has rights to enforce the licensed IP or not, and antitrust rules may mean that provisions that are acceptable in the US would be held anti-competitive elsewhere. My role is helping clients to navigate these differences and avoid results that they would not want.”

A commercial focus

“I apply a very commercial approach to my practice,” explains Canning. “I have to because a lot of the agreements I work on are very long-term in nature and often they need to be managed by client business teams once the lawyers have finished.”

She adds: “It’s very important to me when I draft to be clear, concise, pragmatic and commercial. It’s all about reflecting the commercial deal in the simplest terms possible, so that you have an agreement that can be used in many years to come by people who are not lawyers.

“White & Case has a strong commercial focus and the firm’s approach to client service ticks all those boxes.”

This approach also includes keeping an eye on the bigger picture in commercial agreements and “not getting completely entrenched in a particular point on a transaction, but understanding what the client’s and the other side’s commercial objectives are, and how that fits in with the deal context or the international perspective”.

Data protection developments

Canning considers that one of the material developments in her practice that will have the biggest impact on clients is the introduction of the general data protection regulation (Regulation (EU) 2016/679), which will start to be enforced from May 25, 2018. Through a series of detailed client alerts and the development of a practical handbook, “Unlocking the EU general data protection regulation”, White & Case has been at the forefront of providing useful, clear and concise information about how its clients can protect their rights after the new regulation comes into force.

The regulation replaces Directive 95/46/EC which, Canning explains, was enacted before “a lot of technological advancement. The aim of replacing the legislation is to address the new ways in which data is used and collected and to largely harmonise data protection laws across the EU”.

One of the biggest changes is the sheer size of the fines companies can face if they don’t comply with the new regulation. Under the directive, the maximum fines levied generally amounted to a few hundred thousand pounds, but the regulation increases the maximum penalties for non-compliance to the greater of €20 million ($22.2 million) or 4% of worldwide turnover—“a whole different kettle of fish”, Canning says.

“These fines were introduced by the data protection authorities to ensure that users of personal data really take notice of this legislation.”

IP lawyers, particularly in the UK, will have a number of different challenges to tackle in the coming months, with these and other legislative developments and questions over how the UK’s planned exit from the EU will affect ownership and protection of IP rights. It appears that commercially driven transactional lawyers such as Canning will certainly be kept busy.

Lindsey Canning is a partner at White & Case. She has experience advising clients on IP and technology matters in the context of M&A transactions, IPOs and joint ventures, and frequently acts on both the customer and supply side of a wide range of commercial agreements. She represents strategic and financial clients in a range of industries, including technology, financial services and automotive. She can be contacted at: lindsey.canning@whitecase.com