licfl m 18 lott 03-09 UPLD no bg - Law Seminars International · Lotf &Fr dan 18- Law Seminars ......

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Leslie J. Lott of Lott & Friedland 18- Law Seminars International | Mastering Complex IP Licensing | 3/9/06-3/10/06 | Fort Lauderdale, FL 1 International Licensing Cultural and Practical Considerations Leslie J. Lott Lott & Friedland, PA Miami, Florida [email protected] Americans Abroad Differences in legal systems and cultures can make international licensing difficult . All of the issues surrounding domestic licensing, Plus: complexities of dealing in more than one legal system international law governmental regulation currency exchange, and different business and cultural practices. Two general categories of differences: Culture and Social Different legal systems Lott & Friedland, Miami Florida

Transcript of licfl m 18 lott 03-09 UPLD no bg - Law Seminars International · Lotf &Fr dan 18- Law Seminars ......

Leslie J. Lott of Lott & Friedland 18-

Law Seminars International | Mastering Complex IP Licensing | 3/9/06-3/10/06 | Fort Lauderdale, FL

1

International Licensing

Cultural andPractical

Considerations

Leslie J. LottLott & Friedland, PA

Miami, Florida [email protected]

Americans Abroad

• Differences in legal systems and cultures canmake international licensing difficult .

All of the issues surrounding domestic licensing, Plus:complexities of dealing in more than one legal systeminternational lawgovernmental regulationcurrency exchange, anddifferent business and cultural practices.

• Two general categories of differences:– Culture and Social– Different legal systems

Lott & Friedland, Miami Florida

Leslie J. Lott of Lott & Friedland 18-

Law Seminars International | Mastering Complex IP Licensing | 3/9/06-3/10/06 | Fort Lauderdale, FL

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Americans Abroad

I. CultureKingdom of Saudi Arabia

offensive to show soles of shoes

II. Different Legal SystemsUSSR

“There are no strikes in Mother Russia”“Comrade, there is no God.”

III. Sources for PresentationExperience in Saudi Arabia, Europe, Latin AmericaProf. Karl Jorda presentation, JapanInformal survey

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Japan

International Considerations in

Licensing

Karl F. Jorda

David Rines Professor of IP Law & Industrial Innovation

Director, Kenneth J. Germeshausen Center for the Law of Innovati on & Entrepreneurship

Franklin Pierce Law Center

Two White Street, Concord, NH 03301

Practising Law Institute

Seminar

on

Understanding the Intellectual

Property License 2005

New York City

December 17 -18, 2005

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Leslie J. Lott of Lott & Friedland 18-

Law Seminars International | Mastering Complex IP Licensing | 3/9/06-3/10/06 | Fort Lauderdale, FL

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Three uniquely Japanese syndromes:

• Black Ships SyndromeThe expression “Black ships have arrived again” recalls

Commodore Perry’s black ship in Tokyo harbor in 1854 and indicates exertion of pressure from the outside, e.g.

IBM’s move to Tokyo in 1984Best to use low-key approach

• Totem Pole SyndromeVestiges of caste system - authority and title greatly valuedGovernment officials, e.g., MITI officials and JPO examiners higher than

lawyers and IP practitioners. The latter can’t be aggressive. Must help them helpyou

• Black Hole SyndromeIn communications, Japan is like a Black Hole: It receives but does not emit

signals. Getting information has positive social value:giving it considered harmful.Reluctance to “open the kimono”Resistance to auditing provisionsAvoidance of definite commitments even in negotiationsTies in with “silence is gold, eloquence is silver.”Don’t “feel any need to reveal what (they) know.”With patience they “usually learn what (they) want to know.”

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Japan- NegotiationsPreliminary negotiations are more important in the Far Eastthan in the U.S.

Americans have a direct “let’s get down to business” negotiation style. In many other countries, establishing a social relationship comes first.

A personal relationship (“Guan Xi”) of mutual trust and respect.Parties need to be able to have “heart-to-heart” (indirect)

communications.Americans can conduct business with people they don’t know or

can’t stand – “it’s just business.” Elsewhere, if they don’t know or like you, they won’t do business with you.

Culture clashes can derail overseas deals – and quickly.

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Law Seminars International | Mastering Complex IP Licensing | 3/9/06-3/10/06 | Fort Lauderdale, FL

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Japan- Examples•U.S. Chief I.P. counsel leaves Tokyo in a huff at the end ofa week of negotiations because “nothing had happened.”In fact, he admitted he had insisted they “had to do it his way.”

