What we do
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corporate & Business matters
We provide a broad range of services relating to corporate and business matters, including corporate and other entity formation, joint venture and strategic partnership transactions, stock incentive plans, executive and other employment agreements, and commercial and business agreements. The Firm acts to assess clients’ business needs and develop innovative legal strategies to help them achieve their goals, directly undertaking those matters for which the Firm has substantial expertise, and identifying and managing the most appropriate legal resources to handle specialty areas outside of the Firm’s core disciplines.
Public securities Practice
The Firm’s Public Securities Practice covers a wide-range of matters for existing public companies and underwriters, as well as private companies contemplating “going public.”
public Securities compliance
Clients look to us for advice on a wide-range of matters, including:
- General compliance with federal and state securities laws.
- Initial and continued listings on securities exchanges.
- Preparation and review of filings made with the SEC and other regulatory agencies (e.g., annual and quarterly reports, current reports on Form 8-K, proxy statements, insider filings).
- Preparation and review of press releases, investor presentations, and other public disclosures.
- Transactions, such as initial and secondary public offerings, private investments in public equity (PIPEs), mergers and acquisitions, and going private transactions.
- SEC reviews of registration statements, periodic reports, proxy statements, and other public filings.
Corporate governance counseling
The Firm’s Public Securities attorneys regularly advise clients on the responsibilities of corporations, management, boards of directors and special committees of boards of directors under federal and state securities laws, stock exchange regulations and general corporate laws. Our attorneys are experienced in all aspects of governance counseling, including board and board committee composition, process and independence. The Firm understands the challenges facing corporate executives and directors of smaller companies, as they try to comply with new laws and regulations that are uniformly imposed on companies of all sizes. Our Public Securities attorneys work collaboratively with accounting firms, compensation specialists, general counsel, senior management, boards of directors, board committees, and other corporate constituencies to advise on regulatory and business practice matters, including how our smaller companies can effectively deploy their more limited resources to navigate corporate America’s rapidly changing “one-size-fits-all” regulatory environment. Our Public Securities attorneys provide the following Corporate Governance services:
- Advising clients on corporate governance and disclosure requirements of the Securities and Exchange Commission (SEC) and the relevant stock exchanges.
- Monitoring the rule-making activities and actions of the SEC, the Financial Accounting Standards Board (FASB) and Public Company Accounting Oversight Board (PCAOB), and counseling clients on the implications of emerging securities laws and accounting and auditing standards.
- Advising on fiduciary duties of directors and special and independent committees, including with respect to related-party transactions, executive compensation, acquisition proposals, and other transaction that might give rise to potential conflicts of interest.
- Advising clients on SEC reviews, enforcement actions, SEC requirements for securities offerings and corporate disclosures, and Sarbanes-Oxley (SOX)-related issues.
- Advising on stock exchange requirements, monitoring administrative proceedings related to SEC and Financial Industry Regulatory Authority (FINRA) enforcement actions, and tracking significant legislative developments and judicial decisions affecting enforcement of federal securities laws and state corporate laws.
- Advising privately held companies pursuing public offerings and exit strategies on compliance with state corporate law, as well as SEC, SOX, and national stock exchange requirements
Alternative Public Offerings
We are a leader in alternative capital raising techniques, such as registered direct offerings, PIPEs, and reverse mergers into public “shells”, and we have been in the forefront of this rapidly developing area. Since early 2001, the market for traditional, firmly underwritten initial public offerings of micro-cap and small-cap companies in the United States has been significantly constrained. There are fewer and fewer underwriters interested in investing the resources to bring micro-cap and small-cap companies to market, which has cut-off what once was a viable financing source for smaller companies. In recent years, an alternative to the traditional, firmly underwritten initial public offering has emerged. The “reverse merger” transaction, when coupled with a PIPE financing, allows smaller companies to access a large pool of capital without the need of an underwriter. While a typical transaction still requires the assistance of a “placement agent” to assist in raising capital, if structured properly, the placement agent is not an “underwriter” under United States securities laws, and thus not subject to the liability that has driven many traditional underwriters from the market for micro-cap and small-cap initial public offerings. Our Public Securities attorneys provide the following services in connection with reverse merger transactions:
- Assisting clients in locating an existing public reporting “shell” company, that has little or no assets or business, is current in its periodic reporting obligations with the SEC, has no or only limited liabilities that can be confirmed with some certainty in due diligence, preferably has common stock quoted on the Over-The-Counter Bulletin Board held by at least 400 shareholders of record, and does not need to first obtain stockholder approval to consummate any aspect of the transaction.
