FRANCHISE, TRADEMARK, LITIGATION & LICENSING EXPERIENCE

International Franchise Agreements, Joint Ventures and Strategic Alliances

1. International Franchise
• Represented a franchisor in a long-running business dispute with its Japanese franchisee. Negotiated seven figure sale of trademark name and licensing rights to the franchisee.
• Represented a franchisor in negotiation and sale of marks to Middle Eastern franchisee.
• Represented fast food franchisor in marketing territorial franchise agreements in Chile, Argentina, Mexico, Egypt and throughout Southeast Asia and the Middle East. Business travel included multiple trips to and negotiations in Egypt, Hong Kong, Singapore, Shenzen, Shanghai, Argentina and Chile.
• Helped development of training centers in Asia and the United States for international franchisor client.
• Coordinated architecture, design, shipping and equipment logistics services to enable development of over 35 units in 7 nations in 18 month period for QSR franchisor.
• Inspected and audited food manufacturing facilities in Egypt, Argentina and U.S.
• Over a six year period, represented a real estate brokerage franchisor in the drafting and negotiating of master franchise agreements in:
• Australia
• New Zealand
• Hong Kong
• Singapore
• Mexico
• Puerto Rico
• The Caribbean
• Belgium
• Netherlands
• Luxembourg
• the United Kingdom
• Northern Ireland
• Italy
• Israel
2. Joint Product Developments & Co-Branding
• Represented a QSR in drafting and negotiating proprietary product development agreements with various food and equipment vendors. Transactions were complicated by the fact that vendors typically wanted exclusive ownership or development rights, but client was committed to eliminating "sole source" suppliers, and insisted on ability to use alternative suppliers. One deal was resolved by committing certain dollar amounts and volume quotas over the life of the contract, while another transaction moved forward when a compromise on recipe/process ownership by having one supplier supply ingredients to another, thus protecting the proprietary information from the second supplier.
3. Joint Marketing & Co-Branding
• Represented a pre-IPO telecommunications software start-up in drafting and negotiating joint marketing agreements with Asian, Middle Eastern and European suppliers. Transactions were complicated by need to prevent territorial overlap.
• Represented American QSR in negotiations with a Hong-Kong based licensor and manufacturer of kid's meal toy premiums. Insisted on indemnification language (which proved useful later when the licensor's product infringed a famous trademark). Put provisions in agreement to ensure that promoter and its Chinese factories complied with UN standards for child labor.
• Negotiated co-branding agreements for fast food chain with Oreo, Coca-Cola, Ed's Red Hot BBQ Sauce, Folgers, Nestle, Mrs. Field's and others.
4. Strategic Alliances
• Represented technology start-up in drafting and negotiation of Alliance Agreements with Accenture, LLP and Cap Gemini E&Y (Paris).
5. Mergers and Acquisitions
• Represented American franchisor in the re-acquisition of its United Kingdom region from its former parent company. Performed due diligence on-site in London, and drafted and negotiated all sales agreements.
• Acted for franchisor in the sale of assets in its 35-unit New Zealand territory, and helped negotiate and draft the simultaneous merger of that chain into an existing 30-unit chain.
• Drafted and negotiated all agreements relating to the multi-million dollar sale of American franchisor's Australian region, including supervising local counsel and filing of registration documents.

Trademarks and Branding

• Managed international trademark applications for several American franchise organizations, including identifying appropriate markets, managing budgets, and prosecuting registrations in over 120 nations.
1. Responded to office inquiries from over 50 nations and 100 outside counsel;
2. Amended, changed, or defended dozens of applications in numerous nations;
3. Opposed potentially infringing applications in the EU, Latin America and Asia;
4. Negotiated co-existence agreements with numerous companies with similar marks or brands in several classes.
• Registration and response to USPT office actions for numerous restaurant and franchise clients.

Franchise Litigation Management

Extensive involvement as either client or counsel in both domestic and international disputes:

• International Franchise & Trademark Protection

Franchise Termination On my recommendation, the company terminated its relationship with a 10-unit Mexican licensee for failure to pay royalties and failure to adhere to food safety standards. Franchisee sued for $120 million in USDC (San Diego) claiming wrongful termination. We obtained preliminary injunction for claims of trademark infringement and later summary judgment on all claims related to trademark protection. Franchisee filed bankruptcy.

Mexican Litigation Supervised 46 separate legal proceedings, including claim in front of International Chamber of Commerce (Paris), and Mexican Institute of Industrial Property on behalf of American franchisor attempting to have its marks removed from former franchisees signage.