•American negotiation team became frustrated after ten days of “dilly-dallying” byJapanese and left at point when Japanese were ready to wrap up deal.

• Another American negotiation team getting impatient already on first day(Monday) because of small talk — American delegation head pounds table andprotests: “Let’s get down to business. We have a plane to catch on Friday.”(Time is money.)

• Three tractor salesmen go to Japan to sell tractors. Make a great presentationwith pricing. No reaction from Japanese. Americans get nervous and lowerprice. Still no reaction from the Japanese. Americans again lower price waybeyond plan.

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Japan• Silence of Japanese due to need to thinkabout it and build consensus.

• Patience is key – even in excruciatingperiods of silence.

• Americans: Japanese approach to businessnegotiations wastes time to do business deals.

• Japanese complain about the dry AmericanAttitude to business deals.

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Japan- Drafting• Many foreign parties consider a writtenagreement as a mere memorial of the trueagreement, i.e. the oral understanding.

• Hence, the preference for a general andshort and even vague text, e.g. “heads ofagreement.” Statement of principles.

• Plus a clause providing that the parties willhandle any issues that may arise in a fair andreasonable manner. The agreement thenamounts to an “agreement to agree.”

• Long and legalistic agreements and specificprovisions re. e.g. breaches raise suspicions oflack of trust.

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Japan• Example of a clause that the parties will deal with

issues that may arise in a fair and reasonable manner:

Article 00

The parties shall discuss and decide in good faith the detailedmatters necessary to perform this Agreement or the mattersnot provided in this Agreement.

If a significant change in the business circumstances arises,the parties shall negotiate to change the terms and conditionsof this Agreement to conform to such a change and the benefitof the parties.

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Law Seminars International | Mastering Complex IP Licensing | 3/9/06-3/10/06 | Fort Lauderdale, FL

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Japan

Comparative view of the meaning of contracts:

AMERICAN VIEW JAPANESE VIEW

Signing a contract is “closing the deal.” Signing a contract is “opening arelationship.”

“A deal is a deal.” The deal is a work in progress.

“If you don’t have it in writing, you “It does not matter what you havedon’t have it.” on paper.”

Sanctity of contract. Essence of the deal is therelationship, subject to reasonablechanges over time.

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Japan

AMERICAN VIEW JAPANESE VIEW

An executed contract is a definitive set of The “deal” being negotiated is notrights and obligations strictly binding the the contract but the relationshiptwo sides. between the parties.

Preference for very detailed contracts to Preference for statement of generalcover any and all contingencies. principles (“Heads of Agreement”).

To solve problems, parties look to their To solve problems, parties look towritten contract. their relationship.

.

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Japan- Legal Traditions

UNITED STATES JAPANPluralistic society Homogeneous

Political, religious, and social thought Political, religious, and social thoughtinfluenced by 18th century England and influenced by ancient China andFrance. Korea.

Common law heritage. Civil law heritage.

Adversarial legal system. Inquisitorial legal system.

Federal republic (federal and state Unitary state (jurisdiction and choicegovernments have separate court of law issues are non-existent.systems and their own substantive law).

.

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Japan- SocialTHE ROLE OF LAWYERS IN JAPANESE & U.S. SOCIETIES

• Great differences in the role lawyers play in Japanese and U.S. societies.

• Important with respect to the role an American lawyer should playin Japan no matter what his/her mission is in Japan.

• U.S. society is organized around its legal system which plays acentral role. Law and politics are all important here.

• In the Japanese society law plays only a peripheral role. In factJapan can function without law. Japanese society has beenhomogeneous for ages. With deep-seated traditions.

•U.S. society is heterogeneous with a short history and significantimmigration throughout its history. No cultural traditions – law and orderis the glue that holds society together.

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Law Seminars International | Mastering Complex IP Licensing | 3/9/06-3/10/06 | Fort Lauderdale, FL

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Japan

• Japanese society is trusting, harmonious; we are suspicious, litigious.

• Resort to law in Japan presupposes a total breakdown in socialharmony and is virtually the equivalent of violence. Litigation is always adisgrace.

• Thus, it’s logical that the Japanese don’t like lawyers. Lawyers havean image problem in Japan, to say the least. They are a sign of troubleand low on the totem pole.

