to materials from this boot camp.

Transcription

BAKER DONELSON
EMERGING COMPANY
BOOT CAMP
Wednesday, December 5, 2012
Atlanta, Georgia
BAKER DONELSON
EMERGING COMPANIES BOOT CAMP
AGENDA
Wednesday, December 5, 2012 – Baker Donelson Multi-Purpose Room
9:00 – 9:30 a.m.
Breakfast, Registration and Networking
9:30 – 9:40 a.m.
Welcome and Opening Remarks
Clint Crosby, Baker Donelson
9:40 – 10:30 a.m.
Ideas from Successful Entrepreneurs (Panel Discussion)
Moderator: Clint Crosby, Baker Donelson
Panelists: Andrew Ibbotson (Digital Assent)
David Moeller (CodeGuard)
10:30 – 11:15 a.m.
Intellectual Property Essentials: Trademarks, Copyrights and Patents
Mike Powell, Baker Donelson
11:15 – 12:00 p.m.
Corporate Formation, Taxation and Accounting Considerations
Bill Osterbrock, Baker Donelson
Vince Eget, Bennett Thrasher
12:00 – 1:00 p.m.
Lunch and Networking
1:00 – 1:45 p.m.
Things to Know When Starting Your First Company
Mark Peterson
1:45 – 2:45 p.m.
Angel Investor and Investment Bank Panel Discussion
Moderator: Justin Daniels, Baker Donelson
Panelists: Glen Bachman (Bachman International LTD)
Brian Cork (Brian Cork Human Capital)
Dave Gunter (Angel Investor)
Steve Tye (Croft & Bender)
2:45 – 3:00 p.m.
Open Questions and Adjourn
All presenters
Table of Contents
Presentations
Intellectual Property Essentials: Trademarks, Copyrights and Patents...............................1
The Perils of Corporate Formation, Taxation and Accounting...........................................2
Things to Know When Starting Your First Company.........................................................3
Speaker Bios .......................................................................................................................4
Areas of Focus
Firm Profile ........................................................................................................................5
Emerging Companies..........................................................................................................6
Emerging Company Institute..............................................................................................7
Corporate Finance................................................................................................................8
Business Technology...........................................................................................................9
Intellectual Property..........................................................................................................10
Federal Income Tax...........................................................................................................11
State and Local Tax...........................................................................................................12
Venture Capital..................................................................................................................13
Intellectual Property Essentials
Michael J. Powell
Shareholder, Baker Donelson
What is Intellectual Property?
?
The General Rule of Law
"The general rule of law is that
the noblest of human
productions—knowledge, truths
ascertained, conceptions and
ideas—become, after voluntary
communications to others, free
as the air to common use."
International News Service v. Associated
Press, 248 U.S. 215, 63 L. Ed. 211, 39
S. Ct. 68 (1918) (dissent - Justice
Brandeis)
IP is an Exception
"Intellectual Property is
An Exception To The
Public Domain."
- McCarthy, J. Thomas,
McCarthy on Trademarks and
Unfair Competition, § 1:2 Policy
of the public domain: free
copying and imitation, (2008).
Life Events
Birth of
Company Ownership,
Structure,
Ideas,
Operations
Developmental
Stages Contributions by
Owners,
Employees,
Independent
Contractors,
Others, Setting
Terms for Pricing
and Delivery,
Testing
Product/Service
Launch - Taking on
Customers,
Distributors, New
Agreements, Licenses
Encountering
Competition,
Refining/
improving/
evolving/
adding products,
services, delivery,
volume, customers
Stuff Happens
…hopefully not like this.
Sale, Purchase,
Expansion,
Partners, Continue
Journey!
Life Events (cont’d)
Perspectives
INTELLECTUAL PROPERTY
• Patents
• Trademarks
• Copyrights
• Trade Secrets
Patents
What is a Patent?
• Set of exclusive rights granted to an inventor
for a fixed period of time in exchange for the
regulated, public disclosure of the invention
• Limited property right
Patents (cont’d)
• Right to exclude others from making, using, selling, offering to sell
the claimed invention within the U.S., or importing into the U.S.
• Does not give inventor an affirmative right to make, use, sell, offer
to sell any products or services
Patents (cont’d)
Utility Patents – Subject Matter (New, Useful, Not Obvious)
•
Machine – concrete thing, consisting of parts or of certain devices and combinations
of devices
•
Manufacture (Article of Manufacture) – production of articles for use from raw or
prepared materials by giving to these materials new forms, qualities, properties or
combinations, whether by hand labor or by machinery
•
Composition of Matter – composition of two or more
substances; chemical compounds; gas, fluid, powder
or solid
•
Process – act, or a series of acts, performed upon
the subject-matter to be transformed and reduced
to a different state or thing; methods
Patents (cont’d)
• Post AIA, the U.S. now has a “first-to-file” rather than “first-toinvent” system. (So file early!)
• A patent has a 20 year term. (14 years for a design patent.)
• A patent has taxes due at 3-1/2 years, 7-1/2 years and 11-1/2 years
from the date of issuance.
• A patent has geographical limitations - country by country, but
treaties make foreign filing easier.
Provisional Patent Applications
•
•
•
•
Lower cost, quick alternative
No claims required
No particular format
Provides earlier effective filing date, permits use of “patent pending”
status
• Not examined, does not issue into a patent
• Must file full utility application within one year
Trademarks
•
A trademark or service mark is a word,
symbol or device used to trade goods or
services and distinguish those goods or
services from others.
•
Trade dress is a type of trademark
includes the total image used to trade a
product or service such as colors (ex.
Pink for insulation), sounds (ex. NBC
chimes), shapes (ex. Coca Cola bottle).
•
Trademark laws protect consumers from
likely confusion, deception or mistake
Trademarks (cont’d)
•
Trademarks should be registered (prima
facie evidence of rights).
•
During the registration process, all
marks are published to provide others a
30 day period to oppose registration.
•
Term of trademark registration is 10
years provided proof of continued use is
provided between the 5th and 6th years
of the registration.
•
Trademark registrations can be renewed
upon filing of a renewal application at
the end of the 10 year term.
Copyrights
What is a copyright?
• A bundle of rights protecting an original work of authorship fixed in
any tangible medium of expression
U.S. Constitution, Art. 1, Sec. 8, Cl. 8
17 U.S.C. § 101 et seq.
Copyrights (cont’d)
•
•
•
To be protected by copyright, a
work must contain at least a
certain minimum amount of
authorship in the form of original
literary, musical, pictorial, or
graphic expression.
Copyright provides rights to
reproduce, distribute, perform
and display such works.
Copyright protects the form of
expression rather than the
subject matter of the expression.
Software
• Set of statements or instructions to
be used directly or indirectly in a
computer in order to bring about a
certain result
• Protects that particular expression
of the set of statements or
instructions, not what the program
does
Trade Secrets
Georgia law, consistent with the U.T.S.A., defines "Trade Secret" as information, without
regard to form, including, but not limited to, technical or nontechnical data, a formula, a
pattern, a compilation, a program, a device, a method, a technique, a drawing, a
process, financial data, financial plans, product plans, or a list of actual or potential
customers or suppliers which is not commonly known by or available to the public and
which information:
(A) Derives economic value, actual or potential, from not being generally known
to, and not being readily ascertainable by proper means by, other persons who
can obtain economic value from its disclosure or use; and
(B) Is the subject of efforts that are reasonable under the circumstances to
maintain its secrecy. Official Code of Georgia, § 10-1-761(4)
Essentials
• Limit access to sensitive information (i.e. trade secrets, proprietary
information, specifications, source code, customer lists, and the like) to
employees, independent contractors and others on a need to know basis
only.
• Use written agreements with employees, independent contractors and
vendors to maintain confidentiality and respect IP rights – assigning
rights to company whenever possible.
• Have appropriate searches conducted prior to investing in patent and
trademark processes and prior to launching products or services.
• File patent, trademark and copyright applications early and often.
Essentials (cont’d)
•
Use Proper notices to alert others to your intellectual property rights.
 Mark inventions and marketing materials with "Patent Pending" only if
patent application has been filed. Patent Number if patent has issued.
(E.g. "U.S. Pat. No. 5,678,000").
 Use "TM" or "SM" adjacent trademark or service mark prior to
registration. Use "®" only if mark is registered.
 Mark works of art with © followed by the year of publication and the
name of the owner of copyright. (E.g. "© 2003 Michael J. Powell“).
•
Maintain possession and control over company social media accounts.
•
Post appropriate disclaimers and obtain releases with regard to on-line
submissions of ideas.
•
Don’t forget about electronically stored information (ESI) and its potential
use in Court.
CHOICE OF ENTITY
CONSIDERATIONS
A Basic Guide to Entrepreneurs
December 5, 2012
Bill Osterbrock, Of Counsel
Baker Donelson
[email protected]
404-589-3418
Vince Eget, Shareholder
Bennett Thrasher
[email protected]
678-302-1426
Before commencing the operation of a business in the State of Georgia or
any other jurisdiction, careful consideration should be given to the type of
entity to be utilized by the business. The type of entity selected will
depend on many factors. When making a choice of entity decision, both
a legal and tax advisor should be consulted and provided with information
such as your intent, your objectives, the type of business to be conducted,
and the types of transactions that will be entered into. These factors
should then be compared to the restrictions and flexibility of each type of
entity to determine which entity best meets your organization’s needs.
Outline of Topics Covered
•
Organizational Structure
•
Legal and Liability Structure
•
Advantages and Disadvantages
•
Tax Considerations
Five Basic Questions
•
Who?
•
What?
•
When?
•
Where?
•
Why?
Types of Entities
In Georgia and most other states, businesses can be organized in one (1)
of seven (7) business forms:
•
Sole Proprietorship
•
Corporation
•
Limited Liability Company
•
General Partnership
•
Limited Partnership
•
Limited Liability Partnership
•
Limited Liability Limited Partnership
Sole Proprietorships
•
Definition: A sole proprietorship is a business conducted in one owner’s
individual capacity without formal organization of a separate legal entity
•
A creditor with a claim against a sole proprietor may have a right against all
of the business owner’s assets, whether business or personal. Thus, the
owner’s potential liability is said to be unlimited
Sole Proprietorships
•
Advantages:
− Simple to Create –No Formal Organizational Structure
− Least Costly to Form
− Singular and Total Decision-Making Authority
− No Special Legal Restrictions
− Easy to Discontinue
•
Disadvantages:
− Unlimited Personal Liability
− Limited Skills and Abilities
− Limited Access to Capital
− Lack of Continuity of Business
Corporations
•
Definition: A corporation is a separate legal entity apart from its owners
(shareholders) which limits the liability of its owners and the persons who
operate the company (officers and directors)
•
Different Types:
− C-Corporation
− S-Corporation
− Closely-Held or “Statutory Close"
− Privately-Held
− Publicly-Held
− Professional Corporations
− Non-Profit Corporations
Corporations
•
Formation and Organizational Structure:
− Articles of Incorporation or Certificate of Incorporation (Delaware)
− Advertising the Incorporation of the Entity
− Appointment or Election of Directors and Officers
− Organizational Meeting of Directors
− Issuance of Shares of Stock (considered “securities”)
− Adoption of Formal Bylaws
− Shareholders’ Agreement
− Annual and Special Meetings of Shareholders and Directors
− Registering a Trade Name or “d/b/a”
Corporations
•
Advantages:
− Limited Liability of Shareholders
− Centralized Management
− Ability to Attract Investment Capital
− Continuation of Enterprise
− Transfer of Ownership
•
Disadvantages:
− Time and Costs related to Formation and Organization
− Corporate Formalities Must be Followed
− Annual Registration
− Potential for Loss of Control
− Compliance with Applicable Laws
Limited Liability Companies
•
Definition: A limited liability company
(“LLC”) is an unincorporated entity which
limits the liability of its owners (generally
known as members) and the persons who
operate the company (generally known as
managers) to their investments in the
entity
•
− Articles of Organization or Certificate of Organization (Delaware)
− Admission of Members –Issuance of Membership Interests (considered
“securities”)
− Organizational Meeting of Members (optional)
− Election of Managers (optional)
− Adoption of Formal Operating Agreement (optional)
•
Advantages:
− Limited Liability of Members
− Allows for Centralized Management or Management by its Members
− Ultimate Flexibility in Organizational and Management Structure
− Ability to Attract Investment Capital
− Continuation of Enterprise
− Transfer of Ownership
− Flexibility with Respect to Allocating Income and Losses
− Less Record Keeping Requirements Compared to Corporations
•
Disadvantages:
− Time and Costs related to Formation and Organization
− Annual Registration
− Potential for Loss of Control
− Compliance with Applicable Laws
PARTNERSHIPS
•
•
•
•
General Partnerships
Limited Partnerships
Limited Liability Partnerships
Limited Liability Limited Partnerships
Definitions.
•
General Partnership: An association of two (2) or more persons who operate a
business as co-owners for the purpose of making a profit. Each partner is joint and severally
liable for the debts and obligations of the partnership.
•
Limited Partnership: A partnership formed by two (2) or more persons, having one (1) or more
general partners and one (1) or more limited partners. Generally, a limited partner assumes no
personal liability for the debts and obligations of the partnership over and above his or her capital
contributions to the partnership, unless he or she participates in the control of the business. A
limited partnership requires that at least one partner be a general partner who is liable for the
debts and obligations of the partnership.
•
Limited Liability Partnership (“LLP”): A general partnership that has elected to become
a limited liability partnership in the office of the clerk of the superior court of any county in which
the partnership has an office. An essential element of a LLP is the right to limit the personal
liability of all partners for the liabilities of the partnership or other partners.
•
Limited Liability Limited Partnership (“LLLP”): A standard statutory limited partnership
which elects to register as a limited liability partnership. An essential element of a LLLP is the
general partners (not just the limited partners) are afforded limited liability for the debts and
obligations of the limited partnership that arise during the period that the LLLP election is in place
General Partnership
•
−
−
−
−
Simple to Create –No Formal Organizational Structure
Admission of Partners
Shared Decision Making Authority among Owners
Adoption of a Formal Partnership Agreement
General Partnership
•
Advantages:
− Easy to Establish
− Low Organizational Costs
− Usually Pairs Individuals up with Complimentary skills
− Access to a Larger Capital Pool
− Little Governmental Regulation
− Flexibility in Management Structure (all partners have equal rights in the management
and conduct of the partnership business)
•
Disadvantages:
− Unlimited Liability of its Owners
− Difficulty in Transferring of Ownership
− Lack of Continuity
− Conflicts Related to Authority of Partners
− Partners Bound by Law of Agency
− Difficulty in Attracting Outside Investment
− Decentralized Management
Limited Partnership
•
−
−
−
−
Filing of Certificate of Limited Partnership with Secretary of State
Admission of General Partner(s) and Limited Partner(s)
Decision Making Authority is Vested in General Partner
Adoption of Formal Partnership Agreement
Limited Partnership
•
Advantages
− Limited Liability for its Limited Partners
− A Corporation may Serve as a General Partner
− Centralized Management
− Usually Pairs Individuals up with Complimentary skills
− Access to a Larger Capital Pool
− Little Governmental Regulation
•
Disadvantages
− Unlimited Liability for its General Partners (joint and several)
− Difficulty in Transferring Ownership
− Lack of Continuity
− Conflicts Related to Authority of Partners
− Partners Bound by Law of Agency
− Difficulty in Attracting Outside Investment
Limited Liability Partnership
•
− Formed by a general partnership filing a Limited Liability Partnership
election with the Clerk of the Superior Court of any county in which the
company has an office.
− Popular form of organization among professionals, particularly lawyers,
accountants, and architects
Limited Liability Limited Partnership
•
− Formed by a limited partnership filing a Limited Liability Partnership
election with the Clerk of the Superior Court of any county in which the
company has an office.
− Popular form of organization for organizations that hold or invest in real
estate
Tax Treatment of Entities
The choice of the form of business organization is one of
the most important decisions an entrepreneur can make
• Advantages and Disadvantages of Different Entity
Types
• Tax Issues on Formation
• Tax Considerations and Operational Issues
• Taxation Upon Distributions of Assets or Disposition of
Interest
• State Tax Considerations
• Start with the end in mind
Taxation of Sole Proprietorships
•
Advantages
− Simplest form of business entity with minimum compliance required
− Can easily be converted to another entity type, usually without
triggering a taxable event
− Method of accounting
•
Disadvantages
− Most earned income is subject to Self-employment tax
− Deduction of fringe benefits is limited
•
Formation
− The formation of a sole proprietorship is not a taxable event
•
Operations
− The taxable year of the business is based on the taxable year of the
owner
− Income or loss from operations is reported on Schedule C of form 1040.
− Owners of multiple business activities must report the income or loss
from operations on separate Schedule C for each activity.
− Owners are not considered employees of the business and most fringe
benefits are disallowed.
− Owners can participate in retirement plans
− Most earned income is subject to the self-employment tax
•
Disposition of interest
− The owner can sell all business assets to
anther person or entity
− The business interest in a sole
proprietorship cannot be sold
− The sale price has to be allocated to all
assets sold and each asset is treated as
separately sold
Taxation of C-Corporations
•
•
Advantages
− There are generally no limitations or restrictions on who may be a
shareholder of a C corporation.
− Fiscal year may be elected for some C-corporations
− Multiple classes of stock are permitted
− Wide range of nontaxable fringe benefits for shareholders, who are also
employees.
− State taxes for some businesses
− 1202 Qualified Small Business Stock.
Disadvantages
− C-corporations are required to use the accrual method of accounting
− Double taxation of income
− Distributions – taxable event(s)
•
Formation
− Ordinarily transfers of money and property to a controlled corporation
may be structured on a tax-free basis (§351).
− Be careful regarding transfers of liabilities to corporations, IRC 357.
− The receipt of stock for services is taxable – consider making 83(b)
Election.
•
Operations
− C-corporations are a separate taxpayer and file a separate income tax
return (Form1120).
− Income from C-corporations can be subject to “double” taxation: the
corporation pays income tax on taxable income and receives no
deduction for dividends paid to individual shareholders. The
shareholders pay tax on the dividends received.
− Losses – any net losses of a C-corporations can be carried back or
carried forward to future years, but cannot be used to offset other
sources of income of the individual shareholders.
− Capital gains and losses – no preferential treatment, losses are carried
back.
− 382 Limitations
•
Liquidity Event
− Most important consideration is the issue of
double taxation
− Sale of assets versus sale of stock
− NOL considerations
− Personal Goodwill
Taxation of Partnerships/LLC’s
•
Advantages
− Single level of taxation
− No limitation on who may be a partner
− Generally uniform state taxation
− Flexibility
− “Step-up” Opportunities
− “Profits” Interest vs. Capital Interest
•
Disadvantages
− Complexity of applicable law
− Usually have to use calendar tax year or year or majority owner.
− Self employment tax on all distributive income for most “active” owners.
•
Formation
− Two or more persons are required: a person can be an individual (both
US and non-US, C- or S-corporation, or any type of trust)
− Generally the formation of a partnership is a non-taxable event for the
partners (exceptions apply).
− Contribution of property subject to liabilities
− Additional rules apply when contributed property is appreciated or
depreciated.
•
Operations
− A partnership is a non-taxable entity also known as a pass-through entity.
− Files a separate tax return (Form 1065)
− The partnership must use a taxable year determined by reference to the
partners’ taxable years or a year reflecting the business purpose of the
partnership.
− Generally can use either the cash or accrual method of accounting
− Losses may be deductible by partners to the extent of their basis in their
investment in the partnership
 Recourse vs. Non-recourse liabilities
 Passive Losses
 At-risk limitations
− Inside vs. Outside Basis
− Special Allocations
− Self-employment tax issues
•
Liquidity Event
− General rule provides that a partner who disposes of his or her interest in a
partnership is treated as disposing of a single asset, rather than a pro rata share
of all of the underlying assets of the partnership
− The gain or loss is generally capital in nature
− An important exception to the general rule that a partnership is treated as an
entity in determining the tax consequences of a taxable disposition of the
partnership interest arises where the partnership owns assets described in Code
Section 751 (“unrealized” receivables, recapture and inventory items).
− Non-liquidating distributions of partnership property
 Generally no gain is recognized upon non-liquidating distribution of property
(if gain is recognized it is capital in nature)
 If 751 assets are distributed, the gain is ordinary.
 Neither the partner nor the partnership may recognize a loss in connection
with a distribution of property.
Taxation of S-Corporations
•
Advantages
− Single-level of taxation
− Self-employment taxes
− No special allocations: easier record keeping
•
Disadvantages:
− No special allocations: less flexibility
− Built-in gains tax and tax on passive income
− Distribution of property to shareholders
− Sensitivity regarding permitted ownership, distributions, and
second class of stock.
− Limit on number of Shareholders - 100
•
Formation
− U.S. domestic corporation – same issues as C-corporation
− Limitations on eligible shareholders
 Eligible: individuals who are US citizens or residents,
certain trusts and charitable organizations, ESOPs,
SMLLC owned by a US citizen or resident
 Ineligible: Partnerships, C-corporations, multi-member
LLCs, some retirement plans, Charitable remainder
trusts
− Manner of making S-election
− Revocation of S-election
•
Operations
− Self-employment taxes and reasonable compensation
− No special allocations
− Deduction of S-corporation losses:
 Shareholder stock basis
 Shareholder debt basis
− The Built-in Gains Tax
 Does not apply to S-corporations that made a S-election at formation
− Distributions to shareholders: tax-free and taxable.
− Distribution of property to shareholder
 Gain may be recognized at the S-corporation level (including built-in gain if
applicable)
•
Liquidity Event
− Asset sales
 Usually one level of tax to shareholder
 Buyer of assets receives basis in assets purchased according to the
purchase price allocation.
 Some ordinary income recapture can apply.
 Built-in-gain tax
− Stock sales
 Selling shareholder realizes gain or loss, no recapture
 Buyer receives cost basis in the acquired stock
 Option to consider a 338(h)(10) election and treat a stock sale as
asset sale.
Things You Need To Know When Starting A Business
Location: Baker, Donelson, Bearman, Caldwell, Berkowitz, PC
Conference: Emerging Companies Boot Camp
Presenter: mark anthony peterson
Date: December 6, 2012
Agenda: What Startups Should Know
HOW TO FIGHT (BUSINESS STRATEGY) – “NICHE
ENCIRCLEMENT” (WAL-MART BUSINESS CASE)
WHEN TO FIGHT – “MARKETFIGHTING FRAMEWORK”
HOW TO PRESERVE CAPITAL - “PRIORITIZATION
FRAMEWORK”
Ceyero
COMBINE THE TACTICAL PHILOSOPHY OF A GUERRILLA
WITH THE
CAPITALIST GOALS OF AN ENTREPRENEUR.
 What Is A GuerrillapreneurTM?
Guerrillapreneur Combines
“Guerrilla” And “Entrepreneur”.
 Guerrilla Means "Little War".
Entrepreneur Is An “Enterprising
Individual Who Builds Capital
Through Risk And/Or Initiative”.
 Combining The Two Words Creates
GuerrillapreneurTM, A Word That
Describes A Risk Averse, Cash
Conserving Executive Who
Leverages Guerrilla Tactics To Gain
An Advantage.
HOW TO FIGHT - NICHE ENCIRCLEMENT: USE NICHE
MARKETS TO BUILD A SLING SHOT CAPABILITY.
~ Key Strategic Questions ~
 Are Corporate Goliaths Under-Serving Niche
Markets?
 Do Niche Customer Preferences Have Broad
Market Appeal?
 Does Satisfying Niche Preferences Require
Development Of New Processes Or
Technology?
 Is There A Systemic Reason Why The
Reigning Corporate Goliath Is Under-Serving
The Niche Markets?
 When Market Conditions Are Right, Can You
Rapidly Scale Your “Sling Shot Advantage”
And Overtake The Corporate Goliath?
NICHE ENCIRCLEMENT: USE NICHE MARKETS TO BUILD A
SLING SHOT CAPABILITY.
Are Corporate Goliaths UnderServing Niche Markets?
“We passed right by that old variety store
competition, with its 45% markups, limited
selection, and limited hours.” – Sam Walton
Do Niche Customer Preferences
Have Broad Market Appeal?
Everyday Low Prices.
Does Satisfying Niche
Preferences Require
Development Of New Processes
Or Technology?
Invested in Integrated Inventory
Management System
NICHE ENCIRCLEMENT: USE NICHE MARKETS TO BUILD A
SLING SHOT CAPABILITY.
Is There A Systemic Reason
Why The Reigning Corporate
Goliath Is Under-Serving Niche
Markets?
“[Kmart’s] cash registers were actually older
than the people running them. If one cash
register went down, the entire store would
have to close because all the registers went
down”. -Eric Beder, a retail analyst
Can You Rapidly Scale Your
Sling Shot Advantage And
Encircle The Corporate Goliath?
In 1991, Wal-Mart invested over $4 billion
integrating a retail link system into its
satellite communication system.
HOW TO FIGHT – MARKETFIGHTING PHILOSOPHY DRIVEN BY
GROWTH RATES AND BARRIERS TO ENTRY.
ILLUSTRATIVE
– Guerrillapreneur Marketfighting Framework –
YES
– Discussion –
CATEGORY
Market Growth Rate
DECEIVE
DOMINATE
EXAMPLE
• FORCE overreaction (with minimal cost)
DOCILE
• PARTNER with Competitors until Conditions Change.
Honda
(Toyota partnership)
DOMINATE
• INVEST in cost reducing technologies
• ENCIRCLE in Niche markets Waste Management (Recycling)
DISRUPT
• HIT & RUN Sorrell Ridge
(Fruit Jelly)
DOCILE
DISRUPT
OBJECTIVE
DECEIVE
NIKE
(1996 Summer Olympics)
NO
NO
Barriers To Entry
YES
HOW TO PRESERVE CAPITAL - MUST OPTIMIZE SPENDING WHILE
ALIGNING WITH STRATEGIC OBJECTIVES.
ILLUSTRATIVE
– Guerrillapreneur Operations Prioritization Framework –
YES
– Discussion –
Does the Task Differentiate Your Business
CATEGORY
INVEST &
REINVENT
CORE
COMPETENCIES
Invest & Reinvent
OBJECTIVE
• INVEST to re‐launch (next generation competence)
Core
• INVEST to differentiate
Competencies
OUTSOURCE
PARTNERSOURCE
NO
NO
Is the Task Critical To Daily Delivery YES
of the Product/Service
Outsource
• REDUCE cost per user
Partnersource • PARTNER to reduce R&D cost
EXAMPLE
Apple
(iPod)
IBM
(Operating System)
McDonalds
(Drink Carousel)
Apple (App Store)
Nintendo (Games))
NEVER COMMIT THE SEVEN DEADLY SINS
1. Building A Corporate Monument for a Headquarters' Building
(1974 Sear, Roebuck & Company Built a 108 Story Tower)
2. Acquiring Business – Not For Strategic Reasons, But To Grow The Topline
(1995 NationsBank)
3. Creating Complex “Empire” Based Bureaucracies
(In 1995, IBM Executive Assistants Referred To A 60 Page Memo When Resetting Clocks
And Ordering Supplies)
4. Ignoring The Customer Who Brought You To The Dance
(In 199o, McDonalds Offered Pizza And VHS Movies, i.e., Star Wars)
5. Forgetting To Eat Your Own Lunch Before A Competitor Does
(In 2004, America Online Failed To Transition To High Speed Browser-based Access
From Dialup)
6. Forgetting to Play Your Game, especially when it works
(From 2002-2008, American Idol Aired Multiple Nights A Week Beating All
Competitors)
7. Forgetting How To Fight
(From 1987 To 1998, Apple Computer Forgot How To Fight. They Made Clones And Sold
Off Hot Technology, i.e., Newton)
ABOUT THE PRESENTER
1991 Dartmouth College, BA
1995 Amos Tuck, MBA
facebook.com/guerrillapreneur
mark a.peterson@guerillapreneur
www.guerrillapreneur.com
[email protected]
mark anthony peterson, author GuerrillapreneurTM