- Introducing clients to other professionals with experience in reverse merger transactions, including owners and brokers of shell companies, accounting firms, placement agents, investors, and investor relations firms.
- Conducting due diligence on the shell company, and restructuring the shell company to the extent necessary in advance of the transaction.
- Structuring, negotiating and documenting the reverse merger transaction documents, including the acquisition agreement and all ancillary agreements.
- Advising on compliance with securities laws and stock exchange rules.
- Assisting in the preparation and filing of all reports to be filed with the SEC in connection with the reverse merger transaction, including all Section 16 forms, Forms 8-K, and Schedules 13D, 14f-1 and 14C.
- Coordinating the responsibilities of management, opposing counsel and the other professionals involved in the process, including independent auditors, promoters and placement agents.
- Structuring, negotiating and documenting of the PIPE financing documents, including the securities purchase agreement, registration rights agreement and all ancillary agreements, and assisting in the preparation and filing with the SEC of the resale registration statement for the shares sold in the PIPE.
SEC fixed fee
We offer legal services to existing publicly traded companies in connection with SEC regulatory compliance on a monthly “Fixed Fee” basis in lieu of our standard hourly fee arrangements. Our clients can pick and choose from a suite of services that they would like us to provide for a Fixed Fee, which often includes the following:
- Exchange Act Reports. We review and comment on Forms 10-K, Forms 10-Q, Forms 8-K, Forms 3, 4 and 5, and Schedules 13D and 13G for approved individuals and investors. We assist in ensuring that all such Exchange Act reports are in compliance with applicable SEC rules.
- Annual Proxy Statements. We prepare a Proxy Statement for the annual meeting of shareholders.
- Routine SEC Communications. We coordinate all routine communications with the SEC with respect to Exchange Act filings.
- Securities Due Diligence. We review company documents and information to enable comprehensive and accurate disclosure in Exchange Act filings.
- Year End Obligations. We monitor and assist in meeting year-end disclosure and annual shareholder meeting obligations.
- D&O Questionnaires. We prepare and distribute Directors’ and Officers’ Questionnaires to assist in complying with disclosure obligations.
- Rule 144 Opinions. Upon request, we prepare Rule 144 opinion letters to transfer agents in connection with Rule 144 sales.
- Press Release and Reg. FD. We advise with respect to company-drafted press releases, and Regulation FD compliance.
- Board and Shareholder Meetings. We attend and prepare minutes for Shareholder Meetings and quarterly Board Meetings.
- Coordination with Auditors. We coordinate with accountants as to the timing of the preparation of financial statements and related financial disclosure.
At the beginning of a Fixed Fee representation, we meet with such of the company’s key personnel as are designated to review files and agreements for purposes of orientation in order to gain a better insight into and understanding of the company and its business, define and agree upon a satisfactory client service plan, define the scope of our legal representation, and prioritize legal assignments. This orientation process is included within the Fixed Fee arrangement, and becomes the basis for establishing the amount of the Fixed Fee monthly payment. We asses this amount annually to make sure the Fixed Fee amount for successive years is commensurate with the services provided in the prior year.
arbitration & mediation practice
SAM’s attorneys include trained mediators and arbitrators in private and court-based disputes. They have served on court-appointed panels for intellectual property matters, as neutrals for the International Trademark Association and the World Intellectual Property Organization, as well as mediators in a wide variety of contract claims and commercial disputes. As a result of their expertise in connection with alternative dispute resolution (“ADR”), the firm’s attorneys can also play a vital role in counseling and representing clients engaged in or contemplating ADR to resolve important litigation and pre-litigation matters. ADR can play an effective role in reducing the time spent by executives and company’s employees as well as the litigation and administrative costs of litigation.
