Category Archives: Legal & Regulatory

How Do You Draft a Fair Partnership Agreement: Six Points

Situation: A CEO is negotiating a partnership entity. Her company will fund the entity, and the partner will earn ownership through sweat equity. How do you draft a fair partnership agreement?

Advice from the CEOs:

  • The most important factor is the ability of the two partners to create a successful venture.  Proof of ability to contribute needs to be a prerequisite to allocating ownership.
  • How does the sweat equity partner prove their capabilities? Create a schedule of milestones for the partner to earn ownership, based on mutually agreed objectives or revenue generation. The beauty of this is that you retain control until the partner has proven their value by delivering results.
  • The potential downside is long-term liability of the venture. The longer that you retain majority ownership, the longer you retain majority liability. Insure yourself against this liability.
  • Buyout clauses are important to retain your interest if the partner fails to deliver. Include a liquidation clause in case the venture fails.
  • While negotiating the agreement draw up a 6-month letter of intent. Specify what each side brings to the table and what each commits to deliver. Set clear, measurable, time-bound objectives. Negotiate fair protections desired by each party. Consider a consultant to facilitate settlement of areas of contention.
  • Theoretically, each party needs their own legal counsel. This adds expense but provides protections for each in the final agreement. Factor the cost of legal advice as well as consultant facilitation into your planning model.

[like]

How Do You Protect Your IP from Infringement? Six Suggestions

Situation:  A company has a competitor who is infringing their key intellectual property. Legal counsel tells the CEO that his company has a case, but to expect the process to take 2-3 years and to cost $2 million minimum to defend. The CEO is concerned that if the company starts down this path, it will drain the company of both time and cash. How do you protect your IP from infringement?

Advice from the CEOs:

  • The risk here isn’t just the company’s IP; it’s the value of the company! For example: if the company’s current valuation based on their IP is a 5x multiple of revenue, and if 60% of this IP is at risk, 60% or more of the company’s valuation may be at risk. Under this scenario, the company cannot allow the infringement to go unchallenged.
  • The hard reality is this: can the company withstand, in time and of money, a large and distracting suit? If the infringer is larger than the company is, they may be gambling that the company won’t sue. Remember, the loser pays the winner’s out of pocket costs, plus damages. If the company’s case is good, it may be possible to get a lawyer to represent the company on a contingency basis.
  • If the company decides to sue, it must be a surprise. If not, the infringer may outmaneuver the company by setting venue, etc. through countersuit.
  • Get a second opinion, and as much independent advice as possible without showing your hand.
  • A key Question: Can the company show its IP and research predates the competitor’s? If the company can clearly demonstrate that it is the true developer of the IP, then this provides an important edge.
  • Is there a middle ground or a settlement scenario that makes more sense than an all-out suit?

[Like]

What are the Trade-offs of Becoming a Company Principal? Four Points

Situation: A senior employee is on a good growth track within her company. The CEO has stated that he believes that she has the potential to become a principal of the company in the future. What are the tradeoffs of becoming a company principal?
Advice from the CEOs:
• Becoming a principal involves both greater potential rewards than being an employee and greater potential risks. Create a chart with two columns. In one, list the potential rewards of having a stake in the company. In the other list the costs and potential liabilities. This will help to weigh the rewards against the liabilities.
• Areas to negotiate include voting rights, granting of options, understanding the perks of becoming a partner, and also the possibility of legal liability for any malfeasance that the company may commit.
• If you see liabilities that concern you talk to an attorney – your own, not the company’s – about how to address these liabilities in the terms of an employment contract as a principal.
• Evaluate the potential long term value of the ownership share being offered. Does the company have a buy-back policy for a principal’s ownership share and, if so, what are the terms?

[like]

How Do You Interview for New Hires and Promotions? Part 1, Three Points

Situation: A CEO seeks advice on interviewing both for new hires and promotions. What advice and guidelines do others suggest to improve interviews? How do you interview for new hires and promotions?

Advice from the CEOs:

  • Preparation before hiring or promotion is critical.
    • Preparation means having a road map – for what will be accomplished in the new position and for how the company selects and hires or awards promotions.
    • Discipline: have the patience to do it well.
    • Be aware of and watch for possible legal issues. This has become increasingly important under DEI.
  • Raise the bar. Each new addition or promotion should enhance the company’s capabilities instead of just filling a slot.
    • Hire individuals with skills that complement areas of your own or the organization’s weaknesses.
    • Be creative in developing sources or new hires.
  • Ask open-ended questions and follow-up with additional open-ended questions to clarify areas that the response opens.
    • Focus interview questions and processes to identify demonstrated values and habits.
    • Insert pregnant pauses into the interview. How does the interviewee respond?
    • Listen for what is NOT said as much as what is said.

