International

Multiple Areas of Practice

• Venable served as lead counsel to Marriott International and Ritz-Carlton on luxury hotel and resort development projects in Ireland, Brazil, Peru, Grand Cayman, Costa Rica, the Turks and Caicos, Anguilla and the Bahamas. These projects typically have a project cost ranging from $400 million to in excess of $1 billion. Advice in connection with these projects has included advice on sophisticated senior and subordinated debt issues, intercreditor issues, land acquisition, construction and development issues, joint venture, minority ownership and key money issues, brand licensing, condominium regimes, hotel and condominium management agreements, casino gaming licensing and operations issues, rental pool issues, and golf course and spa development and management issues
• Venable has represented a major privately-held high-tech company in structuring its operations abroad, its later expansion of such operations and, ultimately, in the sale of all such foreign operations. Our advice included assistance with “choice-of-entity” decisions, efficient capitalization of the chosen entities, and optimal use of U.S. “check-the-box” rules and bilateral double taxation treaties, with a goal of minimizing host-country taxes, minimizing withholding taxes on repatriation of foreign income, maximizing the use of foreign tax credits and planning for the most tax-efficient structure for the sale of all foreign operations
• Venable is providing ongoing representation of a joint venture infrastructure development company in connection with investments made by international and domestic pension funds in infrastructure projects in the United States. In addition to complicated financing and commercial arrangements, these projects involve sophisticated international tax planning, as well as strict compliance with U.S. regulatory norms, not only involving the specific subject matter (for example, energy or transportation), but also CFIUS review, given the importance of infrastructure to U.S. national security. Also important is ensuring that the interests of the foreign investors line up with the interests of domestic and other international investors on a project-by-project basis, since their respective positions vary from deal to deal

Joint Ventures/Subsidiaries/Partnerships

• Venable represents Guthy-Renker LLC in significant work involving setting up overseas subsidiaries and joint ventures with foreign companies all over the world (including Japan, India, Korea, Taiwan, Australia, Russia, Cyprus, Mexico and Canada). Venable also coordinates with overseas counsel on their behalf. Some specific matters include representing Guthy-Renker in connection with its joint venture with a French company to market and sell Guthy-Renker products in Russia, and the completion of a complex international intellectual property license with a NASDAQ publicly-traded company
• Constellation is a U.S. hedge fund which invested in a newly formed offshore partnership with a major entertainment company in connection with the financing of new shows in New York and Los Angeles. Venable was heavily involved in negotiating and finalizing the overall structure, and drafting and reviewing numerous documents. We advised on the U.S. federal, New York and California state tax issues associated with various Constellation sub-funds investing in the offshore partnership
• Venable represented Nazarbaev University in Kazakhstan in connection with a curriculum-based joint venture undertaking with a major U.S. university
• Venable represented a U.S. real estate sales training business in connection with an international joint venture in Italy
• Venable represented an Italian food franchise business in connection with the launch of its business in the form of a U.S. joint venture

Tax

• Venable advised Danske Bank A/S, Denmark's largest bank, with respect to the U.S. tax implications of its purchase of a pool of U.S. commercial and residential mortgage loans from Lehman Brothers, foreclosure on various mortgaged properties and subsequent sale of such properties. Venable assisted Danske in structuring its transactions in a manner that minimized its exposure to U.S. income taxation, avoiding a U.S. "permanent establishment" under the U.S.-Denmark Tax Treaty and successfully navigating through some very complex FIRPTA withholding tax issues
• Venable represented a public worldwide education company in structuring its international operations in a manner that maximizes its global tax efficiency. In addition, Venable used a very creative strategy to assist the company in successfully rebuffing, at the IRS Appeals level, an attempt by the IRS to assess an additional $65 million in taxes pursuant to Section 367(d).
• Venable assisted a major Australian public university in obtaining a sizable tax refund from the U.S. taxing authorities. This representation was particularly successful for the client as the IRS initially refused to issue the refund but subsequently relented and issued the check
• Sonoran Resources is a privately held client with mining operations in Mexico and the United States. Venable assisted Sonoran Resources in developing an appropriate ownership structure, working with senior management on structuring profits to be issued to employees and using disregarded entities in Mexico in order to allow the individual U.S. investors to claim a foreign tax credit for the Mexican taxes paid by the Mexican mining entities
• Venable represents a major Australian-based international church with respect to its for-profit investments and operations in the United States. Our advice includes assistance with structuring the church's U.S. investments through the most tax-efficient vehicle, minimizing withholding and/or branch profits tax, maximizing the use of foreign tax credits, avoiding the church's conduct of a "U.S. trade or business," and planning to ensure the applicability of favorable provisions of the U.S.-Australia Tax Treaty
• Venable advised more than 40 clients with unreported foreign financial accounts on participating in both the 2009 Offshore Voluntary Disclosure Program and the 2011 Offshore Voluntary Disclosure Initiative; many of those clients chose to participate in the two amnesty programs, while others determined that participation was not advisable and pursued other options to disclose their unreported foreign financial accounts. We worked very closely with the participants and their CPAs in preparing the massive amounts of information required to be submitted to the IRS. In connection with representing those clients, Venable issued a number of Tax Bulletins and updates on the different programs

