new media legal boot camp
DESCRIPTION
This presentation highlights the "best of" for new media and technology. We focus on a variety of topics relating to protecting your business from day one. Information on contracts, terms, IP and everything in between- a great resource for start-ups.TRANSCRIPT
New Media Legal Boot Camp
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)
Contracts
What matters when looking at
contracts? • No matter who writes the contract, it should include:
• (i) What will be done?
• (ii) Who’s going to do it?
• (iii) What happens if and when the contract is terminated?
EXAMPLES:
• Specific responsibilities- Why this matters?
• Spend time up-front. Why? Manage expectations and pre-empt
disputes about what you said you would and would not do.
• Instead of “we will provide training”, instead define scope of training,
what is and what is not covered, time limitations, billings costs beyond
scope, etc.
• Deliverables and acceptance.
• Defining what constitutes “breach” or “failure of performance”.
• Ownership rights – who owns what?
• For service contracts, deliverables owned yes, but is there underlying
technology?
• Practical distinction between “license” and “sale”. IP Ownership –
especially licensed software, who owns new developments?
Contracts
Trademarks
Trademarks
• When do trademarks matter? (When useful? When not?)
• Infringement vs. registration
• What is value of registration?
EXAMPLES:
• “New York Trucking Company” – descriptive/generic
• Local business only – a local retail store, local market only
• Is it a unique name or logo? Something that would be
threatened by name copies, uniquely associated with the name
or brand
Trademarks
• Interns and freelancers/ICs
• Risks and problems: Just because you don’t withhold taxes/provide
benefits/grant vacation, doesn’t make the worker an IC
• Can you get away with unpaid interns? Maybe. Same with ICs versus
employees (i.e. not providing benefits). But … risk: DOL audit (and big
penalties), lawsuits from former interns and staffers. Plus … potential
IP ownership problems.
• “Work for hire” agreements: Always always always … plus
assignment clauses (why?)
• Must be in writing BEFORE work begins.
• Needed for ICs, not needed for employees.
• No written agreement -- any IP developed prior to joining the company
will be property of the individual
Employees and Contractors
EXAMPLE:
• Employment offer letter (problem!): “The Company adheres to a policy of
employment-at-will that allows either the Company or you to terminate
the employment relationship at any time for any reason. A minimum of
two weeks of notice should be provided to your supervisor in the event
that either party wishes to exercise the option of termination. Although
you are an employee at will, it is expected that you are committing to
being part of this venture for at least the next two years.”
Employees and Contractors
Idea Protection
Copyrights? Patents? Yes
• But is that practical?
How do you prevent people from stealing your idea?
• Possible investors
• Competitors
• Employees
• Contractors
Patents
Is this something I can patent?
Co
pyrig
ht vs. P
ate
nt
Ideas versus expression of ideas – speed versus long process.
Inve
ntio
n m
ust b
e:
Novel
Useful
Non Obvious
Novelty: Must invent before (i)
known, used or filed by others in
U.S. or (ii) published or patented
anywhere.
• U.S. allows one year to apply
for patent after item (i) sold or
used in public in the U.S. or
(ii) described in print or
patented anywhere.
• Publication before filing is
absolute bar except in U.S.,
Canada, Japan and a few
other countries.
• Utility: Beneficial use
• Non-obviousness: Not obvious to
one of ordinary skill in the art
Filing Mechanics:
• 20 years from filing, extended
for delays
• Ordinary time to patent is
about 3.5 years
• Cost: Expensive to obtain,
maintain, defend
• To file: $10-$20K
• To prosecute: $10K-$15K
• To maintain: $10K-$15K
• Total Cost: $30-$50K
Patents
Copyrights
What does it mean to copyright software?
What kind of protection does it get you?
What kind of protection does it NOT get you?
Privacy
Must you have a privacy policy?
Should you?
Usually the problem is
CONTRACT and NOT privacy laws.
• Must you comply with data security? Yes. What standards?
• Why does it matter?
Difference between privacy (disclosure and use) and data security.
• Part legal
• Part Practical
What about tracking? Part legal, part practical.
• Baseline user expectations.
• Why does this matter?
User consent:
Voluntary commitments: In US: Saying what you’re going to do with personal information, and then actually doing that.
PII (meaning: not just ID, but also anything that could be used to make ID).
Privacy
Fair Use
Ask whether the “heart” of the original work is being used, regardless of the seemingly small physical amount of the copying.
Facts are not always clearly public domain, especially in cases where unusual creative effort (e.g. proprietary market analysis algorithms) went into their compilation.
When copying, if at all possible limit your use to facts and ideas, not original expression.
• Facts are not always clearly public domain, especially in cases where
unusual creative effort (e.g. proprietary market analysis algorithms) went
into their compilation.
Fair Use
Partnership/Corporate Issues
Failure to Document
Management and
Ownership:
Default rule is quasi-general partnership –
everyone has equal
ownership and equal
voting rights
• Failure to Document Management and Ownership
• Default rule is quasi-general partnership – everyone has equal
ownership and equal voting rights
• Can give minor players unwarranted veto power
• Easier to negotiate at early stage
• Risk of piercing corporate veil through lack of business formalities
• Situation where one partner does all the work, even
though plan was 50/50 split of work. What to do?
Partnership/Corporate Issues
Type of entity
All usually want limited liability, flexibility and
minimized taxes
Why form a company at all?
What benefits do sole proprietors get from company formation?
LLC
Limited Partnership
S Corporation
C Corporation
Terms of Services/Terms of Use:
• Comments are not necessarily the views of [org name]
• Infringing and inappropriate material will be removed
Typical Provisions
What MUST be covered?
• Ownership: When you post content, you give [org] license to display such material OR … who owns content?
Ownership: Who owns content?
(YouTube) “For clarity, you retain all of your ownership rights in your Content.
However, by submitting Content to YouTube, you hereby grant YouTube a
worldwide, non-exclusive, royalty-free, sublicenseable and transferable license
to use, reproduce, distribute, prepare derivative works of, display, and perform
the Content in connection with the Service and YouTube's (and its successors'
and affiliates') business, including without limitation for promoting and
redistributing part or all of the Service (and derivative works thereof) in any
media formats and through any media channels. You also hereby grant each
user of the Service a non-exclusive license to access your Content through the
Service, and to use, reproduce, distribute, display and perform such Content as
permitted through the functionality of the Service and under these Terms of
Service. The above licenses granted by you in video Content you submit to the
Service terminate within a commercially reasonable time after you remove or
delete your videos from the Service. You understand and agree, however, that
YouTube may retain, but not display, distribute, or perform, server copies of
your videos that have been removed or deleted. The above licenses granted by
you in user comments you submit are perpetual and irrevocable.”
Terms of Services/Terms of Use:
Andrew T. Mirsky
(202) 339-0303
www.mirskylegal.com
@mirskylegal
318 West 14th Street
4th Floor
New York, NY 10014
2301 N Street, NW
Suite 313
Washington, DC 20037