[like]

How Do You Preserve Exit Strategy Value as a Minority Owner? Five Points

Situation: A company has been in business for 38 years. The majority owner founded the company. One of two minority owners has obtaining her share position through sweat equity. Another minority owner is on the Board but is not involved in the day-to-day operations. There are buy-sell agreements in place to preserve the interests of the three owners. In the case of an exit how do the minority owners preserve the value of their shares of the company? How do you preserve exit strategy value as a minority owner?

Advice from the CEOs:

  • Details of the current arrangement:
    • All partners are currently capped at 33% ownership.
    • The expectation is that in 10 years the two minority owners will buy out the principal owner and split ownership between themselves.
  • It is far better to negotiate potential ownership position up front – at the time of entry into a business, rather than along the way. As this apparently was not the case the minority owner has two points of leverage:
    • The minority owner has a good relationship with the principal owner, a very important factor, and the owner cares about the minority owner.
    • As the minority owner develops a track record of success, this should be leveraged in addition to the relationship to assure that the interests of the minority owners are preserved.
  • Additional key points of leverage of the minority owner asking the question:
    • The option to walk away as principal manager of the business if not happy with the situation.
    • Upside value of the company.
    • The desire of all owners to maintain their current life-styles, which are dependent on income from the business.
  • Separate management and control of the business entity from day-to-day operations. These are distinct and different areas of focus.
  • Another option to consider is the use of insurance policies to fund a buy-out of the majority owner.

[like]

Should You View a Competitor’s Illegally Published Code on the Internet? Four Points

Situation: A CEO recently learned that the proprietary code for both his company’s and his principal competitor’s products have been published on an international web site. He is conflicted about whether he should look at his competitor’s code, knowing that this would potentially be illegal in the US. Lawyers have offered conflicting and vague advice. Should you view a competitor’s illegally published code on the Internet?

Advice from the CEOs:

  • Consider the status of IP protection outside the United States.
    • In some countries there do not appear to be clear legal guidelines. One of these countries is likely where this situation originated. The country in question either lacks rules governing IP or the ability to enforce rules that exist.
    • The frustrating thing is that the playing field is not level between US and non-US companies. US companies are held to a high ethical standard by US law, whereas competitors in other countries that are not held to the same standard are free to review the illegal source code and learn from it as they can.
  • How complicated and expensive would it be to change the code? If this is feasible and not prohibitively expensive this may be the best option. Updated code can be provided to users through a software update.
  • Any company has to assess their own ethics as they craft a response to this situation. Make sure that the solution is consistent with the company’s ethical standards.
  • Could this have been an act of economic terrorism and/or theft?
    • If so, it is possible that the U.S. Justice Department could step in if one can make a case for national or economic security (unfair trade) based on violation of software copyright laws.
    • An action like this would, at a minimum, discourage similar future events. It could also help reduce the likelihood that competitors would try to profit from this situation at the company’s expense.

[like]

How Do You Obtain Competitive Intelligence Ethically? Six Points

Situation: A CEO is concerned that many of the ways that her company might gain competitive intelligence could compromise the ethics and values that she has worked to instill in the company. What legal and ethical methods have others used to gain competitive intelligence? How do you obtain competitive intelligence ethically?

Advice from the CEOs:

  • It’s critical not to use methods that compromise the company’s legal position. Using spies or spy devices fit into the category of both illegal and unwise methods to obtain intelligence.
  • Do not misrepresent the company, or have employees misrepresent themselves to competitors in order to obtain competitive information.
  • Do not talk about prices directly with your competitors. This compromises both companies legally.
  • Here’s a test: If an action is being considered to gain competitive intelligence, would the company be willing to put up a banner in the office for all employees to see, telling them about this? If not, don’t do it. If questionable activities are employed, it’s likely that they will find out no matter what is done to hide these activities.
  • Here are primary sources for gathering competitive intelligence ethically:
    • Customers;
    • Competitors’ customer service and engineering departments, possibly through 3rd parties;
    • Editors of trade journals;
    • Former employees of competitors;
    • Trade Associations; and
    • Trade shows and conferences.
  • In addition, these are good secondary sources:
    • Google and other search engines – whatever appears through these is publicly available;
    • D&B Hoovers;
    • Web sites;
    • Reverse engineering – without using information obtained unethically;
    • 10Ks and Annual Reports available on the SEC web site.

