What law should companies check when launching a business in America? アメリカでビジネスを始める時に注意するべき法律

Hello cameron welcome to foreign connect podcast thank you very much for coming to the show today thank you natsuni it's a pleasure to be with you today yes so to start this interview i wanted to ask you what your background is as a lawyer and also a business developer can you tell me where you work right now what what have you done and so forth yes that's nate um my name is cameron tousey and um i'm the managing partner of ip law leaders it actually stands for integrated professional law leaders um one of our key areas is intellectual property law another one is technology oriented business law so we are our law firm represents very much businesses especially at the startup stage and mid-size businesses as they're growing i myself have about a quarter of a century of experience i've done just about everything is as you might um imagine from multi-million dollar litigations with very big settlements for clients um both in ip and the business-winded business-oriented ip related law i do a great deal of procurement being trying to get intellectual property for companies whether it's patents trademarks copyrights trade secrets sometimes we have many issues in that area we do a great deal of technology oriented law and by that i mean we we do help corporations to get incorporated and formed as well as trying to distribute you know make questions key questions that a company has like distribution of shares um how to deal with um venture capitalists although we've represented both sides we've represented both the investors as well as startups in that area it's a it's a very thriving practice i'm very happy i formed the firm in 2012 so we you know we're kind of a startup ourselves if you think that's how we operate as well all of our lawyers had decades of experience before they joined us um that's with me at some of the very big firms where i think you get good experience one of the issues was that you know when you're trying to represent especially in newer companies and companies are just looking to grow they're very cost sensitive it's not as easy for them to dig deep and pay as much for legal fees and so we thought this was a good opportunity to serve them and serve the entrepreneurial community and i myself have um recently formed a podcast to just talk to to entrepreneurs yes that's awesome what's the name of the podcast it's just named after me it's cameron tootsie podcast but its focus is on entrepreneurship oh my name is c-a-m-e-r-o-n and my last name is t-o-u-s-i okay perfect be on the lookout for it's getting released in august so sounds good we'll make sure to this that also in the show notes um so with that being said you kind of explained um also like a checklist well i i guess the variety of the service areas that you provide within law a lot right but i want to know if there's any sort of like a checklist do you prepare for companies well i have due diligence lists and checklists and if your listeners are welcome if they get a hold of me and i can provide the specific checklist but i can describe some of it for you here okay so um an easy way to get a hold of me if you go to ip law leaders i p l a w l e a d r s or email me cameron iplodleaders.com i can provide the very specific due diligence or checklist as as is required i can explain to you some of what's required right now in terms of our conversation so if you're if you're bringing a corporation to the u.s or you're just starting it for the first time you're really going to be concerned about three main areas of law one is obviously going to be the corporate law because you're going to have to worry about you know if if it's owned principally let's say in japan and you have what that's where the mothership is and then you have um you know joint ventures with a company in the u.s or you have a parent-child type of relationship so you're going to have a subsidiary etc in the u.s you're going to worry about what exactly are those relationships and how are these companies connected meaning where is the distribution of the control of the companies is there enough independence of of um to be able to operate in the u.s there's going to be an enormous amount of time spent on you know compliance depending on what your particular area is like for example if you're in communications we're going to have to make sure that you're complying with the sec regulations um if you're you know if you're in pharmaceuticals et cetera every one of those you have to make sure that you have the legal compliances required that goes along with the corporate um end of it as well as the third part of the corporate side of it if you will are the transactions that you do those are the day-to-day contracts the bread and butter if you will of having companies do well um by continuing to get additional transactions and grow the company that's that kind of day-to-day activity you're going to want a transactions lawyer who's very much on the spot with you so that if you need immediate help they can jump in and start negotiating agreements for you or at least provide a template so that you can conduct your business okay and the second big area um is going to be employment law employment law in the u.s is going to be obviously different than in other countries as a matter of fact our law firm does some employment litigation um where we represent corporations that have you know run into some issues there because the the corporate laws excuse me the employment laws back home may be different than what they are in the u.s and typically they very much are and so um we have to just make sure that there's compliance and that the what's interesting about the u.s by the way on sunni is that in the u.s you have 50 states and each has its own separate jurisdictions so you do have a federal jurisdiction that oversees the all of it but you also have independent state jurisdictions as well so even if you have compliance in the u.s let's say an employment law with you know what you think is you know the federal law each state is going to have it and each city even is going to have its own different kinds of of laws or regulations regarding how employees are being treated etc and you have to be careful of it because you know you can sometimes hit spots where um there are people are just very litigious you know i've uh we've we've had incidents of somebody working at a company for a few weeks the next thing you know they have a big lawsuit on their hands so it's very important for your listeners to be mindful of that um and be getting the employment advice of course that's an area that we cover as well depending on the jurisdiction and the kind of work that's required but even for us at a startup stage at a very early stage of development for a company you've got to be cognizant of um your employees what's the ownership um or or not of for example ip if you have a startup company and technology if you've got um in high tech or biotech etc some of the core technology that you develop is going to be a key asset of your business you want to make sure that's all protected but remember you also have to be careful that the employees who work for you are not able to just sort of quit and take what they've developed elsewhere that's where a lot of problems happen that's where sometimes you get trade secret litigations or or patent suits and all these kinds of things but you do have to worry about uh you know do you really own that ip you know that's a very key aspect of of the employment particularly for startups um and again in the u.s the states vary california for example gives gives more

