doing business in the us


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20 year of experience shorted in a slideshow by french lawyer based in NYC

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doing business in the us

  1. 1. The Essentials of Expanding Your Business in the United States The Structural and Legal ‘Need-to-Knows’ for French and European Entrepreneurs and Companies Philippe C.M. Manteau© 2012 Schiff Hardin LLP. All rights reserved.
  2. 2. The Background● Businessperson wants to expand into the United States and ensure that activities there are appropriately structured in a manner most beneficial for his or her company and shareholders● Entry into the United States—3 typical ways: – Direct sales into the United States – Establishing a subsidiary in the United States – Acquisitions in the United States2 © 2012 Schiff Hardin LLP. All rights reserved.
  3. 3. Direct sales into the United StatesGenerally, direct sales are the first step toapproach the U.S. market.3 © 2012 Schiff Hardin LLP. All rights reserved.
  4. 4. Consideration #1: distinguishingbetween distributors and agentsDistributor – think “buy-sell”: ● Distributor obtains title to products from principal ● Principal invoices distributor for products ● Distributor sets resale prices for products and is subject to risks and rewards associated with resale (e.g., loss/gain of profit, risks of delivery)Agent: ● Agent never obtains title to products ● Agent invoices principal for services rendered ● No “resale price maintenance” problem But in both cases – set up objectives (easier to terminate)4 © 2012 Schiff Hardin LLP. All rights reserved.
  5. 5. Consideration #2: protectingintellectual property (IP)● Common law rights to trademarks exist● Additional layer of protection by registering IP at the United States Patent and Trademark Office● Many companies overlook the concept of patenting their software● Check your IP before you expand into the United States5 © 2012 Schiff Hardin LLP. All rights reserved.
  6. 6. From the Oregonian, July 9, 2009:“Chinese startup based in Eugene wants to sellinexpensive solar panels in U.S.A Chinese startup vying for a piece of the U.S. solarmarket has landed in Eugene, hoping to become anational player in the state’s growing photovoltaicindustry. . . Centron Solar, whose Web site wentlive Thursday morning, is moving fast to sell anddistribute bargain-priced solar panels made inChina to the U.S. market, expected to be theworld’s next big solar player. . .”6 © 2012 Schiff Hardin LLP. All rights reserved.
  7. 7. From the Portland BusinessJournal, October 8, 2009:“Centron Solar changes name to Grape SolarCentron Solar once said it wants to be the Wal-Mart of solarenergy. That may still be true. But now the company istrying to sound a little more like Apple Computers. . . Despitethe fruit-themed logic, combined with the notion that grapesgrow with the help of solar energy, the real cause of thename change is rooted in a lawsuit filed Sept. 28 in the U.S.District Court in Arizona. CentroSolar Group AG, a $440million German solar products manufacturer, filed thetrademark infringement lawsuit claiming Centron Solar wasintentionally trying to confuse customers.”7 © 2012 Schiff Hardin LLP. All rights reserved.
  8. 8. Consideration #3: key provisionsin commercial contracts● Keep it U.S. law governed – EU protections not helpful if there is a litigation in the United States● Think first of an “exit strategy” – one-year contracts automatically renewable unless terminated by either party, with or without reason, upon 60- or 90-day notice are common● Craft IP sections carefully to ensure that IP is not “assigned”● Watch out for warranty, liability and indemnification provisions – Warranty: software, products or services should be sold “as is” but for the very limited warranty set forth in the contract (contracts should carve-out implied warranty of merchantability or warranty of fitness for a particular purpose) – Liability: contract should exclude consequential or incidental damages, and limit liability to only reimbursement of money received under the contract – Indemnification by product supplier, software publisher or service provider: contract should restrict indemnification to a limited IP infringement, while control over litigation should be retained8 © 2012 Schiff Hardin LLP. All rights reserved.
  9. 9. Consideration #4: having a“representative office” may beproblematic● Beware that an agent or branch, in the United States, of a foreign principal may subject such principal to U.S. tax on its revenues generated in the United States● In reality, not frequently done but in some cases you can have a limited agency agreement to perform ministerial tasks for the parent● When there is such a need, consider establishing a subsidiary9 © 2012 Schiff Hardin LLP. All rights reserved.
  10. 10. Establishing a subsidiary in theUnited StatesAfter initiating direct sales into the United States…consider setting-up a foothold there10 © 2012 Schiff Hardin LLP. All rights reserved.
  11. 11. Consideration #5: do you reallyneed an LLC?● What is an LLC? Google will tell you● What Google will not tell you: one generally should not form an LLC when the majority shareholder (a “member”) is a French corporation – French parent subject to U.S. income tax – Branch profit dividend tax: tax on “deemed distributed” dividends – Law not as developed - liability issues?● LLC’s are more commonly used “downstream” in order to bring in U.S. partners11 © 2012 Schiff Hardin LLP. All rights reserved.
  12. 12. Consideration #6: try acorporation first ● Easy to form ● Easy to maintain ● Capitalization easy to manage – Remember to keep debt-to-equity ratio at a maximum of 1.5:1 – Augmentation of capital by way of “accrued paid in capital” – Disconnect between number of shares and amount of capital ● If a shareholder is not a 100% owner, consider the need for a shareholders agreement ● If a shareholder is a minority shareholder, remember to receive “tag-along” rights12 © 2012 Schiff Hardin LLP. All rights reserved.
  13. 13. Consideration #7: labor andemployment law● The concept of “at-will”● The concept of discrimination● If you have an executive, you will want an employment contract to avoid disputes over: – compensation issues – termination issues – non-competition issues● Beware of 401(k) and other benefit issues upon any merger or acquisition in the United States13 © 2012 Schiff Hardin LLP. All rights reserved.
