AiLsa Jayne Pemberton

ailsa.pemberton@legalstudio.co.uk

Commercial & Intellectual Property

I graduated with a BSc in Microbiology from Sheffield University and worked in the environmental sector and  pharmaceutical industry before retaining as a solicitor and qualifying in 1999. I started off in litigation and because I always maintained a strong interest in science, I combined the two and specialised in intellectual property. I now have over 15 years of dedicated IP practice experience behind me during which time I also completed a Diploma in Intellectual Property Law and Practice at the University of Bristol.

My in-house and firm experience spans IT, general commercial work, data protection, employment and regulatory matters amongst others. I currently carry out consultancy work via Legal Studio but also provide legal services to trade mark & patent agents and in-house services to a health care provider. My varied working history has given me experience of many different business sectors and means that I tackle issues with a strong commercial instinct.  I always provide a sensible and cost effective approach and though I mainly tend to deal with non-contentious issues, my time spent in litigation means I am well placed to advise of all aspects of IP, IT and general commercial matters and will assist litigation teams with any relevant specialist aspects of a case or dispute.

I joined Legal Studio in 2016 in order to regain some control of my working life and my time. I loved being a lawyer but with a young family to consider, I didn’t enjoy the unpaid out of hours commitments and marketing that went with working for a law firm. Joining Legal Studio has kept me feeling part of a team; there is always someone around to support and assist and the benefits of being part of a group of like-minded individuals with a wide range of legal and life experience is invaluable. We have regular practice meetings, have the excellent back up of case management systems, legal research tools and training.

As a self-employed business owner it is easy to lose your way but being part of Legal Studio prevents any of that. You are not tied to working 9 to 5 nor to an office/desk and there’s always a friendly voice on the end of the phone. The office atmosphere is also entirely different to being in a law firm as everyone is working because they want to and when they want to, so there is no Monday Morning feeling. I find now that my working hours are fulfilling and productive but that I also have the time and flexibility to have a proper work-life balance.

As well as the obligatory child taxi service role, my spare time is filled with cycling, walking, gardening and reading (in particular historical novels and non-fiction). I also love to travel and have visited the USA, Canada, Nepal and Australia amongst other places. I love spending time outside of work with my husband and young son. I am also very interested in interior design and currently enjoying planning the interior spaces in our part-built extension.

Specialist Areas of Interest

Non-contentious IP

IT Development Agreements

Contentious IP and IT

General Commercial

Ailsa's Latest Blogs

As freelancers, it is essential that you understand your rights regarding Intellectual Property.  Ailsa Pemberton, provides a useful guide on the points you need to be aware of when commencing new projects.
 
For the purposes of this blog, I am focussing on the scenario where you are creating works for others. You may be: an artist commissioned to create a bespoke art work; a web designer creating a site for a customer; a photographer taking wedding photos; a journalist writing about an exclusive scoop; a computer programmer creating a new App for a client; and so on. In the majority of the scenarios above, you will be paid for your efforts and, with any luck, the happy client may recommend you, thereby leading to further work for you.
 
In the majority of the scenarios above, you will be paid for your efforts and, with any luck, the happy client may recommend you, thereby leading to further work for you.
 
RECOMMENDATIONS CAN LEAD TO MORE WORK.
 
As a specialist intellectual property (IP) lawyer, I advise clients how to maximise the value from their IP. For many of my clients this may take the form of advising on protecting their IP or drafting commercial agreements to get a return from that IP, e.g. by developing, using, licensing or selling, to name a few methods.
 
For freelancers, the value considerations need to start before the IP is created. Many freelancers undersell their works. Remember, the customer wants to tap into your expertise and is willing to pay for that expertise.
 
DON’T UNDERVALUE YOUR WORK, IT IS YOUR INCOME.
 
One of the most important factors is recognising the type of IP you are creating. Most of the examples above create copyright works, but you may also be creating a patentable invention, a protectable design or a registrable trade mark.
 
To focus on copyright: copyright arises automatically, without the need for registration in the UK, upon the creation of an original work. As creator, you are the first owner of that copyright work. Ownership of such work can only pass when you give your agreement in writing, even when being paid. So, if you are to transfer ownership as well as the work, make sure the price reflects that.
 
You might want to think about retaining some elements, licensing or transferring only part of the works, and retaining others. The retained parts can then be used by you in the future. You could grant rights for a limited time, or in a limited territory or for a limited use. Full ownership should always cost more.
 
KNOW YOUR RIGHTS. FULL OWNERSHIP SHOULD ALWAYS COST MORE.
 
