Heather Tunstall

The ubiquitous nature of technology allows businesses to acquire and share information nearly instantly across multiple platforms. And while this can be a great thing for networking, marketing and gathering information, it can be potentially devastating for a business if the technology is used inappropriately by an employee, says Todd Roberts, a partner at Ropers Majeski Kohn & Bentley PC.

Smart Business spoke with Roberts about the risks of electronic media and steps you can take to mitigate them.

Can an employer use social media to screen candidates during the interview process?

As time has gone on and as the labor market has become tighter, employers have been more aggressive in their efforts to screen prospective employees. One way they are doing that is to ask for not only the username of the applicant’s Facebook page but also for the password so that they can see what’s been posted and get to know that applicant in an unfiltered way.

Before employees were more sophisticated about the security settings of Facebook, it was not uncommon for the information that they had posted to be able to be viewed publicly, and for those who were hiring to access those web pages. Apart from the legal issues that are implicated, many prospective employees are completely put-off by what is perceived to be coercive and intrusive conduct.

There’s a clash between the privacy rights of prospective applicants who are looking for a job and business owners who are looking to hire them. There is legislation that is now pending both in California and at the federal level that would restrict, if not prohibit, employers from asking for Facebook account information that includes passwords.

Until the legislation is enacted, however, employers are free to ask for an applicant’s Facebook password, and if the prospective employee doesn’t want to give it, he or she can’t be forced to do so. However, declining may disqualify them for employment under the circumstances. There is definitely a move afoot to prevent that type of perceived invasion of privacy.

Is a business owner able to censor social media use by employees?

There is example after example of employees who have been terminated for acts of disparagement against the employer or other misconduct posted on their Facebook page. There is some movement at the federal level through the National Labor Relations Board, which has stepped in on behalf of workers who are members of a union. Those workers have contended that disciplining an employee for complaints about the employer on a Facebook or other social media page is unlawful conduct in violation of the National Labor Relations Act, because it’s protected concerted activity. These are laws enacted in the 1930s that the NLRB is trying to apply in the digital age.

How can business owners protect their company from improper use of social media by employees?

There are ways that employers can protect themselves to a certain degree, and the first is to adopt and implement both an electronic privacy policy and a social media policy as part of their employee handbook. The electronic privacy policy is fairly typical these days and basically states that any activity that employees engage in on their work computer is without any right of privacy. The policy inhibits the employee from frequenting certain websites, such as those that are inappropriate and unrelated to the employee’s job duties.

Some employers prohibit the use of Facebook at work and restrict access to other websites that are not reasonably related to the business. More recently, employers have been forced to adopt social media policies that restrict employees from making statements about the company, that appear to be on behalf of the company, or engaging in any use of social media that would cast the employer in a potentially negative light. There is no ‘First Amendment’ issue because private employers have the power to restrict the speech of their employees in the workplace.

The first step is to draft an electronic privacy and social policy, but the key really is in the implementation and the followup. You can have a 100-page manual consisting of all these regulations, but if an employer isn’t doing anything to enforce the policy, it becomes less likely that a court is going to enforce it, either.

The next step after the adoption and implementation of these policies is to widely disseminate it to employees by way of training sessions. Each person should also be asked to sign  off that they have read the policy, understand it and agree to comply with it. Where most employer’s trip up is in the enforcement phase. If an employer becomes aware of misuse or violations that are occurring but turns a blind eye, it becomes more difficult to justify discipline over time.

How can employers address email, cell phone usage and other forms of electronic media?

There’s some overlap, not only with social media, but also with the use of new technologies — email and text messaging are most prevalent — where employers and small business owners can get into trouble or be exposed to liability.

There are also multiple cases in which someone is using their cell phone for work-related activities even if it’s on their day off or otherwise on their personal time. In this instance, the employer could be sued for an accident in which the employee is involved, because the actions involved circumstances arguably benefitting the company at the time of the accident.

Having an electronic and social media policy in place outlining the responsibility of the employee in regard to use of these programs and devices, and then policing and enforcing the policy, is vital to protect the company from unwanted lawsuits or damages.

Todd Roberts is a partner with Ropers Majeski Kohn & Bentley PC. Reach him at (650) 780-1601 or TRoberts@rmkb.com.

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Wrongful termination claims are far and away the number one lawsuit against employers. Even if you feel that you are justified in firing an employee, you may find yourself on trial.

“In California, it often seems like it’s open season on employers,” says Andy Wolfe, partner at Ropers Majeski Kohn & Bentley PC. “It’s not only the most frequent source of litigation, but it’s also the kind of litigation that causes the greatest potential exposure to liability.”

So how can you protect yourself when you are warranted in terminating an employee?

Wolfe explained to Smart Business how to ensure a smooth separation when a worker is released from employment.

What types of claims can be made against an employer for wrongful termination?

Basically, there are two kinds of claims. The first and the most common is a claim that firing a worker violates an established public policy. Good examples are discrimination claims and claims of retaliation – where an employee is claiming he or she was fired for exercising an employment right. In addition to violation of public policy claims, employees can also assert that they were fired in violation of a contract or agreement that they had with their employer.

How can employers best protect themselves from these types of lawsuits?