Our attorneys have experience using arbitration and mediation in a variety of contexts, including:
- Commercial product distribution disputes;
- Breach of contract claims;
- Shareholder rights issues disputes;
- Corporate governance disputes;
- Copyright and trademark infringement disputes;
- Copyright and trademark licensing disputes;
- Internet domain name disputes;
- Trade Dress (product/package design) disputes; and
- Unfair Competition and false advertising disputes.
The Firm’s business litigators have significant depth and breadth of resources and a detailed knowledge of clients’ industries and business concerns. As trusted counselors to middle market businesses, and particularly early stage, growth companies and entrepreneurs, we understand that how a company or entrepreneur handles dispute risk oftentimes is the difference between business success and failure.
Litigation is often about efficiently analyzing complex legal and business challenges, and understanding litigation risk. All too often attorneys think and express themselves in terms of “cause and effect” or “action/reaction.” While our business litigators have impressive records as trial lawyers, we additionally focus on achieving creative, efficient, cost-effective solutions for our clients.
Of course, there are times that disputes cannot be quickly resolved, and our clients face the prospect of a trial or an arbitration that may “go all the way”. Our attorneys have deep pre-trial, trial and alternative dispute resolution experience in connection with both state and federal court actions. Our attorneys can take tough cases to trial or arbitration, and win.
Our business litigators have represented household name Fortune 500 companies, middle market companies, and emerging growth companies and entrepreneurs. Our business litigators along with the other attorneys at the Firm seek to forge long term relationships with our clients throughout their evolutionary path. We deliver efficiency and value to every client we serve through a well-defined budget and clear communication about their case.
For specific biographies and experience, visit the bios of:
mergers & Acquisitions
The Firm’s Mergers & Acquisition Group advises clients in connection with a full range of mergers, acquisitions, dispositions, joint ventures and other strategic transactions, both public and private, domestic and international. At the commencement of a transaction, we bring our problem solving entrepreneurial spirit and unique practical experience to structure transactions, and to develop a due diligence process that focuses on the key value drivers for the business, including analyzing intellectual property rights and assets. The Firm’s experience and knowledge help ensure that you will successfully negotiate and close the most complicated transactions. Regardless of a company’s size or stage of development, we make our collective expertise, gained from handling a multitude of successful merger, acquisition and strategic transactions, available to each of our clients.
The Firm prides itself on being able to devote significantly more high-level attention to our clients’ matters than other sophisticated law firms. Throughout the process, we work with management, keeping them fully informed and strategizing with them as developments arise. We pride ourselves on being highly responsive to our clients.
The Firm has extensive experience across the entire spectrum of business transactions, including:
- Mergers, acquisitions and sales of both public and private companies
- Stock and asset acquisitions and dispositions (including acquisition programs for private equity clients)
- Strategic investments and joint ventures
- Restructurings, recapitalizations and workouts
- Reverse mergers, exchange offers and alternative public offerings
- Tender offers and going private transactions
- Divestitures and spin-offs
- Special committee representation
- Acquiring assets from California Assignees for the Benefit of Creditors
The Firm’s clients include a wide variety of middle market public and private, domestic and international, companies, as well as entrepreneurs, family owned businesses, financial advisors, special committees, strategic buyers, investment groups and private equity firms. The Firm has handled transactions ranging in size from a few hundred thousand dollars to over a billion dollars.
The Firm has executed transactions across a wide range of industries including digital communication and media, Internet, software, SaaS and other technology based companies, as well as traditional aerospace, apparel, financial, life sciences, direct marketing, entertainment, transportation, consumer product and luxury brand companies, among many others.
In addition to negotiating and documenting a transaction from the letter of intent through closing, the Firm offers its clients comprehensive legal and practical counseling, working with you to identify the right mix of resources, both inside and outside our Firm, to successfully complete the transaction. The Firm often plays an active role in pre-acquisition or divestiture planning, including tax planning and working with management and other company advisors to help better position you for a strategic transaction.
While it is our objective to protect our client’s legal interests in connection with any transaction, the Firm never loses sight of your ultimate business goals and always strives to facilitate your business interests by providing practical and innovative legal advice and strategies.
Venture Capital & Emerging Growth
A core focus of the Firm’s practice is serving the needs of emerging growth and technology companies. The Firm draws upon its attorneys’ broad transactional expertise to provide strategic legal and business advice to its emerging growth clients through their entire life cycle – from formation and initial funding, to venture capital financings and through eventual exit by IPO or acquisition.
