UK: Negotiating and Structuring a Joint Venture in the Communications and Technology Industry
Flexible Commercial and Legal Solutions to Guarantee a Win-Win Situation

1. Introduction

Joint ventures have, in the communications and technology industry (just as with other industries), become an increasingly important medium through which companies undertake significant business activities and projects. This article examines the crucial role that lawyers are required to play in the negotiation and structuring of joint ventures to ensure that they are successful and long-lasting. Although the title refers to the creation of "Solutions to Guarantee a Win-Win Situation" this is somewhat misleading. There is no way to guarantee a win-win situation. The statistics show that only 50% of all joint ventures succeed, the average life of a joint venture is about seven years, and most face serious management or financial problems in their first two years.¹ Accordingly, when advising on a joint venture, the role of a lawyer is to help create a joint venture that is more likely to succeed than not by advising on the mechanisms required to run the business and deal with conflicts and, where conflicts cannot be resolved, the mechanisms for terminating the joint venture and determining who gets what.

Before examining the negotiation process step by step, it is helpful by way of background to look at the aims and ambitions of parties entering into joint ventures in general and in the communications and technology industry in particular. To achieve a win-win situation, corporate counsel will need to know what are the aims and ambitions of the joint venture partners. What is more, he will need to know the particular market and the prospective business of the joint venture so that he can understand how the joint venture itself can win from the collaboration. Indeed, to create a successful joint venture, it is insufficient to just create a win-win situation for the joint venture partners. The joint venture itself must also win from the collaboration. Counsel must therefore create a win-win-win situation.

2.1 General Aims

Although the ultimate aims of joint ventures vary from case to case, the general aims of most joint ventures tend to be similar. These general aims are evident in joint ventures created in all industries, and not just the communications and technology industry. These are essentially threefold.

The first is the ability to combine expertise and resources. This enables transactions to happen which otherwise might not. Take Symbian - the joint venture between Ericsson-Nokia-Psion - as an example. Symbian was established for the purpose of developing an operating system for use in wireless information devices (a combined palm top computer and mobile phone) and then licensing it to manufacturers. To achieve this what Symbian required was Ericsson's and Nokia's expertise in mobile phones and Psion's expertise in palm top computers.

The second is the ability to deal with the escalating size of transactions and projects. This is more than just the need to combine resources, as a company may have the resources to carry through a big project, but it may be reluctant to do so because of the risks and costs associated with it. The advantage of joint ventures with the bigger transactions is that it allows the risks, costs and resources relating to a project to be shared. In the communications industry, for example, this has been demonstrated in connection with 3G. First we saw joint ventures (such as SpectrumCo Limited in the UK)² being formed to participate in the licensing process and then subsequently we saw collaboration between the winners of 3G licences in relation to the roll out of the networks required for 3G services.

The third general aim is the desire to enter into new markets and emerging economies. The driving factor behind this is the globalisation of world markets. All major companies around the world now look beyond their domestic markets for opportunities to improve returns, protect against downturns in local economies or simply remain competitive. An example of this in relation to the communications industry is France Telecom and its relatively recent joint ventures to acquire 3G licences outside of France; combining with MobilCom AG in Germany to create MobilCom MultiMedia GmbH, and NTL in the UK to create NTL Mobile Limited. The former was successful in winning a 3G licence, the latter was not.

Whilst the general aims behind joint ventures discussed above apply equally to the communications and technology industry (as demonstrated by the examples cited above), there are further industry specific factors at play in the communications and technology industry. These industry specific factors explain why joint ventures have now become commonplace in the industry.

In the past few years there has been a liberalisation of domestic, European Union and other regulations in the communications and technology industry - laws barring entry have been removed, pro-competitive regulations have been promulgated, there has been a drive towards harmonisation of laws, and a more lenient approach has been taken by competition authorities to joint ventures. Each of these changes has acted as an impetus for joint ventures, but in different ways. The removal of barriers and the introduction of pro-competitive measures has created opportunities to enter new markets in the global economy and new business opportunities. The harmonisation of laws and the more lenient approach to joint ventures has created more legal certainty and this, in turn, has encouraged joint ventures where the previous complicated and unpredictable clearance process had acted as a deterrent because delays result in mounting costs and a threat to first mover advantage.

