Keeping House For alumni in-house counsel, contracts, subpoenas, and proxies are all in a day's work By Rebecca Thomas and Susan L. Wampler
In 2004, women's apparel company Ann Taylor celebrated its 50th year in the specialty retail business with print and commercial ads featuring a diverse group of women. The effort - splashed across display windows, buses, and subways - worked perhaps too well and proved to be an unexpected lesson in Chinese intellectual property law for General Counsel Barbara Eisenberg '70.
This year, Ms. Eisenberg found herself in a small city three hours outside Shanghai meeting with the country's trade officials and local trademark authorities concerning a Chinese company that had registered the "Ann Taylor" trademark in China and commenced manufacturing and selling clothes under the label.
Was this legal?
"Perfectly legal in China," Ms. Eisenberg laughs. The Chinese clothier was also challenging Ann Taylor's use of its own trademark on products manufactured in China for export.
Adequately protecting trademark rights is just one of many issues Ms. Eisenberg, and dozens of Columbia alumni who serve as chief legal in-house counsel, have to contend with.
Columbia's general counsels work not only in the retail business; they head up the legal departments for major league baseball teams, movie studios, pharmaceutical and energy giants, major airlines, and universities. Companies rely on their counsel to handle sophisticated legal matters. Increasingly called on to be generalists in the field, these lawyers draw upon an unparalleled legal education to wade often murky legal waters.
Promoting Corporate Governance
Apart from successfully setting up a licensing agreement with Chinese customs and trademark authorities, thus allowing Ann Taylor to continue sourcing goods to China, Ms. Eisenberg has also been concerned with keeping the retailer in compliance with Sarbanes-Oxley legislation and other regulatory changes since a slew of accounting scandals racked the American business world.
"These days, we are mostly where we need to be in terms of resolving the major documentation issues," says Ms. Eisenberg who, with management and her board of directors, spent the better part of two years addressing the subject. "Now it's a matter of continuing to revisit the important issues as the business changes."
The focus on new accounting rules and strenuous review of company finances continues to affect all businesses in the post-Enron era, including airline carriers such as U.S. Airways, where Elizabeth Kilcullen Lanier '77 has been serving as general counsel. (Now that she has shepherded the company through a merger with America West, she has decided not to relocate to new headquarters in Phoenix.)
Katherine Kendrick '86, who for nearly a decade served as general counsel for DreamWorks, was significantly affected by the revised financial and accounting disclosure legislation, when the film studio spun off its successful animation division, DreamWorks Animation, last year in an IPO and recruited Ms. Kendrick as general counsel.
"Since the IPO, I have spent most of my time dealing with the legal requirements of being a public company," she says, "ranging from corporate governance matters to Sarbanes-Oxley compliance. We had to implement all new corporate policies and train our employees on their responsibilities in working for a public company."
Columbia's general counsels all agree that they seek not only to be in compliance with ethical guidelines and rules, but also to proactively look for the areas of their companies' audit structure that may give rise to liability.
The "panoply of financing and securities laws" has occupied the bulk of J. Barclay Collins's time. Like most general counsels, he oversees both the operations and financing aspects of the business in his role as chief legal officer for global energy firm Amerada Hess. In recent years, Mr. Collins has even conducted annual seminars for managers, each time in a different country, to provide training on the scope of U.S. and SEC jurisdiction at home and abroad.
Why Business Law?
But life as general counsel isn't all about proxies and disclosure statements, according to Mr. Collins, who joined Hess in 1984. One of the most rewarding parts of the job is taking big risks that produce big rewards. (Then again, Mr. Collins laughingly admits, "the company may drill a dry well at a cost of $100 million.") With more than 1,000 wells in locales as far-flung as Gabon and Equatorial Guinea, foreign exploration has helped to make this an "exciting time" to be working for the oil and gas refining and marketing company.
Reaping rewards in a business environment helps explain why many of Columbia's alumni have chosen to build careers as general counsels. Ms. Eisenberg admits that while she grew tired of the increasingly transactional nature of her previous corporate practice at Kaye Scholer, she "really enjoyed the business aspects of the job and the long-term relationships" she cultivated with the corporate clients she represented.