Restructuring

• Venable has worked closely with Agora Incorporated, one of the largest and most successful consumer newsletter publishers in the world, as it has restructured its foreign business operations. During this time, Venable assisted the company in organizing a new foreign holding company and transferring the ownership of subsidiaries in Europe, Asia and Australia to that newly formed holding company. Also, as part of this restructuring, Venable assisted the company with issues ranging from dividend planning to transfer pricing and advised the shareholders of the company on highly sophisticated tax issues related to international estate planning, residency disputes with foreign taxing authorities and expatriation
• Venable represented a French/Italian luxury perfume distribution business in connection with the restructuring of its U.S. operations and in connection with a contractual dispute with a major U.S. apparel company
• Venable represented a Spanish manufacturer of high-quality optical products in connection with a reorganization of its joint venture with a U.S. distribution company
• Venable represented a U.K. veterinary pharmaceutical company in connection with the reorganization of its U.S. subsidiaries
• Venable represented a Norwegian oil services company in connection with the reorganization of its U.S. operations

Securities

• Venable represented Pharmaxis, Ltd., an Australian-headquartered specialty pharmaceutical company (ASX:PXS), in establishing a Level One ADR program in listing its American Depositary Shares on NASDAQ Global Market (NASDAQ:PXSL) and in connection with the U.S. portion of a registered global initial public offering of ordinary shares and American Depositary Shares. We also represented Pharmaxis, Ltd. in the U.S. portion of global placement of ordinary shares under Regulations D and S. The total amount raised in these offerings exceeded $75 million
• Venable represented Memtec, Ltd, an Australian-headquartered industrial filtration company, in connection with the establishment of a Level One ADR program and subsequent IPO and related NASDAQ Global market listing. We also represented Memtec in connection with moving its listing to the NYSE
• Venable represented Universal Biosensors, an Australian-headquartered medical diagnostic device company, in connection with registration of its U.S. parent under the Securities Exchange Act of 1934 and related periodic filings. Venable also represented Universal Biosensors in connection with Regulation S matters

Asset Sales

• We represented the owners of a privately held natural resources company in its sale to a foreign purchaser for over $1 billion. Part of Venable’s representation included intense simultaneous negotiation of the terms of purchase agreements with several potential bidders in an auction process managed by an internationally-recognized investment bank, negotiation of final documentation with the winning bidder, and closing the transaction. In addition to corporate lawyers, Venable provided assistance on antitrust, employment, real estate, tax and regulatory matters, and was responsible for the coordination and oversight of the work of foreign and local counsel. The transaction closed despite constant renegotiation of the deal terms during one of the most severe economic declines in history
• Venable represented the Greek-American owners of an international shipping company in connection with the sale of a Netherlands-based container business to a Japanese investment house
• Venable represented the estate of a deceased American philanthropist in connection with the disposition of assets in France and Morocco

Corporate Governance

• Venable represented AAF-McQuay Inc., a global manufacturer and distributor of commercial air conditioning and air filtration products and systems, in connection with establishment of a Dutch B.V. holding company structure
• Venable represented a U.K. consulting company in connection with the establishment of its U.S. business
• Venable represented a French online art installation company in connection with the establishment of its U.S. operations

Mergers and Acquisitions

• Venable represented SafeNet, an information security company (NASDAQ:SFNT), in acquiring companies located in Finland, the Netherlands and a company headquartered in California with operations in India, the European Union and Asia with assistance from foreign local counsel
• Venable represented a Slovenian-owned company in connection with the acquisition of a major international credit card franchise business in Italy from Citibank
• Venable represented an international conglomerate from Pakistan in connection with the acquisition of a food preparation and processing business in the United States and Canada

Licensing/Franchising Agreements

• Venable negotiated a development agreement between Celsion Corporation (NASDAQ:CLSN) and Philips Electronics, a large Dutch conglomerate, to combine Philips’ heat drug delivery device with Celsion’s liposomal-based oncology drug. We also negotiated a complex license, clinical research, product development, distribution and commercialization agreement between Celsion and Yakult, a large Japanese consumer products company, involving potential royalty payment streams in excess of $75 million

