FORETHOUGHT - Whyte Hirschboeck Dudek SC
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<strong>FORETHOUGHT</strong><br />
Find opportunities. Anticipate challenges. Plan for the future.<br />
2013
<strong>FORETHOUGHT</strong><br />
Find opportunities. Anticipate challenges. Plan for the future.<br />
2013
FOREWORD
Wasn’t the recent election supposed to bring us some “certainty”<br />
It seems as if things are more uncertain than ever. Our federal government is<br />
continuing to debate tax and spending cuts, health care reform seems headed in<br />
many different directions, job creation is still slower than we’d all like to see, and the<br />
discussion around gun control and mental health is now at the forefront of a national<br />
debate. The world is getting more complicated every day, and the future is only getting<br />
more difficult to navigate.<br />
While we don’t claim to know the future, we are pleased to provide guidance on some<br />
of the legal issues we believe our clients and friends may face in 2013. This is the<br />
third year we’ve produced Forethought, a publication of forward-looking issues from<br />
the attorneys at <strong>Whyte</strong> <strong>Hirschboeck</strong> <strong>Dudek</strong> S.C., and we hope it continues to be a<br />
valuable resource for you.<br />
From how to build a family business legacy, to how informal communications can lead to<br />
an enforceable contractual amendment, to employment considerations during President<br />
Obama’s second term, the 2013 edition covers relevant topics that we think are worth<br />
your time to consider.<br />
Please accept this special publication with our best wishes for a rewarding 2013, and<br />
don’t hesitate to drop me a note at peberle@whdlaw.com to suggest a topic for a future<br />
Forethought edition, or to let me know how we can serve you better. In this time of<br />
uncertainty, you can count on WHD to help you work through the issues and obstacles<br />
you face, and to achieve Client Success.<br />
Sincerely,<br />
Paul J. Eberle<br />
Chief Executive<br />
P.S. Keep in mind that this book was written weeks prior to distribution. Therefore, it<br />
is possible that there are updates to some of the issues mentioned. As always, we<br />
encourage you to consult with your attorney prior to taking any kind of legal action.
TABLE OF<br />
CONTENTS
CORPORATE<br />
9 Expanding Your Business Abroad—A Few Basics<br />
Daniel B. Geraghty<br />
11 Building a Family Business Legacy: The U.S. Economy Depends on Success<br />
Sverre David Roang<br />
FINANCE<br />
14 Dodd Frank Act: A Threat to Mainstream Consumer Credit<br />
Marci VanAdestine and Edward J. Heiser<br />
HUMAN RESOURCES<br />
18 A Bumpy Road Ahead for Employers: Expected Employment Law Developments<br />
During Obama’s Second Term<br />
Frank A. Gumina<br />
21 Punitive Consequences: Uninsured Worker’s Compensation Penalty Claims<br />
Against Employers<br />
Maryeve Heath and Mary Beth Hughes<br />
23 Deferred Action for Childhood Arrivals: What Employers Need to Know<br />
Tiffany L. Hutchens<br />
INTELLECTUAL PROPERTY<br />
26 Take Heed, O Inventor: Beware the Ides of March!<br />
Ted J. Barthel and Thomas J. Pienkos<br />
28 Why are Intellectual Property Notices So Important<br />
Elisabeth Townsend Bridge<br />
LITIGATION<br />
31 Written Contracts are Not Always Set in Stone<br />
Erin M. Keesecker<br />
33 State Venture Capital Bill in the Works<br />
Thomas J. Springer and Gabrielle B. Adams<br />
36 Is it as Easy as Clicking “I Accept” Enforcing Standard Terms in Electronic Sales<br />
Contracts Using “Click-Wrap” Agreements<br />
Karen L. Tidwall and Pamela M. Schmidt<br />
REAL ESTATE/ENVIRONMENTAL<br />
39 Catch the Wave: Wisconsin’s Water Resources Can Provide Opportunities for Businesses<br />
Phillip R. Bower<br />
42 HUD Certification for Condominium Associations: Why Unit Owners Should Care<br />
Daniel J. Miske<br />
44 About the Authors
CORPORATE<br />
8 WHD <strong>FORETHOUGHT</strong>
EXPANDING YOUR BUSINESS<br />
ABROAD—A FEW BASICS<br />
Written by<br />
Daniel B. Geraghty<br />
As technology has made the world<br />
a smaller place, the reasons and<br />
opportunities for doing business abroad<br />
have become commonplace. Whether<br />
the expansion is a marketing strategy, a<br />
manufacturing strategy, a supply strategy,<br />
or tied to another reason, businesses<br />
going abroad must be mindful of<br />
adjustments to the “norm” and to barriers<br />
or obstacles that they may face. A little<br />
“forethought” before making the move will<br />
go a long way toward avoiding problems.<br />
Following are a few basic legal and tax<br />
considerations for doing business abroad.<br />
Legal Barriers and Other<br />
Governmental Regulations<br />
This obvious question needs to be<br />
considered early on in the process. For<br />
example, portable generators that are<br />
made and sold in the United States may<br />
need to be fine-tuned for export to the<br />
United Kingdom. In addition, the model<br />
for selling in the United States—for<br />
example, through independent sales<br />
representatives—may not legally work in<br />
the United Kingdom or be a commonly<br />
accepted business practice.<br />
impose the tax as a back tax at the time<br />
of the sale unless the taxing authorities<br />
“approve” of the sale. On its face, an offer<br />
of no tax for 10 years sounds like a very<br />
attractive reason to expand in Nicaragua.<br />
The reality, which may not be readily<br />
apparent, may be completely different.<br />
Duties and Other Similar<br />
Transaction Taxes<br />
Many times, a duty will be charged on<br />
importing goods to a country. In addition,<br />
other transactional taxes will be imposed<br />
at various points in commerce. It is<br />
essential to understand their potential<br />
application. For example, while not yet<br />
prevalent in the United States, nearly<br />
all countries impose what is known<br />
as a value added tax (VAT). This is a<br />
tax imposed upon a sale of property<br />
throughout the commercial process with<br />
a series of credits that ultimately shift the<br />
burden of tax to the end user. Rates of<br />
20% are not uncommon. If a business<br />
sells to another business it is critical to<br />
understand that a credit is available and<br />
how to obtain the credit.<br />
Cultural Differences<br />
While some countries are markedly<br />
different than the United States, others<br />
are more in line with the ways of doing<br />
business here. Doing business in<br />
Germany, for example, is a relatively<br />
structured and known process. To expand<br />
in Brazil or certain other Latin American<br />
countries, however, is considerably<br />
different and the process can be uncertain<br />
at the start. For example, businesses<br />
expanding in the hospitality industry in<br />
Nicaragua are exempt from income tax<br />
for 10 years. However, if the business is<br />
sold before the 10 years, Nicaragua may<br />
CORPORATE 9
Taxes<br />
The U.S. Tax Code is complicated. Putting<br />
the rules to work with another country’s<br />
tax regime is even more complicated. The<br />
United States has an extensive network<br />
of tax treaties with various countries, with<br />
the general goal of the treaties to eliminate<br />
double taxation. If a business doubles its<br />
profits through international expansion but<br />
its taxes also double, the expansion will not<br />
be considered successful. Spending time<br />
up front to determine a proper structure is<br />
essential to minimizing the impact of two<br />
taxing jurisdictions. The choice of a legal<br />
entity in a foreign country will determine<br />
how the entity is taxed, both in that country<br />
and in the United States. In addition, it is<br />
essential to consider how profits will be<br />
returned to the United States. This could<br />
include such basic questions as how to<br />
capitalize the initial investment, be it debt or<br />
equity, or whether to charge an affiliate for<br />
intellectual property.<br />
Protect Intellectual Property<br />
It goes without saying that moving<br />
intellectual property offshore exposes it<br />
to more risk. The legal issues vary greatly<br />
from country to country and preparation<br />
is essential to protecting the intellectual<br />
property. On the practical side, there<br />
are things a business can do to provide<br />
protection. For example, intellectual<br />
property can be broken into subgroups so<br />
that there is less risk that the intellectual<br />
property will be stolen. Many companies in<br />
China remove all intellectual property from<br />
their computer servers every evening.<br />
Understand the Cloud<br />
Doing business in the “cloud” has become<br />
more and more common. The cloud,<br />
or cloud computing, is a term used for<br />
anything that involves delivering hosted<br />
services over the Internet. While the law<br />
in this area is relatively undeveloped,<br />
having a presence in the cloud raises<br />
many issues. For example, does a<br />
cloud presence create potential liability<br />
in a jurisdiction Will a cloud presence<br />
subject a business to tax Does having a<br />
presence mean the business is required<br />
to comply with various data secrecy laws<br />
applicable in a particular country<br />
Understand Employment Relationships<br />
Many businesses expand initially by<br />
setting up a network of independent<br />
sales representatives in a foreign<br />
jurisdiction. While they may be considered<br />
independent sales representatives in<br />
the United States, it is important to<br />
understand what that relationship is in the<br />
foreign country. For example, if the sales<br />
representative only works for one business<br />
and exclusively sells that company’s<br />
product, that person may be the business’<br />
employee. This could result in an<br />
employment relationship and long-lasting<br />
liability for social taxes and other benefits.<br />
In addition, having an employee in a<br />
foreign country may subject the business<br />
to income tax in that foreign country.<br />
Practice Patience<br />
What is commonplace in the United<br />
States is not in many parts of the world.<br />
For example, nearly any lawyer in the<br />
United States can set up a company and<br />
help open a bank account the same day.<br />
However, in Belgium, the same action can<br />
take a month or more and the client may<br />
be required to personally appear before a<br />
notary or another official.<br />
Prepare for Dispute Resolution<br />
Unfortunately, litigation happens, both<br />
domestically and abroad. It is very<br />
important to establish the forum and<br />
governing law for resolution of any offshore<br />
disputes. Parties typically agree to arbitrate<br />
disputes in a neutral location so that neither<br />
has a “home court” advantage.<br />
Conclusion<br />
Various technological advances have<br />
made doing international business much<br />
more commonplace. As with any new<br />
venture, it is important to fully plan for an<br />
offshore venture. While it is impossible to<br />
plan for every contingency, a well-thoughtout<br />
plan should make a move abroad<br />
more successful. n<br />
10 WHD <strong>FORETHOUGHT</strong>
BUILDING A FAMILY BUSINESS<br />
LEGACY: THE U.S. ECONOMY<br />
DEPENDS ON SUCCESS<br />
Written by<br />
Sverre David Roang<br />
Many families dream of the possibility<br />
of building a business enterprise that<br />
can support and be enjoyed by many<br />
generations of the family. But making<br />
important and sometimes necessary<br />
transitions along the way can be difficult.<br />
Many advisers know the best techniques<br />
to make those transitions in a tax-efficient<br />
and legally beneficial matter, yet it is still<br />
notoriously difficult to maintain a family<br />
business through succeeding generations.<br />
In fact, most businesses do not make<br />
it past two or three generations. “From<br />
shirtsleeves to shirtsleeves in three<br />
generations” is a well-known saying in the<br />
United States that represents this difficulty.<br />
There are similar sayings in cultures around<br />
the world, suggesting that this unfortunate<br />
cycle is a universal human phenomenon.<br />
This cycle must be broken for the good of<br />
the entire economy. An estimated 80% to<br />
90% of the country’s businesses are family<br />
businesses, and an astonishing one-third of<br />
Fortune 500 companies are family owned.<br />
More than 60% of the U.S. gross domestic<br />
product comes from family businesses,<br />
and they employ more than 60% of the<br />
country’s workforce. In other words,<br />
the overall U.S. economy needs family<br />
businesses to thrive.<br />
So, what keeps a succession plan from<br />
being truly “great” Some best practices<br />
have emerged. Here are the top 10<br />
questions every family business should be<br />
asking to reach for long-term success.<br />
1. Do we have an independent board of<br />
directors Time and again, research<br />
has shown that the key to longterm<br />
success for family businesses<br />
from generation to generation is the<br />
establishment of an independent<br />
board. This is a difficult decision<br />
for many entrepreneurs who are<br />
accustomed to running every aspect<br />
of their business, but good business<br />
governance is critical to validate and<br />
bring perspective to the direction of<br />
the business.<br />
2. Do we have an ownership council<br />
Too many family businesses fail<br />
to recognize that the needs and<br />
desires of the business owners often<br />
differ from the needs and desires<br />
of the business. In addition to good<br />
corporate governance, successful<br />
family businesses have established<br />
good governance procedures for the<br />
owners. Sticky issues such as voting<br />
of ownership interests and owner<br />
exits from the business become<br />
far easier with good procedures<br />
established in advance. As the<br />
ownership grows to include far-flung<br />
cousins, these ownership governance<br />
CORPORATE 11
structures become even more critical<br />
to find and maintain the common<br />
interests of the owners.<br />
3. Do we have a family council Many<br />
families who own businesses make<br />
the mistake of doing a great job of<br />
actively governing the business and<br />
ownership issues, but not the family<br />
issues. Each system (family, business<br />
and ownership) deserves active<br />
attention and governance.<br />
4. Have we planned for the financial<br />
capital needs of the business and the<br />
owners Successful business owners<br />
understand capital planning for the<br />
business. However, the liquidity needs<br />
of the owners and the business shift<br />
over time, and successful family<br />
businesses actively plan for these<br />
changes to ensure that the business<br />
has adequate capital to thrive and the<br />
owners realize an adequate return to<br />
live and retire.<br />
5. Do we have a plan to advance the<br />
