I just received an email from a blog reader asking for a recommendation for a book that addresses the “importance of intellectual property with regard to building successful technology companies.” I’ve read several IP-related books in the past (one of the guest lectures I used to give at MIT Sloan School for 15.351: Managing the Innovation Process was titled “Copyrights, Patents, and Trade Secrets” – the online lecture notes from 2002 have some references to readings on Standards, Patents, & Open Source) but I’ve never found one that I would call my “go to book.”

I passed on the request to Jason Mendelson (our general counsel and my co-conspirator on the Term Sheet series of posts) and he recommended The Entrepreneur’s Guide to Business Law. While this book isn’t specifically about IP, there is a large section on general IP law. It’s also a superb book that should be in every entrepreneur’s library.

Craig Dauchy – one of the co-authors – is a long time friend and collegue of ours and one of the managing partners at Cooley Godward – one of the premium law firms for VC-backed companies. So – Craig knows of what he speaks.

I’ve been working with Robin Bordoli at Mobius Venture Capital for several years and have enjoyed watching him be tortured by the version of english that we speak in America. Now that Robin has a blog, I look forward to reading the thoughts of a brit living in Silicon Valley – while the words will occassionally be mangled, I expect the thoughts will be clear.

Welcome – Robin – to the blogosphere.

I’ve written about liquidation preferences (and participating preferred) before, as have most of the other VC bloggers (and several entrepreneur bloggers.) However, for completeness, and since liquidation preferences are the second most important “economic term” (after price), Jason and I decided to write a post on it. Plus – if you read carefully – you might find some new and exciting super-secret VC tricks.

The liquidation preference determines how the pie is shared on a liquidity event. There are two components that make up what most people call the liquidation preference: the actual preference and participation. To be accurate, the term liquidation preference should only pertain to money returned to a particular series of the company’s stock ahead of other series of stock. Consider for instance the following language:

Liquidation Preference: In the event of any liquidation or winding up of the Company, the holders of the Series A Preferred shall be entitled to receive in preference to the holders of the Common Stock a per share amount equal to [x] the Original Purchase Price plus any declared but unpaid dividends (the Liquidation Preference).

This is the actual preference. In the language above, a certain multiple of the original investment per share is returned to the investor before the common stock receives any consideration. For many years, a “1x” liquidation preference was the standard. Starting in 2001, investors often increased this multiple, sometimes as high as 10x! (Note, that it is mostly back to 1x today.)

The next thing to consider is whether or not the investor shares are participating. Again, note that many people consider the term “liquidation preference” to refer to both the preference and the participation, if any. There are three varieties of participation: full participation, capped participation and non-participating.

Fully participating stock will share in the liquidation proceeds on a pro rata basis with common after payment of the liquidation preference. The provision normally looks like this:

Participation: After the payment of the Liquidation Preference to the holders of the Series A Preferred, the remaining assets shall be distributed ratably to the holders of the Common Stock and the Series A Preferred on a common equivalent basis.

Capped participation indicates that the stock will share in the liquidation proceeds on a pro rata basis until a certain multiple return is reached. Sample language is below.

Participation: After the payment of the Liquidation Preference to the holders of the Series A Preferred, the remaining assets shall be distributed ratably to the holders of the Common Stock and the Series A Preferred on a common equivalent basis; provided that the holders of Series A Preferred will stop participating once they have received a total liquidation amount per share equal to [X] times the Original Purchase Price, plus any declared but unpaid dividends. Thereafter, the remaining assets shall be distributed ratably to the holders of the Common Stock.

One interesting thing to note in the section is the actually meaning of the multiple of the Original Purchase Price (the [X]). If the participation multiple is 3 (three times the Original Purchase Price), it would mean that the preferred would stop participation (on a per share basis) once 300% of its original purchase price was returned including any amounts paid out on the liquidation preference. This is not an additional 3x return, rather an addition 2x, assuming the liquidation preference were a 1 times money back return. Perhaps because of this correlation with the actual preference, the term liquidation preference has come to include both the preference and participation terms. If the series is not participating, it will not have a paragraph that looks like the ones above.

Liquidation preferences are usually easy to understand and assess when dealing with a series A term sheet. It gets much more complicated to understand what is going on as a company matures and sells additional series of equity as understanding how liquidation preferences work between the series is often mathematically (and structurally) challenging. As with many VC-related issues, the approach to liquidation preferences among multiple series of stock varies (and is often overly complex for no apparent reason.) There are two primary approaches: (1) The follow-on investors will stack their preferences on top of each other: series B gets its preference first, then series A or (2) The series are equivalent in status (called pari passu – one of the few latin terms lawyers understand) so that series A and B share pro-ratably until the preferences are returned. Determining which approach to use is a black art which is influenced by the relative negotiating power of the investors involved, ability of the company to go elsewhere for additional financing, economic dynamics of the existing capital structure, and the phase of the moon.

