Podcast: R&G Tech Studio Presents: IP Transactions and Technology Associate Josh Jackson
In this episode of the R&G Tech Studio, IP transactions and technology associate Josh Jackson sits down with technology, media & telecommunications co-lead Ed Black to discuss his practice and how he provides legal tech support to companies and organizations to help solve their business challenges.
Ed Black: Wow. And so at night, do you talk about law?
Josh Jackson: No, we try to avoid that.
Ed Black: Try to avoid it—leave it at the office. I know you have a young son. I take it he's on track to also be a lawyer?
Josh Jackson: We're keeping his options open. We're trying to allow him to choose.
Ed Black: Okay, good. So, Josh, I know your practice focuses on helping companies and organizations who are using tech to solve their business problems. You help them put the deals in place—the acquisitions, the collaborations, the service agreements, etc.—that solve those problems for them. But maybe can you elaborate on that a little bit and just tell us how that works? Maybe give us a few examples.
Josh Jackson: Sure. You said it exactly right, Ed—mainly solving business problems through strategic technology transactions, helping business people, managers, other attorneys who need help navigating those complex issues.
Ed Black: Are there any specific industries that you focus on?
Josh Jackson: Yes, the asset management industries, fintech, health care industries, the pure tech companies—my practice spans the range of multiple industries where tech help is really needed, from a legal perspective.
Ed Black: In the asset management space, can you give us an example of a client and a situation, a set of problems, that you solved?
Josh Jackson: Absolutely. I think, one, we have a large global asset manager that decided to enter into a complex collaboration with a major tech services provider providing back office services; two 800-pound gorillas in the space, and as you might imagine, very intense and complicated negotiations. And one of the things that I do is help facilitate those negotiations and get the parties to a space where they can both agree and solve business problems. For example, one hang-up that these two 800-pound gorillas had was over the liability cap, and so I helped them develop a liability framework that allocated the risks of both parties based on their business needs. I can't give you the specifics of those, but that's a particular space where I used my expertise based on prior deals, and based on understanding the industry and the business needs of our clients and the counterparty, to help them get to a spot where they could agree.
Ed Black: Are there other industries you work in? I know, for example, you've done some work in digital health. I know you've worked in the crypto space. Are there other examples of problem-solving in those areas?
Josh Jackson: Yes. We have a client who makes tech products for the health care space (digital health), and one thing they like to do, they like to acquire a lot of their technology and product lines through M&A. They've done a couple deals recently that I've helped out with, with companies that are spinouts from universities. The founders of these spinout companies, they often wear two hats. They wear their spinout company hat, and they also wear their university professor employee hat. And so, one of the unique challenges that I help this client and other clients with is making sure we drill down on the issues related to who owns the IP, the tech, in the spinout, and make sure that the proper rights are in place between the founders and the company where the tech is being acquired, and also making sure we coordinate with the university itself to make sure there's no claims on the IP, make sure the paperwork's in place, the right licenses, asking the correct questions about in-licenses of IP and out-licenses and making sure that the acquisition is clean.
Ed Black: In that kind of deal, it sounds like the main parties to the deal are the client, the tech company with the broad mix of products, the target, the innovative start-up that's got the great new product that the big co. wants to add to its product line—but then, is the university at the table as well for those deals? Do those end up being three-way negotiations?
Josh Jackson: Oftentimes they are. A lot of times, the university retains rights in the technology or the products through the form of grant-back rights from the founders of the start-up back to the university. So, we'll have a three-way negotiation going on to make sure that the university and the start-up are both on the same page, and then also that our client is getting the rights that they expect from both the start-up and the university.
Ed Black: Just a quick question, because I think of three-way negotiation and I think of something that could just go sideways for 100 different reasons and could cost a giant pile of money to get done. And yet, I know that our clients, one of the keys for them (specifically around something like adding a technology to their product mix), is to get it done on time, on budget. How do you bring it home on time, on budget in these settings?
Josh Jackson: Absolutely—that's a great question. And I think that's part of the value-add—I'm able to organize and run the process in a way that makes it efficient. I've done this a number of times now, and I understand generally how universities and university tech transfer offices work, and it's very different than the commercial industry. That's part of the art—part of the value-add is managing the process to keep in contact with them and keep the process efficient to keep costs down for our client.
Ed Black: Now, I know you've done a bunch of work in the crypto space. My first question for you is just a simple one and not a legal question at all: Is crypto dead? For so many years, it seemed like it was a gold rush environment, and now, it seems like it's a gold bust environment. Do people still care about crypto?
Josh Jackson: I think crypto is not dead. I think it has slowed down a bit, in line with the rest of the economy. But I think there's a lot of utility behind crypto and blockchain, and Web3, in particular, that will keep it alive and well in the future, and keep it around.
Ed Black: You talk about that notion of utility, and in particular, blockchain, Web3, etc. And just from a business perspective, there are so many things where there's a traditional way of selling them involving normal paper, humans, and cash, where you hear that exact same thing is now being sold in some tokenized format, meaning it's attached to a blockchain, and suddenly, you see cash jumping into that market—you see a pile of liquidity that somehow wasn't there before. Now, I have to say, looking at that, there's a part of me that thinks, "That's just a fad. That's just people latching onto something that sounds new." But is there really, in fact, broader value in utility in attaching interest and assets to the blockchain and tokenizing?
