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In this episode of the R&G Tech Studio, IP
transactions and technology associate Josh Jackson sits down with
technology, media & telecommunications co-lead Ed Black to
discuss his practice and how he provides legal tech support to
companies and organizations to help solve their business
Ed Black: Hi, this is Ed Black, and we are here
for the latest edition of the R&G Tech Studio podcast.
For this edition, I’m very pleased to be able to say that my
friend and colleague, Josh Jackson, is here with us. Josh is a
superstar in the area of business and commercial collaborations
involving technology issues. Josh, it’s very good to have you
on the podcast. Now, before we get to some of the specific
questions, Josh, tell us about yourself. Where are you based?
What’s life like for you?
Josh Jackson: I am based in the Boston office.
I do make it to many of the other offices around the country, but
I’m based in Boston. I recently moved to the suburbs, so
I’m navigating commuting now, which is fun. But I also have a
wife who works at Ropes & Gray, and so we are a very
Ed Black: Wow. And so at night, do you talk
Josh Jackson: No, we try to avoid that.
Ed Black: Try to avoid it—leave it at the
office. I know you have a young son. I take it he’s on track to
also be a lawyer?
Josh Jackson: We’re keeping his options
open. We’re trying to allow him to choose.
Ed Black: Okay, good. So, Josh, I know your
practice focuses on helping companies and organizations who are
using tech to solve their business problems. You help them put the
deals in place—the acquisitions, the collaborations, the
service agreements, etc.—that solve those problems for them.
But maybe can you elaborate on that a little bit and just tell us
how that works? Maybe give us a few examples.
Josh Jackson: Sure. You said it exactly right,
Ed—mainly solving business problems through strategic
technology transactions, helping business people, managers, other
attorneys who need help navigating those complex issues.
Ed Black: Are there any specific industries
that you focus on?
Josh Jackson: Yes, the asset management
industries, fintech, health care industries, the pure tech
companies—my practice spans the range of multiple industries
where tech help is really needed, from a legal perspective.
Ed Black: In the asset management space, can
you give us an example of a client and a situation, a set of
problems, that you solved?
Josh Jackson: Absolutely. I think, one, we have
a large global asset manager that decided to enter into a complex
collaboration with a major tech services provider providing back
office services; two 800-pound gorillas in the space, and as you
might imagine, very intense and complicated negotiations. And one
of the things that I do is help facilitate those negotiations and
get the parties to a space where they can both agree and solve
business problems. For example, one hang-up that these two
800-pound gorillas had was over the liability cap, and so I helped
them develop a liability framework that allocated the risks of both
parties based on their business needs. I can’t give you the
specifics of those, but that’s a particular space where I used
my expertise based on prior deals, and based on understanding the
industry and the business needs of our clients and the
counterparty, to help them get to a spot where they could
Ed Black: Are there other industries you work
in? I know, for example, you’ve done some work in digital
health. I know you’ve worked in the crypto space. Are there
other examples of problem-solving in those areas?
Josh Jackson: Yes. We have a client who makes
tech products for the health care space (digital health), and one
thing they like to do, they like to acquire a lot of their
technology and product lines through M&A. They’ve done a
couple deals recently that I’ve helped out with, with companies
that are spinouts from universities. The founders of these spinout
companies, they often wear two hats. They wear their spinout
company hat, and they also wear their university professor employee
hat. And so, one of the unique challenges that I help this client
and other clients with is making sure we drill down on the issues
related to who owns the IP, the tech, in the spinout, and make sure
that the proper rights are in place between the founders and the
company where the tech is being acquired, and also making sure we
coordinate with the university itself to make sure there’s no
claims on the IP, make sure the paperwork’s in place, the right
licenses, asking the correct questions about in-licenses of IP and
out-licenses and making sure that the acquisition is clean.
