INTRO
Sarah Abou-Eid (Careers and Sponsorship Director): Hello and welcome to the FAME Law Students’ Association’s podcast ‘The Brief’. For the uninitiated, FAME stands for film, art, media and entertainment. The FAME LSA is a group of students from Melbourne Law School who are passionate about the arts and culture. In this podcast series, we chat with lawyers and artists, working in the creative industries, learning about their daily work, career development, and topical issues facing the industry.
In this episode we chatted with James Samargis. James spoke to us about his journey to the Victorian Bar, his favourite cases to date and how his positions on the boards of Craft Victoria and the National Board of Design have shaped his approach as a lawyer. He also provided incredible insights as to how to effectively represent ordinary, everyday creative clients and how you can begin to cultivate this skill as a law student.
INTERVIEW:
Sarah: Thank you very much James Samargis for joining us for this interview about a day in the life of an IP barrister. To start off our conversation today, James I was hoping you could tell us how you got to where you are now and how you were driven towards becoming a barrister in the creative sectors.
James: Great, thanks Sarah.
When I was at university, I studied Science/Law and had honours physics degree and then continued and completed the law degree so when I finished at university it was always on my mind to try and combine both degrees in some way, and that led me towards initially a career with a patent attorney firm. Uh, a private patent attorney firm where I received a lot of training in the obtaining of registrations, whether it be to obtain patent registrations or trademark registrations or in fact, industrial design registrations, and that was at a time when patent attorney firms didn't really have associated legal practices, so I was a bit unusual to have both while the law degree but aspiring to be and qualified as a patent attorney. But ultimately I did obtain the patent attorney qualification to add to the law degree and working then subsequently for a couple of years in a top tier law firm, um, I recognized that probably just being a solicitor wouldn't suit me and I was always drawn to barristers anyway, I had a few barrister friends and I just seemed to like the fact that they were closer to the legal problem or they were dealing with the legal problem absolutely at the edge of the dispute, so it brought me towards the bar and I joined the Victorian bar in 1990.
Sarah: Excellent thank you for sharing that.
I read online that you were previously the chairman of the Board of Craft Victoria and are currently on the National Board of the Design Institute of Australia. Has your time on these boards had an impact on the approach you take when it comes to being a barrister?
James: Yeah, yes it has. Absolutely. I think what you learn when you sit on a board firstly is that you're bringing your skill set as a lawyer or practitioner to assist the board in the directions that the organisations want to go in and you, you're really there assessing risk, so you wear a different hat to when you simply advise on risk, you're actually making a decision about whether you're going to take the risk or not, and the decision-making process in a way which is a strengths, weaknesses, opportunities and threats type analysis is not always the way you work as a barrister.
And so to some extent, if I may just add here that a barristers looking backwards in time, the problem already exists and you're just solving well, who's to blame for the problem, in a in a very simplistic way.
But the impact of being on those boards is twofold. Firstly, it's given me a sense of what it is like to be in business and the sort of pressures and drivers that sit in business. And the second thing is it brought me much more closely to working practitioners in the creative fields and so you have a much stronger an immediate sense of the sort of needs that creatives have. And you can see with Craft Victoria and the Design Institute of Australia that my leaning is more towards what I might describe as designed objects or objects in the round. Although, obviously Craft Victoria now would embrace mixed media outputs, but it's essentially what I might describe as traditional small batch output or more traditional industrial manufacturer, and so I really enjoy dealing with those sorts of workers artisans, and also people in industry.
Sarah: Awesome, that's really great. It reminds me of a conversation that we had at the networking night. I'm not sure if you will remember, but you said something along the lines of you’re barrister for creatives. Oh, and you're very focused on being a barrister who represents, yep, creative clients so.
My next, sort of, goes into the next question, which I had for you is. What do you consider to be the essential skills and qualities of a lawyer working within those fields? So, what do you consider to be essential skills and qualities of a barrister who represents or works for creatives?