In recent years we have seen a period of consolidation in the communications and technology industry as demonstrated by the Vodafone/AirTouch merger, the Vodafone/Mannesmann merger, the France Telecom/Orange merger and the AOL/Time Warner merger. This trend is likely to continue in the foreseeable future as the general decline in tech stock has made it possible to acquire targets at a relatively good price, and has increased the pressure on companies to merge to achieve cost reductions and diversify their markets. These very goals can also be achieved through joint ventures, but without some of the consequential disadvantages. Compared to mergers and acquisitions, joint ventures have the following advantages: a joint venture does not usually involve the same amount of expense and debt that will be required to finance an acquisition; a joint venture will allow the parties to cherry pick the resources required for a project, whereas a merger or acquisition requires one party to acquire the other, warts and all; a joint venture may be able to obtain regulatory approval in circumstances that a merger will not, especially since the joint venture can be tailored to avoid infringing the relevant regulations; and, finally, joint ventures allow parties the opportunity to assess how they work together without losing independence and may even be used as a stepping stone towards a full-scale merger/acquisition. Indeed, when advising on a merger/acquisition counsel should check to see whether the client has considered a joint venture as an alternative and vice versa when advising on a joint venture.

New business opportunities have arisen in the communications and technology industry because of the liberalisation of regulations and the promulgation of pro-competitive measures, but also because of new technologies and new ideas or strategies in business development. Often these new business opportunities have required parties to enter into joint ventures to achieve the desired goals. One example of this is the opportunity that has developed for utility companies (such as gas, electricity and water companies) to break into the communications and technology industry for the first time. The underground networks of the utility companies, such as the sewerage and drain networks of water utilities, can be used to install fibre optic cable networks required to meet the growing demand for broadband and related telecoms services. Since these underground networks already exist, there is no need to incur the vast expense and delay of digging holes below the surface to roll out a backbone network. Accordingly, we now see joint ventures being entered into between utility companies and telecoms companies to install, maintain and operate fibre optic cable networks using the utility companies' underground infrastructure.

The phenomenon of convergence is generally described as the coming together of the telecommunications, media and information technology sectors. The new devices that have arisen include internet-ready televisions, internet-capable games consoles (i.e. play stations with internet access), and internet-capable smart phones (i.e. telephones with keyboard, screen and modem). What has enabled the production of many of these new devices is the collaboration of companies in different industries. Symbian (referred to above) is just one example.

It should be clear from the above that each joint venture is different. The aims and ambitions of the parties will differ and the different parties will have different ways of doing things. This means that counsel cannot just use a boilerplate to establish a successful joint venture; he has to understand the specifics of the transaction, create a unique structure that works in the circumstances and build-in precautions in case it does not. Counsel, therefore, has to be flexible in his approach and must take an active lead in the negotiation process to ensure that the parties have thought things through properly.

The first stage in the negotiation process, or even before formal negotiations begin, is to carry out due diligence. Counsel should prepare a detailed due diligence questionnaire and submit it to the other side; raising questions on such issues as the corporate structure of the other party, the assets or technology the other party is to contribute to the joint venture, and whether any approvals or consents are required from others for it to enter into the joint venture. This traditional and legalistic form of due diligence is essential for the creation of a successful joint venture, but it is by itself insufficient. Counsel should also advise the client to carry out a more thorough form of due diligence.

Indeed, in an attempt to find out more about their potential business partners (and, when seeking to enter a new market, the competitive climate in that market), companies are increasingly turning to global investigative firms and industry specific consultants. In relation to the prospective partner, what a client will need to know is whether the management of the other party are people of integrity, whether they have a track record as partners, the nature and extent of their operations and what their financial circumstances are. In relation to a new market, the client will want to know who the current competitors are in the geographic and industry market, assess their operating financial and management strengths and evaluate their strategies. These are all things that will not come out of the traditional legal due diligence process.

Due diligence in joint ventures is, however, a two way process. The other side will also want to assess the strengths, weaknesses and dangers of a given business engagement and will seek to raise questions of its own. Accordingly, to encourage the other side to disclose information and to protect your client's information and to keep the deal secret (which will be especially important if one or both participants are listed entities), the parties should be advised to enter into a confidentiality agreement at an early stage. In practical terms, however, confidentiality agreements are not always easy to enforce and so it is advisable to restrict the flow of information: either by keeping it to a small circle of people or by drip feeding the information. If this is a real concern, however, the joint venture is unlikely to last long!

The next step in the negotiation process is usually to draft a non-binding letter of intent or memorandum of understanding. Whilst some may argue that non-binding letters of intent are a waste of time as the time spent negotiating it could be better spent on the formal joint venture documentation itself, it is usually advisable for the parties to enter into a letter of intent which sets out the main commercial terms. The reason for this is that it forces the parties to concentrate at an early stage on what it is that they are actually trying to achieve (including whether it is feasible) and because the legal documents supporting a joint venture often take a long time to negotiate and can become very complex.

