FORETHOUGHT - Whyte Hirschboeck Dudek SC

FORETHOUGHT 

Find opportunities. Anticipate challenges. Plan for the future. 

2013

FORETHOUGHT 

Find opportunities. Anticipate challenges. Plan for the future. 

2013

FOREWORD

Wasn’t the recent election supposed to bring us some “certainty” 

It seems as if things are more uncertain than ever. Our federal government is 

continuing to debate tax and spending cuts, health care reform seems headed in 

many different directions, job creation is still slower than we’d all like to see, and the 

discussion around gun control and mental health is now at the forefront of a national 

debate. The world is getting more complicated every day, and the future is only getting 

more difficult to navigate. 

While we don’t claim to know the future, we are pleased to provide guidance on some 

of the legal issues we believe our clients and friends may face in 2013. This is the 

third year we’ve produced Forethought, a publication of forward-looking issues from 

the attorneys at Whyte Hirschboeck Dudek S.C., and we hope it continues to be a 

valuable resource for you. 

From how to build a family business legacy, to how informal communications can lead to 

an enforceable contractual amendment, to employment considerations during President 

Obama’s second term, the 2013 edition covers relevant topics that we think are worth 

your time to consider. 

Please accept this special publication with our best wishes for a rewarding 2013, and 

don’t hesitate to drop me a note at peberle@whdlaw.com to suggest a topic for a future 

Forethought edition, or to let me know how we can serve you better. In this time of 

uncertainty, you can count on WHD to help you work through the issues and obstacles 

you face, and to achieve Client Success. 

Sincerely, 

Paul J. Eberle 

Chief Executive 

P.S. Keep in mind that this book was written weeks prior to distribution. Therefore, it 

is possible that there are updates to some of the issues mentioned. As always, we 

encourage you to consult with your attorney prior to taking any kind of legal action.

TABLE OF 

CONTENTS

CORPORATE 

9 Expanding Your Business Abroad—A Few Basics 

Daniel B. Geraghty 

11 Building a Family Business Legacy: The U.S. Economy Depends on Success 

Sverre David Roang 

FINANCE 

14 Dodd Frank Act: A Threat to Mainstream Consumer Credit 

Marci VanAdestine and Edward J. Heiser 

HUMAN RESOURCES 

18 A Bumpy Road Ahead for Employers: Expected Employment Law Developments 

During Obama’s Second Term 

Frank A. Gumina 

21 Punitive Consequences: Uninsured Worker’s Compensation Penalty Claims 

Against Employers 

Maryeve Heath and Mary Beth Hughes 

23 Deferred Action for Childhood Arrivals: What Employers Need to Know 

Tiffany L. Hutchens 

INTELLECTUAL PROPERTY 

26 Take Heed, O Inventor: Beware the Ides of March! 

Ted J. Barthel and Thomas J. Pienkos 

28 Why are Intellectual Property Notices So Important 

Elisabeth Townsend Bridge 

LITIGATION 

31 Written Contracts are Not Always Set in Stone 

Erin M. Keesecker 

33 State Venture Capital Bill in the Works 

Thomas J. Springer and Gabrielle B. Adams 

36 Is it as Easy as Clicking “I Accept” Enforcing Standard Terms in Electronic Sales 

Contracts Using “Click-Wrap” Agreements 

Karen L. Tidwall and Pamela M. Schmidt 

REAL ESTATE/ENVIRONMENTAL 

39 Catch the Wave: Wisconsin’s Water Resources Can Provide Opportunities for Businesses 

Phillip R. Bower 

42 HUD Certification for Condominium Associations: Why Unit Owners Should Care 

Daniel J. Miske 

44 About the Authors

CORPORATE 

8 WHD FORETHOUGHT

EXPANDING YOUR BUSINESS 

ABROAD—A FEW BASICS 

Written by 

Daniel B. Geraghty 

As technology has made the world 

a smaller place, the reasons and 

opportunities for doing business abroad 

have become commonplace. Whether 

the expansion is a marketing strategy, a 

manufacturing strategy, a supply strategy, 

or tied to another reason, businesses 

going abroad must be mindful of 

adjustments to the “norm” and to barriers 

or obstacles that they may face. A little 

“forethought” before making the move will 

go a long way toward avoiding problems. 

Following are a few basic legal and tax 

considerations for doing business abroad. 

Legal Barriers and Other 

Governmental Regulations 

This obvious question needs to be 

considered early on in the process. For 

example, portable generators that are 

made and sold in the United States may 

need to be fine-tuned for export to the 

United Kingdom. In addition, the model 

for selling in the United States—for 

example, through independent sales 

representatives—may not legally work in 

the United Kingdom or be a commonly 

accepted business practice. 

impose the tax as a back tax at the time 

of the sale unless the taxing authorities 

“approve” of the sale. On its face, an offer 

of no tax for 10 years sounds like a very 

attractive reason to expand in Nicaragua. 

The reality, which may not be readily 

apparent, may be completely different. 

Duties and Other Similar 

Transaction Taxes 

Many times, a duty will be charged on 

importing goods to a country. In addition, 

other transactional taxes will be imposed 

at various points in commerce. It is 

essential to understand their potential 

application. For example, while not yet 

prevalent in the United States, nearly 

all countries impose what is known 

as a value added tax (VAT). This is a 

tax imposed upon a sale of property 

throughout the commercial process with 

a series of credits that ultimately shift the 

burden of tax to the end user. Rates of 

20% are not uncommon. If a business 

sells to another business it is critical to 

understand that a credit is available and 

how to obtain the credit. 

Cultural Differences 

While some countries are markedly 

different than the United States, others 

are more in line with the ways of doing 

business here. Doing business in 

Germany, for example, is a relatively 

structured and known process. To expand 

in Brazil or certain other Latin American 

countries, however, is considerably 

different and the process can be uncertain 

at the start. For example, businesses 

expanding in the hospitality industry in 

Nicaragua are exempt from income tax 

for 10 years. However, if the business is 

sold before the 10 years, Nicaragua may 

CORPORATE 9

Taxes 

The U.S. Tax Code is complicated. Putting 

the rules to work with another country’s 

tax regime is even more complicated. The 

United States has an extensive network 

of tax treaties with various countries, with 

the general goal of the treaties to eliminate 

double taxation. If a business doubles its 

profits through international expansion but 

its taxes also double, the expansion will not 

be considered successful. Spending time 

up front to determine a proper structure is 

essential to minimizing the impact of two 

taxing jurisdictions. The choice of a legal 

entity in a foreign country will determine 

how the entity is taxed, both in that country 

and in the United States. In addition, it is 

essential to consider how profits will be 

returned to the United States. This could 

include such basic questions as how to 

capitalize the initial investment, be it debt or 

equity, or whether to charge an affiliate for 

intellectual property. 

Protect Intellectual Property 

It goes without saying that moving 

intellectual property offshore exposes it 

to more risk. The legal issues vary greatly 

from country to country and preparation 

is essential to protecting the intellectual 

property. On the practical side, there 

are things a business can do to provide 

protection. For example, intellectual 

property can be broken into subgroups so 

that there is less risk that the intellectual 

property will be stolen. Many companies in 

China remove all intellectual property from 

their computer servers every evening. 

Understand the Cloud 

Doing business in the “cloud” has become 

more and more common. The cloud, 

or cloud computing, is a term used for 

anything that involves delivering hosted 

services over the Internet. While the law 

in this area is relatively undeveloped, 

having a presence in the cloud raises 

many issues. For example, does a 

cloud presence create potential liability 

in a jurisdiction Will a cloud presence 

subject a business to tax Does having a 

presence mean the business is required 

to comply with various data secrecy laws 

applicable in a particular country 

Understand Employment Relationships 

Many businesses expand initially by 

setting up a network of independent 

sales representatives in a foreign 

jurisdiction. While they may be considered 

independent sales representatives in 

the United States, it is important to 

understand what that relationship is in the 

foreign country. For example, if the sales 

representative only works for one business 

and exclusively sells that company’s 

product, that person may be the business’ 

employee. This could result in an 

employment relationship and long-lasting 

liability for social taxes and other benefits. 

In addition, having an employee in a 

foreign country may subject the business 

to income tax in that foreign country. 

Practice Patience 

What is commonplace in the United 

States is not in many parts of the world. 

For example, nearly any lawyer in the 

United States can set up a company and 

help open a bank account the same day. 

However, in Belgium, the same action can 

take a month or more and the client may 

be required to personally appear before a 

notary or another official. 

Prepare for Dispute Resolution 

Unfortunately, litigation happens, both 

domestically and abroad. It is very 

important to establish the forum and 

governing law for resolution of any offshore 

disputes. Parties typically agree to arbitrate 

disputes in a neutral location so that neither 

has a “home court” advantage. 

Conclusion 

Various technological advances have 

made doing international business much 

more commonplace. As with any new 

venture, it is important to fully plan for an 

offshore venture. While it is impossible to 

plan for every contingency, a well-thoughtout 

plan should make a move abroad 

more successful. n 


BUILDING A FAMILY BUSINESS 

LEGACY: THE U.S. ECONOMY 

DEPENDS ON SUCCESS 

Written by 

Sverre David Roang 

Many families dream of the possibility 

of building a business enterprise that 

can support and be enjoyed by many 

generations of the family. But making 

important and sometimes necessary 

transitions along the way can be difficult. 

Many advisers know the best techniques 

to make those transitions in a tax-efficient 

and legally beneficial matter, yet it is still 

notoriously difficult to maintain a family 

business through succeeding generations. 

In fact, most businesses do not make 

it past two or three generations. “From 

shirtsleeves to shirtsleeves in three 

generations” is a well-known saying in the 

United States that represents this difficulty. 

There are similar sayings in cultures around 

the world, suggesting that this unfortunate 

cycle is a universal human phenomenon. 

This cycle must be broken for the good of 

the entire economy. An estimated 80% to 

90% of the country’s businesses are family 

businesses, and an astonishing one-third of 

Fortune 500 companies are family owned. 

More than 60% of the U.S. gross domestic 

product comes from family businesses, 

and they employ more than 60% of the 

country’s workforce. In other words, 

the overall U.S. economy needs family 

businesses to thrive. 

So, what keeps a succession plan from 

being truly “great” Some best practices 

have emerged. Here are the top 10 

questions every family business should be 

asking to reach for long-term success. 

1. Do we have an independent board of 

directors Time and again, research 

has shown that the key to longterm 

success for family businesses 

from generation to generation is the 

establishment of an independent 

board. This is a difficult decision 

for many entrepreneurs who are 

accustomed to running every aspect 

of their business, but good business 

governance is critical to validate and 

bring perspective to the direction of 

the business. 

2. Do we have an ownership council 

Too many family businesses fail 

to recognize that the needs and 

desires of the business owners often 

differ from the needs and desires 

of the business. In addition to good 

corporate governance, successful 

family businesses have established 

good governance procedures for the 

owners. Sticky issues such as voting 

of ownership interests and owner 

exits from the business become 

far easier with good procedures 

established in advance. As the 

ownership grows to include far-flung 

cousins, these ownership governance 

CORPORATE 11

structures become even more critical 

to find and maintain the common 

interests of the owners. 

3. Do we have a family council Many 

families who own businesses make 

the mistake of doing a great job of 

actively governing the business and 

ownership issues, but not the family 

issues. Each system (family, business 

and ownership) deserves active 

attention and governance. 

4. Have we planned for the financial 

capital needs of the business and the 

owners Successful business owners 

understand capital planning for the 

business. However, the liquidity needs 

of the owners and the business shift 

over time, and successful family 

businesses actively plan for these 

changes to ensure that the business 

has adequate capital to thrive and the 

owners realize an adequate return to 

live and retire. 

5. Do we have a plan to advance the 

family’s intellectual capital Education 

of the younger generations is critical 

to the long-term success and wealth 

of the family. Successful families plan 

for and demand broad education and 

experience from their children and 

grandchildren, requiring them to gain 

significant work experience outside of 

the business before they are allowed 

to join the business. Permitting 

every family member to join the 

business, regardless of education 

and experience, is foolhardy, as is 

expecting that every family member 

will join the business. True success is 

found when the passions of a family 

member are in line with and can 

advance the family business. 

