Tech Industry Bulletin March/April 2015 From the Editor: Welcome to our bi-monthly bulletin, which covers a variety of topics of interest to technology companies. Please feel free to pass the bulletin along to anyone who may be interested in the subject matter. This past February, Buchalter Nemer was pleased to be a sponsor of Start-up Grind 2015 in Redwood City. The link is: http://startupgrind.com/event/startup-grind-silicon- valley-presents-startup-grind-2015/. The firm's sponsorship funded scholarships for ten technology companies to attend this excellent event. We are delighted to be a resource for tech companies, and hope that this information is helpful. Enjoy! - Michael Westheimer Corporate: Negotiating Strategies for the Sale of Bank and Finance: The Equity Cure Provision—Saving Debt Technology Companies with Equity By: Vicki Dallas By: Bukola Mabadeje Page 2 Page 12 Intellectual Property: Crowdfunding and Confidentiality for Labor/Employment: Complying with the New Paid Sick Tech Start-Ups Leave Laws By: Gregory Perleberg By: Michael Westheimer Page 4 Page 14 Real Estate: An Introduction to Leasing For Start-Ups By: Manuel Fishman Page 7 Insolvency: What Every Technology Company Needs to Know When Its Customer or Business Partner Files Bankruptcy By: Shawn Christianson, Valerie Bantner Peo and Ivo Keller Page 9 Tax: Tax Considerations for Technology Licenses By: Raj Tanden Page 11 1 March/April 2015 Corporate: Negotiating Strategies for the Sale of Technology Companies By: Vicki Dallas The number of mergers and acquisitions of private technology determine “fit” between Target and Acquirer, and to validate companies continue to increase. Established companies often the valuation and allocate risks inherent in the transaction. have inadequate in‐house development resources, a large pile of cash, and a need to prove to their shareholders that they Internal due diligence should include the preparation of a have potential for future growth. A target company (Target) comprehensive list of all IP assets, including patents, patent may never fully understand all of the dynamics of what makes applications, trademarks, service marks (registered and it attractive to a potential acquirer (Acquirer), but there are unregistered), fictitious name filings, internet domain names, tools Target should implement to improve its chances of a software and databases, registered and unregistered successful sale. copyrights, trade secrets, proprietary know‐how, technology or processes, and rights of publicity, each for federal, state and Identify the strategic reason for the acquisition foreign jurisdictions. All IP should be reviewed for filing dates, Target may want access to complementary products and renewal periods, security interests, validity, enforceability, and markets, improved distribution capacity and customer base, freedom to use. Anti‐assignment clauses in IP licenses and access to capital without further dilution to founders and other contracts that may be triggered on a change in control investors, an established infrastructure to accelerate growth, as should be addressed and the process for obtaining any well as liquidity for founders and investors. An Acquirer is more requisite consents should be clarified. Invention assignment likely to make an acquisition to gain creative, technical or and confidentiality agreements need to be reviewed for all management talent, acquire key technology, distribution employees and consultants that have contributed to the channels or sources of supply; and/or expand or add new development of the IP. License agreements (which may affect product lines. Often, an Acquirer will make an acquisition to get field of use and other restrictions) and other IP‐related to market more quickly, or to eliminate a competitor. agreements also need to be reviewed, including research and development agreements, joint venture or other strategic Identify the attributes of Target that are most valuable and partnership arrangements, co‐marketing agreements, initiate internal due diligence manufacturing, supply, distribution agreements, and covenants Having proprietary technology is always a competitive not to sue. advantage, particularly when such technology is a market leader in a fast growing market segment. Initiating legal and Identify the most advantageous deal structure for Target financial due diligence prior to going to market is extremely The typical forms for structuring acquisitions are stock sales, important so that any problems/issues can be identified and asset sales or mergers. Transactions can be taxable, or all or remedied prior to Acquirer commencing its own extensive due partially tax‐free depending upon structure. It is important to diligence. check with tax and legal advisors to determine the best form for the structure of the deal before approaching an Acquirer, so Due diligence checklists prepared by an Acquirer generally that Target is best equipped to evaluate competing offers. include legal and business matters. The purpose of collecting information from the due diligence process is to address the strengths and weaknesses of Target, enabling an Acquirer to This bulletin is published as a service to our clients and friends. The material contained here is provided for informational purposes only and is not intended to constitute advertising, solicitation or legal advice. The views expressed herein are solely those of the authors and do not necessarily reflect the views of Buchalter Nemer or its clients. For more information, visit www.buchalter.com. 2 March/April 2015 Identify negotiating strategies Acquirer will negotiate for broad representations and warranties regarding the disclosure of transferred IP, the sufficiency of IP assets, IP ownership, validity and enforceability, non‐infringement, and level of protection of trade secrets and confidential information, with limited materiality qualifications and limited knowledge qualifiers. Joint and several liability for representations and warranties will be requested, with low caps and baskets for indemnity provisions, and indemnification beyond the applicable escrow or holdback amounts. Target should attempt to narrow all of these by arguing for more limited or narrow representations which are knowledge based with materiality qualifiers, and incorporating limitations on the survivability of the representations and warranties. Target should negotiate for a maximum liability cap for indemnifications claims, baskets (minimum claims which must be met before Acquirer can make any claim), and deductibles (where the Acquirer can only make claims above a certain threshold amount). Planning for the acquisition process up front will enable Target to be proactive in its negotiations with Acquirer. It will also pave the way for a smoother acquisition process resulting in a successful closing that meets the objectives of Target’s shareholders. Vicki Dallas is an attorney in the firm’s Corporate Practice Group in the Orange County office. She can be reached at 949.224.6438 or [email protected]. This bulletin is published as a service to our clients and friends. The material contained here is provided for informational purposes only and is not intended to constitute advertising, solicitation or legal advice. The views expressed herein are solely those of the authors and do not necessarily reflect the views of Buchalter Nemer or its clients. For more information, visit www.buchalter.com. 3 March/April 2015 Intellectual Property: Crowdfunding and Confidentiality for Tech Start‐Ups By: Gregory Perleberg I recently attended Launch Festival 2015 requirements of state and federal laws, and certain (www.launchfestival.com) in San Francisco and Angel written disclosures and information must be made, or Launch’s LaunchFEST Mixer: Doing Deals with Silicon made available, to investors so they can have the Valley—Attracting Funding, Angels, and Tech Trends appropriate information to make an investment decision. (www.angellaunch.com) in downtown Los Angeles. The events were very different in terms of size and scope, but Whenever possible, focus on “accredited investors,” each showcased new technologies with an eye toward which are essentially those persons who have one million connecting business owners with investors looking to dollar net worth excluding their house. The disclosure fund start‐ups. As expected, there was a lot of chatter requirements are the least for these sophisticated about the importance of intellectual property, such as investors. Even if you have an exemption from whether or not software apps are patentable, the registration, liability for any fraud by the issuer still importance of branding, etc. (at each of the events, remains. While new technology and social networks may investors definitely tended to gravitate towards make raising capital easier, securities laws still prohibit companies with strong, and protectable IP portfolios). certain activities in order to protect unsophisticated But, the big topic of conversation with start‐up owners investors. So, if you are trying to raise funds via postings was how to lure‐in and legally raise money as a start‐up on social media websites such as Facebook, Twitter or business. LinkedIn, only approach friends and connections with whom you have “substantive, pre‐existing relationship.” Crowdfunding: Fact or Fiction The consequences for not complying with federal and Finding suitable financing for a start‐up tech venture can state securities laws are severe and can include be difficult, and