Consulting Between CEO Positions

Last Tuesday, on March 27, 2018, CEOWorld magazine published an article I wrote on  “Consulting Between CEO Positions”

This article was designed for CEOs and other C-Suite, VPs or other senior executives who have achieved a level of success and now find themselves between executive positions and might want to consider doing some consulting before accepting the next full-time job offer.

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Forming a corporation or LLC: one size doesn’t fit all

By Robert A. Adelson
Mass High Tech, March 28, 2012

If you are launching a new business, it is wise to create a separate legal entity under which you conduct the affairs of your new business. Creation and use of this entity, either a corporation or LLC, can protect you against liability, enhance your credibility in the marketplace and provide an ability to offer equity to employees and investors.

For that entity, you have a number of choices –
•    Do you want a corporation or LLC?
•    Do you create an S corporation or a C corporation?
•    Do you form or incorporate in Delaware of Massachusetts?

Using Copyrights to Protect Your Software, Literary and Artistic Works

By Robert A. Adelson, Esq.

Partner, Engel & Schultz, LLP

Boston, Massachusetts

Presentation for MDG – Medical Development Group

Business Networking Event

Newton, Massachusetts

May 13, 2009

 

What is a Copyright?

• Copyright is a form of Federal law protection to the authors of “original works” against infringement by those who copy their works
•  Includes literary, dramatic, musical and artistic works
•  Protection available to published and unpublished works

 

                 Owner has exclusive rights to:

 

• Reproduce copies and prepare derivative works
• Distribute, sell, transfer, rent, leave or lend copies of work
• Perform a display of musical, dramatic and other art work
•  Limited “moral rights” to attribution and integrity of visual works

 

What works are protected?

 

Copyright protects “original works of authorship” that are fixed in a tangible form of expression:

 

•  Literary works including computer software
•  Musical and dramatic works
• Pictorial, graphic, and sculptural works
• Motion pictures and audiovisual works
•  Sound recordings
• Architectural works

 

These categories should be viewed quite broadly: for example, computer programs and most “compilations” are registrable as “literary works;” maps and architectural plans are registrable as “pictorial, graphic and sculptural works.”

 

What works are not protected by copyright?

•  Titles, names, short phrases, and slogans
• Mere listings of ingredients or contents
•  Mere variations of typographic ornamentation, lettering, or coloring
• Ideas, procedures, methods concepts
• Principles, discoveries, or devices, as distinguished from a description, explanation or illustration
• Works consisting entirely of information that is common property and containing no original authorship

 

How to Secure a Copyright:

• Copyright is secured automatically upon creation;
• There are, however, certain definite advantages to registration
• Posting a copyright notice no longer required but it is useful to defeat “innocent infringement” defense

                 *Exception: works before 1/1/1978 required registration and notice

 

                 Who is Copyright owner?

 

•  Normally, author of work is owner
•  Joint authors, joint ownership also possible
• Exception is “work for hire”
• Employer  is owner of work by employee within scope of employment
•   Certain works commissioned under written agreement can be owned by person hiring/commissioning work

 

                 Duration of Copyright:

 

•  Author’s life plus 70 years from death
•  Joint works measured by last surviving author
• Work for hire: Sooner of 95 years from publication, or 120 years from creation
• Works before 1/1/1978: 28 years, with optional renewal 67 more years

 

Registration of Copyrights and Benefits of Registration

 

              What is registration?

 

•  In general, copyright registration is a legal formality intended to make a public record of the basic facts of a particular copyright

 

              Advantages of Federal Copyright Registration:

 

• Establishes public record necessary for suite
•  Prima facie evidence in court of the validity of the copyright and of the facts stated in the certificate, if made before or within 5 years of publication
•  Statutory damages and attorney’s fees available if registration is made within 3 months after publication of the work, or prior to an infringement of the work
•  Allows the owner of the copyright to record the registration with the U.S. Customs Service for protection against the importation of infringement copies

 

 

Registration Procedure and Special Deposits

 

              Filing Federal Registration of Copyright:

 

• Filing with US Copyright Office
•  Application forms vary for literary, performing arts, visual arts, sound recordings
•  Group registration: Application forms for serials in periodicals, for newspapers, for corrections, amplifications, contributions to periodicals
• Pre-registration available under 2005 Act for certain unpublished works with history of infringement prior to commercial distribution

 

                 Special Deposit requirements exist for many types of work including computer programs:

 

• One visually perceptible copy in source code of the first and last 25 pages of the program
•  For a  program of fewer than 50 pages, the deposit is a copy of the entire program
• Possible to block out portions of source code that contain trade secrets with either submission

 

What is Copyright Infringement?