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Japan• Lawyers must keep a low profile, as low as possibleand preferably stay out of sight. (Incidentally, this is alsotrue in certain European countries, especially inSwitzerland).

• This is the reverse of their conduct in the U.S. where theyhave to be forceful, even aggressive and confrontational.

• There is no horse-trading in Japan. American-stylehard bargaining produces suspicion and paranoia.

• U.S. lawyers didn’t even get visas from Japan until about the mid-eighties if their reason for traveling to Japan was to depose Japanesenationals or go into law practice.

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Japan- Differences in IP SystemsUNITED STATES JAPAN

Trademark Systems Trademark SystemsEmphasis on use Emphasis on registration

Copyright Systems Copyright SystemsEmphasis on work Emphasis on authorWeak moral rights Strong moral rights

Patents Patents-Exclusive rights to inventors -Utilization by Industry-Offensive purpose -Defensive purpose-Inventor applicant -Company applicant-High filing costs -Low filing costs

Other Differences Other DifferencesMultiple protection Single protectionNo utility models Utility models

.

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JapanCONCLUSION

• In licensing in Japan as well as in China and Koreaand other foreign countries, your objective should not be todrive a hard bargain and write tighter legalistic agreements,but rather to establish better personal and business relationships.

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Law Seminars International | Mastering Complex IP Licensing | 3/9/06-3/10/06 | Fort Lauderdale, FL

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China• Guan Xi (gwan shee)

Inter-personal relationships or personalconnections depending upon context. If A and Bhave good guan xi, they have a good relationship, if A hasgood guan xi he has good social connections.Many economic activities are yet unregulated in China, theyare still subject to the judgment of the person in power.Business persons who have good guan xi with governmentofficials have a much easier time dealing with bureaucraticregulations and procedures.

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China - GianXiExample:Avon, the first registered direct selling company in China,made its way into China through guan xi. Avon sought centralgovernment approval for its direct marketing method and wasturned down. The company turned to David Li, the head ofHong Kong’s Bank of East Asia, who enjoys “cordial” guan xiwith the Chinese government. Under Li’s arrangement, Avonwas successfully introduced to the Bureau of Light Industry insouthern China and subsequently received permission to dobusiness in China.Li received 5% equity as reward. Giving gifts and offeringfavors are the most common techniques for building andmaintaining guan xi.

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Law Seminars International | Mastering Complex IP Licensing | 3/9/06-3/10/06 | Fort Lauderdale, FL

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China- Negotiations• Be aware of differences between

local and Taiwanese people.

• Not always the best relationship betweenChinese and Taiwanese. - In one situation aTaiwanese national passed up a 50% pay increasebecause he could not work with local Chinese boss.

• Chinese negotiators tend to be much more“hard headed.” more “take it or leave it.”

• Taiwanese more likely to negotiate to the nth degree.

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China- Negotiations

• Chinese are atheistic but steeped in Buddhisttradition. It is ingrained in customs and traditions.

• Atheistic society “right” and “wrong” not absolute concepts moralcompass based more on “harmony.” Lie not necessarily a bad thing. IfI haven’t said something bad in a long time, lie may be perfectlyconsistent with maintaining harmony. Lying is wrong only when itdisrupts harmony, not because of morals. Trust but verify. Yournegotiating partner may have been saving up for you.

• Consider what tasks to give to Chinese partners. Not a naturally freethinking society. Difficult to be creative. For example, Chinese partnersmay be great at copying or reproducing designs, not good at creatingnew designs.

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China - Negotiations• Make sure translator is on your payroll.

• If an American employee speaks Chinese or is studying Chinese, sayso.– Companies sometimes bring in employees who speak Chinese and did

not tell Chinese partners, with disastrous results. The Chinese-speakingemployee was blackballed for good.

– During negotiations, Chinese will have what would normally be a “closeddoor” meeting in your presence.

– It is bad form for the Chinese translator, even your own translator, to let youknow what is said.

– Local Chinese translator, even if on your payroll, knows what he/she issupposed to tell you and what is confidential.

– American would not know what is considered “closed door”– Taking unfair advantage by being privy to confidential strategy sessions

disrupts harmony.

• Ask a lot of questions. Be sure your translator is relaying yourmessages the way you see fit. Don’t have your translator involved inyour private sessions.

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China - Culture

• Chinese culture is very reserved.

