LLP
stuart{malcolm} Areas of Expertise – Directory Commercial contracts Company law Confidential information Convergence technology Corporate finance Corporate governance Data protection and privacy Digital commerce (e-commerce) Digital content Digital media Entrepreneurship Establishing business Information and communications technology Intellectual property Licensing of technology Mergers and acquisitions Publishing Spin-outs and technology transfer Universities and academic research Venture capital, private equity and emerging companies
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stuart{malcolm}
Areas of expertise Commercial contracts Having a first-rate understanding of those economic sectors in which we specialise means that we can quickly identify at an early stage in the process the key legal and commercial issues at hand surrounding clients’ commercial contracts and business arrangements. In understanding priorities, we particularly recognise the need to ensure that: (i) commercial contracts are flexible and scalable enough to operate in a landscape which is often rapidly evolving at both a technical and commercial level; (ii) contractual mechanisms are workable in practice, tailored to the specific environment, thus avoiding complex arrangements which look good on paper, but are unworkable in real life; and (iii) the risks associated with the design, development, implementation and operation of the contract deliverables are correctly apportioned between the parties, so that each party’s responsibilities are clear and the party better able to manage a given risk bears it. We work with clients on contracts involving the entire spectrum of interests within the knowledge and creative economies. For technology developers and suppliers, we have a particular reputation for developing innovative contracts and structures as markets and business patterns evolve and adapt to innovation and sector progression. On the customer and technology buy side, our understanding of the sectors that technology transform and how technology affects business operations gives depth and context to our advice. Similarly, we regularly undertake contract negotiations to assist our creative clients exploit business opportunities throughout the publishing, media and communications sectors. Often as not, plain English drafting ensures the best possible commercial outcome for our clients. Key experience: • projects – pre-contract, procurement and preparation and negotiation of main commercial contracts and business and legal schedules • services – computer, communications, consultancy and information services, digital commerce and online business models • software agreements – software development, distribution, licensing and support, end-user licences and source code and escrow arrangements • systems – procurement of software, services and systems and software/systems implementation, integration and support • intellectual property – copyright issues, rights and content management and intellectual property rights licensing and assignment
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Company Law New legislation, regulations and codes of practice now govern the corporate landscape with the full implementation of the Companies Act 2006 into law on 1 October 2009. The Act has the distinction of being the longest in British Parliamentary history: with 1,300 sections and covering nearly 700 pages, and containing no fewer than 15 schedules. It provides a comprehensive code of company law for the United Kingdom, and makes changes to almost every facet of the law in relation to companies. As corporate law specialists we are comfortable by the challenge of interpreting this new legislation. Whatever area in which we are instructed, we focus quickly on the commercial issues and on achieving results, always having cognisance to the performance-to-price ratios which clients demand. Even if a matter takes an unexpected turn it is likely that we will have ‘been there before’ and will be able to draw on our experience to guide the issue to a successful conclusion. Key experience: • establishing business, corporate personality and constitution • corporate capacity and powers • corporate governance • directors’ duties • shareholder rights and shareholder agreements • corporate finance and mergers and acquisitions • company compliance, reporting and disclosure requirements • company life and death Confidential information Confidentiality ensures that information should only be accessible to those authorised to have access to it and that the ‘confidentiality bubble’ is maintained and protected. In the quaternary economy, confidential information, know-how and trade secrets are frequently at the centre of what gives a business competitive advantage. Whether it is sensitive business, product or market information, complex research and development methodologies or customer databases, we understand the importance of capturing, protecting and thereafter exploiting confidential information. Key experience: • non-disclosure agreements (NDAs) and confidentiality arrangements, collaboration agreements and research and development negotiations • capturing and owning employee and consultant work and deliverables, particularly in the creative, software and other copyright industries • technology transfer, intellectual property and know-how licensing
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stuart{malcolm}