6. Are we taking care of our family 

In addition to education and 

experience, healthy families are more 

successful. Therefore, successful 

families make sure that all three types 

of the family’s capital—financial, 

intellectual and human—are 

preserved and advancing. 

a business is a complex system that 

requires work to establish the right 

balance among the various interests 

(i.e., are we balancing the financial 

needs of the founding generation with 

the capital needs of the business). 

Successful families identify and 

actively manage the balance points 

among these systems. For example, 

who helps the board of directors to 

effectively work and communicate 

with the business owners 

8. Do we have a family constitution 

Establishing and writing down a 

working family constitution can help 

guide decisions that affect each of 

the points discussed above. A family 

constitution can also be a critical 

guide to those who are managing the 

business, not to mention the advisers 

to the business, to make sure the 

business and succession plans 

remain aligned with the family values. 

9. Are we confident in our team of 

advisers Families who must 

navigate the process of transitioning 

a business can find great value in 

having advisers who understand the 

unique challenges faced by family 

businesses and who are passionate 

about helping families thrive. Finding 

advisers who enjoy working together 

to find creative solutions will bring the 

best results. 

10. How much time do we think this 

will take Successful transitions 

of businesses over generations 

span decades, and in some cases, 

centuries. Decisions made now can 

affect many generations, and there is 

no simple answer. Rather, each family 

must find its own path. This journey 

takes time, and successful families 

find pleasure in the process, knowing 

that they are building a true and 

lasting legacy for their family. 

The answers to the questions above will 

be different for each family, but families 

must keep asking them. Doing so will help 

lead to true and lasting family wealth. n 

7. Do we understand the key balance 

points in our family-business system 

As noted above, the family who owns 


FINANCE 

FINANCE 13

DODD FRANK ACT: 

A THREAT TO MAINSTREAM 

CONSUMER CREDIT 

Written by Marci 

VanAdestine and 

Edward J. Heiser 

Everyone is aware that one of the main 

thrusts of the Dodd-Frank Act (Dodd- 

Frank) passed in 2010 was to regulate 

Wall Street banking institutions and curtail 

so-called abuses to the credit markets 

that allegedly were caused by large 

banking institutions. Perhaps less known, 

however, but certainly of far greater longterm 

impact, is Dodd-Frank’s effect on 

everyday consumer credit. 

Dodd-Frank has created one of the 

largest new bureaucracies in years—the 

Consumer Financial Protection Bureau 

(CFPB)—with virtually unfettered authority 

over the consumer credit markets. 

The CFPB has, so far, issued literally 

thousands of pages of regulations 

regarding everyday consumer credit (not 

the activities of Wall Street institutions in 

the international credit markets). 

As much as consumer creditors are 

concerned about the ability of the CFPB 

to issue myriad regulations in connection 

with almost every aspect of consumer 

credit, of more concern, perhaps, is 

the small, but loud, chorus advocating 

that the CFPB has the mandate to take 

virtually any action to prevent creditors 

from “committing or engaging in an unfair, 

deceptive, or abusive act or practice” 

in connection with consumer credit 

transactions, according to Section 1031 of 

Dodd-Frank. 

The prohibition of “unfair” and “deceptive” 

acts or practices is not new; indeed those 

in the financial services industry (and 

other industries as well) long ago shorthanded 

this doctrine as UDAP (Unfair and 

Deceptive Acts or Practices). “Abusive,” 

however, is an entirely new, and largely 

undefined, standard. 

Two Views: Changing UDAP 

to UDAAP—Finding Meaning 

in the Extra “A” 

Position of Some Consumer Debtor Advocates. 

Some consumer debtor advocates argue 

for a broad, paternalistic definition of the 

“abusive” standard. As a general matter, 

they argue that the standard must be 

malleable and broad enough to apply to 

every situation in which existing statutes 

do not accomplish the purpose that they 

identify as “consumer protection.” 

The problem with this approach, of course, 

is that what constitutes “consumer abuse” 

or “consumer protection” would strictly be 

in the eye of the beholder. More importantly, 

if such an approach were adopted, there 

would be no objective legal standard 

against which consumer creditors would 

be able to accurately measure their acts 

or practices to determine their compliance 

with the standard. Should the abusive 

standard be interpreted and implemented 

as broadly as consumer debtor scholars 

would like, it could have immediate as 

well as long-ranging effects on every 

provider of consumer credit—ranging from 

Main Street-type installment creditors to 

depository institutions, such as banks and 

credit unions. 

Abusive Conduct Should Have a High 

Threshold. The standard should not be 

so broadly defined. If it is, it will give the 

CFPB unprecedented, and unchecked, 

powers to tamp down on credit activity 

that is currently considered lawful under 

state and federal law. In Wisconsin, 

for example, there are no interest rate 

maximum limits. The Wisconsin Legislature 

decided in 1984 that the marketplace 

and competition should determine credit 

prices. To adopt a malleable standard 

might enable the CFPB to overturn the 

Wisconsin Legislature’s decision by 

determining that finance charges over 


a certain annual percentage rate would 

be considered abusive. Similarly, such a 

standard could allow the CFPB to decide 

that certain creditors should not be able to 

offer additional products in connection with 

its loan product offerings, just because it 

considers the additional product abusive. 

Without a clear understanding of what the 

abusive standard means, creditors would 

understandably be hesitant to offer new 

credit products. 

Indeed, implementation of a standard 

based on some undefined concept of what 

is abusive could have devastating effects. 

Dodd-Frank Contemplates a Narrow Definition 

of “Abusive” Acts. The better position is that 

the broad and malleable definition outlined 

above is not warranted by the language 

of Dodd-Frank. Simply put, the abusive 

standard is circumscribed by Dodd-Frank, 

and should be narrowly defined by the 

CFPB in its enforcement policies. 

The only new element that the statutory 

definition of abusive adds (above and 

beyond what unfair and deceptive bring 

to the table) relates to a consumer’s 

understanding of the material risks, 

costs, or conditions of a product or 

service. Without committing an unfair or 

deceptive act or practice (which is already 

prohibited), a creditor acts “abusively” 

when it either (1) materially interferes 

with a consumer’s ability to understand 

a financial product; or (2) recognizes 

that a prospective borrower does not 

understand the material risks, costs, or 

conditions of the product or service (e.g., 

a consumer with a discernible incapacity, 

such as not speaking English or being 

mentally challenged) and with that 

knowledge, commits an act or practice 

that takes unreasonable advantage of 

the prospective borrower’s known lack 

of understanding. 

With these statutory definitions in mind, 

there are several standards that the 

CFPB should heed in interpreting and 

implementing the abovementioned 

abusive “add-on” to its power. These 

standards are not new concepts, but 

are rather reiterations of fundamental 

(and reasonable) concepts of law. The 

importance of expressly tying them to 

the CFPB’s enforcement policies of the 

abusive standard, however, should not be 

considered unimportant. Following these 

standards will ensure an interpretation and 

implementation of the abusive standard 

that is consonant with the definitions of 

abusive as set forth in Dodd-Frank, and 

FINANCE 15

further, will ensure that the CFPB does 

not put an abusive strain on consumers’ 

access to competitive credit. 

• Compliance with existing laws should 

establish that an act or practice is 

not abusive. Following laws that are 

considered, debated and ultimately 

passed by lawmakers establishes 

that a creditor is not acting abusively. 

For example, a creditor’s compliance 

with the Truth in Lending Act means 

that the creditor’s disclosures cannot 

be abusive. 

• A creditor’s “scienter” matters. The 

definition of abusive includes an 

indicia of conscious intent. Therefore, 

a creditor unintentionally committing 

an act or practice cannot be abusive. 

• Whether an act or practice is abusive 

must be evaluated from a “reasonable 

person’s” viewpoint. If a reasonable 

person were able to understand the 

financial service product or service, 

no abusiveness has occurred. In other 

words, the abusive standard should 

not be evaluated from the perspective 

of the least sophisticated consumer. 

• Quantifiable injury must be present. 

Hypothetical or de minimus injury 

to consumers cannot establish 

abusiveness. An act or practice that 

might cause an unwanted outcome, 

but never has, ought not to be 

automatically considered abusive so 

that the act or practice is prohibited 

even though, in practice, it is often a 

benefit to customers. 

We have been on the forefront with 

several consumer credit related trade 

organizations for the establishment of 

a high-threshold, narrow definition of 

what constitutes abusive conduct. We 

are hopeful that the CFPB will adopt 

this definition so as not to hinder future 

development in our vibrant consumer 

credit marketplace. n 


HUMAN 

RESOURCES 

HUMAN RESOURCES 17

A BUMPY ROAD AHEAD FOR 

EMPLOYERS: EXPECTED 

EMPLOYMENT LAW 

DEVELOPMENTS DURING 

OBAMA’S SECOND TERM 

Written by 

Frank A. Gumina 

The federal elections of Nov. 6, 2012 

resulted in a continuation of gridlock 

government, whereby the Democrats 

continue to control the presidency and 

Senate (without a supermajority to end 

filibusters) and the Republicans have 

control over the House of Representatives. 

While initial post-election commentary was 

at least somewhat conciliatory from both 

parties, significant polarization still exists 

and compromise on critical issues will be 

challenging. Any new sweeping legislative 

changes on the employment law front 

appear dead-on-arrival; however, the 

executive branch, through federal agency 

rulemaking and administrative decisions, 

wields a powerful hand. Employers can 

expect aggressive efforts by these federal 

agencies to alter the existing employment 

law landscape. 

Affordable Care Act Compliance 

With President Obama’s re-election, the 

Affordable Care Act (ACA) (also termed 

by some as “ObamaCare”) appears here 

to stay. The law was passed in 2010 and 

upheld by the U.S. Supreme Court in June 

2012. Employers will need to ramp up 

efforts to comply with the “play or pay” 

and other mandates of the ACA. In 2013, 

we are likely to see the implementation 

of complex regulations interpreting 

and providing additional requirements 

under the ACA. There is no doubt that 

compliance with the ACA will be the single 

largest challenge facing employers this 

coming year. 

More Aggressive Federal 

Employment Agencies 

Federal agencies such as the National 

Labor Relations Board (NLRB), 

Department of Labor (DOL) and Equal 

Employment Opportunity Commission 

(EEOC) have considerable rule-making 

and other power to change existing 

rules affecting the employee-employer 

relationship. During President Obama’s 

first term, we saw these agencies begin to 

take strides to implement pro-employee 

rules, but such efforts often met strong 

resistance in the courts, followed by a 

noticeable pull-back during the months 

preceding the November 2012 federal 

elections. In 2013, we will most certainly 

see a resurgence of federal agency 

rule-making and litigation tactics in the 

employment arena. 

NLRB 

No agency has been, or most likely will 

be, more aggressive in the coming years 

than the NLRB. The president controls 

majority appointments to the NLRB. 

President Obama has not been shy about 

appointing union faithfuls with zealous 

agendas. In 2012, the NLRB sought to 

expand its sphere of influence beyond 

the unionized workplace to all workplaces 

with numerous decisions attacking atwill 

employment, off-duty workplace 

access rules, policies prohibiting walking 

off the job, confidentiality during internal 

investigations, and social media policies. 

In 2013, we can expect the NLRB to 

continue its campaign of reaching out to 

non-union workers, making them aware 


of their rights under the National Labor 

Relations Act. In addition, the NLRB will 

undoubtedly attempt to resurrect “ambush 

election” rules, greatly diminishing the time 

frame for union elections and effectively 

eviscerating employers’ opportunities 

to express views on union representation. 

These expected new election rules, along 

with the most recent micro-unit rules 

(whereby smaller bargaining units may 

be deemed appropriate for a portion of 

the workplace), will certainly empower 

union organizing. 

