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A LT E R N A T I V E S T O F R A N C H I S I N G 378 Figure 19-6. (Continued). 7. TECHNICAL ASSISTANCE. Licensor shall, at his sole expense and at the request of Licensee, provide technical assistance to Licensee or any of its designees during the Term of the Agreement in connection with the use of Product Technology (including, but not by way of limitation, technical assistance relating to the manufacture, design and promotion of Home Products). Licensor further agrees to fully assist and cooperate with Licensee in procuring acceptance and listing of Home Products by Underwriters Laboratories Inc. and the Canadian Standards Association. Licensor hereby agrees to provide such technical assistance initially for a minimum of four (4) hours per day until such time as Home Products can be manufactured by Licensee or its designee in commercially reasonable quantities, as determined by Licensee in its sole discretion. Once Home Products are being manufactured in commercially reasonable quantities, Licensor agrees to provide technical assistance as requested by Licensee, including that which is necessary to manufacture, market and sell new products and accessories, and implement developments and improvements relating to the Products, as provided in Section 8(a) below. 8. NEW TECHNOLOGY. (a) Licensor’s New Products, Accessories, etc. Licensor shall promptly provide and make available to Licensee any information about new products, accessories, developments or improvements relating to the Products. Licensee shall have the right to review and research such information on a confidential basis to determine whether it is reasonably adaptable for use with or application on Home Products for such time as it deems appropriate. Further, Licensee shall have the first right of refusal to license such information from Licensor. Any such information licensed by Licensee shall, for purposes hereof, be included within the meaning of ‘‘Product Technology’’ and thereby subject to the terms of this Agreement. (b) Licensee’s New Products, Accessories, etc. Any new products, accessories, developments or improvements relating to the Home Products are developed by Licensee or any party with whom Licensee has entered in a contract, agreement or other similar arrangement during the term of this Agreement (the ‘‘New Technology’’) shall remain the property of Licensee. Licensee may determine whether and to what extent it desires to seek trademarks, patents or take other necessary legal steps to protect the New Technology without any interference by Licensor. In the event Licensee shall not seek trademarks, patents or take other necessary legal steps to protect any or all elements of the New Technology, Licensor shall have the right, in his discretion and at his expense, to seek trademarks or patents, or take other legal steps to protect any and all elements of the New Technology. Licensee shall reasonably assist Licensor in seeking such trademarks, patents, or such protection if requested, including securing and execution of trademark or patent applications and other appropriate documents and papers, and Licensor shall pay or reimburse Licensee for all expenses incurred by Licensee in connection with providing such assistance. 9. CLAIMS; INFRINGEMENT. Licensor represents and warrants that he has full power and authority to grant the license to Licensee as provided herein, the Product Technology and Licensed Marks are free and clear of all liens, claims and encumbrances of any nature whatsoever, and there are no governmental or regulatory proceedings, investigations or other actions pending or concluded that adversely affect the Product Technology or Licensed Marks. Licensor represents and warrants to Licensee that there are no patent, trademark or copyright infringements with respect to the Product Technology or the Licensed Marks nor are there any threatened, pending or contemplated actions, suits or proceedings against Licensor or otherwise with respect to the same. No such infringement actions, suits or proceedings would result by reason of the transactions contemplated by this Agreement. Licensor shall promptly notify Licensor of any allegation or claim that the use of the Product Technology or the Licensed Marks infringes upon the rights of any other person or entity. Licensor agrees to defend Licensee and its directors and officers against any infringement, unfair competition or other claim respecting Licensee’s use of the Product Technology or the Licensed Marks. Further, Licensor hereby agrees to indemnify, STRUCTURING LICENSING PROGRAMS AND AGREEMENTS 379 defend, hold harmless, Licensee and its directors and officers from and against any and all claims or actions, suits, proceedings, damages, liabilities, costs and expenses (including, without limitation, reasonable attorneys’ fees) arising out of (a) any patent, trademark or copyright infringement by Licensor, (b) Licensor’s unfair competition, misappropriation of confidential information, technology, know-how or trade secrets, and resulting from Licensor’s use of the Product Technology or Licensed Marks, or (c) otherwise arising by reason of Licensee’s legitimate use of the foregoing in compliance with this Agreement. 