Areas of expertise Convergence technology Convergence is changing the way we create, consume, learn and interact with each other. Media convergence is not just a technological shift or a technological process; it also includes shifts within the industrial, cultural, and social paradigms that encourage the consumer to seek out new information. We are surrounded by a multi-level convergent media world where all modes of communication and information are continually reforming to adapt to the enduring demands of technologies. Previously separate technologies such as voice (and telephony features), data (and productivity applications) and video now share resources and interact with each other, synergistically creating new efficiencies. The evolution and popularisation of the Internet as well as the activities, products and services that have emerged in the digital media space has resulted in the interlinking of computing and other information technologies, media content and communication networks. Convergence is driving structural change at an increasingly faster pace, forcing businesses to adapt more quickly to survive and thrive. It is an exciting, dynamic and sometimes unpredictable space. From initial content and data capture, through content management and new distribution routes and to delivery through hardware and equipment, we continue to be excited by and represent a number of clients engaged throughout the convergence spectrum. Corporate finance We have an impressive legacy of advising clients on transactions that have a particular focus on technology, innovation, media or a creative element. Having a deep understanding of these sectors enables us to efficiently assess risk and ensure that a particular transaction is properly managed and successfully negotiated. We act for both investors in and companies involved in our targeted innovation and creative sectors and have an extensive knowledge in a wide range of corporate finance transactions. Our transactional corporate practice recognises the importance of successfully project managing the transaction process and the bespoke nature of a particular deal. We combine not just legal knowledge and understanding but commercial awareness and pragmatism to get deals successfully completed within anticipated timelines. Our advice covers all stages of a particular transaction including deal evaluation, structuring, negotiation and execution and post-closing integration and compliance. Key experience: • acquisitions and sales of companies • venture capital, private equity and entrepreneurial investments
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technology transfer and spin-outs management and institutional buy-outs and buy-ins corporate restructurings financial promotion regulation
Corporate governance United Kingdom company law is currently undergoing major changes with the passing of the Companies Act 2006. Although new legislation, regulations and codes of practice governing the corporate landscape are aiming to make the operations of UK businesses easier and more transparent, compliance obligations on companies and their directors are becoming increasingly more technical and challenging. Our understanding of the key requirements of businesses in the technology and communications sectors enable us to provide robust commercial advice, allowing our clients to manage business risks effectively and efficiently. We specialise in advising directors and management teams on their duties and their communications and arrangements with shareholders and stakeholders. We also regularly advise on how investor rights impact on the company, from an operational and strategic standpoint. Key experience: • communications with existing and potential shareholders and investors • directors’ fiduciary duties and conflicts of interest • appointment and duties of non-executive directors • personal liabilities of directors • board meeting procedures • shareholder meetings and resolutions • constitutional matters • company secretarial responsibilities Data protection and privacy Data protection is an increasingly pervasive issue, spanning every commercial sector and legal discipline. Concern in relation to the increased use of technology to capture and process information about living individuals has forced data protection law into the media spotlight and simultaneously up the compliance agenda for businesses. Personal data is the key asset of almost all customer-facing businesses and it must be used in a way that is compliant with data protection legislation – not just to avoid the risk of sanctions but also to preserve commercial value. We advise clients on both a strategic and case specific basis and advise on all aspects of data protection, and on the acquisition, exploitation and protection of personal data, at all times against the background of
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stuart{malcolm}
Areas of expertise the Data Protection Act 1998; a breach of which can have serious commercial consequences. Key experience: • personal data collection and use including on-line data use and compliance • data sharing with external organisations to maximise value of businesses’ data including partnerships, joint ventures, affinity arrangements and commercial agreements • advertising and marketing • individual data subject access requests Digital commerce (e-commerce) The amount of trade conducted electronically has grown extraordinarily with widespread Internet usage, spurring and drawing on innovations in areas such as electronic funds transfer, supply chain management, Internet marketing, online transaction processing and inventory management systems. Although the laws of physical commerce also apply to the online world, trading virtually brings with it an added array of legislative provisions, largely aimed at protecting consumers on the Internet. It is an area of our practice which regularly brings with it new legislation, regulations and codes of practice. We employ our experience in this area to increase clients trading opportunities