James: Creatives are essentially the engine in society. If you don't have a creative person, you've got a flat line society. Uhm, the creative thinker for me is non-linear. You're not going to get very good creativity if it's entirely a kind of tick the boxes exercise, and so I think one of the most important thing is you have to be able to move between what might be considered linear legal thinking and nonlinear thinking, which is the realm of the creative. I sometimes joke, you know, the creative might talk fluff, but you've gotta get it. You've got to really get it and you've got to be able to translate that back into relevancy for whatever might be the legal dispute. Or take that information, probe it, and know how to probe it, perhaps with the vocabulary set that is true to the creative. Because if I start spouting legal expressions to the creative, I mean they'll just glaze over. So, you've got to be able to know how to not just unlock trust, but be able to get the information you need, and then maybe repeat it back to them once their way, and then once in a legal way so that they can appreciate or begin to master the fact that it’s a collision of different worlds. And that's a skill in the quality you need. I think you have to be a little bit creative yourself I think to understand a fellow creative and I'd like to think I've got some of that. I wouldn't put my hand up to say you really want to see that sort of creative outputs that I'm involved in, but certainly as a lawyer if I didn't follow the subtleties of where a client might be going with their product or whatever might be their creative output, and you know, I mean, I've said, you know I'm dealing mainly, you know with objects in the round, but you know, I've got fashion designers, I've got architects, I've got some furniture designers, interior type thinkers, where you know, sometimes it's not always a solid object that we're dealing in. I've done some artwork but not greatly. But in the end, I think it's if the question is again an essential skill or quality for creative fields, I think you've got to have a little bit of internal landscape for you to then be able to grasp what they're saying and make that translation back into a legal, legally coherent statement for, for whoever might be the audience, whether it's writing a letter back to a lawyer on the other side or dealing with the judge.
The problem is usually lawyers are not often boutique lawyers in IP and so sometimes your role back to the lawyer on the other side is to educate them a little bit In in, in language that is persuasive and I mean that's interesting for me. But I think once you've got some capacity with those sorts of skills, you can do IP and it as a career and it wouldn't really matter that you're not particularly skilled at the beginning, but if you've got a genuine commitment, uhm, you very quickly begin to understand what you’re meant to do.
Sarah: And with this internal landscape that you're speaking of, for students like me who are still at law school, is there, do you have any advice or tips for how we can start to hone that skill from now? Or is that something do you think that comes with the experience that you've had and the practice that you've dealt with?
James: Look, yeah, look. I think it's a little bit - pay attention to your truest interests or passions.
I'll mention a name. Bryce Menzies is an entertainment lawyer and he's been a producer on many, many films. He wouldn't do that it if he didn't have a true and sincere interest in film. And I think Shaun Miller is another person who's likewise in that sort of way. But I think of Bryce because Bryce didn't necessarily come from a family that was engaged in film, whereas Shaun does. So, I think where you've got an interest and you pay attention to it, and certainly in the modern era, now we've got all kinds of different or new arenas and platforms for creativity.
So, for example, a particular lawyer, Alanna Kushnir has jumped right in to become a bit of a specialist with non-fungible tokens, and everything that's growing around the metaverse. Now you know when I started in the law I mean that those things didn't exist, but once you recognize look, that's a bit of where a genuine interest lies you build on that because you're sort of mixing with those sorts of people. Might have equally said sports law. You're naturally a sporty person. You're concerned for what might be issues in sports law. You gravitate towards being a sports lawyer, you know.
But in the arts, certainly for me, I suppose, I've got a very strong visual sense. I'd say I'm more visually triggered even though I work in the realm of words. You know, I'll go into a room as the joke. I'm not really interested in the people I'm more interested in the moldings on the ceiling. I mean I look at the visual space. I'll admire visual things in, including, you know, attractive people. Before I decide, I'm gonna engage with the people and their problems, so I'm suited to IP. You know, I get. My problems concern inanimate objects and I joke, but I do leave it to others to worry about civil liberties. You know, workplace injuries? You know the whole plethora of things that is the broad-church of the law. And I like my space.
Sarah: That's really great to hear 'cause I know FAME gets a lot of students who come to us with those creative passions, and they're a bit concerned of how they're gonna sort of pursue a career in law and also incorporate their creative passions. So to hear from you that that's possible and that it's probably encouraged, is great. Thanks for your insights on that.