Ed Black: In that kind of deal, it sounds like
the main parties to the deal are the client, the tech company with
the broad mix of products, the target, the innovative start-up
that’s got the great new product that the big co. wants to add
to its product line—but then, is the university at the table
as well for those deals? Do those end up being three-way
Josh Jackson: Oftentimes they are. A lot of
times, the university retains rights in the technology or the
products through the form of grant-back rights from the founders of
the start-up back to the university. So, we’ll have a three-way
negotiation going on to make sure that the university and the
start-up are both on the same page, and then also that our client
is getting the rights that they expect from both the start-up and
Ed Black: Just a quick question, because I
think of three-way negotiation and I think of something that could
just go sideways for 100 different reasons and could cost a giant
pile of money to get done. And yet, I know that our clients, one of
the keys for them (specifically around something like adding a
technology to their product mix), is to get it done on time, on
budget. How do you bring it home on time, on budget in these
Josh Jackson: Absolutely—that’s a
great question. And I think that’s part of the
value-add—I’m able to organize and run the process in a
way that makes it efficient. I’ve done this a number of times
now, and I understand generally how universities and university
tech transfer offices work, and it’s very different than the
commercial industry. That’s part of the art—part of the
value-add is managing the process to keep in contact with them and
keep the process efficient to keep costs down for our client.
Ed Black: Now, I know you’ve done a bunch
of work in the crypto space. My first question for you is just a
simple one and not a legal question at all: Is crypto dead? For so
many years, it seemed like it was a gold rush environment, and now,
it seems like it’s a gold bust environment. Do people still
care about crypto?
Josh Jackson: I think crypto is not dead. I
think it has slowed down a bit, in line with the rest of the
economy. But I think there’s a lot of utility behind crypto and
blockchain, and Web3, in particular, that will keep it alive and
well in the future, and keep it around.
Ed Black: You talk about that notion of
utility, and in particular, blockchain, Web3, etc. And just from a
business perspective, there are so many things where there’s a
traditional way of selling them involving normal paper, humans, and
cash, where you hear that exact same thing is now being sold in
some tokenized format, meaning it’s attached to a blockchain,
and suddenly, you see cash jumping into that market—you see a
pile of liquidity that somehow wasn’t there before. Now, I have
to say, looking at that, there’s a part of me that thinks,
“That’s just a fad. That’s just people latching onto
something that sounds new.” But is there really, in fact,
broader value in utility in attaching interest and assets to the
blockchain and tokenizing?
Josh Jackson: Absolutely—and I think
there are two considerations. You mentioned one, the fad, and then
the second is the utility. I think the fad portion of it is very
real. I think a lot of investment dollars, particularly over the
last year, are related to more of the marketing aspect or getting
on board when something’s hot, just a little bit for the fad
purposes. However, I think the second part is the more important
part that you mentioned, and that’s the utility. And blockchain
and Web3 have a lot of utility over and above just the marketing
fad in this situation. Tracking ownership is a big thing,
particularly for assets that have been historically hard to track
ownership—I think the blockchain provides a good way to do
that. I think a lot of things still need to be worked out and
things are in development, but there’s a lot of really smart
people working on these problems.
Ed Black: Does it accomplish anything else? Or
is it just a very convenient title record, so in a much more public
way, you can know who the owner is?
Josh Jackson: Yes, title record—also the
decentralized nature of it. Technology gives the ability for many
people who don’t have access to an asset to now have access to
that asset. That’s another big part of the utility of
Ed Black: So, it adds a lot of liquidity when
it’s operating correctly. Now, the last thing when I think
about crypto stuff is one of the things (just reading in the paper,
especially since the bottom fell out and everybody’s suing
everybody), is these instances where people are managing the risk
associated with owning digital assets—owning crypto and
digital assets. You’ve got to keep them somewhere. You’ve
got to keep them safe. And I know that that’s been a big
business problem, especially for some of our more institutional
clients. How do you own the cutting-edge asset in a world where you
don’t have all the established players and systems for
security, custody, and so forth? Have you seen that? And if so,
have you seen that in this context, where you’ve had to help
clients deal with that issue, and how does that work?