10. TERMINATION OF AGREEMENT. (a) Duration. Unless sooner terminated as otherwise herein provided, the term of this Agreement shall commence upon the date hereof and shall expire on the [ ( )] anniversary of that date (the ‘‘Initial Term’’). Licensee shall have the right and option to renew this Agreement for term ( )] anniversary of commencing on the day following the Initial Term and expiring on the [ the day following the Initial Term by giving Licensor notice of the exercise of such option at least ten (10) days prior to the end of the Initial Term. The Initial Term, along with such renewal term, if any, shall be referred to herein as the ‘‘Term.’’ (b) Termination by Licensor. In addition to any other right of Licensor contained herein to terminate this Agreement, Licensor shall have the right to terminate this Agreement by written notice to Licensee upon the occurrence of any one or more of the following events: (i) failure of Licensee to make any payment required pursuant by this Agreement when due; or (ii) intentional, persistent and material failure of Licensee to comply in any material respect with the quality control standards required pursuant to Section 6. (c) Termination by Licensee. (i) In addition to any other right of Licensee contained herein to terminate this Agreement, Licensee shall have the right to terminate this Agreement by written notice to Licensor upon the occurrence of any one or more of the following events: (A) the insolvency of Licensor; (B) the institution of any proceeding by Licensor, voluntarily or involuntarily, under any bankruptcy, insolvency or moratorium law; (C) any assignment by Licensor of substantially all of his assets for the benefit of creditors; (D) placement of Licensor’s assets in the hands of a trustee or receiver unless the receivership or trust is dissolved within thirty (30) days thereafter; or (E) any breach by Licensor of any representation, warranty or covenant contained in this Agreement that, if curable, is not cured by Licensor within thirty (30) days after its receipt of written notice thereof from Licensee. If such breach is not cured within such thirty (30) days period, or is not curable, then termination shall be deemed effective on the date of such notice. (ii) If at any time following the first ( ) months of the Term, Licensee determines in good faith that its continued use of Licensor’s Product Technology in the manufacture, marketing and sale of Home Products is commercially impracticable by reason of (A) a continued failure (after Licensee has exerted its best efforts to overcome such failure) in the performance of Home Products, or (B) Licensee’s inability, after exerting its best efforts, to produce Home Products at its designated manufacturing facility, Licensee may, at its option, terminate this Agreement without further obligation to Licensor (other than payment for accrued royalties, if any) upon thirty (30) days prior written notice to Licensor. (continues) 380 A LT E R N A T I V E S T O F R A N C H I S I N G Figure 19-6. (Continued). (d) Exercise. Licensor or Licensee, as the case may be, may exercise the right of termination granted hereunder by giving the other party ten (10) days prior written notice of that party’s election to terminate and the reason(s) for such termination. After the expiration of such period, this Agreement shall automatically terminate unless the other party has previously cured the breach or condition permitting termination, in which case this Agreement shall not terminate. Such notice and termination shall not prejudice either party’s rights to any sums due hereunder and shall not prejudice any cause of action or claim of such party accrued or to accrue on account of any breach or default by the other party. (e) Failure to Enforce. The failure of either party at any time, or for any period of time, to enforce any of the provisions of this Agreement shall not be construed as a waiver of such provision or of the right of such party thereafter to enforce each and every such provision. (f) Effect of Termination. Subject to the terms of Section 8 hereof, in the event this Agreement is terminated for any reason whatsoever: (i) Licensee shall return any plans, drawings, papers, notes, writings and other documents, samples and models pertaining to the Product Technology, retaining no copies, and shall refrain from using or publishing any portion of the Product Technology; and (ii) Licensor shall return any plans, drawings, papers, notes, writings and other documents, samples and models, retaining no copies, pertaining to New Technology. Upon termination of this Agreement, Licensee shall cease manufacturing, processing, producing, using, selling or distributing Home Products and shall retain no right of any kind to use anywhere in the world the Product Technology or the Licensed Marks; provided, however, that Licensee may continue to sell in the ordinary course of business for a period of one-hundred eighty (180) days after the date of termination reasonable quantities of Home Products which are fully manufactured and in Licensee’s normal inventory at the date of termination and Licensee may fulfill all outstanding purchase orders received by Licensee through the date of termination (irrespective of the one-hundred eighty (180) day period) if all monetary obligations of Licensee to Licensor have been satisfied. 