Today, Managing Executive, Ceyero Consulting
2003‐2010, CEO of PrideRock Holdings, Inc.
2000‐2003, VP of Corporate Incubator, ChoicePoint
1995‐2000, Senior Manager, Accenture
Available on Amazon, Barnes & Noble, and Apple Bookstore
Mark A. B. Carlson
Shareholder
Atlanta
Phone: 404.589.3400
Fax: 404.238.9711
[email protected]
Mark A. B. Carlson, shareholder in the Firm's Atlanta office and leader of the Firm's
Corporate/Mergers & Acquisitions group, helps his clients to structure, negotiate and
execute middle market M&A deals, joint ventures and other business combinations as well
as general business transactions. Mr. Carlson's industry experience includes transactions
and strategic initiatives in manufacturing, private equity, financial services, drug/biomedical
devices and infrastructure.
After law school, Mr. Carlson initially worked as a strategy consultant for a leading
management consulting firm in Boston, and he has served as senior in-house mergers and
acquisitions counsel for a large international infrastructure corporation based in San
Francisco.
Recent Representative Matters







Represented seller in the acquisition of a publicly-traded financial services holding
company.
Represented middle market printing company in sale of business.
Represented pharmaceutical company in negotiation of multiple licensing and
manufacturing arrangements.
Represented Indian corporation in the acquisition of a U.S.-based medical device
manufacturer.
Represented U.S.-based chemical manufacturer in negotiation of licensing and
production arrangements in India and various European Union member states.
Represented green technology manufacturer in private placement of equity and other
business transactions.
Represented private equity group in all aspects of fund formation and investor
solicitation for various investment funds as well as negotiation of multiple credit
facilities.
Publications & Speaking Engagements


Author – "Business Due Diligence Challenges in Successful Lower Middle Market
M&A Transactions," Inside the Minds: Business Due Diligence Strategies, 2011
edition
Speaker – "Seller Financing in M&A Transactions," IBBA/M&A Source 2009
Conference




Speaker – "2008 Outlook for Private Equity Middle Market Mergers & Acquisitions,"
University of Chicago Graduate School of Business
Speaker – "Advanced Solutions to Closing Risk-Challenged Deals," IBBA/M&A
Source 2008 Conference
Speaker – "Legal Considerations in Buying/Selling a Business," Tennessee Society of
Certified Public Accountants
Speaker – "Legal Considerations for the Entrepreneur," FedEx Institute of
Technology
Professional Honors & Activities








Listed in The Best Lawyers in America® in Securities/Capital Markets Law, 2012, 2013
Member – Leadership Atlanta, Class of 2011
Member – Bioscience Leadership Council of the Metro Atlanta Chamber of
Commerce, 2010 to present
Advisory Board Member – National Association of Corporate Directors, Atlanta
Chapter, GA, 2008 to present
Member – Association for Corporate Growth, Atlanta Chapter, 2008 to present
Founding Board Member – Promise Academy Charter School, Memphis, TN, 2004 –
2008
Named to Memphis Business Journal's "Top 40 Under 40", 2007
AV® Preeminent™ Peer Review Rated by Martindale-Hubbell
Admissions