DOL 

The DOL will also seek to more stridently 

prosecute the laws it enforces. Recently, 

the DOL entered into a cooperative 

alliance with the Internal Revenue 

Service to more aggressively go after 

companies that misclassify workers as 

independent contractors. A company 

utilizing independent contractors may face 

not only one audit, but multiple federal 

and state agency audits under a crossreporting 

arrangement between federal 

agencies and certain states. 

It is also expected that the DOL will 

rekindle its efforts to issue wage and hour 

recordkeeping rules forcing employers 

to provide salaried exempt employees 

with information on their pay and how it 

is calculated. If an employee is deemed 

exempt from the overtime pay requirements 

by his or her employer, these proposed 

DOL rules would require the employer 

to (1) perform a classification analysis; 

HUMAN RESOURCES 19

(2) disclose the analysis to employees; 

and (3) retain the analysis for government 

inspection. Such requirements would 

certainly lead to increased audits and wage 

and hour litigation. 

EEOC 

The EEOC is in the process of finalizing its 

Strategic Enforcement Plan (SEP). Under 

its SEP, the EEOC will focus on systemic 

discrimination, especially in recruitment and 

hiring, zeroing in on background checks, 

pre-employment testing and those hiring 

practices having a disparate impact on 

protected groups. The SEP also has the 

EEOC focusing on emerging legal issues 

under the Americans With Disabilities Act, 

such as fixed leave of absence policies, 

100% healed policies (before returning 

employees to work) and forced unpaid 

leave for pregnant employees, as well as 

discrimination against homosexual and 

transgender individuals. 

Recommendations 

While the challenges facing employers 

under the second Obama administration 

are many, there are steps employers should 

take to ensure they are not blindsided: 

1. Companies need to assign a point 

person (usually someone from Human 

Resources) to educate themselves 

and be vigilant in monitoring emerging 

employment law trends and nimbly 

changing policies and/or practices to 

meet the challenges. 

2. Management and supervisory training 

on emerging trends, as well as 

solid “blocking and tackling” human 

resource skills, will be even more 

critical to avoid troubling legal issues. 

We will undoubtedly see an expansion of 

individual employee rights in the workplace 

in the coming years under the second 

Obama administration. Those employers 

armed with timely information and the 

ability to quickly adapt will have the 

greatest chance of avoiding troublesome 

legal claims. n 


PUNITIVE CONSEQUENCES: 

UNINSURED WORKER’S 

COMPENSATION PENALTY 

CLAIMS AGAINST EMPLOYERS 

Written by 

Maryeve Heath and 

Mary Beth Hughes 

2013 is here and, unfortunately, 

the economic outlook is not much 

better than 2012. One of the biggest 

consequences for employers in the 

worker’s compensation arena is an 

increase in the value of worker’s 

compensation claims. There are a number 

of ways this occurs, but one of the most 

dangerous and potentially overlooked 

ways is through penalty claims pursued 

directly against employers. There are 

four different penalty claims an employee 

may pursue against his or her employer, 

all of which are uninsurable under a 

worker’s compensation policy. This means 

the employer bears the full burden of 

defending the claim, including hiring an 

attorney and paying its own defense 

costs, as well as paying for any judgment 

or settlement. It is important to note, 

however, that the employee may only 

prevail in any of these claims after proving 

the existence of a compensable, workrelated 

injury. Following are descriptions of 

the potential penalty claims that may be 

pursued by an injured employee. 

1. Bad Faith: Wisconsin Statutes 

§ 102.18(1)(bp) 

If the employer (or insurance carrier) 

suspends, terminates, fails to make 

payments or fails to report an injury as a 

result of malice or bad faith, the penalty is 

200% of compensation, including medical 

expenses, up to a maximum of $30,000 for 

each act of bad faith. The Department of 

Workforce Development (DWD) regulation, 

§ DWD 80.70, defines “malice or bad 

faith” in two ways: (1) where the employer 

unreasonably refuses or unreasonably fails 

to report an alleged injury to its worker’s 

compensation carrier; or (2) where the 

self-insured employer or insurance carrier 

unreasonably fails to make payment or 

unreasonably suspends or terminates 

payments without credible evidence 

demonstrating that the claim for payments 

is fairly debatable. Under Wis. Stat. § 

102.22(1), the “delayed payment penalty” 

statute, if the employer or insurance carrier 

“inexcusably” fails to pay, a penalty of 

10% of the delayed compensation can be 

awarded. The two penalties may not be 

awarded concurrently. 

2. Unreasonable Refusal to Rehire: 

Wisconsin Statute § 102.35(3) 

If an employee sustains a work-related 

injury and the employer refuses to rehire 

that employee without reasonable cause, 

where suitable employment is available 

within the employee’s physical and 

mental limitations, the employer may 

have exclusive liability to pay the wages 

lost during the period of refusal, with a 

maximum exposure of one year’s wages. 

Yet, the Worker’s Compensation Act does 

not require the employer to create a job. 

The statute also applies to the situation 

where an employee is hired back to work 

by the employer, but is subsequently 

terminated. When the employer 

determines its duty to bring an employee 

back to work after a work-related injury, 

it should not overlook the employer’s 

obligations under the Family and Medical 

Leave Act, Americans With Disabilities 

Act, and Wisconsin Fair Employment Act. 

3. Violation of Safety Provisions: 

Wisconsin Statutes § 102.57 

If an injury is caused by the failure of the 

employer to comply with any statute, 

HUMAN RESOURCES 21

ule or order of the DWD, compensation 

and death benefits shall be increased by 

15%, not to exceed $15,000. Yet, there 

must be a causal relationship between 

the violation and the injury incurred. This 

includes injuries caused by failure to 

follow Occupational Safety and Health 

Administration (OSHA) regulations or 

where the employer failed to provide a 

safe place of employment as determined 

under Wis. Stat. § 101.11 (Safe Place 

Statute). The DWD may likewise reduce 

compensation for the failure of an 

employee to follow the same safety 

statutes, rules or orders. However, it is 

much more common for the DWD to 

assess a penalty against the employer 

than against the employee. 

4. Minor Illegally Employed: 

Wisconsin Statutes § 102.60 

When an injury is sustained by a minor 

illegally employed, compensation shall 

be doubled, up to a maximum of $7,500, 

if the employee does not have a written 

work permit; triple the compensation, 

up to a maximum of $15,000, is paid 

if the minor is working at prohibited 

employment. The penalty is not paid to 

the minor, but rather is paid into the state 

Supplemental Benefit Fund. 

Practical considerations for dealing 

with potential penalty claims: 

• Take all reports of work injuries 

seriously and complete the required 

reporting forms. 

• Consult with legal counsel during 

any OSHA investigation or state 

investigation into a safety violation 

claim or claim that the employer 

illegally employed a minor. 

• With regard to “unreasonable refusal 

to rehire” claims, consider that the 

employer must prove the failure to 

rehire or termination was: (1) “fit, fair 

and just under the circumstances”; 

(2) the result of an inability to provide 

work suited to the employee’s 

physical and mental limitations; or (3) 

the result of a seniority provision in a 

collective bargaining agreement. 

• With regard to safety violation claims, 

keep in mind that the DWD–Worker’s 

Compensation Division is likely to 

adopt any findings of OSHA after a 

work-related accident. This is another 

reason for taking OSHA inspections 

seriously. 

• The Wisconsin statute of limitations 

is 12 years and generally runs from 

the date that compensation was last 

paid, so an employee may file any 

of these claims for some time after 

an employer may think the case is 

closed. 

• A settlement agreement and general 

release of employment claims cannot 

extinguish the right of an employee 

to bring any of the above penalty 

claims against an employer. The only 

way to relieve the potential liability for 

any worker’s compensation claim, 

including the penalty claims, is to 

enter into a Compromise Agreement 

that is approved by the DWD– 

Worker’s Compensation Division. n 


DEFERRED ACTION FOR 

CHILDHOOD ARRIVALS: WHAT 

EMPLOYERS NEED TO KNOW 

Written by 

Tiffany L. Hutchens 

The Obama administration’s deferred 

action for childhood arrivals (DACA) 

program could grant a path for more 

than 1 million unauthorized immigrants 

to legally join the workforce. However, 

employers who know that an employee 

is applying for DACA relief may be at risk 

of violating federal immigration law. These 

risks may be mitigated by formalizing the 

employment verification letter request 

process. This will limit an employer’s 

knowledge that an employee is currently 

unauthorized and applying for DACA relief. 

What is DACA 

DACA provides temporary relief from 

possible deportation and allows successful 

applicants to obtain employment 

authorization. DACA applicants, by their 

very nature, are not legally authorized to 

work in the United States. Immigrants who 

came to the United States as children and 

meet the following requirements may be 

eligible for DACA relief: 

1. Came to the United States before 

turning 16 years of age; 

2. Demonstrate at least five years 

of continuous presence as of 

June 15, 2012; 

3. Are under 31 years of age; 

4. Are enrolled in school, have either 

graduated from high school, passed a 

GED test, or served honorably in the 

armed forces of the United States; and 

5. Do not have any serious criminal history. 

Applicants are required to prove these five 

elements with supporting documentation. 

Employment verification letters or paystubs 

may be requested by applicants to 

demonstrate the second element—that 

they have been in the United States for five 

continuous years prior to June 15, 2012. 

What are an Employer’s Risks 

Federal immigration law prohibits 

employers from knowingly hiring someone 

who is not authorized to work. Civil and 

criminal liability may attach to an employer 

who knowingly employs unauthorized 

workers. An employer’s “knowledge” may 

be actual or constructive, and in the DACA 

context, it will attach when an employee 

asks an employer about how to apply 

for the DACA program or requests proof 

of employment for DACA purposes. It is 

important to note that not every request 

for an employment verification letter 

implicates immigration law. There are 

many reasons why someone may need 

to verify employment with an employer, 

and a simple request for confirmation of 

employment dates with no mention of the 

DACA program should not raise a red flag 

for employers. Furthermore, employers 

should not rush to judgment regarding 

an individual’s immigration status if talk 

of DACA is heard around the workplace. 

However, if an individual specifically 

requests employment verification for 

DACA purposes, an employer is deemed 

to have knowledge that the individual is 

not work authorized. 

While many employers may be compelled 

to help an employee gain temporary 

relief from deportation and lawfully join 

the workforce, the knowledge gained 

regarding an employee’s illegal status 

exposes the employer to potential liability 

for the employment of unauthorized 

workers. Employers who know that a 

current employee is applying for DACA 

relief because he or she is not authorized 

to work in the United States will have 

to fire the employee or face liability for 

violating immigration laws. 

HUMAN RESOURCES 23

Will Employers be Subject to 

Immigration Enforcement Actions 

Individual DACA applications have 

been assured by the U.S. Citizenship 

and Immigration Services (USCIS) that 

information used in their applications 

will not be used against them; however, 

employers have not been afforded the 

same guarantee. USCIS has stated that 

information from employers will not be 

shared with Immigration and Customs 

Enforcement for civil immigration 

enforcement purposes unless there is 

evidence of egregious violations of criminal 

statutes or widespread abuses. It is not 

yet clear what constitutes an egregious 

violation or widespread abuse, and only 

time will tell. 

What Should Employers Do 

What if an Employee Presents a New 

Work Authorization Document 

As DACA applications are approved, 

employers may find that current 

employees who employers reasonably 

believed to be work authorized at the time 

of hire, present new work authorization 

documents after DACA approval. 

Employers should know that they may 

continue to employ a worker who 

previously presented false documents or a 

different identity so long as the original, yet 

false, documents reasonably appeared, at 

the time of hire, to be valid and related to 

the individual. 

For employers with honesty policies, 

the result may not be the same. An 

employee who presents a new valid 

work authorization document pursuant 

to DACA, may have previously presented 

false documents during the hiring process. 

Employers with an honesty policy need to 

consider any risk of retaining the employee 

if the employer typically terminates 

employees who materially lie in the 

application process. 

