At NYIPLA’s recent Hot Topics in IP event,
in-house counsel from L'Oréal, Avon,
and Louis Vuitton shared some advice for outside counsel.
The in-house counsel present agreed that they appreciate
working with outside counsel who are concise and unafraid to
make recommendations. Lisa Gigliotti, chief trade mark counsel
at L'Oréal, explained: "I don't want outside counsel to
tell me the law and give me a thousand cases on it … I
don't have the time to deal with a lot of this. I want my
outside counsel to give me advice to move this way or that way,
and explain what each approach will cost me."
Brian McCloskey moved from Greenberg Traurig to his position
as Avon’s chief patent counsel in
2016, giving him a fresh perspective on the differences
between outside counsel and in-house, and the challenges of the
transition. McCloskey says you can’t hedge your
bets the same way. "Going in-house is about taking ownership of
the risks," he says.
"When you're outside counsel, you're told you should never
give straightforward recommendations in your memos … [As
in-house, however], because you are one step closer to the
business, you have to be one step more sure of yourself and
your position, and rely a lot more on your gut."
2. Know the
The deepest legal knowledge is useless unless it can be
applied in context. L'Oréal’s Gigliotti
explains that an understanding of her business is the most
desirable characteristic in outside counsel. "If you don't know
our competitors, channels of trade, or how we market our
products, you're really not giving me the best advice",
"Our business people are not in the business to litigate.
They're in the business to make money and sell their products.
So when we work with our outside counsel, I'm looking for
However, outside counsel need help in order to gain an
understanding of the business, and it takes communication on
both sides. In defence of outside counsel, McCloskey says: "We
expect outside counsel to know our business, but how can they
do that? By looking at our web page? We really need to invest
the time in developing our outside counsel so that they can be
John Maltbie, director of IP at Louis Vuitton, finds the
most frustrating part of working with outside counsel is that
they too often agree with him without adding value. "Avoid the
echo chamber", Maltbie recommends.
"I don't want to hear, 'Well that's a fantastic idea, let's
go do it.’ I want them to say, 'You're full of
it,’ or, 'This is not such a great
idea.’ I want them to bring their own experience
to the table. I don’t want to hear my own thoughts
mirrored back to me."
Lastly, the final characteristic of outside counsel that
in-house lawyers seek is respect. Pryor Cashman partner Dyan
Finguerra-DuCharme reported that in a recent survey a
surprising number of female in-house lawyers specifically used
the term "mansplaining" when asked to describe what irritates
them most about outside counsel.
Avon’s McCloskey said that a lack of
communication and focus on relationships may be the culprit
here. "If you don't work a lot with your outside counsel, they
might not know what your level of expertise is in a particular
area, so it's really important to maintain that relationship,"
With solid relationships and good communication, balance can
be negotiated for the other goals: sharing dense information in
a short time; giving direct advice while minimising liability;
knowing how business goals and legal options intersect;
supporting ideas while adding value; and delivering all this
information in a respectful, concise, and timely manner.