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Marc s. friedman slides for legalbooster

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Anne Veerpalu
Anne Veerpalu

This document provides guidance on controlling legal and cultural risks when doing business in the United States. It discusses major legal risks such as commercial liability, intellectual property claims, and employer liability. It also outlines methods for reducing these risks, including selecting an appropriate business structure, obtaining proper insurance, implementing employee training, and carefully drafting agreements. The document concludes with tips for navigating cultural differences when working with American business counterparts.

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CONTROLLING THE LEGAL AND CULTURAL RISKS OF DOING BUSINESS IN THE U.S. Marc S. Friedman Dentons US LLP New York, New York mfriedman@dentons.com Phone +001 212 768 6767 June 2014
Locations Month Day Year Dentons US LLP Document reference # 2
Offices by list Month Day Year 3 Optional subhead here Key Canada United States Europe Central and Eastern Europe Africa Middle East Asia Pacific l Offices Associate offices Facilities u Associate firms + Special alliance firms l Calgary l Edmonton l Montr辿al l Ottawa l Toronto l Vancouver Atlanta Boston l Chicago l Dallas l Kansas City l Los Angeles Miami New Orleans l New York l Phoenix l San Francisco l Short Hills l Silicon Valley l St. Louis l Washington, DC l Barcelona l Berlin l Brussels l Frankfurt l Madrid l Paris u Zurich l Bratislava l Bucharest l Budapest l Istanbul l Prague l Warsaw u Accra u Algiers u Bissau u Bujumbura l Cairo u Cape Town u Casablanca u Dar Es Salaam u Johannesburg u Kampala u Kigali + Lagos u Luanda u Lusaka u Maputo u Nairobi u Nouakchott u Port Louis u Praia u S達o Tom辿 u Tripoli l Abu Dhabi Amman u Beirut l Doha l Dubai Kuwait City l Manama l Muscat Riyadh l Beijing l Hong Kong l Shanghai l Singapore United Kingdom Russia and CIS Central Asia l London l Milton Keynes l Kyiv l Moscow l St. Petersburg l Almaty u Ashgabat l Baku l Tashkent Dentons US LLP Document reference #
Why should we come to the U.S.? Month Day Year Dentons US LLP Document reference # 4 U.S. is the premier location for new business investment GDP of $16+ trillion - per capita $52,000 Population of 320,000,000 Under free trade agreements access to $25 million more for goods and services produced in the US Well-educated citizenry with world's best university system, and thus availability of highly- skilled labor
More reasons Month Day Year Dentons US LLP Document reference # 5 Respect for intellectual property and a strong enforcement regime Most brands not considered truly global without a U.S. presence Stable democracy Accessibility of investment that prefers a domestic presence "Businesses operating in small markets in other countries can become large, dynamic firms in the United States." U.S. Dept. of Commerce
THE BOTTOM LINE? Month Day Year Dentons US LLP Document reference # 6 The U.S. can be a very fertile area for expansion of your business There are legal land mines which can be eliminated or controlled through a careful entry plan There are cultural problems you can encounter if you are unaware of them None of the legal land mines or cultural risks should prevent your expansion into the U.S.