family’s intellectual capital Education<br />
of the younger generations is critical<br />
to the long-term success and wealth<br />
of the family. Successful families plan<br />
for and demand broad education and<br />
experience from their children and<br />
grandchildren, requiring them to gain<br />
significant work experience outside of<br />
the business before they are allowed<br />
to join the business. Permitting<br />
every family member to join the<br />
business, regardless of education<br />
and experience, is foolhardy, as is<br />
expecting that every family member<br />
will join the business. True success is<br />
found when the passions of a family<br />
member are in line with and can<br />
advance the family business.<br />
6. Are we taking care of our family<br />
In addition to education and<br />
experience, healthy families are more<br />
successful. Therefore, successful<br />
families make sure that all three types<br />
of the family’s capital—financial,<br />
intellectual and human—are<br />
preserved and advancing.<br />
a business is a complex system that<br />
requires work to establish the right<br />
balance among the various interests<br />
(i.e., are we balancing the financial<br />
needs of the founding generation with<br />
the capital needs of the business).<br />
Successful families identify and<br />
actively manage the balance points<br />
among these systems. For example,<br />
who helps the board of directors to<br />
effectively work and communicate<br />
with the business owners<br />
8. Do we have a family constitution<br />
Establishing and writing down a<br />
working family constitution can help<br />
guide decisions that affect each of<br />
the points discussed above. A family<br />
constitution can also be a critical<br />
guide to those who are managing the<br />
business, not to mention the advisers<br />
to the business, to make sure the<br />
business and succession plans<br />
remain aligned with the family values.<br />
9. Are we confident in our team of<br />
advisers Families who must<br />
navigate the process of transitioning<br />
a business can find great value in<br />
having advisers who understand the<br />
unique challenges faced by family<br />
businesses and who are passionate<br />
about helping families thrive. Finding<br />
advisers who enjoy working together<br />
to find creative solutions will bring the<br />
best results.<br />
10. How much time do we think this<br />
will take Successful transitions<br />
of businesses over generations<br />
span decades, and in some cases,<br />
centuries. Decisions made now can<br />
affect many generations, and there is<br />
no simple answer. Rather, each family<br />
must find its own path. This journey<br />
takes time, and successful families<br />
find pleasure in the process, knowing<br />
that they are building a true and<br />
lasting legacy for their family.<br />
The answers to the questions above will<br />
be different for each family, but families<br />
must keep asking them. Doing so will help<br />
lead to true and lasting family wealth. n<br />
7. Do we understand the key balance<br />
points in our family-business system<br />
As noted above, the family who owns<br />
12 WHD <strong>FORETHOUGHT</strong>
FINANCE<br />
FINANCE 13
DODD FRANK ACT:<br />
A THREAT TO MAINSTREAM<br />
CONSUMER CREDIT<br />
Written by Marci<br />
VanAdestine and<br />
Edward J. Heiser<br />
Everyone is aware that one of the main<br />
thrusts of the Dodd-Frank Act (Dodd-<br />
Frank) passed in 2010 was to regulate<br />
Wall Street banking institutions and curtail<br />
so-called abuses to the credit markets<br />
that allegedly were caused by large<br />
banking institutions. Perhaps less known,<br />
however, but certainly of far greater longterm<br />
impact, is Dodd-Frank’s effect on<br />
everyday consumer credit.<br />
Dodd-Frank has created one of the<br />
largest new bureaucracies in years—the<br />
Consumer Financial Protection Bureau<br />
(CFPB)—with virtually unfettered authority<br />
over the consumer credit markets.<br />
The CFPB has, so far, issued literally<br />
thousands of pages of regulations<br />
regarding everyday consumer credit (not<br />
the activities of Wall Street institutions in<br />
the international credit markets).<br />
As much as consumer creditors are<br />
concerned about the ability of the CFPB<br />
to issue myriad regulations in connection<br />
with almost every aspect of consumer<br />
credit, of more concern, perhaps, is<br />
the small, but loud, chorus advocating<br />
that the CFPB has the mandate to take<br />
virtually any action to prevent creditors<br />
from “committing or engaging in an unfair,<br />
deceptive, or abusive act or practice”<br />
in connection with consumer credit<br />
transactions, according to Section 1031 of<br />
Dodd-Frank.<br />
The prohibition of “unfair” and “deceptive”<br />
acts or practices is not new; indeed those<br />
in the financial services industry (and<br />
other industries as well) long ago shorthanded<br />
this doctrine as UDAP (Unfair and<br />
Deceptive Acts or Practices). “Abusive,”<br />
however, is an entirely new, and largely<br />
undefined, standard.<br />
Two Views: Changing UDAP<br />
to UDAAP—Finding Meaning<br />
in the Extra “A”<br />
Position of Some Consumer Debtor Advocates.<br />
Some consumer debtor advocates argue<br />
for a broad, paternalistic definition of the<br />
“abusive” standard. As a general matter,<br />
they argue that the standard must be<br />
malleable and broad enough to apply to<br />
every situation in which existing statutes<br />
do not accomplish the purpose that they<br />
identify as “consumer protection.”<br />
The problem with this approach, of course,<br />
is that what constitutes “consumer abuse”<br />
or “consumer protection” would strictly be<br />
in the eye of the beholder. More importantly,<br />
if such an approach were adopted, there<br />
would be no objective legal standard<br />
against which consumer creditors would<br />
be able to accurately measure their acts<br />
or practices to determine their compliance<br />
with the standard. Should the abusive<br />
standard be interpreted and implemented<br />
as broadly as consumer debtor scholars<br />
would like, it could have immediate as<br />
well as long-ranging effects on every<br />
provider of consumer credit—ranging from<br />
Main Street-type installment creditors to<br />
depository institutions, such as banks and<br />
credit unions.<br />
Abusive Conduct Should Have a High<br />
Threshold. The standard should not be<br />
so broadly defined. If it is, it will give the<br />
CFPB unprecedented, and unchecked,<br />
powers to tamp down on credit activity<br />
that is currently considered lawful under<br />
state and federal law. In Wisconsin,<br />
for example, there are no interest rate<br />
maximum limits. The Wisconsin Legislature<br />
decided in 1984 that the marketplace<br />
and competition should determine credit<br />
prices. To adopt a malleable standard<br />
might enable the CFPB to overturn the<br />
Wisconsin Legislature’s decision by<br />
determining that finance charges over<br />
14 WHD <strong>FORETHOUGHT</strong>
a certain annual percentage rate would<br />
be considered abusive. Similarly, such a<br />
standard could allow the CFPB to decide<br />
that certain creditors should not be able to<br />
offer additional products in connection with<br />
its loan product offerings, just because it<br />
considers the additional product abusive.<br />
Without a clear understanding of what the<br />
abusive standard means, creditors would<br />
understandably be hesitant to offer new<br />
credit products.<br />
Indeed, implementation of a standard<br />
based on some undefined concept of what<br />
is abusive could have devastating effects.<br />
Dodd-Frank Contemplates a Narrow Definition<br />
of “Abusive” Acts. The better position is that<br />
the broad and malleable definition outlined<br />
above is not warranted by the language<br />
of Dodd-Frank. Simply put, the abusive<br />
standard is circumscribed by Dodd-Frank,<br />
and should be narrowly defined by the<br />
CFPB in its enforcement policies.<br />
The only new element that the statutory<br />
definition of abusive adds (above and<br />
beyond what unfair and deceptive bring<br />
to the table) relates to a consumer’s<br />
understanding of the material risks,<br />
costs, or conditions of a product or<br />
service. Without committing an unfair or<br />
deceptive act or practice (which is already<br />
prohibited), a creditor acts “abusively”<br />
when it either (1) materially interferes<br />
with a consumer’s ability to understand<br />
a financial product; or (2) recognizes<br />
that a prospective borrower does not<br />
understand the material risks, costs, or<br />
conditions of the product or service (e.g.,<br />
a consumer with a discernible incapacity,<br />
such as not speaking English or being<br />
mentally challenged) and with that<br />
knowledge, commits an act or practice<br />
that takes unreasonable advantage of<br />
the prospective borrower’s known lack<br />
of understanding.<br />
With these statutory definitions in mind,<br />
there are several standards that the<br />
CFPB should heed in interpreting and<br />
implementing the abovementioned<br />
abusive “add-on” to its power. These<br />
standards are not new concepts, but<br />
are rather reiterations of fundamental<br />
(and reasonable) concepts of law. The<br />
importance of expressly tying them to<br />
the CFPB’s enforcement policies of the<br />
abusive standard, however, should not be<br />
considered unimportant. Following these<br />
standards will ensure an interpretation and<br />
implementation of the abusive standard<br />
that is consonant with the definitions of<br />
abusive as set forth in Dodd-Frank, and<br />
FINANCE 15
further, will ensure that the CFPB does<br />
not put an abusive strain on consumers’<br />
access to competitive credit.<br />
• Compliance with existing laws should<br />
establish that an act or practice is<br />
not abusive. Following laws that are<br />
considered, debated and ultimately<br />
passed by lawmakers establishes<br />
that a creditor is not acting abusively.<br />
For example, a creditor’s compliance<br />
with the Truth in Lending Act means<br />
that the creditor’s disclosures cannot<br />
be abusive.<br />
• A creditor’s “scienter” matters. The<br />
definition of abusive includes an<br />
indicia of conscious intent. Therefore,<br />
a creditor unintentionally committing<br />
an act or practice cannot be abusive.<br />
• Whether an act or practice is abusive<br />
must be evaluated from a “reasonable<br />
person’s” viewpoint. If a reasonable<br />
person were able to understand the<br />
financial service product or service,<br />
no abusiveness has occurred. In other<br />
words, the abusive standard should<br />
not be evaluated from the perspective<br />
of the least sophisticated consumer.<br />
• Quantifiable injury must be present.<br />
Hypothetical or de minimus injury<br />
to consumers cannot establish<br />
abusiveness. An act or practice that<br />
might cause an unwanted outcome,<br />
but never has, ought not to be<br />
automatically considered abusive so<br />
that the act or practice is prohibited<br />
even though, in practice, it is often a<br />
benefit to customers.<br />
We have been on the forefront with<br />
several consumer credit related trade<br />
organizations for the establishment of<br />
a high-threshold, narrow definition of<br />
what constitutes abusive conduct. We<br />
are hopeful that the CFPB will adopt<br />
this definition so as not to hinder future<br />
development in our vibrant consumer<br />
credit marketplace. n<br />
16 WHD <strong>FORETHOUGHT</strong>
HUMAN<br />
RESOURCES<br />
HUMAN RESOURCES 17
A BUMPY ROAD AHEAD FOR<br />
EMPLOYERS: EXPECTED<br />
EMPLOYMENT LAW<br />
DEVELOPMENTS DURING<br />
OBAMA’S SECOND TERM<br />
Written by<br />
Frank A. Gumina<br />
The federal elections of Nov. 6, 2012<br />
resulted in a continuation of gridlock<br />
government, whereby the Democrats<br />
continue to control the presidency and<br />
Senate (without a supermajority to end<br />
filibusters) and the Republicans have<br />
control over the House of Representatives.<br />
While initial post-election commentary was<br />
at least somewhat conciliatory from both<br />
parties, significant polarization still exists<br />
and compromise on critical issues will be<br />
challenging. Any new sweeping legislative<br />
changes on the employment law front<br />
appear dead-on-arrival; however, the<br />
executive branch, through federal agency<br />
rulemaking and administrative decisions,<br />
wields a powerful hand. Employers can<br />
expect aggressive efforts by these federal<br />
agencies to alter the existing employment<br />
law landscape.<br />
Affordable Care Act Compliance<br />
With President Obama’s re-election, the<br />
Affordable Care Act (ACA) (also termed<br />
by some as “ObamaCare”) appears here<br />
to stay. The law was passed in 2010 and<br />
upheld by the U.S. Supreme Court in June<br />
2012. Employers will need to ramp up<br />
efforts to comply with the “play or pay”<br />
and other mandates of the ACA. In 2013,<br />
we are likely to see the implementation<br />
of complex regulations interpreting<br />
and providing additional requirements<br />
under the ACA. There is no doubt that<br />
compliance with the ACA will be the single<br />
largest challenge facing employers this<br />
coming year.<br />
More Aggressive Federal<br />
Employment Agencies<br />
Federal agencies such as the National<br />
Labor Relations Board (NLRB),<br />
Department of Labor (DOL) and Equal<br />
Employment Opportunity Commission<br />
(EEOC) have considerable rule-making<br />
and other power to change existing<br />
rules affecting the employee-employer<br />
relationship. During President Obama’s<br />
first term, we saw these agencies begin to<br />
take strides to implement pro-employee<br />
rules, but such efforts often met strong<br />
resistance in the courts, followed by a<br />
noticeable pull-back during the months<br />
preceding the November 2012 federal<br />
elections. In 2013, we will most certainly<br />
see a resurgence of federal agency<br />
rule-making and litigation tactics in the<br />
employment arena.<br />
NLRB<br />
No agency has been, or most likely will<br />
be, more aggressive in the coming years<br />
than the NLRB. The president controls<br />
majority appointments to the NLRB.<br />
President Obama has not been shy about<br />
appointing union faithfuls with zealous<br />
agendas. In 2012, the NLRB sought to<br />
expand its sphere of influence beyond<br />
the unionized workplace to all workplaces<br />
with numerous decisions attacking atwill<br />
employment, off-duty workplace<br />
access rules, policies prohibiting walking<br />
off the job, confidentiality during internal<br />
investigations, and social media policies.<br />
In 2013, we can expect the NLRB to<br />
continue its campaign of reaching out to<br />
non-union workers, making them aware<br />
18 WHD <strong>FORETHOUGHT</strong>