• It is considered bad form to show emotion. Americanculture tends to be very expressive. This is not proper inChina.

• Being late for an appointment is a serious insult.• Be certain to have a local guide to explain culture and

customs.

• EXAMPLE:tipping can be an insult in China. It is generally not doneamong Chinese people.

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Law Seminars International | Mastering Complex IP Licensing | 3/9/06-3/10/06 | Fort Lauderdale, FL

13

China- Tradition

• Very gracious and generous hosts.

• It is part of Chinese tradition to hostbanquets. It is common during negotiations with foreignersfor the Chinese to host banquets every day.

• Do not relax. These are not social events, they are forbusiness purposes.

• There are many toasts. If you do not drink, you areconsidered insincere.

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China – Gift Giving• Do not open gift in front of giver,

nor expect your gifts to be opened.

• Gifts are presented – even in business context – when youwant to prompt someone to help you. To give a gift createsan imbalance in harmony. The one who receives the gift isobligated to do something to restore harmony.

• It is not proper to reject a gift. The giver loses face.• It is not appropriate to give a gift afterward – as in the U.S.

– as a “Thank you.”

• If giving a set of items, give a set of 6 or 8, not 4. 4 is anunlucky number.

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Law Seminars International | Mastering Complex IP Licensing | 3/9/06-3/10/06 | Fort Lauderdale, FL

14

Latin America

• More formal than U.S.• Dress more formal, conservative, sign of respect• Understated jewelry, colors• First names are for family and close acquaintances.• Use surnames until invited to use first names.• Use “Senor,” Senorita,” “Senora.”• Professional titles important. Use “Doctor,” “Professor”

with surname.• Surnames generally are father’s surname followed by

Mother’s surname. May use both or father’s alone, butnever Mother’s alone. (Second surname sometimesappears as initial in writing.)

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Latin America

• In Brazil they speak Portuguese• Promptness less important, customary to arrive

30 minutes (or more) late.• Acceptable to ask: “La hora inglesa, o la hora

espanol?”• Warm, friendly people – want to get to know you

before getting down to business. Personalrelationship more important than facelesscorporation.

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Leslie J. Lott of Lott & Friedland 18-

Law Seminars International | Mastering Complex IP Licensing | 3/9/06-3/10/06 | Fort Lauderdale, FL

15

Latin America

• Third party introduction – i.e. through bank or consulting firm, may be necessary.• Chile – other countries- January and February are height of summer,

popular vacation times, not best time to do business.• Primary meal at midday. Lunch breaks generally 2 hours. Best

appointment times 10:00 and 3:00• Appropriate to host business guests over dinner in the evening.• Customary for host to make first toast and for guests to respond.• Customary to bring a gift when visiting business colleagues.• Business may move at slow pace, require multiple visits.

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Mexico - Social• Customary to establish personal

relationship with business associates fromabroad.

• U.S. strictly business attitude can beinterpreted as rude/create lack of trust.

• May make Mexican partner feel personally disliked byAmerican.

• Meals important when conducting business.• Quick business lunch with emphasis on efficiency of

doing business, may be interpreted as rejection ofpersonal aspect of partnership.

• Rushing pleasantries can negatively affect businessrelationship.

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Law Seminars International | Mastering Complex IP Licensing | 3/9/06-3/10/06 | Fort Lauderdale, FL

16

Mexico - Legal• Civil law system – based on Roman

law.• Provisions rather strict and formal.• Mistakes made when, e.g. major

stockholder does not have authority to enteragreement or settlement.

• Essential to confirm person signing agreement ormaking commitment has authority to do so.

• No “general” powers of attorney, specific typesfor different situations.

• Get opinion of local counsel.

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Mexico - Legal• Validity of most documents is

dependant on meeting specificformalities such as notarizationor legalization by means of Apostille orotherwise. Necessary to ensure that documentsbear appropriate formality to guaranteeenforceability.

• Generally, document simply signed can be easilynullified by Court on grounds of even minordeficiencies in formalities.

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Leslie J. Lott of Lott & Friedland 18-

Law Seminars International | Mastering Complex IP Licensing | 3/9/06-3/10/06 | Fort Lauderdale, FL

17

Mexico - Legal

• License agreements generally recorded• Different from U.S. practice.• Failure to record can make enforcement

difficult, can result in use of licensee not benefitinglicensor.

