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.

1. 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.

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. First…
LET’S SUMMARIZE SOME
INTELLECTUAL PROPERTY

4. Four Types of IP we’ll review…
Trade
Patents Copyrights Trademarks
Secrets

5. Patents
Processes
Designs Machines
Compositions
Plants
of Matter

6. Copyrights
Writings
• Literature
Images
• Art
Other Works of Authorship
• Software

7. Trade Secrets
Information
Data not widely
known
Confidential
Info…
I.e. Coca
Cola Recipe

8. Trademarks
Brands
Company names
Product and service dress
Domain names Establishing
identification
of goods e.g.,
Nike Swoosh

9. Now that we’ve learned a little about IP…
LET’S GET SOME QUESTIONS
ANSWERED!

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. 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. 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 – just
that – at the beginning stage of a business…

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. 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. 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. 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. 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. 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. 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?

20. 4. What about the other stuff? What if the ideas aren’t technically
“protectable”? What then: The problem with true “ideas”. How to
protect?
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. 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:
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. Andrew T. Mirsky
andy@mirskylegal.com
(202) 339-0303
www.mirskylegal.com
@mirskylegal
2301 N Street, NW 318 West 14th Street
Suite 313 4th Floor
Washington, DC 20037 New York, NY 10014