of their rights under the National Labor<br />
Relations Act. In addition, the NLRB will<br />
undoubtedly attempt to resurrect “ambush<br />
election” rules, greatly diminishing the time<br />
frame for union elections and effectively<br />
eviscerating employers’ opportunities<br />
to express views on union representation.<br />
These expected new election rules, along<br />
with the most recent micro-unit rules<br />
(whereby smaller bargaining units may<br />
be deemed appropriate for a portion of<br />
the workplace), will certainly empower<br />
union organizing.<br />
DOL<br />
The DOL will also seek to more stridently<br />
prosecute the laws it enforces. Recently,<br />
the DOL entered into a cooperative<br />
alliance with the Internal Revenue<br />
Service to more aggressively go after<br />
companies that misclassify workers as<br />
independent contractors. A company<br />
utilizing independent contractors may face<br />
not only one audit, but multiple federal<br />
and state agency audits under a crossreporting<br />
arrangement between federal<br />
agencies and certain states.<br />
It is also expected that the DOL will<br />
rekindle its efforts to issue wage and hour<br />
recordkeeping rules forcing employers<br />
to provide salaried exempt employees<br />
with information on their pay and how it<br />
is calculated. If an employee is deemed<br />
exempt from the overtime pay requirements<br />
by his or her employer, these proposed<br />
DOL rules would require the employer<br />
to (1) perform a classification analysis;<br />
HUMAN RESOURCES 19
(2) disclose the analysis to employees;<br />
and (3) retain the analysis for government<br />
inspection. Such requirements would<br />
certainly lead to increased audits and wage<br />
and hour litigation.<br />
EEOC<br />
The EEOC is in the process of finalizing its<br />
Strategic Enforcement Plan (SEP). Under<br />
its SEP, the EEOC will focus on systemic<br />
discrimination, especially in recruitment and<br />
hiring, zeroing in on background checks,<br />
pre-employment testing and those hiring<br />
practices having a disparate impact on<br />
protected groups. The SEP also has the<br />
EEOC focusing on emerging legal issues<br />
under the Americans With Disabilities Act,<br />
such as fixed leave of absence policies,<br />
100% healed policies (before returning<br />
employees to work) and forced unpaid<br />
leave for pregnant employees, as well as<br />
discrimination against homosexual and<br />
transgender individuals.<br />
Recommendations<br />
While the challenges facing employers<br />
under the second Obama administration<br />
are many, there are steps employers should<br />
take to ensure they are not blindsided:<br />
1. Companies need to assign a point<br />
person (usually someone from Human<br />
Resources) to educate themselves<br />
and be vigilant in monitoring emerging<br />
employment law trends and nimbly<br />
changing policies and/or practices to<br />
meet the challenges.<br />
2. Management and supervisory training<br />
on emerging trends, as well as<br />
solid “blocking and tackling” human<br />
resource skills, will be even more<br />
critical to avoid troubling legal issues.<br />
We will undoubtedly see an expansion of<br />
individual employee rights in the workplace<br />
in the coming years under the second<br />
Obama administration. Those employers<br />
armed with timely information and the<br />
ability to quickly adapt will have the<br />
greatest chance of avoiding troublesome<br />
legal claims. n<br />
20 WHD <strong>FORETHOUGHT</strong>
PUNITIVE CONSEQUENCES:<br />
UNINSURED WORKER’S<br />
COMPENSATION PENALTY<br />
CLAIMS AGAINST EMPLOYERS<br />
Written by<br />
Maryeve Heath and<br />
Mary Beth Hughes<br />
2013 is here and, unfortunately,<br />
the economic outlook is not much<br />
better than 2012. One of the biggest<br />
consequences for employers in the<br />
worker’s compensation arena is an<br />
increase in the value of worker’s<br />
compensation claims. There are a number<br />
of ways this occurs, but one of the most<br />
dangerous and potentially overlooked<br />
ways is through penalty claims pursued<br />
directly against employers. There are<br />
four different penalty claims an employee<br />
may pursue against his or her employer,<br />
all of which are uninsurable under a<br />
worker’s compensation policy. This means<br />
the employer bears the full burden of<br />
defending the claim, including hiring an<br />
attorney and paying its own defense<br />
costs, as well as paying for any judgment<br />
or settlement. It is important to note,<br />
however, that the employee may only<br />
prevail in any of these claims after proving<br />
the existence of a compensable, workrelated<br />
injury. Following are descriptions of<br />
the potential penalty claims that may be<br />
pursued by an injured employee.<br />
1. Bad Faith: Wisconsin Statutes<br />
§ 102.18(1)(bp)<br />
If the employer (or insurance carrier)<br />
suspends, terminates, fails to make<br />
payments or fails to report an injury as a<br />
result of malice or bad faith, the penalty is<br />
200% of compensation, including medical<br />
expenses, up to a maximum of $30,000 for<br />
each act of bad faith. The Department of<br />
Workforce Development (DWD) regulation,<br />
§ DWD 80.70, defines “malice or bad<br />
faith” in two ways: (1) where the employer<br />
unreasonably refuses or unreasonably fails<br />
to report an alleged injury to its worker’s<br />
compensation carrier; or (2) where the<br />
self-insured employer or insurance carrier<br />
unreasonably fails to make payment or<br />
unreasonably suspends or terminates<br />
payments without credible evidence<br />
demonstrating that the claim for payments<br />
is fairly debatable. Under Wis. Stat. §<br />
102.22(1), the “delayed payment penalty”<br />
statute, if the employer or insurance carrier<br />
“inexcusably” fails to pay, a penalty of<br />
10% of the delayed compensation can be<br />
awarded. The two penalties may not be<br />
awarded concurrently.<br />
2. Unreasonable Refusal to Rehire:<br />
Wisconsin Statute § 102.35(3)<br />
If an employee sustains a work-related<br />
injury and the employer refuses to rehire<br />
that employee without reasonable cause,<br />
where suitable employment is available<br />
within the employee’s physical and<br />
mental limitations, the employer may<br />
have exclusive liability to pay the wages<br />
lost during the period of refusal, with a<br />
maximum exposure of one year’s wages.<br />
Yet, the Worker’s Compensation Act does<br />
not require the employer to create a job.<br />
The statute also applies to the situation<br />
where an employee is hired back to work<br />
by the employer, but is subsequently<br />
terminated. When the employer<br />
determines its duty to bring an employee<br />
back to work after a work-related injury,<br />
it should not overlook the employer’s<br />
obligations under the Family and Medical<br />
Leave Act, Americans With Disabilities<br />
Act, and Wisconsin Fair Employment Act.<br />
3. Violation of Safety Provisions:<br />
Wisconsin Statutes § 102.57<br />
If an injury is caused by the failure of the<br />
employer to comply with any statute,<br />
HUMAN RESOURCES 21
ule or order of the DWD, compensation<br />
and death benefits shall be increased by<br />
15%, not to exceed $15,000. Yet, there<br />
must be a causal relationship between<br />
the violation and the injury incurred. This<br />
includes injuries caused by failure to<br />
follow Occupational Safety and Health<br />
Administration (OSHA) regulations or<br />
where the employer failed to provide a<br />
safe place of employment as determined<br />
under Wis. Stat. § 101.11 (Safe Place<br />
Statute). The DWD may likewise reduce<br />
compensation for the failure of an<br />
employee to follow the same safety<br />
statutes, rules or orders. However, it is<br />
much more common for the DWD to<br />
assess a penalty against the employer<br />
than against the employee.<br />
4. Minor Illegally Employed:<br />
Wisconsin Statutes § 102.60<br />
When an injury is sustained by a minor<br />
illegally employed, compensation shall<br />
be doubled, up to a maximum of $7,500,<br />
if the employee does not have a written<br />
work permit; triple the compensation,<br />
up to a maximum of $15,000, is paid<br />
if the minor is working at prohibited<br />
employment. The penalty is not paid to<br />
the minor, but rather is paid into the state<br />
Supplemental Benefit Fund.<br />
Practical considerations for dealing<br />
with potential penalty claims:<br />
• Take all reports of work injuries<br />
seriously and complete the required<br />
reporting forms.<br />
• Consult with legal counsel during<br />
any OSHA investigation or state<br />
investigation into a safety violation<br />
claim or claim that the employer<br />
illegally employed a minor.<br />
• With regard to “unreasonable refusal<br />
to rehire” claims, consider that the<br />
employer must prove the failure to<br />
rehire or termination was: (1) “fit, fair<br />
and just under the circumstances”;<br />
(2) the result of an inability to provide<br />
work suited to the employee’s<br />
physical and mental limitations; or (3)<br />
the result of a seniority provision in a<br />
collective bargaining agreement.<br />
• With regard to safety violation claims,<br />
keep in mind that the DWD–Worker’s<br />
Compensation Division is likely to<br />
adopt any findings of OSHA after a<br />
work-related accident. This is another<br />
reason for taking OSHA inspections<br />
seriously.<br />
• The Wisconsin statute of limitations<br />
is 12 years and generally runs from<br />
the date that compensation was last<br />
paid, so an employee may file any<br />
of these claims for some time after<br />
an employer may think the case is<br />
closed.<br />
• A settlement agreement and general<br />
release of employment claims cannot<br />
extinguish the right of an employee<br />
to bring any of the above penalty<br />
claims against an employer. The only<br />
way to relieve the potential liability for<br />
any worker’s compensation claim,<br />
including the penalty claims, is to<br />
enter into a Compromise Agreement<br />
that is approved by the DWD–<br />
Worker’s Compensation Division. n<br />
22 WHD <strong>FORETHOUGHT</strong>
DEFERRED ACTION FOR<br />
CHILDHOOD ARRIVALS: WHAT<br />
EMPLOYERS NEED TO KNOW<br />
Written by<br />
Tiffany L. Hutchens<br />
The Obama administration’s deferred<br />
action for childhood arrivals (DACA)<br />
program could grant a path for more<br />
than 1 million unauthorized immigrants<br />
to legally join the workforce. However,<br />
employers who know that an employee<br />
is applying for DACA relief may be at risk<br />
of violating federal immigration law. These<br />
risks may be mitigated by formalizing the<br />
employment verification letter request<br />
process. This will limit an employer’s<br />
knowledge that an employee is currently<br />
unauthorized and applying for DACA relief.<br />
What is DACA<br />
DACA provides temporary relief from<br />
possible deportation and allows successful<br />
applicants to obtain employment<br />
authorization. DACA applicants, by their<br />
very nature, are not legally authorized to<br />
work in the United States. Immigrants who<br />
came to the United States as children and<br />
meet the following requirements may be<br />
eligible for DACA relief:<br />
1. Came to the United States before<br />
turning 16 years of age;<br />
2. Demonstrate at least five years<br />
of continuous presence as of<br />
June 15, 2012;<br />
3. Are under 31 years of age;<br />
4. Are enrolled in school, have either<br />
graduated from high school, passed a<br />
GED test, or served honorably in the<br />
armed forces of the United States; and<br />
5. Do not have any serious criminal history.<br />
Applicants are required to prove these five<br />
elements with supporting documentation.<br />
Employment verification letters or paystubs<br />
may be requested by applicants to<br />
demonstrate the second element—that<br />
they have been in the United States for five<br />
continuous years prior to June 15, 2012.<br />
What are an Employer’s Risks<br />
Federal immigration law prohibits<br />
employers from knowingly hiring someone<br />
who is not authorized to work. Civil and<br />
criminal liability may attach to an employer<br />
who knowingly employs unauthorized<br />
workers. An employer’s “knowledge” may<br />
be actual or constructive, and in the DACA<br />
context, it will attach when an employee<br />
asks an employer about how to apply<br />
for the DACA program or requests proof<br />
of employment for DACA purposes. It is<br />
important to note that not every request<br />
for an employment verification letter<br />
implicates immigration law. There are<br />
many reasons why someone may need<br />
to verify employment with an employer,<br />
and a simple request for confirmation of<br />
employment dates with no mention of the<br />
DACA program should not raise a red flag<br />
for employers. Furthermore, employers<br />
should not rush to judgment regarding<br />
an individual’s immigration status if talk<br />
of DACA is heard around the workplace.<br />
However, if an individual specifically<br />
requests employment verification for<br />
DACA purposes, an employer is deemed<br />
to have knowledge that the individual is<br />
not work authorized.<br />
While many employers may be compelled<br />
to help an employee gain temporary<br />
relief from deportation and lawfully join<br />
the workforce, the knowledge gained<br />
regarding an employee’s illegal status<br />
exposes the employer to potential liability<br />
for the employment of unauthorized<br />
workers. Employers who know that a<br />
current employee is applying for DACA<br />
relief because he or she is not authorized<br />
to work in the United States will have<br />
to fire the employee or face liability for<br />
violating immigration laws.<br />
HUMAN RESOURCES 23
Will Employers be Subject to<br />
Immigration Enforcement Actions<br />
Individual DACA applications have<br />
been assured by the U.S. Citizenship<br />
and Immigration Services (U<strong>SC</strong>IS) that<br />
information used in their applications<br />
will not be used against them; however,<br />
employers have not been afforded the<br />
same guarantee. U<strong>SC</strong>IS has stated that<br />
information from employers will not be<br />
shared with Immigration and Customs<br />
Enforcement for civil immigration<br />
enforcement purposes unless there is<br />
evidence of egregious violations of criminal<br />
statutes or widespread abuses. It is not<br />
yet clear what constitutes an egregious<br />
violation or widespread abuse, and only<br />
time will tell.<br />
What Should Employers Do<br />
What if an Employee Presents a New<br />
Work Authorization Document<br />
As DACA applications are approved,<br />
employers may find that current<br />
employees who employers reasonably<br />
believed to be work authorized at the time<br />