• Test: (1) Ownership and (2) Copying without authorization
•  If owner/plaintiff cannot show actual copying, must prove

1. Defendant had access to copyrighted work and
2. Infringing work is “substantially similar” to protected elements of copyrighted work that are original

•  Direct infringers who do copying liable for damages and also “vicarious” infringers who direct and have financial interest in infringement and “contributory” infringers who induce and add to infringement
•  What Remedies are available?

1. Injunctive relief
2. Actual damages and profits
3. Statutory damages
4. Attorney’s fees
5. Impoundment

 

 

 

Defenses to Claim of Infringement:

 

•  Statute of limitations – 3 years after claim accrued
• License to use
•   Substantial similarity unmet in quality or quantity – de minimus
•  Substantial similarity limited to unprotected elements of work
• Fair use defense
• 6 uses: criticism, comment, news reporting teaching scholarship, research
•  Balancing Factors test
• Character of use made by infringer
• Nature of copyrighted work infringed
• Amount and substantially of use made
• Effect of use on market value of copyrighted work

 

 

Robert A. Adelson, Esq., Boston, MA: Corporate, Tax and IP Attorney:

 

•  For Businesses.  Adelson structures and implements Business formation; VC and angel finance; Stock, options, vesting plans;   Shareholder agreements;  Employment and contractor agreements; trademarks, trade secrets, copyrights and IP protection, licensing; Software and  product development, distribution; Partnerships, Joint Ventures; M&A, business succession 
•  For Service Providers. Adelson negotiates employee terms sheets, employment contracts, NDAs, Non-competes, Stock, options, Phantom stock; Relocation,  Severance, retention, termination agreements; and for consultants – client and subcontracting agreements; Entity choice, liability protection; trade identification, trademark, copyrights, IP protection.
• Publications. Mr. Adelson is a frequent lecturer, with numerous articles in those fields, including articles published in Boston Business Journal, Darwin Magazine, Mass High Tech, Family Business magazine, Genetic Engineering News, Indus Entrepreneur, Small Business Opportunities magazine and The Culpepper Letter (serving the software industry). His work as a prominent Boston business, tax and intellectual property attorney has been recognized in articles in the Boston Globe and Boston Herald and in a chapter of the book, published in 2000, The End of Shareholder Value.  A member of the Massachusetts and New York Bars, Mr. Adelson is also Chairman of ENET –  IEEE Boston Entrepreneurs’ Network and Advisory Board member of the 128 Innovation Capital Group.

 

©2009 Robert A. Adelson.  All Rights Reserved

Getting Paid in Stock, Options or Promissory Notes: Negotiating Terms of Non-Cash Payment for Consulting Services

 Presentation for IEEE Consultants’ Network, Waltham, MA – May 26, 2010

By Robert A. Adelson, Esq.

 

 

EQUITY COMPENSATION ARRANGEMENTS FOR HIGH TECH CONSULTANTS

 

EXAMPLE  (Hypothetical and Fictitious)

 

SuperpowerSoft Co. 

                                                                        Employees: 5 (3 being part-time)

                                                Shares             Sales: -0-; Developmental State

EdisonPres., CEO                  40%                 Assets: 250k   Liabilities:      10k

Kwertzberg, VP Operations   40                    Cash:   50        A/P      10

Other Part-Time Employees  2                      Equipment      50

Investor Stocks (FFF)             10                    Technology     150      Sh/h Equity: 240k

Mansey, VP Mrktg (if vested) 8                    P/L: (30k)

 

Part-Time Consulting for High Tech Start-Up Company

 

            Tim Mansey was a senior officer at software giant, Zen Development Corp. inCambridgeuntil Zen’s acquisition by an even larger out of state computer corporation.

After leaving Zen, Mansey decided that, rather than job search for a full-time position, he would seek job assignments from different companies, selling his engineering, marketing skills from 15 years at Zen and other known companies on Mansey’s resume.            