i would say they're kinder sort of to employ employees in terms of what type of ip they get to keep versus some other states okay so um like new york for example so it's really good to be uh mindful of that that you've got to make sure that you know that's really part of the equation for the employment aspect of the legal endeavors that you know you're you're helping for for corporations okay so and the third part of it as i've already touched on is the intellectual property of it that's particularly important if you've got companies that you know they're in software hardware biotech pharmaceuticals all these areas where the technology is key to your business you want to make sure that you have a good you know due diligence checklist which you know we do with clients and you've got a good rundown and an understanding of what needs to be protected and what type of ip or intellectual property is used to protect it be it patents copyrights trademarks trade secrets those are being the four key pillars of the ip protection and so um in again with with our firm what we do is we we take a we basically create like an internal patent filtration committee particularly for the technology companies where we're assessing helping the client assess what key areas of ip is it that need to be protected and what's our strategy for it you should also have early on instead of waiting until later a licensing strategy as well as litigation if you have to go their strategy right litigation is something most operating companies would like to avoid but you have to be cognizant of the problems that may be created early on right so for example if we're um helping a company develop its patent portfolio we want to make sure that the patents that they develop are litigation tested you know they're um they're litigation ready the reason is because if you were to take the ip that you protected by virtue of you know some strong patents right now right and if you wanted to get a patent license with another company guess what they're going to do they're gonna hire an attorney to look to see how strong those patent claims are and how strong the patent itself is and how enforceable it is okay so they're gonna be taking a look at it just like you would if you were in a litigation already okay now if it happens that the parties uh cannot come to agreement you know you're not able to as as an enforcer is not able to collect as funds or defender thinks that you know this these patents are worthless we don't want to pay anything on them you end up in litigation it's really it's just think of it as as a continuation of your settlement strategy here because uh patentlets in particular i mentioned panelists because i'm talking about technology companies but these kinds of suits in particular um settle um vast majority settle over 90 some percent it's just a matter of how they settle i can go into a lot of the specifics of that for you but i just want at this high level that there would be an understanding that whoever is crafting your ip portfolio should have a good awareness and understanding of how to test it and um and make sure that it's it's litigation ready even if you're well your ultimate goal is just to use the patents defensively or to license them and the last thing in the world that you want is litigation the us is a very litigious country and you always have to be mindful of that i think that's actually one of the key differentiators of our firm versus others because the people who are drafting your applications are working with in teams with the litigators and many of the people who even draft and prosecute the applications prosecution by the way that sunni just means they're trying to get a patent for someone it doesn't mean that you're putting anybody in jail or anything but the but the prosecution of the patent application that type of work is done by people who are doing litigation or are in very close teams with people who are doing litigation and i think that's very much of a differentiator in terms of of the um overall um offerings that we have i have recommended and this isn't just an advertisement for my firm i recommended this to other lawyers as well for many years and i just because i've i've been in this industry and i've just seen a lot um and it's just from the voice of experience you have to trust me oh i see well i mean this was a lot of very insightful uh information but now i'm a little bit scared like can you tell me when companies should like look into hiring lawyers when they want to first like enter um affording well american market well first of all i didn't mean to scare you it's like it's kind of like i guess it's a lawyer's job to scare people and then that's how they make their money or something but it's like but it's but there's there's a lot to be careful of out there you know so think of as a lawyer their job is to sort of keep you out of trouble make sure that you have the freedom to do what you need to do you know what i mean yep um in terms of i think you're you're asking when should you bring your counsel in i think the earlier the better because um the issue is that if you you know you might be doing things um without understanding some of the repercussions involved you know what i mean yeah so for example let me give you one very small example um in the ip field in particular okay if i recommend like if a company thinks that another um company is infringing his patents it's natural to send a letter to that company and say stop infringing it's called a cease and desist letter you know and sometimes these are written very harshly etc now if you have someone who doesn't know what they're doing um now that could be because you know you're this great business person but