Georgia, 2008
Tennessee, 2004
California, 1998
Massachusetts, 1996
Education


Harvard Law School, J.D., 1995, cum laude
Dartmouth College, B.A., 1992, cum laude
Clint Crosby
Shareholder
Atlanta
Phone: 678.406.8702
Fax: 678.406.8802
[email protected]
L. Clint Crosby, shareholder in the Firm's Atlanta office, concentrates his practice in
intellectual property and business litigation. Mr. Crosby also handles litigation arising from
transportation, construction and employment disputes.
Mr. Crosby's intellectual property litigation experience includes matters relating to patents,
trademarks, copyrights, trade secrets and unfair competition. He handles cases for both
individuals and corporations, including declaratory judgment and infringement actions. Mr.
Crosby also counsels clients regarding their intellectual property and how best to preserve,
protect and maximize intellectual property assets.
Mr. Crosby's transportation litigation experience includes matters involving wrongful death
and catastrophic injury. These cases have addressed issues of negligent hiring and retention,
negligent supervision and entrustment, and DOT and safety related violations. He has also
handled cargo related claims for carriers and freight forwarding companies. Mr. Crosby is a
member of the Firm's 24 Hour Motor Carrier Emergency Response Team, a group of
attorneys dedicated to providing rapid post-accident intervention and investigation
throughout the Firm's footprint and beyond, whenever and wherever needed.
Mr. Crosby acts as a counselor and external general counsel for ongoing businesses and
startup companies. He assists these companies with formation, operating agreements,
employment strategies, intellectual property issues and litigation management.
Mr. Crosby practices extensively in federal and state courts and is also licensed to practice
before the U.S. Patent and Trademark Office.
Recent Representative Matters
Intellectual Property Matters





Represented large ceiling fan manufacturer in patent infringement matters
throughout the United States.
Handled trademark and copyright infringement claims for nationally known real
estate educator.
Advised builders on copyright issues relating to architectural plans, and defended
copyright infringement claims relating to architectural plans.
Litigated patent infringement matters for manufacturers of laser bore sights and
bulk-bag liners.
Defended restaurant against trademark infringement claims including instituting
cancellation proceedings at the Trademark Trial and Appeal Board.
Business Litigation Matters
Defended nationwide retailer in water and sediment runoff litigation arising from
commercial real estate development.
 Defended a public university research foundation against a qui tam action alleging
fraud in the procurement of research grants.
 Counseled large postal corporation on Title VII and other discrimination issues and
represented the company in race and age discrimination claims at the EEOC and in
Federal Court.
 Defended a banking corporation against class-action allegations of securities fraud
and breach of fiduciary duties.
 Represented a real estate developer against fraud claims arising from the execution of
a multimillion dollar promissory note.
Transportation Matters





Litigation of personal injury and cargo claims for large national LTL carrier.
Defended international freight forwarding company in cargo damage and theft
claims.
Coordinated the investigation of a fatality accident for a national carrier.
Advised multiple insurance carriers on claim handling in Georgia.
Speaking Engagements



Guest on "High Velocity Radio," Atlanta Business RadioX, Atlanta, Georgia
(July 2012)
"Introduction to Intellectual Property Law," LawReview CLE, Atlanta, Georgia (April
2011)
"The Impact of Electronic Discovery on Corporations," Atlanta Bar Association's
SpringPosium Intellectual Property Conference (May 2008)










Named a Georgia Rising Star (Intellectual Property Litigation) by Georgia Super
Lawyers (2005, 2006, 2009 – 2012)
Named as one of Georgia's Legal Elite in General Trial Practice, by Georgia Trend
Magazine (2009)
Fellow – American Bar Foundation
Fellow – Atlanta Bar Foundation
Board Member – Member at Large, IP Section of the Atlanta Bar Association (2011 –)
Board Member – Atlanta Council of Younger Lawyers (2005 – 2008)
Barrister – Joseph Henry Lumpkin Inn of Court (2002 – 2004)
Member – American Intellectual Property Law Association
Member – Transportation Lawyers Association
Member – State Bar of Georgia






Volunteer – Truancy Intervention Project
Volunteer – Cobb County Habitat for Humanity
Member – Defense Research Institute
Member – Atlanta, Sandy Springs and American Bar Associations
Member – Georgia Defense Lawyers Association
Member – Lawyers Club of Atlanta
Admissions








Georgia, 1997
Georgia Supreme Court
Georgia Court of Appeals
U.S. District Court for the Northern District of Georgia
U.S. District Court for the Middle District of Georgia
U.S. District Court for the Western District of Michigan
U.S. Court of Appeals for the Eleventh Circuit
U.S. Patent and Trademark Office
Education


University of Georgia School of Law, J.D., 1997
University of Georgia, B.S., Biology, 1994
Justin S. Daniels
Shareholder
Atlanta
Phone: 678.406.8706
Fax: 404.238.9643
[email protected]
Justin S. Daniels is the trusted legal quarterback providing corporate and commercial real
estate advice to fast growing privately held entrepreneurial businesses. He practices law as a
shareholder with Baker, Donelson, Bearman, Caldwell & Berkowitz, PC. Mr. Daniels'
corporate practice consists of representing businesses and business owners in all aspects of
their operations from structuring new ventures, advising on acquisitions and divestitures,
and reviewing and negotiating key vendor, franchise, employment and customer contracts.
He has specific experience representing clients in the technology, manufacturing and
professional services industries. He also represents international companies who have U.S.
operations located in Georgia. He currently represents companies from the United
Kingdom, France, Italy, Sweden and Canada.
Mr. Daniels' commercial real estate practice consists of representing investor syndicates and
commercial developers who acquire, develop, finance and sell commercial real estate. He
has advised investor syndicates and commercial developers in the retail, industrial, office,
apartment building and residential subdivision market segments. He is a frequent writer on
commercial real estate topics and has published articles that include "Finding the Right
Title," "The LLC versus the S-Corp," "Underappreciated Commercial Lease Provisions" and
"Breaking Up Is Hard To Do: Thinking About Exit Strategies at The Outset." Mr. Daniels'
corporate and commercial real estate background uniquely positions him to represent
companies who wish to acquire the assets and commercial real estate of another company
since he possesses both the corporate and commercial real estate background to
successfully advise the client and document and close the transaction.
Mr. Daniels is a National Business Institute faculty member who has taught nationwide
seminars to other lawyers and accountants on topics such as "Nuts and Bolts M&A," "LLC
versus the S corporation" and "Drafting LLC Operating Agreements." He has also taught a
course at Kennesaw State University Small Business Development Council on drafting
complex partnership agreements.
In his free time, Mr. Daniels coaches basketball with 11-12 year olds at Chastain Park and is
a board member of the Technology Association of Georgia Finance Society. He is also a
board member of the Atlanta Jewish Committee. In the past few years he has been a judge
for Junior Achievement through the Atlanta chapter of the Association of Corporate Growth.
He is a graduate of the 2007-2008 Leadership Sandy Springs Class and he plays in squash
tournaments in Atlanta and nationwide.
Representative Matters





Represented shareholder in $110 million sale of management software company to
strategic buyer in a cross border transaction.
Represented shareholder in $50 million sale of health care business to a private
equity fund.
Represented Seller in $10 million sale of large concrete plant and real estate to
international buyer.
Negotiated, structured and documented health care company reorganization from
one company into four companies including investment bank.
General counsel to national technology, manufacturing and professional service
firms.
Publications & Speaking Engagements














Speaker – "Anatomy of an Operating Agreement," Dekalb County Chapter, Georgia
Society Certified Public Accountants (GSCPA), Atlanta, Georgia, July 25, 2012
Speaker – "Nuts and Bolts M&A," Dekalb County Chapter, Georgia Society Certified
Public Accountants (GSCPA), Atlanta, Georgia, July 25, 2012
Speaker – "Selected LLC Operating Agreement Topics," Cherry Deckert & Holland,
June 4, 2012
Panel member – "M&A Experts Panel – Selling Your Business: the Process, the
Pitfalls, what Really Matters," Technology Association of Georgia, April 19, 2012
Speaker – "LLC Operating Agreement Waterfalls," Gross Collins, P.C., April 4, 2012
Speaker – "Practical M&A," Cobb County Chapter, Georgia Society Certified Public
Accountants (GSCPA), Atlanta, Georgia, November 17, 2011
Speaker – "LLC versus the S-Corp," National Business Institute National
Teleconference, October 20, 2011
Panel member – "Technology M&A – Identify Your Goal then Prepare and Execute,"
Technology Association of Georgia, August 23, 2011
Featured – "Protecting your IP," Television Interview on Malcom Out Loud Television
Show, August 11, 2011
Featured – "Choosing the Right Legal Counsel," Television Interview on Malcom Out
Loud Television Show, July 6, 2011
Speaker – "Practical Considerations in M&A Transactions," Atlanta Chapter,
American Institute of Certified Public Accountants (AICPA), Atlanta, Georgia, June
21, 2011
Speaker – "What CEO’s Need to Know before Renewing their Office Lease in 2011,"
ExecSense Webinars, Atlanta, Georgia, March 1, 2011
Featured – "Positioning Your Business for Profitable Exit," Atlanta Business Radio
National Radio Program, Gravity Free Radio, November 15, 2010
Featured – "How to Prepare a Business for Transition," HLB Gross Collins, P.C.,
Gross Reality Internet Radio Program, October 27, 2010









Speaker – "Complex LLC Operating Agreement Issues," Babish Neiman Korman &
Johnson, LLP, Atlanta, Georgia, October 26, 2010
Speaker – "Complex Partnership Agreements," Kennesaw State University Small
Business Development Council, Atlanta, Georgia, October 22, 2010
Speaker – "Purchase Agreement Representations and Warranties and
Indemnification," Abraxas Business Services Buckhead Club, Atlanta, Georgia,
October 20, 2010
Speaker – "Nuts and Bolts M&A," National Business Institute, Atlanta, Georgia,
October 8, 2010
Speaker – "Sophisticated Partnership Agreements and Tax Consequences," Gross
Collins, P.C., September 27, 2010.
Panel Member – " How Technology Company’s Work with Professional Service
Firms," Technology Association of Georgia, May 12, 2010
Speaker – "Common Mistakes Entrepreneurs Make Starting a Business," Atlanta
Business Radio National Radio Program, Gravity Free Radio, April 6, 2010
Speaker – "Top Five Mistakes Technology Companies Make," Brian Cork Human
Capital Accelerator, March 26, 2010
Speaker – "Lease Update 2010," Healthcare Real Estate Advisors, Inc., February 23,
2010

Named a Georgia Rising Star by Georgia Super Lawyers (2006, 2007, 2009 and 2010)
Admissions



Georgia, 1999
Pennsylvania, 1998
U.S. District Court for the Northern District of Georgia
Education


Duquesne University, J.D. and M.B.A., 1998
Virginia Tech University, B.A. in Political Science, cum laude, 1993
William M. Osterbrock
Of Counsel
Atlanta
Phone: 404.589.3418
Fax: 404.238.9633
[email protected]
William M. Osterbrock is of counsel in the Firm's Atlanta office and is a member of Baker
Donelson's Corporate/Mergers and Acquisitions Group and Emerging Companies Team.
From start-ups to emerging mid-market companies to Fortune 500 companies, Mr.
Osterbrock's primary areas of focus are corporate governance, complex business
transactions, mergers and acquisitions, securities, structured financing and business
planning and development. Mr. Osterbrock's regular work with his clients resembles that of
an "outside" general counsel, handling a variety of general business matters and corporate
transactions, both in the United States and internationally. This work regularly includes
negotiating and structuring master services/products agreements; manufacturing, licensing
and distribution agreements; e-commerce agreements and social media policies;
employment and restrictive covenant agreements; corporate formations and restructurings;
regulatory compliance; employee stock option programs; trademark filings; business
combination and divestiture transactions; credit facilities; factoring arrangements; private
placement securities offerings; commercial leasing and real estate acquisitions and financing.
Mergers and Acquisitions
Mr. Osterbrock regularly counsels and represents business clients, ranging from small startups to Fortune 500 Companies, with strategic alliance and joint venture agreements; asset
pool acquisitions and divestitures; and business enterprise acquisitions and divesture
transactions that include strategic acquisitions of competitors, corporate spin-offs and
restructurings, shareholder buyouts and buy-ins, and enterprise and subsidiary sales.



Represented seller in an asset sale of a multi-site collocation services company for a
combined cash and stock purchase price of approximately $10 million.
Represented large independent franchisee in connection with multiple asset
purchase and sale transactions involving various brands of franchise restaurants.
(Acquisitions and divestures valued between $250,000 to $750,000 each).
Represented an industrial packaging equipment manufacturer with the development
and negotiation of joint venture and development agreements with plastics and other
packaging material manufacturers, as well as the development of this client's
standard customized manufacturing equipment customer agreements. Engaged by
this client to directly negotiate the sale of customized equipment to a chocolate
manufacturing company located in El Salvador.
Represented purchaser and servicer of large portfolios of consumer healthcare
receivables with respect to extensive corporate restructuring and asset protection
planning, structuring of numerous joint venture arrangements with private equity
funds and multiple acquisitions of consumer debt portfolios.
 Represented purchaser of large portfolios of dealer-generated consumer automobile
loans with respect to the negotiation and preparation of multiple asset purchase
agreements and dealer loan origination agreements for the purchase of automobile
loan portfolios, as well as the divesture of non-performing loans.
 Represented a private equity fund in the acquisition of a $128 million asset portfolio
from a private seller and The Royal Bank of Scotland.
 Represented the seller of a Las Vegas–based turf grass manufacturer and installation
company in the sale of all of the company's assets.
 Represented issuer of a Luxembourg-domiciled $1 billion asset-backed securitization
bond program in the redomestication of the issuer from Luxembourg to Ireland.
 Represented a large Texas-domiciled property and casualty insurance company in
the acquisition of 100% of the outstanding stock of a smaller Texas-domiciled
property and casualty insurance company for an acquisition price of $23 million.
 Worked on a team that represented a large publicly-held insurance holding company
with respect to the spinoff of its entire Medicare prescription drug business to
another publicly-held corporation. Approximate size of transaction valued at more
than $85 million.
Securities and Structured Finance

Mr. Osterbrock's securities and finance practice includes the structuring of U.S. and
international private securities offerings (both equity and debt offerings), including followon offerings, special purpose vehicle (SPV) acquisition offerings, preferred stock offerings
and rights offerings, Rule 144A institutional offerings and investment fund formations. He
has also worked extensively with business clients in the purchase and sale of commercial
real estate, and the procurement of construction and development loans and other real
estate financing (both traditional and private equity, including mezzanine loans).