Over the last year, Mansey developed a consulting business for software companies under the name, “CEO Strategies”. He has an ongoing 1-day a week assignment and completed job assignments with large and smaller companies, including assistance in marketing , product design, technology validation and some software development work.  One company has asked Mansey to join its board of directors.

Most clients have paid on time, and with one or two exceptions, the work of CEO Strategies has been very well received.  Originally, Mansey’s assignments came from colleagues at established firms, but now he also approaches start-up and emerging companies, even though most cannot pay Tim’s daily consulting fees.

Recently, Tim discussed a part-time spot in one such startup: SuperpowerSoft Co., newly founded by Tom Edison who invented the SSC proprietary technology, and Mitch Kwertzburg, who was with Tom at DEC and with family, etc. contributed the cash capital.

Formed 6 months ago, SSC now has 3 other techies part-time, leases space inBurlington, and has a product nearing completion.  SSc still has funds from investment by Mitch, family, friends, etc., but no one takes a salary.  So, Tom and Mitch thought it time to recruit a “sales guy” to help market the product.  Enter…Time and CEO Strategies.

Tim believes SSC has a breakthrough technology with ready markets.  With his industry background, Tim believes that he can attract licensing & strategic alliance partners (he sees ChyBase as likely 1^st match) to speed SSC market entry but Tim needs authority.

Tom and Mitch like Tim, but don’t want him taking over and are not sure how much stock to give him.  They have several questions on compensation, terms and pitfalls. 

 

 

 

 

IS EQUITY FOR PAY A GOOD DEAL?

 

OPPORTUNITIES AND… PITFALLS

 

QUESTIONS OF THE CONSULTANT:

 

• When does taking equity as your pay make the most sense?
• What are the types of equity? Stock options

Or other arrangements a client can offer you?

• How do we value the stock or options you get?
• What taxes does the Consultant pay?
• How do you avoid dilution
• What other structuring issues should you ask about to protect your equity stake?

 

QUESTIONS OF THE COMPANY:

 

• When does offering equity make sense to a Company?
• Can this equity be paid based on performance? Or loyalty? Can we measure performance?  How much stock to give?
• What if things don’t work out: Can we get the stock back? What if Consultant dies? Quits? What if we sell the Company?
• Is stock (or options) paid deductible by the Company?
• Will giving stock now hurt us later? In seeking financing? In morale with current staff? In recruiting new talent?

 

 

 

Equity Compensation for Services

1. Forms of Equity

• Common Stock: voting or non-voting
• Preferred Stock:

Preferences in liquidation

Dividends, cumulative or not, management

• Warrants or Options
• Convertible Debt
• Phantom Stock/ other deferred comp

 

1. Vesting Schedule

• Acceleration on change in control
• Buy-back rights on Termination

 

1. Stock Purchase Agreement

• Investment warranties by purchaser
• Company disclosure, business plan
• Anti-dilution protections, pre-emptive rights
• Company covenants, reports
• Registration rights
• Cash-out Rights

 

1. Stock Option Agreement

• Grant Date & Option Period
• Exercise Price and Method
• Company Plan, restrictions if qualified
• Enhanced flexibility, if non-qualified.

 

 

 

 

 

 

 

 

Valuation of Company Equity

 

1. Current (Tax) Fair Market Value

Rev. Rul 59-60: Assets,Indus, History, Comps.

Discounts for Illiquidity, blockage, minority

 

1. Forward (Investor) Value from Business Plan

 

a.      Product, Technology, Uniqueness, Edge

b.      Market, Competitive Strategy, Penetration

c.      Management Team, motivation, track record

d.      Financial forecast, underlying assumptions

e.      Capital Sought, financing stage, funds use

 

1. Blend Valuation with our without Services

– Entrepreneur’s investment, upside potential

-Present value of future using 35% ROI

 

Stockholder Agreements related to Equity

 

1.      Goals:       stabilize management, ownership, provide liquidity, valuation of shares

 

2.      Means: share transfer restrictions, voting agreements

 

3.      Involuntary transfers

 

4.      Voluntary transfers – 1^st Refusal toCo., Shhs

 

5.      Control Change Co-Sale: Drag & Tag-along

 

 

 

 

 

Taxation of Equity (in lieu of cash compensation)

 

1.      Stock Issued – Purchase Plan

 

• Not restrictive; open to Consultants
• Tax Paid when no subst’l risk of forefeiture & stock has readily ascertainable FMV
• §83 Ordinary Income Tax
• §83(b) Election can accelerate the Tax