As a result of the Firm’s deep roots in the emerging growth market, the Firm understands the unique practical business needs of early-stage and high-growth companies. The Firm typically acts as outside general counsel to its emerging growth clients, including participating in board-level discussions and serving as an extension of the management team. The Firm strives to understand its clients’ business and markets and give them senior-level attention, which enables the Firm to provide practical and cost-effective legal advice.
Representing private companies as they seek funding from venture capital firms, angel investors or other investors has been a key component of the Firm’s practice. The Firm also represents and has extensive relationships with the most prominent venture capital firms and angel investor groups in Southern California. The Firm has extensive experience in advising on a wide range of financing structures, including seed and angel investor financings, venture capital investments, private equity and other institutional financings, bridge loans, and PIPE transactions for public companies. The Firm’s representation of cutting-edge companies and leading investors allows it to stay apprised of developing market trends and, where appropriate, to make introductions to investors and companies.
Intellectual Property & Technology Transactions
Our intellectual property lawyers are unique.
We combine extensive transactional experience, intellectual property expertise, keen business insight and a deep understanding of technology across a range of industries, within the United States and abroad. We enable our clients to leverage their intellectual capital to realize business objectives and achieve successful outcomes. Our attorneys know current business models and industry best practices and anticipate developments in the law to adapt to new technologies. Whether we are negotiating IP-driven commercial transactions, creating online contracts, securing university licenses, implementing corporate innovation programs and patent protection strategies or developing policies and procedures to comply with privacy and data security laws and regulations, we deliver creative and pragmatic solutions for maximizing the value of our clients’ technology and intellectual property assets.
Our lawyers understand the business of intellectual property.
We enable clients to capture market opportunities and build businesses based upon intellectual property. Our attorneys focus on getting deals done. We have extensive experience in forging successful business relationships to acquire, develop, license, sell and commercialize intellectual property and technology throughout the world. Having structured and negotiated hundreds of IP-driven commercial transactions, we know what terms are customary and we identify those that are “out of market.” These transactions include strategic partnering relationships and joint ventures, licensing deals, university technology transfers, patent assignments, product development and distribution arrangements, research and development collaborations, manufacturing agreements and sales and marketing relationships. Our attorneys are particularly skilled in closing deals for emerging growth companies engaged in negotiations with much larger companies. After agreements are signed, we assist clients, when necessary, in managing these business relationships to ensure their expected outcomes are realized.
IP Protection Strategy
Our lawyers understand the value of intellectual property.
We enable clients to maximize the value of their intellectual property and the security of their innovations. We create and implement strategies, aligned with business objectives, to encourage IP development, build defensible IP barriers to competition, monetize IP assets and, ultimately, realize returns on IP investments. Our attorneys formulate and implement patent protection guidelines, evaluate IP portfolios in acquisitions, produce patent maps for planning technology and product roadmaps, build and manage trademark portfolios and create policies and procedures to safeguard trade secrets. With an IP strategy in place, our clients are positioned to defend their markets and make productive use of their intellectual property in licensing and merchandising transactions, technology collaborations and acquisitions.
Privacy & Data Security
Our lawyers understand the importance of personally identifiable information and data.
We enable clients to minimize risks that can lead to a loss of valuable data and to comply with the growing body of privacy and data security laws and regulations in the United States and abroad. We evaluate our clients’ data collection, protection, use and sharing practices to assess liability risks and provide solutions to minimize these risks. Our attorneys counsel clients concerning online advertising campaigns, marketing programs, location-based services, and privacy by design practices for developing new products and services. We develop tailored privacy and data security policies to bring clients into compliance with legal and regulatory requirements and industry best practices.
Brand Development & Content Protection
Our firm attorneys have more than 30 years of experience in counseling clients on the creation of brand identification, registration and procurement of brands and creative content, as well as the litigation of disputed matters involving trademarks, copyrights, unfair competition, domain names, websites, rights of publicity and related claims.
