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In the Cards - Vanderbilt Lawyer (Volume 37, Number 2)

In the Cards

Supporting his family while going to law school led Bill Fenwick to a pioneering practice in technology and intellectual property law.

by Grace Renshaw Bill Fenwick

When Bill Fenwick entered Vanderbilt Law School in 1964, even he could not have predicted that he would become a pioneering intellectual property lawyer and a founder of one of the country's foremost patent and intellectual property law firms. During his three years at Vanderbilt, he gained both a legal education and an introduction to computer technology that led him to focus on technology law.

The introduction to computer technology came, oddly enough, through a job with a shoe manufacturing company Fenwick was forced to take to support his family soon after starting law school. Fenwick was no stranger to working full-time and going to school. He had moved to Chicago after graduating from high school and soon realized he needed a college education to advance in his career. "I started night school at Northwestern University," he recalls, "but then I decided to take a chance and go to college full time. I had no idea how I was going to pay for it." When Fenwick learned that Southern Illinois University had a student work program "where you could make just enough money to survive during the school year," he enrolled. "Tuition was some horrendous amount like $65 a quarter, including books," he remembers. "But being an older student meant that I got a lot more out of my college classes."

As graduation approached, Fenwick considered careers that would allow him to be his own boss. "I knew I would be the world's worst employee," he admits. "It just was not my nature to work for someone else. So I started looking at law schools." Vanderbilt offered Fenwick a scholarship that included a small stipend for living expenses, with the idea that he would be a full-time law student. "When John Beasley offered me that scholarship, I had made an oral commitment that I wouldn't work, but my wife and I had a child, and she was not able to find employment," Fenwick says. When Fenwick told Beasley, then Vanderbilt's Dean of Admissions, that he needed to work, Beasley recommended Fenwick for a job at Genesco, a major shoe manufacturer.

That job would turn out to be fateful for Fenwick. Genesco's CEO, Maxey Jarman, had contacted Beasley in search of a smart college graduate to work in the company's computer operations department. When Fenwick told Beasley he knew nothing about computers, Beasley replied, "They don't expect you to know anything about computers; they'll give you an aptitude test." Fenwick passed the test and was promptly hired for the new position. "My title was assistant control supervisor and scheduler," he says. "Genesco had a huge computer operation, and they were having serious problems with errors and undetected processing failures." Genesco's early computers received their programming on punch cards, some of which were manually typed by keypunch operators and some generated by previous computer runs. The systems in place to control the accuracy of these punch cards were ineffective, and to compound the problem, Genesco's managers couldn't tell whether a set of cards or a batch of reports generated by the computer system was good or bad until the system failed to work. When Fenwick got there, "they were leasing three airplanes each month to fly off to huge independent computer centers to rerun all the programs processed since the prior month to get a complete and accurate set of programs and reports," he recalls.

Genesco assigned Fenwick and a Ph.D. candidate whom Fenwick remembers as "a weird dude, but brilliant" to develop controls that would reduce the error rate and make it easier to detect runs that had failed to process correctly. By the time Fenwick earned his law degree, he not only understood computers, but he had also realized that the country stood on the brink of a technological revolution, and that technological innovators would require legal expertise provided by attorneys who understood computer technology and intellectual property. "I had that epiphany after I had been at Vanderbilt about six months," he says. "I realized that something I had known nothing about was going to be the dominant force in the last half of the 20th century and probably the first half of the 21st, and we were going to gain enormous efficiencies."

After graduating in 1967, Fenwick accepted a job with the law firm Cleary Gottlieb in Manhattan, despite the fact that "Genesco offered me more money than Wall Street" to stay. Fenwick's plan was to go to New York to gain top-level legal experience and first-hand knowledge of the inner workings of a successful law practice, and then move to a more family-friendly location and start his own firm. "I was naïve," he acknowledges. "I thought I'd spend a year in New York."

Even as an associate, Fenwick successfully pushed the traditional partners at Cleary to modernize. "When I got there, they had nothing but manual and electric typewriters," he recalls. "I talked them into acquiring the first ibm word processer. It was a tape-driven machine, but you could produce final documents about eight times faster." One client with whom Fenwick forged a lasting relationship during his time at Cleary was a high-fidelity electronics company appropriately named Pioneer.