There are a number of things that can be done to reduce the risk of a costly lawsuit. The first is to be very clear about the rationale for the termination. Was this termination a layoff? Was this person terminated for unsatisfactory performance or misconduct? Once you have clearly thought through the rationale for the termination, the next question is whether or not the employee’s personnel record supports that rationale. Are there clear performance standards? Have there been performance evaluations that are timely and consistent with the rationale?  Have similar employees been treated in a similar way?  Another thing to consider is the length of service: the longer the employee has been working for your company, the more you will have a duty of loyalty to the employee in the eyes of a jury. And the longer an employee has been around, the stronger the rationale must be for terminating that employee.

After that, you should do a very careful risk assessment. In litigation, the truth is not enough. In a court room, the real question is, ‘What can the decision to fire this employee be made to look like in the eyes of a jury?’ Look for warning signs from the employee. Has the employee recently requested to take leave, or made reference to health issues? Has he or she made work-related complaints? Is this a team player or a person who is always looking out for number one? As a general rule of thumb, you should be aware that the higher the level of compensation the employee has, the greater the risk that the employee will bring suit if fired.

It is always a good idea to get a second opinion on the decision to fire an employee, particularly if the decision-maker is the employee’s immediate supervisor. If you decide to fire the employee, it’s smart to have a well-planned termination meeting attended by two or more employer representatives, who present a clear and succinct statement of the reason for the termination, and follow a checklist that includes final pay, written notice of the change of employee’s status, information about unemployment insurance benefits, and a plan for the return of company property.

What should an employer do if the risk of a lawsuit is too high?

In the great majority of cases, the best course of action is to enter into a separation agreement with the employee rather than just firing that employee. It might take a little more time and cost a little more to reach such an agreement, but what the employer gets in return is finality.  The reason is that in exchange for whatever you offer to the employee, you get back a comprehensive release of claims. Then you can sleep at night knowing that once the agreement is reached, this separation is not going to come back and haunt you later.

What are some forms of compensation an employer can offer in a separation agreement?

One of the good things about doing a separation agreement is that a number of things you can offer are not monetary, such as a letter of reference or putting the employee on unpaid leave status.  Sometimes, at little or no cost to you, there can be negotiations allowing the employee to keep company property, such as laptops, cell phones, or even automobiles. Sometimes offering the employee post-employment work as an independent contractor is in your best interest. An agreement not to contest unemployment insurance may also be helpful. And, of course, there are also opportunities to negotiate regarding continued benefits and severance.

Separation agreements are usually a genuine win-win. You avoid the risk of being socked with a wrongful termination lawsuit, and the employee gets to leave with dignity and the opportunity to focus on the future in a constructive way. Not only is it good business economically for an employer to do this, but it’s also an opportunity to the employer to deal with a difficult situation in a way that is much more comfortable and dignified.  Most employers hate to fire people. But negotiating a separation agreement, they find, gives them an opportunity to implement a termination in a cooperative and considerate manner, one that works better for everyone.

Andy Wolfe is a partner with Ropers Majeski Kohn & Bentley PC. Contact him at (415) 972-6352 or awolfe@rmkb.com.

Insights Legal Affairs is brought to you by Ropers Majeski Kohn & Bentley PC

When a company decides to expand or enhance its core activities, sometimes a strategic decision is made to acquire another organization that offers the team, the technology or the assets needed to achieve its goals. From a buying company’s perspective, there are three main focal points of an acquisition process in order for the purchase to be successful: strategy, integration and acceleration.

“The strategy needs to be determined early and shared widely and quickly,” explains Francois Laugier, partner and director at Ropers Majeski Kohn & Bentley PC. “Integration is almost equally as important as strategy; because  integration is really about capturing the long-term benefits of an acquisition.”

Speed in execution is also of the utmost importance. “You get the chance to effect change in an organization that you’ve acquired during the first 100 days of the acquisition. There is a tempo to an acquisition, and it is incumbent on the buyer to make sure that it keeps beating the drum and moving people along quickly.”

Smart Business spoke with Laugier to determine a road map for successfully acquiring a business to enhance core activities and products.

What can a company do to prepare for the acquisition process?

The buying company needs to know precisely why it desires to purchase another organization, and that strategy needs to be communicated throughout the core management team that will be involved in the process. Early on, lawyers, investment bankers and consultants need to be involved, because most of the aspects of the acquisition are negotiated in the initial stages.

Nearly 60 percent of the failed acquisitions are failed integrations, not failed negotiations. A team specifically dedicated to integration should be assembled the minute discussions start with a prospective party. This team must ensure that the new assets and employees of the target corporation are quickly and efficiently integrated into operations.

What steps are involved in an acquisition?

At the outset, a buyer must decide whether it will be purchasing assets or stock. If the company being acquired has significant liabilities or unknown liabilities, buying the assets of the company provides flexibility. However, when buying assets, there are a number of transfers that need to take place for the target company to be functional inside of the acquiring company, such as intellectual property rights or foreign employee visas. The alternative choice is to purchase the stock of the company. A big advantage of a stock purchase is the predictability of the process, because domestically or abroad, the acquisition of the stock of a company is often similar. The drawback is that a business may be unintentionally taking on liabilities.