11. INDEPENDENT CONTRACTOR. Licensee’s relationship to Licensor hereunder shall be that of a licensee and licensor only. Licensee shall not be the agent of Licensor and shall have no authority to act for or on behalf of Licensor in any matter. Persons retained by Licensee as employees or agents shall not by reason thereof be deemed to be employees or agents of Licensor. 12. COMPLIANCE. Licensee agrees that it will comply in all material respects with all material laws and regulations relating to its manufacture, marketing, selling or distributing of Home Products and its use of Product Technology and the Licensed Marks. Licensor agrees that he will comply in all respects with all federal, state and local laws and regulations relating to the manufacture and distribution of Products and his use of Product Technology and the Licensed Marks. Licensor will not at any time take any action which would cause Licensee or Licensor to be in violation of any such applicable laws and regulations. Licensor represents and warrants that the Products comply and shall continue to comply with the requirements necessary for acceptance and listing by Underwriters Laboratories Inc. and the Canadian Standards Association. 13. DEFINITIONS. The following terms, whenever used in this Agreement, shall have the respective meanings set forth below. (a) Accessories means accessory products related to the Home Products including, without limitation, bags, canisters, trays, valves and containers. (b) Products means food vacuum sealers and related accessories currently manufactured, marketed and sold by Licensor which are marketed primarily to gourmet food preparers. (c) Home Products means food vacuum sealers or any product to which any application of Product Technology may be made by Licensee, which sealers or products may each be sold for Dollars or less at retail, and the Accessories. STRUCTURING LICENSING PROGRAMS AND AGREEMENTS (d) Licensed Patents means U.S. Patent Nos. lated to the Products, if any, owned by Licensor. 381 and , and patent applications re- (e) Licensed Marks means the [unregistered] trademark and such related mark or other marks used by Licensor in marketing the Products, [a portion/all] of which are shown on Exhibit A, attached hereto and incorporated herein by reference. (f) Product Technology means, subject to Section 8(a) hereof, the Licensed Patents and certain valuable technical information, know-how and data of Licensor relating to the Products. 14. GENERAL AND MISCELLANEOUS. (a) Governing Law. This Agreement and all amendments, modifications, alterations, or supplements hereto, and the rights of the parties hereunder, shall be construed under and governed by the laws of the State of New York and the United States of America. (b) Interpretation. The parties are equally responsible for the preparation of this Agreement and in any judicial proceeding the terms hereof shall not be more strictly construed against one party than the other. (c) Place of Execution. This Agreement and any subsequent modifications or amendments hereto shall be deemed to have been executed in the State of New York. (d) Notices. Any notice herein required or permitted to be given, or waiver of any provision hereof, shall be effective only if given or made in writing. Notices shall be deemed to have been given on the date of delivery if delivered by hand, or upon the expiration of five (5) days after deposit in the United States mail, registered or certified, postage prepaid, and addressed to the respective parties at the addresses specified in the preamble of this Agreement. Any party hereto may change the address to which notices to such party are to be sent by giving notice to the other party at the address and in the manner provided above. Any notice herein required or permitted to be given may be given, in addition to the manner set forth above, by telecopier, telex, TWX or cable, provided that the party giving such notice obtains acknowledgment by telecopier, telex, TWX or cable that such notice has been received by the party to be notified. Notice made in this manner shall be deemed to have been given when such acknowledgment has been transmitted. (e) Assignments. Licensor shall not grant, transfer, convey, sublicense, or otherwise assign any of his rights or delegate any of his obligations under this Agreement without the prior written consent of Licensor. Licensee shall have the right to freely grant, transfer, convey, sublicense, or otherwise assign any of its rights or delegate any of its obligations under this Agreement. (f) Entire Agreement. This Agreement constitutes the entire agreement between Licensor and Licensee with respect to the subject matter hereof and shall not be modified, amended or terminated except as herein provided or except by another agreement in writing executed by the parties hereto. (g) Headings. The Section headings are for convenience only and are not a part of this