 

2.      Stock Option – ISO (Incentive Stock Option)

 

• Restrictive Plan – FMV, limits on amount, exercise
• No Tax on Exercise; Capital gain on sale
• Limited to current company employees

 

3.      Stock Option – Non-Qualified Plan

 

• Restrictive Plan NOT IRS Required

Tax Paid on Exercise of option

• Capital gain on Later Apprec. Paid onSale
• Not limited to current employees

 

4.      Equity Based Compensation Plans

 

• Phantom Stock; Stock Apprec. Rights (SAR)
• Tied to co. growth, no equity but payment rates
• Not restrictive; open to Consultants
• Taxed as Paid; All §83 Ordinary Income Tax

 

 

 

Payment by Promissory Note

 

1.      Installment payments – fixed time-table

 

2.      Debt obligations – promissory note

 

• Unconditional promise to pay sums owed
• Interest on outstanding debt
• Warrants in client stock – Equity “kicker”
• Defining “events default” & consequences
• Collection of costs & Attorneys fees
• Collateral security for debt
• Perfection of security interests

 

3.      Installment taxation on payments received

 

4.      Benefits of note for enforcement

ABOUT THE SPEAKERANDPRESENTATION

 

            These materials were prepared by Robert A. Adelson, Esq., Partner at Engel & Schultz, LLP, 265 Franklin Street, Suite 1801, Boston, MA 02110, (617) 951-9980, fax: (617) 951-0048, e-mail: radelson@engelschultz.com

 

            Mr. Adelson is a graduate of BostonUniversity, Phi Beta Kappa, and Northwestern University Law School in Chicago where he was a member of Law Review. He has an LL.M. degree in Taxation fromNew YorkUniversity, and is a member of theMassachusetts,New York and U.S. Tax Court Bars.  He began his legal career in 1977 as an associate at major New York City law firms, first Dewey Ballantine and later Weil Gotshal & Manges, before returning home to Massachusetts in 1985, where he has been a partner at several Boston firms before joining his present firm as senior business law partner in 2004.

 

            Mr. Adelson is specialized in corporate, taxation, business and technology transactions.  In those areas, he frequently represents (1) small companies with their various business needs, including shareholder and employee issues, financing, commercial contracts, intellectual property, joint ventures, mergers and acquisitions, succession planning (2) senior executives, in negotiations over severance, employment, relocation, stock options, compensation and stockholder arrangements, and  (3) consultants – in liability protection, intellectual property protection, trade identification, vendor, client and subcontractor arrangements.

 

            Mr. Adelson’s firm, Engel & Schultz, LLP, is a small but broad service law firm of 6 attorneys inBoston’s Financial District.  The firm complements Mr. Adelson’s work in business and tax law with seasoned attorneys in family, probate, real estate and litigation matters. 

 

            Mr. Adelson is a frequent speaker at business forums and Chairman of IEEE BostonEntrepreneurs Network www.boston-enet.org .  Further information on Mr. Adelson’s background and his past published articles is available at his law firm website.  To view many of Mr. Adelson’s past articles, see http://www.engelschultz.com/index.php/category/publications/  or https://robadelson.wordpress.com/

 

The speaker thanks Ron Goodstein and Tom Vaughan for the invitation to speak for IEEE Consultants’ Network on the topic of “Getting Paid in Stock, Options or Promissory Notes:  Negotiating the terms of on-Cash payment for Consulting Services” at the Emerging Enterprise Center, Waltham, Massachusetts on May 26, 2010.   

The example on page 1 of these Materials are hypothetical and fictitious although the questions on page 2 are drawn from actual client questions.  The purpose of the example is solely to illustrate contracts issues, strategy and planning concepts and stimulate meeting discussion.  The remainder of these materials are to offer rough outlines of broad areas of major contracting situations for technology based business. It is hoped that these materials will inform discussion and be useful reminder of topics covered for the attendees.  These materials are not legal advice and not intended as any substitute for professional advice or counsel in a particular case.

©2010 ByRobert A. Adelson

Legal Issues in Consulting, Licensing, Subcontracting and Software Development

CEO Refresher, June 2011

By Robert A. Adelson

As a consultant, entrepreneur, client or professional, you are often dealing with contracts, your own and others.  What should you be looking for in your contracts?  What makes a good contract? 