Next, a letter of intent is drafted, where an outline of the terms of an acquisition is determined. Although legally not binding, once there is a handshake on a letter of intent, it is very difficult to later change its terms. For this reason, it is imperative to involve advisers early to draft terms. The due diligence period comes after the letter of intent. The target company completes a legal due diligence checklist and provides the buyer the documents and information requested, thereby reducing the odds that major issues will go unnoticed. The disclosures cover four major areas:: corporate structure,  intellectual property, human resources and tax.

Negotiations of the definitive agreements take place next. The secret to success for negotiations is to move quickly and to keep exchanging redlines of the documents without a lag. The acquisition team needs to work closely together so that all of the fact-finding that took place in the due diligence process gets integrated into the agreements, minimizing risks and maximizing the long-term benefits of the acquisition.

Once a deal is closed, how can a company successfully integrate the target company’s assets?

Integration is really about assimilating the intellectual property and the assets, but, most importantly, the employees of the target corporation. Integration is the true key to success. The first place to start is to roll out the red carpet for the employees of the target, give them an employment agreement, give them equity in the new corporation if you can and honor the benefits that they had in the target company, basically providing them with incentive to do well. An individual should be designated in the buyer’s team to lead the integration and successfully capture the benefits of the acquisition. As soon as the deal closes, the buyer should explain all the synergy and benefits to everyone, including customers, suppliers, the new employees (most essentially) and existing employees. It’s important to understand the culture of the company being acquired and combine it successfully with the culture of the buying company.

The most complex factor is often integrating the information technology systems. Obviously, the legal compliance and the accounting processes need to be integrated as well. The lines of products and services must be considered so that there is no overlap or redundancy. The message that is communicated to the world — all of the marketing, sales, human resources, etc. — need to be integrated after the closing of the deal.

Achieving long-term success is a result of learning about and blending the two companies as successfully as possible. Next is managing an organization that has grown in head count, in lines of products, assets and people, and that may come as a big change. After that, it is time to embrace new resources and reach a new level of success.

Francois Laugier is a partner and director with Ropers Majeski Kohn & Bentley PC. Reach him at francois@rmkb.com or (650) 780-1691.

Employers and employees alike commonly assume that if an employee is paid an agreed-upon annual salary rather than an hourly wage, that employee is exempt from the strict wage hour laws here in California. For example, employers believe salaried employees are not entitled to overtime pay and meal and break periods. However, that’s not necessarily the case.

“Specific to the white-collar universe, there are exemptions — there’s an executive exemption, an administrative exemption, a computer analyst exemption, a professional exemption — and that means if you meet a salary requirement and you meet duties requirements governed by the statute, then you are classified as exempt and therefore are not entitled to overtime,” says Elise R. Vasquez, partner at Ropers Majeski Kohn & Bentley PC. “What we’ve started to see is an up-rise in white-collar exempt misclassification claims.”

Under the Obama administration, funds have been funneled to labor board investigators meant to probe wage-hour claims to determine whether or not employers are in violation of the wage hour requirement and employees are misclassified as exempt. In the past, many such claims came primarily from blue-collar jobs, such as the restaurant industry. We are seeing more claims from employees for unpaid overtime that they were entitled to, because they were misclassified as exempt based on the job description and duties performed.

Smart Business spoke with Vasquez to find out more about misclassification lawsuits, and what an employer can do in the event a claim is made.

What establishes an employee as exempt or non-exempt?

The list of qualifiers is comprehensive and very specific for each exemption.  Basically, there is a salary requirement and a duties requirement that need to be met for an employee to be exempt. Unfortunately, employers have been relying on the assumption that if they hire a computer analyst, for example, and they pay them the requisite salary, they must be exempt. In reality, that may not be the case. Specific day-to-day duties that they perform may not fall under an exemption. As such, while an employer may meet the salary requirement for a computer analyst, because he or she performs non-exempt duties more than 50 percent of the time, the person is entitled to overtime pay and meal and break periods.

How can employers ensure they are classifying their employees correctly?

The job title and salary requirement are not enough, and each exemption has different requirements. Employers should enlist the counsel of their labor and employment lawyer to perform an audit to make sure each employee falls under the correct exemption.

Their labor and employment lawyer can perform the audit by taking a look at the job description the employer claims is an exempt position, interview the employees in that position, and  determine if in fact they perform exempt duties more than 50 percent of the time.

Prior to hiring an employee, employers should be clear about the job duties and what the employee will be doing. When interviewing a candidate, focus specifically on those duties. After hiring, it becomes an upper management issue, where each employee will have a reporting manager who will be responsible for checking with HR and ensuring employees are performing the correct duties for that position more than 50 percent of the time. Educating upper management and HR as to exempt duties will allow for these checks to be in place.

What should an employer do in the event that a claim is filed?

If a company does not have a labor and employment lawyer in place, it should look to hire one with a level of expertise in misclassification lawsuits, both with class actions and individual cases. The lawyer will get the job descriptions of all employees and/or former employees involved in the claim, talk to the reporting managers to see whether or not they did the exempt duties more than 50 percent of the time, look at payroll records and do a risk benefit analysis. This analysis will determine the company’s potential exposure. If in fact there is potential exposure, the exposure can be calculated with reasonable certainty.