of hire, present new work authorization<br />
documents after DACA approval.<br />
Employers should know that they may<br />
continue to employ a worker who<br />
previously presented false documents or a<br />
different identity so long as the original, yet<br />
false, documents reasonably appeared, at<br />
the time of hire, to be valid and related to<br />
the individual.<br />
For employers with honesty policies,<br />
the result may not be the same. An<br />
employee who presents a new valid<br />
work authorization document pursuant<br />
to DACA, may have previously presented<br />
false documents during the hiring process.<br />
Employers with an honesty policy need to<br />
consider any risk of retaining the employee<br />
if the employer typically terminates<br />
employees who materially lie in the<br />
application process.<br />
Employers should set up a formal,<br />
automatic process for employees to<br />
request employment verification letters.<br />
For example, employees may be<br />
instructed to complete a written request<br />
form that does not inquire about the<br />
intended use of the letter. Employers that<br />
implement such a practice will avoid both<br />
the employee providing a reason for the<br />
request and a verbal interaction where<br />
the reason for the request might come up<br />
during a conversation.<br />
Key Takeaways<br />
• DACA relief may benefit employers<br />
by expanding the workforce, but the<br />
program poses risks to employers.<br />
• Employers may not “knowingly”<br />
employ unauthorized workers.<br />
• An employer may gain knowledge<br />
that an employee is unauthorized<br />
to work if the employee requests<br />
assistance from an employer during<br />
the DACA application process.<br />
• Employers should create formal<br />
employment verification letter request<br />
protocols to avoid gaining knowledge<br />
that an employee is applying for<br />
DACA relief. n<br />
24 WHD <strong>FORETHOUGHT</strong>
INTELLECTUAL<br />
PROPERTY<br />
INTELLECTUAL PROPERTY 25
TAKE HEED, O INVENTOR:<br />
BEWARE THE IDES OF MARCH!<br />
Written by<br />
Ted J. Barthel and<br />
Thomas J. Pienkos<br />
In 44 B.C., the Ides of March witnessed<br />
the end of Julius Caesar. This year, 2013<br />
A.D., the Ides of March will bring an end to<br />
the “first-to-invent” principle of U.S. patent<br />
law—a paradigm that has been a hallmark<br />
to U.S. inventions for more than 200 years.<br />
Currently, the U.S. patent system is based<br />
on a unique first-to-invent doctrine, which<br />
means that the inventor who first conceived<br />
of the invention is considered the first<br />
inventor and is entitled to patent protection.<br />
Countries in the rest of the world,<br />
however, have patent systems based on a<br />
“first-to-file” doctrine, where the patent is<br />
granted to the inventor who is the first to<br />
file a patent application, regardless of the<br />
date of invention.<br />
After March 15, 2013, the America Invents<br />
Act (AIA) will transform the U.S. patent<br />
system from the first-to invent system to<br />
a “first-inventor-to file” (FITF) system. A<br />
policy behind the AIA is to harmonize U.S.<br />
patent law with the rest of the first-to-file<br />
patent world. Note that the AIA does not<br />
transform the United States to a true firstto-file<br />
patent system in which the person<br />
first to the patent office prevails. Under the<br />
FITF system, a one-year grace period is<br />
provided for filing a patent application after<br />
a public disclosure by the inventor.<br />
AIA Will Greatly Expand Prior Art<br />
After March 15, 2013, the AIA will<br />
also greatly expand the universe of<br />
“prior art”—i.e., publications and other<br />
information which can be used to prevent<br />
grant of a patent application. The AIA<br />
changes the language of 35 U.S.C. § 102<br />
to encompass a much broader range<br />
of material that can be used by the U.S.<br />
Patent and Trademark Office (USPTO) to<br />
bar a patent from being issued.<br />
To prepare for the dramatic changes<br />
coming with the Ides of March, savvy<br />
innovators may wish to consider the<br />
following measures.<br />
1. File patent applications on any<br />
inventions by March 15, 2013, if not<br />
sooner. Applications filed by March<br />
15, 2013 will be grandfathered under<br />
26 WHD <strong>FORETHOUGHT</strong>
the current first-to-invent system<br />
and the narrower definition of prior<br />
art. Another advantage: Filing by<br />
March 15, 2013 can extend the<br />
first-to-invent system for years<br />
into the future. A chain of one or<br />
more continuation/divisional patent<br />
applications claiming priority to an<br />
application with an effective filing date<br />
on or before March 15, 2013, will also<br />
be grandfathered under the current<br />
first-to-invent system.<br />
2. Prepare for the new regime. After<br />
March 15, 2013, the race to the<br />
USPTO begins. Under the new FITF<br />
system, an inventor who waits to file<br />
an application may risk losing his or<br />
her patent rights to an inventor who<br />
invented later, but filed first. The AIA<br />
will place added incentive to file a<br />
patent application in order to merely<br />
prevent others from patenting one’s<br />
own invention.<br />
3. Maintain good records. The AIA brings<br />
new impetus for documenting<br />
research and development activities.<br />
Accurate lab notebooks may be relied<br />
upon to show first invention by the<br />
inventor that occurred within the oneyear<br />
grace period. Maintaining good<br />
records can be used to overcome<br />
third-party prior art to a later-filed<br />
application. Strong research records<br />
may prove essential in the AIA’s new<br />
derivation proceeding—a procedure<br />
whereby a “true inventor” can<br />
challenge and prevent one who took<br />
(stole or “derived”) his or her invention.<br />
Finally, a well-implemented<br />
recordkeeping protocol may deter<br />
departing employees, consultants, or<br />
joint venture partners from attempting<br />
to obtain patents on the company’s<br />
own innovations.<br />
4. Harvest valuable patent rights. Good<br />
recordkeeping can also be a valuable<br />
foundation for methodical evaluation<br />
of innovations. Regularly assessing<br />
key innovations will speed up the<br />
patent filing process, which is vital<br />
under the new AIA patent regime.<br />
A committee of decision-makers,<br />
charged with harvesting valuable<br />
patent rights, and assisted by patent<br />
counsel advising on patentability and<br />
third-party risk, can efficiently identify<br />
patent assets worth protecting before<br />
valuable rights are lost.<br />
The AIA and its new paradigm will<br />
have profound implications for patent<br />
stakeholders. Taking proactive steps<br />
now—and after March 15, 2013—will help<br />
to ensure that patent rights are maximized.<br />
Innovators: Do not fear, but take heed,<br />
and beware the Ides of March! n<br />
INTELLECTUAL PROPERTY 27
WHY ARE INTELLECTUAL<br />
PROPERTY NOTICES SO<br />
IMPORTANT<br />
Written by<br />
Elisabeth Townsend Bridge<br />
Why do intellectual property (IP) lawyers<br />
encourage their clients to “clutter up” their<br />
marketing materials, product packaging<br />
and websites with patent, trademark and<br />
copyright notices Don’t they know that<br />
such notices detract from the important<br />
product messages conveyed to customers<br />
Properly using and monitoring IP notices<br />
on advertising and packaging materials<br />
can be troublesome for IP owners and<br />
distract from marketing messages.<br />
However, such notices are crucial to<br />
protecting IP assets, and proper notice<br />
can have substantial deterrence value.<br />
An IP owner does not want to discover<br />
too late that its failure to put proper IP<br />
notices on product or packaging has<br />
severely limited or blocked its right to<br />
recover damages for infringement. Patent,<br />
trademark and copyright notices are<br />
critical to the enforcement of ownership<br />
rights and the recovery of damages for<br />
infringement of those rights.<br />
Patents<br />
Patents include plant patents, design<br />
patents and utility patents. The notice<br />
“patent pending” may be used on a<br />
product embodying the invention after a<br />
patent application has been filed. Once<br />
the patent is issued, the patent owner<br />
may amend the notice to recite the patent<br />
number in the following manner: “patent”<br />
or “pat.” and the patent number.<br />
As an alternative, the patent owner can<br />
recite “patent” or “pat.” and display an<br />
Internet address where the product<br />
is associated with the relevant patent<br />
number(s). This approach can make it<br />
easier for the IP owner to update notices<br />
efficiently since updates are consolidated<br />
in one location and packaging and<br />
product materials do not have to be<br />
modified individually.<br />
If the patent owner fails to mark its<br />
product with proper notice, according to<br />
United States Code § 287, “no damages<br />
shall be recovered by the patentee in any<br />
action for infringement…except damages<br />
for infringement after receipt of actual<br />
notice.” Since substantial monetary<br />
damages may accrue as a result of<br />
infringement prior to a cease and desist<br />
demand letter (or other actual notice), it<br />
is important to consistently use proper<br />
notice on products in association with<br />
relevant patent numbers.<br />
Trademarks<br />
The trademark symbols and ® are<br />
methods used by trademark owners<br />
to communicate their claim of rights to<br />
the general public. There is no absolute<br />
requirement that a trademark owner<br />
provide notice of its claim of rights in<br />
marks on product packaging or advertising<br />
materials under U.S. law. However, the<br />
use of trademark symbols is advisable<br />
because they provide notice of the claim of<br />
rights in the mark and they have substantial<br />
deterrence value. Although the symbol<br />
has no statutory significance, it is generally<br />
recognized to signify a claim of common<br />
law rights in the mark.<br />
The ® symbol, in contrast, should always<br />
be used with marks associated with<br />
a viable trademark registration and is<br />
recognized as the uniform registration<br />
symbol throughout the world. However, to<br />
ensure proper use, the trademark owner<br />
should be mindful of the jurisdictions<br />
where the mark is registered and the<br />
goods/services with which it is associated<br />
in the registration.<br />
Registration under U.S. law provides<br />
constructive notice to the public of the<br />
28 WHD <strong>FORETHOUGHT</strong>
egistrant’s claim of rights in the mark. The<br />
® symbol has statutory significance under<br />
the Lanham Act. In particular, Section<br />
29 of the act provides that the owner of<br />
a mark registered in the U.S. Patent and<br />
Trademark Office may give notice that the<br />
mark is registered by displaying the words<br />
“Registered in U.S. Patent and Trademark<br />
Office” or “Reg. U.S. Pat. & Tm. Off.” or<br />
“®.” The act provides that in any suit for<br />
infringement where a registrant fails to give<br />
notice, no profits and damages shall be<br />
recovered unless the defendant had actual<br />
notice of the registration. Furthermore,<br />
treble damages and attorneys’ fees may be<br />
recovered in the event of willful infringement<br />
of a registered mark. Willfulness may be<br />
difficult to establish if the registrant has not<br />
displayed proper notice with the mark.<br />
Copyrights<br />
Copyright notice is also important to the<br />
enforcement of rights and the recovery<br />
of damages. Copyright arises under the<br />
law when the author of the work (whether<br />
literary, artistic or musical) “fixes” the work<br />
in a tangible medium of expression. Notice<br />
of copyright should be placed on any and<br />
all published copies of the work, whether<br />
or not registered. The notice consists of<br />
the following:<br />
1. The © symbol, the word “copyright”<br />
spelled out or the abbreviation<br />
“copr.” (or ℗ in the case of sound<br />
recordings);<br />
2. The year of first publication of the<br />
work; and<br />
3. The name of the owner of copyright<br />
in the work.<br />
The notice should be affixed to any and<br />
all copies in such a manner and location<br />
so as to provide reasonable notice of the<br />
copyright claim. Significantly, where notice<br />
is provided, an infringer cannot claim to be<br />
“innocent” and mitigate damages.<br />
Recommendations<br />
All IP owners should take the following<br />
steps to ensure proper IP notice:<br />
1. Conduct regular reviews and audits<br />
of IP notices on product, packaging<br />
and promotional materials to ensure<br />
notices are properly used and reflect<br />
current status of the IP assets. Failure<br />
to use patent notices properly may<br />
constitute “false marking.”<br />
2. Docket expiration dates of patents<br />
as a reminder to remove notices as<br />
patents expire.<br />
3. Consider the applicable products that<br />
should bear notices of newly issued<br />
patents and replace “patent pending”<br />
with the new patent numbers.<br />
4. Review website use and be sure to<br />
display IP notices (in particular, ®<br />
with trademarks) at least once in a<br />
prominent location (e.g., the header<br />
if appropriate) on each page that can<br />
be accessed directly on the Internet.<br />
5. Use “patent pending” and “” to<br />
deter infringement.<br />
6. Use copyright notice on all<br />
marketing materials, whether or<br />
not registered. n<br />
INTELLECTUAL PROPERTY 29
LITIGATION<br />
30 WHD <strong>FORETHOUGHT</strong>
WRITTEN CONTRACTS ARE<br />
NOT ALWAYS SET IN STONE<br />
Written by<br />
Erin M. Keesecker<br />
Written contracts give businesses and<br />
individuals a sense of security and stability,<br />
in part because they seem difficult to<br />
break or modify. Most written contracts<br />
contain a section that dictates what<br />
the parties must do in order to change<br />
the agreed-upon contractual terms.<br />
This section often contains a “no-oralmodification”<br />
(NOM) clause, indicating that<br />
amendments must be “made in writing”<br />
and “executed by both parties.” Here is an<br />
example of such a clause:<br />
No amendments or modifications<br />
of this agreement shall be made<br />
or be deemed to have been made<br />
unless such amendments or<br />
modifications are made in writing<br />
and executed by the party to be<br />
bound thereby.<br />
In reading the NOM clause quoted above,<br />
most people envision the parties returning<br />
to the proverbial bargaining table,<br />
negotiating the amendment, and then<br />
signing an amended written document,<br />
perhaps under very similar conditions as<br />
existed when the original contract was<br />
formed. For purposes of formality, there<br />
may even be a notary present.<br />