Employers should set up a formal, 

automatic process for employees to 

request employment verification letters. 

For example, employees may be 

instructed to complete a written request 

form that does not inquire about the 

intended use of the letter. Employers that 

implement such a practice will avoid both 

the employee providing a reason for the 

request and a verbal interaction where 

the reason for the request might come up 

during a conversation. 

Key Takeaways 

• DACA relief may benefit employers 

by expanding the workforce, but the 

program poses risks to employers. 

• Employers may not “knowingly” 

employ unauthorized workers. 

• An employer may gain knowledge 

that an employee is unauthorized 

to work if the employee requests 

assistance from an employer during 

the DACA application process. 

• Employers should create formal 

employment verification letter request 

protocols to avoid gaining knowledge 

that an employee is applying for 

DACA relief. n 


INTELLECTUAL 

PROPERTY 

INTELLECTUAL PROPERTY 25

TAKE HEED, O INVENTOR: 

BEWARE THE IDES OF MARCH! 

Written by 

Ted J. Barthel and 

Thomas J. Pienkos 

In 44 B.C., the Ides of March witnessed 

the end of Julius Caesar. This year, 2013 

A.D., the Ides of March will bring an end to 

the “first-to-invent” principle of U.S. patent 

law—a paradigm that has been a hallmark 

to U.S. inventions for more than 200 years. 

Currently, the U.S. patent system is based 

on a unique first-to-invent doctrine, which 

means that the inventor who first conceived 

of the invention is considered the first 

inventor and is entitled to patent protection. 

Countries in the rest of the world, 

however, have patent systems based on a 

“first-to-file” doctrine, where the patent is 

granted to the inventor who is the first to 

file a patent application, regardless of the 

date of invention. 

After March 15, 2013, the America Invents 

Act (AIA) will transform the U.S. patent 

system from the first-to invent system to 

a “first-inventor-to file” (FITF) system. A 

policy behind the AIA is to harmonize U.S. 

patent law with the rest of the first-to-file 

patent world. Note that the AIA does not 

transform the United States to a true firstto-file 

patent system in which the person 

first to the patent office prevails. Under the 

FITF system, a one-year grace period is 

provided for filing a patent application after 

a public disclosure by the inventor. 

AIA Will Greatly Expand Prior Art 

After March 15, 2013, the AIA will 

also greatly expand the universe of 

“prior art”—i.e., publications and other 

information which can be used to prevent 

grant of a patent application. The AIA 

changes the language of 35 U.S.C. § 102 

to encompass a much broader range 

of material that can be used by the U.S. 

Patent and Trademark Office (USPTO) to 

bar a patent from being issued. 

To prepare for the dramatic changes 

coming with the Ides of March, savvy 

innovators may wish to consider the 

following measures. 

1. File patent applications on any 

inventions by March 15, 2013, if not 

sooner. Applications filed by March 

15, 2013 will be grandfathered under 


the current first-to-invent system 

and the narrower definition of prior 

art. Another advantage: Filing by 

March 15, 2013 can extend the 

first-to-invent system for years 

into the future. A chain of one or 

more continuation/divisional patent 

applications claiming priority to an 

application with an effective filing date 

on or before March 15, 2013, will also 

be grandfathered under the current 

first-to-invent system. 

2. Prepare for the new regime. After 

March 15, 2013, the race to the 

USPTO begins. Under the new FITF 

system, an inventor who waits to file 

an application may risk losing his or 

her patent rights to an inventor who 

invented later, but filed first. The AIA 

will place added incentive to file a 

patent application in order to merely 

prevent others from patenting one’s 

own invention. 

3. Maintain good records. The AIA brings 

new impetus for documenting 

research and development activities. 

Accurate lab notebooks may be relied 

upon to show first invention by the 

inventor that occurred within the oneyear 

grace period. Maintaining good 

records can be used to overcome 

third-party prior art to a later-filed 

application. Strong research records 

may prove essential in the AIA’s new 

derivation proceeding—a procedure 

whereby a “true inventor” can 

challenge and prevent one who took 

(stole or “derived”) his or her invention. 

Finally, a well-implemented 

recordkeeping protocol may deter 

departing employees, consultants, or 

joint venture partners from attempting 

to obtain patents on the company’s 

own innovations. 

4. Harvest valuable patent rights. Good 

recordkeeping can also be a valuable 

foundation for methodical evaluation 

of innovations. Regularly assessing 

key innovations will speed up the 

patent filing process, which is vital 

under the new AIA patent regime. 

A committee of decision-makers, 

charged with harvesting valuable 

patent rights, and assisted by patent 

counsel advising on patentability and 

third-party risk, can efficiently identify 

patent assets worth protecting before 

valuable rights are lost. 

The AIA and its new paradigm will 

have profound implications for patent 

stakeholders. Taking proactive steps 

now—and after March 15, 2013—will help 

to ensure that patent rights are maximized. 

Innovators: Do not fear, but take heed, 

and beware the Ides of March! n 


WHY ARE INTELLECTUAL 

PROPERTY NOTICES SO 

IMPORTANT 

Written by 

Elisabeth Townsend Bridge 

Why do intellectual property (IP) lawyers 

encourage their clients to “clutter up” their 

marketing materials, product packaging 

and websites with patent, trademark and 

copyright notices Don’t they know that 

such notices detract from the important 

product messages conveyed to customers 

Properly using and monitoring IP notices 

on advertising and packaging materials 

can be troublesome for IP owners and 

distract from marketing messages. 

However, such notices are crucial to 

protecting IP assets, and proper notice 

can have substantial deterrence value. 

An IP owner does not want to discover 

too late that its failure to put proper IP 

notices on product or packaging has 

severely limited or blocked its right to 

recover damages for infringement. Patent, 

trademark and copyright notices are 

critical to the enforcement of ownership 

rights and the recovery of damages for 

infringement of those rights. 

Patents 

Patents include plant patents, design 

patents and utility patents. The notice 

“patent pending” may be used on a 

product embodying the invention after a 

patent application has been filed. Once 

the patent is issued, the patent owner 

may amend the notice to recite the patent 

number in the following manner: “patent” 

or “pat.” and the patent number. 

As an alternative, the patent owner can 

recite “patent” or “pat.” and display an 

Internet address where the product 

is associated with the relevant patent 

number(s). This approach can make it 

easier for the IP owner to update notices 

efficiently since updates are consolidated 

in one location and packaging and 

product materials do not have to be 

modified individually. 

If the patent owner fails to mark its 

product with proper notice, according to 

United States Code § 287, “no damages 

shall be recovered by the patentee in any 

action for infringement…except damages 

for infringement after receipt of actual 

notice.” Since substantial monetary 

damages may accrue as a result of 

infringement prior to a cease and desist 

demand letter (or other actual notice), it 

is important to consistently use proper 

notice on products in association with 

relevant patent numbers. 

Trademarks 

The trademark symbols and ® are 

methods used by trademark owners 

to communicate their claim of rights to 

the general public. There is no absolute 

requirement that a trademark owner 

provide notice of its claim of rights in 

marks on product packaging or advertising 

materials under U.S. law. However, the 

use of trademark symbols is advisable 

because they provide notice of the claim of 

rights in the mark and they have substantial 

deterrence value. Although the symbol 

has no statutory significance, it is generally 

recognized to signify a claim of common 

law rights in the mark. 

The ® symbol, in contrast, should always 

be used with marks associated with 

a viable trademark registration and is 

recognized as the uniform registration 

symbol throughout the world. However, to 

ensure proper use, the trademark owner 

should be mindful of the jurisdictions 

where the mark is registered and the 

goods/services with which it is associated 

in the registration. 

Registration under U.S. law provides 

constructive notice to the public of the 


egistrant’s claim of rights in the mark. The 

® symbol has statutory significance under 

the Lanham Act. In particular, Section 

29 of the act provides that the owner of 

a mark registered in the U.S. Patent and 

Trademark Office may give notice that the 

mark is registered by displaying the words 

“Registered in U.S. Patent and Trademark 

Office” or “Reg. U.S. Pat. & Tm. Off.” or 

“®.” The act provides that in any suit for 

infringement where a registrant fails to give 

notice, no profits and damages shall be 

recovered unless the defendant had actual 

notice of the registration. Furthermore, 

treble damages and attorneys’ fees may be 

recovered in the event of willful infringement 

of a registered mark. Willfulness may be 

difficult to establish if the registrant has not 

displayed proper notice with the mark. 

Copyrights 

Copyright notice is also important to the 

enforcement of rights and the recovery 

of damages. Copyright arises under the 

law when the author of the work (whether 

literary, artistic or musical) “fixes” the work 

in a tangible medium of expression. Notice 

of copyright should be placed on any and 

all published copies of the work, whether 

or not registered. The notice consists of 

the following: 

1. The © symbol, the word “copyright” 

spelled out or the abbreviation 

“copr.” (or ℗ in the case of sound 

recordings); 

2. The year of first publication of the 

work; and 

3. The name of the owner of copyright 

in the work. 

The notice should be affixed to any and 

all copies in such a manner and location 

so as to provide reasonable notice of the 

copyright claim. Significantly, where notice 

is provided, an infringer cannot claim to be 

“innocent” and mitigate damages. 

Recommendations 

All IP owners should take the following 

steps to ensure proper IP notice: 

1. Conduct regular reviews and audits 

of IP notices on product, packaging 

and promotional materials to ensure 

notices are properly used and reflect 

current status of the IP assets. Failure 

to use patent notices properly may 

constitute “false marking.” 

2. Docket expiration dates of patents 

as a reminder to remove notices as 

patents expire. 

3. Consider the applicable products that 

should bear notices of newly issued 

patents and replace “patent pending” 

with the new patent numbers. 

4. Review website use and be sure to 

display IP notices (in particular, ® 

with trademarks) at least once in a 

prominent location (e.g., the header 

if appropriate) on each page that can 

be accessed directly on the Internet. 

5. Use “patent pending” and “” to 

deter infringement. 

6. Use copyright notice on all 

marketing materials, whether or 

not registered. n 


LITIGATION 


WRITTEN CONTRACTS ARE 

NOT ALWAYS SET IN STONE 

Written by 

Erin M. Keesecker 

Written contracts give businesses and 

individuals a sense of security and stability, 

in part because they seem difficult to 

break or modify. Most written contracts 

contain a section that dictates what 

the parties must do in order to change 

the agreed-upon contractual terms. 

This section often contains a “no-oralmodification” 

(NOM) clause, indicating that 

amendments must be “made in writing” 

and “executed by both parties.” Here is an 

example of such a clause: 

No amendments or modifications 

of this agreement shall be made 

or be deemed to have been made 

unless such amendments or 

modifications are made in writing 

and executed by the party to be 

bound thereby. 

In reading the NOM clause quoted above, 

most people envision the parties returning 

to the proverbial bargaining table, 

negotiating the amendment, and then 

signing an amended written document, 

perhaps under very similar conditions as 

existed when the original contract was 

formed. For purposes of formality, there 

may even be a notary present. 

That, however, is no longer the only 

scenario permitted by an NOM clause. 

Because the term “writing” does not 

necessarily mean putting pen to paper, 

NOM clauses may no longer be enough 

to bar contract amendments by informal 

email exchanges or even instant 

messaging (IM) conversations. 

The Enforceable Email Chain 

For instance, in 2009 the U.S. District 

Court for the Central District of California 

held that a series of informal emails 

between two parties to a written contract 

created an enforceable amendment, 

even though governing law, much like 

an NOM clause, required agreements 

to “be reduced to writing, or some 

memorandum, or notes thereof” and 

“signed by the party to be charged 

therewith, or some other person thereunto 

by the party lawfully authorized in 

writing.” The court ultimately employed a 

“substance over form” type of analysis, 

concluding that as long as a court can 

“plainly determine” the essential elements 

of the contract, i.e., “the identity of the 

parties to the contract, the nature of its 

subject matter and its essential terms,” 

an email chain is an adequate vehicle for 

amendment. 