"I always knew I wanted to be in corporate law," says Ms. Lanier. "Columbia was a fabulous place for me. I studied with some brilliant scholars, who gave practical, real world advice, including Professors Richard Stone and Harvey Goldschmid '65."
John M. Liftin '67, who was named vice chairman, general counsel, and secretary for the Bank of New York in May, was similarly resolute, remarking, "I never thought about any other area of practice. In fact, I had a difficult time choosing between business school and law school because I had been an economics major and was interested in finance."
Pam McGuire '73 recalls falling "into business law totally by accident." The deputy general counsel and newly named chief compliance officer for PepsiCo says a stint in private practice at Hughes Hubbard, after serving in the U.S. at-torney's office, only underscored that "big-firm litigation" was no more to her liking than government litigation. A friend suggested looking at large corporations, including Pepsi, where Ms. McGuire had a contact. She joined the company in 1977 as a staff attorney and "spent the next 20 years working my way up the company chain" before being named senior vice president, secretary, and general counsel for the subsidiary Pepsi Bottling Group in 1998.
Raised in a small town in Washington state, Joseph Ryan '67, executive vice president and general counsel for Marriott International, would not have predicted he'd end up a general counsel, either. He credits Columbia's unique education and big city location with making business law a tangible pursuit.
"The sophistication of the financial world there [in Manhattan] is key," says Mr. Ryan, who supervises more than 70 attorneys for the lodging and hospitality company. "It rubs off on you."
Protecting the Brand
From Hollywood film studios to popular hotel chains, Columbia-trained general counsels add value in highly competitive fields. For Mr. Ryan, whose company enjoys a premier position in lodging, remaining competitive means protecting the Marriott name.
"We focus a good deal on maintaining the premium position of the brand name," he says. And since brand names have come to embody, in some ways, the force of globalization - attracting customers, brand-loyalty, and increasingly, a workforce, on an international scale - general counsels are frequently called upon to address matters of intellectual property.
"Intellectual property is very important at Pfizer," notes associate general counsel George Evans '80 of the pharma-ceutical company, where patent infringement is regularly litigated. Pfizer sells products and must protect its patents in more than 100 developed and developing countries. The patent concerns are the same at Johnson & Johnson, where Michael H. Ullmann '83 serves as associate general counsel and secretary. While the company is perhaps best known for its over-the-counter products, much of its profit is derived from its success as a drug and medical device manufacturer.
Columbia graduates hold many positions at technology-related companies, where patent issues are extremely im-portant. Among them are Bruce Anderson '96 at Alliant Techsystems Inc. (aerospace), William Carlisle, Jr. '63 at Rockwell International (defense systems), Russell Fairbanks, Jr. '73 at Itron Inc. (meter reading devices), and Kathryn Surace-Smith '84 at SonoSite (hand-carried ultrasound technology).
At Masco Corporation, a leading maker of home improvement and building products such as KraftMaid Cabinetry and Delta faucets, John Leekley '68 oversees the Michigan-based company's intellectual property portfolio, together with four patent and trademark lawyers. Mr. Leekley, senior vice president and general counsel, relies on their critical knowledge of patent law and procedure in an industry where product designs can be counterfeited.
There are "lots of intellectual property issues," for Ms. McGuire at Pepsi as well, "but we're probably most con-cerned with our patents," she says of the company, whose bottled soft drink recipe remains a closely guarded trade secret.
And while Ms. Kendrick fondly remembers standing alongside traders wearing Shrek ears last fall during the opening bell of the New York Stock Exchange, she admits she was alarmed to learn the blockbuster hit - about a medieval ogre - ranked seventh on a list of the most pirated movies.
"Unfortunately, piracy is a problem that every company in the entertainment industry confronts," laments Ms. Kendrick. "Legal action probably won't resolve such a broad-reaching phenomenon, but it is an important part of the solution."
Piracy is particularly vexing for Ella Betsy Wong '92, who heads the legal department at Star Group Limited, the Hong Kong-based satellite and cable television subsidiary of Rupert Murdoch's News Corporation. Ms. Wong, a Hong-Kong native trained at Wadham College and Oxford, explains that "illegal set-top boxes [STBs] meant to be used in one country are often leaked to other countries." Consumers may purchase STBs, connect them to high-definition tele-vison sets, and view programming unauthorized in their countries at a reduced cost, bypassing their nationally au-thorized distributors.