That, however, is no longer the only<br />
scenario permitted by an NOM clause.<br />
Because the term “writing” does not<br />
necessarily mean putting pen to paper,<br />
NOM clauses may no longer be enough<br />
to bar contract amendments by informal<br />
email exchanges or even instant<br />
messaging (IM) conversations.<br />
The Enforceable Email Chain<br />
For instance, in 2009 the U.S. District<br />
Court for the Central District of California<br />
held that a series of informal emails<br />
between two parties to a written contract<br />
created an enforceable amendment,<br />
even though governing law, much like<br />
an NOM clause, required agreements<br />
to “be reduced to writing, or some<br />
memorandum, or notes thereof” and<br />
“signed by the party to be charged<br />
therewith, or some other person thereunto<br />
by the party lawfully authorized in<br />
writing.” The court ultimately employed a<br />
“substance over form” type of analysis,<br />
concluding that as long as a court can<br />
“plainly determine” the essential elements<br />
of the contract, i.e., “the identity of the<br />
parties to the contract, the nature of its<br />
subject matter and its essential terms,”<br />
an email chain is an adequate vehicle for<br />
amendment.<br />
The $1.2 Million Instant Message<br />
An even more dramatic example occurred<br />
in 2011 in the U.S. District Court for<br />
the Southern District of Florida. There,<br />
the parties’ NOM clause stated that the<br />
contract could be changed “only by<br />
a subsequent writing signed by both<br />
parties.” A dispute arose after the parties<br />
discussed modifying certain terms<br />
of the contract in a series of informal<br />
conversations via IM. The plaintiff argued<br />
that the IM conversation effectuated a<br />
contract amendment and demanded<br />
payment under the new terms; the<br />
defendant disagreed and refused to<br />
pay. More than $1.2 million in damages<br />
were in play. The court concluded that<br />
the IM conversation effectively amended<br />
the contract. Among other things, the<br />
court was influenced by the fact that<br />
the IM messages not only showed that<br />
the parties had come to an agreement,<br />
but also contained the specific terms<br />
of that agreement. Further, the court<br />
was influenced by the fact that the IM<br />
messages actually recorded the parties’<br />
efforts to carry out the agreed-upon<br />
amendments: “It is difficult to imagine<br />
more specific and direct evidence of an<br />
agreement than the two parties actually<br />
sitting down simultaneously and doing<br />
what they had agreed to do.”<br />
LITIGATION 31
Conclusion<br />
The possibility of creating enforceable<br />
contract modifications by informal<br />
communications such as email or IM<br />
is particularly relevant to businesses or<br />
individuals who operate under the terms of<br />
contracts that were negotiated some time<br />
ago. A significant amount of email and<br />
IM correspondence can occur between<br />
parties during the course of a relationship.<br />
In light of the decisions discussed above,<br />
these informal communications could<br />
amount to an enforceable contractual<br />
amendment or even waiver of key<br />
contractual provisions.<br />
Following are a few issues to consider<br />
if you are currently operating under the<br />
terms of a formal written contract:<br />
• Don’t underestimate the power of an<br />
email or IM exchange to modify the<br />
terms of a contractual relationship,<br />
even contracts that seem to be set<br />
in stone. If possible, avoid discussing<br />
contract terms via email or IM.<br />
But how did the court find that the<br />
IM conversation was “signed by both<br />
parties” It didn’t. Instead, the court<br />
sidestepped the NOM clause by<br />
concluding that the defendant waived its<br />
protections under that clause when the<br />
plaintiff “materially changed its position” in<br />
reliance on the new terms. In other words,<br />
the court barred the defendant from using<br />
the NOM clause as a defense.<br />
Implications for Wisconsin<br />
Although Wisconsin state courts have<br />
not specifically addressed the issue of<br />
contract modification by email or IM<br />
correspondence, they have examined<br />
email correspondence in the context<br />
of contract disputes to determine<br />
the parties’ intent. Further, the U.S.<br />
District Court for the Eastern District<br />
of Wisconsin has stated that the issue<br />
of “whether or not defendant’s emails<br />
constitute a writing signed by defendant”<br />
is a question for the jury to decide. These<br />
cases suggest that Wisconsin courts may<br />
enforce a contract amendment evidenced<br />
only by email or IM, as long as the<br />
parties’ intent is clearly discernible.<br />
• Think about how easy (or how<br />
difficult) you want it to be to modify<br />
your contract. Does your contract’s<br />
modification clause reflect that level of<br />
ease or difficulty<br />
• In the eyes of many judges, actions<br />
speak louder than words. Are your<br />
day-to-day actions consistent with<br />
the terms of your written contract<br />
If, for example, you have agreed to<br />
change certain contract terms via<br />
email even though your contract<br />
contains an NOM clause, you may<br />
have inadvertently waived that<br />
contractual protection.<br />
• Take the time to review your written<br />
contracts and determine whether<br />
they still reflect your contractual<br />
relationships, or whether they need to<br />
be updated. n<br />
32 WHD <strong>FORETHOUGHT</strong>
STATE VENTURE CAPITAL<br />
BILL IN THE WORKS<br />
Written by Thomas<br />
J. Springer and<br />
Gabrielle B. Adams<br />
Job creation was at the heart of last year’s<br />
national election campaign. It comes as no<br />
surprise that Wisconsin’s political leaders<br />
are seeking to encourage job creation in<br />
the state. Leaders from both parties have<br />
seized upon entrepreneurship as the driver<br />
of future job creation. Many see state<br />
subsidizing of venture capital funding as<br />
the best way to promote entrepreneurship.<br />
In particular, getting more venture capital<br />
to Wisconsin’s startup enterprises—earlystage,<br />
high-growth, high-risk companies<br />
that specialize in information technology,<br />
biotechnology or software—is seen as<br />
a policy goal. In 2011, the governor,<br />
state Senate and Assembly all proposed<br />
versions of a venture capital promoting<br />
bill. Unfortunately, a consensus was not<br />
reached and no bill was passed. It is<br />
expected that passage of a venture capital<br />
bill will occur in the next legislative session.<br />
Why Should We Care<br />
The calculus for state government<br />
promotion of venture capital is simple:<br />
More venture capital would fund more<br />
startups, and more startups will result in<br />
more jobs. According to the Kauffman<br />
Foundation, all of the net job growth in<br />
the United States in the past decade<br />
has come from startup businesses.<br />
Historically, successful companies in their<br />
first five years are job creators, averaging<br />
3 million new jobs each year. In contrast,<br />
companies more than 5 years old tend to<br />
shed jobs, on average of 1 million annually.<br />
Wisconsin is poised for more venture<br />
capital investment. The state has long had<br />
a strong foundation in research, intellectual<br />
property and patents. According to the<br />
2012 edition of the Wisconsin Portfolio,<br />
an annual publication of the Wisconsin<br />
Technology Council through its Wisconsin<br />
Angel Network, Wisconsin has 2.15% of<br />
the nation’s academic research spending<br />
and 2.11% of the nation’s patent filings.<br />
However, this intellectual capital has not<br />
translated into startup creation.<br />
The lack of crossover of research and<br />
intellectual capital into startup enterprises is<br />
attributed to a lack of venture capital. Again<br />
according to the Kauffman Foundation,<br />
Wisconsin companies fetch less than 1%<br />
of venture capital invested nationwide. That<br />
puts it in the bottom 10% of the 50 states<br />
in entrepreneurial activity. Equalizing the<br />
amount of investment with the intellectual<br />
capital status of the state would create<br />
enormous potential for job growth.<br />
Wisconsin’s Numbers<br />
• 223,602: Wisconsin’s unemployed<br />
(September 2012).<br />
• 3: Percentage of the Wisconsin<br />
workforce in venture-backed<br />
businesses. The national average<br />
is 11%.<br />
• 1.2 billion: Amount of venture capital<br />
Wisconsin has attracted in the past<br />
40 years.<br />
• 72 million: Amount of venture capital<br />
raised by Wisconsin in 2011, ranking<br />
last out of the nine states its size.<br />
• 0.25: Percentage of the nation’s<br />
venture capital raised by Wisconsin<br />
in 2011.<br />
• 1.84: Percentage of the nation’s<br />
population Wisconsin represents.<br />
• 0.13: Percentage of all venture capital<br />
under management in Wisconsin.<br />
In contrast to these numbers, Wisconsin’s<br />
peer state, Minnesota, has performed well<br />
in the venture capital economy. In 2009,<br />
Minnesota attracted more than $6.5 billion<br />
in venture capital investment, 19% of the<br />
Minnesota workforce was attributed to<br />
venture capital, and its unemployment rate<br />
is at 5.8%.<br />
LITIGATION 33
According to Zach Brandon, Director<br />
of the Wisconsin Technology Council’s<br />
Wisconsin Angel Network, if Wisconsin<br />
is able to increase its venture capital<br />
investing to be on par with just the<br />
national average (11%), it could potentially<br />
reduce its unemployment rate to almost<br />
zero. At the very least, it could become<br />
more competitive like Minnesota.<br />
Wisconsin’s Recent Attempts to Pass<br />
Venture Capital Legislation<br />
Gov. Scott Walker proposed a venture<br />
capital bill in 2011, which would have<br />
provided $200 million in tax credits to<br />
insurance companies and out-of-state<br />
investment firms known as certified<br />
capital companies, or CAPCOs. In return,<br />
these companies would be required to<br />
invest $250 million in Wisconsin startup<br />
companies through the CAPCOs. The state<br />
would gain 20% of any profits, but there<br />
was no guarantee it would get back any of<br />
the revenue lost in granting the tax credits.<br />
The governor’s proposal was largely<br />
based on the same investment model<br />
presented in a program initiated in<br />
1999. The 1999 program provided $50<br />
million worth of Wisconsin tax credits to<br />
three CAPCOs, who sold the credits to<br />
insurance companies with the promise<br />
that they would invest the money in<br />
Wisconsin companies. However, the<br />
1999 program had large flaws. The<br />
proposal had no established authority<br />
to enforce how the money would be<br />
spent or managed by the CAPCOs, the<br />
CAPCOs were not required to repay<br />
the state for the tax credits, and the<br />
CAPCOs were only required to invest<br />
half of the money in the first five years<br />
of the program. As a result, only half of<br />
the money promised to be channeled<br />
into Wisconsin’s startups ever made<br />
it there, the majority of the companies<br />
that received money from the CAPCOs<br />
haven’t survived, and only a few hundred<br />
jobs were created in the state for a<br />
decade’s worth of effort. Not surprisingly,<br />
the 2011 CAPCO-oriented proposal ran<br />
into heavy opposition.<br />
Afterwards, the Legislature advanced two<br />
proposals. Both bills had the same goal<br />
of promoting Wisconsin startup growth<br />
through jump-starting venture capital<br />
investment. Both bills advocated for $200-<br />
400 million in venture capital investment<br />
funds. Money for the funds would be<br />
raised by either selling bonds or allocating<br />
tax credits to encourage investment. The<br />
funds would have required private parties<br />
to provide matching money to qualify for<br />
the government funds.<br />
Assembly Bill 129 and Senate Bill 94 would<br />
have established the Wisconsin Venture<br />
Capital Authority, as well as an investment<br />
fund and investment programs to be<br />
administered by the authority to invest<br />
in venture capital funds and Wisconsin<br />
startup and other businesses. However, the<br />
Senate and Assembly differed significantly<br />
on how the funds would be funded and<br />
they failed enactment.<br />
Like the governor’s proposal, Assembly<br />
Bill 129 intended to gather the money<br />
through insurance premium tax credits<br />
to CAPCOs. For example, in exchange<br />
for investing $2 million in Wisconsin<br />
startups, local and out-of-state insurance<br />
companies would receive $2 million in tax<br />
cuts in Wisconsin. Insurance companies<br />
are ideal for this type of venture because<br />
they traditionally have large tax bills and<br />
know how to invest large amounts of<br />
money. This proposal did not require the<br />
state to spend current funds because it<br />
was giving tax credits away to investors.<br />
But, the state couldn’t guarantee that the<br />
money would be returned to it. Historically,<br />
CAPCOs have kept 80% of the money<br />
related to their investments and returned<br />
only 20% to the taxpayers.<br />
Senate Bill 94 favored selling bonds,<br />
which would essentially provide state<br />
grants and loans to selected angel and<br />
venture capital firms. The state would pay<br />
off the bonds when returns came in from<br />
the funds. This proposal could almost<br />
ensure that the money invested would<br />
stay in Wisconsin. However, when the<br />
state is running a budget deficit, borrowing<br />
money to encourage risky investments<br />
is disfavored.<br />
In the end, the Assembly did not want to<br />
appear to be seen as borrowing money to<br />
fund these funds, the Senate did not want<br />
to be seen as loaning money, and neither<br />
could agree on the best way to encourage<br />
venture capital investment in Wisconsin.<br />
34 WHD <strong>FORETHOUGHT</strong>
What We Learned<br />
With the federal elections of Nov. 6, 2012<br />
over, we can expect new passing of a<br />
venture capital bill. The GOP now holds<br />
both state houses and any proposal it<br />
adopts should pass without resistance.<br />
What will be interesting to watch is not<br />
whether a bill passes, but what changes,<br />
if any, are made in the proposal.<br />
The critical issues the Legislature must<br />
address in any venture capital bill will be:<br />
• How should out-of-state funds<br />
be treated vis-à-vis domestic,<br />
Wisconsin funds<br />
• Who will qualify for tax credits,<br />
matching funds, or outright grants<br />
• How much revenue will the state<br />
spend (or give up in the form of<br />
tax credits)<br />
• How does the state track funds after<br />
they are allocated<br />
• Will the state guide what kind of<br />
companies the funds will be allowed<br />