If there is liability, most companies will want to avoid trial and resolve any matter early. Hence the importance of hiring a lawyer who understands each and every one of the exemptions as well as which exemptions the employee(s) fall into.

What if the employer loses the case?

In addition to the employer owing an employee or a class of employees any unpaid wages, the employer is exposed to penalties. For every employee who is no longer working for the company, there will be penalties for not paying them what they are owed. There are also other penalties under various statutes an employer could be subject to for various payroll violations. In addition, all employees who prevail on wage-hour claims are entitled to attorneys’ fees and costs.

Because exposure can usually be calculated with reasonable certainty, a lot of these cases do not go to trial, unless the case for the employer is particularly strong. If the employer is correct and can prove the employee(s) filed a meritless claim, the employer can seek fees from the employee(s). The reality, however, is it is highly unlikely an employee will have the means to pay for the employer’s attorneys’ fees.

Elise R. Vasquez is a partner with Ropers Majeski Kohn & Bentley PC. Contact her at (650) 780-1631 or evasquez@rmkb.com.

For many companies, intellectual property (IP) – ranging from  names and logos to products, websites and beyond – can be their most valuable asset. IP is protectable under federal and state laws to ensure that it will not be copied or used by other people or organizations.

IP can be separated into four main areas: copyrights, trademarks, patents and trade secrets. It is important for a company to not only identify what IP assets they have, but also to protect them, says Robert Andris, a partner at Ropers Majeski Kohn & Bentley PC.

Smart Business spoke to Andris about performing an IP audit to ensure protection from infringement.

Why is it important for a company to clearly identify and safeguard its IP?

Each one of the forms of IP is a valuable asset in and of itself. The use of illicit IP not only deprives the true owner of a sale, if the fake goods are of lower quality than the original, it can ruin or at least tarnish the image of the IP’s true owner.  In some situations, when a business allows an individual or company to infringe on or use its IP for an extended period of time without contesting that use, the first owner can lose its rights to that IP.

In order to maximize the value of IP, businesses should take the steps to register trademarks or obtain patents from the U.S. Patent and Trademark Office. Similarly, the value of any copyrighted material can be maximized by registering it with the U.S. Copyright Office. Trade secrets are not registerable, and are generally governed more by state laws.

If  a business or individual starts copying a business’s software, artwork, photographs or blueprints, the business who rightfully owns the IP can’t recover certain forms of damages unless and until it files a copyright registration. To protect a company’s IP to the greatest extent possible, proceeding forward with the registration process is critical.  It increases the value to the company and discourages others from infringing. To further protect IP, many companies implement a protocol of performing an IP audit on a regular basis, usually every year or every two years depending on the business.

What is an IP audit, and what steps are involved?

Audits are designed to identify and determine the status of as much of a company’s IP as possible. What this generally entails is company representatives in various areas of the business sitting down with an IP attorney to identify what advertising has gone on in the past few years, what names and logos the company has been using and what products the company has been putting out on the market over a given period of time. Further, the process involves discussing whether or not there has been any attempt to obtain IP protection for names or products used, and what products in the works contain parts that are protectable IP.

For example, if a business has a base software program that it is selling but customizes for various customers, all the variations of the software should be copyrighted separately. Once an initial audit is performed to identify all the various company assets that are protectable under the IP laws, then subsequent audits become simply a matter of updating what has already been done and finding out whether the company has moved into any additional areas.

What if a business waits too long between audits?

If a business waits until after the infringement takes place in order to register its IP, it will oftentimes significantly lessen the exposure of potential harm that could befall the infringer. If a business or individual causes extensive damage for years before the rightful owner of the IP in question registers a copyright, then that owner will not be able to recover what are known as statutory damages that can range in the area of hundreds of thousands of dollars until the date that the registration is actually issued by the copyright office. An infringer still could face some exposure for actual damages if their causation can be proven with reasonable certainty, but significant power is lost in a cease-and-desist letter that a company might send to a potential infringer. If the trademark registration, copyright registration, or the patent is in existence, it will cause a potential infringer to pause and consider whether it wants to continue that business practice or discontinue it immediately until the dispute is resolved.

How can a company educate its employees about IP?

Most employment agreements have a provision in them that provides that all intellectual property generated by an employee is the property of the company. Some companies will not only set up protocols for employees, but also put in place incentives for individuals to come forward with patentable inventions.  A best practice for companies is to try to gain trademark rights for a product or service before going ahead and placing a name or logo on it. Savvy companies will want to perform an IP audit to investigate whether or not anyone else has registered a name or whether anyone else is using a name that is desired.

Robert Andris is a partner with Ropers Majeski Kohn & Bentley PC. Contact him at randris@rmkb.com or (650)780-1634.

No business owner starts each day thinking that his or her company will be sued. Preparing to avoid a lawsuit isn’t on most owners’ to-do lists, but it’s a risk that should garner their attention — a reality of running a business is that it’s always a potential target.

“The statistics say that about 70 percent of all businesses in the United States find themselves engaged in litigation every 10 years,” says Richard L. Charnley, a partner at Ropers Majeski Kohn & Bentley PC.

