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Intellectual Property:      How to Keep What is Yours… Yours                                         Andrew T. Mirsky     ...
Andrew T. Mirsky, Esq.• Principal, Mirsky & Company, PLLC, DC and NY• Formerly in-house counsel with National Journal  and...
First…LET’S SUMMARIZE SOMEINTELLECTUAL PROPERTY
Four Types of IP we’ll review…                           Trade   Patents   Copyrights             Trademarks              ...
Patents                         Processes      Designs                                Machines                            ...
Copyrights  Writings  • Literature  Images  • Art  Other Works of Authorship  • Software
Trade Secrets                               Information Data                           not widely                         ...
Trademarks       Brands   Company names  Product and service dress    Domain names              Establishing              ...
Now that we’ve learned a little about IP…LET’S GET SOME QUESTIONSANSWERED!
Questions    1. Why do you want to protect things?   2. What is and what is not “protectable”            intellectual prop...
1. WHY do you want to protect things?                      • Patent covering Lipitor has protected the product for        ...
1. WHY do you want to protect things?                                        “Do you think this is                        ...
2. WHAT is and what is not“protectable” intellectual property?                                      (1) What are          ...
2. WHAT is and what is not                    What can COPYRIGHTS really“protectable” intellectual property?          do f...
2. WHAT is and what is not“protectable” intellectual property?                                                  What can I...
2. WHAT is and what is not              What are TRADE“protectable” intellectual property?    SECRETS and how are         ...
3. What can you do to protect what is“protectable”?                         • Trademark, copyright, patents               ...
3. What can you do to protect what is“protectable”?                                       Noncompetes                     ...
Some More Questions4. What about the other stuff? What if the ideas  aren’t technically “protectable”? What then:The probl...
4. What about the other stuff? What if the ideas aren’t technically“protectable”? What then: The problem with true “ideas”...
5. What to do if someone steals your idea? You’ve done what youcould – with legal protections - to protect it, and now som...
Andrew T. Mirsky                  andy@mirskylegal.com                     (202) 339-0303                   www.mirskylega...
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Intellectual Property: How to Keep What's Yours... Yours

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It’s the little things we do along the way that can make the biggest difference in the end. This presentation offers a basic yet comprehensive approach to intellectual property issues that can arise in everyday business. Includes types of intellectual property and non-legal responses to idea theft.

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Transcript of "Intellectual Property: How to Keep What's Yours... Yours"

  1. 1. Intellectual Property: How to Keep What is Yours… Yours Andrew T. Mirsky Mirsky & Company, PLLCMirsky & Company, PLLC (“Kenyon”) has provided this presentation for general informational purposes only. It is not intended as professionalcounsel and should not be used as such. You should contact your attorney to obtain advice with respect to any particular issue or problem.
  2. 2. 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)
  3. 3. First…LET’S SUMMARIZE SOMEINTELLECTUAL PROPERTY
  4. 4. Four Types of IP we’ll review… Trade Patents Copyrights Trademarks Secrets
  5. 5. Patents Processes Designs Machines Compositions Plants of Matter
  6. 6. Copyrights Writings • Literature Images • Art Other Works of Authorship • Software
  7. 7. Trade Secrets Information Data not widely known Confidential Info… I.e. Coca Cola Recipe
  8. 8. Trademarks Brands Company names Product and service dress Domain names Establishing identification of goods e.g., Nike Swoosh
  9. 9. Now that we’ve learned a little about IP…LET’S GET SOME QUESTIONSANSWERED!
  10. 10. 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?
  11. 11. 1. WHY do you want to protect things? • Patent covering Lipitor has protected the product for Patent the last several years to the tune of $13 billion per year. • Protection for the Lord of the Rings and Harry Potter Copyright movies and books cover about $5-6 billion in revenue. • Coca Cola’s sales worldwide are about $25-30 billion Trade secret dollars per year and all based on its secret formula. • Give instant brand recognition – e.g., symbols, brand Trademark names, slogans and packaging.
  12. 12. 1. WHY do you want to protect things? “Do you think this is something I can PATENT?”For someone coming to you with an idea – justthat – at the beginning stage of a business…
  13. 13. 2. WHAT is and what is not“protectable” intellectual property? (1) What are patents? (2) What patents can AND cannot do Utility novel and non-obvious processes, machines, manufactures, compositions of matter, or any improvement thereof. Design new, original and ornamental (nonfunctional) designs for manufactured article. Plant distinct and new varieties of asexually-reproduced plants and organisms. Time Ordinary time to patent is about 3.5 years. Cost Expensive to obtain, maintain, defend – could be $5,000 to $25,000 just to register.
  14. 14. 2. WHAT is and what is not What can COPYRIGHTS really“protectable” intellectual property? do for me? What does it mean to COPYRIGHT software and what kind of protection does it get you (and not get you)?• 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
  15. 15. 2. WHAT is and what is not“protectable” intellectual property? What can I do with a TRADEMARK?• 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”
  16. 16. 2. WHAT is and what is not What are TRADE“protectable” intellectual property? 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)
  17. 17. 3. What can you do to protect what is“protectable”? • Trademark, copyright, patents • Copyright is easiest – it exists File registrations without having to file anything (obviously): • Trademark is next • Then patent • Work-for-hire agreements • NDAs What else? • Careful contracts with partners (being clear about who owns what)
  18. 18. 3. What can you do to protect what is“protectable”? Noncompetes 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 Confidentiality (competing) venture? Nonsolicitation
  19. 19. Some More Questions4. 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, andnow someone comes along and does what you feared. Now what?
  20. 20. 4. What about the other stuff? What if the ideas aren’t technically“protectable”? What then: The problem with true “ideas”. How toprotect? Patent publication/1st to file: What is the Problem #2: You have issue with US vs Non-disclosure a business plan, a Europe rules on Confidentiality “publication” of the Agreements (NDAs). concept, a script or Is it necessary to really just an idea for patent and how that have all interested does or does not affect parties sign an NDA doing something. ability to obtain before reviewing a You want to pursue it patent? business plan or even taking a somehow, but you’re meeting? What worried about Investors and benefits? Would What is “work for hire” this even protect sharing it with and what significance? Business Partners? anything anybody. Basically, you want to do everything to make sure Be clear from get-go realistically? And how do you deal that anything that about who owns with the situation anyone does for you as a developer, contractor, what. Seems where some employee, business obvious, but very companies or people partner, vendor or simply won’t sign whatever is owned by often glossed over in NDAs? you or your new rush to get a deal company. done.
  21. 21. 5. What to do if someone steals your idea? You’ve done what youcould – with legal protections - to protect it, and now someone comesalong and steals. Now what? Some NON-legal responses: 1. Don’t sue – market: Ride the 2. Expect knockoffs: You can only do so much publicity created by the competitor to protect ideas that really are not all that and re-position your product or original, and your best strategy is first-to- service as the premium or better market, better product and better marketing. product. Use smart marketing and Even if you defeat one competitor through social media. Competitor’s entering legal means, another better-financed one will the market could be the best thing inevitably come along if you make the market that ever happened. 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 4. Fight Fire with Fire: Bury negative marketing. Go to bloggers, David commentary from competitors with your own and Goliath-like. Use that to your positive commentary. advantage.
  22. 22. Andrew T. Mirsky andy@mirskylegal.com (202) 339-0303 www.mirskylegal.com @mirskylegal2301 N Street, NW 318 West 14th StreetSuite 313 4th FloorWashington, DC 20037 New York, NY 10014
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