Investments

• Venable represented a Canadian family office in connection with private equity investments in the United States

International Trade

• We are providing the full range of import and export trade advice and representation for TOTAL PETROCHEMICALS USA, INC., a major global petroleum company, and several of its affiliated entities, before numerous U.S. agencies. We recently performed a strategic review of U.S. export control and economic sanctions obligations to obtain various authorizations and licenses for its expanding activities, including obtaining an OFAC license within one day of the imposition of the recent Syrian sanctions, thereby avoiding any slowdown in its refinery operations. We also successfully represented the company, including its Foreign Trade Zone refinery operations, in an ISA audit before U.S. Customs and Border Protection and developed an enhanced internal compliance program. We regularly advise on trade policy initiatives that may impact the company’s global operations.
• For Engineering Physics Software, Inc. (“COADE”), we are achieving a successful conclusion in two related settlements stemming from charges of unauthorized reexports of U.S.-origin software to sanctioned countries and contrary to U.S. export control regulations. We’re also providing advice and guidance to enhance export compliance in the company’s export and reexport activities, as well as in its arrangements with overseas foreign agents.
• Venable has counseled and formulated strategies for trade and transportation data companies with security issues before the Department of Homeland Security (DHS), World Customs Organization (WCO) and H.M. Revenue and Customs (UK).
• We provide advice to a manufacturer of military training simulators with regard to foreign military sales to countries such as Israel and India, including agreements with local agents/representatives that are compliant with U.S. and host country laws.
• We advise U.S. and foreign logistics companies on the new People’s Republic of China maritime law and regulations
  Venable helped a client obtain the first licenses for commercial shipping between the United States and Cuba.

Regulatory Compliance

• We advise ING Direct on U.S. banking laws, employment laws, contract laws and issues arising from its relationship with its Netherlands-based bank holding company.
• We provide FDA regulatory advice and are prosecuting the worldwide patent rights for Thermotex.
• We directed a worldwide regulatory compliance effort for an international manufacturing company. This included high-level corporate governance issues, international document discovery and review, preparing and training to internal compliance standards covering scores of E.U. and U.S. laws and regulations, advising on congressional and governmental inquiries concerning the operations of the company, and planning for potential securities and products liability litigation.

Government Affairs

• Venable represents U.S. and international service providers and users in communications transactions and regulatory matters throughout the United States and overseas. We have also helped overseas governments and regulatory bodies create laws and regulations to promote investments in their communications sectors.
• We advise a U.S. company performing USAID contracts to develop local businesses in the Middle East, Africa and Latin America, on compliance with laws and regulations governing the conduct of U.S. companies working with foreign entities and individuals in areas where various terrorist groups are active.

Government Contracts

• We represent a major global travel management services company in several bid protests before the GAO and U.S. Court of Federal Claims on government contracts. Additionally, we have represented the company on issues arising out of their travel management contracts for the U.S. State Department and Department of Defense in Europe, the Middle East and Africa.
• We advise a leading German optical company in their pursuit and performance of U.S. government contracts.

Political Law

• Venable provided counsel and created the legal structure to facilitate the creation of a U.S. Political Action Committee (“PAC”) by a U.S. subsidiary of a foreign corporation to ensure compliance with U.S. election laws.
• We counseled the U.S. subsidiary of a foreign company with PAC and lobbying disclosures, assisting the company in understanding U.S. lobbying and campaign finance rules.
• Venable counseled a U.S. subsidiary of an international automotive company about U.S. lobbying disclosure rules and helped to simplify its reporting operations.
• Venable counseled an international energy company headquartered overseas with federal, state, and local lobbying, campaign finance, and gift rules compliance.

Antitrust

• Venable successfully represented a foreign executive in a DOJ investigation of alleged price fixing in the thin-film-transistor liquid-crystal-display industry.
• Venable’s antitrust attorneys successfully defended a multinational pharmaceutical company in a complex FTC investigation of alleged antitrust violations related to settlement of patent litigation involving branded and generic pharmaceuticals.

Advertising/Marketing

• We have litigated dozens of Lanham Act advertising cases, representing internationally-esteemed clients seeking to protect their brand assets and defending clients in high-profile litigation involving cutting-edge issues of law.

Government Investigations

• We represented the Ministry of Foreign Relations of the French Republic in an investigation of a state-owned financial institution.
• Our attorneys successfully represented a foreign executive in a DOJ investigation of alleged price fixing in the air cargo industry.