Josh Jackson: Absolutely—and I think there are two considerations. You mentioned one, the fad, and then the second is the utility. I think the fad portion of it is very real. I think a lot of investment dollars, particularly over the last year, are related to more of the marketing aspect or getting on board when something's hot, just a little bit for the fad purposes. However, I think the second part is the more important part that you mentioned, and that's the utility. And blockchain and Web3 have a lot of utility over and above just the marketing fad in this situation. Tracking ownership is a big thing, particularly for assets that have been historically hard to track ownership—I think the blockchain provides a good way to do that. I think a lot of things still need to be worked out and things are in development, but there's a lot of really smart people working on these problems.
Ed Black: Does it accomplish anything else? Or is it just a very convenient title record, so in a much more public way, you can know who the owner is?
Josh Jackson: Yes, title record—also the decentralized nature of it. Technology gives the ability for many people who don't have access to an asset to now have access to that asset. That's another big part of the utility of blockchain.
Ed Black: So, it adds a lot of liquidity when it's operating correctly. Now, the last thing when I think about crypto stuff is one of the things (just reading in the paper, especially since the bottom fell out and everybody's suing everybody), is these instances where people are managing the risk associated with owning digital assets—owning crypto and digital assets. You've got to keep them somewhere. You've got to keep them safe. And I know that that's been a big business problem, especially for some of our more institutional clients. How do you own the cutting-edge asset in a world where you don't have all the established players and systems for security, custody, and so forth? Have you seen that? And if so, have you seen that in this context, where you've had to help clients deal with that issue, and how does that work?
Josh Jackson: Yes, I have seen that a lot. And custody is something that I've been getting a lot of experience in in the last one or two years as it becomes much more important to our clients—custody of digital assets, both asset managers and funds, and also global media companies. Any of our clients who are starting to use cryptocurrency or other digital assets like NFTs, they're all coming to me and saying, "Where should we keep these? What's the best technology used?”
Ed Black: What do you tell them? How do you keep track? It's such a changing world. What's the answer to that question?
Josh Jackson: It is, yes. So, I've worked a lot now with many different digital asset custody providers, both talking to them, getting information, and also helping clients negotiate custody agreements. And so, I've been keeping an up-to-date, cutting-edge chart that compares different offerings by different custody providers, both on the level of technology (what technology do they use to protect digital assets), and also risk provisions, indemnity provisions, and security. I have a full chart of these comparing different service providers, and when a client comes to me and tells me the issue they're having or explains the business proposition for using crypto or using NFTs, I'm able to tell them in detail what different service providers will do for them, where difficult areas to negotiate are, or where to ask for something that they wouldn't normally give.
Ed Black: And if they make a choice, can you help them get the deal done?
Josh Jackson: Absolutely. I now have contacts at many of the digital asset custody providers and can connect them. And for a lot of clients, we've gotten on the fast track to getting these custody agreements done. Just based on past negotiations, I'm able to build off those for other clients so I know, first, who to talk to at the custody providers and, second, what are the soft points or areas that these providers are willing to negotiate on and areas that they're not able to negotiate on. And it's really made it an efficient process for a lot of our clients who need these custody agreements in place.
Ed Black: Josh, now, it's been a pleasure talking, especially about all the law stuff. But before we go, I have a couple questions. I'm going to admit, they're silly questions, but I call it the personality test portion of the podcast. We get to see who you really are here. So, let me ask you a few questions, lightning round—quick question, quick answer. Maybe we'll talk about some of them, but quick question, quick answer. Are you ready?
Josh Jackson: I'm ready.
Ed Black: Favorite sports team?
Josh Jackson: Favorite sports team is University of Michigan football team. That's one of the things I miss living in the East—college sports and the passion of college sports from the Midwest.
Ed Black: I take it that's because you went to University of Michigan. Is that correct?
Josh Jackson: I did, yes—undergrad and grad school, so I'm a very diehard fan.
Ed Black: Wow. Double down. Season tickets—you went to every game the whole time?
Josh Jackson: While I was there, yes. I go back to about one game per year now.
Ed Black: Do they have a fight song?
Josh Jackson: Yes, “Hail to the Victors”—it's probably one of the most famous fight songs there is in college football.
Ed Black: When we have extra time on your next podcast I'm going to make you sing it. In any event, favorite book?
Josh Jackson: Favorite book is Goodnight Moon, which a lot of people will probably know is a children's book. These days, with young kids, I only have time to read children's books, so my favorite book is currently Goodnight Moon, and my son loves that one, and I love reading it to him every night.
Ed Black: That's superb. Key question: In a peanut butter and jelly sandwich, what is more important, the peanut butter or the jelly, and why?
Josh Jackson: That is a good question. Fortunately, I have an expert, I think, at home on this question, who's my two-year-old son. And if I were to ask him, I think he would say that both are important to the sandwich. I think they're like the yin and the yang of the sandwich, and one can't reach its full potential without the other.
Ed Black: I see. So, he's a Buckminster Fuller fan. It's all about synergy—it's all about one plus one equaling four, and you only get there when peanut butter and jelly come together. Josh, it's been pleasure talking to you. To our audience, it's been a pleasure having you for yet another R&G Tech Studio podcast. Please remember that this podcast is available on the R&G Tech Studio webpage on the ropesgray.com website and also available everywhere else you get your podcasts. Thank you for joining us.