The $1.2 Million Instant Message 

An even more dramatic example occurred 

in 2011 in the U.S. District Court for 

the Southern District of Florida. There, 

the parties’ NOM clause stated that the 

contract could be changed “only by 

a subsequent writing signed by both 

parties.” A dispute arose after the parties 

discussed modifying certain terms 

of the contract in a series of informal 

conversations via IM. The plaintiff argued 

that the IM conversation effectuated a 

contract amendment and demanded 

payment under the new terms; the 

defendant disagreed and refused to 

pay. More than $1.2 million in damages 

were in play. The court concluded that 

the IM conversation effectively amended 

the contract. Among other things, the 

court was influenced by the fact that 

the IM messages not only showed that 

the parties had come to an agreement, 

but also contained the specific terms 

of that agreement. Further, the court 

was influenced by the fact that the IM 

messages actually recorded the parties’ 

efforts to carry out the agreed-upon 

amendments: “It is difficult to imagine 

more specific and direct evidence of an 

agreement than the two parties actually 

sitting down simultaneously and doing 

what they had agreed to do.” 

LITIGATION 31

Conclusion 

The possibility of creating enforceable 

contract modifications by informal 

communications such as email or IM 

is particularly relevant to businesses or 

individuals who operate under the terms of 

contracts that were negotiated some time 

ago. A significant amount of email and 

IM correspondence can occur between 

parties during the course of a relationship. 

In light of the decisions discussed above, 

these informal communications could 

amount to an enforceable contractual 

amendment or even waiver of key 

contractual provisions. 

Following are a few issues to consider 

if you are currently operating under the 

terms of a formal written contract: 

• Don’t underestimate the power of an 

email or IM exchange to modify the 

terms of a contractual relationship, 

even contracts that seem to be set 

in stone. If possible, avoid discussing 

contract terms via email or IM. 

But how did the court find that the 

IM conversation was “signed by both 

parties” It didn’t. Instead, the court 

sidestepped the NOM clause by 

concluding that the defendant waived its 

protections under that clause when the 

plaintiff “materially changed its position” in 

reliance on the new terms. In other words, 

the court barred the defendant from using 

the NOM clause as a defense. 

Implications for Wisconsin 

Although Wisconsin state courts have 

not specifically addressed the issue of 

contract modification by email or IM 

correspondence, they have examined 

email correspondence in the context 

of contract disputes to determine 

the parties’ intent. Further, the U.S. 

District Court for the Eastern District 

of Wisconsin has stated that the issue 

of “whether or not defendant’s emails 

constitute a writing signed by defendant” 

is a question for the jury to decide. These 

cases suggest that Wisconsin courts may 

enforce a contract amendment evidenced 

only by email or IM, as long as the 

parties’ intent is clearly discernible. 

• Think about how easy (or how 

difficult) you want it to be to modify 

your contract. Does your contract’s 

modification clause reflect that level of 

ease or difficulty 

• In the eyes of many judges, actions 

speak louder than words. Are your 

day-to-day actions consistent with 

the terms of your written contract 

If, for example, you have agreed to 

change certain contract terms via 

email even though your contract 

contains an NOM clause, you may 

have inadvertently waived that 

contractual protection. 

• Take the time to review your written 

contracts and determine whether 

they still reflect your contractual 

relationships, or whether they need to 

be updated. n 


STATE VENTURE CAPITAL 

BILL IN THE WORKS 

Written by Thomas 

J. Springer and 

Gabrielle B. Adams 

Job creation was at the heart of last year’s 

national election campaign. It comes as no 

surprise that Wisconsin’s political leaders 

are seeking to encourage job creation in 

the state. Leaders from both parties have 

seized upon entrepreneurship as the driver 

of future job creation. Many see state 

subsidizing of venture capital funding as 

the best way to promote entrepreneurship. 

In particular, getting more venture capital 

to Wisconsin’s startup enterprises—earlystage, 

high-growth, high-risk companies 

that specialize in information technology, 

biotechnology or software—is seen as 

a policy goal. In 2011, the governor, 

state Senate and Assembly all proposed 

versions of a venture capital promoting 

bill. Unfortunately, a consensus was not 

reached and no bill was passed. It is 

expected that passage of a venture capital 

bill will occur in the next legislative session. 

Why Should We Care 

The calculus for state government 

promotion of venture capital is simple: 

More venture capital would fund more 

startups, and more startups will result in 

more jobs. According to the Kauffman 

Foundation, all of the net job growth in 

the United States in the past decade 

has come from startup businesses. 

Historically, successful companies in their 

first five years are job creators, averaging 

3 million new jobs each year. In contrast, 

companies more than 5 years old tend to 

shed jobs, on average of 1 million annually. 

Wisconsin is poised for more venture 

capital investment. The state has long had 

a strong foundation in research, intellectual 

property and patents. According to the 

2012 edition of the Wisconsin Portfolio, 

an annual publication of the Wisconsin 

Technology Council through its Wisconsin 

Angel Network, Wisconsin has 2.15% of 

the nation’s academic research spending 

and 2.11% of the nation’s patent filings. 

However, this intellectual capital has not 

translated into startup creation. 

The lack of crossover of research and 

intellectual capital into startup enterprises is 

attributed to a lack of venture capital. Again 

according to the Kauffman Foundation, 

Wisconsin companies fetch less than 1% 

of venture capital invested nationwide. That 

puts it in the bottom 10% of the 50 states 

in entrepreneurial activity. Equalizing the 

amount of investment with the intellectual 

capital status of the state would create 

enormous potential for job growth. 

Wisconsin’s Numbers 

• 223,602: Wisconsin’s unemployed 

(September 2012). 

• 3: Percentage of the Wisconsin 

workforce in venture-backed 

businesses. The national average 

is 11%. 

• 1.2 billion: Amount of venture capital 

Wisconsin has attracted in the past 

40 years. 

• 72 million: Amount of venture capital 

raised by Wisconsin in 2011, ranking 

last out of the nine states its size. 

• 0.25: Percentage of the nation’s 

venture capital raised by Wisconsin 

in 2011. 

• 1.84: Percentage of the nation’s 

population Wisconsin represents. 

• 0.13: Percentage of all venture capital 

under management in Wisconsin. 

In contrast to these numbers, Wisconsin’s 

peer state, Minnesota, has performed well 

in the venture capital economy. In 2009, 

Minnesota attracted more than $6.5 billion 

in venture capital investment, 19% of the 

Minnesota workforce was attributed to 

venture capital, and its unemployment rate 

is at 5.8%. 

LITIGATION 33

According to Zach Brandon, Director 

of the Wisconsin Technology Council’s 

Wisconsin Angel Network, if Wisconsin 

is able to increase its venture capital 

investing to be on par with just the 

national average (11%), it could potentially 

reduce its unemployment rate to almost 

zero. At the very least, it could become 

more competitive like Minnesota. 

Wisconsin’s Recent Attempts to Pass 

Venture Capital Legislation 

Gov. Scott Walker proposed a venture 

capital bill in 2011, which would have 

provided $200 million in tax credits to 

insurance companies and out-of-state 

investment firms known as certified 

capital companies, or CAPCOs. In return, 

these companies would be required to 

invest $250 million in Wisconsin startup 

companies through the CAPCOs. The state 

would gain 20% of any profits, but there 

was no guarantee it would get back any of 

the revenue lost in granting the tax credits. 

The governor’s proposal was largely 

based on the same investment model 

presented in a program initiated in 

1999. The 1999 program provided $50 

million worth of Wisconsin tax credits to 

three CAPCOs, who sold the credits to 

insurance companies with the promise 

that they would invest the money in 

Wisconsin companies. However, the 

1999 program had large flaws. The 

proposal had no established authority 

to enforce how the money would be 

spent or managed by the CAPCOs, the 

CAPCOs were not required to repay 

the state for the tax credits, and the 

CAPCOs were only required to invest 

half of the money in the first five years 

of the program. As a result, only half of 

the money promised to be channeled 

into Wisconsin’s startups ever made 

it there, the majority of the companies 

that received money from the CAPCOs 

haven’t survived, and only a few hundred 

jobs were created in the state for a 

decade’s worth of effort. Not surprisingly, 

the 2011 CAPCO-oriented proposal ran 

into heavy opposition. 

Afterwards, the Legislature advanced two 

proposals. Both bills had the same goal 

of promoting Wisconsin startup growth 

through jump-starting venture capital 

investment. Both bills advocated for $200- 

400 million in venture capital investment 

funds. Money for the funds would be 

raised by either selling bonds or allocating 

tax credits to encourage investment. The 

funds would have required private parties 

to provide matching money to qualify for 

the government funds. 

Assembly Bill 129 and Senate Bill 94 would 

have established the Wisconsin Venture 

Capital Authority, as well as an investment 

fund and investment programs to be 

administered by the authority to invest 

in venture capital funds and Wisconsin 

startup and other businesses. However, the 

Senate and Assembly differed significantly 

on how the funds would be funded and 

they failed enactment. 

Like the governor’s proposal, Assembly 

Bill 129 intended to gather the money 

through insurance premium tax credits 

to CAPCOs. For example, in exchange 

for investing $2 million in Wisconsin 

startups, local and out-of-state insurance 

companies would receive $2 million in tax 

cuts in Wisconsin. Insurance companies 

are ideal for this type of venture because 

they traditionally have large tax bills and 

know how to invest large amounts of 

money. This proposal did not require the 

state to spend current funds because it 

was giving tax credits away to investors. 

But, the state couldn’t guarantee that the 

money would be returned to it. Historically, 

CAPCOs have kept 80% of the money 

related to their investments and returned 

only 20% to the taxpayers. 

Senate Bill 94 favored selling bonds, 

which would essentially provide state 

grants and loans to selected angel and 

venture capital firms. The state would pay 

off the bonds when returns came in from 

the funds. This proposal could almost 

ensure that the money invested would 

stay in Wisconsin. However, when the 

state is running a budget deficit, borrowing 

money to encourage risky investments 

is disfavored. 

In the end, the Assembly did not want to 

appear to be seen as borrowing money to 

fund these funds, the Senate did not want 

to be seen as loaning money, and neither 

could agree on the best way to encourage 

venture capital investment in Wisconsin. 


What We Learned 

With the federal elections of Nov. 6, 2012 

over, we can expect new passing of a 

venture capital bill. The GOP now holds 

both state houses and any proposal it 

adopts should pass without resistance. 

What will be interesting to watch is not 

whether a bill passes, but what changes, 

if any, are made in the proposal. 

The critical issues the Legislature must 

address in any venture capital bill will be: 

• How should out-of-state funds 

be treated vis-à-vis domestic, 

Wisconsin funds 

• Who will qualify for tax credits, 

matching funds, or outright grants 

• How much revenue will the state 

spend (or give up in the form of 

tax credits) 

• How does the state track funds after 

they are allocated 

• Will the state guide what kind of 

companies the funds will be allowed 

to invest in 

Insiders indicate that the governor will 

propose a more modest proposal in terms 

of capital to be infused by the state, likely 

$150-200 million, with a focus on early- to 

mid-stage startups in diverse industries. 

Further, they will be looking to fund the 

proposal without using CAPCOs or issuing 

bonds, perhaps with matching-fund grants. 

Kegonsa Capital Partners (KCP), a 

Wisconsin venture capital management 

firm, suggests that a venture capital 

scheme that promotes startup creation 

by spreading venture capital across a 

wide range of industries, technologies, 

and locations in the state would be 

the most profitable. By diversifying its 

venture capital investments, KCP argues 

Wisconsin will experience high investor 

returns because it requires less investment 

overall and has the potential to create 

more companies and, thus, more jobs. 

Another strategy advocates investing in 

a narrow group of select companies in 

specific technologies. Rather than making 

several smaller investments in a variety 

of companies, this strategy focuses on 

investors making multiple and increasing 

investments in select companies. It 

involves more investment overall, but 

creates fewer companies in the process. 