Josh Jackson: Yes, I have seen that a lot. And
custody is something that I’ve been getting a lot of experience
in in the last one or two years as it becomes much more important
to our clients—custody of digital assets, both asset managers
and funds, and also global media companies. Any of our clients who
are starting to use cryptocurrency or other digital assets like
NFTs, they’re all coming to me and saying, “Where should
we keep these? What’s the best technology used?”
Ed Black: What do you tell them? How do you
keep track? It’s such a changing world. What’s the answer
to that question?
Josh Jackson: It is, yes. So, I’ve worked a
lot now with many different digital asset custody providers, both
talking to them, getting information, and also helping clients
negotiate custody agreements. And so, I’ve been keeping an
up-to-date, cutting-edge chart that compares different offerings by
different custody providers, both on the level of technology (what
technology do they use to protect digital assets), and also risk
provisions, indemnity provisions, and security. I have a full chart
of these comparing different service providers, and when a client
comes to me and tells me the issue they’re having or explains
the business proposition for using crypto or using NFTs, I’m
able to tell them in detail what different service providers will
do for them, where difficult areas to negotiate are, or where to
ask for something that they wouldn’t normally give.
Ed Black: And if they make a choice, can you
help them get the deal done?
Josh Jackson: Absolutely. I now have contacts
at many of the digital asset custody providers and can connect
them. And for a lot of clients, we’ve gotten on the fast track
to getting these custody agreements done. Just based on past
negotiations, I’m able to build off those for other clients so
I know, first, who to talk to at the custody providers and, second,
what are the soft points or areas that these providers are willing
to negotiate on and areas that they’re not able to negotiate
on. And it’s really made it an efficient process for a lot of
our clients who need these custody agreements in place.
Ed Black: Josh, now, it’s been a pleasure
talking, especially about all the law stuff. But before we go, I
have a couple questions. I’m going to admit, they’re silly
questions, but I call it the personality test portion of the
podcast. We get to see who you really are here. So, let me ask you
a few questions, lightning round—quick question, quick
answer. Maybe we’ll talk about some of them, but quick
question, quick answer. Are you ready?
Josh Jackson: I’m ready.
Ed Black: Favorite sports team?
Josh Jackson: Favorite sports team is
University of Michigan football team. That’s one of the things
I miss living in the East—college sports and the passion of
college sports from the Midwest.
Ed Black: I take it that’s because you went
to University of Michigan. Is that correct?
Josh Jackson: I did, yes—undergrad and
grad school, so I’m a very diehard fan.
Ed Black: Wow. Double down. Season
tickets—you went to every game the whole time?
Josh Jackson: While I was there, yes. I go back
to about one game per year now.
Ed Black: Do they have a fight song?
Josh Jackson: Yes, “Hail to the
Victors”—it’s probably one of the most famous fight
songs there is in college football.
Ed Black: When we have extra time on your next
podcast I’m going to make you sing it. In any event, favorite
Josh Jackson: Favorite book is Goodnight
Moon, which a lot of people will probably know is a
children’s book. These days, with young kids, I only have time
to read children’s books, so my favorite book is currently
Goodnight Moon, and my son loves that one, and I love
reading it to him every night.
Ed Black: That’s superb. Key question: In a
peanut butter and jelly sandwich, what is more important, the
peanut butter or the jelly, and why?
Josh Jackson: That is a good question.
Fortunately, I have an expert, I think, at home on this question,
who’s my two-year-old son. And if I were to ask him, I think he
would say that both are important to the sandwich. I think
they’re like the yin and the yang of the sandwich, and one
can’t reach its full potential without the other.
Ed Black: I see. So, he’s a Buckminster
Fuller fan. It’s all about synergy—it’s all about one
plus one equaling four, and you only get there when peanut butter
and jelly come together. Josh, it’s been pleasure talking to
you. To our audience, it’s been a pleasure having you for yet
another R&G Tech Studio podcast. Please remember that
this podcast is available on the R&G Tech Studio
webpage on the ropesgray.com website and also available everywhere
else you get your podcasts. Thank you for joining us.
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