• Failure to record may make it difficult to terminatelicense.

• Consider recordal on case-by-case basis with inputfrom local counsel.

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Mexico –Mistakes Americans Make• Failure to understand modus operandi of country.• Tendency to dictate rules.• Reluctance to learn/respect culture.• Lack of respect foreign legal systems.• Arrogance, self-centeredness• Failure to appreciate that English is second language:

– Difficult to understand– Jokes (especially about politics, religion) may be impolite

• Authorities accustomed to formalities, excessive nationalist pride.Closed-minded and do not understand the thinking of sophisticatedbusinessmen. Americans – with typical American approach- getabrupt rejection by Mexican officials.

• Direct approach to officials considered impolite• Point out mistakes, stress failures, address sensitive issues

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Law Seminars International | Mastering Complex IP Licensing | 3/9/06-3/10/06 | Fort Lauderdale, FL

18

Mexico – Example

A Mexican law firm assisted a client – an anti- counterfeiting coalition of software companies–

in setting up a meeting with top government officialsincluding the Minister of Commerce, the Copyright Registrar,the Patent Commissioner and others. After a brief introduction, therepresentative for the association, an American, announcedcomplete frustration with the amount of counterfeiting in Mexico andwith the situation in general. While factual, the presentation, thepresentation triggered a nasty reaction. The Copyright Registrarsnidely invited the representative to read the Mexican Constitution.The Mexican advisors tried to soften the rudeness and lighten thesituation, but the damage was done. The meeting adjourned withnothing accomplished but hard feelings. The impolite approach ofthe Americans gave the Minister of Commerce the opportunity toavoid discussing what was certainly an uncomfortable topic. Theopportunity was lost to discover what the Mexican governmentthought about the problem and how it might be resolved.

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Canada - Law• Register trademarks in Canada

• “Associated marks” must be owned, transferredtogether. Can impair sale of portion of business.May require license. License requires qualitycontrol

• French language required on packaging,marking (if any business done in Quebec).

• Comparative advertising, publicity/privacy rightsdifferent.

• Specific rules regulate food and drugadvertising.

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Leslie J. Lott of Lott & Friedland 18-

Law Seminars International | Mastering Complex IP Licensing | 3/9/06-3/10/06 | Fort Lauderdale, FL

19

Canada - Law

• Patent licenses not muchdifferent from the United States.

• Important to look at scope of claims in country. Don’tassume same as U.S. patent coverage.

• In any cross-border agreement, tax issues become morerelevant – classify what royalties are for, patent, tm,copyright, each may be treated differently for taxpurposes.

• Watch for currency fluctuations/conversion issues.Canadian dollar has gone from $.60 to $.90 in past twoyears.

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Canada - Law

• Copyright – bundle of rights different in Canada than inU.S. – no inherent distribution right, reproduction rights,performance rights different, broadcast signals, etc.

• In Canada, performer has copyright in performance• Industrial designs exist in Canada, not the same as

design patents. Regime for protection differs. Do nothave design patents in Canada. (Same as in Europe)

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Law Seminars International | Mastering Complex IP Licensing | 3/9/06-3/10/06 | Fort Lauderdale, FL

20

Canada - Law• Trademarks –

Need a license – even betweenrelated companies such as parent and subsidiary. Failurecould invalidate registration.

• Need actual control, not just the right to control quality.• Don’t just put terms in license agreement and ignore them.• If goods or ads marked in certain way, presumption of

control. Identify owner, fact that mark is licensed. e.g.“used under license from Coca-Cola, Ltd.”

• Gray market goods – more trade between Ontario aloneand U.S. than with any other U.S. trading partner. Whatabout guy in Seattle, Buffalo, Detroit who will sell toCanada.

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Canada - Social

• Work, perceptions very similar to U.S.• Culture of negotiation, documentation

are the same as U.S.• People in Quebec may insist on French language other than

that, culture very similar.• U.S. “melting pot” vs. Canadian “multi-culturalism”

– reflects what is appropriate in conversation.– Ethnic references, stereotypes, jokes not appropriate.– Aware of “political correctness”

• Quieter, less aggressive. Less up front about what theywant.

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Law Seminars International | Mastering Complex IP Licensing | 3/9/06-3/10/06 | Fort Lauderdale, FL

21

Canada - Social

• Adore hockey• Don’t get American football.• No snobbery about “good schools”• All universities are state funded and cost a

fraction of U.S. universities.• Americans are proud of being American, talk

about the “American” way.• Canadians far less showy of national pride, don’t

wear flags or other symbols of being Canadian.Embarrassing to them.

