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

andy@mirskylegal.com

(202) 339-0303

www.mirskylegal.com

@mirskylegal

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