and routes to market whilst at the same time ensuring that potential risks are fully mitigated and business processes are developed with cognisance to the fluid legislative requirements. Key experience: • implementing digital commerce operations, including preparation of terms of use, terms of business and payment, digital commerce contract formation and advising on protection of intellectual property online and through other media streams • operational advice including development and hosting • regulatory compliance and consumer protection including data protection legislation and payment systems Digital content In the converged world the interface between digital data and technology creates an environment full of opportunity for publishing and media-focused enterprises. Media production and delivery technology progression has dynamically enhanced the value of content. The greatest value for a given source of content for a specific audience is often found through such digital reworking of content. Less emphasis is placed on the original form, and more on rapid repurposing,
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reuse, and redeployment. This has led many publishers, publishing houses and media producers to view their primary function less as originators and more as transformers of content. Increasingly, where publishers used to focus on publishing printed materials, they are now publishing both databases and software to combine content from various sources for a wider-variety of end-users. The development of e-books is just one example. Continuing technology innovation leads to new tools for content owners to distribute their information and new routes to market and revenue streams flow as a result. We frequently advise clients utilising these new direct lines of contact with users on the novel legal issues arising from these new marketplaces. Key experience: • online delivery and distribution of content including commercial structures and revenue sharing opportunities • content rights management including licensing and exploitation programmes and rights clearance • protection of content through the use of digital rights management and other content access control tools • ‘takedown’ notices Digital Media In the converged world, the design, development, acquisition and licensing of technologies enabling the mobile distribution of content and information continues unabated. Such creative convergence of digital arts, science, technology and business for human expression and communication is at the forefront of our practice and is a space in which our entire practice very much keeps abreast. To successfully advise any client through the next shifts in consumer demand, it is not enough to be able to look backwards; it is vital to be able to keep up with the massive and fundamental shifts going on. Entrepreneurship Entrepreneurship is widely recognised as a one of the key facilitators within the knowledge economy and a catalyst for the progression of scientific breakthrough and research and development success. The entrepreneurs’ risk of market adoption is balanced by the potential reward of ultimately commercially exploitable and marketable products. Many high value entrepreneurial ventures are commonly the product of technology transfer or spinout enterprises and often seek angel funding or venture capital in order to raise capital to build the business and development strategy as the various routes to market are identified. Entrepreneurship has spawned many of the United Kingdom’s most dynamic, creative and innovative companies and with our
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stuart{malcolm}
Areas of expertise in-depth market knowledge it is an area in which we enthusiastically embrace. We are close to many of the organisations which exist to support would-be entrepreneurs, including specialised government agencies, business incubators and science parks, not to mention the venture capital community. Key experience: • pre-revenue intellectual property acquisition and protection strategies including identifying scope and exact ownership structure • establishing precise business model, including spin-out or joint venture • legal due diligence • early stage financings including ‘friends and family’ funding round and business angel and seed fundraisings Establishing business We guide clients through establishing the most appropriate business vehicle, whether establishing a company for the first time or seeking to expand current operations from abroad. We advise on the provision of debt and equity financing as it effects the new entity. In addition, we undertake the preparation and negotiation of commercial contracts, often as not centering on intellectual property, and terms with customers and suppliers. We have a legacy of developing innovative contract models in quickly-evolving markets. Key experience: • incorporations and business start-ups • the establishment of UK trading subsidiaries • group re-organisations • transfers of assets, liabilities and contracts to a new group member • implementation of new banking facilities and security arrangements for new businesses and group members Information and communications technologies In a world where advanced technologies are continually manipulating and communicating information and knowledge, we specialise in all aspects of the law relevant to information and communications technology, including the supply/procurement of end-to-end IT systems; software development and licensing; system infrastructure procurement; managed service and ‘software as a service’ arrangements; IT outsourcing (onshore and offshore); together with all aspects of the law applicable to the Internet, websites and digital or e-commerce.