[like]

How Do You Maintain a Culture Focused on Quality? Five Points

Situation: Quality is a CEO’s #1 objective for his company. As the company has grown and processes have become more complex with more people involved, consistent quality is becoming an issue. The CEO wants to refocus and reestablish a quality culture to support future growth. What have others done to increase the quality of their product or service? How do you maintain a culture focused on quality?

Advice from the CEOs:

  • Trust is a company’s most important commodity. This trumps financial exposure. In case described, the client trusts the company to produce and deliver a quality service upon which they can rely.
  • Go all of the way back into system design – or how any particular product system is set up.
    • Assemble a diverse group to review both the company’s deliverables and the system inputs.
    • Brainstorm everything that can break.
    • Prioritize the list based on potential exposure to the company.
    • Do a deep-dive analysis of the top 5 or 10 exposure areas.
    • Reprioritize after the deep dive has been completed.
    • Fix all issues identified in order of exposure.
    • Repeat the exercise periodically to assure that quality is maintained.
  • Empower and reward anyone who develops improvements in quality control.
  • Shield the company from any exposure over which it has no control. This can be accomplished through language in the company’s service agreements, and through language covering service deliverables.
  • Once the company has shielded itself from an exposure, set up flags in the monitoring systems that will alert the company of events or situations that will impact clients. This allows the company to inform clients of situations that may impact them without making recommendations as to how the client should handle the situation.

[like]

How Do You Deal with a CAVE Person? Four Options

Situation: A CEO has an employee who is very talented as an individual contributor but is destructive in a team atmosphere. The CEO wants to give this individual the opportunity to succeed and contribute, but simultaneously wants to limit the negative impact on other employees. In colloquial terms, this individual is a CAVE Person (Citizens Against Virtually Everything).  How do you deal with a CAVE person?

Advice from the CEOs:

  • Limit this individual’s focus to his strengths. Work with his manager to facilitate this.
    • Let him focus and crank out work as an individual contributor.
    • Don’t require this individual to participate in group meetings. Approach this by asking if he likes meetings. The likely answer is no. Follow-up by asking whether he’d prefer to focus his time in areas where he can contribute the most.
    • Be sure to compliment him on his work when this is deserved.
  • For the last three years we’ve learned the utility and limits of remote work. Consider remote work as an option for this individual. Work out a schedule of individual one-on-ones with his manager via Zoom to assure that he has what he needs to fulfill his role.
  • Drive the department to company’s and the manager’s attitude – not his.
    • If he is having a bad day, keep up a good attitude without allowing his attitude to bring the team down.
  • Realize that it may not be possible to fix this individual’s attitude or save his position.
    • Make every attempt to find an appropriate niche for this person in the company.
    • Document the efforts and accommodations made.
    • Have his manager write him up when he is destructive to the team.
    • Be prepared if, at the end of the day, it’s necessary to let him go. It may be the best thing for both him and the team.
    • Another member shared her experience with a CAVE person at a previous company. They made every attempt to accommodate the individual, but documented as they proceeded. When they finally let the person go, everybody’s productivity increased because the distraction was no longer present.

[like]

How Do You Delegate Challenging Tasks? Three Suggestions

Situation: A company is creating new capabilities which require engineers to think beyond the limits of current capacity. Some are hesitant to take on these tasks, which are critical to the company’s maintaining its competitive edge. How do you create the tools or capacities to make these technical leaps? How do you delegate challenging tasks?

Advice from the CEOs:

  • Encourage the engineers to expand their conceptual “boxes”. Encourage them to
    • Utilize web-based searches of existing research on technical boundaries;
    • Explore their own creative capabilities – encourage them to connect to science UseNets for solutions to technical challenges;
    • As solutions are developed using outside resources, have engineers document progress so that intellectual property rights can be preserved. Line up legal resources to assist.
    • Encourage them to use their unconscious processes to enhance the “Eureka” factor. Allow them to work on multiple related tasks that can spark creative solutions within the team.
  • Consider this challenge as part of the process – acknowledge the “point of despair” that is often encountered with new technical challenges. Encourage them to use their creative capabilities to move beyond their perceived limitations.
    • Understand that this will involve the use of scarce resources and that mistakes will be made in the learning process.
    • Be patient and treat these as the cost of progress.
  • Other options to consider:
    • Investigate resources at nearby universities. Faculty and students appreciate the opportunity to be involved in cutting-edge projects. Protect the company by signing intellectual property agreements with the individuals and institutions.
    • Invest in and expand the library of cutting-edge resources for engineers to use as tools to develop solutions.

[like]