All of Wisconsin’s great employers, from 

Harley-Davidson and Johnson Controls 

to RedPrairie and Epic Systems, started 

as new, domestic enterprises. The state 

has traditionally grown its own economy. 

Wisconsin has the entrepreneurial talent 

and smart leadership to boost growth. It 

just needs the right type of capital support 

to do so. n 

LITIGATION 35

IS IT AS EASY AS CLICKING 

“I ACCEPT” ENFORCING 

STANDARD TERMS IN 

ELECTRONIC SALES 

CONTRACTS USING “CLICK- 

WRAP” AGREEMENTS 

Written by 

Karen L. Tidwall and 

Pamela M. Schmidt 

Internet-related business transactions 

form a major part of the country’s 

economy. Standard contract provisions 

that limit remedies, exclude liability for 

certain damages, release and waive 

future claims, choose where litigation 

or arbitration will take place if the 

relationship doesn’t work out, and 

choose which state’s law will apply to 

the dispute are helpful tools that assist 

businesses to evaluate, plan for, and 

contractually limit their risk and efficiently 

address disputes that may arise. If a 

business sells products or services 

online, it needs to be aware of what is 

required to form an electronic agreement 

binding its customer to the company’s 

standard terms that it wants to govern 

the business relationship. 

The company must first ask whether its 

website is structured in a way to ensure 

that a customer has agreed to be bound 

by the company’s standard terms of sale 

or service. If the answer to that question is 

“yes,” the next question is whether each 

standard term in the electronic contract is 

separately and independently enforceable 

under applicable state law. 

“Click-Wrap” Agreements are Generally 

Enforceable and Easy to Adopt 

While the explosion of e-commerce has 

given rise to some novel issues for courts 

to consider, it has not fundamentally 

changed the principles of contract law. 

The essential elements of a contract 

are still an offer, an acceptance, and 

consideration. In most jurisdictions, an 

offer and acceptance exist when mutual 

expressions of assent are present. 

These basic paper contracting principles 

apply to contracts formed over the 

Internet with an added 21 st century 

twist. To establish mutual assent to the 

business’ standard terms, the company 

must affirmatively and reasonably 

communicate the terms to its customers. 

The easiest and most effective way to 

do this in e-commerce is by adopting a 

“click-wrap” agreement for the company 

website. A click-wrap agreement means 

that the website is structured to place 

the standard terms of sale or service 

directly up front, in a conspicuous place, 

and to require the customer to explicitly 

manifest its assent to those terms by 

clicking on a box that acknowledges 

“I Agree” or “I Accept” the standard 

terms. Research shows that Internet 

users do not usually bother to read click- 


wrap agreement contract terms. But a 

customer cannot get out of an electronic 

contract simply by arguing he or she 

did not read the terms or recall making 

the contract. Click-wrap agreements 

are generally enforceable because the 

necessary contract elements of offer 

and acceptance are satisfied by the 

customer’s required click. 

Best Practices for Click-Wrap 

Agreements 

Courts are more likely to enforce a 

click-wrap agreement if the company 

builds one or more of the following tools 

into its website: 

• The “I Agree” or “I Accept” click box is 

placed at the end of the terms so the 

customer must view or scroll through 

all of the terms of the agreement 

before being able to assent to them. 

Material terms and conditions are 

conspicuously displayed, using bold 

print or different color font. 

• The customer cannot actually 

buy the product or service without 

first assenting to the terms of 

the agreement. 

• Clear words of acceptance or rejection 

of the standard terms are used (e.g., “I 

Accept” or “I Do Not Accept”). 

• The business should be careful to 

create and retain a detailed written 

record of the development of the 

click-wrap part of the website; how 

the website works; the reasons 

for constructing certain pages and 

links to ensure the opportunity for 

users to view the relevant terms of 

the agreement; and the customer’s 

navigation train to show that the 

customer viewed and clicked on the 

“I Agree” or “I Accept” box. 

“Browse-Wrap” or Hybrid 

E-Contracts May be Unenforceable 

A business’ standard terms of sale or 

service should not be hidden, masked, 

or buried in layers of web pages, 

requiring the customer to hunt for them, 

or the company risks a court finding the 

electronic contract unenforceable. Based 

on the most current court decisions, the 

adoption of browse-wrap agreements are 

discouraged. Browse-wrap agreements 

either post standard contract terms on the 

company’s website, submerge them in a 

place accessible only by a hyperlink, or are 

accessible on the screen, but don’t require 

a customer to expressly manifest assent. 

If possible, the company also should avoid 

using hybrid click-wrap/browse-wrap 

agreements, which give notice of the 

standard contract terms by reference to 

a hyperlink to another page and require 

express manifest assent of acceptance, 

but may or may not be enforceable. 

Browse-wrap and hybrid agreements 

create an unnecessary risk of losing the 

business’ contractual protections in the 

event of a dispute, particularly when it is 

simple to adopt a click-wrap agreement 

structured for the business’ online 

commerce contracting needs. 

The Enforceability of Specific 

Standard Contract Terms in a 

Click-Wrap Agreement 

In the event of a dispute, issues may 

arise as to whether a specific contract 

term contained in a click-wrap agreement 

is enforceable under state law. Even 

if a valid e-contract has been formed, 

the company should consult with its 

attorney to look at each standard term 

independently under state law through 

the lens of emerging e-commerce legal 

principles, considering issues of notice, 

disclosure, language, conspicuousness, 

and concerns of public policy. n 

LITIGATION 37

REAL ESTATE/ 

ENVIRONMENTAL 


CATCH THE WAVE: 

WISCONSIN’S WATER 

RESOURCES CAN PROVIDE 

OPPORTUNITIES FOR 

BUSINESSES 

Written by 

Phillip R. Bower 

Water appears to be an abundant 

resource in Wisconsin. Two of the largest 

bodies of freshwater in the world, Lake 

Superior and Lake Michigan, border 

Wisconsin to the north and east, while 

the mighty Mississippi River fl ows along 

its west. Wisconsin’s interior is dotted 

and shaped by numerous inland lakes 

and rivers, and groundwater wells have 

provided reliable sources of water for 

communities, agriculture and industry for 

many years. 

Today, however, there are numerous 

competing uses for Wisconsin’s water 

resources, including drinking, agriculture, 

manufacturing, electric generation, 

transportation, recreation, and tourism. 

There are also many potential threats 

to water supply and quality such as 

increased demand, drought, fl ooding, 

invasive species, pollution, urban and 

agricultural runoff, and climate change. 

While these uses and threats may result in 

business challenges, they also can provide 

opportunities for businesses that plan for 

water impacts and work to safeguard this 

important resource. 

The Global Water Report 2012, 

authored by Deloitte for the Carbon 

Disclosure Project, surveyed 318 

Global 500 companies. More than 

half of the responding companies said 

they experienced negative impacts 

during the past fi ve years from waterrelated 

issues, including water scarcity, 

business interruption and property 

damage from fl ooding, rising costs to 

comply with discharge standards, and 

regulatory uncertainty and poor water 

quality. Compared to 2011, more of the 

responding companies view water as a 

substantial risk to their business and are 

aware of supply chain risks. 

These same challenges are present in 

Wisconsin. During the past fi ve years, 

Wisconsin has experienced signifi cant 

fl ooding that caused signifi cant property 

damage, closed major roads and drained 

Lake Delton dry after a county highway 

was washed out. During that same 

period, Wisconsin suffered from severe 

drought that strained water resources and 

Business Challenges 

REAL ESTATE / ENVIRONMENTAL 39

agriculture. Even during normal years, 

water quality in many inland lakes has 

suffered due to urban and agricultural 

stormwater runoff, causing the lakes 

to be closed for swimming and other 

recreational activities. 

In addition, regulation of water quality 

and quantity continues to increase and 

become more stringent as more demands 

are placed on water resources, and water 

quality standards are also becoming more 

stringent. Stormwater runoff requirements 

apply to almost all construction and postconstruction 

sites and may eventually 

incorporate numeric standards for 

turbidity. There is also an increased 

scrutiny of the impact of agricultural runoff 

on water quality in rivers and lakes. 

The U.S. Environmental Protection Agency 

(EPA) has also taken a renewed interest 

in its oversight of state operation of 

clean water programs. In 2011, the EPA 

identified 75 deficiencies in the Wisconsin 

Department of Natural Resources’ (DNR) 

clean water program and directed the 

DNR to remedy the issues or risk losing 

state authority for operating the program. 

The DNR responded and is working to 

address these issues. 

Wisconsin is also a party to the Great 

Lakes-St. Lawrence River Basin Water 

Resources Compact, which was signed 

by President George W. Bush in 2008. 

This international compact governs water 

use within the Great Lakes Basin and 

has influenced the DNR’s regulation of 

water use statewide. Costs for water may 

increase as communities must find new 

sources and undertake significant public 

works projects to pump and clean water. 

Business Opportunities 

Despite the concerns of companies in 

the Global Water Report 2012 noted 

previously, the same companies identified 

some positive opportunities stemming 

from water concerns. Seventy-one 

percent of the responding companies, 

an increase from the prior year, reported 

that water-related issues offer substantial 

opportunities for their businesses, 

including the sale of new products or 

services related to water issues. 


Many of these same opportunities may 

be present in Wisconsin for businesses 

that address water issues. The Water 

Council has been working for several 

years to strengthen the region’s status 

as a hub for water innovation, research 

and industry. In part due to the success 

of The Water Council, the region is now 

home to more than 130 water technology 

companies, more than 100 academic 

scientists and researchers focused on 

water solutions, the largest freshwater 

research institute on the Great Lakes, and 

academic programs focused on water at 

the University of Wisconsin–Milwaukee, 

Marquette University Law School and 

the University of Wisconsin–Whitewater. 

Milwaukee has been designated as a 

U.N. Global Compact City, recognized 

internationally as a center of freshwater 

expertise. The Water Council is poised to 

open a new water research and business 

accelerator center in Milwaukee’s Walker’s 

Point neighborhood in 2013 to attract 

and create new businesses in the water 

industry and to serve as a catalyst for the 

development of the Reed Street Yards 

water technology research park that is 

being developed by the City of Milwaukee. 

These programs and projects present an 

opportunity for Wisconsin businesses to 

collaborate and innovate new products to 

take advantage of water issues. 

Conclusion 

Water issues will continue to present 

challenges and opportunities to 

businesses. To help position your 

business in the best possible light, 

consider the following: 

• What impact could water issues have 

on your business, including water 

quality, water quantity or supply-chain 

risk from flooding or drought 

• Can your business introduce 

products or services that address 

water issues 

• Can your business take advantage 

of opportunities presented by its 

location, including those offered by 

the The Water Council n 


HUD CERTIFICATION FOR 

CONDOMINIUM ASSOCIATIONS: 

WHY UNIT OWNERS SHOULD CARE 

Written by 

Daniel J. Miske 

Those who own condominium association 

units should care each time the U.S. 

Department of Housing and Urban 

Development (HUD) adjusts its lending 

requirements. Since 2009 there have 

been a number of changes, each of 

which affects unit owners even if they 

are not in low-income housing. HUD 

certification, also known as Federal 

Housing Administration (FHA) approval, is 

now the standard for most banks when 

determining whether to issue lending 

to a buyer within an association. The 

law has nothing to do with the buyer’s 

creditworthiness, but rather whether the 

association meets the standard relative to 

various items including reserves, past due 

assessments and insurance requirements. 

If the association fails to meet the 

standard, it will not receive certification 

and buyers will not be able to obtain loans 

to purchase units at the association. The 

effect is obvious: the reduction in the 

units’ value. Common sense suggests 

that if one needs to find all cash or very 

well-heeled purchasers (a smaller pool of 

potential buyers), the sales price will be 

less. At the time of the financial meltdown 

in 2008, the FHA backed mortgages for 

approximately 5% of the condominium 

market. FHA-backed mortgages are now 

more than 50% of the market. Although 

the guidelines are written so that the FHA 

will not exceed 50% of the loans in any 

particular association, exceptions have 

been made. 