So my next question I have is...So I know that you've been in the legal industry for quite some time, but we're itching to know a bit more about your experiences. What is your most memorable moment in your career so far and why is it your favorite?
James: Look, I've actually in trying to prepare for that question I probably if I could mention four cases. And it's also because I very much like the client that I acted for in each case. I think I'm very suited to being a defendant's barrister. Which means sometimes in response I'm going to say two things - that perhaps one that we haven't copied at all. We've done something different or to the right that you claim to have, you don't properly have. Or maybe the right should be invalidated if it's a registered right for various reasons, because maybe there's some prior art history or something where you don't deserve your registration.
So, the first example I'll give was a mattress. It was a case about mattresses. So, how's that for sleeping on the job? And it was a mattress that had what was called a pillow top and it had really just 2 sewn over locked piping. It's called piping, but it's basically one at the absolute top edge of the mattress and one a few inches down, giving the impression of a pillow top mattress. Now I mean, you know. Some people help you know, poor refugees locked away for years to gain their freedom, that I've got a case about a pillow top mattress which was just this bit of beading just some sort of a ribbon. Anyway, well, the laugh of it was the question, the design question is a registered design and we were seeking to invalidate the design and we actually ended up going with the special leave application to the High Court that got knocked back. So, we ended up in court on multiple occasions having one at first instance, lost on appeal and then moving to a special leave application to the High Court on a very narrow question. It was called, I think it's called Comfort Sleep v Radberg**, but anyway, for those that want to read it. It was a memorable moment because it caused my career for the first time to end up with a special leave application in the High Court. The client was fantastic. He leaned over to me in the course of the Full Court Appeal, and he said, “Jim. I don't know what's going on”. I said don't worry about it. Leave it to us because the client is just a manufacturing client with some design ideas. Then suddenly he found himself in very deep water and a long way from home.
And another case I did concerned a power board. A very simple plug into the wall with maybe three or four plugs for you to then plug in more plugs. Normal electrical three prong plugs that we all know. My client is as a very, very well-known supplier of light bulbs and these sorts of electrical goods. I won't mention the name and we received a letter of demand saying that we couldn't make and sell the power board that we could make and sell, well, looking at the basis for the allegation, and it was a passing off allegation to do with the other side’s product where they were alleging through sales they had an exclusive reputation for the look of their power board. And I said, you know, in in internally I said, well, that can't be right. So suddenly because I like the clients as well, I was on a mission to find other power boards in the space that could show and prove that what was being alleged against us was not correct, and in the end, I mean, you know I'm racing all over the city and it's a bit strange because I know what I'm looking for. And it's very hard to explain to the client, so I raced all over and then ultimately I don't know whether it's JB or Myer or somewhere else I found a product which is manufactured by Belkin, and that's a third party product, but it was a king hit reply and defense to the allegation that we were somehow engaged in passing off and so what's very good even as the lawyer is that in that case we wrapped up what was going to be a major fight in, you know, in court with a very strategic letter in response backed up by prior out evidence.
So, as you can see mattresses power boards, it all gets a bit boring.
The next thing involved an electronic device worn by sportsmen. More or less in their jacket or there, you know, sports jumper or something. And what I was doing it was tracking injuries or hits to the body. It could track your movement on a sports field and would also track hits to the body. There's a great deal of interest in sports law that has to do with impact, impact injury and knowing when to pull a player off so they don't have a permanent injury and they've got recovery time. So, this is early days. My client had developed a device and the Australian Institute of Sport had developed a similar device and so the game was on as to whether or not there was an infringement of a patented right, and again we were on the hunt for some prior art and this all really related to more or less like a GPS tracking and measuring along with impacts and just through sheer dogged I can't tell you dogged persistence to keep searching and searching and searching that there must be something out there, we did ultimately find something that had been used in Austria and Switzerland where they had built a device somewhat like this in a helmet of a skier and then suddenly in a in a rather obscure, published article we had a very beautiful description of something very similar to the patented device and we rolled that out to the other side where they pretended that this was not relevant, but otherwise they were now prepared to settle. So sometimes you have to sit back even though they pretend that they're still right and you're so wrong. And that was a sweet win.