Represented a private equity investment fund with respect to a corporate
reorganization and an internal transfer of approximately $25 million in asset
portfolios that involved various newly-created German limited partnerships and
Delaware limited liability companies. This project also included the restructuring of
an existing $200 million credit facility with a large U.S. bank., a subordinated loan
with large private German bank and multiple internal subsidiary loans.
Represented a Texas non-profit corporation in the development of a $5 million
private securities offering of secured promissory notes for the funding of various
endowment programs for religious organizations.
Represented a private equity group with respect to redomestication of Curacao-based
investment fund to Ireland, the transfer of the fund's assets to a Delaware trust and
amendment to the fund's current revolving credit facility with a large U.S. bank.
Transaction involved an offering of $500 million (USD) of fixed rate notes on the
Irish Stock Exchange and the consolidation of multiple portfolios of assets having a
total approximate book value of $950 million.
 Represented a real estate holding investment group with respect to the acquisition,
resale and related financing of a 20-acre commercial property site in Georgia for the
development of a mixed-use retail, office and residential facility. Transaction valued
at approximately $12 million.
 Represented a commercial real estate investor in the purchase of a Georgia office
building which involved a like-kind exchange under Section 1031 of the Internal
Revenue Code from the sale of a similar property in Phoenix, Arizona.
Emerging Companies
From infancy to structured growth plans to eventual sell-offs, Mr. Osterbrock works with a
number of small and emerging companies throughout many stages of their corporate
development. Such representation includes counseling clients on choice of entities, entity
formation and structuring, management structuring, operating and partnership agreements,
employee and compensation matters, succession planning and business contract
development.




Serve as outside general counsel for a small manufacturer of an outdoor convection
smoker with specific emphasis on negotiation of supplier and distribution
agreements for the manufacture and distribution of the client's products. Also
represented the CEO of the company in an extensive and prolonged buyout process
of other equity owners; and, in connection therewith, a receivables factoring
arrangement with a private funding source. Recently assisted this client with the
completion of an exclusive distribution and private-labeling agreement with a large
outdoor grill manufacturer and celebrity endorser.
Represented a small golf-training equipment manufacturer in the development and
negotiation of multiple exclusive distribution and licensing agreements with
distributors of manufacturer's products in Shenzen, P.R. China, Hong Kong, United
Kingdom, the Middle East, Trinidad and Tobago and South Korea.
Served as outside general counsel for a small architectural design firm, which holds a
number of U.S. patents for structural steel frame designs. Representation included
corporate structuring and asset protection matters; employee matters (including
compensation arrangements); trademark filings and maintenance; and development
of a number of joint venture, strategic alliance, manufacturing, licensing and
distribution agreements for the production and use of client's patented technology
throughout the United States.
Represented a small insurance holding company with respect to the restructuring of
its subsidiary's debt and the creation of a $500,000 revolving inter-company credit
facility and related state insurance regulatory filings.



Represented a small office furniture distributor in the procurement of a factoring
arrangement involving the client's accounts receivable.
Represented a large manufacturer of solar power generation equipment located in
California with respect to a RFP bid process and subcontractor agreement for
construction of a power generation facility in South Africa.
Represented an in-store media and marketing design and implementation company
with respect to various architectural and interior design services and installation
agreements for the development of consumer research centers in the United States
and Shanghai, P.R. China for a large international consumer products manufacturer.

"The Impact of Today's Global Capital Markets on Corporate Development Activity,"
Atlanta Bar Association cle event (September 20, 2012)


Named a "Rising Star" by Georgia Super Lawyers (2010 and 2011)
Member – Atlanta Bar Association
 Chair – Corporate Counsel Section (2011 – 2012)

 Board of Directors -Corporate Counsel Section (2008 to present)
Member – State Bar of Georgia
 Partnership and Limited Liability Company Legislative Committee
Admissions


Georgia, 2005
U.S. District Court for the Northern District of Georgia, 2006
Education

Syracuse University College of Law, J.D., 2005, cum laude
 Law Review

 Moot Court Honor Society
Michigan State University, B.A. in Criminal Justice and B.A. in Law and Society, 2000
Michael J. Powell
Shareholder
Atlanta
Phone: 678.406.8707
Fax: 678.406.8807
[email protected]
Michael J. Powell, shareholder in the Firm's Atlanta office, concentrates his practice in
business matters involving intellectual property. Having practiced intellectual property law
since 1991, his extensive experience includes representing businesses in transactional and
litigation matters concerning patent, trademark, trade dress, copyright, trade secret, unfair
competition, false advertising, false marking, antitrust and related issues. Mr. Powell is a
registered patent attorney and a frequent lecturer on intellectual property issues.
Focus Areas of Practice
Intellectual Property Transactions

Patents

 Protecting Design and Utility Inventions; Evaluating Patents and Prior Art;
Developing Cost-Effective Strategies for Building and Managing Patent
Portfolios.
Trademarks

 Protecting Trademarks, Service Marks and Trade Dress (Product
Configurations); Brand Acquisition, Development and Management
Strategies; Evaluating Secondary Meaning and Likelihood of Confusion.
Copyrights

 Protecting creative expression; Evaluating Infringement Allegations, Fair
Use Defenses and First Amendment Rights.
Trade Secrets

 Identifying and protecting trade secrets; Counseling as to appropriate safeguards for trade secrets and proprietary information.
Business Agreements
 Assignments; Licensing; Distribution; Franchise; Software; Research;
Development; Marketing; Advertising; Joint Venture; Investors;
Employees;
Non-Competition;
Non-Disclosure/Confidentiality
Agreements (NDA's); Settlements; Releases; Sponsorships; Websites.
 IP Audits and Due Diligence
Intellectual Property Litigation


Patent, Trademark and Copyright Infringement
Unfair Competition and False Advertising under the Lanham Act





Misappropriation of Trade Secrets
Deceptive Trade Practices
Antitrust Issues
Breach of Contract
Business Disputes
Representative Business/Transactional Matters












Corporate Restructuring – Counsel to several U.S.-based suppliers of overseas
products in corporate restructuring to accommodate new partner(s), investors
and/or distributors while protecting intellectual property rights.
Software Development – Counsel to clients engaged in software development
including mobile phone and tablet applications.
Online and Social Media Marketing – Counsel to clients undertaking online
advertising and social media marketing.
International Manufacturing – Counsel to foreign manufacturers introducing
products and/or services into the U.S. in view of competitors' patents.
Financial Services Software – Counsel to U.S. publicly traded financial services
company in acquiring foreign-developed software for use in the U.S. and further
development of U.S. and foreign versions of the software.
Pharmaceutical Patents – Advised compounding pharmacy in acquiring rights to
make, use and sell certain patented technology and formulations for
pharmaceuticals.
Licensing Agreements – Assisted client in purchase of assets and intellectual
property from licensor/distributor and in amending license/distribution agreement
to maintain product distribution in U.S. while distributor reorganized to improve
cash flow.
Patent Infringement Advice – Counsel to U.S. publicly traded financial services
company to determine risks of infringement of competitor's patents posed by client's
proposed product enhancements.
Intellectual Property Rights – Counsel to Marine Shipyard and Oilfield Contractor
with regard to acquiring, enforcing, licensing and selling intellectual property rights.
Food and Beverage Intellectual Property – Advised food packaging client in
protecting intellectual property rights in acquisition by publicly-traded global food
and beverage products manufacturer.
Financial Intellectual Property – Intellectual Property Counsel to dynamic Real
Estate Investment Trust (REIT) client operating in North America.
Retail Apparel Intellectual Property – Protected brand management company in
acquiring, defending, registering and licensing trademark portfolios in retail apparel,
footwear, furniture, kitchen goods and home accessories. Represented client in
transactions and/or litigation through the U.S. Patent & Trademark Office, the
Trademark Trial & Appeal Board and U.S. Bankruptcy Courts.
Representative Litigation Matters











Patent Trolling Litigation – Counsel to many U.S. and International companies in
defense against patent infringement litigation initiated by patent trolling companies.
Intellectual Property Litigation – Consulting expert for customer relationship
management (CRM) software owner in U.S. District Court case for infringement,
breach of contract and conversion. Successfully mediated resolution.
Patent, Trademark and Trade Dress Litigation – Counsel to international food
container manufacturer enforcing patent, trademark and trade dress rights against
competitor in U.S. District Court. Obtained court-ordered injunctive relief.
Patent Infringement Litigation – Defended subsidiary of publicly-traded company
against patent infringement claims concerning wireless thin client technology.
Obtained dismissal of claims prior to filing answer or responsive pleadings.
Trade Secret Litigation – Defended information technology (IT) consulting
firm against claims that client had stolen trade secrets after client replaced
competitor on multi-million dollar maintenance and upgrade of utility software and
systems. Obtained dismissal. Affirmed by U.S. Court of Appeals. See Southern Nuclear
Operating Company, Inc. v. Electronic Data Systems Corporation v. Computer Technology
Solutions, Inc., 273 Fed.Appx. 834, 2008 WL 1700204 (11th Cir. 2008).
Semiconductor Patent Litigation – Defended overseas manufacturer of computer
chips (semiconductors and toroid transformers) and U.S. subsidiary against patent
infringement allegations. See e.g., Halo Electronics, Inc. v. Bel Fuse, Inc. et al., 2010 WL
2464811 (N.D.Cal. 2010). Obtained dismissal of U.S. District Court case.
Electronics Patent Litigation – Defended subsidiary of publicly-traded company
against patent infringement claims filed by global competitor in U.S. District Court
for the Northern District of Georgia concerning flicker compensation systems for flat
panel displays. Obtained dismissal of U.S. District Court case.
Retail Patent Infringement Litigation – Counsel to national retailers (restaurant
chain, electronics retail store, office supply retail store) defending against patent
infringement claims made by Non-Practicing Entity (NPE or patent troll) concerning
financial transaction systems. See Ware et al. v. Circuit City Stores, Inc. et al, 2010 WL
767094 (N.D.Ga. 2010). Obtained dismissals of U.S. District Court case(s).
Retail Copyright Infringement Litigation – Defended national department store
retailer and product supplier against allegations of infringing copyright and engaging
in unfair competition. Obtained dismissal of allegations.
Manufacturing Unfair Competition Litigation – Defended North American vehicle
parts manufacturer against competitor's claims of unfair competition (trade dress),
theft of trade secrets and unjust enrichment in Ohio state court. Obtained dismissal.
Non-Profit Intellectual Property Litigation – Defended 501(c)(3) non-profit
organization against conversion and misappropriation of IP claims in trial, appellate
and bankruptcy court. Obtained court-ordered dismissals. See e.g., Fowler v. Our
Loving Mother's Children, Inc. et al., 262 Ga. App. 288; 585 S.E.2d 211 (Ga. App.
2003); Little Drummer Boy Productions, Inc. v. OLMC, Inc. et al., 2001 WL 766963

(E.D.La. 2001); In Re Waitz, 567 S.E.2d 87, 255 Ga.App. 841, 2 FCDR 1817 (Ga.
App. 2002).
False Marking/Deceptive Trade Practices Litigation – Counsel to exclusive
licensee of patent in U.S. District Court and U.S. Court of Appeals litigation
concerning infringement, false marking and deceptive trade practices. Obtained
court-ordered injunctive relief and damages award. See Enforcer Products, Inc. v.
Robert Birdsong et al., 98 F.3d 1359, 40 U.S.P.Q.2d 1958, 1996 WL 592161 (Fed. Cir.
1996).
Representative Industries/Technologies




















Retail
Manufacturing
Electronics
Financial Services
Information
Technology
Advertising
Marketing
Software
Mobile Phones
Tablet Applications
Financial
Transactions
Inventory
Management
CRM Systems
Logistics Systems
Money
Order
Dispensing
Flat panel Displays
Semiconductors
Toroid Transformers
Casino and Video
Games
Cosmetics Packaging




















Food/Beverage
Packaging
Thermoformed
Packaging
Medical Devices
Catheters
Surgical Garments
Medical and Work
Gloves
Apparel
Footwear
Sportswear
Fashion Accessories
Home Goods
Furniture
Nuclear Power Plants
Pipeline Inspection
Railway Inspection
Pipeline
Recovery
Systems
Offshore
Oil
Rig
Welding
Hydraulics
Excavators
Electromagnetic
Technologies




















Phased-Array Radar
Optoelectric
Controllers
Fiber Optic Cabling
Diaper Manufacturing
Nonwovens
Manufacturing
Commercial Ovens
Refrigeration
Hardware
Pistols
Drywall Anchors
Insect Traps
Scuba and Mono-Fins
Bicycle Brakes
Recycling Equipment
Sterilizers
HVAC Systems
Rotary Engines
Power
Take-Off
Devices
Pharmaceuticals
Pharmaceutical
Delivery
Dietary Supplements
Professional Organizations


American Bar Association (Intellectual Property Law Section, Intellectual Property
Litigation Committee) – Member, Roundtable Host and Moderator (2010 – 2012)
American Intellectual Property Law Association (AIPLA) – Member, Author, Lecturer
– Licensing and Management of IP Assets Committee






Atlanta Bar Association (Intellectual Property Section) – Member, Author, Lecturer,
Program Chair
Georgia State University College of Law – Graduate, Member of Intellectual Property
Advisory Board, Author, Lecturer
Guest Lecturer – Georgia State University, J. Mack Robinson College of Business
Member, Lecturer – Intellectual Property Owner's Association (IPO)
Member – International Trademark Association (INTA)
State Bar of Georgia – Member in good standing since 1991; Chairman –
Management Information Systems Committee, 1998 – 2000










"Social Media Considerations for IP Counsel," The Corporate IP Institute – sponsored
by Georgia State University College of Law, Atlanta, Georgia, October 2012
"The Practice of Intellectual Property Law," sponsored by John Marshall Law School,
Atlanta, Georgia, April 2012
"Strategic Implications of the Patent Reform Act of 2011," sponsored by the
Intellectual Property Litigation Committee of the American Bar Association (ABA)
Section of Litigation, Roundtable, Atlanta, Georgia, December 2011
"Ethical Issues Facing Corporate IP Counsel," The Corporate Intellectual Property
Institute, sponsored by Georgia State University College of Law, Atlanta, Georgia,
November 2011
"Day of the Trolls: The Pros and Cons of Settling a Patent Case and Taking a License
When the Products Do Not Seem to Infringe," sponsored by the American
Intellectual Property Law Association (AIPLA), Licensing and Management of IP
Assets Committee, Washington, DC, October 2011
"Use of Competitor's Trademark in Keyword Advertising: Infringement or Not?"
sponsored by the Intellectual Property Litigation Committee of the American Bar
Association (ABA) Section of Litigation, Roundtable, Atlanta, Georgia, March 2011
"Implications of Recent Court Decisions on the Application of the 'Entire Market
Value Rule' to Patent Damages Analysis," sponsored by the Intellectual Property
Litigation Committee of the American Bar Association (ABA) Section of Litigation,
Roundtable, Atlanta, Georgia, December 2010
"Social Media and Networking - Pretty Cool or Downright Dangerous?" The
Corporate Intellectual Property Institute, sponsored by Georgia State University
College of Law, Atlanta, GA, November 2010
"Ethical Considerations in IP Practice," sponsored by the Atlanta Bar Association and
Georgia State University College of Law, Sixth Annual SpringPosium Intellectual
Property Conference, Barnsley Gardens, Adairsville, Georgia, May 2010
"Patent Strategies for Competing in a Down Economy," The Corporate Intellectual
Property Institute at Georgia State University in Atlanta, November 2009





"Trademarks In Distress! (How to Buy and Sell Trademarks in Bankruptcy),"
sponsored by the Intellectual Property Owners' Association, 37th Annual Meeting,
Chicago, Illinois, September 2009
"Managing Legal Risks and Lawyers," sponsored by the J. Mack Robinson College of
Business, Georgia State University, Professional MBA Program, July 2009
"How to Survive in an Upside Down Economy - Recession-Proofing Tips and Trends
from an Intellectual Property Perspective," 4th Annual IP Hot Topics Luncheon,
sponsored by Georgia State University College of Law, May 2009
"The Impact of Electronic Discovery on Corporations," sponsored by the Atlanta Bar
Association and Georgia State University College of Law, Fourth Annual
SpringPosium Intellectual Property Conference, Brasstown Valley Resort, Young
Harris, Georgia, May 2-4, 2008
"Fundamentals of Intellectual Property Law," sponsored by Lorman Seminars,
Atlanta, Georgia, and Birmingham, Alabama, May 2006
Publications