Energy

• Venable has extensive experience on international oil and gas projects, including writing energy laws for an African nation and handling arbitrations over oil- and gas-related disputes. We have worked on energy projects with private institutions, as well as institutions such as the World Bank Group and International Finance Corporation. Projects have been in Colombia, Ecuador, Ethiopia, Egypt, Iraq, Mexico, the Democratic Republic of the Congo and Russia.

Litigation

• Venable represented a major international defense contractor in litigation with a communications satellite services provider for breach of contract and negligence in connection with a failed satellite launch. We successfully defended against primary causes of action at trial and on appeal, resulting in a settlement favorable to the client.
• We have handled U.S. litigation for a family home office based in Monaco, as well as its special purpose vehicles and the individual family members. The clients have offices in Hong Kong and throughout Europe. We have also provided pre-litigation advice to these clients in connection with various investments in the United States and Europe. To address matters that have international components, we have coordinated with foreign counsel.

SEC and Investigations

• Venable represents a large generic drug manufacturer based overseas with a U.S. manufacturing and market presence, in wide-ranging criminal and civil investigations by the U.S. Department of Justice, coupled with administrative enforcement actions by the Food and Drug Administration. The FDA has issued warning letters and an Import Alert for the company’s foreign facilities, and has invoked the Application Integrity Policy as to one of the foreign facilities, while the DOJ and FDA have pursued a criminal and civil False Claims Act investigation. Venable has represented the company for over two years in negotiations with the U.S. government.
• We currently represent the former controller of a publicly traded Latin American Internet advertising company in an SEC enforcement action alleging violations of the securities laws stemming from purported accounting improprieties brought in the Southern District of New York.
• Venable represented a major international corporation in a grand jury investigation conducted by the U.S. Department of Justice Antitrust Division of alleged price-fixing in the tobacco industry. The investigation of our client was closed without any government action.
• Venable's antitrust attorneys successfully defended a multinational pharmaceutical company in a complex FTC investigation of alleged antitrust violations related to settlement of patent litigation involving branded and generic pharmaceuticals.
• We are currently representing a multinational logistics corporation in a DOJ export control investigation and parallel Department of Commerce administrative investigation.
• We have assisted our pharmaceutical clients in responding to congressional investigations and in defending against mass tort claims in the United Kingdom and Canada.

FCPA

• We represented a target/subject in an SEC and DOJ investigation (a Brazilian citizen) into payments by a Brazilian subsidiary of a U.S. corporation made to government officials in a Far East country in order to secure a portion of a monopoly market in tobacco.
• We provided ongoing advice for FCPA concerns to a large multinational petroleum and petrochemicals company on arrangements with global suppliers and sourcing agents, and reviewed and enhanced policies and procedures for contractual agreements for import and export controls compliance and FCPA concerns.
• We reviewed and enhanced an FCPA/Anti-Corruption compliance policy, reviewed and enhanced training materials for both employees and agents, and reviewed and enhanced agent and vendor contracts for a multinational, U.S.-based government contractor with specific emphasis on conducting operations in the Middle East war zones.
• We represented a U.S. software engineering company with global independent sales representatives by reviewing and enhancing corporate policies and procedures, contractual documents and standard terms and conditions for export concerns.
• Venable represented a defense contractor in a DOJ criminal FCPA investigation involving the Middle East and Central Asia.
• We conducted an internal investigation and represented a defense contractor before the SEC and DOJ regarding allegations of bribing officials of a South American government.
• Venable assisted a client with relationships with foreign embassies in the United States, ensuring compliance with FCPA.
• Venable represented a U.K. furniture manufacturer in connection with an intellectual property dispute with a U.S. furniture manufacturer.

Labor & Employment

• We are providing ongoing employment law advice for domestic and international operations of the U.K.-based insurance company Hiscox.
• For a major multinational company, we developed employee retention programs for facilities targeted for immediate sale and coordinated all necessary amendments, governmental filings and employee communications regarding plan changes involved with the sale of the company.
• We handled the first OSHA trial in over a decade in St. Thomas, U.S. Virgin Islands, and obtained a complete dismissal of electrical violations issued to the client

Other

• We counseled Sodexo, a large French facility services company, with respect to U.S. legal and industrial security requirements relating to performance of U.S. classified contracts and potential acquisition of U.S. companies.

Multiple Areas of Practice

• Venable has been instrumental in assisting technology companies such as Gidel Technological in Israel, Algoriddim from Germany, Liechti in Switzerland, and ISONIC Medical in France, with regard to their various technological needs, licensing, contract negotiations and IP protection.