And finally, if I may, because it's the most recent of my matters. So, for example only in these, only the mattress cases is a reported decision none of these other cases are reported, although they were litigation.
The final thing involved something as banal as metal stripping like you would find around the edge of a shower, shower door. Let's think of it in terms of bathroom. Like you've got a shower door and you're opening it and it's all got metal frame around the glass and all that. So that kind of boring stripping, so if you were to cut it like take a piece of it and cut it, you'd sort of see in cross section, it's maybe U shaped or something where the glass fits into the metal. All right so gee you know James Samargis barrister has got a case about metal stripping like we're gonna get excited. I'm very excited.
Sarah: You can tell.
James: The client the client was just, just one of God's children and he was just being attacked and attacked and attacked and this is where you get a crossover. He'd been a former employee of a competitor of, a former employee of a similar business. He was-He was looked over for a promotion, so he decided that he'd leave and ultimately opened up his own business.
What fuels a case? That's quite important and what really fueled the case was that his former boss was very, very upset to have lost such a talented employee. So, his former boss went on a mission to find anything to block this new business, because of course my client, opening up in his new business, very, very capable, and suddenly he was a very serious competitor to his old boss, to his old boss's business and so. In that case. Well, we ended up having to own up to a trivial copyright infringement, and it's so easily done where he'd had drawings and he'd more or less sent them by email back to himself and a colleague. Now that's a technical copyright breach. And whilst we alleged there was no because it went to a colleague, right?
Sarah: Yeah, yeah.
James: I've attached the drawing, a technical drawing, the drawing with measurements of, you know, something as ordinary as you know, metal stripping. The case turned on this point that even though this copyright legislation that says, once you've industrially applied an object, you lose artistic copyright rights, the drawings had measurements and other information, so they were able to run the case on the basis that we had breached literary copyright. And even though there is the High Court case ICETv, which says a literary copyright has to serve a literary purpose, and that's a High Court decision, it's none-nonetheless, there is lines of authority that that this kind of taking and copying leaves open an attack that you've breached literary copyright. Now, for my clien’s sake, we didn't really want to run a full on trial for many hundreds of thousands of dollars, so I said look, I think we're going to have to, pardon my French, but you know, I think we're gonna have to suck this up and we're going to have to accept that there may be some damages payable here. And at mediation we were able to reach a settlement. Very favorable still to my client, given the risk profile, and also acceptable to the other side, but nonetheless we did raise a very, very serious defence of you know, loss of copyright and no other extent rights, particularly because it was a purely technical breach. No one ever relied on those drawings to produce any actual goods that were then sold in the market as competing goods. It was-It was the most thin, uhm, mistake, so to speak of misusing a document and again, you know my client when you talk about, you know memorable moments, I think the thing is because my client was a businessman, but it was just so sincere and so upset to find himself in trouble that it was just a pleasure to get him out of trouble. And that's a memorable moment.
Sarah: Yeah, it sounds like, for you, most of the memorable moments is, yeah, not really the facts of the case or any specifics about the case, 'cause you know we're dealing with mattresses, but yeah, the clients and yeah the client, mainly the clients, 'cause every time you spoke of the clients your face just lit up. It's really nice to see.
James: Yeah, I mean and that's what you like about creative's too, because yeah, the minute they’re in the company but they need help. And the minute you've got the ability to offer them that help you know. I mean, you feel valued.
There’s subject matter. I mean, I've got a very diverse practice. You know, as I said, you know, it could be, you know Alta Moda or sort of haute-couture fashion. One day it could be, you know somebody just printing a book. I acted once for an illustrator who was doing drawings that were going to go into a cookbook. The chef was a TV Chef, the artist was just an artist happy to assist and suddenly the drawings were going to be used for purposes beyond the cookbook and that became an issue that's very very common and the artist needed that champion to come forward to guide them on what they could say or couldn't say in terms of controlling where and how the copyright works got used.