Agreement. (h) Severability. All rights and restrictions contained herein may be exercised and shall be applicable and binding only to the extent that they do not violate any applicable laws and are intended to be limited to the extent necessary so that they will not render this Agreement illegal, invalid or unenforceable. If any provision or portion of any provision of this Agreement not essential to the commercial purpose of this Agreement shall be held to be illegal, invalid or unenforceable by a court of competent jurisdiction, it is the intention of the parties that the remaining provisions or portions thereof shall constitute their agreement with respect to the subject matter hereof, and all such remaining provisions or portions thereof shall remain in full force and effect. (continues) A LT E R N A T I V E S T O F R A N C H I S I N G 382 Figure 19-6. (Continued). (i) Survival of Representations and Warranties. The parties hereto agree that all representations and warranties of Licensor contained herein shall survive the expiration or termination of this Agreement, and shall continue to be binding on the parties without limitation. (j) Attorneys’ Fees, etc. In the event either party brings any action, suit or proceeding against the other party to enforce any right or entitlement which it may have under this Agreement, either party shall, to the extent it is successful in pursuing or defending the action, and in addition to all other rights or remedies available to it in law or in equity, be entitled to recover its reasonable attorneys’ fees and court costs incurred in such action. IN WITNESS WHEREOF, the parties hereto have executed this License and Distribution Agreement as of the day and year set forth above. Witness: ‘‘Licensor’’ ‘‘Licensee’’ Exhibit A Licensed Marks C H A P T E R 2 0 Joint Ventures and Strategic Alliances Another key intellectual property leveraging strategy is the establishment of partnering relationships whereby two or more companies work together to achieve a specific purpose or toward the attainment of common business objectives. Joint ventures, strategic partnering, cross-licensing, co-branding, and technology transfer agreements are all strategies designed to obtain one or more of the following: (1) direct capital infusion in exchange for equity and/or intellectual property or distribution rights; (2) a ‘‘capital substitute’’ where the resources that would otherwise be obtained with the capital are obtained through joint venturing; or (3) a shift of the burden and cost of development (through licensing) in exchange for a potentially more limited upside. These various types of partnering arrangements have been used for a wide variety of business purposes and to meet intellectual capital leveraging objectives, including: joint research and co-promotion; distribution and commercialization (particularly between defense and government contractors looking for new applications and markets for products initially developed for the military and governmental sectors); and cross-licensing and sublicensing of new technologies. The participants to these agreements could be at various points in the value chain or distribution channel—from agreements by and among direct or potential competitors (e.g., cooperate rather than compete as a precursor to a merger and/or to join forces to fend off an even larger competitor) to agreements by and among parallel producers (e.g., to widen or integrate product lines) to parties linked at different points in the vertical distribution channel (e.g., to achieve distribution efficiencies). One of the key factors to analyze when structuring these relationships is the respective positions of each party that will influence structure, economies, and key objectives. These include: Goliath/Goliath David/Goliath David/David Value Webs/Federations In Goliath/Goliath partnering transactions, two very large companies are getting together to co-market or cross-promote each other’s brands either to cap383 384 A LT E R N A T I V E S T O F R A N C H I S I N G ture more customers or to achieve certain efficiencies. An easy-to-understand example would be two major airlines serving different primary geographic routes honoring each other’s frequent flyer programs or McDonald’s promoting a new Disney film by offering licensed toys when a consumer buys a kid’s meal. In David/David partnering relationships, two smaller companies, both with limited resources, are coming together to leverage off each other’s strengths on a peer-to-peer basis in order to achieve a defined business purpose or set of objectives. An example might be two small government contractors with complementary skills entering into a teaming agreement in order to jointly bid on a new request for proposal (RFP) that neither could qualify for on a standalone basis. Many of the principles discussed in this chapter should be carefully reviewed to make sure each gets the benefit of their bargain. The key to peer-to-peer partnering relationships is the avoidance of greed. To work well, both party’s objectives must be met and the sharing of the rewards must be parallel with the level of effort and sharing of the risks. In David/Goliath partnering