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FACE THE WORLD™

InternationalYEAR INREVIEW

2013

Selected Examples of International WorkWhiteford, Taylor & Preston LLP

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an individual, you need responsive and knowledgeable

advisors who understand the world as it relates to you.

Our attorneys and business consultants offer pragmatic

solutions tailored to your particular situation.

Representative examples of our International work in 2013

follow, sorted by type of law.

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Year In Review 2013: Selected Examples of International Work 1

CONTENTS

BusinessCorporate Transactions ...................................................................................3General Counsel .....................................................................................................3Tax ......................................................................................................................................4Intellectual Property .........................................................................................4Regulatory Matters & Trade Policy Advice ...................................5

Litigation/Arbitration ...........................................................................................5Global Compliance (Export Controls, OFAC, ITAR) ......................5Specialty Areas

Non-Profit Organizations & Associations .....................................6Immigration, Labor & Employment ......................................................6Cybersecurity, Data Management & Privacy ..............................6Construction ..............................................................................................................7Franchise Law ...........................................................................................................7Maritime .........................................................................................................................7Art Law .........................................................................................................................7

Global Referral Networks ...................................................................................7Representative Positions ..................................................................................7WTP’s International Practice .......................................................................8


Where Did Our International Work

Take Us in 2013?

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Attorney Advertising — DisclaimerWhiteford, Taylor & Preston L.L.P. has produced this report for persons interested in learning about our firm. The report is considered attorneyadvertising in many states and is intended to provide information of general interest to the public, not legal advice about specific situations orproblems. Counsel should not be selected based on advertising materials, and we recommend that you conduct further investigation whenseeking legal representation. Please note that any prior results we may have achieved do not guarantee a similar outcome in the future.The firm does not intend to create an attorney-client relationship by offering this information, and anyone's review of the information shall notbe deemed to create such a relationship. You should not rely on any information in this report without seeking the advice of an attorney.

Business

Corporate Transactions

◆ Represented a Brazilian corporation in the renewal of itsexclusive sales and distribution agreement with a U.S. corporation. The Brazilian corporation’s business is to import and distribute testing equipment to diagnose certaindiseases endemic to tropical areas. The client sells to theBrazilian government and local agencies; and the U.S. corporation manufactures the testing kits and reagents.

◆ Provided guidance to Middle East-based client concerningthe formation of corporate entity in the free zone in Dubai,United Arab Emirates (UAE).

◆ Assisted client with structuring private limited company inIndia with assistance of local counsel in Kolkata, India.

◆ Assisted a U.S.-based company in connection with its efforts to obtain financing from a South African bank for a project in Addis Ababa, Ethiopia, that would convert municipal solid waste into jet fuel.

◆ Represented U.S.-based engineering firm in connectionwith its launch of a local office in Kolkata, India.

◆ Represented UAE-based company in connection with duediligence of copper and gold mining company and mining licenses in Turkey, focusing on tax, regulatory and other requirements.

◆ Represented and advised shareholder in a UAE based com-pany in connection with a dispute against its Chinese partner.

◆ Advised U.S.-based company in connection with doing business in Malaysia.

◆ Advised U.S.-based software technology firm in connectionwith back office set up in Bangalore, India.

◆ Represented mechanical engineering firm (HVAC) providingdesign services to pharmaceutical company in Dhaka,Bangladesh.

◆ Represented and advised U.S. institutional lender in connection with investigations, due diligence, take over options and sale of assets in Afghanistan.

◆ Assisted Italian electronics and military equipment distrib-utor in its effort to expand its business footprint in theUnited States.

◆ Represented and advised U.S. client with factories inAfghanistan in connection with obtaining a grant from theUSAID to support women’s training programs.

◆ Advised Afghanistan based client in connection with financing for infrastructure project in the area of oil andgas in Afghanistan.

◆ Advised Colombian food manufacturer regarding corporateissues in the United States.

◆ Counseled and represented a U.S. entity concerning a corporate transaction with a government owned- and operated in hospital in Namibia.

◆ Represented U.S. coal supplier distributing to entities in China.

◆ Represented consulting firm regarding security services involving the airport in Morocco.

◆ Assisted an IT business from Dubai, UAE, in creating a U.S.subsidiary.

◆ Prepared an opinion letter for a Delaware company seekingto qualify to do business in the Province of Alberta, Canada.