As general counsel for the University of Minnesota since 1992, Mark B. Rotenberg '79 faces a somewhat different set of legal challenges.
"The University of Minnesota is one of the largest public research universities in the nation," he says. "As such, it's a highly political, very visible, intricately regulated institution, much like a federal agency."
After the U.S. Supreme Court decisions in Grutter v. Bollinger and Gratz v. Bollinger, Mr. Rotenberg, who also teaches at the university's law school and College of Liberal Arts, was busy clarifying the school's policy on affirmative action, one that he says is essentially the same as the University of Michigan's.
"We have done a lot of work to help the admissions officers in our many academic units understand and comply with the equal protection principles articulated in those cases," he says.
Since then, other issues have predominated, including environmental and construction concerns, patenting and tech-nology transfer opportunities, relationships with fund-raising foundations, and, most recently, a new football stadium commercial sponsorship deal. Among CLS general counsels at other universities are Howard Ende '67 (Princeton University), Harry Yohalem '68 (California Institute of Technology), Richard Zansitis '79 (Rice University), and Jomysha Delgado Stephen '99 (Barnard College).
David Cohen '95 LL.M. is no stranger to the lengthy list of legal issues that can accompany a stadium deal. As general counsel for the New York Mets, Mr. Cohen will preside over the building of a new stadium on the team's 40-year-old Shea Stadium site in Queens, N.Y.
"One challenge for lawyers in this field," he says, "is the regulatory environment."
Baseball teams are linked by a variety of agreements, including contracts allocating industry revenues - as are professional football franchises, including the Jacksonville Jaguars, for which Paul Vance '73 serves as vice president and general counsel, and John Master III '96 of the Arena Football League.
Disputes also arise, such as the Mets' current litigation with SportsChannel Associates.
"The litigation arose from the formation of a new regional sports network that will feature Mets game telecasts," explains Mr. Cohen, an avid sports fan who joined the organization in 1995. Increasingly called upon to be a generalist, Mr. Cohen relies on advice from outside counsel whenever specialized expertise in an area of law is needed.
"In one day, I may work on a distribution deal, an employment issue, a breach of contract, a potential investment - whatever comes through the door," says Ms. Wong, who agrees that going in-house requires a more generalized set of legal skills.
Ms. Kendrick, who previously served as vice president for European legal affairs for the Walt Disney Company in Paris, hired a seasoned in-house legal team to assist her in handling all of the animation company's technology issues, talent negotiations, labor relations, and litigation.
Drilling in wells off the coast of Africa and in Asia introduces a host of foreign practice issues and international law. Hess's Mr. Collins divides work on these issues with a team of 25 lawyers with legal expertise in both refining and exploration.
"It's a litigious environment," says Mr. Leekley, who finds the national atmosphere significantly altered since joining Masco in 1976. "I would like to see more federal concern over lawsuits that really have little or no basis."
Mr. Collins notes that the additive MTBE, a chemical that can benefit air quality by making gasoline burn cleaner, can also find its way into the groundwater. This has led to a slew of lawsuits, "filed mostly by municipalities, against nearly every major energy company," he says.
Surprisingly, environmental matters can be as much a concern for a global energy company as they are for a soft drink company.
"Our environmental issues are pretty substantial," says Ms. McGuire.
PepsiCo, "a huge user of water," has its own water supply worries, from complying with regulations for water use to proper water disposal. In addition to its vast production facilities, the company also manages one of the largest trucking fleets in the country, giving rise to a host of emissions and air pollution concerns.
Yet it is precisely because no two days are ever alike in her role as general counsel that Ms. McGuire continues to enjoy work - from the inside.
"I play a real partnership role and I know I'm really accomplishing something," she says.
According to graduates, many of their accomplishments can be traced back, in part, to their Law School years.
"My mind bloomed at Columbia," says Ms. Wong. "They taught us a way of thinking, a way of analyzing."
Mr. Evans admits, "It would be hard to identify one, specific idea I learned at Columbia. They taught us a disciplined approach, how to process a lot of information and come to a decision."