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Europe

• Dress, manner, demeanor moreimportant than in U.S. They tell people who youare.– No “casual Fridays” in Europe. Sport coat instead of

suit is just that “sport clothes,” not business attire.– Otherwise risk being seen as someone who does not

take his/her business very seriously or has little respectfor people he/she is meeting with.

• Use of first name, unless invited to do so –considered presumptuous and too familiar forbusiness transactions.

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Leslie J. Lott of Lott & Friedland 18-

Law Seminars International | Mastering Complex IP Licensing | 3/9/06-3/10/06 | Fort Lauderdale, FL

22

Europe - Introductions

• U.S. Introductions cursory if at all.• In Europe, introductions very important, follow old rules of

introducing the “less important” or more junior person tothe more senior. For example, “Mr. Owner, I’d like tointroduce you to Ms. Employee.”

• Stand, look the person in the eye, shake hands firmly.• A meeting is not begun until all participants have met.

There may be formal introductions, or each may go aroundthe table introducing himself.

• If you are hosting, be sure introductions are made beforemeeting begins.

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Europe - Structure

• Tend to more traditional,hierarchical structure than U.S.

• Be cautious of pronouncing opinions, suggestionsto others who might “outrank” you. Phrase them interms of suggestions. Be diplomatic.

• Managers are generally more hands-on and directdiscussions more.

• Take responsibility, give credit. Don’t hesitate tocompliment.

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Law Seminars International | Mastering Complex IP Licensing | 3/9/06-3/10/06 | Fort Lauderdale, FL

23

Differences of Opinion

• U.S. practice is to disagree in spiritedarguments. May use strong language and raised voices.

• This is bad form in most European companies. If youdisagree, start with points in common and work toward thedifferences.

• “I agree that this advertising strategy will be expensive,and I understand your concerns that this year’s budgetnumbers will not support extravagance. However, I thinkthat my idea may not cost as much as it might firstappear.”

• Handling differences of opinion in more diplomatic fashionwill be much more effective in Europe. And probably in theU.S. as well.

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Meetings

• In U.S. brief, to the point…abrupt?• Focus on particular problem or agenda item that

people dive right into.• Attendees frequently “multi-task” - Blackberry®• In Europe generally more relaxed: introductions,

start with joke or general discussion, seldomscheduled before 10:00 or after 3:00.

• Time may be spent on ground rules: what ispurpose and expected outcome of meeting?

• Demonstrate interest in speaker by attentiveness,relevant questions.

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Law Seminars International | Mastering Complex IP Licensing | 3/9/06-3/10/06 | Fort Lauderdale, FL

24

Business Dining

• In Europe, meals are not a rushed activity.• No one-hour breakfast or lunch business

meetings.• Do not discuss business immediately.• Let host set tone, pace of meal.• Rule of Thumb:“Do not discuss business before the wine and

cheese.”

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Europe• Value politeness, respect for seniority.• French are not impolite but react badly to people they believe

have no manners.• France, Italy, Spain still have “rules” of behavior, dislike over

familiarity.• Do not expect to be given a drink the minute you walk into a

home or restaurant. It is not done. More leisurely pace.• Americans often disliked for not adapting to local customs,

wanting to do things the “American” way.• Listen more than talk!• Europeans believe that work is a part of life, not all of it. They

expect to have proper lunches. They like to get the difficultparts of negotiations done in private.

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Law Seminars International | Mastering Complex IP Licensing | 3/9/06-3/10/06 | Fort Lauderdale, FL

25

Europe

• Very bad form to make a fuss publicly• Do not assume everyone can speak English well enough

to negotiate without an interpreter.• Do not assume that people are refusing to speak English

just to annoy you.• Understand that European competition law and trademark

law are quite different than in U.S. what you can do in theU.S., you cannot necessarily do in Europe.

• Europeans prefer to license by territory and are reluctantto grant global licenses.

• They are much more clever than you think they are.

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Europe – Advice from London

• Do not assume U.S. law and practice prevail, or that U.S. court orders work in other countries.• Do not assume that agreements without a jurisdiction

clause are restricted to the territories of the licensee (orexclude U.S.)