It is a matter of preference whether the letter of intent contains full details of the parties' proposals or whether it contains the minimum details necessary to move the negotiations on. It is also a matter of negotiation whether the letter of intent should contain exclusivity undertakings, so that each party agrees not to negotiate with anyone else in relation to the proposed project for a period of time. Obviously, if the aim is to keep flexibility in the negotiation process, it is better to have minimum details in the letter of intent and avoid exclusivity.

More importantly, corporate counsel should give advice on whether the letter of intent should be legally binding or not. To give greater flexibility in the negotiation process, the letter of intent should be non-binding (although it may be desirable to make certain clauses, such as exclusivity, binding). Even if the letter of intent is non-binding, it is still a useful tool in the negotiation process as it will have moral force. Furthermore, in some countries (eg. in the US) there is a duty to negotiate in good faith and so the letter can have legal consequences despite the statement that it is not legally binding. It may also give rise to other legal consequences, such as liability for negligent misstatement under UK law.

Once the letter of intent has been agreed, but before drafting the formal documentation, it is sensible for the parties to address the key points of the deal and identify any issues which are or are likely to be controversial. The issues should be raised with the client and thought through carefully at an early stage to avoid the risk that time and costs will be wasted if later the parties realise they cannot agree on the fundamental points of principle. To assist in this process, it is sometimes helpful to circulate an outstanding/agreed points list, with four columns - the first of which sets out the basic issue, the second column sets out one party's view, the third column sets out the other party's view and the fourth column sets out the final agreed position (if any).

The matters that often give rise to conflict are: the management structure, the right to veto certain actions, the profit distribution policy, access to intellectual property and research and development, competition and restrictive covenants, and default and termination provisions. Although it may seem strange, often the best thing to do is to start off the discussions with the termination provisions. This is because it forces the parties to concentrate on the purpose of the joint venture and think about what they each expect to walk out with in case it fails. Obviously, it will be important for corporate counsel not to put a dampener on the initial expectations of the potential success of the joint venture, but the facts on how many joint ventures actually succeed make this discussion an urgent necessity.

The next step in the negotiation process is to decide on a structure for the joint venture. Joint ventures come in many different shapes and sizes, ranging from fully-fledged merger-like operations to cooperation limited to particular functions. It is, however, possible to distinguish between three basic forms of joint venture: (1) a corporate structure, (2) a partnership or (3) a purely contractual cooperation agreement. Counsel should not immediately jump to the conclusion that a corporate structure is the best structure for a given joint venture. It depends on the circumstances and so there is a need for a flexible approach.

Which of these three different forms is most suitable for the joint venture must be discussed in detail by the parties and their counsel. In making their determination, various factors will need to be taken into account. Whilst this is not the place to go into these in detail, the following factors should be considered. Is the venture a single project or an ongoing business? - if the former, a simple contract may suffice, but if the latter a company makes more sense. Are there any regulatory considerations for the specific business? - for example, the rules relating to 3G licensing in the UK required all applicants to be a body corporate. Are the parties willing to assume liability for the losses of the joint venture and for the acts of each other? - if not, a corporate vehicle makes more sense. Other important considerations are the tax and accounting treatment of the joint venture and the parties to it.

In the communications and technology industry, the two most popular forms of joint ventures have been corporate joint ventures and contractual joint ventures. Examples of corporate joint ventures in this field include Virgin Mobile (a joint venture in the UK between Virgin and One2One), MobilCom MultiMedia GmbH (a joint venture in Germany between MobilCom AG and France Telecom) and Omnitel (a joint venture in Lithuania between Amber Mobile Teleholding AB (itself a joint venture between Sonera Limited and Telia AB), Motorola Inc. and certain private investors). Recent examples of contractual joint ventures, on the other hand, include MVNO arrangements. These are arrangements under which an organisation offers mobile telecommunications services to customers without having an allocation of spectrum of its own, paying a mobile network operator for the use of its mobile network. Virgin Mobile is just such an entity, acquiring its spectrum in the UK from One2One.

It is only when the above issues have been resolved that the negotiations should proceed to the next stage - the drafting of the required documentation. Exactly what documents will be required will vary from case to case and depends on the structure adopted. However, the documents may include: a Confidentiality Agreement; a Letter of Intent/Heads of Terms; an Exclusivity Agreement; a Main Agreement (being a Shareholders Agreement, Partnership Agreement or any form of Cooperation Agreement); and Ancillary Agreements (such as an Asset Purchase Agreement, a Loan Notes Instrument, a Management Agreement, a Services Agreement, a Secondment Agreement, an IPR Licence, Guarantees, Memorandum and Articles of Association, Board Minutes, Opinion Letters, etc.).