What terms to include in consulting agreements?  Contract and tax issues structuring compensations?  Should I hire a subcontractor?  How to structure the Relationship?  What protections do I need?  What terms to include in software development contracts?  How to structure milestones and intellectual property rights?  How to negotiate VAR and distribution agreement?  Terms to include in licensing products and technology? 

Making Good Contracts

Contracts should be clear and complete to reduce uncertainty, and cut legal costs to enforce.

The contract should cover:

• Mission – Defining your mission and covering the scope of the contract
• Conditions – Current and relevant variables, contingencies to performance
• Reliance – Setting out warranties and representations that each side relies upon. 
• Consideration – Stating what each part contributes regardless of form it takes
• Mutuality – requiring each party to contract to “ante up”
• Commitment – Timing contributions to vulnerability to non-performance is reduced.

Service and Consulting Agreements 

Service contracts should set out scope of services, reports, and deliverables in both general terms and with an attachment specific to the job assignment.

There should also be provisions on contractor’s independence and control to enhance likelihood of treatment as an independent contractor (though ever harder under Massachusetts law).  Contracts should also set out agreed restrictive covenants – confidentiality, assignment of inventions, non-solicitation, no-raiding and non-competes as negotiated and agreed. 

Compensation Arrangements 

Contracts need to cover manner of payment whether lump sum by job and assignment, or by time and materials.  Where the contract is fixed price, care needs to be taken in conditions for the job with arrangements for adjustment to payment based on change orders in project scope or conditions. 

The contractor needs to protect himself or herself to give greater assurance of payment especially in hard times when money is short.  An advance should be paid, with collection terms for late payment.  If cash is short, rather than lose the work or cut the price too much, part of payment might be made by promissory note or in equity of the purchaser. 

Debt or equity terms should be negotiated and spelled out.  Immediate issuance of stock with appropriate IRC §83(b) elections can avoid costly tax “surprises” down the road if a company does succeed and the stock becomes more valuable.

Subcontractor Arrangements

Consultants hate to turn away business and if your consulting has reached that level of success, hiring qualified subcontractors to help with work overflow, can be a win-win-win.  

Subcontracting can help you retain satisfied clients you might have lost because you lacked capacity to handle the work. It allows you to leverage your marketing success.  It can provide sorely needed work to colleagues who should value you as a source of business.

But here too, in subcontracting a proper contract is needed to assure no poaching of your clients by your subcontractor, clarifying work delivery and compensation terms, including risk on non-payment by your client. 

Software & Product Development

These contracts should include accepted specifications, terms of acceptance, milestones for completion and payment. The developer needs to be paid for his work and owner or user needs assurance that at each stage he is receiving a value in case at some stage there is a disagreement or dissatisfaction and termination occurs. 

These contracts often require a detailed parsing of intellectual property ownership rights.  The developer needs to ownership of his or her software tools.  The client his full rights in the product being developed if paid for. 

Termination rights, source code escrows, warranties, maintenance and upgrades are also important for the complete agreement.

Technology- Based Licensing and Distribution

Where software, medical device or technology-based products are developed, the developer, consultant or entrepreneur often seeks to use a third party to outsource sale and distribution.  Thus, the product, device or software will be licensed with arrangements for distribution with a value added reseller, dealers or other appropriate sales and distribution channels. 

Licensing has its own set of issues including scope of license, fields and applications licensed, territory covered.  The license also needs to state and the parties often negotiate whether the license is exclusive and length of term or irrevocable.

The License should cover other issues as well:  quality assurance, use of trademarks, other IP rights, promotion obligations, quotas and customer service.  The license should also then the compensation issues – royalties to be paid up front, over time, based on sales. 

Care in Contracts to protect your business

The contracts discussed are important in early stage business.  They need to be prepared carefully so that the entrepreneur or consultant has a clear understanding of her or her contractual responsibilities.  The contracts also need to provide a degree of protection to the entrepreneur and consultant so that unnecessary risks and liabilities are avoided.  Without care, bad contracts can sink a business.

Robert A. Adelson, is a corporate, tax, contracts and intellectual property attorney and partner at the firm, Engel & Schultz LLP, Boston, MA You can contact Mr. Adelson at radelson@engelschultz.com

(c) 2011 Robert A. Adelson