◆ Advised a U.S.-based company in connection with a U.S.State Department grant for a project in Afghanistan.

◆ Advised a U.S.-based software company with respect to potential transactions in Russia and Hong Kong.

◆ Organized a U.S.-based subsidiary on behalf of a Dubai,UAE-based technology company.

◆ Merged wholly-owned U.S. subsidiaries of three Finnishcompanies.

General Counsel

◆ Served as outside general counsel providing corporate, employment, government contracts and litigation advice to two U.S.-based services company doing work in India.

◆ Served as General Counsel of a well-known, all natural skincream company that distributes in Whole Foods, Costco, andthroughout the world, including global tax guidance and assistance with counterfeit and grey-market importation issues.

◆ Provided general counsel services to an organization inUzbekistan that operates a school and a clinic for membersof the international community and local families.

◆ Served as worldwide IP counsel of private-held wire diecompany that sells globally.

◆ Represented a U.S. entity that distributes seafood to super-markets with operations and business dealings in Vietnam,Chile, Ireland, and Spain.

◆ Served as worldwide IP counsel for open source ContentManagement System (CMS) which is estimated to run 2.7percent of the Web.

◆ Served as worldwide IP counsel to manufacturer of high-quality, aqueous and enzymatic cleaners for surgical andwafer industries.

◆ Represented a transportation services firm concerning non-compete and non-circumvention issues involving China.

◆ Represented an Italian entity in establishing U.S. publishinghouse targeted to authors in France, Spain, and Italy.

◆ Represented security services consulting firm concerningairport and other security issues in Indonesia and Morocco.

◆ Represented manufacturer of traditional Australian andNew Zealand sweet and savory pies.

◆ Served as U.S. general counsel to, and provided claims administration and handling in the U.S. for, a Bermudadomiciled insurance company.


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4

Tax

◆ Assisted German parent corporation in connection with itsU.S. subsidiary’s tax filing and corporate compliance issues.

◆ Represented UAE based company in connection with duediligence of copper and gold mining company and mining licenses in Turkey, focusing on tax, regulatory and otherrequirements.

◆ Represented a number of U.S. and European companies inconnection with tax and regulatory disputes with the Government of Afghanistan.

◆ Served as General Counsel of a well-known, all natural skincream company that distributes in Whole Foods, Costco, andthroughout the world, including global tax guidance and assistance with counterfeit and grey-market importation issues.

◆ Advised a U.S.-based company in connection with tax andother implications of company membership options transferred by a Belgian corporate optionee to its owner.

Intellectual Property

◆ Represented a start-up company commercializing newtechnology with potential to radically change plumbing and lighting industries, among others, which is competingin international innovation competition in Denmark.

◆ Served as worldwide IP counsel of private-held wire diecompany that sells globally.

◆ Represented U.S. entity concerning the commercializationof its patented internet-ordering software technology.

◆ Advised client from Mexico in addressing trademark infringement issues in the U.S. in the hospitality industry.

◆ Assisted Kazakhstani clients in obtaining trademark pro-tection in the U.S.

◆ Assisted client from Cyprus in maintaining issued patentsin the U.S.

◆ Filed patent applications for clients from Colombia andIndia in various industries.

◆ Represented Korean company concerning patent infringe-ment claims involving automobiles, in particular Section337 at the U.S. International Trade Commission.

◆ Assisted vineyard from Spain in addressing wine distributionconflicts and renewal of trademark registrations.

◆ Advised investor in company from Colombia on intellectualproperty issues related to his investments.

◆ Filed patent application in the U.S. for South Korea client.

◆ Prosecuted patent applications for U.S. clients in Europe,Mexico, China, Brazil, Korea, and Australia.

◆ Filed and prosecuted U.S. trademark applications for clientsin the United Kingdom.

◆ Prosecuted U.S. trademark application for citizen of Finland.

◆ Filed and prosecuted U.S. trademark applications for clientsin Canada.

◆ Prosecuted U.S. trademark applications for clients in theNetherlands.

◆ Enforced South Korean-based company’s trademarksagainst infringers in the U.S.

◆ Assisted U.S. clients with developing trademark protectionand enforcement strategies for numerous foreign countries.

◆ Managed trademark filings in Canada, China, the EU, ElSalvador, India, Qatar, Saudi Arabia and the United ArabEmirates.