Quoted, "Copyright: Flava Works Inc. v. Gunter," Westlaw Journal Computer & Internet,
August 24, 2012
"Doing More With Less: Effective Strategies For Policing Your Brand While On A
Tight Budget," Eighth Annual SpringPosium Intellectual Property Conference, April
2012
"Yahoo's IP Suit Against Facebook Could Backfire, Attys Say," Law360, March 2012
"Patent Reform - Practitioners Sound Off On The Merits And Drawbacks Of The
Sweeping New Law," The National Law Journal, October 2011
"Businesses Cheer Patent Reform, Hurdles Still Loom," FoxBusiness, September 2011
"Patent Reform Elicits Cheers From Business, But USPTO Faces Big Challenges," AOL
Government, September 2011
"First-To-File Patent System To Favor Big Biz," Law360, September 2011
"Google Fortifies Patent Portfolio With Motorola Deal," Managing Intellectual Property
Magazine, August 2011
"Technology News - Motor Carriers Being Hit With Lawsuits," Furniture Transporter International Furniture Transportation and Logistics Council, June 2011
"Second Circuit Says eBay Is Neither Direct Nor Contributory Infringer of Tiffany
Marks," Bureau of National Affairs (BNA)'s Electronic Commerce & Law, April 2010
"Legal Issues Presented By Social Networking," HR.com, October 2009
"Changing Trends in IP Disputes," Navigating Intellectual Property Disputes, part of the
Inside the Minds series, Aspatore Books (2009)
"Recession-Proofing: IP Is Key," Law360, March 2009
"Avoiding Infringement: Minimizing Risks Posed By Intellectual Property Litigation,"
SmartBusiness Atlanta Magazine, August 2008
Law Firm Leadership

Baker Donelson – Shareholder (2000 – present); Co-Founder of the Intellectual
Property Practice Group (2000); Office Managing Shareholder (Atlanta, 2005 –
2008); Co-chair of Intellectual Property Litigation Practice Group (2003 – 2005);
Conflict Committee Member (2005 – present)
Professional Honors







AV® Preeminent™ Peer Review Rated by Martindale-Hubbell
Listed in The Best Lawyers in America® in Copyright Law, 2013
Listed in Chambers USA: America's Leading Business Lawyers as a leading intellectual
property lawyer in Georgia, 2007 and 2009 – 2012
Selected as one of the top 100 attorneys in Georgia by Georgia Super Lawyers, 2010 –
2012
Selected to Georgia Super Lawyers by Law & Politics for Intellectual Property
Litigation, Intellectual Property and Antitrust Litigation, 2009 – 2012
Named as one of Georgia's Legal Elite by Georgia Trend Magazine, 2007 in
Intellectual Property Law, 2009 – 2012 in Business Law
"Volunteer of the Year" Pro Bono award, Southface Energy Institute, 2010
Admissions







State Bar of Georgia
Supreme Court of Georgia
Georgia Court of Appeals
United States Court of Appeals for the Eleventh Circuit and for the Federal Circuit
United States District Courts (Northern and Middle Districts of Georgia; Eastern
District of Texas; Eastern District of New York; Northern and Central Districts of
California; District of Minnesota; Southern District of Alabama)
United States International Trade Commission
United States Patent and Trademark Office
Education