The FHA makes exceptions when it 

determines that it would otherwise be 

too difficult to find purchasers within a 

particular community. There is no rhyme 

or reason to this system. The most recent 

changes to HUD requirements occurred 

on Sept. 13, 2012. The changes reduced 

the requirements relating to the number 

of units that could be delinquent on an 

association’s assessment payments, and 

added requirements relating to employee 

dishonesty insurance and project 

certification approval. For the first time, 

the FHA will also consider HUD approval 

for mixed use condominiums that have 

commercial space of 25% to 35%. 

The long-term effect of the HUD 

certification process is that associations 

that do not do the work and spend the 

money (approximately $1,250) to obtain 

certification will find that the value of 

their units will continue to decline (or at 

least not increase at the same pace as 

certified association units) and that the 

time units spend on the market will be 

substantially longer. 

Key Considerations 

1. Not obtaining HUD certification for 

the association will cost unit owners 

money when they attempt to sell, and 

time as units will take longer to sell. 

2. Despite the approximate half dozen 

changes HUD has made to its 

program since the meltdown of 2008, 

more changes will follow. 

3. Banks will ultimately get back in the 

game of lending, even without HUD 

certification. This will most likely not 

be in 2013, and it is also extremely 

likely that those banks will not lend 

to associations that do not meet 

HUD certification guidelines, even if 

those associations have not received 

the approval. 

4. Based on points 1 through 3 above, 

every association should attempt to 

obtain HUD approval and develop a 

plan to become HUD compliant within 

the next couple years. n 



ABOUT THE 

AUTHORS 


Gabrielle Baumann Adams is an attorney in 

WHD’s Milwaukee office where she is a 

member of the firm’s Business & 

Commercial Litigation and Toxic Tort 

Litigation & Consultation teams. Prior to 

joining WHD, Ms. Adams was a law clerk 

for the Hon. Howard D. McKibben, U.S. 

District Court Judge for the District of 

Nevada. She also served as a prosecutor 

for the Milwaukee County District Attorney’s 

Office. Ms. Adams earned her B.A. from 

the University of Michigan, and her J.D. 

from the University of Wisconsin Law 

School. Ms. Adams may be reached at 

414-978-5420 or gadams@whdlaw.com. 

Ted J. Barthel is a shareholder in WHD’s 

Milwaukee office where he is a member of 

the firm’s Intellectual Property Counseling & 

Protection, Technology Law, Emerging & 

Entrepreneurial Companies, and 

Sustainability & Renewable Energy teams. 

Mr. Barthel is an intellectual property 

attorney who helps businesses protect and 

leverage their innovations for commercial 

advantage. He is registered to practice 

before the U.S. Patent and Trademark 

Office. Prior to joining the firm, Mr. Barthel 

practiced law in Chicago. In addition to his 

legal experience, he worked as a 

production and research chemist at Sigma- 

Aldrich Chemical Company. Mr. Barthel is a 

military veteran having served as a space 

operations officer in the U.S. Air Force 

where his duties involved satellite launch, 

command, and control. A highlight of his 

military career was serving as mission 

controller for the successful launch of 

Milstar Flight 2, a billion-dollar military 

communications satellite. Mr. Barthel also 

performed throughout the United States as 

a jazz saxophonist/soloist during his tenure 

as a member of the U.S. Air Force Band. 

Mr. Bartel studied at Universität Freiburg, 

Germany, and earned his B.A. in Chemistry, 

German, and Political Science, cum laude, 

from Carroll College, and his J.D. from 

DePaul University College of Law, where he 

served as Lead Articles Editor for the 

DePaul Journal of Art and Entertainment 

Law. He is a director of the Wisconsin 

Intellectual Property Law Association, a 

member of The Water Council, and a 

lecturer for the University of Wisconsin- 

Milwaukee’s MBA Program. Mr. Barthel 

may be reached at 414-978-5317 or 

tbarthel@whdlaw.com. 

Phillip R. Bower is a shareholder in WHD’s 

Madison office who counsels clients on 

environmental compliance and risk 

management associated with business 

operations and transactions, including air 

permitting, water permitting, hazardous 

waste and Emergency Planning and 

Community Right-to-Know Act issues, 

and the investigation and remediation of 

contaminated properties. Mr. Bower’s 

breadth of experience with environmental 

laws and engineering background, 

together with his relationships with 

technical consultants and state and 

federal regulators, allows him to effectively 

and efficiently assist clients in developing 

strategies to reach their environmental, 

natural resource, energy and sustainability 

objectives. He earned his B.S. in 

Geo-Environmental Engineering, with 

distinction, and his M.S. in Mineral 

Processing from The Pennsylvania State 

University, and his J.D. from Georgetown 

University Law Center, where he was 

Symposium Editor for the Georgetown 

Journal of Legal Ethics and recipient of the 

St. Thomas More Award for Legal Ethics. 

He is a frequent lecturer on environmental 

and renewable energy topics before 

environmental professional trade groups 

and attorneys, including the Federation of 

Environmental Technologists, and helped 

implement his firm’s internal sustainability 

committee that focuses on waste 

reduction, energy conservation and 

employee education. He is active with the 

American Bar Association’s Section of 

Environment, Energy, and Resources and 

serves as the Vice-Chair for Membership 

of the Section’s Air Quality Committee. 

Mr. Bower also serves as Vice President of 

the Board of Directors for Community 

GroundWorks, a Madison nonprofit that 

manages Troy Gardens and focuses on 

educating and connecting individuals to 

urban agricultural and natural lands. Mr. 

Bower may be reached at 608-258-7391 or 

pbower@whdlaw.com. 

Elisabeth Townsend Bridge is a shareholder in 

WHD’s Milwaukee office where her 

30-year practice includes copyright, unfair 

competition, advertising and licensing law 

and related litigation in addition to 

trademark and patent work. She earned 

her B.A. from Purdue University, and her 

J.D., cum laude, from the University of 

Nebraska College of Law, where she 

ABOUT THE AUTHORS 45

served as Editor of the Nebraska Law 

Review. She is registered to practice 

before the U.S. Patent and Trademark 

Office. Ms. Bridge is Chair and Board 

Member of the State Bar of Wisconsin’s 

Intellectual Property Law Section; Chair 

and Board Member of the State Bar of 

Wisconsin’s International Practice Law 

Section; and member of the International 

Trademark Association’s North American 

Anti-Counterfeiting Subcommittee, and 

the American Bar Association’s Task 

Force on P.R. China Trademark Law 

Amendments-Bad Faith Group. She is also 

a Board Member of World Trade Center 

Wisconsin. Ms. Bridge may be reached at 

414-978-5532 or ebridge@whdlaw.com. 

Daniel B. Geraghty is an attorney in WHD’s 

Milwaukee office where he leads the firm’s 

Federal Tax Controversy & Litigation Team 

and focuses his practice on complex 

federal, international and state tax issues 

in both planning and controversy matters. 

Mr. Geraghty has represented numerous 

individuals, partnerships and corporations 

in a wide variety of matters in tax audits, 

administrative appeals and litigation. 

In addition to controversy matters, he 

focuses on complex business transactions 

including purchases, sales, mergers, 

divestitures and restructurings. As part 

of his focus on international tax matters, 

Mr. Geraghty has assisted numerous 

clients in structuring offshore activities 

whether through expansion or acquisition 

of existing businesses. He has also 

assisted foreign businesses in structuring 

their U.S. activities. Mr. Geraghty is also a 

Certified Public Accountant (CPA), having 

achieved a top score on the national CPA 

examination. Prior to practicing law, he 

worked as a CPA at a predecessor to one 

of the Big Four accounting firms. Mr. 

Geraghty earned his B.B.A., summa cum 

laude, from the University of Wisconsin– 

Whitewater, and his J.D., cum laude, from 

the University of Wisconsin Law School, 

where he was elected Order of the Coif. 

Mr. Geraghty may be reached at 414-978- 

5518 or dgeraghty@whdlaw.com. 

Frank A. Gumina is a shareholder in WHD’s 

Milwaukee office where he counsels and 

guides companies through a vast array of 

legal issues. For more than 20 years he has 

worked with clients to develop effective and 

efficient strategies to meet business 

objectives. While Mr. Gumina has 

experience in many areas of the law 

affecting businesses, his primary focus has 

been representing management in all facets 

of labor and employment law matters. He 

has extensive experience counseling 

employers in myriad industries including 

manufacturing, health care, technology, 

construction, hospitality and transportation. 

Mr. Gumina has successfully litigated 

numerous employment-related cases in 

state and federal courts throughout the 

country including co-chairing the defense 

of the first Americans With Disabilities Act 

(ADA) jury trial in the nation. Focusing his 

practice on employment discrimination 

matters, tort and contract claims arising 

from the employment relationship, unfair 

competition claims (including non-compete 

agreements), all facets of union issues 

facing employers, and benefit claims, Mr. 

Gumina regularly handles matters before 

the courts, Equal Employment Opportunity 

Commission, various state agencies, the 

National Labor Relations Board and the 

U.S. Department of Labor. In addition, he 

provides counsel to employers on a host of 

human resources issues, including 

discipline, discharge, best practices, EEO 

compliance, managing the electronic 

workplace, collective bargaining, wage and 

hour regulations, ADA, FMLA, worker’s 

compensation, OSHA and reductions in 

force. Mr. Gumina has been a guest labor 

and employment law presenter at 

Marquette University’s Law School and 

School of Business and presents tailored 

in-house programs to managers and 

supervisors of small and large companies 

alike. Mr. Gumina earned his undergraduate 

degree from the University of Wisconsin– 

Milwaukee, and his J.D., cum laude, from 

Marquette University Law School. Mr. 

Gumina may be reached at 414-978-5387 

or fgumina@whdlaw.com. 

Maryeve Heath is a shareholder in WHD’s 

Milwaukee office where she leads the firm’s 

Worker’s Compensation Team. She 

concentrates her practice in the areas of 

worker’s compensation, labor and 

employment law, and litigation. For more 

than 30 years, she has worked with 

employers to achieve their business goals 

through the creative utilization of human 

resources and the aggressive defense of 

claims involving worker’s compensation, 

wrongful termination, workplace 


discrimination, employee dishonesty, and 

related issues. Ms. Heath is recognized as 

a tenacious advocate for her clients and as 

an expert in analyzing, negotiation, and 

resolving disputes. She has rendered case 

assessment reports, reserve analyses and 

directives regarding defense strategies on 

litigated worker’s compensation and 

employment cases. She earned her B.A. 

from Marquette University, and her J.D. 

from Marquette University Law School. She 

also is certified by the Insurance Institute of 

America. Ms. Heath may be reached at 

414-978-5342 or mheath@whdlaw.com. 

Edward J. Heiser is a shareholder in WHD’s 

Milwaukee office where he is a member of 

the firm’s Consumer Financial Services 

Team. For more than 30 years, he has 

been recognized as one of the leading 

consumer finance lawyers in Wisconsin 

and throughout the United States. His 

early experience as one of the drafters of 

the Wisconsin Consumer Act, Wisconsin’s 

comprehensive consumer credit code, 

coupled with his leadership in building 

forms and operational manuals for some 

of Wisconsin’s largest consumer finance 

companies, has given him the unique 

ability to blend legal principles with 

operational and marketplace understanding. 

Mr. Heiser’s insights and familiarity with 

consumer finance law have enabled him 

to guide clients who provide consumer 

credit through the legal and administrative 

intricacies of Wisconsin laws and 

regulations. He has been called upon by 

state and national organizations to 

represent consumer creditor interests not 

only in Wisconsin, but throughout the 

country. He represented the American 

Financial Services Association as an 

official observer to the National 

Conference of Commissioners on Uniform 

State Law during the five year revision to 

Article 9 to the Uniform Commercial Code, 

and chaired the consumer creditors’ group 

reviewing consumer provisions. Mr. Heiser 

earned his A.B. from the University of 

Michigan, and his J.D., cum laude, from 

the University of Michigan Law School. He 

is Chairman of the Governing Committee 

of the Conference on Consumer Finance 

Law; Fellow of the American College of 

Consumer Financial Services Lawyers; 

Secretary of the Conference of Consumer 

Finance Law and President of its 

Governing Committee; member of the 

Board of Directors of National Institute on 

Consumer Credit Management; and a 

member of the American Financial 

Services Association Law Committee. 