Most professional, reasonable investors will not want to gouge a company with excessive liquidation preferences. The greater the liquidation preference ahead of management and employees, the lower the potential value of the management / employee equity. There’s a fine balance here and each case is situation specific, but a rational investor will want a combination of “the best price” while insuring “maximum motivation” of management and employees. Obviously what happens in the end is a negotiation and depends on the stage of the company, bargaining strength, and existing capital structure, but in general most companies and their investors will reach a reasonable compromise regarding these provisions. Note that investors get either the liquidation preference and participation amounts (if any) or what they would get on a fully converted common holding, at their election; they do not get both (although in the fully participating case, the participation amount is equal to the fully converted common holding amount.)

Since we’ve been talking about liquidation preferences, it’s important to define what a “liquidation” event is. Often, entrepreneurs think of a liquidation as simply a “bad” event – such as a bankruptcy or a wind down. In VC-speak, a liquidation is actually tied to a “liquidity event” where the shareholders receive proceeds for their equity in a company, including mergers, acquisitions, or a change of control of the company. As a result, the liquidation preference section determines allocation of proceeds in both good times and bad. Standard language looks like this:

A merger, acquisition, sale of voting control or sale of substantially all of the assets of the Company in which the shareholders of the Company do not own a majority of the outstanding shares of the surviving corporation shall be deemed to be a liquidation.

Ironically, lawyers don’t necessary agree on a standard definition of the phrase “liquidity event.” Jason once had an entertaining (and unenjoyable) debate during a guest lecture he gave at his alma mater law school with a partner from a major Chicago law firm (who was teaching a venture class that semester) that claimed an initial public offering should be considered a liquidation event. His theory was that an IPO was the same as a merger, that the company was going away, and thus the investors should get their proceeds. Even if such a theory would be accepted by an investment banker who would be willing to take the company public (no chance in our opinion), it makes no sense as an IPO is simply another funding event for the company, not a liquidation of the company. However, in most IPO scenarios, the VCs “preferred stock” is converted to common stock as part of the IPO, eliminating the issue around a liquidity event in the first place.

That’s enough for now – I’m going to go get a drink and have my own personal liquidity event (sorry – the punmaster got control of my keyboard for a moment.)

In the pet peeves category, I’ve seen Siebel misspelled several times already – by reputable, smart people (some with editors, some without) since the new year started. Guys and gals – i before e except after c for Siebel.

I believe that one can never have enough books. As an avid reader, I’m always on the lookout for random lists of “favorites” of other people so I can stretch my palate. I’m not selective as I’ve learned that if I don’t like a book, I can simply put it down and go to the next one.

I got a nice note from a Steve Proper with a pointer to 20 Strange and Wonderful Books – a magnificent list by a guy named John Cartan. I don’t know John (and don’t think I know Steve, but he reads my blog) – but I am now the proud owner of 17 new books via Amazon (I already owned three of them – 2. Flatland; 11. Godel, Escher, Bach; and 20. The Tolkien Reader.)

One of my favorite piles (the “book pile”) just got bigger.

Ah – it’s the first business day of 2005 and time for new product announcements.

Newmerix announced the release of their newest version of Automate!Test for PeopleSoft. Newmerix has been working on a series of packaged application optimization, change, and quality software products. The first platform they’ve released products for is PeopleSoft (and – if you’ve been alive the past few months – you’ll quickly guess that the next platform is Oracle.)

One of the cool parts of this new release is that Newmerix’s Automate!Test product uses proprietary technology to “synchronize” a test suite against PeopleSoft metadata. This dramatically increases the modification and usability of the test suites as you change your PeopleSoft environment, as your test suites will synchronize with changes to the PeopleSoft metadata. If you map this concept to Oracle’s environment (which Newmerix is working on), you’ll be able to both preserve your existing test scripts as well as understand clearly the impact the migration path from PeopleSoft products to Oracle products will have on your business.

When Oracle announced their initial offer for PeopleSoft 18 months ago, several VCs that were considering investing in Newmerix backed away because they were “worried” about what this meant for PeopleSoft. Our assertion then was that this would create a huge opportunity for companies like Newmerix since their relevance is directly tied to the development, upgrade, and migration cycle for products from packaged application companies like PeopleSoft and Oracle. 18 months later, I feel stronger then ever that this is the case.

A the end of the year, I completed a financing that was much more difficult than it needed to be. As Jason Mendelson (our general counsel) and I were whining to each other we decided to do something about it. At the risk of giving away more super-top-secret VC magic tricks, we’ve decided to co-author a series of posts on Term Sheets.

We have chosen to address the most frequently discussed terms in a venture financing term sheet. The early posts in the series will be about terms that matter – as we go on, we’ll get into the more arcane and/or irrelevant stuff (which – ironically – some VCs dig in and hold on to as though the health of their children depended on them getting the terms “just right.”) The specific contract language that we refer to (usually in italics) will be from actual term sheets that are common in the industry. Ultimately, we might put this into a Wiki, but for now we’ll just write individual posts. Obviously, feel free to comment freely (and critically.)