Moral rights should always be considered. Unless you are producing white labelled goods for your customer, it is prudent to insist that your details are displayed on the works. This will show others who created the works and hopefully lead to more work for you.
 
EXERT YOUR MORAL RIGHTS.
 
Always keep full records, including dates, of the creation of your works. You need to be able to prove you are the owner should the work be stolen, for example if the customer doesn’t pay but uses your work anyway.
 
EVIDENCE THE CREATION.
 
Some of the tips above arise from deep seated legal principles which I would be more than happy to explain further. Others are simply common sense. At the end of the day, however, a little knowledge is a good thing and will hopefully make your business more successful.
 
If you would like any further advice on IP issues please contact Ailsa Pemberton.
 
2018 51 08
Ailsa Pemberton
Who owns your website?
 
Did you use IT design consultants to produce your website? You may have supplied all of the information or wording required, but the style, layout, imagery and often some of the content is created or supplied by the designer. 
 
So, who owns the intellectual property (IP) in the website? Is it you, the instructing – and most likely paying customer? Or is it the hard-working designer?
 
It may surprise you to learn that without a formal transfer of the IP, ownership remains with the designer.
 
IP law has, over the years, been developed to protect persons creating the work. So, in the eyes of the law, the first owner of the copyright in a commissioned website is the designer or their employer, if they are an employee. This remains the case even if the designer is paid for their services.
 
Most assume that on payment, ownership will automatically transfer. But this is not the case. The only way that ownership can move is if the designer transfers the copyright to the client in writing. This type of legal document is called an assignment. If ownership is not transferred the designer could, at some later date, object to certain uses of the work.
 
If you think you may have an issue, please contact Ailsa Pemberton at ailsa.pemberton@legalstudio.co.uk or 0113 357 3208.
 
2018 25 08
Ailsa Pemberton
Things are not always what they seem. Sometimes, what appears to be an agreement is not in fact binding. On the other hand, a binding agreement can be made without the parties realising it. So, when do you have a binding contract?

A contract is formed when the parties have agreed on its essential terms. There are no particular formalities required to create a binding contract. It is possible to create a contract orally or by conduct, as well as in writing. 

A formal agreement is not always required. The parties may agree terms with the intention of preparing a formal document at a later date and it is often assumed that there is no binding agreement until then. That may not be the case. The Court will look at the parties’ words and conduct to determine whether it was intended they would be bound immediately or only after preparation of a formal document. Marking correspondence as ‘subject to contract’ will give an indication that the parties do not intend to create a binding contract. 

Sometimes parties will agree ‘heads of terms’ or ‘heads of agreement’ as a pre-cursor to a full written agreement. Generally, these documents are not intended to be binding but the Court may find that the parties did intend to be bound based on their words and conduct. Again, using the ‘subject to contract’ label will assist in demonstrating that the document is not intended to be legally binding until a formal agreement is prepared. 
It is common for parties to agree terms ‘subject to contract’ and then begin performing their obligations before a formal contract is in place. It can then be unclear whether the parties are acting on terms set out in pre-contract documentation; whether a contract has been concluded on more limited terms; or whether there is a binding contract at all. The outcome will depend on the particular facts of the matter. 

It may be that the parties have entered into a binding agreement, but that the terms are incomplete or it is too uncertain to be enforced. In those circumstances, the Court may find that there is no binding contract because the obligations are too uncertain and there is simply no way to determine what obligations the parties have. 
In order to be enforceable, an agreement requires ‘consideration’ to be provided by both parties. This is usually some form or payment or value. Where the obligations of one party are not sufficient to amount to consideration, payment may need to be made. It may also be necessary to have an agreement in the form of a deed.

Top Tips
  • Remember a contract can be made by email, orally or by conduct
  • Ensure all obligations under the contract are clearly defined
  • If it is necessary to start work earlier, ensure all key matters are agreed first
  • Ensure written agreements are signed by all parties
  • Mark all correspondence ‘subject to contract’
2017 34 22
Ailsa Pemberton

About Ailsa

“Huge thanks to Ailsa Pemberton. She swiftly helped us firm up the legal aspects of a technical support contract. And then refused to accept additional payment despite going over budget. "A deal is a deal" she said. Always nice to work with people who care about the bigger picture and long-term relationship over the short-term wins.”
Technology Software Advisor

About Ailsa

“Just a short note to say thank you very much for taking Just Webbit on, and giving us over to Ailsa. She was superb, and very patient with me and my frazzled-meeting-myself-coming-back brain!”
Gavin Stevens, Chief Website Builder, Just Webbit: