Tech Law

McNaul Ebel represents a wide variety of clients in matters relating to intellectual property licensing and channel development. Our attorneys structure, negotiate, and document arrangements to acquire, develop, protect, and distribute technologies both domestically and internationally. We have broad experience working with licensing and distribution agreements, OEMs, consulting and service agreements, joint ventures and strategic alliances, and Internet and e-commerce arrangements. Specifically, our experience with IP licensing and channel development includes the following recent transactions:

• Customized master license agreements between a leading visualization technology company and Fortune 500 customers
• Multi-year service and license agreements between consumer data analytics company and international OEMs
• Distribution, partnership and vendor agreements for social network to monetize aggressively growing membership base
• Video content license and distribution agreements between international hotel company and content producers and distributors
• Channel agreements and secured rights to data feeds in dozens of municipalities for radio solutions company
• Development and license agreement between video game developer and major semiconductor company

Our attorneys also have substantial experience in litigation and arbitration involving the licensing and development of intellectual property rights.

McNaul Ebel clients and attorneys are at the forefront of the social media revolution. We have significant experience representing social media and other 2.0 companies that are breaking the barriers of established business models. Such companies operate using business models that evolve constantly, and the legal issues affecting these companies, as well as traditional companies that use social media for marketing and other purposes, are developing at a rapid pace. We understand the changing face of these business models, current regulatory trends, user-generated content issues, policing user misconduct, and how to minimize the inherent risks of social media marketing while maximizing the benefits.

Our experience with social media and 2.0 business models includes the following recent transactions:

• Development of terms of service for video-sharing social network, to include sharing of advertising and content-licensing revenue with community members
• Expansion of social network's goodwill associated with trademarks through non-traditional licensing and supporting guidelines, coupled with a protocol for community policing
• Planning, implementation and launch of branded services on iPhone and iPod Touch platforms for several information service companies
• Representation of various new Internet ventures yet in stealth mode, seeking to establish new businesses that push the envelope on existing approaches in the areas of commodity valuation, mental health services, information localization and information delivery

In addition to representing startups and emerging companies, we represent many founders of emerging technology companies in connection with their intellectual property assignments, restricted equity issuances, and noncompetition and confidentiality agreements. We understand the issues unique to founders of rapidly growing companies. We help them assess and negotiate the agreements they are asked to deliver, whether at formation, financing, exit, or severance. Where appropriate, we assist the founders in striking the right balance between the scope of technology that they assign or retain, limit the restrictions they place on the futures of those technologies, and determine how to maintain controlling ownership interests.

Our attorneys understand the importance of building a brand and have experience in all facets of trademark protection and practice. We assist our clients with the development of trademark protection strategies; performing trademark searches; preparing, filing, and prosecuting trademark applications in the United States and internationally; preparing, filing, and prosecuting trademark oppositions and cancellations; and representing clients in litigation and arbitration involving trademark and trade secret protection. Our trademark clients include a broad range of national and international businesses, including prominent and emerging social networks, video game developers, consumer products companies, transportation providers, and hotels.

Typically, emerging companies that plan on raising substantial capital are formed as corporations rather than limited liability companies ("LLCs"). For various reasons, angel investors and venture capital firms generally avoid investing in LLCs. However, times are changing, and new Internet entrepreneurs do not necessarily follow the financing models of the past. In the current economy, where bootstrapping is the norm, founders are reevaluating how best to capitalize and run startups and often consider the LLC as an appropriate form of entity.

Our attorneys have been forming LLCs for use in connection with investment funds, real estate projects, and closely held companies for years. Recently, however, we have begun forming LLCs for emerging technology companies whose business models do not depend on raising significant outside capital. Our attorneys see that the LLC is becoming more relevant in the new Internet economy, and we understand the particular circumstances in which it may be wise to opt out of the typical paradigm used in the ecosystem of an emerging company.

Although our business and technology practices are based on representing entrepreneurs and companies, we also represent several angel and venture capital investors on a transactional basis. As investors’ counsel, we work closely with angel and venture capital investors to identify, structure, and make investments in emerging and mature companies. We assist investors with conducting due diligence investigations of prospective investments, negotiating the terms of the investment and investment documents, and structuring and organizing the form of the investment entity that will make the investment.

Our experience as investors’ counsel includes the following recent transactions:

• Representation of venture fund in connection with initial organization and management structure, initial financing and investments in portfolio companies
• Representation of lead investor in connection with purchase of Series A Preferred Stock of cloud-based IT management service
• Representation of serial entrepreneurs in connection with making investments in startups in which they assume executive roles