Our Chicago intellectual property attorneys provided advice for the negotiation of arrangements to develop and commercialize a groundbreaking earbud project. Our client, an industrial design boutique, partnered with a product innovation laboratory to plan the project after identifying improvements in this ubiquitous consumer device. Our client was responsible for several stages of design and testing while the other party provided the seed money. They also demonstrated market interest and procured contingent orders through Kickstarter, the crowdfunding website. We helped to make sure the definitive agreement between the parties was comprehensive and appropriate, including with respect to clear milestone, performance, royalty, patent right, audit and other essential development and licensing terms.
The founder and principal of this new business is an experienced costume and wardrobe professional for a well-known Chicago theater group. With Chicago’s thriving performing arts community, she recognized that there are many smaller groups and peers who do not have the scale to have the dedicated sewing equipment, work tables, fitting rooms, racks, materials stores and other resources to do their work as productively and smoothly as they would like. We provided counseling during the planning of a membership-based workspace business and then provided representation for the name selection, trademark issue analysis, entity formation and lease negotiation. The new studio recently opened its doors on the north side of Chicago.
We regularly counsel executives and employees in connection with their significant career moves, which often involve tricky decisions to make because of employment-based agreements. For example, our recent consultation situations have included the following:
- A very senior executive had recently started a new job heading a practice group for a nationally known healthcare consulting firm when he received a more lucrative offer for a better position at a competing consulting firm.
- A sales representative was terminated by a national distributor of a specialty pharmaceutical product. She was subject to a covenant not to solicit her former customers. Almost immediately, she received an offer to conduct direct sales for the maker of that product.
- An experienced project manager for an architecture and design firm specializing in pharmaceutical manufacturing facilities wanted to join a small, start-up firm in a similar field whose first contract would be with one of the same customers as at his current employer.
- A physician completing her residency had signed an employment agreement to join a suburban practice, but had not yet started, when she received a better offer from a practice that was a better long-term fit.
We helped guide each of these, and other, clients to a smooth resolution of the potential confidentiality, non-compete, non-solicit and related contract issues they faced.
Our Chicago real estate attorneys recently assisted several different types of businesses with their commercial lease needs. For instance, we advised a Far North music instrument retailer regarding issues arising when a new owner acquired the building and commenced a rehabilitation program that, among other things, limited access to restrooms and other common areas and generated noise and dust with the potential to disrupt the business. In addition, a variety of matters needed clarification or more specific treatment when the lease came up for renewal. Similarly, we provided counseling to a jewelry retailer with respect to the extension of its long-term lease in a large Northwest Chicago shopping mall and negotiation of additional options to renew. Finally, the firm negotiated a sub-lease upon behalf of a River North medical practice that was allowing an acupuncture practitioner and a therapist to use extra spaces within its office. We regularly handle retail, office, warehouse and industrial lease matters for Chicago and suburban clients.
Our Chicago technology attorneys recently assisted a local entrepreneur who conceived a fun and entertaining game application for smartphones in efforts to more fully commercialize it. Our client located a prospective business partner in New York City experienced in developing and marketing apps for well-known corporate, sports and entertainment figures. We represented the client in negotiating joint development and ownership terms, pursuant to which enhanced versions of the game app will be prepared for iPhone and iPad devices based on Apple’s operating system, as well as for Android phones and tablet computers. First, the parties entered into a mobile applications development and services agreement and statement of work. The business partner will redesign the app, add a variety of features and deliver promotional assistance, all at substantially reduced rates. Second, in return for the contribution of discounted services, the business partner will receive substantial equity in the LLC (limited liability company) formed by our client to operate this app business. This arrangement allowed our client to leverage available resources and improve the prospects for further success with a smaller investment. The new versions of the game should be released later in 2014. As would be expected, key legal issues for our Chicago corporate lawyers included intellectual property rights of each party, LLC management and control mechanisms and rights of first refusals with respect to any proposed sale of an equity interest.
In late 2013, Ingersoll Rand, a global, diversified industrial enterprise, completed the spin-off of Allegion, which was launched to house security technology products having approximately $2 billion in annual revenues. To accomplish this, a new corporate and information technology infrastructure was needed for the new entity to be based in the Indianapolis area. Jeremy Gibson was engaged by one of Ingersoll Rand’s outside firms to help with the process of establishing the IT systems and mechanisms needed for the new, stand-alone organization. In that capacity, Mr. Gibson provided advisory and negotiation services for all manner of information technology agreements, including for cloud-based application and data services, SLAs (service level agreements), software licenses and consulting, implementation, customization and staffing agreements. In addition to spin-off specific considerations, such as contract transfer and duplication issues, the important items included data privacy, infringement, indemnification, limitation of liability, assignment and change in control provisions. Our Chicago contract attorneys have frequently provided support resources to corporate law and company contract management departments.
Our Chicago M&A (mergers & acquisitions) attorneys recently represented the new majority owners of a specialty baking company. A family owned business in suburban Chicago had developed an excellent reputation for its scones, which it sold directly, including online, as well as through distribution to groceries and restaurants. Although the family enjoyed working to grow this business, after the death of the founder, it did not have the resources needed to modernize and scale up the operations. Our clients, successful executives and entrepreneurs, saw an opportunity to enhance an established brand. Accordingly, we provided representation for our clients to acquire the assets and invest in improvements, while preserving a minority stake for the selling family and allowing several family members to retain their jobs. Thus, we negotiated the asset purchase agreement and related guarantees, bills of sales, assignments, installment notes, covenants not to compete and employment terms, as well as a shareholder agreement. In addition, we arranged for the filing and recordation of a trademark assignment for the established brand name with the U.S. Patent & Trademark Office.
Our Chicago business lawyers assisted a client recently who diversified his food industry interests through the acquisition of the assets of a suburban Chicago donut shop. Our client already was in the business of operating a successful store of a national dessert and gift franchise. He then wanted to purchase an independent donut shop in a large shopping center at a high-traffic intersection to provide opportunities for family members. In addition to serving walk-in customers, the business had a substantial clientele for regular deliveries at hotels, schools, hospitals and other institutional customers. On behalf of the purchaser, we revised the letter of intent, conducted due diligence, prepared the asset purchase agreement and bill of sale and suggested modifications to the lengthy, new lease agreement.