you don't understand the laws or maybe you're working with an attorney who is more of a general practitioner they don't know the specifics of it they might just go ahead and send that letter without thinking carefully about it now the reason it's you want to be thinking really carefully is because in the u.s by sending a harsh letter you might be creating a an opportunity for that other party to sue you it's called a declaratory judgment action that means that if i threaten you with something then the question is are you able to sue me first the reason you might want to sue me first is say look this guy won't leave me alone i want to prove that i'm innocent right i want to prove that i'm not infringing i want to prove that i have and so you can bring the suit first so it's like think of it as like a defendant a potential defendant bringing a lawsuit now we call it declaratory judgment action okay dj bj is is mentioned a lot um in our parlance the reason you have to be careful is because you might be sending a letter to a company and it's going to want to sue you in its own background in excuse me his own backyard meaning at a court that's closer to it because it's going to think it's going to get a more favorable jury or a judge or treatment or the general public likes them more it's a major company in that area etc so all of a sudden you've lost the battle of the forums the battle of the venue where is that suit brought okay so just by something as simple as sending a letter you might be creating um a potential litigation against yourself whereas one didn't even exist you were looking to just send a letter and tell these you know these people to either um to stop infringing or to sign up for a license agreement so what i'm saying is even in that very specific little example you've got to be really careful now in particular if a corporation is is looking to build a subsidiary in the us or if a startup is looking to get you know these are just two examples is if the startup is looking to get going and develop itself you've got to be careful because you know you have to be thinking against you know regarding all the rules and regulations i mentioned you know are you entitled to operate this company do you have all the licenses that you need are you incorporated properly have you given for example all your assets to the wrong person i mean have you distributed and you know crazy amount of shares in a way that you're not going to be able to take back or walk back later how are you dealing with your angel investors how are you dealing with potential vcs that'll come in the next round you know how much control is kept by you remember that a lot of times with startups in particular um there is a distribution of preferred shares so these are shares that even though a somebody may have a smaller number of shares they may have much more control by virtue of having these shares than other regular shares okay so if you have in one half what happens very often um probably more often than not is that when a venture capitalist works with a startup company they're going to want some special preferred shares for themselves and those shares will for example entitle them to be paid first once there are revenues versus owners of other shares it'll a lot of times it's about about control if the shares may give them an opportunity to take control the company if they if it's not making the if it's not going in the right direction or making the revenues they want etc these these things have to be thought out very carefully whether you're on the funding side of it and especially if you're uh you know somebody who's just got this uh technology or something else that you're looking to expand and develop and grow that you know you afford yourself the proper amount of you know at least if there's going to be some preferred shares that did you afford yourself you know an even kind of an opportunity that you make you know remember every word of a contract is is going to be negotiated between two sides and the difference between something that's going to really protect you and something that really may not may come down to just a few words in that agreement okay so one of one of the recommendations also that i make is remember there's going to be evaluation of corporations early on especially when you're bringing funders and investors on board right so there is going to be some uh grappling over you know whatever assets i bring to the table let's say i developed you know this really cool technology really valuable etc i want that to be properly valued when we go into negotiations with investors okay right so a lot of times people that are more seasoned and more experienced what they're looking to do is to have a better valuation but also they might spend more time developing that before they bring really principal rounds of investors in okay so why because you want to get a bigger valuation you want to say that what i brought to the table is worth more and be able to be able to get a better dollar value for what you're bringing to the table does that make any sense yep but it's very high level to be honest but this is very insightful um i'm really i really appreciate that you share this information with us so finally i noticed that you also have your own experience leading venture back to startup right and perhaps this is probably one of the competitive advantages you have against other lawyers too because maybe some uh some lawyers are more like a generation as you mentioned earlier can you tell me the experience you had when you were leading the venture back to startup yourself as well well on the well let me put it to you this way um the startups that i've had um what what we did i'm sorry if you can