Key experience: • commercial technology arrangements, including software licensing, hosting and support services, systems development and integration and applications development • technology outsourcing including infrastructure, desktop, application and application support as well as more general business transformation outsourcing including in relation to business process and knowledge process • corporate, mergers and acquisitions, and private equity transactions which require specialist technology input or have significant risk or value drivers associated with the technology and/or communications sectors • the development and implementation of global licensing strategies ranging from simple licences relating to standard ‘off the shelf ’ packages to complex deals involving significant consultancy, design and development of bespoke technology Intellectual Property We have an acknowledged strength in advising clients rich in intellectual property (IP) and our intellectual property practice is central to our entire practice. We work in a world of ideas, a place where every idea is a new opportunity to progress. In a world where technological boundaries are constantly changing and there is an ever increasing focus on intellectual assets and their value, the effective protection, management, exploitation and enforcement of intellectual property rights, and the development of effective strategies to maximise their value, is vital to our clients. We absolutely recognise that our clients are involved in highly competitive environments where their business models demand continual product development and exploitation of intellectual assets. They are businesses or organisations commonly founded upon the knowledge and expertise of academics, entrepreneurs, scientists, researchers, inventors or someone with an excellent idea. We understand how creators, developers, licensors and licensee’s of intellectual property work with these rights and have experience of all aspects of intellectual property commercialisation, enforcement and corporate deals in the technology and media sectors and the sectors that these industries transform. Key experience: • strategy – how best to look after existing and developing IP • development – ensure at the outset of a commercial project that the full benefit of created IP is vested in the correct entity • commercialisation and exploitation – early-stage research and development through to licensing and protection, including collaboration agreements and arrangements for the spin-out of IP into new commercial ventures
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stuart{malcolm}
Areas of expertise • investment and return – assessing IP purchase and in-licensing opportunities and advising on the sale or out-licensing of IP to third parties including fund-raisings, mergers and acquisitions and/or technology transfer strategies
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Licensing of technology Working on behalf of licensors, we represent the providers of a wide diversity of technologies. We also represent technology licensees whose business is heavily reliant upon technology. Typical representations of licensors commence with the acquisition of technology, including contributions by inventive founders, technology transfers from universities, governmental bodies and in-licensing component technology from commercial intellectual property sources. Once these fundamental issues are addressed, we help develop and negotiate agreements that implement our clients’ commercial strategies. For providers of enabling technology, extra attention is paid to strategies concerning fields of use and territories (and related issues of compensation and exclusivity), in order to avoid unnecessary channel conflicts. For our creative clients we regularly implement licensing regimes in the context of content rights management strategies and exploitation programmes.
Publishing We have extensive experience of all aspects of publishing law. Our work combines complementary areas of expertise such as intellectual property, digital content, digital commerce, information and communications technologies and digital platforms, with our extensive experience of corporate deals in the sector. With the convergence of information technology, communications and various media streams, the sector is evolving rapidly and dynamically. This has led many publishers, publishing houses and media producers to view their primary function less as originators of static media and more as transformers of content. Increasingly, where publishers used to focus on publishing printed materials, they are now publishing both databases and software to combine content from various sources for a wider-variety of audiences. We frequently advise clients utilising these new direct lines of contact with users on the novel legal issues arising from these new marketplaces. Our sector expertise also enables us to advise authoritatively on those novel challenges facing the publishing sector.