In general, there are only two things that venture funds really care about when doing investments: economics and control. The term “economics” refers to the end of the day return the investor will get and the terms that have direct impact on such return. The term “control” refers to mechanisms which allow the investors to either affirmatively exercise control over the business or allow the investor to veto certain decisions the company can make. If you are negotiating a deal and an investor is digging his or her feet in on a provision that doesn’t affect the economics or control, they are probably blowing smoke, rather than elucidating substance.

Obviously the first term any entrepreneur is going to look at is the price. The pre-money and post-money terms are pretty easy to understand. The pre-money valuation is what the investor is valuing the company today, before investment, while the post-money valuation is simply the pre-money valuation plus the contemplated aggregate investment amount. There are two items to note within the valuation context: stock option pools and warrants.

Both the company and the investor will want to make sure the company has sufficiently reserved shares of equity to compensate and motivate its workforce. The bigger the pool the better, right? Not so fast. While a large option pool will make it less likely that the company runs out of available options, note that the size of the pool is taken into account in the valuation of the company, thereby effectively lowering the true pre-money valuation. If the investor believes that the option pool of the company should be increased, they will insist that such increase happen prior to the financing. Don’t bother to try to fight this, as nearly all VCs will operate this way. It is better to just negotiate a higher pre-money valuation if the actual value gives you heartburn. Standard language looks like this:

Amount of Financing: An aggregate of $ X million, representing a __% ownership position on a fully diluted basis, including shares reserved for any employee option pool. Prior to the Closing, the Company will reserve shares of its Common Stock so that __% of its fully diluted capital stock following the issuance of its Series A Preferred is available for future issuances to directors, officers, employees and consultants.

Alternatively:

Price: $______ per share (the Original Purchase Price). The Original Purchase Price represents a fully-diluted pre-money valuation of $ __ million and a fully-diluted post money valuation of $__ million. For purposes of the above calculation and any other reference to fully-diluted in this term sheet, fully-diluted assumes the conversion of all outstanding preferred stockof the Company, the exercise of all authorized and currently existing stock options and warrants of the Company, and the increase of the Companys existing option pool by [ ] shares prior to this financing.

Recently, another term that has gained popularity among investors is warrants associated with financings. As with the stock option allocation, this is another way to back door a lower valuation for the company. Warrants as part of a venture financing – especially in an early stage investment – tend to create a lot of unnecessary complexity and accounting headaches down the road. If the issue is simply one of price, we recommend the entrepreneur negotiate for a lower pre-money valuation to try to eliminate the warrants. Occassionally, this may be at cross-purposes with existing investors who – for some reason – want to artificially inflate the valuation since the warrant value is rarely calculated as part of the valuation (but definitely impacts the future allocation of proceeds in a liquidity event.) Note, that with bridge loan financings, warrants are commonplace as the bridge investor wants to get a lower price on the conversion of their bridge into the next round – it’s not worth fighting these warrants.

The best way for an entrepreneur to negotiate price is to have multiple VCs interested in investing in his company – (economics 101: If you have more demand (VCs interested) than supply (equity in your company to sell) then price will increase.) In early rounds, your new investors will likely be looking for the lowest possible price that still leaves enough equity in the founders and employees hands. In later rounds, your existing investors will often argue for the highest price for new investors in order to limit the existing investors dilution. If there are no new investors interested in investing in your company, your existing investors will often argue for an equal to (flat round) or lower than (down round) price then the previous round. Finally, new investors will always argue for the lowest price they think will enable them to get a financing done, given the appetite (or lack thereof) of the existing investors in putting more money into the company. As an entrepreneur, you are faced with all of these contradictory motivations in a financing, reinforcing the truism that it is incredibly important to pick your early investors wisely, as they can materially help or hurt this process.

Amy and I spent the week in Miami with our friends Warren and Ilana Katz. Warren runs a very successful software company called MaK Technologies that builds software simulation tools that are widely used within the military. Warren is on a holy quest for acquisition reform and we had several discussions about how government procurement of software works (or doesn’t work), what needs to change, what Warren is doing about it, and several reasons why I should actually like Donald Rumsfeld.

Ironically – and sadly – MaK’s biggest competitors for their products are DoD funded projects to create custom versions of the COTS (“Commercial-off-the-shelf”) products that MaK sells – a blatant violation of numerous government regulations and a huge waste of money. Government programs competing with COTS products is apparently a deep and well known problem within the government. Warren pointed me to a great, short book called “Quotations from Chairman David” which is “a brief and humorous examination of some issues related to commercial off-the-shelf (COTS) products in DoD and government systems.” The author – David Carney – a senior member of the Software Engineering Institute at Carnegie Mellon – used the “Little Red Book” popular in China in the 1960s to discuss COTS related issues.

Interestingly, the ideas in “Quotations from Chairman David” are applicable to any software development / system integration effort. As the boundaries between custom software, system integration activities, and packaged software continue to shift around, one would be well served to meditate on Chairman David’s thoughts.