Intellectual Property Litigation

• Along with co-counsel, Venable represents several Taiwanese semiconductor clients in an investigation involving patents relating to certain small format Ball Grid Array (“BGA”) packages that incorporate Dynamic Random Access Memory (“DRAM”) chips. The Complainant, a patent-holding company, is claiming infringement of a number of patents relating to a type of enclosure for semiconductor chips.
• In an International Trade Commission lawsuit involving two patents related to smallpox vaccines, we represented a biotechnology company and reached a favorable federal court decision rejecting a claim of theft of trade secrets and misappropriation, leading to a global resolution of the dispute.
• At the International Trade Commission, the Administrative Law Judge invalidated the patent held by a plaintiff who sought to use it to stop our client’s business. The ITC found the patent invalid on each of the bases of anticipation: obviousness, inventorship and lack of enablement and written description. The matter involved next-generation smallpox vaccines developed and sold pursuant to the U.S. Government’s BioShield anti-terrorism program.
• We represented a telecommunications company in a patent suit involving routers, switches and hubs used in telecommunications equipment, and represented an agricultural vehicle manufacturer in an investigation involving alleged trademark infringement by certain agricultural vehicles.
• For a foreign company that develops and sells dietary supplements, we are defending a patent infringement case, and defending class action lawsuits claiming that labeling statements were false and misleading.
• We defended a subsidiary of the world’s largest research-based pharmaceutical company regarding an alleged infringement of patents concerning Hepatitis C virus (HCV) technology, brought by a multinational biotechnology firm.

Patent Prosecution and Portfolio Management

• We have prepared and prosecuted tens of thousands of patents worldwide for U.S. and international clients and we advise clients ranging from emerging technology companies, to universities, to large multinational organizations with complex patent portfolios that span the globe.
• Venable represents The University of California, Los Angeles (“UCLA”) for a wide variety of patent prosecution matters, including extensive global patent portfolios for UCLA that are licensed to companies for commercialization. We handle hundreds of patent applications for UCLA. One example is a patent portfolio licensed to a pharmaceutical company in which we recently obtained three U.S. and numerous foreign patents covering a cancer drug in Phase III clinical trials, generating significant milestone payments to UCLA. Another example is a portfolio licensed to a solar energy company, in which we recently obtained three U.S. patents and foreign patents relating to plastic solar panels useful in windows and other applications.
• Venable handles all global patent and trademark prosecution and counseling for a multinational pharmaceutical company, along with regulatory advice. We obtained several U.S. and foreign patents for an improved topical pharmaceutical formulation, managed a diverse global portfolio of patents and trademarks for spill-resistant oral formulations, and handled several patent litigations for the company.

Trademark/Copyright

• Venable attorneys counsel clients on copyright infringement issues (nationally and internationally), assignment of rights issues, work-for-hire agreements, ownership disputes, branding issues, licensing and IP audits. Venable attorneys have recovered hundreds of domain names around the world through inter partes proceedings.
• Venable has represented European media organizations such as Agence France Presse, the oldest and one of the largest wire services in the world, and ANSA, Italy’s premiere wire service, in various matters regarding copyright, licensing, infringements, rights of privacy, publicity and First Amendment issues.
• Venable has been active in representing European artists and artistic entities in licensing and protecting their works from counterfeiting in the United States such as Graphic International in Germany, and the Art Group and Felix Rosenstiel’s Widow and Sons, both in the United Kingdom.
• We successfully stopped the sale of infringing books by Carlton Books, a large U.K. publisher, resulting in a six-figure settlement and permanent injunction in the United States for American Mensa.
• Venable, working with local European counsel, won an important appeal for a Europe-based mobile phone manufacturer in its bid to register a rare motion trademark in the European Community. The nature of our client's mark presented a particular challenge, since the mark is complex and best captured by video. Local rules require motion marks to be represented solely by a single page of freeze frames and a written description, not a video. The trademark office refused to register the mark based on the argument that the precise motion was not clear from these items. Venable, with European counsel, persuaded the board of appeal to overturn this refusal by filing, among other things, a flipbook and key dramatizing the motion's progression. The board adopted our client's position that the trademark office must take reasonable steps to imagine how a motion mark progresses based on the original freeze frames and written description provided, not simply take a clinical view of them.

Technology Transactions

• For a biotechnology company, we handled international patent licensing, joint development, manufacturing, supply and commercialization agreements for international clinical trials for liver cancer therapies.
• We represented the world's leading provider of transformational medical technologies in its acquisition, commercialization and global distribution of state-of-the art medical imaging, diagnostics and patient monitoring products, including a strategic alliance to develop and distribute next generation home healthcare products.