New Media Legal Boot Camp


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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.

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New Media Legal Boot Camp

  1. 1. New Media Legal Boot Camp 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 (
  3. 3. 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?
  4. 4. ContractsEXAMPLES:• 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?
  5. 5. Trademarks • When do trademarks matter? (When useful? When not?) Trademarks • Infringement vs. registration • What is value of registration?
  6. 6. TrademarksEXAMPLES:• “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
  7. 7. Employees and Contractors• 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
  8. 8. Employees and ContractorsEXAMPLE:• 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.”
  9. 9. Idea Protection Copyrights? Patents? Yes • But is that practical? How do you prevent people from stealing your idea? • Possible investors • Competitors • Employees • Contractors
  10. 10. Patents Copyright vs. Patent Ideas versus expression of ideas – Invention must be: Novel Is this speed Useful something I versus long process. Non can patent? Obvious
  11. 11. Patents Novelty: Must invent before (i) Filing Mechanics: known, used or filed by others in • 20 years from filing, extended U.S. or (ii) published or patented for delays anywhere. • Ordinary time to patent is • U.S. allows one year to apply about 3.5 years for patent after item (i) sold or • Cost: Expensive to obtain, used in public in the U.S. or maintain, defend (ii) described in print or • To file: $10-$20K patented anywhere. • To prosecute: $10K-$15K • Publication before filing is • To maintain: $10K-$15K absolute bar except in U.S., • Total Cost: $30-$50K Canada, Japan and a few other countries. • Utility: Beneficial use • Non-obviousness: Not obvious to one of ordinary skill in the art
  12. 12. 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?
  13. 13. Privacy Must you have a privacy policy? Should you? Usually the problem is CONTRACT and NOT privacy laws.
  14. 14. Privacy Difference between privacy (disclosure and use) and data security. • Must you comply with data security? Yes. What standards? • Why does it matter? What about tracking? Part legal, part practical. • Part legal • Part Practical User consent: • Baseline user expectations. • Why does this matter? 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).
  15. 15. Fair Use Facts are not always clearly public domain,Ask whether especially inthe “heart” of cases where Whenthe original unusual copying, if atwork is being creative effort all possibleused, (e.g. limit yourregardless of proprietary use to factsthe seemingly market and ideas,small physical analysis not originalamount of the algorithms) expression.copying. went into their compilation.
  16. 16. Fair Use• Facts are not always clearly public domain, especially in cases where unusual creative effort (e.g. proprietary market analysis algorithms) went into their compilation.
  17. 17. Partnership/Corporate Issues Failure to everyone has Document Default rule is equal Management quasi-general ownership and partnership – and equal Ownership: voting rights
  18. 18. Partnership/Corporate Issues• 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?
  19. 19. Type of entity LLC All usually want limited liability, flexibility and minimized taxes C Why form a company at Limited Corporation all? Partnership What benefits do sole proprietors get from company formation? S Corporation
  20. 20. Terms of Services/Terms of Use: • Comments are not • Ownership: When you necessarily the views post content, you give of [org name] [org] license to display such material OR … • Infringing and who owns content? inappropriate material will be removed Ownership: Typical What MUST Who owns Provisions be covered? content?
  21. 21. Terms of Services/Terms of Use:(YouTube) “For clarity, you retain all of your ownership rights in your Content.However, by submitting Content to YouTube, you hereby grant YouTube aworldwide, non-exclusive, royalty-free, sublicenseable and transferable licenseto use, reproduce, distribute, prepare derivative works of, display, and performthe Content in connection with the Service and YouTubes (and its successorsand affiliates) business, including without limitation for promoting andredistributing part or all of the Service (and derivative works thereof) in anymedia formats and through any media channels. You also hereby grant eachuser of the Service a non-exclusive license to access your Content through theService, and to use, reproduce, distribute, display and perform such Content aspermitted through the functionality of the Service and under these Terms ofService. The above licenses granted by you in video Content you submit to theService terminate within a commercially reasonable time after you remove ordelete your videos from the Service. You understand and agree, however, thatYouTube may retain, but not display, distribute, or perform, server copies ofyour videos that have been removed or deleted. The above licenses granted byyou in user comments you submit are perpetual and irrevocable.”
  22. 22. Andrew T. Mirsky (202) 339-0303 @mirskylegal2301 N Street, NW 318 West 14th StreetSuite 313 4th FloorWashington, DC 20037 New York, NY 10014