Georgia State University College of Law, J.D., 1991

 Moot Court Board
Loyola University, New Orleans, B.S. Physics, 1988
Andrew Ibbotson
Digital Assent
CEO and President
Andrew Ibbotson is the founder and CEO of Digital Assent, a healthcare media and marketing
company that helps patients make more educated and informed decisions at the point of care.
The company’s award-winning PatientPad® technology is transforming the patient experience at
doctor’s offices throughout the United States.
Andrew was recently named 2012 “Business Person of the Year” by the Metro Atlanta Chamber,
2012 “Entrepreneur of the Year” at TiECON Southeast, and 2012 “Mobile Marketer of the Year”
at the third annual Tech Marketing Awards. He was also recognized as one of Atlanta’s “40
Under 40″ business leaders by the Atlanta Business Chronicle.
Under his leadership, Digital Assent has earned significant recognition. Highlights include being
selected by Forbes Magazine as a finalist for its annual “List of America’s Most Promising
Companies” and winning the “Cool Technology of the Year” award presented by TechAmerica
and the Technology Association of Georgia.
Prior to Digital Assent, Andrew served as President and CEO of Synthis Corporation from 1999
until 2009, where he oversaw the development and launch of an interactive advertising and
selling solution that grew to over $500 million per month in sales transactions before being
acquired by a multi-billion dollar, market-leading software company.
Andrew is an active member of the Atlanta technology community. He sits on the Board of
Directors for Venture Atlanta, serves as a mentor and advisor to several early-stage
entrepreneurs, and regularly speaks at events throughout the country to promote innovation and
entrepreneurship.
Andrew holds a degree in Industrial Engineering from Georgia Tech where he graduated with
high honors and was elected to the Tau Beta Pi Engineering Honor Society. He is a founding
member of the Georgia Tech Business Network and a past member of its Board of Directors.
Away from the office, Andrew has a passion for adventure sports. He is an accomplished
distance runner, mountain biker, Ironman triathlete, and a former scratch golfer. In 2005,
Andrew had the honor of racing with the number one ranked adventure racing team in the
country and is a past winner of the Nissan Xterra Southeast Region Off-Road Triathlon Series.
David Moeller
CodeGuard
CEO and Co-founder
CodeGuard is led by CEO and co-founder David Moeller, a seasoned manager and entrepreneur
with two successful exits in the last five years. After being featured on ABC's "American
Inventor", David co-founded a company and licensed technology to Whirlpool. With a passion
for education, he built and grew a startup SAT/ACT test preparation business to several hundred
employees before leading it to an acquisition. He was formally trained on General Electric's
Technical Sales Leadership Program, and held sourcing and operations positions with GE in the
U.S. and China before beginning his entrepreneurial career. David has a B.S. in Mechanical
Engineering, highest honors, from Georgia Tech, and an M.B.A from Harvard Business School.
Matt Perry
Engent
Vice President Sales and Founder
Prior to the creation of Engent in 2002, Matt was part of the Siemens team as a global business
development manager. His work experience prior to Siemens was focused within the electronics
industry, which included capital equipment sales for Panasonic as well as R&D program
management. Matt's previous work experience as the Program Manager for the Center for Board
Assembly Research center at the Georgia Institute of Technology has allowed him to understand
the demands of new technology and how to efficiently translate them into commercially viable
products. Marr has a Bachelor's of Science in Mechanical Engineering from Purdue University
and a Master of Business Administration from Duke University.
Vince Eget
Bennett Thrasher
Shareholder
Vince Eget is a shareholder within our Tax practice. He has significant experience working with
companies in technology, healthcare, construction, real estate, hospitality and in the areas of S
corporations and multi-state taxation.
Vince provides a broad array of tax consulting for entities ranging from formation and structural
issues to succession and liquidity events as well as critical business and tax planning throughout
their life cycle. He has considerable experience with advising clients through the acquisition and
sale of their businesses. These have included asset deals, stock deals, IRC 338(h)(10) elections,
ESOP transactions, management buy outs, recapitalizations, redemptions and mergers.
Vince joined Bennett Thrasher in 1997 after beginning his career at BDO Seidman and then
practicing several years with local firms in Atlanta. He graduated from Indiana University of
Pennsylvania in 1985 with a Bachelor of Science in Accounting. He is a member of the Georgia
Society of CPAs (GSCPA) and the American Institute of Certified Public Accountants (AICPA).
Additionally, he is a member of the North Atlanta Tax Forum, Association for Corporate
Growth, the Technology Association of Georgia and the Atlanta CEO Council.
Mark Anthony Peterson
Ereptus, Inc.
Co-CEO
Before creating Ereptus, Inc., Mr. Peterson was formerly a co-founder, President & CEO of
PrideRockholding Company, Inc. Peterson served as a strategy consultant with Accenture and
serviced as the Managing Executive for a start-up incubator at ChoicePoint and President of
Domestic Screening for First Advantage. Mr. Peterson has a BA from of Dartmouth College and
received his MBA from the Amos Tuck School of Business at Dartmouth. Peterson is the author
of the book, Guerrillapreneur: Small Business Strategy For Davids Wanting To Defeat Goliaths.
Glen Bachman
Bachman International LTD
President
Glenn Bachman is an entrepreneur and angel investor for Atlanta based technology companies.
Glenn has held senior management and board member positions with venture capital backed and
self-funded businesses including one NASDAQ IPO. Glenn is a native Atlantan and earned his
MBA from the College of William & Mary.
Brian Cork
brian cork Human Capital
Business and Executive Coaching, Investor
Brian Patrick Cork is a trusted adviser, and has been a highly successful executive and
entrepreneur, seasoned public speaker, professional athlete, and, business coach with a long
history of helping leaders make better decisions. On any given day, Brian Cork speaks with and
shares ideas with people ranging from politicians and educators to Fortune 50 executives and
start-up entrepreneurs. His Executive and Business Coaching Clients include top executives in
Fortune 50 companies to professionals in transition.
Brian Cork has raised nearly one billion ($1B) dollars in private placement capital for a wide
array of companies across every industry; recruited and counseled hundreds of executives and
other decision-makers; and, has actively participated in building dozens of successful
organizations.
Brian was named to London’s prestigious ‘Ol Man Society for his contributions as a
businessman and philanthropist – and, his well-balanced approach to life. In addition, he has
been recognized as one of the most influential entrepreneurs in the Southeast selected by
“Catalyst Magazine” as a Top 50 Entrepreneur and a Top 25 Entrepreneur, and has been named
by Great Britain’s G2 economics as a Coalition Member of the Year.
In 2009 Brian rolled-out his highly anticipated “Accelerator” program where he is actively
involved around incubating several disruptive technology (client) companies in the Atlanta
market. In each case Brian has facilitated first-round investments, recruited best-of-class
candidates, and is actively involved in establishing new business development through his
network and broad range of client companies and strategic partners.
David J. Gunter, CPA
Dave Gunter
Angel Investor
Mr. Gunter serves as Executive Pastor of Alpharetta First Baptist Church, and is active as an
investor, advisor and board member in technology, software, clean energy, real estate and early
stage enterprises.
In August, 2010 Mr. Gunter retired as Executive Vice President and Chief Financial Officer of
Ocwen Financial Corporation (NYSE:OCN), a subprime mortgage servicer and asset manager.
During Mr. Gunter’s tenure starting in May 2006, Ocwen experienced a doubling in market
capitalization via operational improvements, the spin of three Ocwen business segments to create
Altisource Portfolio Solutions S.A. (NASDAQ:ASPS), and equity raises of $335 million.
Through the credit crisis of 2007 through 2009, Mr. Gunter was able to keep Ocwen solvent by
increasing debt capacity via expansion of bankruptcy remote, special purpose vehicles which
were rated AAA or AA by the ratings agencies. In 2007, Ocwen raised two funds by partnering
with private equity firms to finance securitized loans, whole loans and mortgage servicing rights.
Mr. Gunter started his career with Touche Ross in Pittsburgh, PA in September 1982 following
completion of a BSBA degree at Concord College and a Masters of Professional Accountancy at
West Virginia University. Subsequently, Mr. Gunter progressed through fourteen years in
executive positions for finance, accounting and operations in Cellular One, BellSouth
Corporation and Cingular Wireless. In November 2002, Mr. Gunter was recruited to Equifax as
the SVP Chief Accountant and later was promoted to SVP Finance. Mr. Gunter earned clean
audit and Sarbanes Oxley opinions at all times during his SEC reporting career.
Ronald B. Goldman
Croft & Bender
Managing Director
Mr. Goldman joined Croft & Bender in 1997. From 1992 to 1995, Mr. Goldman worked in the
Corporate Finance Department at The Robinson-Humphrey Company, Inc. Mr. Goldman has
substantial experience in mergers, acquisitions, private equity transactions and public offerings,
and has been involved in a wide range of industries.
Mr. Goldman is also a Partner of C&B Capital, a growth equity fund affiliated with Croft &
Bender.
Mr. Goldman received an M.B.A. from Harvard Business School and a B.S. in Management,
magna cum laude, from Tulane University.
BAKER DONELSON’S
FIRM PROFILE
EX PAND YOUR EX PECTATIO NS
SM
S
ince our beginnings in 1888, Baker
Our unique approach to providing legal services
Donelson has built a reputation for
is enabled by our extensive support structure.
achieving results for our clients on a wide
As the 72nd largest law firm in the U.S., Baker
range of legal matters. While providing legal
Donelson gives clients access to a team of more
services is our focus, it is how we deliver them
than 600 attorneys and public policy advisors
that sets us apart. Our goal is to provide clients
representing more than 30 practice areas,
with more than what they have come to expect
all seamlessly connected across 18 offices to
from a law firm.
serve virtually any legal need. Clients receive
Baker
Donelson
commits
to
a
informed guidance from experienced, multi-
deep
disciplined industry and client service teams.
understanding of a client’s business, to enable
Our diversity and women’s initiatives ensure
us to anticipate clients’ needs and assist in their
diversity in our people, perspectives and
decision making processes. Because we offer
experiences. Technology helps us operate more
consistent, knowledgeable guidance based on
effectively and efficiently by providing instant
their specific goals and objectives, clients view
access to client-specific information and other
us as a valued business partner. This allows
key resources.
them to focus on the growth and success of
their business, confident their legal issues will
be handled by an attentive, responsive team.
States of Licensure
Our Office Locations
Washington, D.C.
VA
KY
Huntsville
Memphis
AR
Nashville
TN
AL
LA
TX
Houston
Baton
Rouge
Chattanooga
MS Birmingham
Jackson
Mandeville
Tri-Cities
Knoxville
NC
SC
Atlanta
Macon
Montgomery GA
New
Orleans
FL
Orlando
Alabama
Arkansas
California
Colorado
Connecticut
Delaware
District of Columbia
Florida
Georgia
Illinois
Indiana
Kentucky
Louisiana
Maryland
Massachusetts
Michigan
Minnesota
Mississippi
Missouri
Montana
Nebraska
New Jersey
New Mexico
New York
North Carolina
Ohio
Pennsylvania
Rhode Island
South Carolina
Tennessee
Texas Virginia
Washington
West Virginia
Wisconsin
What Sets Baker Donelson Apart
• Our Health Care practice is nationally recognized:
• Our Baker Donelson Nonprofit Institute allows attorneys
Modern Healthcare named us the eighth largest
to provide board training, charter and bylaw review
health law practice in the U.S. (2012); Chambers
and advice, director liability analysis and more on a
USA: America’s Leading Business Lawyers (2012)
pro bono basis to nonprofit organizations.
as one of the nation’s leading health law practices;
and American Health Lawyers Association (AHLA)
named us as one of the top ten health practices in
the nation.
• Ranked by FORTUNE magazine as one of the “100
Best Companies to Work For” since 2010; one of
only four law firms to make the list in 2012.
• National Law Journal’s 2012 list names us as the
country’s 72nd largest law firm.
• We created BakerManage™, an industry-leading
proactive project management system that ensures
your complicated legal matters are managed
efficiently and completed on time and within budget.
• We created BakerCorp Connect and BakerLit
Connect, collaborative, web-based tools that allow
our clients to manage corporate and litigation
• We have been consistently ranked by Multicultural
Law magazine in the “Top 100 U.S. Law Firms For
Diversity” since 2005, and the “Top 100 Law Firms
For Women” since 2008.
• We established the Baker Donelson Diversity
Scholarship Program for law students. Through
it, recipients of the three annual scholarships are
awarded a salaried second-year law student
Summer Associate position, and $10,000 is paid
during the students’ third year of law school to help
defray the cost of tuition and related expenses.
• Since 2006, we’ve been listed as a “Go-To Law
Firm” in the Directory of In-House Law Departments
of the Top 500 Companies, produced by Corporate
Counsel and American Lawyer Media.
• Chambers USA: America’s Leading Business
matters more efficiently through real-time information.
Lawyers 2012 list ranked 76 of our attorneys across
These and other related online services deliver
26 practice areas, with 25 of those practice areas
cutting-edge legal support to our clients, reducing
noted as leading practices in individual states.
costs and improving results through innovative
knowledge management.
• We established the Howard Baker Forum in
• Best Lawyers In America® 2013 named 229 of
our attorneys to its list. Based upon total number
of attorneys listed, we rank first in the nation in
Washington, D.C. to provide a platform for
the areas of Banking and Finance Law, Business
examining specific, immediate, critical issues
Organizations, Closely Held Companies and
affecting the nation’s progress at home and its
Family Businesses Law, Commercial Finance
relations abroad. Under Senator Baker’s leadership,
Law, Commercial Transactions/UCC Law, Mass
the Forum organizes a variety of programs and
Tort Litigation/Class Actions, Personal Injury
research projects to examine and illuminate public
Litigation, Privacy and Data Security Law, Product
policy challenges facing the nation today.
Liability Litigation, Medical Malpractice Law and
• Our commitment to pro bono matters is routinely
recognized on an individual city and lawyer basis.
Transportation Law.
• We were awarded 151 different Tier 1
Recent nods have come from the Birmingham Bar
metropolitan rankings in the 2013 U.S. News – Best
Association Volunteer Lawyers Program, Louisiana
Lawyers “Best Law Firms” list, which ranks us among
State Bar, State Bar of Georgia, Mississippi Volunteer
the top 20 firms nationally with the most first-tier
Lawyers Program, Mississippi State Bar, Legal Aid of
metropolitan rankings.
East Tennessee, and the Tennessee Bar Association.
Index of Practices & Industries
Admiralty & Maritime
Health Care Antitrust
Class Action
Financing Long Term Care Facilities
ADR - Center for Dispute Resolution
Health Care Labor & Employment
Commercial/Business Litigation
Antitrust
Health Information Technology Law and Policy
Construction
HUD-Insured Financing Transactions for
Nursing Homes and Senior Housing Facilities
Interstate Land Sales Full Disclosure Act
Health Reform
eDiscovery
Office Developments
Health Systems/Hospital Transactions
Real Estate Investment Trust (REIT)
Retail and Mixed Use
Bankruptcy and Creditors’ Rights
CMBS Special Servicers
Commercial Real Estate Recovery Team
Directors and Officers Litigation
Eminent Domain
Broker-Dealer/Registered Investment Adviser
HIPAA
Environmental
Business Technology
Hospital/Physicians Joint Ventures
Health Care Advocacy
Securities and Corporate Governance
Long Term Care
Intellectual Property Litigation
Corporate Finance
eHealth
Managed Care
Labor & Employment Litigation
Private Companies
Health Information Technology -Law and Policy
Medical Research/Clinical Trials
Premises Liability
Public Companies
Information Privacy and Security Management
Peer Review & Credentialing
Product Liability and Mass Tort
Venture Capital
Outsourcing and Offshoring
Physician Organizations
Corporate/IT Procurement
Professional Liability
Taxation - Federal Income, Employment & Other
Reimbursement
Securities Litigation
Construction
Specialty Health Care Providers
Taxation - State and Local
Employee Benefits & Executive
Compensation
Corporate Compliance, Ethics and Crisis
Management
Hospitality, Franchising and Distribution
Transportation Litigation
Estate Planning/Probate
Immigration
Mergers and Acquisitions
Exempt Organizations
Disaster Recovery and Government Services
Insurance Regulatory
Mortgage Lending and Servicing
Economic Development
Intellectual Property
Oil & Gas
Emerging Companies
International Trade and Transactions
Eminent Domain
Labor & Employment
Oil Spill Team
Product Liability and Mass Tort
Employee Benefits & Executive Compensation
EEO
Public Finance
Environmental
Public Policy - Federal
Employee Benefits and ERISA Litigation
Estate Planning/Probate
Health Care Labor & Employment
Appropriations Practice
Exempt Organizations
Labor & Employment Immigration
Environment and Energy Practice
Financial Services and Transactions
Labor & Employment Litigation
Federal Health Policy
Labor Law
Homeland Security
Securitization
Multi-Plaintiff Cases
Infrastructure and Surface Transportation
OFCCP/Affirmative Action Plans
Public Policy - State
Financial Institutions
Structured Finance/Commercial Transactions
Gaming
OSHA
Louisiana State Public Policy
Government Contracts
Policies and Training
Mississippi State Public Policy
Health Law
Reductions in Force
Public Policy Advocacy
Compliance Counseling
Restrictive Covenants
Tennessee State Public Policy
Drug, Device & Life Sciences
Wage and Hour
Real Estate
eHealth
Workers’ Compensation
EMTALA
Litigation
Acquisitions, Sales and Development of
Long Term Care Facilities
Exempt Organizations - Health Care
Antitrust
Asset Based Lending
Fraud and Abuse
Appellate Practice
Government Investigations
Banking and Financial Services Litigation
Condominium Practice
Health Care Advocacy
Bankruptcy and Creditors’ Rights
Economic Development
Taxation - State and Local
Transportation
Admiralty & Maritime
Automotive Industry
Motor Carrier
Oil & Gas
Railroad
White Collar Crime and Government
Investigations
The Rules of Professional Conduct of the various states where our offices are located require the following language: THIS IS AN ADVERTISEMENT. Ben Adams is Chairman and CEO of Baker Donelson and is located in our Memphis office, 165
Madison Avenue, Suite 2000, Memphis, TN 38103. Phone 901.526.2000. No representation is made that the quality of the legal services to be performed is greater than the quality of legal services performed by other lawyers. FREE BACKGROUND
INFORMATION AVAILABLE UPON REQUEST. © 2012 Baker, Donelson, Bearman, Caldwell & Berkowitz, PC The Best Lawyers in America® 2012, Copyright 2011 Woodward/White, Inc., Aiken, S.C.
LSBC_Firm profile 4pg
11.30.12
BAKER DONELSON’S
EMERGING COMPANIES
PRACTICE
E X PA N D Y O U R E X P E C TAT I O N S
SM
Emerging Companies
Baker Donelson’s Emerging Companies Team is a multidisciplinary group of attorneys focused
on representing the unique interests of high-growth start-up companies and other emerging
businesses. Our attorneys are proactive in understanding our clients’ businesses and the
communities necessary to support them. This helps us provide practical, timely legal advice to
meet our clients’ needs.
Emerging companies take many shapes and forms. Many in their early stages have significant
legal needs that can be critical to their long-term success. But these companies often lack sufficient
resources to afford legal advice under the traditional, hourly-rate model. To address these
challenges, the Emerging Companies Team has embraced the use of fixed-fee legal services as
well as educational programs to provide affordable and effective legal services for early stage,
high-growth companies.
We partner with emerging companies through all stages of their development, providing
innovative solutions for the legal and business challenges they face.
• Formation – Entity formation is a crucial stage for companies, as it sets the foundation for a
business’ future.
o We advise on business strategy and planning, assembling the founding management
team, selecting and forming the appropriate business entity, and raising necessary
capital from investors who can support and accelerate emerging company growth.
• Capital – Capital is a precious resource and the lifeblood for emerging companies.
o We have extensive relationships with investors who can assist emerging companies
at various stages of maturity, including growth stage venture capital funds, strategic
investors, and private equity funds, in addition to experience with various forms of
debt and mezzanine financing and initial public offerings that we leverage to help our
emerging business clients grow.
• Intellectual Property – Emerging companies rely on the potential of their ideas, which means
IP must be protected to confidently move forward.
o Our team includes experienced patent lawyers with deep experience developing and
protecting emerging clients’ intellectual property rights. In addition, we work with clients
to leverage their IP through licensing, development, reseller, distribution, and other
