‘Tis the season for bargain hunting, which means that Lou Agnese is in high gear, advising sales and management teams at his company on marketing and trademark issues and promotional campaigns with merchants.
“The holiday season is a busy period for the legal team, as it is for our company as a whole,” says Agnese, general counsel and corporate secretary for WhaleShark Media Inc.
The Austin-based, privately held company owns and operates a collection of online sites where consumers can find coupons and deals from retailers around the world, including the United States, United Kingdom, Germany and France.
WhaleShark receives commissions from the merchants who offer coupons on the sites it owns, such as RetailMeNot.com.
Agnese says he spends most of his time on privacy issues, intellectual property protection, acquisitions and working with the company’s marketing team. Privacy issues include making sure that WhaleShark meets the United Kingdom’s and France’s stringent regulations regarding how companies collect, store and use consumer data, he says. Typical IP matters are filing trademarks and protecting the company’s brand, he says.
The company had only about 75 employees when Agnese became its first in-house lawyer in October 2011. Just 14 months later, the company has 300 employees worldwide, Agnese has added two lawyers to his legal department, and he plans to hire another in-house lawyer during the next six months.
He says the company has garnered about $300 million from venture capitalists and forecasts that 2012 revenue will exceed $125 million. Although Agnese had been a corporate lawyer in a firm for eight years before joining WhaleShark, he says he had never been part of the fundraising presentation team.
“Most of my experience was involved in the legal side; I didn’t get to be part of the actual pitching, in talking to investors,” he says.
Investors ask a lot of questions about competition, risks and trademark protection. “You don’t have much of a voice left when you’re done talking to those guys,” he says.
Agnese grew up in San Antonio and earned a bachelor’s degree in business at the University of the Incarnate Word in San Antonio, where his father was president of the university. He became interested in law school after spending time with a friend of his father’s, David Cibrian, then a corporate partner with the San Antonio office of the now-defunct Jenkens & Gilchrist.
“The idea of being in a courtroom, like “Law and Order” or “L.A. Law,” was never attractive to me,” Agnese says. “I really was more interested in the business side of the law than anything else.”
Agnese says he learned from Cibrian that it was easier to gain exposure to key players in a company early in a career if you are a lawyer working on mergers and acquisitions.
“I was one of the few people who went to law school truly wanting to be a corporate lawyer,” he says.
Agnese earned his law degree at the University of Texas School of Law in Austin in 2003. He started his legal career as a corporate associate with Akin Gump Strauss Hauer & Feld in San Antonio, where he had been a 2001 and 2002 summer associate.
Agnese was with Akin Gump for about two years before making a lateral move to DLA Piper in Austin after receiving a call from a legal recruiter. He was working at DLA Piper as outside counsel to WhaleShark when the company decided it needed to have an in-house legal department.
“I always wanted to have more international focus in what I did,” Agnese says. “WhaleShark was thinking of going international, and that, for me, was a huge part of what I wanted to do. . . . I decided this was the right move for me. Literally, I walked across the street.”
Cibrian is now president of San Antonio-based MotorWise Inc. and says that he and Agnese have stayed in touch. “He is well-suited to being part of a management business team; he’s a bright business thinker,” Cibrian says. “He’s always had a sensitivity for understanding what I refer to as the economic pressure points of the deal.”
Earlier this year, Agnese helped negotiate WhaleShark’s acquisition of Miwim, a Vannes, France-based publisher of online coupons and cash-back deals in that country. The acquisition added 20 employees to WhaleShark and gave its customers access to coupon providers in Western Europe, Agnese says. He says the deal took about 4.5 months to complete, and he used DLA Piper as outside counsel.
Sam Zabaneh, a corporate and securities partner in DLA Piper’s Austin office, helped review the agreement drafts for the Miwim deal. Zabaneh had worked with Agnese on matters for WhaleShark and other clients when Agnese was with the firm, Zabaneh says. He says Agnese is good fit for the fast-growing WhaleShark.
“He’s a good lawyer . . . with good knowledge of corporate, securities, mergers and acquisitions, which is important especially for a company that is growing,” Zabaneh says. “Also in a job like that, it is important to be willing to grow as a lawyer and learn new things every day about international tax, employment, and privacy issues.”
Andrew J. Gajkowski, a technology associate with Bracewell & Giuliani in Austin and an outside counsel to WhaleShark, says that Agnese’s strengths as a general counsel include his business sense and ability to find practical solutions to legal issues.
“He asks all the right questions,” Gajkowski says. “I think he just understands how to get to the core of issues, which is important when you are in novel areas of law, dealing with lots of issues in rapidly changing areas of internet commerce, and data privacy and IP. He’s able to navigate those really well.”
How does Agnese rate his job with a company that has more than tripled in size in just 14 months?
“I love it,” Agnese says. “Unlike some lawyers who go in-house, I really enjoyed my old practice. This was probably the only client that could have called me [in-house]. I’m very happy with the move and having a great time.”
Best Practices: Ethics and Issue Spotting
Lou Agnese had eight years of big firm corporate experience before going in-house with WhaleShark Media Inc. Agnese now is general counsel and corporate secretary at the privately held company in Austin.