Once the documents are thoroughly negotiated and fully drafted, the legal documents can be executed and the joint venture may commence. The negotiation process, however, does not always end there. In cases where there are conditions precedent, the main legal agreement will be executed but the remainder will remain in agreed form until any necessary consents or other conditions precedent (such as board approval, shareholder approval or regulatory approval) are obtained. The need for flexibility in the process therefore remains until those matters have also been resolved.

Whereas the previous section highlighted the need for flexibility in the negotiation process in general, this section looks at specific issues in relation to which a conflict may arise during the negotiation process and suggests the various alternative solutions for avoiding a deadlock.

4.1 The Management of the Joint Venture

Various conflicts may arise between the parties in relation to the management of the joint venture. A common source of conflict is whether one party to the joint venture is to have control over management at board or shareholder level. Obviously, this will depend on the respective negotiating powers of the parties and how much each of them is contributing to the joint venture. It is important to note, however, that a survey by McKinsey & Co of over 500 major international joint ventures suggests that 50:50 joint ventures are twice as likely to succeed than ventures with unequal parties. If the parties want to achieve a win-win situation and create a successful joint venture, then they should keep this fact in mind.

Another common source of conflict in relation to management is in connection with the decision making process and the appointees to the new management team. Often, joint venture partners attempt to fill the positions of power within a joint venture with their own officers and employees. This inflexibility can cost the joint venture dearly. The McKinsey & Co study shows that joint ventures are most successful if they have strong independent management in place because it is more likely to take the steps required to ensure that disputes are resolved without termination of the joint venture. Furthermore, if a joint venture is to succeed, then surely the people appointed to its management should be the people best suited for the job and not the ones who will best serve the demands of their appointees.

Nevertheless, situations of deadlock in the management of the joint venture are likely to arise every now and then. Although some argue that it is best not to have any specific provisions in the agreement dealing with deadlock, on the grounds that it will encourage the parties to negotiate and reach a compromise, counsel should discuss the various options with the client and the other side. Some of the options are as follows:

• Chairman's casting vote: In the event of deadlock between the board, the joint venture agreement might give the chairman of the board the casting vote. This is unlikely to be accepted by a party where the other party appoints the chairman, but might be agreed to where the chairman is jointly appointed by the parties or the chairmanship rotates periodically.
• Arbitration or expert resolution: Where the dispute is over the legal construction of a clause or is factual in nature, the parties may agree to refer the dispute to an arbitrator or expert for a decision. This form of resolution is not suitable, however, where the dispute is in relation to business strategy.
• Escalation: This is where disputes between the joint venture partners are referred to the chairman of both parties for resolution between them. Although there is no real reason why the chairmen of both parties should be able to agree a dispute that their junior managers could not, the threat of enforcing this provision is sometimes enough to encourage the junior managers to agree a deadlock.
• Russian Roulette: This applies where the parties cannot agree a deadlock and wish to terminate the joint venture. Such a provision entitles either party to serve a notice on the other requiring the other party either to buy its shares at a set price or sell its shares to the party giving notice at the same price. The other party then has a period in which to accept the offer to buy or sell its shares at that price. The inclusion of such a provision should be discussed in detail with a client as it could force one party to sell its shares against its will.
• Mexican or Texas Shoot-Out: This is similar to Russian roulette save that if the party receiving the offer also wishes to buy, both parties submit sealed bids and the highest bidder wins.
• Sale/Liquidation: As an alternative to Russian roulette or Mexican or Texas shoot-out, on the termination of the joint venture the parties may be required to sell their equity interests in the joint venture to a third party or to put the joint venture into liquidation and sell its assets.

In order to reduce the risk of disputes escalating to the situation where the parties seek to rely on any of the above methods of terminating the joint venture, the joint venture documentation may have built into it additional bonuses to build the relationship between the parties. One example of this is to express one of the aims of the joint venture as a sale or listing of the joint venture within [x] years of the date of the agreement. The potentially significant financial rewards involved in a sale or listing may encourage the joint venture partners to stick with the joint venture and build the relationship. Another possibility is to put in place a share option scheme for the managers and employees of the joint venture. If they have something to gain personally from the success of the joint venture, then they are more likely to make a go of it and seek to resolve disputes at an early stage.