• Do not assume that U.S. law and the jurisdiction of U.S.courts is necessarily the most favorable.

• Ask before using first names.• Get the dollar/euro/pound rate the right way round.• Check whether marketing and/or legal terminology is

different - or worse – obscene in Europe.

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Law Seminars International | Mastering Complex IP Licensing | 3/9/06-3/10/06 | Fort Lauderdale, FL

26

Europe - Advice from London

• Do not assume that non-English speakers are ascomfortable with English as they appear.

• Do not believe that your travel agent knows where a hotel islocated, or that one airport is as close to town as another.

• Think about the train between London and Paris• Try local beers, food, etc. but don’t be afraid to make a joke

if you really don’t like it• Do not underestimate the reputation of USA’s “can do”

approach• Do not assume that you can visit 3 contacts 200 miles apart

in one day

Lott & Friedland, Miami Florida

Europe - Advice from London

• Do not mistake reserve for rudeness, nor forindifference.

• Example: Londoners are used to most people havingreasons to be in London other than just the project underdiscussion and do not wish to embarrass a guest intorefusing offered hospitality.

• Do not believe self-deprecation – it is usually a sign ofconfidence.

• Do not believe that a European appearance of classinessis necessarily what it seems – it often conceals a lack ofconfidence.

• Do not tell the English how much you like Benny Hillunless truly desperate for a conversational topic.

Lott & Friedland, Miami Florida

Leslie J. Lott of Lott & Friedland 18-

Law Seminars International | Mastering Complex IP Licensing | 3/9/06-3/10/06 | Fort Lauderdale, FL

27

From International Businesswoman

Be sensitive to fact that Americans are notliked very much in many parts of the world.

• Partly due to government’s foreign policy.• Many Americans expect people to be grateful for their

intervention and resent it when people don’t show theirappreciation for what they (we) do in the world.

• Lots of people do not share this view.• Arrogance in thinking American way is the best

way…American way of life, culture, making money.• Many Europeans (less so the British) hate what they

perceive to be the American “money first at the expenseof everything else” approach.

Lott & Friedland, Miami Florida

From International Businesswoman

Americans are perceived to be parochial and narrow in theirperspective and ignorant of the world outside even thewell-heeled and well-traveled.

Example:A romantic walk down by the Thames in London with ahigh-flying New York banker (who travels constantlyaround the world, not that you would know it talking to him)who looked at Big Ben and the Houses of Parliament andsaid it looked very much like Paris! (The romance didn’tlast long?)

Lott & Friedland, Miami Florida

Leslie J. Lott of Lott & Friedland 18-

Law Seminars International | Mastering Complex IP Licensing | 3/9/06-3/10/06 | Fort Lauderdale, FL

28

From International Businesswoman

Advice:• Talk less, listen more to the locals when overseas.• Make no judgments or comments.• Be more relaxed when people make critical comments

about Americans, particularly on foreign policy.• Do some research on and get into the local quirks.

(“Culture is too strong a word.) e.g. always drink alcoholto excess with the Brits, do the same – plus karoke – withthe Japanese, etc. even if it is not your thing.

• Don’t be too pushy. Particularly with Europeans andAsians.

• Be open to new ways of doing things – what is tried andtested in the United States is not always the best inanother country and culture.

Lott & Friedland, Miami Florida

Kingdom of Saudi Arabia• Very warm, hospitable people.• Very open to Americans.• Conservative in dress.• Observe strict Moslem customs:

– Dietary laws– Alcohol, drugs forbidden

• Matter of shame “haram” for man outside immediate familyto meet wife or female family member of another.

• Women not allowed to drive, travel without male familymember, work in professions other than health care,education.

• Important clauses must go into contracts three times.• “Take tea” before business discussions.• Frustrating “ineffeciency” by U.S. standards.

Lott & Friedland, Miami Florida

Leslie J. Lott of Lott & Friedland 18-

Law Seminars International | Mastering Complex IP Licensing | 3/9/06-3/10/06 | Fort Lauderdale, FL

29

Russia

• Must record license for it to bevalid, for use to benefit licensor.

• Easy to get excited about businesstransaction and forget “details” like recordal.

• Can record “short form” rather than completetransaction.

• Recordal also required in China, Thailand

Lott & Friedland, Miami Florida

International Licensing

Cultural andPractical

Considerations

Leslie J. Lott Lott & Friedland Miami, Florida [email protected]