◆ Searched and analyzed proposed trademarks for clients inthe United Kingdom.

◆ Served as worldwide IP counsel for open source ContentManagement System (CMS) which is estimated to run 2.7percent of the Web.

◆ Served as worldwide IP counsel to manufacturer of high-quality, aqueous and enzymatic cleaners for surgical andwafer industries.

◆ Drafted trademark and copyright license agreement for usein the United Kingdom, and interfaced with U.K. counselregarding country-specific revisions to said agreement.

◆ Assisted U.S. client in finding a Colombian partner for responding to a large RFP in Colombia for an IT contract.

◆ Provided advice on Austrian contract involving sale ofbusiness and assignment of rights in technology, with assistance of our summer intern from Germany.

Year In Review 2013: Selected Examples of International Work

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Regulatory Matters & Trade Policy Advice

◆ Represented an agrochemical company based in Bulgaria,and its Canadian subsidiary, in connection with U.S. regulatory and related matters. This included assistance inefforts to obtain U.S. registrations for various pesticidesand to market those pesticides in the U.S.

◆ Represented and advised U.S. client with factories inAfghanistan in connection with obtaining a grant from theUSAID to support women’s training programs.

◆ In conjunction with three law firms and seven-lawyer team,advised three U.S.-based companies in Houston, Texas incomplex transaction of restarting existing gas plant opera-tions in Nigeria, preparing natural gas liquids (NGLs) for sale,then monetizing the dry gas to liquefied petroleum gas (LPG)or methanol for export to the Caribbean region. Transaction included acquisition of several gas treatment (barge) vessels.

◆ Reviewed and revised professional services agreement onbehalf of premier research university in the Greater Bostonarea with non-profit and non-governmental organizationthat maintains offices in Africa, South and Southeast Asiaand China and brings resources to bear on poverty reductionand sustainable development, particularly in Kenya.

◆ Advised premier research university in Greater Boston arearegarding high profile institute concentrating on East Asianstudies, particularly China.

◆ Represented sellers in potential dispute with buyers concerning funds placed in escrow and U.S. Customs andBorder Protection (CBP) prior disclosure concerning classification issue.

Litigation & Arbitration◆ Represented three corporate defendants against breach of

contract and other related claims arising from the purchaseof an Irish company by an English company.

◆ Represented traditional fish sauce manufacturer with operations in Phu Quoc, Vietnam, and global distributionoperations in trademark infringement litigation.

◆ Defended client in a federal lawsuit where the plaintiff hadalleged that our client was responsible for a third party’s failure to pay money under a contract governed by the lawsof the Lebanese Confederation to provide certain telecom-munications services in Somalia. WTP argued successfully in a motion to dismiss that the federal court did not havesubject matter jurisdiction over an action between two non-domestic parties and that the plaintiff failed to join anindispensable party.

◆ Represented a Saudi national in a dispute with a classic carrestoration expert in Virginia. The parties contracted forrestoration and shipment to Saudi Arabia of a specific set ofclassic automobiles, and the counterparty accepted paymentbut did not perform as agreed. WTP examined litigation options, identified causes of action, and negotiated favorablesettlement and forbearance agreement with counterparty.

◆ Represented Korean company concerning patent infringe-ment claim involving automobiles, in particular Section 337at the U.S. International Trade Commission.

◆ Continued to represent a German manufacturer of industrialmixers in a construction case pending in New Jersey, arisingout of renovations performed at a wastewater treatment facility.

◆ Represented U.S. company sued in putative class actionbrought by employees of our client’s affiliate. The lawsuit involved translation and interpretation work performed bythe plaintiffs for the U.S. military in Kuwait, and alleged violations of certain federal, state, and Kuwaiti laws.

◆ Served as U.S. general counsel to, and provided claims administration and handling in the U.S. for, a Bermudadomiciled insurance company.

◆ Provided advice to Spanish company in connection with location of assets of U.S. subsidiary of Spanish company inbankruptcy proceedings.

◆ Representation of Estonian beneficiaries concerning U.S.trusts and estates proceeding.

Global Compliance (Export Controls, OFAC, ITAR)◆ Represented U.S. maritime engineering firm concerning

various teaming and related agreements affecting theglobal deployment of unmanned vehicles and other innovative projects for the U.S. military that are subject to the ITAR.