Mr. Heiser may be reached at 414-978-5503 

or eheiser@whdlaw.com. 

Mary Beth Hughes is an attorney in WHD’s 

Milwaukee office where she works with 

businesses to aggressively defend 

worker’s compensation claims. Her 

worker’s compensation experience 

includes representing insurance carriers 

and employers on both large and small 

claims, including performing case 

assessments, trying cases to an 

administrative law judge and preparing 

briefs for review before the Labor and 

Industry Review Commission, Circuit 

Court, Court of Appeals and Supreme 

Court. She has represented entities paying 

worker’s compensation benefits in thirdparty 

circuit court matters, including 

preparing pleadings, making court 

appearances and participating in 

mediations. She earned her B.A., cum 

laude, from the University of Notre Dame, 

and her J.D. from the University of 

Wisconsin Law School. Ms. Hughes 


mhughes@whdlaw.com. 

Tiffany L. Hutchens is an attorney in WHD’s 

Madison office where she is a member of 

the firm’s Labor & Employment Team. Ms. 

Hutchens represents business clients in all 

aspects of complex employment and 

immigration law matters, including wrongful 

discharge claims, discrimination and 

harassment avoidance, collective 

bargaining agreements, wage and hour 

issues, the preparation and review of 

employee handbooks and contracts, 

employment-based immigrant and 

nonimmigrant visa applications, I-9 

compliance, and advising clients in 

permanent residency matters and 

applications for U.S. citizenship. 

Ms. Hutchens’ attention to employmentand 

immigration-related issues in the 

context of her clients’ entire business leads 

to innovative, practical and cost-effective 

solutions. Prior to joining the firm, 

Ms. Hutchens served as a Judicial Law 

Clerk to the Hon. Jeffrey A. Conen in the 

Civil Division of the Milwaukee County 

Circuit Court. Ms. Hutchens also worked at 

a global corporate law firm dealing with 


employment-based immigration issues 

where she supervised a team that focused 

on employment-based green card filings for 

key employees. Ms. Hutches studied at the 

University of Sydney and earned her B.A., 

magna cum laude, from Lafayette College, 

and her J.D., cum laude, from New 

England School of Law, where she was 

Comment and Note Editor for the New 

England Law Review. Ms. Hutchens may 

be reached at 608-234-6078 or 

thutchens@whdlaw.com. 

Erin M. Keesecker is an attorney in WHD’s 

Madison office where she is a member of 

the firm’s Business & Commercial Litigation 

Team. She provides advice, analysis and 

support to individuals, business, and 

government entities who are facing the 

prospect of litigation. She has helped 

resolve contractual disputes, breach of 

warranty claims, products and premises 

liability issues, personal injury claims, 

landlord/tenant disputes, labor and 

employment class actions, and § 1943 

constitutional violations in both state and 

federal court. Ms. Keesecker is also a 

member fo the firm’s Health Care Law 

Team, where she assists health care 

facilities with HIPAA and HITECH 

compliance and defends health care 

providers against investigations by 

regulatory agencies, such as the Wisconsin 

Department of Safety and Professional 

Services. Ms. Keesecker earned her 

B.M., with high distinction, from the 

University of Rochester’s Eastman School 

of Music, and her J.D., magna cum laude, 

from the University of Wisconsin Law 

School, where she served as Managing 

Editor of the Wisconsin Law Review. She 


ekeesecker@whdlaw.com. 

Daniel J. Miske is a shareholder practicing out 

of WHD’s Madison and Milwaukee offices 

where he leads the firm’s Condominium & 

HOA Law Team. He concentrates his 

practice in the areas of Wisconsin 

condominium, homeowner association, real 

estate and business law. Within these 

practice areas he handles document 

amendments, collections, contracts, rules, 

governance, and almost any other issue that 

would arise within this area of law. Mr. Miske 

earned his B.S. from Marquette University, 

and his J.D. from DePaul University School 

of Law. He is a Board Member of 

Community Association Institute, and a 

member of the Milwaukee Bar Association’s 

Bench Bar Committee. Mr. Miske is the only 

Wisconsin condominium lawyer admitted 

into the College of Community Association 

Lawyers. He authored the collection action 

chapter in West’s Wisconsin Practice: 

Methods of Practice Series. Mr. Miske 


dmiske@whdlaw.com. 

Thomas J. Pienkos is a shareholder in 

WHD’s Milwaukee office where he is a 

member of the firm’s Intellectual Property 

Practice Group. He has counseled a range 

of clients on the strategic protection, 

licensing and enforcement of intellectual 

property rights. Mr. Pienkos has also 

prepared and prosecuted many U.S. and 

international patent applications and 

secured patent rights for clients in a wide 

array of technologies, including printing, 

manufacturing and computer-related 

technologies. He has supervised and 

conducted intellectual property due 

diligence efforts in relation to a variety of 

corporate transactions, and has drafted 

and negotiated patent license, nondisclosure 

and joint development 

agreements. Mr. Pienkos earned his 

B.S.M.E., cum laude, from the University 

of Notre Dame, and his J.D. from the 

University of Wisconsin Law School. He is 

registered to practice before the U.S. 

Patent and Trademark Office. Mr. Pienkos 


tpienkos@whdlaw.com. 

Sverre David Roang is a shareholder in 

WHD’s Madison office, the leader of WHD’s 

Corporate Transaction Team and a member 

of the WHD Board of Directors. In addition 

to his work as a deal attorney, Mr. Roang is 

passionate about working with family 

businesses. He has an extensive 

background in helping family and closely 

held businesses navigate the complex 

business, tax, ownership and family issues 

inherent in planning for future generations. 

His approach to business planning enables 

families to build true, lasting wealth that can 

grow and benefit generations to come. His 

deep interest in this field has led to him 

becoming the only professional in 

Wisconsin to receive the Family Firm 

Institute’s Certificate in Family Wealth 

Advising, which helps provide Mr. Roang 

with the framework to tackle the complex 


and dynamic issues involved. Clients who 

work with him know that he will help them 

find the best solutions to meet their unique 

family and business goals. He earned his 

B.A., with honors, from Northwestern 

University, and his J.D., cum laude, from 

the University of Wisconsin Law School. Mr. 

Roang may be reached at 608-234-6079 

or sroang@whdlaw.com. 

Pamela M. Schmidt is an attorney in WHD’s 

Milwaukee office where she concentrates 

her practice in the areas of appellate 

advocacy, personal injury defense work 

(particularly relating to product liability as 

well as the transportation, recreation and 

entertainment industries) and intellectual 

property litigation. She has handled more 

than two dozen appeals, including filing 

appellate briefs, motions, and petitions to 

the U.S. Court of Appeals for the Federal 

and Seventh Circuits, Wisconsin Supreme 

Court and Wisconsin Court of Appeals. 

The cases Ms. Schmidt has handled have 

involved a wide range of issues including 

election disputes, denial of disability claims 

under ERISA, breaches of contract, and 

personal injury. She earned her B.A., with 

distinction, from the University of 

Wisconsin, and her J.D. from Harvard Law 

School. Ms. Schmidt may be reached at 

414-978-5439 or pschmidt@whdlaw.com. 

Thomas J. Springer is a shareholder in WHD’s 

Madison office where he is co-chair of the 

firm’s Government Affairs Team. His primary 

focus is on state and federal legislative 

processes. Mr. Springer has successfully 

represented state and national firms, 

industry trade organizations, tribal 

governments, and professional associations 

before the state legislature and executive 

branch as well as the U.S. Congress. His 

experience includes representing clients 

from industries including health care, 

telecommunications, securities, insurance, 

financial services, building construction, 

electric utilities, and pharmaceuticals. A 

former state representative who served in 

the Wisconsin State Assembly for four 

terms, Mr. Springer has also assisted clients 

in securing multimillion-dollar contracts for 

building construction and management 

services. He earned his B.S. from the 

University of Wisconsin, and his J.D. from 

the University of Wisconsin Law School. Mr. 

Springer may be reached at 608-258-7130 

or tspringer@whdlaw.com. 

Karen L. Tidwall is a shareholder in WHD’s 

Milwaukee office where she is a member of 

the firm’s Litigation Practice Group and 

co-chair of the Trust, Estate & Fiduciary 

Litigation Team. Ms. Tidwall represents 

clients in a variety of business and 

commercial matters including contract and 

warranty disputes, business tort, contested 

trust and estate litigation, and fiduciary 

litigation representing individual and 

corporate fiduciaries or beneficiaries. 

Ms. Tidwall earned her B.A. from the 

University of Nebraska–Omaha, and her 

J.D., cum laude, from Creighton University 

School of Law, where she was a member 

and Assistant Editor of the Creighton 

University Law Review. She is a member of 

the Eastern District of Wisconsin Bar 

Association’s Civil Committee; a member of 

the Milwaukee Bar Association’s Judicial 

Selection Committee; and serves on the 

Board of Directors of the Wisconsin Equal 

Justice Fund. Ms. Tidwall may be reached 

at 414-978-5411 or ktidwall@whdlaw.com. 

Marci VanAdestine is an attorney in WHD’s 

Milwaukee office where she is a member 

of the firm’s Consumer Financial Services 

Team. As a member of this team, Ms. 

VanAdestine counsels and represents 

national and local providers of consumer 

credit in both regulatory and litigation 

matters. She has experience with the 

Wisconsin Consumer Act, Article 3 of the 

UCC (Negotiable Instruments), and federal 

consumer protection laws including the 

Truth in Lending Act (TILA) and Regulation 

Z, the Fair Credit Reporting Act (FCRA), 

and the Dodd-Frank Act. Ms. VanAdestine 

regularly represents mortgage servicers 

and has experience with federal loan 

programs such as the Home Affordable 

Modification Program (HAMP). Her litigation 

experience includes all facets of pre-trial 

practice, including discovery, dispositive 

motion practice, mediation, and negotiating 

settlement agreements. While in law 

school, Ms. VanAdestine served as an 

intern to Justice Annette Kingsland Ziegler 

of the Wisconsin Supreme Court, to the 

Governor’s Office of Legal Counsel, and 

to the Wisconsin Department of Justice. 

She was also a member of a semi-finalist 

national mock trial team. Prior to attending 

law school, Ms. VanAdestine worked on 

several statewide campaigns, including the 

campaigns of Wisconsin Supreme Court 

candidates. She also served as an aide to a 


U.S. Congressman, in which she researched 

legislation and education policy. Additionally, 

Ms. VanAdestine was an original member 

of a successful startup political consulting, 

public relations, and grassroots campaigning 

fi rm. Some of her projects included 

working with national clients to develop and 

implement grassroots and public relations 

campaigns. She earned her B.A. in Political 

Science and Communication Arts, with 

distinction, from the University of Wisconsin, 

and her J.D., cum laude, from the University 

of Wisconsin Law School, where she was 

elected to Order of the Coif. She is an active 

member of the American Bar Association’s 

Consumer Financial Services Committee 

and Young Lawyer Liaison to Truth in 

Lending Subcommittee. Ms. VanAdestine 


mvanadestine@whdlaw.com. n 


MILWAUKEE OFFICE 

555 East Wells Street 

Suite 1900 

Milwaukee, WI 53202-3819 

414.273.2100 

MADISON OFFICE 

33 East Main Street 

Suite 300 

P.O. Box 1379 

Madison, WI 53701-1379 

608.255.4440 

CHICAGO OFFICE 

161 North Clark Street 

Suite 4700 

Chicago, IL 60601-3206 

312.523.2080 

www.whdlaw.com 

© 2013 Whyte Hirschboeck Dudek S.C. All rights reserved.

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