Within nine months, Fenwick was receiving substantive assignments on cases involving technology and intellectual property rights, thanks not only to his technological experience, but also to his ability to interact with clients. One significant case involved working with a Cleary partner to represent Smithsonian Magazine against an automated subscription fulfillment company whose poorly designed system for managing subscriptions had cost the magazine a tremendous amount of money and resulted in the loss of many subscribers. The fulfillment company had refused to turn the subscriber database back over to Smithsonian; the Cleary team asserted that the database was Smithsonian's intellectual property. A partner with no background in data processing was delivering an oral argument—"We were seeking a court injunction that would require the fulfillment company to turn the database back over to Smithsonian," Fenwick recalls—when Smithsonian's general counsel stopped him and said, "I think you really want to let Bill present this matter."

"The subscription database is the only thing a magazine owns that's really worth anything," Fenwick explains. "We got the other side to turn over the database they were attempting to use to extort exorbitant fees." That victory netted Fenwick other magazine clients, including the New York Review of Books.

However, Fenwick lost the case he views as one of the most important in his career when he failed to persuade a judge that a facilities management company had a fiduciary duty to his client. The client, Financial Services, Inc., performed the data processing services for thousands of mortgages from hundreds of banks and mortgage companies in its data processing center. Financial Services had contracted with a management company, which had agreed to hire the employees at the center and service the mortgages. But problems started soon after the takeover; banks were not receiving timely payment from borrowers because of processing delays. "Homeowners were receiving late notices because the banks hadn't received their money, and it became a huge mess," Fenwick recalls. "Financial Services terminated the contract and took control of the processing center again, but they ended up with tremendous liability, and they lost a huge amount of money." On behalf of his client, Fenwick maintained the facility management company should be considered a fiduciary, which would require it to meet a much higher standard than that of an ordinary contractor. But the judge did not accept the logic that a company managing another company's crucial and proprietary assets assumes a fiduciary role. Although Financial Services was awarded a settlement that covered its losses, from Fenwick's perspective, "we lost the case," and he remains disappointed by that verdict to this day. "That was a seminal case," he says. "If I had won that case, there would have been a substantive change in the law."

Fenwick and three other associates left Cleary in the early 1970s "for the express purpose of starting a firm that would focus on technology." The firm quickly attracted attorneys with degrees in computer science and engineering. "In the beginning when we had about 20 lawyers, at least three or four had advanced degrees in engineering or computer science," Fenwick recalls. At the new firm, Fenwick adopted personal computers soon after they became available and pushed young attorneys to use PCs and work stations to type their own documents rather than dictating them for a secretary to type, a practice that was controversial in the early 1970s. "When you're drafting something like a pleading, that's when your brain is totally focused, and you can remember every time you make a conceptual change," he says.

The original firm, Davis Stafford Kellman and Fenwick, is now Fenwick & West, but its major focus remains high tech companies and companies that depend on intellectual property and technology for their success. Over the years, the firm has resisted offers to merge with larger firms.

Fenwick acknowledges that it was sometimes difficult litigating cases before judges whose knowledge of technology was limited. "From the beginning, it was a teaching process," he says. "You had to figure out how best to educate them. I ran into some judges who said, 'I only want to know enough to get through this matter,' but by and large, they were grateful to be educated. To the extent that I had any control, I would try to get my matters into the federal court."

As a litigator, Fenwick had an advantage: his accent, which still contains a muted hint of Appalachia. "I purposely made an effort not to destroy all of the remnants of it, although I'm not sure I could if I wanted to," he says. "It worked to my advantage, because judges liked to listen to my accent. I think part of the advantage is that people with a Southern accent talk slowly enough that judges can pick up the story without devoting 100% percent of their attention to you. It also goes over pretty well with juries." And opponents who underestimated Fenwick when he litigated high-profile intellectual property cases quickly discovered they had made a potentially fatal error.

Today, Fenwick & West has approximately 250 attorneys based in offices in San Francisco, Silicon Valley, Seattle and Boise, Idaho. It's telling that Fenwick is one of two original partners who has yet to retire. "I can't imagine Bill retiring," says partner Charlene Morrow, a patent law expert who delivered the 2008 Fenwick & West Lecture at Vanderbilt in October. "He has too much energy." As if to reinforce Morrow's point, Fenwick launches into a discussion of his newest area of interest: intellectual property rights relating to artwork. "If you buy a painting, do you know that all you get is the right of possession of the actual work?" he asks. "Five of the six rights under the copyright laws still reside with the artist. All purchasers own is the physical artwork unless the other rights are explicitly included in the sale."