Smart Business asked Charnley for tips on what to do if a company is sued and how a company can be prepared by taking appropriate preventive measures.

What are common reasons that a business may be sued?

Commonly, businesses make the mistake of not having well-drafted employee handbooks or a set of company guidelines regarding Internet usage. Problems occur when companies use items off the Internet without getting permission. Companies become involved as defendants of litigation for using someone else’s artwork or logo and violating the intellectual property rights that belong to third parties. It’s very difficult for companies to manage the issue because their employees, looking to come up with a new design or competitive edge, regularly use the Internet for inspiration. Management relies on the employee’s ‘new concept,’ runs with it and somewhat innocently broadcasts it to the public. Then, suddenly, the owner of the original art files suit against the company for violating a trademark or infringing upon a copyright. Well-drafted handbooks and guidelines addressing Internet use can help businesses to avoid this.

What steps can a company take to avoid lawsuits, or make litigation easier should it occur?

Sometimes when a claim arises, there is a tendency to make light of it or to not deal with it straight away. Many lawsuits could probably be avoided if someone simply called the offended party, admitted to making a mistake, apologized and offered to discontinue the offending practice. It makes a difference to have someone in the chain of command in the company — for example, the president — make the call. People may file lawsuits because they think of companies as just being big nameless entities. Picking up the phone and calling someone who has a claim or a pending claim could eliminate the problem. Don’t lawyer up right away and try to keep it on a personal level, but scripting the message with input from counsel is advised as long as the message is not too ‘legalistic.’

When preparing for an anticipated lawsuit, business owners need to be aware that the current ‘big issue’ is electronic discovery. In any modern company, there are internal e-mails, people going on the Internet and a lot of outside e-mails coming through. There is a disturbing tendency for e-mail, especially inside a company, to be casual and inappropriate. But, regardless of content or source, almost all e-traffic is saved somewhere and its public release can be damaging and embarrassing. When a business is looking at a claim, a memo should go out to everyone that could possibly be included in the e-mail or e-traffic chain simply reminding them that everything that ends up in the e-mail rotation can eventually be discoverable. Businesses should make sure that all of their electronic data and electronic information is properly secured and not destroyed. A company can face serious financial sanctions for deleting electronically stored information.

What should a company do if it is being sued?

Lock down the house — Take charge of all the electronic data, the e-mail, the voicemail, anything that can be stored on a computer. Make an assumption that it’s going to end up being discovered and reviewed by an opponent. And, once again, advise everyone that all e-mail and computer generated documents can be obtained by the ‘other side.’

Tender the claim — One thing to keep in mind is tendering the lawsuit to the business’s insurance company. Insurance policies oftentimes cover a variety of risks that executives may not understand or may not recognize. Risk managers understand what is in an insurance policy and what is covered, but not all companies employ risk management professionals. Insurance is an old business.  There are all sorts of insurance companies and all sorts of policies, and insurance language is often difficult to interpret. As a result, on first impression, some people assume they are not covered for a particular claim. It’s important to tender to every conceivable policy in order to potentially save hundreds of thousands of dollars in attorneys’ fees.

Horses for courses — Really consider the choice of lawyers and conflicts of interest. There is a tendency for a defendant business owner to pick up the phone and call a trusted business lawyer and send the case to the ‘go-to firm.’ But, instead of immediately sending the case to the business lawyer, a better approach is to meet with that lawyer to explain the particulars of the case. A good business lawyer will know when it is important to bring in a litigator, and he or she should be able to provide a referral to the right lawyer for the case. An important consideration here is the impact of ‘hometown advantage’ — the benefit of retaining local counsel that speak the language of the people and judges in the area.

Benefits of quick disposition — Early mediation is an option that is too often overlooked. Some lawyers don’t like the risks of early mediation. For example, in the first 30 days after you’ve been sued, a defendant really may not know much about the other person’s case. The concern here is that mediating or settling too soon may result in the defendant giving away too much money. Oftentimes, however, attorneys’ fees and an untold amount of time can add up to more than what either side would have spent with early mediation. There are ways to set up an early mediation to try to get a case settled and still protect the business’s interests. The reality is that every case will eventually be sent to mediation before moving to trial. For business owners and management, why not explore settlement early, take a shot at resolving the dispute and get back to running a successful company free from the burdens of litigation?

Richard Charnley is a partner at Ropers Majeski Kohn & Bentley PC. Reach him at (213) 312-2000 or rcharnley@rmkb.com.

Establishing a foreign subsidiary may have lucrative business advantages, but if you’ve decided to pursue this strategy, it’s important to stay informed, plan ahead and follow proper compliance with both U.S. and international requirements. Failing to do so can result in undesired consequences and potential IRS penalties.

To ensure proper compliance domestically and abroad, engage a solid group of advisers in the initial planning stages, says Sonia Agee, partner at Ropers Majeski Kohn & Bentley PC.

“It is critical to have the right team in place,” says Agee. “Generally speaking, that team consists of a U.S. legal counsel, accountancy professionals on both sides of the operations who understand the coordination of the various tax and reporting requirements between the U.S. and foreign jurisdictions, and a foreign counsel who also has the same knowledge and understanding.”