Methods of entry Month Day Year Dentons US LLP Document reference # 7 Start your own operation Enter into a joint venture with a US partner Acquire or merge with a U.S. company Each method has its own features and risks There are risks and concerns common to all three methods of entry
Major legal risks of doing business in the U.S. Month Day Year Dentons US LLP Document reference # 8 Commercial liability Personal injury liability Regulatory violations Employee-related claims Intellectual property claims (including patent infringement claims) Losing intellectual property rights Data privacy violations
Additional legal risks Month Day Year Dentons US LLP Document reference # 9 Litigation and other judicial or quasi-judicial proceedings Tax consequences Immigration violations Transferee (imputed) liability to European entity Officer and Director liability
Controlling the legal risks by formation Month Day Year Dentons US LLP Document reference # 10 Selecting the best business structure (corporation, LLC, other) Create a subsidiary, sub-subsidiary or other to insulate upstream companies from liability Place IP in another company with licensing agreements Identify the most suitable state of formation including from a tax perspective(usually Delaware) Identify where you must qualify to do business Obtain necessary licenses and permits
Controlling the legal risks through insurance Month Day Year Dentons US LLP Document reference # 11 Commercial general liability Property and casualty insurance Product liability insurance Worker's compensation insurance Vehicle coverage Errors and omissions Directors and Officers insurance IP infringement insurance Agent v. broker
Employer liability Month Day Year Dentons US LLP Document reference # 12 Possible employee claims Sexual harassment or discrimination in hiring, firing and workplace conditions Wrongful termination or denial of benefits Can arise under Federal, state and sometimes city laws Can result in damages and attorney's fees, punitive damages and reinstatement Federal anti-discrimination statutes (Title VII, Age Discrimination. Americans with Disabilities, Pregnancy Discrimination), Family Medical Leave, ERISA, NLRA, OSHA, Employee Polygraph Protection Act, etc Similar state statutes in all states and District of Columbia and some cities such as New York City The risk of liability can be controlled and in some cases eliminated
Ways to reduce employer liability Month Day Year Dentons US LLP Document reference # 13 Understand the "rules of the road" including immigration laws Employee handbook Other workplace rules (including OSHA) Sexual harassment training Carefully-drafted executive and non-executive employment agreements, and independent contractor agreements Employer liability insurance
Controlling the risks of commercial liability Month Day Year Dentons US LLP Document reference # 14 Sales of goods (including software) are covered by the Uniform Commercial Code (UCC) UCC provides contract drafting techniques that significantly reduce a seller's risk of liability and damages Also may be governed by UN Convention on the International Sales of Goods (CISG)
Controlling the risks of commercial liability Month Day Year Dentons US LLP Document reference # 15 Some states (eg. California) have additional laws including covering services transactions May be significantly different than your own country's laws All contracts for goods or services should be drafted or reviewed by knowledgeable lawyers All contracts should be in writing, which is what Americans expect
Protecting your intellectual property Month Day Year Dentons US LLP Document reference # 16 Create an IP protection plan, that may include Seeking patent protection Building an enforceable trade secret program Registering copyrights and trademarks Confidentiality agreements and inventions agreements with employees and consultants Confidentiality agreements with third parties Carefully-drafted IP license agreements
Protecting against IP and related claims Month Day Year Dentons US LLP Document reference # 17 Obtain a freedom-to-operate opinion Obtain trademark clearance opinions Take advantage of DMCA provisions Understand and comply with U.S. data protection and privacy laws Be prepared to respond to patent infringement claims asserted by patent trolls IP infringement insurance
You must determine whether your goods/services are regulated Month Day Year Dentons US LLP Document reference # 18 What regulatory bodies, if any, have jurisdiction What are the applicable regulations regarding importation, labeling, materials, etc? Federal Trade Commission, Federal Food and Drug, ATF, Health and Human Services, Homeland Security, Consumer Product Safety Commission, Agriculture, DOD etc. State regulatory agencies such as Consumer Protection Bureau
Cultural lighthouses to watch when doing business in the U.S. Month Day Year Dentons US LLP Document reference # 19 General tips when doing U.S. business Americans have a large and diverse culture with great freedom of expression - be aware of regional differences Americans have strong opinions and are willing to voice them Americans love humor and sarcasm Americans work long hours, two weeks of vacation and work on vacation