Sarah: Do you think that there is room for more information to be given to creatives just so that they don't find themselves in this in these situations where…
James: Yeah, look there is and there's plenty of places to find it, but it's just sometimes not, in the language of creative. I think there's opportunities for I, I mean, even with COVID, whether it's done by, you know Zoom or some other teams way to have just seminars where I think creatives get to ask their questions. I think the problem is that particularly copyright law and even design copyright overlap. I think the laws become far too complicated from how creative would understand it. And I had, uhm, even my nephew, who's a builder. He's thinking of doing a design for a jacket to be worn by, you know something like a carpenter so that it stores things with various pockets and stuff and he wanted some advice. I gave it to him and he said, well, he said, has a normal person gonna understand this Jim? And I loved him for it because and I said, well, maybe you've got to ask somebody who's not normal like me and we burst out laughing.
Sarah:
Honestly, yeah, in law school. Yeah sometimes when I'm reading the legislation I'm like, yeah, I think I'm I think I'm not normal, but willingly choosing to bring myself to that.
James: Yeah, so the you know so the thing is that. The thing is that looks sadly a maxim that I have come to live by is where do I stand? Yeah, and it's the easiest thing. Where do I stand and what am I? What can I can't I do in this situation and the where do I stand for a creative now is it's probably a little bit overly complicated. The average person and particularly average creative and some creatives, obviously creatives in the jet stream doing very well. We can only applaud them, but many creatives are just foot soldiers and they make they make a humble to average living and they certainly are not looking for trouble and they're very spooked when they are in trouble. So, I suppose finding yourself in a collective group, uhm, where there's opportunities as to exchange discussion, adjust between yourselves at peer group, peer to peer group level, but then once you're in an association of some sort that the association comes forward and offers the kind of opportunities where people come and speak, and convey that information back. I mean, I certainly do that with the Design Institute of Australia. I've done it at Craft Victoria. I’ve also I've lectured at RMIT to industrial design students and fashion and textile students so I think you know where you can you do give back but the thing is that every generation in every year produces more and more creatives. Melbourne’s a very creative, I think as a city we we are highly creative and so every year the need is always still there, yeah.
Sarah: Thanks for that. On the flip side now, what are some of the challenges of your career so far?
James: Uhm, probably energy and stamina. I think that's very hard. I think when you run back to back cases and I can come back from…It really depends. If you're somebody who's very energized by the work, uh, you know come back pumped and ready for the next day but I've got a personality where I give a lot and I find my job kind of exhausts me. So, I'll finish a case. I mean, I can bring the papers if you if anybody come to my chambers, I mean the floor is just, I just drop the documents, I just walk, you know, bang and I just think, oh God, you know. So, I think stamina or keeping yourself on the go, that can be particularly hard when you're back to back.
Probably another thing being perfectly honest is seeking to take the next step up. I'm not a senior counsel or QC. And, you know, I think you would be lying if you said it's not something of interest. I mean, you're not running your career as a hobby. You're running your career for a win, so to speak, and that certainly, I think, uh, mark of distinction to aspire to, and it keeps you working hard. But that would, I think, be a challenge and I respect it sufficiently that I'm I've, you know, it crosses my mind, but I don't necessarily aim for it. I think you know, when you're very ready. Uhm, and I just feel I need a couple of probably more sorties, if I can call it that more sorties into the courtroom, I think covid over the last two years are sort of ripped out a bit of momentum and a lot of clients now much prefer to settle at mediation and other things so you haven't quite got your name on back to back reported decisions which I know that being a QC and being a leader of the profession is sort of required of you. I mean, I've just issued a patent infringement case. And you know, will it go to trial or not? We don't know, but I mean if I was a respondent in my case 'cause I'm the applicant, I'd be settling. They're not hiding to if they think they're gonna win that one, but there you go.
Sarah: Very competitive person, I can see.
Thanks for sharing that. I think we've touched on this a little bit so far, but I'll-We'll still go ahead with it if you could give one key piece of advice to a law student hoping to follow in your footsteps, what would it be?