strategic agreements that generate revenue streams and other business opportunities.
• Compliance – Emerging businesses have numerous legal and regulatory compliance risks to
consider.
o Members of our team provide counsel regarding taxation and regulatory compliance at
the local, state, federal and international levels. We also regularly assist our clients with
structuring stock option and other employee incentive plans and preparing employment, consulting,
confidentiality, HIPAA and proprietary information agreements.
• Deals – As emerging businesses grow, many pursue deals to expand operations, acquire other companies
or secure new revenue streams.
o We have experienced corporate attorneys on our team to ensure that the deals we do for clients are
not only legally and technically sound, but that they also fit with the company’s strategic objectives. Our
focus is always on doing the deal that helps our clients meet their goals.
The members of our Emerging Companies Team are not only seasoned legal professionals, but they also
possess deep experience in the industries they serve. They provide a range of legal services that focus on
the strategic business goals of our clients. We work with all types of rapid-growth companies operating in a
wide range of industries, including information technology, digital media, life sciences, health care, alternative
energy/cleantech, telecommunications and technology-enabled services.
From idea to IPO, the Baker Donelson Emerging Companies Team is here to support your business.
LSBC_EmergingCo_3pg
11.01.12
BAKER DONELSON
EMERGING COMPANY INSTITUTE
Baker Donelson is pleased to offer the Baker Donelson Emerging Company Institute – a one year education and legal services
program designed to provide a solid legal foundation (structure, contacts and approach) and to empower entrepreneurs to more
effectively manage legal issues throughout the life cyde of their company.
Education Program - Free of Charge
• Baker ECI LawCamp – series of monthly one-hour education programs with Q&A
o Topics such as intellectual property basics, running effective board meetings, employment law 101, managing and
negotiating customer contracts, legal pitfalls to funding, raising capital, effectively working with lawyers, etc.
• Legal clinic hours
• Attendance at any Baker Donelson Emerging Company Boot Camp in any city
Online Services
• Password–protected extranet site for storing contracts and other documents
• Access to Baker ECINet with forms, checklists, memos, videos and other information
• Electronic corporate minute book
Legal Services and Documentation
(Note: These are for a Delaware C-corporation but a Delaware board-managed LLC is an alternative for the same fees.)
•
•
•
•
Initial one-hour consultation
Startup checklist
Entity formation:
– Certificate of Incorporation
– Bylaws
– Organizing resolutions
– Subscription agreement
– Stock certificates
Stockholder agreement
• Form employee/contractor
intellectual property and
confidentiality agreement
• Form offer letter
• Initial intellectual property
assignments
• Form board and stockholder
resolutions
• Form contractor agreement
• Mentor equity agreement
(for accelerator program participants)
• $2,500 credit for general advice time
• Fifteen-minute monthly huddle call
• Customer letter of interest
Additional Legal Services Available
Outside the scope of standard services; all are available on a fixed fee basis
• Equity incentive plan
• Lease review
• Intellectual Property protection
• Form customer contract
Contact Us
Mark Carlson
404.589.3400
[email protected]
Justin Daniels
678.406.8706
[email protected]
Clint Crosby
678.406.8702
[email protected]
Bill Osterbrock
404.589.3418
[email protected]
Michael Powell
678.406.8707
[email protected]
The Rules of Professional Conduct of the various states where our offices are located require the following language: THIS IS AN ADVERTISEMENT. Ben Adams is Chairman and CEO of Baker Donelson and is located in our Memphis
office, 165 Madison Avenue, Suite 2000, Memphis, TN 38103. Phone 901.526.2000. No representation is made that the quality of the legal services to be performed is greater than the quality of legal services performed by other
lawyers. FREE BACKGROUND INFORMATION AVAILABLE UPON REQUEST. © 2012 Baker, Donelson, Bearman, Caldwell & Berkowitz, PC
LSBC_EmergeCoInst.11.06.2012
BAKER DONELSON’S
CORPORATE FINANCE
PRACTICE
SM
Corporate Finance
Baker Donelson’s Corporate Finance practice
in
is one of the most active and highly regarded
transactions in ways that maximize the goals
in
finance
of the Firm’s clients. They regularly work with
lawyers have served as counsel for issuers,
lawyers in other practice groups such as
underwriters, placement agents and investors
commercial lending, litigation and intellectual
in a full range of financial transactions. We
property, to incorporate their knowledge into
have extensive experience in initial and
the transactions.
our
region.
Our
corporate
secondary public offerings, 144A offerings,
shelf registrations and takedowns, Regulation
S and Regulation D private placements for
public and private companies, debt offerings,
registered exchange offers, equity linked
securities, mezzanine finance and other
Our
structuring,
corporate
negotiating
finance
and
lawyers
closing
have
extensive experience in SEC and other
regulatory compliance matters that could
affect a transaction, including the rules and
processes of the National Association of
capital raising transactions.
Securities Dealers and of stock exchanges
We are committed to understanding our
the NASDAQ Stock Market, as well as the
clients’ businesses so we can assist them
various state securities regulators. Members of
in assessing various financing options and
our Group have served as general counsel to
choose the ones that will best satisfy their
public companies and have acquired unique
business needs and complement their strategic
knowledge and insight as to the issues and
objectives. Our corporate finance attorneys
concerns that affect public companies and
apply their legal and practical experience
their general counsel.
such as the New York Stock Exchange and
www.bakerdonelson.com
• Cement manufacturer – $17 million initial public
offering
• Medical Properties real estate investment trust –
$127 million initial public offering
• Agricultural products company – $64 million
tender offer
• Regional airline – $110 million senior
convertible note offering
• National bank – $5 billion bank note program
• Personal automobile insurance company – $130
million follow-on offering
• Regional airline – $271 million initial public
offering
• Internet company – $15 million common stock
PIPE
• Bank holding company – $400 million
subordinated debt shelf registration takedown
• Chemical manufacturing company – $90 million
private placement of senior notes
• Fabrics and home furnishings retailer – $110
million secured financing
• Manufacturer – $200 million subordinated note
offering
• Internet company – Sale and license of image
management system
• Personal automobile insurance company – $170
million initial public offering
• Mutual fund – $485 million registration
statement/proxy statement
• Bank holding company – $100 million
• Oil and gas company – $80 million senior credit
arrangement
• Oil and gas company – $120 million public
exchange offer of debt for equity and debt
• Pharmaceutical products manufacturer – $1.5
billion shelf registration
• Banks – Formation of new banks in Clarksville,
Nashville, Murfreesboro, Greeneville,
Shelbyville, Cleveland, Franklin, Memphis and
Lebanon, Tennessee: $5 – 11 million capital
raises and secondary offerings
• Retailer – $46 million secondary offering
• Fund manager – $50 million private placement
• Technology infrastructure company – $30 million
private placement
• Merchant banking fund – $50 million private
placement
• Telecommunications company – $150 million
Regulation S private placement
• Fund manager – $15 million private placement
• Assisted living facility provider – $542 million
private debt placement and restructuring
• Pharmaceutical products manufacturer – $110
million shelf registration takedown
• Internet product company – $72 million follow-on
stock offering
• Pharmaceutical products manufacturer – $165
million secondary offering (shelf)
• Internet product company – $72 million initial
public offering
subordinated debt shelf registration takedown
• National bank – $250 million subordinated debt
offering
• Barge company – $65 million public tender offer
for preferred ship mortgage bonds
Representative Matters and Experience
• Retained as “preferred vendor” to the
technology law unit of a Fortune 100 financial
services company to provide assistance in
negotiating technology (and other) procurement
transactions and create template contract
forms (with instruction manuals) for technology
procurement transactions.
• Represented one of the largest Internet
hardware and technology service providers
in the world in revising and standardizing its
worldwide technology services agreements
and development of “playbooks” for contract
negotiations.
• Regularly work with corporate clients to
develop template documents for vendors and
purchasers such as Master Agreements, Services
Agreements, Equipment Agreements, License
Agreements, Software Development Agreements,
Maintenance Agreements and Outsourcing
Agreements.
• Represented Fortune 50 company in negotiating
a license of software for the secure transfer of
files among all of its worldwide locations.
• Represented largest Internet hardware and
services provider in selling Voice Over IP and
related hardware, software, and services to
Fortune 50 company and in selling Internet
hardware, routers, and switchers to various
Fortune 200 companies.
• Developed strategy and drafted electronic
contracts for ISP company to govern all online
services.
• Designed and implemented information privacy
and security compliance program for Fortune
100 company. Program encompassed all of
the company’s worldwide (more than 30)
offices and addressed the European Union
Data Protection Act as well as the laws and
regulation of several other countries.
• Created document retention program and policy
for international electronic parts distributor.
• Prepared Gramm-Leach-Bliley policies and
procedures for Fortune 500 company.
• Developed appropriate service level agreements
for mission critical service provider in financial
industry.
• Represented regional hospital in outsourcing of
entire IT department, including transitioning of
employees.
• Revised large pharmaceutical company’s
Employee Information Technology Practices and
presented seminars for all company locations
and sales force.
• Represented software development company in
software transaction with national entertainment
lighting company.
• Acted as outside general counsel to IT
development and managed services outsourcing
companies.
• Represented Internet company in negotiating
and documenting more than 100 strategic
alliance, image marketing, distribution,
licensing, service, technology, non-disclosure,
product purchase, architecture program and
other agreements with “best in class” customers
and service providers.
• Represented a large Internet computer
reseller and refurbisher in preparing terms
and conditions of sale agreements, privacy
statements and hyperlinking agreements.
• Documented the transfer of ownership of
computer files and assignment agreements for
a large telecommunications software/hardware
corporation.
The Rules of Professional Conduct of the various states where our offices are located require the following language: THIS IS AN ADVERTISEMENT. Ben Adams is Chairman and CEO of Baker Donelson and is located in our Memphis office, 165 Madison Avenue, Suite 2000, Memphis,
TN 38103. Phone 901.526.2000. No representation is made that the quality of the legal services to be performed is greater than the quality of legal services performed by other lawyers. FREE BACKGROUND INFORMATION AVAILABLE UPON REQUEST.
© 2012 Baker, Donelson, Bearman, Caldwell & Berkowitz, PC
LSBC_Business tech
11.29.12
BAKER DONELSON’S
BUSINESS TECHNOLOGY
PRACTICE
SM
Business Technology
Baker Donelson maintains a multi-disciplinary
group of lawyers to assist clients with the wideranging issues of business technology law. With
more than 150 years of cumulative experience
within the Business Technology Group, Baker
Donelson draws upon all types of business
transactions involving the purchase, sale and
licensing of technology products and services.
One of our key strengths lies in our experience
with both vendors and purchasers of technology,
products and services. We understand the
business drivers on both sides of a technology
purchase or sale transaction and will use this
knowledge to achieve the most favorable result
for our clients.
Baker Donelson has assisted in educating
thousands of its clients’ employees in relevant
aspects of business technology law. In addition
to providing continuing education materials
and extranet resources, we have created forms
and manuals for legal staff and procurement
executives. Baker Donelson attorneys also
routinely act in a mentoring capacity to their
clients’ junior in-house legal and procurement
staffs, which help those clients maximize their inhouse capabilities to reduce the need for outside
legal services for routine/repetitive business
technology matters.
Representative Experience
• Corporate/IT Procurement
• Information Privacy and
Security Management
• Outsourcing and
Offshoring
• Emerging Companies
• eHealth/HealthIT
• Patent and technology
licenses
• Intellectual property and
technology acquisitions and
divestments
• Joint ventures and strategic
alliances
• Collaboration agreements
• Development,
manufacturing and
commercialization
agreements
• Distribution, supply and
OEM agreements
• Software licensing
• Network agreements,
including telecom,
voice, data and related
technologies
• Consulting agreements,
including project
management and labor
related services
• Subscription service
agreements (ASP/Software
as a Service)
• Internet law/E-Commerce
Representative Matters and Experience
• Revised large pharmaceutical company’s
Employee Information Technology Practices
and presented seminars for all company
locations and sales force.
• Represented regional hospital in outsourcing
of entire IT department, including
transitioning of employees.
• Prepared Gramm-Leach-Bliley policies and
procedures for Fortune 500 company.
• Retained as “preferred vendor” to the
technology law unit of a Fortune 100
financial services company to provide
assistance in negotiating technology (and
other) procurement transactions and create
template contract forms (with instruction
manuals) for technology procurement
transactions.
The Rules of Professional Conduct of the various states where our offices are located require the following language: THIS IS AN ADVERTISEMENT. Ben Adams is Chairman and CEO of Baker Donelson and is located in our Memphis office, 165 Madison Avenue,
Suite 2000, Memphis, TN 38103. Phone 901.526.2000. No representation is made that the quality of the legal services to be performed is greater than the quality of legal services performed by other lawyers. FREE BACKGROUND INFORMATION AVAILABLE
UPON REQUEST. © 2012 Baker, Donelson, Bearman, Caldwell & Berkowitz, PC
LSBC_Business tech
11.01.12
BAKER DONELSON’S
INTELLECTUAL PROPERTY
PRACTICE
E XPA N D Y O U R E XP E C TAT I O N S
SM
Intellectual Property
The Intellectual Property Group undertakes
and overseas, as well as before the U.S.
responsibility for the protection of inventions
International Trade Commission.
and other forms of intellectual property for
clients ranging from start-ups to Fortune 500
companies. We obtain, defend and enforce
patents, trademarks and copyrights in the United
States and throughout the world. The Firm
has developed relationships with intellectual
property lawyers in many major foreign
countries, and has facilitated applications,
patents and registrations of trademarks in over
The
in
Group’s
attorneys
mechanical,
are
electrical,
experienced
chemical
and
biochemical technologies. We have secured
patents in a broad array of technologies,
products and services, including industrial
processes
and
equipment;
chemical
compositions and processes; biomedical and
chemical
technologies,
including
peptide
80 foreign jurisdictions.
transporters, DNA sequences, pharmaceutical
Our attorneys have established a reputation for
medical therapies for treatments of diseases,
practical, common-sense business approaches
medical research tools and devices; electronic
to client concerns, as well as sophistication in
circuits and devices; ceiling fans, electronic
dealing with a range of intellectual property
programmable thermostats, lighting fixtures
issues for firms of all sizes. We have broad
and optical devices; packaging and related
experience in patent representation, trademark
components;
disputes and branding concerns for our clients
apparatus; control systems for processes and
whether an emerging company or a Fortune
equipment; telecommunications systems and
500. We help our clients manage their
products; electric transmission and distribution
intellectual property assets as an integral part
apparatuses; computer hardware and software;
of a comprehensive business and competition
ecommerce applications and business methods;
strategy.
experienced
fishing products; beverages; textiles; financial
in formulating overall intellectual property
and banking services; and various consumer
strategy, including substantive analysis and
products.
Our
attorneys
compositions
are
recommendations for branding protection of
intellectual property interests. Our work includes
branding audits for clients as well as brand
protection work for international companies,
including name dispute proceedings. We are
able to offer strategy for resolving difficult
freedom-to-operate
obstacles,
negotiating
licensing agreements, and effectively utilizing
existing
intellectual
property
portfolios
to
strengthen clients’ competitive positions. Our
attorneys also have handled several hundred
complex intellectual property litigation matters
in numerous jurisdictions in the United States
and
methods,
rehabilitation
stem
and
cells,
mobility
Biotechnology, Pharmaceuticals, and Medical Devices
The Intellectual Property Group has a core group
devoted solely to this industry, with experience
representing clients in matters related to
medical systems, medical devices, chemical,
biotechnological, and pharmaceutical patents.
This includes fermentation and extraction
of proteins, food additives and processes,
small molecule pharmaceuticals, metallurgy,
packaging materials, electronic materials and
associated methods of manufacture and use,
electrolysis, as well as polymeric processes and
applications. In the biotechnology field, in particular,
largest oil companies and service companies in patent
this includes immunology, gene therapy, genomics,
matters which include geomechanical modeling,
bioinformatics, plant biotechnology, fermentation,
drill bit design, well injectivity analysis, “smart well
cancer therapy, small molecule pharmaceuticals, and
implementation,” maritime vessel designs, downhole
biotechnology research tools.
production tools and methods, offshore drilling
Intellectual Property Services for the Energy Industry
Our attorneys have hands-on experience in the energy
industry and have worked with some of the world’s
• Secured portfolio of U.S. and foreign patents
for startup drug-testing company that is now
the exclusive testing facility for three state
governments.
• Obtained patent for biosensors comprising a
covalently attached monomolecular biological
conjugate layer and a transducing device.
• Obtained patent for process for decellularizing
soft-tissue engineered medical implants, and
decellularized soft-tissue medical implants
produced.
• Obtained patent for transplantable recellularized
and reendothelialized vascular tissue graft.
• Obtained patent for pharmaceutical composition
tools - just to name a few. Baker Donelson attorneys
understand the issues from the client’s perspective,
having worked in the industry as engineers and
consultants.
based system and method for tracking patient
flow.
• Prosecuted patent application directed to system
and method for human gait analysis.
• Prosecuted patent application for provisional
percutaneous pedicle markers and methods of use
thereof in spinal implants.
• Successfully invalidated patent by proving the
claimed tool did not work as represented to the
patent office or in the patent itself and obtained
costs for defendant accused of infringement.
• Obtained product exclusion order from the
United States International Trade Commission
(ITC) against foreign and domestic companies
for treating angiocardiopathy and the method of
importing into the United States products that
producing thereof.
infringed two U.S. patents of the client.
• Obtained patent for intraocular multifocal lens.
• Obtained patent for use of high frequency
ultrasound imaging to detect and monitor the
process of apoptosis in living tissues, ex-vivo
tissues and cell-culture.
• Prosecuted patent application directed to optical
sensor based on surface electromagnetic wave
resonance in photonic band gap materials.
• Prosecuted patent applications directed to surgical
instruments and method for corneal reformation.
• Prosecuted patent application directed to RFID-
• Obtained consent judgment and withdrawal of
trademark application by defendant in trademark
and trade dress infringement action relating to 4
x 4 truck tires.
• Obtained trademark registrations for client’s scentemitting products and obtained patent coverage
directed to company’s primary product.
• Prepared and prosecuted patent applications
directed to video imaging devices used in police
vehicles.
• Successfully argued and won reversal on appeal
of copyright infringement claim brought against
dress for thermoformed consumer food packaging
client publishing a directory of factual information
products, concerning trademark for tobacco
about cable systems throughout the country.
products, and concerning trademark for beverage
• Secured portfolio of U.S. and foreign patents for
a start-up manufacturer of flexible containers that
has secured production contracts with a major
international foods company.
• Secured portfolio of U.S. patents for start-up
manufacturer of asbestos abatement products that
now has annual sales in excess of $25 million.