More tips Month Day Year Dentons US LLP Document reference # 20 Typically business relationships are between companies and not people Not important to develop a personal relationship for a successful business relationship American companies want to get the best deal and the best service and are driven by the bottom line Americans are uncomfortable with silence and fill in the void with conversation Americans ask many questions, often rapid-fire
More tips Month Day Year Dentons US LLP Document reference # 21 Americans like direct communication - yes means yes, and no means no Do not interrupt someone speaking but if you do always start with "excuse me" Americans believe in written agreements and shy away from oral agreements Use good eye contact in all settings Start all encounters with a handshake but if a close friend a quick, gentle hug or between males a chest or fist bump. Spell all names correctly in writing (eg. Marc Friedman, not Mark Freedman)
More tips Month Day Year Dentons US LLP Document reference # 22 Be on time and if more than 5 minutes late call Be aware of the religious Sabbath before requesting a meeting on Saturday or Sunday Be sure to meet all deadlines. If not, advise the other party well in advance Meetings generally informal and relaxed but serious. Be prepared to start after a quick exchange of greetings All attendees should make some contribution or else they may be viewed as irrelevant
Tips for business meetings Month Day Year Dentons US LLP Document reference # 23 In major cities, business suit and tie for men and business suits for women. Less formal in smaller cities or rural areas. Fair to ask ahead about dress code Polished shoes, clean and well-pressed clothes Do not keep looking and using smartphone unless specific to the meeting, and if so explain If comfortable, ask you be called by your first name (eg. "Please call me Marc") Give all speakers the chance to finish expressing their thoughts
Tips for business meeting conversation Month Day Year Dentons US LLP Document reference # 24 Topics that are acceptable include job-related information, sports, travel, food, music, movies books Topics that may be unacceptable include religion, politics, controversy (eg. Gay marriage, abortion, gun control, Obama, Tea Party, Putin, etc.) Men especially use sports metaphors which if necessary you should ask for an explanation (eg. Rounding third base, curveball, full-court press, balk, ice, four corners) Ask about idioms (eg. "Let's go the whole 9 yards", "according to Hoyle" etc.)
Patent Troll Infringement Claims Month Day Year Dentons US LLP Document reference # 25
What is a patent troll? Month Day Year Dentons US LLP Document reference # 26 A patent troll typically is a company funded by investors that acquires portfolios of patents in order to make claims of infringement against large and small companies to collect license fees A patent troll is an entity that tries to make a great deal of money from a patent or patents it did not invent, never practiced and has no intention to practice. A patent troll may also be known as an NPE (non-practicing entity) or PAE (patent assertion entity) Best known patent trolls: Acacia, Tessera, Rambus, Wisconsin Alumni Research Foundation, Interdigital, Rockstar, Round Rock and Intellectual Ventures In 2013, patent trolls filed 67% of all patent infringement cases, up from 19% in 2006, 23% in 2007, 25% in 2008, 27% in 2009, 29% in 2010 and 45% in 2011 and 62% in 2012. Top 10 filers were patent trolls
Top 10 ways to protect against patent troll claims Month Day Year Dentons US LLP Document reference # 27 Early assessment - develop litigation and settlement strategy at outset, and how to respond to a claim letter Engage experienced counsel with a reputation for success and experience defending troll claims Be appropriately and economically aggressive -- early dispositive motions, declaratory judgment suits (including by vendors), IPRs Leverage Joint Defense Groups -- knowledge, resources, creativity Invalidate the Patent -- use post-grant review, such as IPR, PGR, CBM, or reexamination
Top 10 ways to protect against patent troll claims (con't) Month Day Year Dentons US LLP Document reference # 28 Avoid Infringement - stop arguable infringement, design around patent Understand the Patent Troll, its motivation and its economics Discredit the Patent Troll and/or the Inventor Minimize damages - apportionment, isolate value to "footprint" of invention, royalty stacking Don't be afraid to try the right case to a jury
Should we be afraid of patent trolls? Month Day Year Dentons US LLP Document reference # 29 Patent Troll Claims Are Risks to be Controlled, Not Reasons to Refrain from Expanding to the US
The Bottom Line? Month Day Year Dentons US LLP Document reference # 30 The United States offers broad and rich business opportunities for European companies. While doing business in the United States carries legal risks, many of those risks of doing business can be significantly controlled and many other risks of doing business can be completely eliminated through careful planning and execution. "An ounce of prevention is worth a pound of cure!" Benjamin Franklin
Thank you Marc S. Friedman Dentons US LLP 1221 Avenue of the Americas New York, New York USA 10022 息 2013 Dentons Dentons is an international legal practice providing client services worldwide through its member firms and affiliates. This publication is not designed to provide legal or other advice and you should not take, or refrain from taking, action based on its content. Please see dentons.com for Legal Notices.