Smart Business spoke with Agee about the steps to take when expanding overseas, and how to maintain compliance with both domestic and foreign regulations.

What initial talking points should business owners discuss with their counsel when they’ve made the decision to expand overseas?

When a business client first comes to us and expresses interest in looking at overseas opportunities, first and foremost we need to get a clear understanding of the goals and strategies for pursuing foreign operations. We assess the specifics of what the company plans to accomplish by expanding overseas, and how it may be different from or impact what they’re doing here in the U.S.

Once the company makes the determination to expand internationally, it is critical to ensure that the new business venture is properly structured overseas. The necessary steps will vary widely depending on the jurisdiction in which the company is looking to operate. In addition to U.S. counsel, it is important to have good counsel overseas who has worked with cross-border issues, because there is often a delicate balancing act to making it work overseas, as well as from a U.S. perspective. Not all forms of entity will work for all ventures, so making sure that the foreign venture is properly structured minimizes liability to the company.

What potential legal landmines exist with foreign subsidiaries?

Once the setup with regard to the actual structure is determined, you must look at the detailed aspects of the company’s operations. The company must coordinate a number of things, including the work force: will it be necessary to hire a foreign work force, or will the company be bringing key individuals from the U.S. or from other parts of the world into that new jurisdiction? In either case, there are both immigration and employment law issues to coordinate in the U.S. as well as from the foreign perspective. For example, if the company plans to replace a local work force by moving overseas, it is imperative to hire employment counsel because, depending on the size of the work force, there may be a number of formal requirements to avoid liabilities.

Additionally, many jurisdictions have varying laws surrounding intellectual property. Some jurisdictions simply don’t provide the same protection that we have in the U.S. in terms of intellectual property rights, so it is important to identify those issues and determine the best way to deal with them.

Finally, the company must be sure that appropriate reporting and compliance is in place. There is a myth that if you earn the money overseas and don’t bring it back to the U.S., you don’t have to report it. The general rule under U.S. tax law is that worldwide income is reportable and taxable in the U.S. If a company is formed as a subsidiary of a U.S. entity, the U.S. entity has a reporting requirement. Conversely, if a company goes overseas and is formed as a ‘sister company’ to the U.S. company (the ownership of the foreign entity mirrors the ownership of the U.S. company) there are still reporting requirements. Not only must the appropriate forms disclosing the existence of the foreign entity be filed each year, but, in addition, all income from the foreign entity likely needs to be reported here in the U.S., either through the U.S. entity or through the shareholders.

If a company has a foreign bank account for the foreign business, and a U.S. person has signature authority over the account, the U.S. person is required to file a reporting form disclosing the existence of that account as well as their authority over it. There is a significant penalty an individual can incur for failure to report; it can be up to a $10,000-per-year penalty for not reporting a foreign account, so it’s very important if you are looking to go overseas that those reporting requirements are dealt with each year. If they’re not, every year can carry its own penalty and fine.

What other issues should you consider to get the most benefit from a foreign subsidiary?

Another question to ask is ‘Can the entity here in the United States have a subsidiary overseas?’ In most instances, the answer is yes, but a U.S. company does not want to inadvertently forfeit U.S. tax benefits by having an entity formed overseas that may not work with the U.S. requirements — for example, S corporations may only have qualified S subsidiaries. A foreign entity may not comply with the requirements and the S status benefits would be lost.

Again, working with foreign counsel to ensure the form of the foreign entity chosen does not present any problems for the intended purposes is extremely important, as there may be other limitations overseas. For example, a company may not be able to have a direct foreign subsidiary due to specific limitations on ownership imposed by the foreign jurisdiction. Each jurisdiction has its own requirements that need to be understood in the context of the proposed foreign operations before making any decisions.

Sonia Agee is a partner with Ropers Majeski Kohn & Bentley PC. Reach her at (408) 947-4889 or sagee@rmkb.com.

On March 25, 2011, the Equal Employment Opportunity Commission’s (EEOC) regulations to implement provisions of the American with Disabilities Act Amendment Act (ADAAA) of 2008 went into effect. The overarching federal law didn’t present many changes to the pre-existing California state law, but it did clarify several ambiguous aspects to the ADA, and defined appropriate steps for an employer to take to accommodate disabled employees.

Smart Business spoke with Lisa Aguiar, partner at Ropers Majeski Kohn & Bentley PC, about how businesses can properly adjust to comply with the new regulations.

What does the Amendment Act mean for employers?

The Amendment Act confirmed in its definition of ‘disability’ that there are certain conditions that will always be considered a disability no matter what — conditions such as deafness, autism, cancer, cerebral palsy, bipolar disorder, post-traumatic-stress disorder, to name a few. Also, unlike the federal law which requires accommodations be made when a disability substantially limits a major life activity, in California accommodations must be made in a disability that limits a major life activity, thereby expanding the number of employees potentially eligible for accommodations for their disabilities.

The regulations expanded and clarified the definition of major life activity.  For example, if a disability affects sleeping, thinking, interacting with others, or it affects major bodily functions or bodily systems such as the immune system or cell growth, it will be considered a major life activity.