• Secured important U.S. patent directed to packing
for high temperature, high pressure valves.
• Prosecuted U.S. patents for corrugated
paperboard containers providing increased
shipping and handling protection for products,
including containers for outboard motors.
• Successfully enjoined competitor from copying
for dogs.
• Successfully litigated domain name registrations
that infringed clients’ marks.
• Enjoined infringing use of client’s trademark and
trade dress for firearms.
• Prepared and prosecuted patent applications
for apparatus and method for earth-retaining
walls made of cementitious blocks and soil
reinforcement sheets.
• Obtained patent coverage directed to small
aperture sheets for stabilization of earthen slopes.
• Successfully defended foundation against
copyright infringement, RICO, fraud and
implied trust claims concerning rights of alleged
designs of commercial refrigeration parts
visionary to publications and assets of nonprofit
embodying trade dress of client.
organization.
• Successfully enjoined competitor from copying
• Obtained monetary relief from defendant in
consumer packaging designs embodying trade
patent infringement action concerning improved
dress of client.
template technology for “instant-photo”-type
• Defended and prosecuted trademark registrations
and oppositions at the Trademark Trial and
cameras.
• Handled patent infringement action concerning
Appeal Board of the U.S. Patent and Trademark
apparatus for dispensing checks, money orders
Office, including oppositions concerning trade
and other negotiable instruments.
Representative Clients
• American Contract Bridge Company
• Life Care Centers of America
• Arcade Marketing, Inc.
• Mid-South Milling Company
• Arre Industries, Inc.
• Morgan Keegan & Company
• Bayer AG
• North American Container Corporation
• Casablanca Fan Company
• Regal King
• Chattanooga Orthopaedic Group
• Rexel, Inc.
• First Tennessee Bank
• Stewart Water Solutions
• Frontier National Corporation
• Thiele Kaolin Company
• Gordon Biersch Brewery
• Hunter Fan Company
The Rules of Professional Conduct of the various states where our offices are located require the following language: THIS IS AN ADVERTISEMENT. Ben Adams is Chairman and CEO of Baker Donelson and is located in our Memphis office, 165 Madison Avenue,
Suite 2000, Memphis, TN 38103. Phone 901.526.2000. No representation is made that the quality of the legal services to be performed is greater than the quality of legal services performed by other lawyers. FREE BACKGROUND INFORMATION AVAILABLE UPON
REQUEST. © 2012 Baker, Donelson, Bearman, Caldwell & Berkowitz, PC The Best Lawyers in America® 2012, Copyright 2011 Woodward/White, Inc., Aiken, S.C.
BAKER DONELSON’S
TAXATION —
FEDERAL
INCOME, EMPLOYMENT AND OTHER
PRACTICE
SM
Baker
Donelson’s
are
the business entity to the company’s operations
knowledgeable and experienced in a wide
and growth strategies, including acquisitions,
range of federal tax law matters. Our tax
mergers and reorganizations.
attorneys
regularly
tax
attorneys
provide
clients
with
sophisticated federal tax advice covering
matters
such
as
individual
income
tax
planning; business tax planning; employment
classifications and tax compliance, audit
preparation and representation within the IRS
administrative appeals process; tax litigation
with the IRS; and enforcement actions by the
IRS. We stay informed of significant IRS rulings
and notices, proposed regulations, court
decisions and related procedures affecting
federal tax law, and put that knowledge to use
for our clients. The Tax Department regularly
updates our clients on current and proposed
legislation, with detailed analysis and direct
contacts for clients needing more information.
Individual Tax Planning
At the beginning of the life cycle, we assist
business clients in the choice and formation
of the most appropriate business entity for
their particular business and tax needs.
Clients are advised on the relative advantages
and disadvantages of using a partnership,
limited partnership, limited liability company,
corporation or S corporation, and the most
advantageous state in which to form the
business entity. On the operational side, clients
regularly consult with members of the Tax
Department about matters such as employment
agreements,
non-compete
agreements,
deferred compensation agreements, stock
options, accounting methods and retirement
plans.
During the growth stage of a client’s business,
We have considerable experience advising
our attorneys assist clients as they plan for
individual clients with respect to income tax
acquisitions and mergers. The Firm has
planning, such as compensation issues, stock
considerable
options, real estate and other investment
acquisition techniques, including tax-favored
considerations, among many other tax areas
acquisitive reorganizations, leveraged buy-outs
of interest to individuals. Our tax attorneys are
and ESOP acquisitions. In reorganizations, we
knowledgeable in a wide range of individual
seek to achieve our clients’ goals whether it’s
income tax matters and we assist clients in
strengthening the business financials, divesting
arranging their affairs in the most tax efficient
a subsidiary or selling a division. If clients
manner. Additionally, our attorneys draw on
decide to close a particular venture, we assist
a wealth of federal tax experience, including
in the liquidation and termination process.
audit preparation and tax litigation, to provide
advice that is uniquely informed and beneficial
to clients.
experience
in
sophisticated
Ruling Requests
Our tax attorneys have extensive experience
Business Planning, Mergers and Acquisitions
seeking private letter rulings and transaction-
At every stage of the business life cycle,
clients when circumstances warrant. We most
companies need experienced professionals
often make those requests when a business
to help minimize their tax burden. Our tax
transaction requires IRS approval prior to
attorneys assist clients from the formation of
implementation.
specific guidance from the IRS on behalf of
continued
Tax Credits and Special Incentives
Tax Controversies
We regularly advise on the utilization of and conditions
Our tax attorneys regularly represent clients during
for numerous types of credits that are available under
audits, administrative appeals, and trial and appellate
the Internal Revenue Code. In particular, the Firm’s
litigation with the IRS. Attorneys in the Tax Department
tax attorneys advise financial institutions, investors,
are experienced in representing clients before the
businesses and many other interested parties with
United States Tax Court, federal district courts and
respect to the new markets tax credit, low-income
federal appellate courts.
housing credits, various energy related credits, the
rehabilitation tax credit and conservation easements.
When catastrophes occur, Congress often responds by
creating new incentives to encourage redevelopment
and promote commerce – such as the Gulf Opportunity
Zone Act of 2005 following Hurricanes Katrina, Rita
and Wilma – and we have routinely consulted clients
on the special bonus depreciation deduction within
the GO Zone Act.
Enforcement Actions
In addition to handling tax controversy issues before
the IRS, we also have considerable experience
representing clients on a wide range of federal
tax enforcement actions undertaken by the IRS.
Attorneys in the Tax Department regularly represent
clients in preparing offers in compromise, installment
agreements, penalty and interest abatement requests,
Employment Tax Classification and Compliance
and collection due process requests. Additionally, we
Worker classification has recently become an area
federal tax liens and levies on behalf of our clients.
of focus for the IRS. In light of this focus, businesses
must be mindful of how workers should be classified
and how and when wages should be reported. Baker
Donelson’s tax attorneys work closely with our clients
to advise them on the various classification factors used
by the IRS in ascertaining whether to treat a worker
as an employee or independent contractor. We also
assist clients in structuring employment arrangements
that reflect the client’s business needs and comply
with federal tax law. Additionally, attorneys in the
Tax Department frequently represent clients before
the IRS in a wide variety of employment tax disputes,
including employment tax audits, worker classification
audits, responsible person inquiries, and trust fund
penalty assessments.
Employee Benefits/ERISA
have successfully petitioned the IRS for removal of
International, Excise and Other Tax Matters
Clients routinely turn to us for consultation on the
domestic tax effects of various foreign country income
tax treaties, and we have addressed permanent
establishment issues under many of them for clients
whose activities may be subject to the treaties. In
addition, we consult with our clients regarding the
necessity for disclosure of foreign accounts, as well
as advice concerning participation in voluntary
disclosure programs offered from time to time by
the IRS with respect to such accounts. Further, our
tax attorneys deal with various other types of taxes
imposed through the Treasury Department, including
the highway excise tax, firearm and ammunitions
excise tax, and a variety of other such taxes.
See our practice area description on Employee
Benefits and Executive Compensation for an overview
of our broad experience in this very important area of
federal tax law.
continued
Representative Tax Matters
Representative Clients
• Tax and corporate representation of company in
• BellSouth Corporation
$2 million redemption of hostile investors.
• Cracker Barrel Old Country Stores, Inc.
• Represented company in $1 billion proposed
assessment of IRS. Settled case for less than $3
million tax paid.
• Represented
management
• Exide Corporation
in
formation
of
captive insurance companies and alternative risk
management vehicles.
• Represented taxpayers in preservation of net
operating losses during corporate acquisitions.
• Tax representation of financial institutions in $500
million credit to insurance acquisition and holding
company.
• Edwards & Associates, Inc.
• FedEx Corporation
• First Tennessee Bank
• Hunter & Lords Visiting Tailors
• Internet Pictures Corporation
• John H. Daniel Clothing Manufacturing Company
• J.R. Hyde, III
• Level 3 Communications Corporation
• Medical Properties Trust, Inc.
• Piedmont Natural Gas
• Quality Restaurant Concepts
• Rivana Foods, Inc.
• ServiceMasters
• Star Printing Company
• Vining Sparks IBG, Ltd.
Fed Tax
3/12
BAKER DONELSON’S
TAXATION — STATE AND LOCAL
PRACTICE
SM
Controversy and Planning Representation
Current economic conditions have forced
before
state and local governments to continue their
agencies, and represent our clients in seeking
aggressive search for additional revenues.
relief within available amnesty, voluntary
We know that our clients remain focused on
disclosure, and penalty waiver programs.
managing their exposure to tax pressures.
Additionally, our SALT attorneys regularly
Our state and local tax (SALT) attorneys are
advise clients regarding complex transactional
dedicated to providing the comprehensive,
issues, planning structures and multi-state
realistic and value-added services to our
opportunities, including tax incentives and
clients throughout the United States in dealing
credits.
with those pressures.
state
and
local
administrative
In addition to our traditional representation
Our SALT group includes 15 attorneys who
of clients in SALT matters, our tax attorneys
provide consultation and advocacy for a
also
broad array of clients regarding income,
unclaimed property issues. Clients consult
franchise, sales and use, gross receipts,
with us regarding the planning and defense of
property and other taxes imposed by state
unclaimed property audits, whether instituted
and local governments. Our tax attorneys
by the state department of revenue, secretary
have represented clients with SALT matters
of state or other offices of state government,
not only in all the southeastern states and
including multistate unclaimed property audits
in Washington, D.C. where our offices are
involving third-party contract auditors. We
located, but also in a multitude of other states
also represent clients in unclaimed property
-- such as California, the Carolinas, Colorado,
administrative or judicial controversies, as well
Florida, Illinois, Kansas, Maine, Maryland,
as negotiate voluntary disclosure agreements
Michigan,
on their behalf.
Minnesota,
New
Hampshire,
New York, Oklahoma, Ohio, Pennsylvania,
Texas, Virginia, Washington and Wyoming
– more than 30 states and Washington,
D.C. in total. We have also litigated SALT
cases for our clients and defended collection
and enforcement actions, and have done so
represent
clients
with
respect
to
Our Tax Department is comprised of attorneys
located throughout the Firm’s offices in
Alabama, Georgia, Mississippi, Louisiana,
Tennessee and Washington, D.C. Our tax
attorneys have a broad range of practice,
successfully in substantially all of those states.
including experience with federal, state and
We guide, advise and represent our clients
ERISA and estate planning.
local taxation issues, exempt organizations,
throughout all stages of any tax disputes
continued
Representative SALT Matters
• Regularly represent clients in all types of tax
audits, before state and local taxing authorities.
• Represented a major railroad in a property tax
valuation case in New York State. Client obtained
• Successfully concluded a multi-million dollar
Tennessee sales and use tax audit.
a 25 percent reduction in taxes for all years at
issue and obtained a settlement for four additional
years with savings amounting to more than $50
• Successfully represented bottling company in
regard to Tennessee franchise and excise tax
litigation and in privilege tax audits.
million.
• Successfully defended automobile dealership in
class action litigation involving collection of local
• Represented clients in petitions to waive penalties
imposed on Tennessee and Mississippi taxes.
taxes on vehicle sales.
• Won appellate case for pipeline companies
• Represented numerous and varied public utility
clients in contesting property tax valuation and
other issues.
• Represented common carrier client in contesting
state motor fuel taxes.
operating in Tennessee, which will save our clients
millions of dollars in property taxes in the coming
years.
• Represented publisher of telephone directory in
unitary income dispute involving state income tax
treatment of dividends from foreign subsidiary.
• Successfully represented client in significant
petroleum tax dispute with state department of
revenue.
Dividends of $18 million excluded from taxable
income.
• Represented
quarry
operator
taxpayer
in
a
severance tax litigation in overturning adverse
Wyoming statute that discriminatorily taxed
position asserted by state department of revenue,
railroads. Ongoing savings to clients exceeds $7
where adverse decision would have caused a
million annually.
termination of the business.
• Successfully
challenged
in
federal
court
• Retained as appellate counsel in U.S. Fifth Circuit
• Obtained an injunction in federal district court
Court of Appeals in case involving taxation of
in Kansas on behalf of a private container and
labor support company.
automobile rack rail car company enjoining
• Successfully overturned trial court’s grant summary
judgment against client.
• Obtained decision from Alabama Supreme Court
declaring city licensing ordinance unconstitutional
as an invalid tax in interstate commerce.
• Represented a coalition of Tennessee public utilities
in state-wide personal property equalization relief
the state from assessing and collecting half of
the Kansas gross receipts tax. The suit filed on
behalf of our client under §11501 claimed that
the gross receipts tax at a 2.5% rate greatly
exceeded what the tax liability would be under
a properly applied property tax. After significant
negotiations, the state consented to a permanent
injunction enjoining it from collecting a tax any
higher than 1.25% of the Kansas gross receipts.
resulting in more than $10 million in annual
savings.
continued
• Represented publisher of telephone directory in
• Successfully completed sales and use tax audits
unitary income dispute involving state income tax
in Tennessee, Georgia, Louisiana, Pennsylvania,
treatment of dividends from foreign subsidiary.
North
Dividends of $18 million excluded from taxable
Mississippi, and Ohio.
income.
Carolina,
Texas,
Florida,
Alabama,
• Represented automobile finance/lease companies
• Successfully defended automobile dealership in a
in contesting application of Tennessee sales tax
class action in which plaintiffs claimed that these
laws and overturning adverse ruling by department
dealerships had illegally collected the Tennessee
of revenue through enactment of new legislation.
Business Tax in association with vehicle sales.
• Secured a full dismissal of taxes owed for national
railroad’s Chief Transportation Officer, after
taking over case from a Big 4 accounting firm.
The officer had received a six figure income tax
assessment from the Commonwealth of Virginia
for his 2005 and 2006 years while he was
with another railroad, due to residency versus
nonresidency issues.
• Successfully challenged in court the constitutionality
of a county privilege tax.
• Regularly negotiate tax incentives at the state and
local level for clients throughout the Southeast.
• Represented an architectural metals company
• Represented affiliate companies in contesting
nexus asserted by the state of Pennsylvania.
• Represented various clients in regard to completing
nexus
questionnaires
received
from
various
foreign state jurisdictions.
• Represented clients in real and personal property
tax disputes, including appraisal and classification
disputes.
• Represented clients in obtaining amnesty on
voluntary disclosure relief in numerous states.
• Represented cell tower applicants before municipal
councils, commissions and boards of zoning
appeals for the placement of wireless towers.
in establishing a business location in East
Tennessee and secured favorable tax incentives
from Tennessee Department of Revenue and nontax incentives from the Tennessee Department of
Economic and Community Development.
• Negotiations on behalf of various clients with
the states of Tennessee, Alabama, Louisiana,
and Mississippi in regard to tax incentives
available through the tax statutes of each state,
and negotiations on behalf of clients for nontax incentives available through state economic
development programs.
Tax
3/12
BAKER DONELSON
VENTURE CAPITAL PRACTICE
Venture Capital
Baker Donelson’s Venture Capital Group provides
sophisticated counsel to both venture capital and private
equity funds and to emerging companies seeking financing.
We represent venture capital clients in their formation and
fund raising activities, as well as with all phases of their
venture investment activities. We also represent emerging
companies who seek venture capital financing as a means
to expand their business or exploit other opportunities.
With our balanced experience representing both
constituents in the venture capital community, we have
developed a thorough understanding of the issues and
concerns of all parties in a venture capital financing.
Baker Donelson’s representation of venture capital and
other private equity funds includes funds focused on specific
business plans such as biotechnology, to funds focused on
specific investment strategies such as mezzanine capital.
Our representation of these clients gives us an intimate
understanding of private equity funds, their goals and
their limitations. We utilize our attorney experiences in
the critical areas of securities, tax, ERISA, intellectual
property and banking regulatory fields to ensure that we
have addressed every important issue.
• Restaurant brewery company — Sale of $23 million
of mezzanine notes and $12.5 million of Series B
and Series C stock
• Assisted in $10 million of investments by a client
venture capital fund in six companies
• Photographic film processor — $2 million
mezzanine capital investment
• Environmental remediation company — $2 million of
Series A preferred stock
• Software technology company — $2 million of
preferred stock to angel investors
• Medical imaging company — Private placement of
preferred stock to venture capital funds
• Independent filmmaker — Private placement of
equity to fund production and distribution of two
documentary films
• Venture capital firms — Facilitated investment in
software development and biotechnology startup
companies
• Represented wastewater treatment company
in connection with fund raising and general
business matters
• Internet provider of medical supplies and equipment
to hospitals — Private placement of preferred stock
to venture capital funds and private investors
Private Equity Fund Representation
• Private equity fund — $30 million mezzanine
capital fund
• Private equity fund — Organization of fund and
$12 million private placement offering
• Biotechnology venture fund — $25 million
capital raise
• Biotechnology venture fund — $10 million of
multiple investments in target industry
• Private equity fund — $15 million mezzanine
capital fund
• Private equity fund — $1.5 million mezzanine
capital investment
The Rules of Professional Conduct of the various states where our offices are located require the following language: THIS IS AN ADVERTISEMENT. Ben Adams is Chairman and CEO of Baker Donelson and is located in our Memphis office, 165 Madison Avenue, Suite 2000, Memphis, TN 38103. Phone
901.526.2000. No representation is made that the quality of the legal services to be performed is greater than the quality of legal services performed by other lawyers. FREE BACKGROUND INFORMATION AVAILABLE UPON REQUEST. © 2012 Baker, Donelson, Bearman, Caldwell & Berkowitz, PC
The Best Lawyers in America® 2012, Copyright 2011 Woodward/White, Inc., Aiken, S.C.
LSBC_Venture capital
11.01.12

to materials from this boot camp.

Transcription

Similar documents

city place

10/28/2009 - Decatur Rotary Club

`The Real McCoy` - Fishman Stewart PLLC

golf 2016 - Georgia Bridgemen

Diversity Matters

The tragedy of life doesn`t lie in not reaching your goal

Elizabeth M. Tannon | Of Counsel

candice_l_dircks_042213 copy

Castleberry Point SPA CE AVAILABLE FO R LEASE

Life in Atlanta - Georgia State University