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Marc s. friedman slides for legalbooster

  • 1. CONTROLLING THE LEGAL AND CULTURAL RISKS OF DOING BUSINESS IN THE U.S. Marc S. Friedman Dentons US LLP New York, New York mfriedman@dentons.com Phone +001 212 768 6767 June 2014
  • 2. Locations Month Day Year Dentons US LLP Document reference # 2
  • 3. Offices by list Month Day Year 3 Optional subhead here Key Canada United States Europe Central and Eastern Europe Africa Middle East Asia Pacific l Offices Associate offices Facilities u Associate firms + Special alliance firms l Calgary l Edmonton l Montr辿al l Ottawa l Toronto l Vancouver Atlanta Boston l Chicago l Dallas l Kansas City l Los Angeles Miami New Orleans l New York l Phoenix l San Francisco l Short Hills l Silicon Valley l St. Louis l Washington, DC l Barcelona l Berlin l Brussels l Frankfurt l Madrid l Paris u Zurich l Bratislava l Bucharest l Budapest l Istanbul l Prague l Warsaw u Accra u Algiers u Bissau u Bujumbura l Cairo u Cape Town u Casablanca u Dar Es Salaam u Johannesburg u Kampala u Kigali + Lagos u Luanda u Lusaka u Maputo u Nairobi u Nouakchott u Port Louis u Praia u S達o Tom辿 u Tripoli l Abu Dhabi Amman u Beirut l Doha l Dubai Kuwait City l Manama l Muscat Riyadh l Beijing l Hong Kong l Shanghai l Singapore United Kingdom Russia and CIS Central Asia l London l Milton Keynes l Kyiv l Moscow l St. Petersburg l Almaty u Ashgabat l Baku l Tashkent Dentons US LLP Document reference #
  • 4. Why should we come to the U.S.? Month Day Year Dentons US LLP Document reference # 4 U.S. is the premier location for new business investment GDP of $16+ trillion - per capita $52,000 Population of 320,000,000 Under free trade agreements access to $25 million more for goods and services produced in the US Well-educated citizenry with world's best university system, and thus availability of highly- skilled labor
  • 5. More reasons Month Day Year Dentons US LLP Document reference # 5 Respect for intellectual property and a strong enforcement regime Most brands not considered truly global without a U.S. presence Stable democracy Accessibility of investment that prefers a domestic presence "Businesses operating in small markets in other countries can become large, dynamic firms in the United States." U.S. Dept. of Commerce
  • 6. THE BOTTOM LINE? Month Day Year Dentons US LLP Document reference # 6 The U.S. can be a very fertile area for expansion of your business There are legal land mines which can be eliminated or controlled through a careful entry plan There are cultural problems you can encounter if you are unaware of them None of the legal land mines or cultural risks should prevent your expansion into the U.S.
  • 7. Methods of entry Month Day Year Dentons US LLP Document reference # 7 Start your own operation Enter into a joint venture with a US partner Acquire or merge with a U.S. company Each method has its own features and risks There are risks and concerns common to all three methods of entry
  • 8. Major legal risks of doing business in the U.S. Month Day Year Dentons US LLP Document reference # 8 Commercial liability Personal injury liability Regulatory violations Employee-related claims Intellectual property claims (including patent infringement claims) Losing intellectual property rights Data privacy violations
  • 9. Additional legal risks Month Day Year Dentons US LLP Document reference # 9 Litigation and other judicial or quasi-judicial proceedings Tax consequences Immigration violations Transferee (imputed) liability to European entity Officer and Director liability
  • 10. Controlling the legal risks by formation Month Day Year Dentons US LLP Document reference # 10 Selecting the best business structure (corporation, LLC, other) Create a subsidiary, sub-subsidiary or other to insulate upstream companies from liability Place IP in another company with licensing agreements Identify the most suitable state of formation including from a tax perspective(usually Delaware) Identify where you must qualify to do business Obtain necessary licenses and permits
  • 11. Controlling the legal risks through insurance Month Day Year Dentons US LLP Document reference # 11 Commercial general liability Property and casualty insurance Product liability insurance Worker's compensation insurance Vehicle coverage Errors and omissions Directors and Officers insurance IP infringement insurance Agent v. broker