to invest in<br />
Insiders indicate that the governor will<br />
propose a more modest proposal in terms<br />
of capital to be infused by the state, likely<br />
$150-200 million, with a focus on early- to<br />
mid-stage startups in diverse industries.<br />
Further, they will be looking to fund the<br />
proposal without using CAPCOs or issuing<br />
bonds, perhaps with matching-fund grants.<br />
Kegonsa Capital Partners (KCP), a<br />
Wisconsin venture capital management<br />
firm, suggests that a venture capital<br />
scheme that promotes startup creation<br />
by spreading venture capital across a<br />
wide range of industries, technologies,<br />
and locations in the state would be<br />
the most profitable. By diversifying its<br />
venture capital investments, KCP argues<br />
Wisconsin will experience high investor<br />
returns because it requires less investment<br />
overall and has the potential to create<br />
more companies and, thus, more jobs.<br />
Another strategy advocates investing in<br />
a narrow group of select companies in<br />
specific technologies. Rather than making<br />
several smaller investments in a variety<br />
of companies, this strategy focuses on<br />
investors making multiple and increasing<br />
investments in select companies. It<br />
involves more investment overall, but<br />
creates fewer companies in the process.<br />
All of Wisconsin’s great employers, from<br />
Harley-Davidson and Johnson Controls<br />
to RedPrairie and Epic Systems, started<br />
as new, domestic enterprises. The state<br />
has traditionally grown its own economy.<br />
Wisconsin has the entrepreneurial talent<br />
and smart leadership to boost growth. It<br />
just needs the right type of capital support<br />
to do so. n<br />
LITIGATION 35
IS IT AS EASY AS CLICKING<br />
“I ACCEPT” ENFORCING<br />
STANDARD TERMS IN<br />
ELECTRONIC SALES<br />
CONTRACTS USING “CLICK-<br />
WRAP” AGREEMENTS<br />
Written by<br />
Karen L. Tidwall and<br />
Pamela M. Schmidt<br />
Internet-related business transactions<br />
form a major part of the country’s<br />
economy. Standard contract provisions<br />
that limit remedies, exclude liability for<br />
certain damages, release and waive<br />
future claims, choose where litigation<br />
or arbitration will take place if the<br />
relationship doesn’t work out, and<br />
choose which state’s law will apply to<br />
the dispute are helpful tools that assist<br />
businesses to evaluate, plan for, and<br />
contractually limit their risk and efficiently<br />
address disputes that may arise. If a<br />
business sells products or services<br />
online, it needs to be aware of what is<br />
required to form an electronic agreement<br />
binding its customer to the company’s<br />
standard terms that it wants to govern<br />
the business relationship.<br />
The company must first ask whether its<br />
website is structured in a way to ensure<br />
that a customer has agreed to be bound<br />
by the company’s standard terms of sale<br />
or service. If the answer to that question is<br />
“yes,” the next question is whether each<br />
standard term in the electronic contract is<br />
separately and independently enforceable<br />
under applicable state law.<br />
“Click-Wrap” Agreements are Generally<br />
Enforceable and Easy to Adopt<br />
While the explosion of e-commerce has<br />
given rise to some novel issues for courts<br />
to consider, it has not fundamentally<br />
changed the principles of contract law.<br />
The essential elements of a contract<br />
are still an offer, an acceptance, and<br />
consideration. In most jurisdictions, an<br />
offer and acceptance exist when mutual<br />
expressions of assent are present.<br />
These basic paper contracting principles<br />
apply to contracts formed over the<br />
Internet with an added 21 st century<br />
twist. To establish mutual assent to the<br />
business’ standard terms, the company<br />
must affirmatively and reasonably<br />
communicate the terms to its customers.<br />
The easiest and most effective way to<br />
do this in e-commerce is by adopting a<br />
“click-wrap” agreement for the company<br />
website. A click-wrap agreement means<br />
that the website is structured to place<br />
the standard terms of sale or service<br />
directly up front, in a conspicuous place,<br />
and to require the customer to explicitly<br />
manifest its assent to those terms by<br />
clicking on a box that acknowledges<br />
“I Agree” or “I Accept” the standard<br />
terms. Research shows that Internet<br />
users do not usually bother to read click-<br />
36 WHD <strong>FORETHOUGHT</strong>
wrap agreement contract terms. But a<br />
customer cannot get out of an electronic<br />
contract simply by arguing he or she<br />
did not read the terms or recall making<br />
the contract. Click-wrap agreements<br />
are generally enforceable because the<br />
necessary contract elements of offer<br />
and acceptance are satisfied by the<br />
customer’s required click.<br />
Best Practices for Click-Wrap<br />
Agreements<br />
Courts are more likely to enforce a<br />
click-wrap agreement if the company<br />
builds one or more of the following tools<br />
into its website:<br />
• The “I Agree” or “I Accept” click box is<br />
placed at the end of the terms so the<br />
customer must view or scroll through<br />
all of the terms of the agreement<br />
before being able to assent to them.<br />
Material terms and conditions are<br />
conspicuously displayed, using bold<br />
print or different color font.<br />
• The customer cannot actually<br />
buy the product or service without<br />
first assenting to the terms of<br />
the agreement.<br />
• Clear words of acceptance or rejection<br />
of the standard terms are used (e.g., “I<br />
Accept” or “I Do Not Accept”).<br />
• The business should be careful to<br />
create and retain a detailed written<br />
record of the development of the<br />
click-wrap part of the website; how<br />
the website works; the reasons<br />
for constructing certain pages and<br />
links to ensure the opportunity for<br />
users to view the relevant terms of<br />
the agreement; and the customer’s<br />
navigation train to show that the<br />
customer viewed and clicked on the<br />
“I Agree” or “I Accept” box.<br />
“Browse-Wrap” or Hybrid<br />
E-Contracts May be Unenforceable<br />
A business’ standard terms of sale or<br />
service should not be hidden, masked,<br />
or buried in layers of web pages,<br />
requiring the customer to hunt for them,<br />
or the company risks a court finding the<br />
electronic contract unenforceable. Based<br />
on the most current court decisions, the<br />
adoption of browse-wrap agreements are<br />
discouraged. Browse-wrap agreements<br />
either post standard contract terms on the<br />
company’s website, submerge them in a<br />
place accessible only by a hyperlink, or are<br />
accessible on the screen, but don’t require<br />
a customer to expressly manifest assent.<br />
If possible, the company also should avoid<br />
using hybrid click-wrap/browse-wrap<br />
agreements, which give notice of the<br />
standard contract terms by reference to<br />
a hyperlink to another page and require<br />
express manifest assent of acceptance,<br />
but may or may not be enforceable.<br />
Browse-wrap and hybrid agreements<br />
create an unnecessary risk of losing the<br />
business’ contractual protections in the<br />
event of a dispute, particularly when it is<br />
simple to adopt a click-wrap agreement<br />
structured for the business’ online<br />
commerce contracting needs.<br />
The Enforceability of Specific<br />
Standard Contract Terms in a<br />
Click-Wrap Agreement<br />
In the event of a dispute, issues may<br />
arise as to whether a specific contract<br />
term contained in a click-wrap agreement<br />
is enforceable under state law. Even<br />
if a valid e-contract has been formed,<br />
the company should consult with its<br />
attorney to look at each standard term<br />
independently under state law through<br />
the lens of emerging e-commerce legal<br />
principles, considering issues of notice,<br />
disclosure, language, conspicuousness,<br />
and concerns of public policy. n<br />
LITIGATION 37
REAL ESTATE/<br />
ENVIRONMENTAL<br />
38 WHD <strong>FORETHOUGHT</strong>
CATCH THE WAVE:<br />
WI<strong>SC</strong>ONSIN’S WATER<br />
RESOURCES CAN PROVIDE<br />
OPPORTUNITIES FOR<br />
BUSINESSES<br />
Written by<br />
Phillip R. Bower<br />
Water appears to be an abundant<br />
resource in Wisconsin. Two of the largest<br />
bodies of freshwater in the world, Lake<br />
Superior and Lake Michigan, border<br />
Wisconsin to the north and east, while<br />
the mighty Mississippi River fl ows along<br />
its west. Wisconsin’s interior is dotted<br />
and shaped by numerous inland lakes<br />
and rivers, and groundwater wells have<br />
provided reliable sources of water for<br />
communities, agriculture and industry for<br />
many years.<br />
Today, however, there are numerous<br />
competing uses for Wisconsin’s water<br />
resources, including drinking, agriculture,<br />
manufacturing, electric generation,<br />
transportation, recreation, and tourism.<br />
There are also many potential threats<br />
to water supply and quality such as<br />
increased demand, drought, fl ooding,<br />
invasive species, pollution, urban and<br />
agricultural runoff, and climate change.<br />
While these uses and threats may result in<br />
business challenges, they also can provide<br />
opportunities for businesses that plan for<br />
water impacts and work to safeguard this<br />
important resource.<br />
The Global Water Report 2012,<br />
authored by Deloitte for the Carbon<br />
Disclosure Project, surveyed 318<br />
Global 500 companies. More than<br />
half of the responding companies said<br />
they experienced negative impacts<br />
during the past fi ve years from waterrelated<br />
issues, including water scarcity,<br />
business interruption and property<br />
damage from fl ooding, rising costs to<br />
comply with discharge standards, and<br />
regulatory uncertainty and poor water<br />
quality. Compared to 2011, more of the<br />
responding companies view water as a<br />
substantial risk to their business and are<br />
aware of supply chain risks.<br />
These same challenges are present in<br />
Wisconsin. During the past fi ve years,<br />
Wisconsin has experienced signifi cant<br />
fl ooding that caused signifi cant property<br />
damage, closed major roads and drained<br />
Lake Delton dry after a county highway<br />
was washed out. During that same<br />
period, Wisconsin suffered from severe<br />
drought that strained water resources and<br />
Business Challenges<br />
REAL ESTATE / ENVIRONMENTAL 39
agriculture. Even during normal years,<br />
water quality in many inland lakes has<br />
suffered due to urban and agricultural<br />
stormwater runoff, causing the lakes<br />
to be closed for swimming and other<br />
recreational activities.<br />
In addition, regulation of water quality<br />
and quantity continues to increase and<br />
become more stringent as more demands<br />
are placed on water resources, and water<br />
quality standards are also becoming more<br />
stringent. Stormwater runoff requirements<br />
apply to almost all construction and postconstruction<br />
sites and may eventually<br />
incorporate numeric standards for<br />
turbidity. There is also an increased<br />
scrutiny of the impact of agricultural runoff<br />
on water quality in rivers and lakes.<br />
The U.S. Environmental Protection Agency<br />
(EPA) has also taken a renewed interest<br />
in its oversight of state operation of<br />
clean water programs. In 2011, the EPA<br />
identified 75 deficiencies in the Wisconsin<br />
Department of Natural Resources’ (DNR)<br />
clean water program and directed the<br />
DNR to remedy the issues or risk losing<br />
state authority for operating the program.<br />
The DNR responded and is working to<br />
address these issues.<br />
Wisconsin is also a party to the Great<br />
Lakes-St. Lawrence River Basin Water<br />
Resources Compact, which was signed<br />
by President George W. Bush in 2008.<br />
This international compact governs water<br />
use within the Great Lakes Basin and<br />
has influenced the DNR’s regulation of<br />
water use statewide. Costs for water may<br />
increase as communities must find new<br />
sources and undertake significant public<br />
works projects to pump and clean water.<br />
Business Opportunities<br />
Despite the concerns of companies in<br />
the Global Water Report 2012 noted<br />
previously, the same companies identified<br />
some positive opportunities stemming<br />
from water concerns. Seventy-one<br />
percent of the responding companies,<br />
an increase from the prior year, reported<br />
that water-related issues offer substantial<br />
opportunities for their businesses,<br />
including the sale of new products or<br />
services related to water issues.<br />
40 WHD <strong>FORETHOUGHT</strong>
Many of these same opportunities may<br />
be present in Wisconsin for businesses<br />
that address water issues. The Water<br />
Council has been working for several<br />
years to strengthen the region’s status<br />
as a hub for water innovation, research<br />
and industry. In part due to the success<br />
of The Water Council, the region is now<br />
home to more than 130 water technology<br />
companies, more than 100 academic<br />
scientists and researchers focused on<br />
water solutions, the largest freshwater<br />
research institute on the Great Lakes, and<br />
academic programs focused on water at<br />
the University of Wisconsin–Milwaukee,<br />
Marquette University Law School and<br />
the University of Wisconsin–Whitewater.<br />
Milwaukee has been designated as a<br />
U.N. Global Compact City, recognized<br />
internationally as a center of freshwater<br />
expertise. The Water Council is poised to<br />
open a new water research and business<br />
accelerator center in Milwaukee’s Walker’s<br />
Point neighborhood in 2013 to attract<br />
and create new businesses in the water<br />
industry and to serve as a catalyst for the<br />
development of the Reed Street Yards<br />
water technology research park that is<br />
being developed by the City of Milwaukee.<br />
These programs and projects present an<br />
opportunity for Wisconsin businesses to<br />
collaborate and innovate new products to<br />
take advantage of water issues.<br />
Conclusion<br />
Water issues will continue to present<br />
challenges and opportunities to<br />
businesses. To help position your<br />
business in the best possible light,<br />
consider the following:<br />
• What impact could water issues have<br />
on your business, including water<br />
quality, water quantity or supply-chain<br />
risk from flooding or drought<br />
• Can your business introduce<br />
products or services that address<br />
water issues<br />
• Can your business take advantage<br />
of opportunities presented by its<br />
location, including those offered by<br />
the The Water Council n<br />
REAL ESTATE / ENVIRONMENTAL 41