Our firm attorneys are uniquely positioned to assist clients in the development of their brand strategies – from start-ups to established marketers. Our attorneys have worked in non-legal positions, such as product brand management, sales, and advertising, and work with clients in the development of business plans for the establishment, marketing and growth of their intellectual property assets. Our attorneys and the support staff are prepared to conduct strategic audits of existing brands as a precursor to any IP asset acquisition or transfer. In addition, we work closely with outside experts in the areas of valuation as well as tax-driven structuring on a domestic and international basis.
For those in the “Creative Community” content has always been viewed as king. Copyright protection is a right provided for in the U.S. Constitution. Our attorneys and support staff will work with clients at various stages of the creative process to insure that their creative output is protected. We work with a diverse community from advertisers, video producers, and photographers to musicians, actors, writers, and fine artists. In addition, we work closely with our clients to “vet” creative works to determine that they do not infringe upon the work of others. The Internet has created an enormous marketplace for content and for those pirates who would seek to infringe upon the rights of the creators. We develop protection programs including monitoring of the Internet, notice and take-down programs to try to control the amount of content piracy that our clients find on the Internet. The practice group also represents the full range of clients in copyright litigation matters in the federal courts.
Our firm represents clients in the courts throughout California and across the United States. Our attorneys have years of experience in all aspects of intellectual property litigation from development of litigation strategy, discovery planning, creation of pleadings through to the conducting of trials. Our litigation clients have represented diverse economic and creative interests from Fortune 500 companies to individual artists. Litigation matters have included claims of trademark infringement, copyright infringement, counterfeiting and piracy, trade dress infringement, unfair competition, violations of rights of publicity and privacy, licensing and merchandising disputes, domain name infringement, web site infringement and other Internet-related matters, breach of contract, commercial disputes, business disparagement, business torts, idea submission, and libel and slander claims.
Our firm provides its clients with a complete range of registration services for the protection of their trademarks in the United States and around the world. Our practice involves not only the development of clearance strategies, but legal opinions with regard to availability of trademarks for purposes of registration and use. Our lawyers and trademark paralegals work with our clients to file appropriate applications for trademark protection at the United States Patent & Trademark Office as well as registrations in countries throughout the world. We also work with our clients to register their creative works with the U.S. Copyright Office as well as with various guilds and other government agencies where appropriate. With respect to patent registrations, our firm works with several patent firms who have the expertise in the particular fields of invention, from mechanical to bio-tech, to be certain that our clients’ novel works are protected.
Among the services offered by Stubbs Alderton & Markiles, LLP are:
- Counseling with respect to the selection and clearance of trademarks, including assignments of potentially conflicting trademarks. For example, our attorneys worked with a major cable television channel in the selection of the name for its new fashion and home-lifestyle cable channel.
- Counseling with respect to appropriate searching strategies. For example, often clients will select a number of possible marks for use in connection with their business. We often assist clients in determining the most cost-effective way of searching for conflicts and clearing the marks whether it be for several new film and entertainment companies or an air cargo carrier. We utilize both in-house generated on-line searches as a quick preliminary screening mechanism as well as outside professional vendors for more comprehensive searches.
- Preparing and filing applications to register trademarks with the United States Patent & Trademark Office, as well as state authorities, where appropriate. For example, our attorneys and trained trademark paralegals will engage in the filing of a variety of trademarks, design marks and logos for goods in services in more than 45 International Classifications before the United States Patent and Trademark Office. Our firm also tracks the applications through the registration and beyond through the use of an in-house trademark database.
- Directing a network of Stubbs Alderton’s foreign associates in preparing and filing applications to register trademarks worldwide. Our seasoned attorneys have developed working relationships with hundreds of foreign trademark lawyers who assist our clients in obtaining protection in hundreds of countries and territories. As global trademark registration programs require substantial resources to establish, we work with our clients to prioritize those foreign jurisdictions with respect to business activity, future market growth, and likelihood of infringing activity.