  • 12. Employer liability Month Day Year Dentons US LLP Document reference # 12 Possible employee claims Sexual harassment or discrimination in hiring, firing and workplace conditions Wrongful termination or denial of benefits Can arise under Federal, state and sometimes city laws Can result in damages and attorney's fees, punitive damages and reinstatement Federal anti-discrimination statutes (Title VII, Age Discrimination. Americans with Disabilities, Pregnancy Discrimination), Family Medical Leave, ERISA, NLRA, OSHA, Employee Polygraph Protection Act, etc Similar state statutes in all states and District of Columbia and some cities such as New York City The risk of liability can be controlled and in some cases eliminated
  • 13. Ways to reduce employer liability Month Day Year Dentons US LLP Document reference # 13 Understand the "rules of the road" including immigration laws Employee handbook Other workplace rules (including OSHA) Sexual harassment training Carefully-drafted executive and non-executive employment agreements, and independent contractor agreements Employer liability insurance
  • 14. Controlling the risks of commercial liability Month Day Year Dentons US LLP Document reference # 14 Sales of goods (including software) are covered by the Uniform Commercial Code (UCC) UCC provides contract drafting techniques that significantly reduce a seller's risk of liability and damages Also may be governed by UN Convention on the International Sales of Goods (CISG)
  • 15. Controlling the risks of commercial liability Month Day Year Dentons US LLP Document reference # 15 Some states (eg. California) have additional laws including covering services transactions May be significantly different than your own country's laws All contracts for goods or services should be drafted or reviewed by knowledgeable lawyers All contracts should be in writing, which is what Americans expect
  • 16. Protecting your intellectual property Month Day Year Dentons US LLP Document reference # 16 Create an IP protection plan, that may include Seeking patent protection Building an enforceable trade secret program Registering copyrights and trademarks Confidentiality agreements and inventions agreements with employees and consultants Confidentiality agreements with third parties Carefully-drafted IP license agreements
  • 17. Protecting against IP and related claims Month Day Year Dentons US LLP Document reference # 17 Obtain a freedom-to-operate opinion Obtain trademark clearance opinions Take advantage of DMCA provisions Understand and comply with U.S. data protection and privacy laws Be prepared to respond to patent infringement claims asserted by patent trolls IP infringement insurance
  • 18. You must determine whether your goods/services are regulated Month Day Year Dentons US LLP Document reference # 18 What regulatory bodies, if any, have jurisdiction What are the applicable regulations regarding importation, labeling, materials, etc? Federal Trade Commission, Federal Food and Drug, ATF, Health and Human Services, Homeland Security, Consumer Product Safety Commission, Agriculture, DOD etc. State regulatory agencies such as Consumer Protection Bureau
  • 19. Cultural lighthouses to watch when doing business in the U.S. Month Day Year Dentons US LLP Document reference # 19 General tips when doing U.S. business Americans have a large and diverse culture with great freedom of expression - be aware of regional differences Americans have strong opinions and are willing to voice them Americans love humor and sarcasm Americans work long hours, two weeks of vacation and work on vacation
  • 20. More tips Month Day Year Dentons US LLP Document reference # 20 Typically business relationships are between companies and not people Not important to develop a personal relationship for a successful business relationship American companies want to get the best deal and the best service and are driven by the bottom line Americans are uncomfortable with silence and fill in the void with conversation Americans ask many questions, often rapid-fire
  • 21. More tips Month Day Year Dentons US LLP Document reference # 21 Americans like direct communication - yes means yes, and no means no Do not interrupt someone speaking but if you do always start with "excuse me" Americans believe in written agreements and shy away from oral agreements Use good eye contact in all settings Start all encounters with a handshake but if a close friend a quick, gentle hug or between males a chest or fist bump. Spell all names correctly in writing (eg. Marc Friedman, not Mark Freedman)
