Chambers of J P de Mounteney

Notice: Due to an exciting career change,  J P de Mounteney has ceased to take new instructions and, subject to BSB approval, will ceased to practice as a barrister from 1st March 2024. 

Practice

I deal with a wide range of legal and inter-related commercial issues faced by businesses in the UK – with special expertise in relation to the IP-generating industries. I also regularly act directly for clients in relation to a variety of corporate transactions, including re-organisation, acquisitions, joint ventures and corporate finance.

Below is a (non-exhaustive) list of areas of law and commerce, in respect of which I have knowledge and experience:

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    Special expertise: Barking

This includes connected areas such as:

  • Employment
  • Commercial property
  • Financing agreements
  • International and internet enforcement
  • Anti-counterfeit measures
  • Regulatory and compliance issues

 
I am regulated by the Bar Council of England and Wales and act subject to its Code of Conduct, including, where relevant, its Public Access Rules. Instructions are accepted subject to a standard client care letter, which, amongst other things, clearly sets out the work to be done and the fee to charged.

 

 

 

 

 

 

 

 

 

 

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Origination

  • Establishing ownership of original IP
  • Acquisition and licensing of third party IP
  • Combined works
  • Reserved IP
  • Confidentiality
  • Originator warranties
  • Limitation of liabilities
  • Title and IP Searches
    • Employment
    • Freelance service agreements
    • Directors service agreements
    • Restrictive covenants
    • Compliance and Policies: health and safety/communications/data protection/safeguarding
    • PAYE, Schedule D, NI issues
      .

    Development

      In addition to the areas of ongoing relevance, outlined above:

    • Development finance
    • Development Agreements
    • Company setup and structural planning
    • EIS and Entrepreneurs relief
    • Investment options
    • Distribution options
    • Share options
    • Profit share agreements
    • Letters of intent
    • Associated Securities
    • Leasing and licensing of premises and equipment
    • Initial IP strategy (establishing internationally enforceable intellectual property rights/avoiding unintended infringement)
    • Formats advice (format bible content and creative considerations)
    • Development strategy

    For pilots, test shoots, beta releases, prototypes and test products:

    • Service agreements
    • Talent contracts (including deferred consideration where relevant)
    • Commissioning of props/sets/costumes
    • Music (demo agreements/synch licences/music publishing agreements)
    • Animation agreements (CGI, stop frame and live action compositing etc)
    • Equipment hire, purchase and sale
    • Location agreements
    • Child protection and safeguarding
    • E&O and production insurance
    • Budgeting scheduling and cashflow planning
    • .

    Production

      All those areas mentioned under “Development” and “Acquisition” above but in the context of a full production:

    • Commercial property lease and acquisition
    • Deficit funding agreements with broadcasters, distributors, angel investors, advanced funding from agents and licensees
    • Broadcaster commissioning and acquisition agreements, including commissioning specifications, delivery requirements and broadcaster revenue participation
    • Financial structuring – EIS, SPVs, IP protection, holding/investment companies etc (negotiating, drafting and implementing arrangements based on specialist corporate/tax advice)
    • Industry-specific agreements, depending on the nature of the product or content, such as: (i) producer agreements for music content; (ii) source code access and ownership for games and computer programming web-site development; (iii) hosting, storage and service and maintenance agreements for internet-delivered content; (iv) box office, ticket sales, concessions, and other funding arrangements for theatre and theme park content; and (v) union agreements such as PACT/Equity/MU/BECTU
    • Commissioning of third party producers in the UK and internationally
    • Reciprocal rights arrangements and international broadcaster contributions
    • Co-production arrangements, including investment option agreements and international IP ownership, securities and tax (negotiating, drafting and implementing arrangements based on specialist corporate/tax advice)
    • Advice on regulatory compliance
    • .

    Licensing and Distribution

    • Strategy planning and business plan development
    • Licensing arrangements as part of commissioning deals
    • Output deals, master distributor deals, international agency agreements; international television sales
    • Industry specific arrangements (such as (i) reserves against returns in the publishing/DVD market (ii) in-house agency deductions by the large toy distributors (iii) reduced royalty parameters on record deals and (iv) formats licensing)
    • Reversioning agreements (costs, ownership and access)
    • Promotional and cross-promotional agreements
    • .

    IP Strategy, Management and Enforcement

    • Title and trademark searching
    • Registered IP strategy: budgets, timing, priorities, language issues
    • Registered IP portfolio management (liaising with trademark and patent attorneys internationally to obtain and maintain IP registrations)
    • IP enforcement planning (budgeting/preparation of materials/ registrations with trading standards, customs associations and foreign government agencies etc)
    • Product labeling, telltale design, DRM
    • Information and publicity planning
    • Enforcement: (i) cease and desist; (ii) direct injunctive relief; (iii) IP infringement/passing off actions; (iv) liaison with government enforcement agencies (UK Trading Standards, FACT, WCO, AIC in China etc); and (v) seizure and destruction of counterfeit goods
    • .

    Corporate Work

    • Licensing or acquiring third party IP for development or production
    • Due diligence (corporate, commercial and IP as required)
    • Warranties, indemnities and limitation
    • Deferred consideration and contingent payments
    • On-going service arrangements
    • TUPE and other employment rights issues
    • Music licensing
    • IPO and Investment Prospectus drafting
    • Preparatory internal due diligence and re-organisation
    • Sale and acquisition documents*
    • Corporate Finance transactions*
    • Due diligence
    • Warranties, indemnities and limitations
    • Options, warrants and securities
    • Personal guarantees
    • * negotiating/drafting/implementing arrangements based on third party specialist corporate tax advice

    Other

    Aside from the principal areas of expertise above, ancillary expertise and experience includes:

    • Defamation advice and litigation, including as Junior Counsel Charleston v News Group Newspapers [1995] 2 WLR 450 (HL)
    • Content lawyer (UK television broadcast)
    • Privacy and breach of confidence
    • Common law contract disputes
    • Consumer credit litigation
    • Planning enforcement appeals
    • Judicial review
    • Commercial and residential property (including nuisance, neighbour and border disputes, dilapidations disputes)
    • Employment law (advice and litigation)