HUD CERTIFICATION FOR<br />
CONDOMINIUM ASSOCIATIONS:<br />
WHY UNIT OWNERS SHOULD CARE<br />
Written by<br />
Daniel J. Miske<br />
Those who own condominium association<br />
units should care each time the U.S.<br />
Department of Housing and Urban<br />
Development (HUD) adjusts its lending<br />
requirements. Since 2009 there have<br />
been a number of changes, each of<br />
which affects unit owners even if they<br />
are not in low-income housing. HUD<br />
certification, also known as Federal<br />
Housing Administration (FHA) approval, is<br />
now the standard for most banks when<br />
determining whether to issue lending<br />
to a buyer within an association. The<br />
law has nothing to do with the buyer’s<br />
creditworthiness, but rather whether the<br />
association meets the standard relative to<br />
various items including reserves, past due<br />
assessments and insurance requirements.<br />
If the association fails to meet the<br />
standard, it will not receive certification<br />
and buyers will not be able to obtain loans<br />
to purchase units at the association. The<br />
effect is obvious: the reduction in the<br />
units’ value. Common sense suggests<br />
that if one needs to find all cash or very<br />
well-heeled purchasers (a smaller pool of<br />
potential buyers), the sales price will be<br />
less. At the time of the financial meltdown<br />
in 2008, the FHA backed mortgages for<br />
approximately 5% of the condominium<br />
market. FHA-backed mortgages are now<br />
more than 50% of the market. Although<br />
the guidelines are written so that the FHA<br />
will not exceed 50% of the loans in any<br />
particular association, exceptions have<br />
been made.<br />
The FHA makes exceptions when it<br />
determines that it would otherwise be<br />
too difficult to find purchasers within a<br />
particular community. There is no rhyme<br />
or reason to this system. The most recent<br />
changes to HUD requirements occurred<br />
on Sept. 13, 2012. The changes reduced<br />
the requirements relating to the number<br />
of units that could be delinquent on an<br />
association’s assessment payments, and<br />
added requirements relating to employee<br />
dishonesty insurance and project<br />
certification approval. For the first time,<br />
the FHA will also consider HUD approval<br />
for mixed use condominiums that have<br />
commercial space of 25% to 35%.<br />
The long-term effect of the HUD<br />
certification process is that associations<br />
that do not do the work and spend the<br />
money (approximately $1,250) to obtain<br />
certification will find that the value of<br />
their units will continue to decline (or at<br />
least not increase at the same pace as<br />
certified association units) and that the<br />
time units spend on the market will be<br />
substantially longer.<br />
Key Considerations<br />
1. Not obtaining HUD certification for<br />
the association will cost unit owners<br />
money when they attempt to sell, and<br />
time as units will take longer to sell.<br />
2. Despite the approximate half dozen<br />
changes HUD has made to its<br />
program since the meltdown of 2008,<br />
more changes will follow.<br />
3. Banks will ultimately get back in the<br />
game of lending, even without HUD<br />
certification. This will most likely not<br />
be in 2013, and it is also extremely<br />
likely that those banks will not lend<br />
to associations that do not meet<br />
HUD certification guidelines, even if<br />
those associations have not received<br />
the approval.<br />
4. Based on points 1 through 3 above,<br />
every association should attempt to<br />
obtain HUD approval and develop a<br />
plan to become HUD compliant within<br />
the next couple years. n<br />
42 WHD <strong>FORETHOUGHT</strong>
REAL ESTATE / ENVIRONMENTAL 43
ABOUT THE<br />
AUTHORS<br />
44 WHD <strong>FORETHOUGHT</strong>
Gabrielle Baumann Adams is an attorney in<br />
WHD’s Milwaukee office where she is a<br />
member of the firm’s Business &<br />
Commercial Litigation and Toxic Tort<br />
Litigation & Consultation teams. Prior to<br />
joining WHD, Ms. Adams was a law clerk<br />
for the Hon. Howard D. McKibben, U.S.<br />
District Court Judge for the District of<br />
Nevada. She also served as a prosecutor<br />
for the Milwaukee County District Attorney’s<br />
Office. Ms. Adams earned her B.A. from<br />
the University of Michigan, and her J.D.<br />
from the University of Wisconsin Law<br />
School. Ms. Adams may be reached at<br />
414-978-5420 or gadams@whdlaw.com.<br />
Ted J. Barthel is a shareholder in WHD’s<br />
Milwaukee office where he is a member of<br />
the firm’s Intellectual Property Counseling &<br />
Protection, Technology Law, Emerging &<br />
Entrepreneurial Companies, and<br />
Sustainability & Renewable Energy teams.<br />
Mr. Barthel is an intellectual property<br />
attorney who helps businesses protect and<br />
leverage their innovations for commercial<br />
advantage. He is registered to practice<br />
before the U.S. Patent and Trademark<br />
Office. Prior to joining the firm, Mr. Barthel<br />
practiced law in Chicago. In addition to his<br />
legal experience, he worked as a<br />
production and research chemist at Sigma-<br />
Aldrich Chemical Company. Mr. Barthel is a<br />
military veteran having served as a space<br />
operations officer in the U.S. Air Force<br />
where his duties involved satellite launch,<br />
command, and control. A highlight of his<br />
military career was serving as mission<br />
controller for the successful launch of<br />
Milstar Flight 2, a billion-dollar military<br />
communications satellite. Mr. Barthel also<br />
performed throughout the United States as<br />
a jazz saxophonist/soloist during his tenure<br />
as a member of the U.S. Air Force Band.<br />
Mr. Bartel studied at Universität Freiburg,<br />
Germany, and earned his B.A. in Chemistry,<br />
German, and Political Science, cum laude,<br />
from Carroll College, and his J.D. from<br />
DePaul University College of Law, where he<br />
served as Lead Articles Editor for the<br />
DePaul Journal of Art and Entertainment<br />
Law. He is a director of the Wisconsin<br />
Intellectual Property Law Association, a<br />
member of The Water Council, and a<br />
lecturer for the University of Wisconsin-<br />
Milwaukee’s MBA Program. Mr. Barthel<br />
may be reached at 414-978-5317 or<br />
tbarthel@whdlaw.com.<br />
Phillip R. Bower is a shareholder in WHD’s<br />
Madison office who counsels clients on<br />
environmental compliance and risk<br />
management associated with business<br />
operations and transactions, including air<br />
permitting, water permitting, hazardous<br />
waste and Emergency Planning and<br />
Community Right-to-Know Act issues,<br />
and the investigation and remediation of<br />
contaminated properties. Mr. Bower’s<br />
breadth of experience with environmental<br />
laws and engineering background,<br />
together with his relationships with<br />
technical consultants and state and<br />
federal regulators, allows him to effectively<br />
and efficiently assist clients in developing<br />
strategies to reach their environmental,<br />
natural resource, energy and sustainability<br />
objectives. He earned his B.S. in<br />
Geo-Environmental Engineering, with<br />
distinction, and his M.S. in Mineral<br />
Processing from The Pennsylvania State<br />
University, and his J.D. from Georgetown<br />
University Law Center, where he was<br />
Symposium Editor for the Georgetown<br />
Journal of Legal Ethics and recipient of the<br />
St. Thomas More Award for Legal Ethics.<br />
He is a frequent lecturer on environmental<br />
and renewable energy topics before<br />
environmental professional trade groups<br />
and attorneys, including the Federation of<br />
Environmental Technologists, and helped<br />
implement his firm’s internal sustainability<br />
committee that focuses on waste<br />
reduction, energy conservation and<br />
employee education. He is active with the<br />
American Bar Association’s Section of<br />
Environment, Energy, and Resources and<br />
serves as the Vice-Chair for Membership<br />
of the Section’s Air Quality Committee.<br />
Mr. Bower also serves as Vice President of<br />
the Board of Directors for Community<br />
GroundWorks, a Madison nonprofit that<br />
manages Troy Gardens and focuses on<br />
educating and connecting individuals to<br />
urban agricultural and natural lands. Mr.<br />
Bower may be reached at 608-258-7391 or<br />
pbower@whdlaw.com.<br />
Elisabeth Townsend Bridge is a shareholder in<br />
WHD’s Milwaukee office where her<br />
30-year practice includes copyright, unfair<br />
competition, advertising and licensing law<br />
and related litigation in addition to<br />
trademark and patent work. She earned<br />
her B.A. from Purdue University, and her<br />
J.D., cum laude, from the University of<br />
Nebraska College of Law, where she<br />
ABOUT THE AUTHORS 45
served as Editor of the Nebraska Law<br />
Review. She is registered to practice<br />
before the U.S. Patent and Trademark<br />
Office. Ms. Bridge is Chair and Board<br />
Member of the State Bar of Wisconsin’s<br />
Intellectual Property Law Section; Chair<br />
and Board Member of the State Bar of<br />
Wisconsin’s International Practice Law<br />
Section; and member of the International<br />
Trademark Association’s North American<br />
Anti-Counterfeiting Subcommittee, and<br />
the American Bar Association’s Task<br />
Force on P.R. China Trademark Law<br />
Amendments-Bad Faith Group. She is also<br />
a Board Member of World Trade Center<br />
Wisconsin. Ms. Bridge may be reached at<br />
414-978-5532 or ebridge@whdlaw.com.<br />
Daniel B. Geraghty is an attorney in WHD’s<br />
Milwaukee office where he leads the firm’s<br />
Federal Tax Controversy & Litigation Team<br />
and focuses his practice on complex<br />
federal, international and state tax issues<br />
in both planning and controversy matters.<br />
Mr. Geraghty has represented numerous<br />
individuals, partnerships and corporations<br />
in a wide variety of matters in tax audits,<br />
administrative appeals and litigation.<br />
In addition to controversy matters, he<br />
focuses on complex business transactions<br />
including purchases, sales, mergers,<br />
divestitures and restructurings. As part<br />
of his focus on international tax matters,<br />
Mr. Geraghty has assisted numerous<br />
clients in structuring offshore activities<br />
whether through expansion or acquisition<br />
of existing businesses. He has also<br />
assisted foreign businesses in structuring<br />
their U.S. activities. Mr. Geraghty is also a<br />
Certified Public Accountant (CPA), having<br />
achieved a top score on the national CPA<br />
examination. Prior to practicing law, he<br />
worked as a CPA at a predecessor to one<br />
of the Big Four accounting firms. Mr.<br />
Geraghty earned his B.B.A., summa cum<br />
laude, from the University of Wisconsin–<br />
Whitewater, and his J.D., cum laude, from<br />
the University of Wisconsin Law School,<br />
where he was elected Order of the Coif.<br />
Mr. Geraghty may be reached at 414-978-<br />
5518 or dgeraghty@whdlaw.com.<br />
Frank A. Gumina is a shareholder in WHD’s<br />
Milwaukee office where he counsels and<br />
guides companies through a vast array of<br />
legal issues. For more than 20 years he has<br />
worked with clients to develop effective and<br />
efficient strategies to meet business<br />
objectives. While Mr. Gumina has<br />
experience in many areas of the law<br />
affecting businesses, his primary focus has<br />
been representing management in all facets<br />
of labor and employment law matters. He<br />
has extensive experience counseling<br />
employers in myriad industries including<br />
manufacturing, health care, technology,<br />
construction, hospitality and transportation.<br />
Mr. Gumina has successfully litigated<br />
numerous employment-related cases in<br />
state and federal courts throughout the<br />
country including co-chairing the defense<br />
of the first Americans With Disabilities Act<br />
(ADA) jury trial in the nation. Focusing his<br />
practice on employment discrimination<br />
matters, tort and contract claims arising<br />
from the employment relationship, unfair<br />
competition claims (including non-compete<br />
agreements), all facets of union issues<br />
facing employers, and benefit claims, Mr.<br />
Gumina regularly handles matters before<br />
the courts, Equal Employment Opportunity<br />
Commission, various state agencies, the<br />
National Labor Relations Board and the<br />
U.S. Department of Labor. In addition, he<br />
provides counsel to employers on a host of<br />
human resources issues, including<br />
discipline, discharge, best practices, EEO<br />
compliance, managing the electronic<br />
workplace, collective bargaining, wage and<br />
hour regulations, ADA, FMLA, worker’s<br />
compensation, OSHA and reductions in<br />
force. Mr. Gumina has been a guest labor<br />
and employment law presenter at<br />
Marquette University’s Law School and<br />
School of Business and presents tailored<br />
in-house programs to managers and<br />
supervisors of small and large companies<br />
alike. Mr. Gumina earned his undergraduate<br />
degree from the University of Wisconsin–<br />
Milwaukee, and his J.D., cum laude, from<br />
Marquette University Law School. Mr.<br />
Gumina may be reached at 414-978-5387<br />
or fgumina@whdlaw.com.<br />
Maryeve Heath is a shareholder in WHD’s<br />
Milwaukee office where she leads the firm’s<br />
Worker’s Compensation Team. She<br />
concentrates her practice in the areas of<br />
worker’s compensation, labor and<br />
employment law, and litigation. For more<br />
than 30 years, she has worked with<br />
employers to achieve their business goals<br />
through the creative utilization of human<br />
resources and the aggressive defense of<br />
claims involving worker’s compensation,<br />
wrongful termination, workplace<br />
46 WHD <strong>FORETHOUGHT</strong>
discrimination, employee dishonesty, and<br />
related issues. Ms. Heath is recognized as<br />
a tenacious advocate for her clients and as<br />
an expert in analyzing, negotiation, and<br />
resolving disputes. She has rendered case<br />
assessment reports, reserve analyses and<br />
directives regarding defense strategies on<br />
litigated worker’s compensation and<br />
employment cases. She earned her B.A.<br />
from Marquette University, and her J.D.<br />
from Marquette University Law School. She<br />
also is certified by the Insurance Institute of<br />
America. Ms. Heath may be reached at<br />
414-978-5342 or mheath@whdlaw.com.<br />
Edward J. Heiser is a shareholder in WHD’s<br />
Milwaukee office where he is a member of<br />
the firm’s Consumer Financial Services<br />
Team. For more than 30 years, he has<br />
been recognized as one of the leading<br />
consumer finance lawyers in Wisconsin<br />
and throughout the United States. His<br />
early experience as one of the drafters of<br />
the Wisconsin Consumer Act, Wisconsin’s<br />
comprehensive consumer credit code,<br />