  • 22. More tips Month Day Year Dentons US LLP Document reference # 22 Be on time and if more than 5 minutes late call Be aware of the religious Sabbath before requesting a meeting on Saturday or Sunday Be sure to meet all deadlines. If not, advise the other party well in advance Meetings generally informal and relaxed but serious. Be prepared to start after a quick exchange of greetings All attendees should make some contribution or else they may be viewed as irrelevant
  • 23. Tips for business meetings Month Day Year Dentons US LLP Document reference # 23 In major cities, business suit and tie for men and business suits for women. Less formal in smaller cities or rural areas. Fair to ask ahead about dress code Polished shoes, clean and well-pressed clothes Do not keep looking and using smartphone unless specific to the meeting, and if so explain If comfortable, ask you be called by your first name (eg. "Please call me Marc") Give all speakers the chance to finish expressing their thoughts
  • 24. Tips for business meeting conversation Month Day Year Dentons US LLP Document reference # 24 Topics that are acceptable include job-related information, sports, travel, food, music, movies books Topics that may be unacceptable include religion, politics, controversy (eg. Gay marriage, abortion, gun control, Obama, Tea Party, Putin, etc.) Men especially use sports metaphors which if necessary you should ask for an explanation (eg. Rounding third base, curveball, full-court press, balk, ice, four corners) Ask about idioms (eg. "Let's go the whole 9 yards", "according to Hoyle" etc.)
  • 25. Patent Troll Infringement Claims Month Day Year Dentons US LLP Document reference # 25
  • 26. What is a patent troll? Month Day Year Dentons US LLP Document reference # 26 A patent troll typically is a company funded by investors that acquires portfolios of patents in order to make claims of infringement against large and small companies to collect license fees A patent troll is an entity that tries to make a great deal of money from a patent or patents it did not invent, never practiced and has no intention to practice. A patent troll may also be known as an NPE (non-practicing entity) or PAE (patent assertion entity) Best known patent trolls: Acacia, Tessera, Rambus, Wisconsin Alumni Research Foundation, Interdigital, Rockstar, Round Rock and Intellectual Ventures In 2013, patent trolls filed 67% of all patent infringement cases, up from 19% in 2006, 23% in 2007, 25% in 2008, 27% in 2009, 29% in 2010 and 45% in 2011 and 62% in 2012. Top 10 filers were patent trolls
  • 27. Top 10 ways to protect against patent troll claims Month Day Year Dentons US LLP Document reference # 27 Early assessment - develop litigation and settlement strategy at outset, and how to respond to a claim letter Engage experienced counsel with a reputation for success and experience defending troll claims Be appropriately and economically aggressive -- early dispositive motions, declaratory judgment suits (including by vendors), IPRs Leverage Joint Defense Groups -- knowledge, resources, creativity Invalidate the Patent -- use post-grant review, such as IPR, PGR, CBM, or reexamination
  • 28. Top 10 ways to protect against patent troll claims (con't) Month Day Year Dentons US LLP Document reference # 28 Avoid Infringement - stop arguable infringement, design around patent Understand the Patent Troll, its motivation and its economics Discredit the Patent Troll and/or the Inventor Minimize damages - apportionment, isolate value to "footprint" of invention, royalty stacking Don't be afraid to try the right case to a jury
  • 29. Should we be afraid of patent trolls? Month Day Year Dentons US LLP Document reference # 29 Patent Troll Claims Are Risks to be Controlled, Not Reasons to Refrain from Expanding to the US
  • 30. The Bottom Line? Month Day Year Dentons US LLP Document reference # 30 The United States offers broad and rich business opportunities for European companies. While doing business in the United States carries legal risks, many of those risks of doing business can be significantly controlled and many other risks of doing business can be completely eliminated through careful planning and execution. "An ounce of prevention is worth a pound of cure!" Benjamin Franklin
  • 31. Thank you Marc S. Friedman Dentons US LLP 1221 Avenue of the Americas New York, New York USA 10022 息 2013 Dentons Dentons is an international legal practice providing client services worldwide through its member firms and affiliates. This publication is not designed to provide legal or other advice and you should not take, or refrain from taking, action based on its content. Please see dentons.com for Legal Notices.