4.2 Transfers of Interests in the Joint Venture

Another issue which often gives rise to conflict in the negotiation of joint ventures is whether interests in the joint venture are to be transferable and, if so, in what circumstances. A moratorium on all share transfers is sometimes preferable to tie-in a joint venture partner in the crucial initial stages of a joint venture; for example where the technology or resources of that party are required to make the joint venture a success. An absolute moratorium on all share transfers is, however, quite harsh. If transfers are to be permitted, counsel should also consider whether it should also be permissible to charge or otherwise encumber the shares, or transfer part only, and whether there should be pre-emption rights (and if so at what price) or change of control provisions.

In considering these issues, various factors will be relevant. For example, a joint venture partner will often seek to make sure that it does not, as a result of a share transfer, become a partner with a competitor or someone else who is otherwise undesirable as a joint venture partner. A further consideration will be regulatory requirements. If the joint venture company has a regulatory licence, the regulations relating to that licence may restrict the types of entities that hold shares in the joint venture company. Those restrictions may need to be spelled out in the joint venture agreement.

As stated above, joint ventures are a particularly common way of developing and exploiting technology and know-how. Even if the objective of the joint venture is not specifically to exploit or develop technology, the intellectual property aspects of a joint venture are often crucial. Joint venture agreements must address the fundamental issues of who owns the technology and what use the respective parties can make of it.

Typically, a joint venture will use parent companies' existing technologies. The first question to ask is, of course, what intellectual property licences or other rights are required by the joint venture? Once identified, the next question is how to vest it in the joint venture? This can be done in one of four ways. One option is for the parent to licence the relevant intellectual property rights ("IPRs") to the joint venture. This is appropriate where the parent wishes to retain ownership and control of the IPRs but to allow the joint venture to use the rights. Another option is for the parent to assign the IPRs to the joint venture. This is tantamount to a sale and should be recommended only if the original owner is absolutely confident that it has no further use for the rights. The third option is a combination of the previous two - an assignment and licence-back of the IPRs. This is appropriate where it is preferable for the joint venture to own the IPRs (so that it can, for example, use it as security for a loan or be the one responsible for maintaining and protecting the IPRs) even though the original owner still requires the IPRs for its own use. Alternatively in these types of situations there is the fourth option of joint ownership of the IPRs between the parent and the joint venture.

The most common practice is for the parent to licence the IPRs to the joint venture on arm's length terms. In the negotiations for a licence, counsel should take detailed instructions on the precise extent of such licence. The matters which should be covered include whether the licence will: be limited to a specific use, be exclusive or non-exclusive, be transferable or non-transferable, be sub-licensable, be for a certain duration, be worldwide or limited to certain territories, include a right to make any improvements (including any flow-back rights in the event of any improvements), require royalties to be payable and include any warranties and indemnities.

In addition to making sure that the joint venture entity obtains the IPRs that it requires for the success of the joint venture, consideration should also be given to what is to happen to any IPRs developed by the joint venture itself. In order to safeguard the IPRs developed by the joint venture, the joint venture agreement may for example impose an obligation on the joint venture to use reasonable or best endeavours to obtain full protection for any rights such as registering a trade mark or applying for a patent. It might also impose a requirement to maintain any IPRs for example by paying renewal fees for registered rights and pursuing infringers. Furthermore, if the IPR developed by the joint venture is an improvement on the IPRs licensed to it by one of the parents, it is important to note that those improvements will belong to the joint venture as the creator of the work and so if the party licensing the original technology wants to be able to own or have use of it, this needs to be specifically dealt with in the joint venture agreement.

Counsel should also make sure that the negotiations deal with the important issue of what is to happen to the IPRs in the event that the joint venture terminates. If the joint venture terminates, either or both joint venture parties may wish to use IPRs owned by the joint venture. It is possible for the joint venture documents to oblige the venture to assign IPRs back to the joint venture parties. Another possibility, where both venturers require the IPR, is an option for one party to take an assignment of particular rights with a licence in favour of the other.

As illustrated above, when advising on a joint venture, it is essential that counsel is flexible in his approach and steers the negotiations to make sure that all the various options and possibilities are considered and discussed. Each joint venture is different and the important thing is to develop a structure that works for that particular joint venture. If this is not done, the joint venture may fail, as so many of them do.

1. See the 1997 report by management consultants McKinsey & Co.
2. SpectrumCo Limited was a joint venture formed between the Virgin group and Nextel, Sonera, EMI, Tesco and a number of private equity funds. It was unsuccessful in winning a 3G licence in the UK.