There had been some uncertainty as to how long someone must be afflicted with a condition in order for it to qualify as a disability under the ADA. The amendment clarified that a ‘short-term’ disability could be a disability requiring accommodation. Employers are now faced with potentially having to accommodate virtually any condition that lasts more than a couple of months.

How can a business ensure it is properly accommodating disabled employees?

Having a policy in place is critical. The law in this area is still developing and it is important that the policy be reviewed by an attorney who has experience in this area, who knows the changes and developments in the law. In addition, that policy should be reviewed on a fairly regular basis — every year or so.

Accommodations are required if an employer knows or should have known that an employee was disabled. Supervisors and managers interacting with employees on a daily basis are in the best position to determine firsthand whether an employee has a potential disability, so ensure that supervisors are trained on the policy and know what to look for, what to do if they suspect that there is a potential disability, whom to talk to, and what the company’s steps are in determining whether an accommodation is necessary.

What else should an employer be aware of when determining accommodations?

If an employee brings you a doctor’s note, it’s important to understand the limits on what information an employer is entitled to receive. In California, there are heightened privacy standards that may not exist in other states. For example, employers are not entitled to know the exact nature of an employee’s condition or diagnosis. Unless you have objective evidence that the doctor’s note is not accurate, it is generally best to accept the note on face value. However, it is acceptable and oftentimes necessary to contact the employee’s doctor in order to determine whether an employee can perform certain job functions or whether certain accommodations would assist the employee in performing the essential function of his or her job.

Be sure to engage in the interactive process, which is simply a dialogue between the employer and the employee. The employer has the right to determine what accommodation the company is able to provide, but it’s important to understand that if one accommodation doesn’t work, you must look into another accommodation. This interactive process can continue throughout the course of the disability, particularly if someone has a chronic condition. An accommodation on day one of the diagnosis could be very different six months later, and an employer has a continuing obligation to engage in that interactive process.

Dealing with certain types of accommodation may be very difficult and very frustrating for an employer, but the law requires the company to do so unless it can show that accommodating the disability will cause an undue hardship for the company. The standard for undue hardship is high and rarely can a company succeed in its argument that the accommodation causes an undue hardship.

What should an employer do if accused of violating the ADA?

Employers should always document their attempts at engaging in the interactive process. Documentation can be fairly simple, something along the lines of ‘I met with employee on this date, he handed me a note that says he requires this accommodation, we discussed these various forms of accommodation, and we decided to do X.’ Any documentation related to disability or accommodation issues never goes in the personnel file; it always goes in a separate medical file.

Employees who sue their employers tend to feel like they haven’t been heard or treated fairly. Take any complaints seriously, have a meeting, listen to the employee’s concerns, and see if there is any way that you can right the perceived wrong. It is when you ignore the complaints, or when you discipline or terminate an employee that complains without adequate, well-documented grounds, that you could have a problem. As long as you’re working in good faith to try to resolve an employee’s concerns, then you’ve got a fairly solid defense should an employee decide to make a complaint at a state agency or file a lawsuit.

Lisa Aguiar is a partner with Ropers Majeski Kohn & Bentley PC. Reach her at (408) 918-4555 or laguiar@rmkb.com.

Launching a new product or implementing a new marketable idea can be an exciting time. You’ve invested time, labor and money into a promising project, and you’re looking forward to the profitable outcome. But imagine if just days after you launch the product, you receive notification from a company claiming that you have infringed on their intellectual property rights. What happened? And perhaps more immediately important, what will happen next?

Whether it’s for copyrights, trademarks, patents or trade secrets, if a company claims you have violated its legal rights, it is vital that you respond appropriately.

Smart Business learned more from Allan Anderson, a managing partner at Ropers Majeski Kohn & Bentley PC, about what to do if you infringe on another company’s IP.

What should you do if you’ve been accused of IP infringement?

The first notice that you’re going to get is usually in the form of a cease-and-desist letter, and what you don’t want to do is ignore that letter. You want to contact the person that wrote the letter to find out the facts surrounding the accusation.

If they send you a notification with a registered copyright or trademark attached to it and it appears that you might be infringing upon it, then you need to strongly consider what measures you can take to stop the offending activity. When you get a cease-and-desist letter, contact an attorney who specializes in IP to evaluate whether or not the mark that is being claimed to be violated is in fact a valid mark. You want to find out if the company has the registration, if it’s been filed, if it’s current, what the company is saying you’re infringing upon, if you have a legitimate right to sell this product, etc.

Ultimately, you need to decide under the circumstances if this is something you need to fight, or if it’s something you need to comply with. If it is legitimate infringement and you have no defense, then you should cooperate with the noticing party, discontinue any advertisement of the product, account for your sales and come to an agreement with the company.

The best way to deal with these situations is to immediately become involved and address the concerns of the person who is threatening to sue you. By completely ignoring it, it is not a situation that is going to get better with time.

What potential ramifications could you incur by infringing on IP?

