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.

1. 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.

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. 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. Contracts
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?

5. Trademarks
• When do trademarks
matter? (When useful?
When not?)
Trademarks • Infringement vs.
registration
• What is value of
registration?

6. Trademarks
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

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. 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.”

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. 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. 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. 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. Privacy
Must you have a
privacy policy?
Should you?
Usually the
problem is
CONTRACT and
NOT privacy laws.

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. Fair Use
Facts are not
always
clearly public
domain,
Ask whether especially in
the “heart” of cases where When
the original unusual copying, if at
work is being creative effort all possible
used, (e.g. limit your
regardless of proprietary use to facts
the seemingly market and ideas,
small physical analysis not original
amount of the algorithms) expression.
copying. went into
their
compilation.

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. Partnership/Corporate Issues
Failure to everyone has
Document Default rule is equal
Management quasi-general ownership
and partnership – and equal
Ownership: voting rights

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. 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. 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. 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 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.”

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