Representing clients in inter-partes proceedings before the United States Trademark Trial and Appeal Board. Our attorneys have extensive experience representing clients whose registrations are being opposed or who are opposing other applications for trademarks likely to cause confusion to the consuming public. We also represent both Petitioners and Registrants in cancellation proceedings before the same federal body
Our attorneys have been leaders in conceiving and implementing programs to protect client intellectual property rights. They are nationally recognized for their particular efforts in battling counterfeiting and piracy in the United States and overseas. We have implemented these important enforcement programs, domestically, internationally, and online for a wide variety of clients and with respect to numerous properties-from movies and sports teams and trade associations, to luxury goods from the world’s most famous designers, to consumer and personal care products from manufacturers around the world. Our attorneys work closely with our clients to develop strategic plans, including budgeting, specifically tailored to protect our clients’ rights in their valuable intellectual property. Among our enforcement activities are:
- Obtaining and executing nationwide ex parte seizure orders; and other unique remedies such as renewable orders, asset-freezing orders, and civil contempt orders.
- Obtaining and executing ex parte seizure orders simultaneously at numerous locations.
- For “events” such as the release of blockbuster films or television shows, music concerts, and major sporting events (e.g. the Rose Bowl game, the Major League Baseball All-Star Game and playoff games), combating infringement through nationwide street sweeps by investigators, criminal enforcement, U.S. Customs enforcement, nationwide ex parte seizure orders, and voluntary relinquishments.
- Maintaining programs which address infringement by numerous individuals and companies throughout the United States and worldwide.
- Litigating against non-cooperative infringers.
- Providing training and working with law enforcement agencies such as the local police or U.S. Customs to combat counterfeiting and piracy.
- Working with law enforcement agencies and U.S. Customs to combat criminal infringement and illegal importation of infringing items.
- Protecting our clients’ rights with respect to venue owners where infringing and counterfeit products are sold.
- Employing and supervising investigators worldwide who uncover and report intellectual property infringements and who gather vital information necessary to combat this infringement.
- Obtaining voluntary relinquishment of infringing products.
- Maintaining a detailed database of infringers.
- Assisting our clients in developing public relations and advertising campaigns aimed at educating consumers regarding intellectual property rights.
- Implementing hotlines for consumers to report intellectual property infringement.
Internet, Digital Media & Entertainment
The Firm advises Internet, Digital Media and Entertainment companies in all aspects of their corporate, strategic and licensing businesses.
The Firm’s Internet law practice focuses its business and intellectual property expertise on transactions occurring on the Internet and on mobile platforms. The Firm possesses significant experience in:
- the protection of copyrights, trademarks, domain names and trade secrets online;
- Internet and e-commerce matters; and
- technology, content and multimedia licensing, distribution, and marketing matters, including in connection with advertising and other revenue generation transactions, software and hardware bundling transactions, content licensing transactions for Internet and mobile platforms, co-marketing transactions and co-branding transactions.
The breadth of the Firm’s expertise, together with its representation of high profile Internet companies, highlights the Firm’s core competence in Internet law matters.
The Firm understands the importance of protecting and managing digital media content, whether through traditional server-based distribution mechanisms, or over peer-to-peer networks. The Firm’s digital media practice assists both technology companies and content owners structure the licensing and distribution of proprietary intellectual property, whether audio, photographs or video, on the Internet and on mobile platforms, including through content and multimedia licensing, distribution, and marketing. These transactions involve, among other matters:
- advertising and other revenue generation transactions;
- software and hardware bundling transactions;
- content licensing transactions for Internet and mobile platforms;
- co-marketing transactions; and
- co-branding transactions.
The Firm’s entertainment practice focuses its corporate, M&A and digital media expertise in assisting individuals (including actors, producers, directors, musical artists and athletes) and film, television and digital media production companies in various transactions, including, investment transactions, joint ventures and mergers and acquisitions.
Interactive Entertainment & Video Games
Tax & Estate Planning
The Firm’s tax practice is integrally involved in supporting and developing the Firm’s business and transactional practice. The Firm engages in tax planning in connection with:
- mergers, acquisitions and buyouts;
- restructurings and financings;
- executive compensation;
- partnership and limited liability company taxation;
- corporate taxation;
- taxation of real estate investments (including REITs);
- international matters (both inbound and outbound), representing both domestic and foreign companies and individuals.
The Firm handles disputes with the Internal Revenue Service and with the taxing agencies of California and other states, both for companies and for individuals, on a wide variety of issues.
The Firm also provides estate and tax planning advice and drafting of trusts and wills.