◆ Represented company developing cutting-edge inertialmeasurement units (IMUs), including negotiation of commercial and university research agreements subject to the ITAR.

◆ Advised manufacturer of large heat transfer equipment regarding the ITAR and other export control issues on bidto major European company.


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Specialty Areas

Non-Profit Organizations & Associations

◆ Advised U.S. based public university in connection with establishing a non-profit entity in Afghanistan.

◆ Advised U.S. non-profit client in negotiating agreements withaffiliate in Uruguay.

◆ Provided advice to an international association on developing a policy for providing references for O-1 visa candidates sponsored by member organizations.

◆ Provided general counsel services to an organization inUzbekistan that operates a school and a clinic for membersof the international community and local families.

◆ Assisted international certification board with corporate andtax issues in Austria.

◆ Provided advice to international certification board on issuesinvolving Cuba embargo.

◆ Assisted in negotiation of association annual meeting/hotelcancelation in Turkey.

◆ Provided advice in connection with potential copyright infringement of scholarly journal in China.

◆ Advised international association on negotiation of strategicalliance in South Korea.

◆ Assisted with providing advice to international associationon corporate registration and tax issues in Colombia.

◆ Assisted in negotiation of hotel contract for associationmeeting in Mexico.

Immigration, Labor & Employment

◆ Handled an L-1 petition (intercompany transferee) for a new client based in the United Kingdom in order to bring a senior sales representative to the U.S. in order to expandthe company’s U.S. based consulting practice. The company provides environmental cost accounting and logistics services in order to assist clients in reducing their environmental footprint.

◆ Handled two L-1 petitions (intercompany transferee) for the European operations of a global hotel entertainment systems company. The company is based in the Philippinesbut the transfers were made from the French and UKoperations. The company is attempting to enter the U.S.and North American market and is working in partnershipwith a long term firm client.

◆ Provided advice on pension issues to two separate Germancompanies with U.S. operations. In both cases the Germancompanies were looking to coordinate their U.S. and Germanpension obligations so that similar benefits were availableto employees across borders.

◆ Provided advice to a Dubai, UAE-based company owned byan Indian national with respect to the visa options availableto open a U.S. branch office.

◆ Handled an immigration related issue with DHS TRIP inconnection with border procedures that result in the routine referral of a Swiss business executive to secondaryinspection on arrival in the U.S. WTP has also assisted thisclient (a Swiss railcar company and its principal owner) inthe purchase of property in Florida.

◆ Provided advice for a U.S.-based not-for-profit company inconnection with the delay in visa issuance for the executiveofficer of their Indian operations. Also assisted the samecompany in getting the Mexican consulate to reconsiderand reverse an initial decision to deny the visa renewal.

◆ Provided employment related advice for a U.S. based international not-for-profit in connection with the hiring of independent contractors in Canada, Hong Kong andSouth Africa. Pangea Net member firms in Hong Kong and South Africa also worked with our firm on this project.

◆ Currently providing advice to a U.S. based company in connection with the expansion of its Brazilian operations,including the hiring of a Brazilian national to oversee operations. Advice has been provided by our Pangea Netpartner in Brazil.

◆ Provided advice to an international association on developing a policy for providing references for O-1 visacandidates sponsored by member organizations.

◆ Assisted client from Colombia in negotiating a settlementagreement with a co-owner/employee of the client’s subsidiary in the United States and terminating businesswith the subsidiary.

◆ Advised client in termination of employee of United Statessubsidiary of a company from Colombia.

◆ Assisted a Venezuelan physician, who is working in SaudiArabia, with getting an eminent physician license in Maryland.

◆ Assisted a U.S. food import company with immigration matters concerning a Guatemalan resident.

◆ Worked on immigration matters on behalf of a Dubai, UAE-based technology company.

◆ Provided wide variety of immigration related services toour business clients, including all aspects of hiring foreignnationals, immigration compliance, audits and investigations,visa applications, consular assistance, etc.

Cybersecurity, Data Management & Privacy

◆ Determined data security breach notice obligations in theUAE, on behalf of a U.S.-based trade association.

◆ Counseled two U.S.-based trade associations on the possibleconsequences in other countries of seeking extraordinaryinjunctive relief related to a global phishing scam.