relationships, a smaller company is partnering with a much larger strategic ally, which may be a large domestic corporation, a foreign conglomerate, or even a university or government agency looking to commercialize a given technology. In these transactions, David and its counsel must work hard to negotiate and protect the benefits and objectives of the relationship, since it will be subject to the red tape, bureaucracy, and potential shifts in strategic focus that are typical at many Goliaths. In Value Webs/Federations, there are multiple participants to the joint venture, strategic alliance, cooperative, or consortium, each maintaining its operational and ownership autonomy but coming together to share resources, distribution channels, or costs in some way to increase revenues or reduce expenses. The alignment of shared interests may be very broad or may be more limited—such as cooperative advertising or a shared Web site or toll-free phone number to generate new business. In emerging technology industries, value webs may be created by five or six companies that are each bringing a technical component or solution to the table to meet a customer’s (or series of customers) real or perceived needs. With technology developing rapidly, competition becoming more intense, business operations becoming more global in nature, and industry convergence taking place on a number of different fronts, the number and the pace of deal making in the joint venture and strategic alliances areas are very likely to quicken and increase over the next few years. The need to combine and share core competencies and resource capabilities but in a manner and within a structure where autonomy can be preserved must be a key component in any fast-growing company’s business strategy. Understanding the Differences between Joint Ventures and Strategic Alliances Joint ventures are typically structured as a partnership or as a newly formed and co-owned corporation (or limited liability company) where two or more J O I N T V E N T U R E S A N D S T R AT E G I C A L L I A N C E S 385 parties are brought together to achieve a series of strategic and financial objectives on a short-term or a long-term basis. Companies considering a joint venture as a growth strategy should give careful thought to the type of partner they are looking for and what resources each party will be contributing to the newly formed entity. Like the raising of a child, each parent will be making his or her respective contribution of skills, abilities, and resources. Strategic alliances refer to any number of collaborative working relationships where no formal joint venture entity is formed but where two independent companies become interdependent by entering into a formal or informal agreement that is built on a platform of: (1) mutual objectives; (2) mutual strategy; (3) mutual risk; and (4) mutual reward. The relationships are commonly referred to as: (1) teaming; (2) strategic partnering; (3) alliances; (4) cross-licensing; and (5) co-branding. (For the differences between joint ventures and strategic alliances, see Figure 20-1.) Regardless of the specific structure, the underlying industry, or even the actual purpose of the strategic relationship, all successful joint venture and strategic alliance relationships share a common set of essential success factors. These critical success factors include: ❒ A complementary unified force or purpose that bonds the two or more companies together ❒ A management team committed at levels to the success of the venture, free from politics or personal agendas ❒ A genuine strategy synergy where the ‘‘sum of the whole truly exceeds its individual parts’’ (e.g., 2227) ❒ A cooperative culture and spirit among the strategic partners that lends to trust, resource-sharing, and a friendly chemistry among the parties ❒ A degree of flexibility in the objectives of the joint venture to allow for changes in the marketplace and an evolution of technology Figure 20-1. Joint Ventures Strategic Alliances Term Usually medium- to long-term Short-term Strategic Objective Often serves as a precursor to a merger More flexible and noncommittal Legal Agreements and Structure Actual legal entity formed Contractual-driven Extent of Commitment Shared equity Shared objectives Capital Resources Each party makes a capital contribution of cash or intangible assets No specific capital contributions (may be shared budgeting on even cross-investment) Tax Ramifications Be on the lookout for double taxation unless pass-through entities utilized No direct tax ramifications A LT E R N A T I V E S T O F R A N C H I S I N G 386 ❒ An actual alignment of management styles and operational methods at least to the extent that it affects the underlying project (as in the case of a strategic alliance) or the management of the new company created (as in the case of a formal joint venture); and ❒ The general levels of focus and leadership from all key parties that are necessary to the success of any new venture or business enterprise. The strategic benefits of these relationships include: 1. 2. 3. 4. 5. 6. 7. 