Texas Lawyer research editor Jeanne Graham emailed Agnese some questions about best practices. His answers are below, edited for length and style.
Texas Lawyer: What skills from your previous work experience are most helpful in your work today, and why?
Lou Agnese: One skill that you develop as outside counsel is to know how to remain calm and deal with the unexpected. I never knew when a client was going to call and what kind of issue was confronting that client when they did. As general counsel, I am confronted daily with unexpected questions and issues, and I believe the ability to remain calm and confidently guide the organization through the issue is key to success in-house.
TL: What do you see as the most important role you play as general counsel for WhaleShark Media?
Agnese: Providing the organization with solid legal advice and melding that with our strategic goals is certainly very important, but I believe that giving ethical advice is vital. It is one thing to answer the question, “Can we do this?” It is another to answer whether or not we should. When people realize you think about things this way, I believe this builds the kind of trust that you need within the organization to succeed.
TL: For what types of matters do you typically hire outside counsel?
Agnese: We have an in-house team of three that manages the legal issues confronting our organization in four countries. While I believe we do a good job of that, there are simply areas that we know little about or ones of great complexity, such as privacy, patent or tax matters, that we need external help with. There are also projects, such as M&A projects, that are of such a scale that doing the entire project in-house is not scalable.
TL: What are the biggest factors you consider when selecting outside counsel?
Agnese: An understanding of our business and our industry. The ability to not only help us understand the legal landscape surrounding an issue, but also to advise us on how other similarly situated organizations are approaching an issue from a legal or practical perspective.
TL: What can outside counsel do to perform beyond your expectations?
Agnese: There are many ways outside counsel can perform beyond my expectations (and not because I have low expectations) — identifying a substantial issue my team and I didn’t see, for example, or providing a referral to a great vendor or another contact.
Other GC profiles:
• Good Things Come in Threes: James Brashear Lands at Zix Corp. for His Third In-House Gig
• Milk Man: GC Delivers the Legal Goods For Borden Dairy Co.
• 30 Years and Counting: Colleen Mullen Goff Has Spent Her Entire Legal Career In-House With One Company
• Aviation Advocate: Flexjet’s Top Lawyer Brings a Varied Background to the Tarmac
• Breath of Fresh Air: GC Helps Ensure CO2 Company’s Compliance With Numerous Regulations
• Head of the Class: Former Teacher Leads Team Advising Lone Star Educators
• Healthy Innovation: New Law Puts Seton Healthcare GC’s Services in High Demand
• Face Time: GC Helps Freeman Deliver Successful Marketing Events
• Long-Term Value: GC Saves Money By Taking on Medicare
• GIG ‘EM, Longhorn: A&M System GC Runs the Ball in Aggies’ Move Out of Big 12
• Team Player: Self Professed “Sports Nut” Relishes Role as GC of Academy Sports + Outdoors
• Counsel and the Cause: Mona Patel Appreciates the Personal and Professional Rewards of Being Livestrong’s GC“
• Maximum Overdrive: $14 Billion Spinoff + $3.5 Billion Acquisiton = Busy Year for Marathon Oil GC“
• Body of Work: Robert F. Corrigan’s Health Law Expertise Comes in Handy at Baylor College of Medicine“
• Texans at Work: In Midst of Recession, Paul Jones Became GC of Texas Workforce Commission“
• For Stratford Land GC Matthew N. Hudnall, Negotiating Is the Name of the Game“
• Thinking Big: General Counsel Lays Firm Foundation for Construction Company“
• Two For One: Lawyer for Financial Holding Company, Bank Advises Both Boards“
• Extra Credit: There’s No Typical Day at the Office for Alan M. Utay“
• Music to His Ears: Classic Rock, Hip-Hop on Heavy Rotation in Office of DMX Inc. General Counsel“
• Adman: Austin Native’s Company Places Out-of-Home Marketing in Malls, Airports“
• GC of Financial Services Company Knows Ins and Outs of Purchasing Annuity Payments“
• Location, Location, Location: GC Guides Texas Real Estate Commission“
• He Knows the Drill: It’s an Interesting Time to Be in the Houston Oil Industry“
• Cutting Edge: GC’s Company Designs and Markets Medical Devices“
• Animal House: GC’s Transactions Involve Cattle, Chickens and Pigs“
• Hitting The Brakes: Ending Drunk Driving Is GC’s Goal“
• Bonds, State Bonds: Texas Public Finance Authority GC Susan Durso Makes a Career Out of State Service“
• Crafting a Career: Michaels Stores General Counsel Enjoys Piecing It All Together“
• Come Hell or High Water: Belo Corp. Assistant GC Toni Nguyen Reflects on Her Trials and Triumphs“
• Growth Industry: GC of Behavioral Health Company Says Seeing Kids Flourish Is Best Part of His Job“
• Digging Deep: Despite Tanking Economy, Business for Service-Sector Franchise Company Hums“
• The Nitty-Gritty of Governing“
• Checking In: GC Has No Reservations About How He Works With Outside Counsel“
• Third Time’s the Charm: Three Is a Magic Number for The Woodlands Development Co.“