Mergers and acquisitions We are proud of our legacy of advising clients on M&A transactions which have a particular correlation with technology and innovation or a media or creative element. Our focus is on making transactions fast, smooth and cost efficient. To capitalise on an M&A opportunity, we implement an integrated team with the legal and practice experience to tackle all relevant issues. Whether we manage the entire process, work alongside the general counsel or partner with a client’s in-house team, we help our clients address every part of the deal. We gain a thorough understanding of our clients’ economic, structural and transactional objectives, help to prioritise them, identify and overcome any stumbling blocks and ensure that goals are achieved. We are involved in all stages of a particular transaction including deal evaluation, structuring, negotiation and execution, together with post-closing integration, filings and regulatory compliance. Key experience: • private company sales and purchases • management buy-outs and buy-ins • takeovers and mergers
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buying and selling assets vendor consideration issues joint ventures legal due diligence reporting
Key experience: • publishing agreements including author contracts, rights agreements and editors’ and contributors’ arrangements • digital exploitation of original content and novel revenue streams • copyright issues • digital media and convergence technology Spin-outs and technology transfer Many companies, universities, governmental organisations and research bodies now have an office of technology transfer dedicated to identifying research which has potential commercial interest and strategies for how to exploit it. The process to commercially exploit research and intellectual assets can vary widely. It can involve licensing agreements or setting up joint ventures and partnerships to share both the risks and rewards of bringing new technologies to market. Other corporate vehicles, for example spin-outs, are used where the host entity does not have the necessary will, resources or skills to develop a new technology; here venture capital is commonly employed to fund the development process with the intellectual
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stuart{malcolm}
Areas of expertise assets being assigned or licensed into the spin-out vehicle to procure commercial exploitation. We are particularly known for our work on spin-outs and technology transfer and regularly act for both investors and ‘new co’ on the corporate, commercial and technology aspects of these transactions. Key experience: • protection of confidential information, know-how and trade secrets and intellectual property rights generally • pre-market academic collaboration and research and development arrangements • technology exploitation and rights management including licensing and assignments • investment term sheets and memoranda of understanding • venture funding investment agreements covering the entire spectrum of business maturity from seed capital to mature funding rounds • management rights including vesting rights, tag-along provisions, dividend structures, liquidation preferences etc • executive directors service agreements and non-executive appointments Universities and academic research University and academic research and development represent the cornerstone of the science-to-innovation system and is a key node in the global collaborative network which represents the innovation-based economy. The work undertaken in these institutions create the environment and opportunity for innovation and entrepreneurship to flourish. Whilst universities and academic institutions have varying policies in relation to the ownership of intellectual property rights developed by its academics, there may never have been the need to formally identify its scope and exact ownership structure. We recognise it is fundamental to appreciate the dynamics of academia and the balance that requires to be struck between often competing interests. On the one hand, account must be taken of the expectations of the creators of the intellectual property rights who are being permitted to exploit the commercial opportunities presented. On the other, it may have to be borne in mind that research, which may have received substantial public funding, is used in a way that meets the institute’s wider aims of stimulating the exchange and dissemination of academic ideas. Sometimes, due to a lack of understanding of this balance, founders, investors and even advisers can have unrealistic expectations of exploitation of intellectual assets generated from academic sources.
Key experience: • protection of confidential information, know-how and trade secrets • inter-institution science and technology co-operation agreements • (pre-market) academic collaboration and research and development arrangements • know-how and technical assistance arrangements • ownership of intellectual property rights including inventorship determinations, intellectual property policies, licence agreements, invention disclosure documents and due diligence investigations • spin-outs and commercialisation Venture capital, private equity and emerging companies Cash is the lifeblood of emerging growth companies that must be able to raise money, when necessary, in a timely and efficient manner. To prosper, companies must be able to raise money when necessary in a timely and efficient manner, even when sources of capital are tight. Companies seeking investors value advisers that offer both investor contacts and extensive experience in venture capital and private equity investments. We cover every type of investment and divestment activity including seed and first round funding, institutional venture capital and private equity, management buy-outs (MBOs) and exits by sale to trade or financial buyers. Extensive experience on both the investor and company sides of financing deals enables us to make introductions that are beneficial to both companies in search of funding and venture capital firms looking for exceptional and dynamic companies in which to invest. On the investor side, we assist venture investors on corporate structure and exit-stage risks that can complicate the achievement of investment objectives. Key experience: • legal due diligence reporting • heads of terms, memoranda of understanding and term sheets • investment agreements, investor rights agreements and subscription agreements • articles of association including customary investment provisions such as co-sale rights, drag-along rights, antidilution provisions etc • intellectual property rights agreements • facilities agreements, security documents and other leveraged banking and debt finance arrangements
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LLP
stuart{malcolm} the dairy, CHILSWELL FARM, BOARS HILL, OXFORD, OX1 5EP, england
t: +44 (0)1865 601 240 • f: +44 (0)1865 601 241
e: contact@stuartmalcolmllp.com