Multi-nation Asian Litigaiton Client terminated relationship with 20-unit Asian master franchisee for failure to supervise its licensees and food safety violations. Company obtained preliminary injunction against master franchisee and Asian licensee ordering removal of signage and cessation of on-going trademark infringement. Matter involved coordinated legal actions or equitable settlements in Shanghai, Singapore, Indonesia, Thailand, and Egypt.

Hong Kong Litigation Struggling 10-unit Hong Kong franchisee sued my client for breach of territorial exclusivity provision and other claims. Prior to my involvement, client began a non-binding arbitration process, which it lost. Franchisee then proceeded to file $34 million claim in USDC (San Diego). After three years of litigation, case settled in middle of six-week trial without payment of any cash to franchisee. Franchisee shortly thereafter ceased operations.

Australian Litigation Franchisor client terminated its agreement with its bankrupt Australian master franchisee. I was sent to live in Sydney for several months as part of a "disaster containment" team. I supervised the assignment of over 220 franchise agreements from the bankrupt entity to a new corporation organized under my direction. I spent several weeks dealing with creditors and tax authorities, while helping the team hire new employees and lease office premises. I then spent the next four years supervising the defense of a $24 million claim brought by the Australian liquidator of the franchisee against my client. Despite fears of getting "home-towned" by a Sydney judge, I fired a large firm representing my client and refused to settle the case. I hired a small local firm, and a lone barrister to represent the company. Result: complete defense verdict after a full trial.

Other Litigation

• Trademark / Domain Names / Theft of Trade Secrets

A client's kid's meal promotion made references to "Frisbees" and "Hacky-Sack," both registered trademarks of Wham-O!. Wham-O! sued prior to making a demand. I plead affirmative defense that marks were "generic" and argued strenuously on damages. I sought (and received) indemnification from the supplier who had created the infringing material. Case settled for nominal sum paid by supplier. My client paid nothing and was reimbursed for its attorney's fees.

In early 2000 I initiated some of the first suits under the recently enacted Domain Name Piracy Prevention Act, and successfully brought in rem type proceedings against infringers who had registered .org and .net versions of my client's trade name.

In 1992 I led an investigation relating to a multi-district theft-of-trade secrets claim brought against my client's major competitor. My internal analysis of phone records, employee travel records, terminations, and interviews with employees led to confrontation with a suspected "mole." He quickly confessed to photocopying secret internal financial documents and forwarding them to an executive of the competitor.

In 1993 I posed as a real estate developer in order to hear sales pitch and obtain marketing materials from a client's rogue franchisee in Mexico. Evidence gained during "undercover" operation in Mexico resulted in termination of franchise agreement and enforcement of trademark licensing provisions in contract with Mexican master franchisee.

Marketing and Advertising

• Reviewed television, radio, and print media for long-running, successful QSR ad campaign, including controversial spots using competitor names and logos.
• Reviewed all food and product labels, and advised restaurant client on FDA and USDA regulations relating to the preparation, advertisement and promotion of food products.
• Organized and conducted in-house "advertising law" clinics for client Marketing Departments.
• Drafted and negotiated all contracts and rules for sweepstakes, games and contests promoted by franchisor client.

Internet and E-Commerce

For a publicly-traded client, I:

• Drafted and negotiated contract with web-site.
• Reviewed all web site content and advertisements prior to publication.
• Drafted all legal disclaimer language, and advised on SEC-related "best practices" for posting of stock quotes and investor relations information.
• Prosecuted claims against domain name infringers.
• Drafted and negotiated contract with "fulfillment" company when client began internet-based sales strategy.
• Researched rules and advised on internet based contest targeted at specific markets Matter was complex because state laws on sweepstakes, games and contests conflict, and target market was only one city.
• Advised client when un-authorized logo items began appearing for sale on E-Bay! Led investigation that uncovered rogue restaurant manager selling items for profit.