On trademark in general, if it’s found to be a willful violation, you could see penalties up to $2 million. If it’s found to be an exceptional situation, the company might be able to get attorney’s fees from you. Otherwise, there are variations between $1,000 and $100,000 fines for infringements. Willful copyright infringement can cost you $150,000 per infringement, but the midrange is about $750 to $30,000. Patent infringement is also a statutory situation, so you can incur fees as well as penalties. So, in evaluating these issues, you have to really make sure that the person that’s telling you to cease and desist has valid IP rights to protect. After a cease-and-desist letter, they could possibly file a lawsuit and seek an injunctive relief — a court order preventing you from selling the product — which could basically shut down your business.

What are your options if you’re found to be in violation of IP rights?

If you’ve got a significant amount of inventory and they want you to return it or otherwise destroy it, sometimes you may just be stuck with it. But if you can cooperate early on, there are circumstances where perhaps the owner of the mark may be willing to grant you a limited license where they would allow a controlled sell-off, permitting you to sell the inventory that you have, but pay the mark-holder a certain amount of your profits to reimburse them for their IP rights.

You’ve got to look very carefully at the basis for the cease-and-desist letter, and the more immediately you respond to it, it gives you more options to try to resolve it or come up with a ‘business solution.’

How can you avoid infringing upon IP rights in the first place?

Evaluate the background of all aspects of your product by checking for a potential violation. Research it heavily beforehand. There’s the option to get something trademarked before putting it on the market by going through the Patent Trademark Office (PTO). There, you may find out there’s a history of that mark already and you can’t get it. But there are services available where you can research the history and see if there’s a prior use or an existing mark that you might violate.

Sometimes it makes more sense to spend a little money in the beginning to avoid spending a lot of money later. They’re usually not that expensive and that’s a good source that you should refer to before going through the expense of launching a big product line that you might ultimately have to shut down simply because somebody didn’t take the time to investigate whether it might be infringing upon someone else’s rights.

Allan Anderson is a managing partner with Ropers Majeski Kohn & Bentley PC. Contact him at aanderson@rmkb.com or (213) 312-2048.

For many employers, having to deal with employee use of social media is a relatively new phenomenon, and it can be difficult to know where to draw the line. Facebook, LinkedIn, Google+ and other social sites are invaluable resources when it comes to marketing and interacting with customers, but these and other social networking sites can lead to uncomfortable situations if utilized inappropriately by employees, such as when used as a platform for sharing trade secrets or conveying negative thoughts about the company.

How can you protect your company without getting into legal hot water?

Smart Business spoke with Curtis Smolar, a partner at Ropers Majeski Kohn & Bentley PC, to find out how to navigate the unfamiliar terrain of social media policy.

Why should business owners be concerned with social media use in the workplace?

For the first time, not only do companies have direct access to customers, but individual employees are also put in direct contact with their customers. The widespread use of smart phones, all of which are equipped with social networking capabilities, is literally placing the outside world in the palms of the employees’ hands. In that regard, there are a number of different issues: marketing, privacy and company trade secrets.

How can a business owner protect the company?

Companies dealing directly with external customers should have policies regarding social media regulation. Companies in the banking, pharmaceutical and legal industries are highly regulated and should have policies detailing acceptable social media usage for employees, as well as regulations stating what can be said directly to the public. Policies should be industry-specific, yet broad enough to cover any current or future device or form of communication.

Internally, any e-mail policies should specifically discuss the use of cloud-based e-mail providers like Google and Hotmail, making mention of social media communications and informing employees that such communication may be monitored by the company. In regard to workplace device use, companies are going to have to look at what is private and what is corporate. This can be achieved by making certain websites password-protected and differentiating between sites that are hosted by secured servers and those that aren’t, with protected sites signifying employee use that is personal and separate from the business.

What legal issues should employers be aware of when putting guidelines in place?

If you’re planning to monitor your employees, do so with caution. Although workplace surveillance is legally acceptable to some extent, the more invasive the surveillance becomes, the more likely it is to be considered in discordance with privacy laws. Companies should have policy explicitly describing employees’ diminished expectations of privacy. Policies should state that any personal communication on social networking sites conducted at work is not private, that computers and any other devices are to be used solely for company business, that communications are monitored to ensure compliance, and that these policies apply not only to internal communications, but also to external cloud-based communications.

As a caveat, though, be warned that social media policies cannot uniformly discourage employees’ rights to concerted activity. The National Labor Relations Board (NLRB) actively enforces employees’ rights to discuss working conditions. People today use social media to organize, which can be associated with the right to unionize and the right to congregate, neither of which may be legally denied.

Restriction of offensive or rude conduct or discourteous behavior, disparaging remarks about the company or inappropriate discussions of the company’s management is also prohibited. However, this is true outside the workplace. If you do want your employees to be using social media networking to communicate with customers and advertise your products, qualify the distinction by stating that you can’t partake in personal social networking activity at the office during work hours.

What can a business owner do if an employee is abusing company guidelines?

Companies should have internal policies dictating the corporate response under these circumstances. Policies must be enforced uniformly. Otherwise, companies run the risk of claims of disparate treatment, inviting potential lawsuits. Abuse of company policy should be documented in detail, highlighting the incident and the official response. Make sure that you are following your company’s guidelines to avoid the perception that you are firing employees arbitrarily.

Curtis E. Smolar is a partner with Ropers Majeski Kohn & Bentley PC. Reach him at (415) 972-6308 or CSmolar@rmkb.com.

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