8. Develop a new market (domestic/international). Develop a new product (research and development). Develop/share technology. Combine complementary technology. Pool resources to develop a production/distribution facility. Acquire capital. Execute a government contract. Access to a new distribution channel or network or sales/marketing capability. Due Diligence Before Selecting Joint Venture or Strategic Alliance Partners Care should be taken to truly conduct a thorough review of prospective candidates and extensive due diligence should be done on the final candidates that are being considered. Develop a list of key objectives and goals to be achieved by the joint venture or licensing relationship and compare this list with those of your final candidates. Take the time to understand the strategic fit (or potential tension) to the corporate culture and decision-making process within each company. Consider some of the following issues: (1) How does this fit with your own processes? (2) What about each prospective partner’s previous experiences and track record with other joint venture relationships? (3) Why did these previous relationships succeed or fail? In many cases, smaller companies looking for joint venture partners wind up selecting a much larger Goliath that offers a wide range of financial and nonfinancial resources that will allow the smaller company to achieve its growth plans. The motivating factor under these circumstances for the larger company is to get access and distribution rights to new technologies, products, and services. In turn, the larger company offers access to pools of capital, research and development, personnel, distribution channels, and general contacts that the small company desperately needs. But proceed carefully. Be sensitive to the politics, red tape, and different management practices that may be in place at a larger company that will be foreign to many smaller firms. Try to distinguish between that which is being promised and that which will actually be delivered. If the primary motivating force for the small firm is really only capital, then consider whether alternative (and perhaps less costly) sources of money have been thoroughly J O I N T V E N T U R E S A N D S T R AT E G I C A L L I A N C E S 387 explored. Ideally, the larger joint venture partner will offer a lot more than just money. If the primary motivating force is access to technical personnel, then consider whether it might be a better decision to purchase these resources separately rather than entering into a partnership in which you give up a certain measure of control. Also, consider whether strategic relationships or extended payments terms with vendors and consultants can be arranged in lieu of the joint venture. Drafting a Memorandum of Understanding Prior to Structuring the Agreements Prior to drafting the definitive joint venture or alliance agreements, it is very beneficial to hammer out a memorandum of understanding to reflect a business handshake on all critical points of the relationship and for the lawyers to use a starting point in the preparation of the formal agreements. The memorandum of understanding should address the following topics: ❒ Spirit and Purpose of the Agreement. Outline why the partnering arrangement is being considered and what is its perceived mission and objectives. Describe ‘‘operating principles’’ that will foster communication and trust. What are the strategic and financial desires of the participants? ❒ Scope of Activity. Address what products, services, buildings, or other specific projects will be included and excluded from the venture. Identify target markets (i.e., regions, user groups, etc.) for the venture and any markets excluded from the venture that will remain the domain of the partners. If the venture has purchase and supply provisions, state that the newly formed entity or arrangement will purchase or supply specific products, services, or resources from or to the owners. ❒ Key Objectives and Responsibilities. Clarify and specify objectives and targets to be achieved by the relationship, when to expect achieving these objectives, any major obstacles anticipated, and the point at which the alliance will be self-supporting, be brought out, or be terminated. Participants should designate a project manager who will be responsible for their company’s day-to-day involvement in the alliance. If a separate detached organization will be created, the key persons assigned to the venture should be designated if practical. Responsibilities should be outlined to make it clear to other partners who will be doing what. ❒ Method for Decision Making. Each partnering relationship will have its own unique decision-making process. Describe who is expected to have the authority to make what types of decisions in what circumstances, who reports to whom, etc. If one company will have operating control, they should be designated at this point. ❒ Resource Commitments. Most partnering relationships involve the commitment of specific financial resources, such as cash, equity, staged payments, loan guarantees, etc., to achievement of the ultimate goals. Other ‘‘soft’’ resources may be in the form of licenses, knowledge, R&D, a sales force, contracts, production, facilities, inventory, raw materials, engineer-