Intellectual Property: How to Keep What is Yours… Yours

Andrew T. Mirsky Mirsky & Company, PLLC

Mirsky & Company, PLLC (“Kenyon”) has provided this presentation for general informational purposes only. It is not intended as professional

counsel and should not be used as such. You should contact your attorney to obtain advice with respect to any particular issue or problem.

Andrew T. Mirsky, Esq.

• Principal, Mirsky & Company, PLLC, DC and NY

• Formerly in-house counsel with National Journal and Atlantic Monthly magazines

• Clients in new media and technology, including intellectual property, corporate and finance, privacy, joint ventures and partnerships, and employment and HR matters.

• Founder, Media Future Now (www.mediafuturenow.com)

LET’S SUMMARIZE SOME INTELLECTUAL PROPERTY

First…

Patents Copyrights Trade

Secrets Trademarks

Four Types of IP we’ll review…

Patents Processes

Machines

Compositions of Matter

Plants

Designs

Copyrights

• Literature

Writings

• Art

Images

• Software

Other Works of Authorship

Trade Secrets

Confidential Info…

I.e. Coca Cola Recipe

Data Information not widely

known

Trademarks

Brands Company names

Product and service dress Domain names Establishing

identification of goods e.g., Nike Swoosh

LET’S GET SOME QUESTIONS ANSWERED!

Now that we’ve learned a little about IP…

Questions

1. Why do you want to protect things?

2. What is and what is not “protectable” intellectual property?

3. What can you do to protect what is protectable?

Patent • Patent covering Lipitor has protected the product for

the last several years to the tune of $13 billion per year.

Copyright • Protection for the Lord of the Rings and Harry Potter

movies and books cover about $5-6 billion in revenue.

Trade secret • Coca Cola’s sales worldwide are about $25-30 billion

dollars per year and all based on its secret formula.

Trademark • Give instant brand recognition – e.g., symbols, brand

names, slogans and packaging.

1. WHY do you want to protect things?

For someone coming to you with an idea – just that – at the beginning stage of a business…

“Do you think this is something I can

PATENT?”

1. WHY do you want to protect things?

novel and non-obvious processes, machines, manufactures, compositions of matter, or any improvement thereof.

Utility

new, original and ornamental (nonfunctional) designs for manufactured article.

Design

distinct and new varieties of asexually-reproduced plants and organisms.

Plant

Ordinary time to patent is about 3.5 years. Time

Expensive to obtain, maintain, defend – could be $5,000 to $25,000 just to register.

Cost

(1) What are

patents?

(2) What patents can AND cannot

do

2. WHAT is and what is not “protectable” intellectual property?

• Original literary, pictorial, musical, audiovisual, and other works of authorship, including computer programs, fixed in tangible form

• Examples: Books, manuals, software, multimedia, marketing materials, research reports

• Right to copy, adapt, distribute, publicly perform and publicly display work

• Rights of digital audio transmission for sound recordings

• Copyright protects original expression, not ideas, facts, principles, news, plots, characters

• Notice not required but advisable. Use © year, and name

What can COPYRIGHTS really do for me? What does it mean to COPYRIGHT software and what kind of protection does it get you (and not get you)?

2. WHAT is and what is not “protectable” intellectual property?

• Trademark: Great for branding and unique names – assuming they have value. But not much more. On other hand, the name “Apple” and “Coca Cola” incredibly valuable.

• Federal and State laws apply • Words, phrases, designs, shapes, sounds, and even smells and

colors, used to identify one’s goods/services and distinguish them from goods/services of others

• Owner is the first person to use or register as mark for this good/service

• Indefinite term – fed registration lasts 10 years but can be extended. Costs nominal

• “Descriptive” trademarks: E.g. “New York Trucking Company”

What can I do with a

TRADEMARK?

2. WHAT is and what is not “protectable” intellectual property?

What are TRADE SECRETS and how are they distinct from patent or copyright?

• E.g. Coca-Cola and why beneficial, but also limitations • Federal and State laws apply • Must keep secret and must take steps to keep

confidential. If it’s on the company website, it’s not a trade secret

• Prohibits use by others if learned in an improper manner (e.g., theft, deception, etc.)

• Reverse engineering OK • No notice requirement; indefinite term • Cannot get copyright or patent, which would nix trade

secret (exception: trade secret-redacted software filing)

2. WHAT is and what is not “protectable” intellectual property?

• Trademark, copyright, patents

• Copyright is easiest – it exists without having to file anything

• Trademark is next

• Then patent

File registrations (obviously):

• Work-for-hire agreements

• NDAs

• Careful contracts with partners (being clear about who owns what)

What else?

3. What can you do to protect what is “protectable”?

Problem #1: How do you prevent the value

of the company – personnel, know-how,

IP – from walking across the street and

setting up a new (competing) venture?

Noncompetes

Nonsolicitation Confidentiality

3. What can you do to protect what is “protectable”?

Some More Questions

4. What about the other stuff? What if the ideas aren’t technically “protectable”? What then:

The problem with true “ideas”. How to protect?

5. What do you do if someone steals your idea? You’ve done what you could to protect it, and

now someone comes along and does what you feared. Now what?

Problem #2: You have a business plan, a

concept, a script or really just an idea for

doing something. You want to pursue it somehow, but you’re

worried about sharing it with

anybody.

Patent publication/1st to file: What is the

issue with US vs Europe rules on

“publication” of the patent and how that

does or does not affect ability to obtain

patent?

Non-disclosure Confidentiality

Agreements (NDAs). Is it necessary to

have all interested parties sign an NDA before reviewing a

business plan or even taking a

meeting? What benefits? Would this even protect

anything realistically? And how do you deal

with the situation where some

companies or people simply won’t sign

NDAs?

What is “work for hire” and what significance?

Basically, you want to do everything to make sure

that anything that anyone does for you as a

developer, contractor, employee, business partner, vendor or

whatever is owned by you or your new

company.

Investors and Business Partners?

Be clear from get-go about who owns

what. Seems obvious, but very

often glossed over in rush to get a deal

done.

4. What about the other stuff? What if the ideas aren’t technically “protectable”? What then: The problem with true “ideas”. How to protect?

1. Don’t sue – market: Ride the publicity created by the competitor

and re-position your product or service as the premium or better

product. Use smart marketing and social media. Competitor’s entering the market could be the best thing

that ever happened.

2. Expect knockoffs: You can only do so much to protect ideas that really are not all that original, and your best strategy is first-to-

market, better product and better marketing. Even if you defeat one competitor through

legal means, another better-financed one will inevitably come along if you make the market case as obvious to competitors. Expect it and

be prepared to deal with it.

3. PR and Social Media: Use PR, social media and other smart

marketing. Go to bloggers, David and Goliath-like. Use that to your

advantage.

4. Fight Fire with Fire: Bury negative commentary from competitors with your own

positive commentary.

5. What to do if someone steals your idea? You’ve done what you could – with legal protections - to protect it, and now someone comes along and steals. Now what? Some NON-legal responses:

Andrew T. Mirsky andy@mirskylegal.com

(202) 339-0303 www.mirskylegal.com

@mirskylegal

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