I knew I would miss the seminar on “Licensing Your Brand in The International Market” because my flight would arrive in Las Vegas (Vegas) after the scheduled time for the seminar. Nevertheless, I had prepared to make up for that with an interview I secured with one of the speakers who would present, Attorney Pamela Deese (“Deese” or “Ms Deese”). Deese was no ordinary lawyer. Both in my book and the legal profession’s she is more like a “Rockstar lawyer.”
Who is Pamela Deese and What Makes Her a “Rockstar Lawyer” in My Book?
Deese is a partner in the intellectual property group of Arent Fox LLP in the New York Office. Her practice focuses on intellectual property licensing, brand management, sweepstakes and advertising. She has represented some of the biggest brands in the USA, she is a celebrated author, a speaker and has also received numerous recognitions for her outstanding work in the legal field. An excerpt from her law firm’s website is instructive of her many accomplishments:
“Pam is listed in Who’s Who and has received notable awards, including: International Asset Management –The World’s Leading Patent & Technology Licensing Lawyers (2010), Washington College of Law’s Women in Law Leadership Award (2008), the American University Alumni Recognition Award (2000) as well as the DC Women’s Bar Association Recognition Award for Mentoring (2000).”
I was looking forward to my interview with her!
A little over 4:30pm, the time finally arrived for our interview which was held at the Four Seasons Hotel here in Vegas. I didn’t know what to expect as I had never met Ms. Deese before. But, when she finally arrived, I was pleasantly surprised. Standing at approximately 5ft 10in Deese had an impeccable sense of style, you know the elegant, sophisticated, timeless yet relevant style? Her personal brand “spoke to me” as it stated in unequivocal terms, “I am a woman who has been there, done that and I am not afraid to be myself.” Being herself meant she exuded such confidence, certainty, spoke with wisdom and when she discussed the law, her voice was laced with passion and care. I took it in and drank it all up! Amazing!
What Did We Discuss That Can Help You As You Consider Licensing Your Brand Internationally?
Deese focused on risk reduction when licensing your brand internationally, both from the licensor and licensee perspective. The gist of what we discussed:
- Do your due diligence
- Due diligence means hire private investigator(s), send a license questionnaire to gather as much information as possible because it will guide the kind of terms of agreement you enter into. Your license questionnaire will also ascertain the financial health of the licensee you seek to do business with.
- Your agreement should be specific on what type of currency you seek to be paid in. If USA company, you want to be paid in US dollars. Your agreement should be specific on place and timing of your payments and tax implications.
- Your agreement should include the appropriate audit. Will it be a mail audit? Site audit? Do the sales match the record keeping? What about projections? Audits have become profit centers for Licensors. Licensors always find mistakes. For a Licensee, you want to have a “right to review” the audit. Be sure to have this included in your agreement.
- Choice of law: For U.S companies, the U.S. choice of law is usually what most choose.
- Arbitration clause: That should be an international arbitration clause in your agreement. In addition, as to arbitration, the real issue is that of enforcement. You might have the strongest of language in an agreement but often, given you are doing business overseas, it is very hard to enforce(a judgment once you prevail). International laws, however, now permit you to be able to serve the breaching party overseas and have it enforced in his/her respective country.
- Due diligence is not limited to Licensor. Licensees should do their due diligence. What are the revenues? Support? etc.
- An indemnification clause is also important. In the USA, it is hard to do the licensing business without insurance. However, foreign companies do not necessarily have the insurance so you may be taking a risk where if liability occurs, you will have no insurance company to defend you.
- Immigration Issues: Immigration issues affect who will provide the training and resources to train licensee in licensee’s country and how often it will occur.
- Corruption also an issue. If you are a US company, doing business in a country that can cause you to break the law, particularly criminal law, might not be a good idea, regardless of how much you stand to make.
What is the Future of Licensing, Focusing Specifically on Trends?
- Deese noted in the 80s licensing was driven by children and the need to appeal to them through the film and entertainment industries. Think Disney’s Sleeping Beauty, Snow White etc. From film and entertainment, it transitioned to corporate, publishing, art licensing etc. to now technology and trademark licensing i.e. trademark and patent licensing. Think DVD, Mpeg, SD etc.
- The field is crowded and has become so competitive it has become tougher, particularly for licensors, to license their brands.
- Brands that intend to become licensors in the international markets must create market awareness and have a clear understanding of their brands for it to be successful.
I enjoyed Deese’s attitude and personality; and as I sat down and listened to her, I couldn’t help but wonder what kind of a legal legacy she wanted to leave for the future generations of young lawyers. When people talk about Deese as a lawyer in the legal profession, what did she want them to say about her?
I posed that question to her. She paused. I could see her processing the question. “No one has ever asked me that before,” she said as she continued in a new and pensive tone. “Women need to mentor women,” she answered. “As women professionals, we need to take responsibility of making sure women have the opportunities in future. Women with kids who are groping and trying to find their balance need to know there are women who have done it before; and that they have suggestions that might make things easier. I want to leave a legal legacy of investing in younger women as leaders in the profession.”
-My BB pic with Ms. Deese