um what we did with the um these startups we actually were able to um bring dollars to the table from our um the corporation that was sponsoring us so um i don't know if you if you follow gary vee or gary vaynerchuk at all yeah but uh one i'm sorry i do yeah oh so one of the things that he's mentioned which i agree with is it should not be you know a pound you know chest pounding moment of great pride or anything when you're when you're borrowing money it should be a sad day for you because you've got to pay that back and everything i know a lot of times that young entrepreneurs think that the only thing i really need to do as soon as i get that funding i'm set i'm done it's not really the case that's really where it just your task begins and you don't want to be borrowing funds and you're not going to be able to to pay back properly or be able to build this company well you got to have a really good game plan um which is what um we did um i had one company was i was a co-founder the the guy was the principal founder of it we were doing marketing in the nascar world which nascar which is an auto racing in the u.s is kind of a big industry our principal focus was on the marketing out of it but we also had a racing team as well as a matter of fact we were one of only four teams that were the um uh well we were one of four teams that that had uh we we got toyota the first time a japanese manufacturer ever got into nascar we actually got them their very first win

that's right you did not have a relationship with toyota you should also know that for many years i've worked on ip matters for uh many many japanese companies at uh uh offerings etc from you name it nec mitsubishi

many many of these corporations wow and i think that uh any of those companies want to talk to me now the ip landscape is completely different than it used to be you have to change your operations right regarding that so i'm happy to talk about that but uh anyway that's the the venture that you're talking about uh a lot of it is from you know i'm an advisor to startups i also you know as as a legal advisor to startups um i help with that with that i also do the same work on the as a regular attorney um advising it so i've probably seen a lot more of it than your average um entrepreneur but when i was doing the business myself those you know those elements were just a lot more key because then it's you know it's your own money is your own assets and you're always worried about it i see i see well um thank you very much for coming to the show today uh we had like a lot of variable information from you today so i really appreciate that so before i let you go can you tell tell us where people can find you yes if you go to iplawleaders.com

i-p-l-a-w-l-e-a-d-e-r-s dot-com or you can even email me cameron c-a-m-e-r-o-n iplaw leaders.com you're welcome to get a hold of me that way do you have any social media yeah sorry yes there's a lot of social media if you look up ip law leaders it should come up okay so we have uh we're we're big on facebook we're um we're everywhere you know youtube etc and i have a new podcast as i mentioned coming up so if you google podcast my name um it should pop up as well but yes we're quite active like you have to be these days right right yeah on social yeah well perfect thank you so much

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