coupled with his leadership in building<br />
forms and operational manuals for some<br />
of Wisconsin’s largest consumer finance<br />
companies, has given him the unique<br />
ability to blend legal principles with<br />
operational and marketplace understanding.<br />
Mr. Heiser’s insights and familiarity with<br />
consumer finance law have enabled him<br />
to guide clients who provide consumer<br />
credit through the legal and administrative<br />
intricacies of Wisconsin laws and<br />
regulations. He has been called upon by<br />
state and national organizations to<br />
represent consumer creditor interests not<br />
only in Wisconsin, but throughout the<br />
country. He represented the American<br />
Financial Services Association as an<br />
official observer to the National<br />
Conference of Commissioners on Uniform<br />
State Law during the five year revision to<br />
Article 9 to the Uniform Commercial Code,<br />
and chaired the consumer creditors’ group<br />
reviewing consumer provisions. Mr. Heiser<br />
earned his A.B. from the University of<br />
Michigan, and his J.D., cum laude, from<br />
the University of Michigan Law School. He<br />
is Chairman of the Governing Committee<br />
of the Conference on Consumer Finance<br />
Law; Fellow of the American College of<br />
Consumer Financial Services Lawyers;<br />
Secretary of the Conference of Consumer<br />
Finance Law and President of its<br />
Governing Committee; member of the<br />
Board of Directors of National Institute on<br />
Consumer Credit Management; and a<br />
member of the American Financial<br />
Services Association Law Committee.<br />
Mr. Heiser may be reached at 414-978-5503<br />
or eheiser@whdlaw.com.<br />
Mary Beth Hughes is an attorney in WHD’s<br />
Milwaukee office where she works with<br />
businesses to aggressively defend<br />
worker’s compensation claims. Her<br />
worker’s compensation experience<br />
includes representing insurance carriers<br />
and employers on both large and small<br />
claims, including performing case<br />
assessments, trying cases to an<br />
administrative law judge and preparing<br />
briefs for review before the Labor and<br />
Industry Review Commission, Circuit<br />
Court, Court of Appeals and Supreme<br />
Court. She has represented entities paying<br />
worker’s compensation benefits in thirdparty<br />
circuit court matters, including<br />
preparing pleadings, making court<br />
appearances and participating in<br />
mediations. She earned her B.A., cum<br />
laude, from the University of Notre Dame,<br />
and her J.D. from the University of<br />
Wisconsin Law School. Ms. Hughes<br />
may be reached at 414-978-5326 or<br />
mhughes@whdlaw.com.<br />
Tiffany L. Hutchens is an attorney in WHD’s<br />
Madison office where she is a member of<br />
the firm’s Labor & Employment Team. Ms.<br />
Hutchens represents business clients in all<br />
aspects of complex employment and<br />
immigration law matters, including wrongful<br />
discharge claims, discrimination and<br />
harassment avoidance, collective<br />
bargaining agreements, wage and hour<br />
issues, the preparation and review of<br />
employee handbooks and contracts,<br />
employment-based immigrant and<br />
nonimmigrant visa applications, I-9<br />
compliance, and advising clients in<br />
permanent residency matters and<br />
applications for U.S. citizenship.<br />
Ms. Hutchens’ attention to employmentand<br />
immigration-related issues in the<br />
context of her clients’ entire business leads<br />
to innovative, practical and cost-effective<br />
solutions. Prior to joining the firm,<br />
Ms. Hutchens served as a Judicial Law<br />
Clerk to the Hon. Jeffrey A. Conen in the<br />
Civil Division of the Milwaukee County<br />
Circuit Court. Ms. Hutchens also worked at<br />
a global corporate law firm dealing with<br />
ABOUT THE AUTHORS 47
employment-based immigration issues<br />
where she supervised a team that focused<br />
on employment-based green card filings for<br />
key employees. Ms. Hutches studied at the<br />
University of Sydney and earned her B.A.,<br />
magna cum laude, from Lafayette College,<br />
and her J.D., cum laude, from New<br />
England School of Law, where she was<br />
Comment and Note Editor for the New<br />
England Law Review. Ms. Hutchens may<br />
be reached at 608-234-6078 or<br />
thutchens@whdlaw.com.<br />
Erin M. Keesecker is an attorney in WHD’s<br />
Madison office where she is a member of<br />
the firm’s Business & Commercial Litigation<br />
Team. She provides advice, analysis and<br />
support to individuals, business, and<br />
government entities who are facing the<br />
prospect of litigation. She has helped<br />
resolve contractual disputes, breach of<br />
warranty claims, products and premises<br />
liability issues, personal injury claims,<br />
landlord/tenant disputes, labor and<br />
employment class actions, and § 1943<br />
constitutional violations in both state and<br />
federal court. Ms. Keesecker is also a<br />
member fo the firm’s Health Care Law<br />
Team, where she assists health care<br />
facilities with HIPAA and HITECH<br />
compliance and defends health care<br />
providers against investigations by<br />
regulatory agencies, such as the Wisconsin<br />
Department of Safety and Professional<br />
Services. Ms. Keesecker earned her<br />
B.M., with high distinction, from the<br />
University of Rochester’s Eastman School<br />
of Music, and her J.D., magna cum laude,<br />
from the University of Wisconsin Law<br />
School, where she served as Managing<br />
Editor of the Wisconsin Law Review. She<br />
may be reached at 608-234-6062 or<br />
ekeesecker@whdlaw.com.<br />
Daniel J. Miske is a shareholder practicing out<br />
of WHD’s Madison and Milwaukee offices<br />
where he leads the firm’s Condominium &<br />
HOA Law Team. He concentrates his<br />
practice in the areas of Wisconsin<br />
condominium, homeowner association, real<br />
estate and business law. Within these<br />
practice areas he handles document<br />
amendments, collections, contracts, rules,<br />
governance, and almost any other issue that<br />
would arise within this area of law. Mr. Miske<br />
earned his B.S. from Marquette University,<br />
and his J.D. from DePaul University School<br />
of Law. He is a Board Member of<br />
Community Association Institute, and a<br />
member of the Milwaukee Bar Association’s<br />
Bench Bar Committee. Mr. Miske is the only<br />
Wisconsin condominium lawyer admitted<br />
into the College of Community Association<br />
Lawyers. He authored the collection action<br />
chapter in West’s Wisconsin Practice:<br />
Methods of Practice Series. Mr. Miske<br />
may be reached at 414-978-5311 or<br />
dmiske@whdlaw.com.<br />
Thomas J. Pienkos is a shareholder in<br />
WHD’s Milwaukee office where he is a<br />
member of the firm’s Intellectual Property<br />
Practice Group. He has counseled a range<br />
of clients on the strategic protection,<br />
licensing and enforcement of intellectual<br />
property rights. Mr. Pienkos has also<br />
prepared and prosecuted many U.S. and<br />
international patent applications and<br />
secured patent rights for clients in a wide<br />
array of technologies, including printing,<br />
manufacturing and computer-related<br />
technologies. He has supervised and<br />
conducted intellectual property due<br />
diligence efforts in relation to a variety of<br />
corporate transactions, and has drafted<br />
and negotiated patent license, nondisclosure<br />
and joint development<br />
agreements. Mr. Pienkos earned his<br />
B.S.M.E., cum laude, from the University<br />
of Notre Dame, and his J.D. from the<br />
University of Wisconsin Law School. He is<br />
registered to practice before the U.S.<br />
Patent and Trademark Office. Mr. Pienkos<br />
may be reached at 414-978-5539 or<br />
tpienkos@whdlaw.com.<br />
Sverre David Roang is a shareholder in<br />
WHD’s Madison office, the leader of WHD’s<br />
Corporate Transaction Team and a member<br />
of the WHD Board of Directors. In addition<br />
to his work as a deal attorney, Mr. Roang is<br />
passionate about working with family<br />
businesses. He has an extensive<br />
background in helping family and closely<br />
held businesses navigate the complex<br />
business, tax, ownership and family issues<br />
inherent in planning for future generations.<br />
His approach to business planning enables<br />
families to build true, lasting wealth that can<br />
grow and benefit generations to come. His<br />
deep interest in this field has led to him<br />
becoming the only professional in<br />
Wisconsin to receive the Family Firm<br />
Institute’s Certificate in Family Wealth<br />
Advising, which helps provide Mr. Roang<br />
with the framework to tackle the complex<br />
48 WHD <strong>FORETHOUGHT</strong>
and dynamic issues involved. Clients who<br />
work with him know that he will help them<br />
find the best solutions to meet their unique<br />
family and business goals. He earned his<br />
B.A., with honors, from Northwestern<br />
University, and his J.D., cum laude, from<br />
the University of Wisconsin Law School. Mr.<br />
Roang may be reached at 608-234-6079<br />
or sroang@whdlaw.com.<br />
Pamela M. Schmidt is an attorney in WHD’s<br />
Milwaukee office where she concentrates<br />
her practice in the areas of appellate<br />
advocacy, personal injury defense work<br />
(particularly relating to product liability as<br />
well as the transportation, recreation and<br />
entertainment industries) and intellectual<br />
property litigation. She has handled more<br />
than two dozen appeals, including filing<br />
appellate briefs, motions, and petitions to<br />
the U.S. Court of Appeals for the Federal<br />
and Seventh Circuits, Wisconsin Supreme<br />
Court and Wisconsin Court of Appeals.<br />
The cases Ms. Schmidt has handled have<br />
involved a wide range of issues including<br />
election disputes, denial of disability claims<br />
under ERISA, breaches of contract, and<br />
personal injury. She earned her B.A., with<br />
distinction, from the University of<br />
Wisconsin, and her J.D. from Harvard Law<br />
School. Ms. Schmidt may be reached at<br />
414-978-5439 or pschmidt@whdlaw.com.<br />
Thomas J. Springer is a shareholder in WHD’s<br />
Madison office where he is co-chair of the<br />
firm’s Government Affairs Team. His primary<br />
focus is on state and federal legislative<br />
processes. Mr. Springer has successfully<br />
represented state and national firms,<br />
industry trade organizations, tribal<br />
governments, and professional associations<br />
before the state legislature and executive<br />
branch as well as the U.S. Congress. His<br />
experience includes representing clients<br />
from industries including health care,<br />
telecommunications, securities, insurance,<br />
financial services, building construction,<br />
electric utilities, and pharmaceuticals. A<br />
former state representative who served in<br />
the Wisconsin State Assembly for four<br />
terms, Mr. Springer has also assisted clients<br />
in securing multimillion-dollar contracts for<br />
building construction and management<br />
services. He earned his B.S. from the<br />
University of Wisconsin, and his J.D. from<br />
the University of Wisconsin Law School. Mr.<br />
Springer may be reached at 608-258-7130<br />
or tspringer@whdlaw.com.<br />
Karen L. Tidwall is a shareholder in WHD’s<br />
Milwaukee office where she is a member of<br />
the firm’s Litigation Practice Group and<br />
co-chair of the Trust, Estate & Fiduciary<br />
Litigation Team. Ms. Tidwall represents<br />
clients in a variety of business and<br />
commercial matters including contract and<br />
warranty disputes, business tort, contested<br />
trust and estate litigation, and fiduciary<br />
litigation representing individual and<br />
corporate fiduciaries or beneficiaries.<br />
Ms. Tidwall earned her B.A. from the<br />
University of Nebraska–Omaha, and her<br />
J.D., cum laude, from Creighton University<br />
School of Law, where she was a member<br />
and Assistant Editor of the Creighton<br />
University Law Review. She is a member of<br />
the Eastern District of Wisconsin Bar<br />
Association’s Civil Committee; a member of<br />
the Milwaukee Bar Association’s Judicial<br />
Selection Committee; and serves on the<br />
Board of Directors of the Wisconsin Equal<br />
Justice Fund. Ms. Tidwall may be reached<br />
at 414-978-5411 or ktidwall@whdlaw.com.<br />
Marci VanAdestine is an attorney in WHD’s<br />
Milwaukee office where she is a member<br />
of the firm’s Consumer Financial Services<br />
Team. As a member of this team, Ms.<br />
VanAdestine counsels and represents<br />
national and local providers of consumer<br />
credit in both regulatory and litigation<br />
matters. She has experience with the<br />
Wisconsin Consumer Act, Article 3 of the<br />
UCC (Negotiable Instruments), and federal<br />
consumer protection laws including the<br />
Truth in Lending Act (TILA) and Regulation<br />
Z, the Fair Credit Reporting Act (FCRA),<br />
and the Dodd-Frank Act. Ms. VanAdestine<br />
regularly represents mortgage servicers<br />
and has experience with federal loan<br />
programs such as the Home Affordable<br />
Modification Program (HAMP). Her litigation<br />
experience includes all facets of pre-trial<br />
practice, including discovery, dispositive<br />
motion practice, mediation, and negotiating<br />
settlement agreements. While in law<br />
school, Ms. VanAdestine served as an<br />
intern to Justice Annette Kingsland Ziegler<br />
of the Wisconsin Supreme Court, to the<br />
Governor’s Office of Legal Counsel, and<br />
to the Wisconsin Department of Justice.<br />
She was also a member of a semi-finalist<br />
national mock trial team. Prior to attending<br />
law school, Ms. VanAdestine worked on<br />
several statewide campaigns, including the<br />
campaigns of Wisconsin Supreme Court<br />
candidates. She also served as an aide to a<br />
ABOUT THE AUTHORS 49
U.S. Congressman, in which she researched<br />
legislation and education policy. Additionally,<br />
Ms. VanAdestine was an original member<br />
of a successful startup political consulting,<br />
public relations, and grassroots campaigning<br />
fi rm. Some of her projects included<br />
working with national clients to develop and<br />
implement grassroots and public relations<br />
campaigns. She earned her B.A. in Political<br />
Science and Communication Arts, with<br />
distinction, from the University of Wisconsin,<br />
and her J.D., cum laude, from the University<br />
of Wisconsin Law School, where she was<br />
elected to Order of the Coif. She is an active<br />
member of the American Bar Association’s<br />
Consumer Financial Services Committee<br />
and Young Lawyer Liaison to Truth in<br />
Lending Subcommittee. Ms. VanAdestine<br />
may be reached at 414-978-5435 or<br />
mvanadestine@whdlaw.com. n<br />
50 WHD <strong>FORETHOUGHT</strong>
MILWAUKEE OFFICE<br />
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Madison, WI 53701-1379<br />
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