James: Look firstly. Be a good lawyer. Be a good lawyer. And that means know your law but also be a good lawyer to your client and give 100%. You know your client walking the door with a legal problem, but you really don't know your client. It does pay attention to learn and understand well what is fueling the case. If somebody suing somebody, you know when they could otherwise just sit down, discuss and resolve, but I'll know they've decided to sue. There's something fueling the case. Either one party wants to put the other one out of business or one party's got a bit of a vendetta going. There's a reason for being if, pardon my French, such an arsehole that you're issuing a proceeding. So be a good lawyer. Be a good lawyer to your client. Give 100%.
To be a good lawyer I would say build a base and you can see what I've done in my career. I did science, I did law. I combined it by qualifying as a patent attorney. I worked there for a couple of years and then thought what's the missing next piece? I went and worked in a large firm which wasn't a patent attorney firm, but that's where I got the exposure to litigation as a solicitor. And then having all those components I said, am I ready now to come to the bar? And so, I had a base when I came to the bar. I didn't have an immediate IP law practice. I'm not naturally a major marketer to sort of you know, pardon my French, truck my shit you know, I just do the work and I year on year I had a focus to build my IP practice to the point where now it's all IP and I wouldn't-I wouldn't dare do a pure commercial matter, although I've had one recently because it was a licensing dispute involving technology, but I think if you build a base, uhm, that's how you can, if you're saying the question was following my footsteps or effectively, just enter into the profession and really be able to move in the direction you want to go.
If you've got a point on the horizon, you know that's what you want to do, Always think, even if it's a baby step how am I walking towards that dot on the horizon and try not to get too distracted. I think what you'll find is extremely interesting. Reach out to people and you’d be so surprised the capacity for people to see that you genuinely want it, because you've done some other things. You might have done a masters in IP for it. You know the minute you've done in masters is in IP, you're telling the world I want to do IP. And strangely, clients you just don't know the doors that a client can open for you. And certainly in my career they've been clients who have been marvelous to work for and then you know through recommendation or other things you know you, you find that you're growing an IP practice. Or, or you're being mentioned in circles that you would not otherwise have an on trade to, so that's really all you have to do. Try and be consistent. Try and have a message that's consistent. You know so, if your IP say it, walk it. Talk it. And you know, even if you're not doing it, you know you can join something like IPSANZ, you know Intellectual Property Society of Australia and New Zealand, you know, so that you're mixing with those people.
Sarah: Yeah, that's some great advice. Thank you so much for sharing that.
And just to finish off just a fun little question at the end that we ask all of the guests that come on here. What is your favourite legal movie or TV show?
James: I never thought you'd ask. If I was going to say a favourite show, it was a 2000, it was done in 2000. It was done as a TV show and they only did one season of it, regrettably, but it's called North Square and it's an English show and it's actually about barristers and I found that one of the loveliest films that, well, you know, TV, dramas that I've ever ever watched and even now just thinking about it I thought it was very true to life and just excellent North Square.
Sarah: Awesome, North Square and have you rewatched it in the years past?
James: I won't say I've rewatched it. I'll say I've lived it.
Sarah: OK, which is better right?
James: I don't know. I've lived it. How’s that?
Sarah: No, that's great answer. So, James, thanks so much for coming on and it's been a pleasure to chat with you about you and your career. Uhm yeah, thanks so much for coming and for having me and answering all my questions.
James: And thank you for the invitation. Thank you, Sarah.
OUTRO:
Sarah: You’ve been listening to The Brief with FAME LSA. This episode was hosted by Sarah Abou-Eid. The theme song and sound was produced by Leah Alysandratos. A very big thank you to James Samargis for chatting with us. Special thanks to Tanvi Dharwal for producing the transcript available on our website. Thanks also to all past and present FAME LSA committee members and ambassadors for their support. And thanks to you for listening!
If you want to hear or learn more about FAME LSA, like us on Facebook and Instagram, or visit our website at famelsa.com. If you’re a lawyer working in the film, art, media, publishing or entertainment space and want to get involved with FAME, we’d love to hear from you. Send us an email at general@famelsa.com or careers@famelsa.com.