  14. 14. Consideration #8: U.S. Stock asincentives? ● Usually part of an “equity incentive plan” to encourage employees to work to maximize a company’s profits and share in the future of a company ● Companies with U.S. stock option plans must comply with federal tax and securities rules ● Establishing a French stock option plan in the United States renders the incentive package more complicated to manage due to the requisite French vs. U.S. law analysis, but it avoids the inclusion of minority shareholders in a company’s subsidiary ● A U.S. stock option plan with a U.S. subsidiary is feasible, and potential workarounds exist, such as providing phantom rights (or profit-only interest in an LLC formed as an indirect subsidiary) ● Beware of valuation issues and consider shareholders agreements14 © 2012 Schiff Hardin LLP. All rights reserved.
  15. 15. Consideration #9: immigration● “Do it yourself” is not usually sufficient● Strongly advise hiring an immigration lawyer● Understand the differences among visas: L1 (intracompany transferee), H1B (professional worker) and E2 (foreign investor)● Discuss future plans with an attorney to avoid pitfalls (e.g., E2 is easy to obtain but conversion to a green card is difficult)15 © 2012 Schiff Hardin LLP. All rights reserved.
  16. 16. Consideration #10: managing IPA software publisher/distributor may want to place the IPvalue at the U.S. subsidiary level: ● In a software distribution system, the reseller is a “distributor” of products or services but the publisher maintains a license agreement directly with the end-user ● Granting IP rights to the U.S. subsidiary that acts as a re-publisher will create value in the United States ● Avoids litigation in France/Europe ● U.S. subsidiary would be exempt from withholding tax on royalties paid by the U.S. subsidiary to its French parent if the parent provides proper forms from inception ● Transfer pricing issues are always present when a related U.S. company and foreign company transact business16 © 2012 Schiff Hardin LLP. All rights reserved.
  17. 17. Acquisitions in the United StatesManaging your external growth in the United States…Or using acquisitions as a first step to penetrate theU.S. market (if you do so, think of creating a U.S.subsidiary as an SPV for the U.S. acquisition)17 © 2012 Schiff Hardin LLP. All rights reserved.
  18. 18. Consideration #11: M&A –asset vs. stock acquisitions● Stock Acquisition (or joint venture) – will you acquire all or a control portion of the equity of target? – Watch for “change of control” issues – If buying at premium you do not get to reduce taxes● Asset Acquisition: – Select the specific assets and liabilities to purchase or not purchase – “Cherry-pick” employees (no statutory obligation to transfer employees)● Asset and Stock Acquisitions: – “Representations and Warranties” of seller are key – Escrow accounts are frequently used – Negotiate any earn-out payments – Do not forget non-compete/non-solicit provisions● Tax Trick: The 338(h)(10) election under federal and many state laws to treat the stock deal as an asset deal - Step-up your tax basis and amortize your goodwill over 15 years 1818 © 2012 Schiff Hardin LLP. All rights reserved.
  19. 19. About Schiff Hardin LLPSchiff Hardin LLP was founded in 1864. Since then we haveexpanded with offices in Chicago and Lake Forest, Illinois; New York,New York; Washington, D.C.; Atlanta, Georgia; San Francisco,California; Boston, Massachusetts; Ann Arbor, Michigan; andCharlotte, North Carolina. As a general practice firm with local,regional, national, and international clients, Schiff Hardin hassignificant experience in most areas of the law.19 © 2012 Schiff Hardin LLP. All rights reserved.
  20. 20. About Our New York OfficeIn 1991, Schiff Hardin established an office in New York in responseto a clients request and needs. Since that time, we have developedsignificant capabilities in complex general litigation, reinsurance,intellectual property, corporate and securities, real estatetransactions and finance, estate planning and administration, laborand employment, international transactions, restructuring andbankruptcy, and an increasing array of other key legal services. OurNew York office also serves as a focal point for our representation ofoverseas clients.20 © 2012 Schiff Hardin LLP. All rights reserved.
  21. 21. Philippe C.M. Manteau Partner – Avocat aux Barreaux de New York et de Paris Philippe Manteau’s practice focuses on growth and mid-cap companies, governmental organizations, and individuals in the United States and abroad in the areas of corporate and business law, as well as technology transactions. The core of his practice consists of assisting French and other international private companies in their U.S. investments cross-border transactions and litigation.U.S. Direct: (212) 745-0856 Mr. Manteau’s training and international experience allow him to identify, analyze, and resolve issues arising in cross-borderU.S. Cell: (646) 251-9204 transactions for European and U.S. clients.PRACTICE AREAS Mr. Manteau is fluent in English, French and German.Corporate and SecuritiesInternational ● Fordham University School of Law (LL.M., CorporateIntellectual Property Law and Finance, cum laude, 2006)Litigation ● Université Paris X - Nanterre (D.E.S.S., European Business Law, with honors, 1996)BAR ADMISSIONS ● Université Paris X - Nanterre (J.D., French, GermanNew York and European Business Law, 1995)Paris, France ● Institut dÉtudes Politiques de Paris (M.B.A., Economics and Finance Section, 1993)21 © 2012 Schiff Hardin LLP. All rights reserved.
  22. 22. This publication has been prepared for general information of clientsand friends of the firm. It is not intended to provide legal advice withrespect to any specific matter. Under rules applicable to theprofessional conduct of attorneys in various jurisdictions, it may beconsidered advertising material.Tax Matters: The advice contained in this memorandum is notintended or written to be used, and cannot be used by a taxpayer,for the purpose of avoiding penalties that may be imposed on thetaxpayer under law. © 2012 Schiff Hardin LLP. All rights reserved.