Licensing

1. Software and Hardware
• Represented a pre-IPO developer of operations support system ("OSS") software for the broadband telecommunications industry, in drafting and negotiating two major software licensing and support agreements with Winfirst, a Denver-based. fiber-optic over-builder, and Cap Gemini E&Y (Paris) (on behalf of its broadband carrier customer, FirstMark France). The cost to client in customizing and supporting the software was over $1 million per transaction, but estimated revenue exceeded $30 million over a five-year period. The transactions were complicated by the fact that client was a start-up attempting to win a "best of breed" solution contests against more substantial incumbents. To succeed, client felt it needed to begin scoping each project and demonstrating its expertise before contracts were actually executed. Since both customers had strong opinions on who should own the IP resulting from the various adapters and connectors created for each project, negotiating favorable ownership language for already-started work was a challenge. In one case I advocated a "brinksmanship" strategy, and we refused to agree that any work already done was a "work-made-for-hire" and thus owned by our customer. This brought the customer back to the table and favorable terms were hammered out.
• Represented software company in drafting and negotiating two critical OEM agreements with Antec, a major U.S. telecommunications equipment manufacturer, and Alcatel, the French telecommunications equipment manufacturer. The pressure to close was immense because the up-front and monthly payments from Antec represented a substantial portion of the projected revenue stream needed to keep client afloat for the next 12 months. The Alcatel transaction represented validation of client's product and potential distribution throughout Europe, Asia, the Middle East and South America. This deal closed after weeklong negotiations at Alcatel's suburban Paris headquarters. The process involved laborious 8-hour negotiating sessions, followed by 10-hour drafting sessions at Parisian counsel's office, with the process being repeated for several days in a row.
• Represented software start-up in drafting and negotiating an ASP model software licensing agreement for Synchronoss, a prominent East Coast telecommunications service bureau.
• Represented client in $1,000,000 deal for pre-paid BEA Software Inc. licenses. Deal was essential for future of client, since its software depended on BEA Weblogic Enterprise platform.
• Represented a $2.0 billion revenue, 1,500 unit, publicly traded company in its $50 million upgrade of all cash registers (POS systems). Deal involved five separate software license and support agreements with NCR and Progressive Software, negotiation of $30 million hardware purchase from NCR, and subsequent lease of same equipment from a finance company.
• Represented company with 42,000 employees, in negotiating a multi-million dollar human resources and payroll software licensing and support agreement with Lawson, Inc.
• Represented company in all its dealings with Litton Industries, an off-site, mainframe ASP provider.
• Y2K: Served as a team leader and the chief legal officer for client's Y2K effort. Responsibilities included reviewing insurance coverage, establishing a Board oversight committee, reviewing all internal procedures and emergency plans, negotiating consulting and remediation agreements, and archiving all Y2K related remediation efforts.
2. Copyright
• Represented restaurant client in identifying, drafting, and filing copyright forms for software developed internally for its distribution and warehouse operation.
• Represented QSR chain in numerous transactions involving the licensing of copyrighted materials from major toy manufacturers.
• Obtained copyrights on written materials for franchise training programs to ensure domestic and international protection for multi-national franchisor.

Food Purchasing, Distribution Leases and Other Contracts

1. Purchasing and Distribution Agreements
1. Re-wrote food purchasing agreements, and trained buyers on new provisions, for $300 million purchasing division.
2. Significantly improved food safety and indemnification provisions in purchasing agreements for clients in QSR, family dining, and fine dining segments.
3. Negotiated 'back-haul' agreements for distributor client.
4. Drafted food manufacturing agreement, including food safety specs, for QSR, family dining and fine dining clients.
2. Retail leases

Have represented tenants in the negotiation, drafting and review of hundreds of retail leases. Work includes free-standing buildings, in-line units, build-to-suits, assignments, etc.

3. Commercial Contracts
• Negotiated over $500 million in commercial contracts for one client over a six-year period. Transactions ranged from computer hardware to coffee to beef and pork futures.
• Drafted and negotiated short-term and long-term commercial office leases for numerous clients.
• Drafted and negotiated contract with outside advertising agency.
• Reviewed over 75 cell phone antenna tower agreements for a wireless telecommunications client, including related base-station construction agreements.
4. Other Contracts
• Drafted, reviewed, and negotiated all non-disclosure agreements ("NDA's") for technology and restaurant clients.
• Reviewed and negotiated several million dollars worth of lease agreements for office equipment, diesel trucks, trailers, and computer hardware.
• Drafted and negotiated numerous consulting agreements for restaurant clients.
• Drafted form employment agreements and confidentiality agreements for technology client.

Government Regulations

1. Domestic and International Franchising
• Have represented numerous franchisors in the use, creation and filing of Uniform Franchise Offering Circulars for domestic and international transactions.
2. Government Affairs and Lobbying
• Lobbied State and Federal elected officials on issues of importance to restaurant clients (e.g., minimum wage, Work Opportunity Tax Credit, energy).
• Served on Board of industry lobbying group, the National Council of Chain Restaurants.
• Organized election season visits and presentations to client by local congressmen and State assembly members.