◆ Determined data security breach notice obligations inCanada, on behalf of a U.S.-based trade association.


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Construction

◆ Provided advice regarding local practices and contractingissues in Afghanistan.

◆ Continued to represent a German manufacturer of industrialmixers in a construction case pending in New Jersey, arisingout of renovations performed at a wastewater treatmentfacility.

◆ Continued to provide legal advice for a U.S. engineering-construction firm doing business overseas as to the formof its contracts and subcontracts and as to procurement issues.

◆ Negotiated Master Distribution Agreement on behalf of clientto be exclusive importer of heavy construction equipmentline from Austria for distribution in North America.

Franchise Law

◆ Advised apparel company regarding international licenseand distribution agreement for southern Africa.

◆ Advised apparel company regarding a third party logisticsagreement for the warehousing and transport of its productsout of China.

◆ Negotiated a Master Distribution Agreement on behalf of aclient to be exclusive importer of heavy construction equip-ment line from Austria for distribution in North America.

◆ Drafted trademark and copyright license agreement for usein the United Kingdom, and interfaced with U.K. counselregarding country-specific revisions to said agreement.

Maritime

◆ Represented European sub-sea construction company thatlays pipeline for large oil and gas companies in ultra-deepwater on maritime and Jones Act issues related to the operation of their vessels, letters of exemption from theU.S. Coast Guard, and installation and decommissioning ofoil platforms in U.S. territorial waters and over the U.S.Outer Continental Shelf (OCS).

◆ Represented U.S. maritime engineering firm concerningvarious teaming and related agreements affecting the globaldeployment of unmanned vehicles and other innovativeprojects for the U.S. military that are subject to the ITAR.

Art Law

◆ Researched and drafted written agreements and licensesfor the use of U.S.-created images in Europe and Japan.

◆ Licensed works of art in created in Europe in the U.S.

◆ Involved in lending U.S.-created art to museums overseasand donating art and other items to European and Israelivenues.

◆ As counsel to various clients’ trusts, one of our lawyersdrafts agreements necessary to donate funds to organizations in Europe and Israel, mostly in the arts.


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Global Referral NetworksIn addition to our lawyers’ deep knowledge of specific firms invarious countries around the world, WTP is actively involved in two global legal referral networks: Lexwork International &Pangea Net.

Lexwork International: www.lexwork.netLexwork International has 41 member firms located in majorcities throughout North America, Central & South America,Europe and Asia, including over 2,500 lawyers, covering 35countries and 111 cities. A WTP partner serves on its GoverningBoard and also chairs its litigation practice group. A number ofother WTP attorneys are involved in Lexwork’s various otherpractice groups, including corporate, intellectual property,labor & employment, health care, and real estate.

Pangea Net: www.pangea-net.orgPangea Net has 25 member firms located in North America,South America, Europe, Asia and Africa. A WTP partnerserves as Chair of Pangea Net.

Representative Positions Our lawyers are involved in many international organizations,including:

Appointed by Governor of the State of Maryland to the Governor’s International Advisory Council (GIAC) to providestrategic direction on ways to enhance Maryland’s global profile

Appointed by the U.S. Secretary of Commerce to serve asVice-Chair of the Maryland/Washington, D.C. District ExportCouncil (DEC) and Chair of the Trade Policy Committee

At-Large Member of the Executive Committee for the ITC TrialLawyers Association and Membership Chair

Member of the Advisory Council of Jhpiego, international non-profit health organization affiliated with Johns HopkinsUniversity

Special Advisor to Government of Afghanistan

WTP’s International Practice

Our international practice has over 30 lawyers who focus on specific geographies (Asia, Middle East, Israel,Africa, Europe, South America, and Canada) and specific areas of international practice (e.g., trade litigation,export controls, project finance, M&A, immigration, international IP, NGOs and development assistance).

For more information, please contact one of the group’s leaders:

8

Alexander W. Koff

+1 202 262 [email protected]

Enayat Qasimi


S. Keith Moulsdale


Ilana Subar


Peter D. Guattery


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Our Team

*Photos not available for: David Daneman, Rose Matricciani, and Jane Rogers.

Whiteford, Taylor & Preston LLP

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Documents

FACE THE WORLD™ - wtplaw.com · Bangladesh. Represented ... business and assignment of rights in ... Represented three corporate defendants against breach of contract and other