Law & Business: Recent Episodes
Anthony M. Verna III, Esq.
Understanding Patent Cease and Desist LettersPatents apply to actual inventions and prevent others from manufacturing, selling, or using a product or process. These protections are granted by the government in exchange for public disclosure of the invention, which can leave creators open to instances of patent infringement.
When this occurs, an inventor’s first line of defense is the patent cease and desist letter. This formal demand is sent directly to an alleged infringer and can later be used during litigation to show misconduct was knowing and willful.
If you have received a cease-and-desist letter based upon patent infringement, please contact us at Verna Law, P.C. at 914-908-6757 or send an e-mail to anthony@vernalaw.com
What is a Patent Cease and Desist Letter?Once a patent application has been granted, the owner of the patent has exclusive rights over the invention. When these rights are violated, a patent cease and desist letter can be sent to an alleged infringer of these rights. This is typically the first step in defending a patent, and in most cases, it’s also the last necessary step. Cease and desist notices are partially credited with keeping over 97 percent of legal disputes from ever entering the system.
Although patent owners are granted certain protections by the U.S. Government, the onus of policing violations still falls upon the patent owner. Any enforcement activities must begin with the IP owner, and in many cases, this can lead directly to litigation. The driving focus behind patent cease and desist letters is to avoid further legal issues, but without professional assistance, these notices may simply be ignored.
Every cease and desist letter explains the misconduct that’s occurring and demands that it be ended. By sending one, patent owners create an evidentiary trail that can later be used in court.
If you receive a patent cease and desist letter, you have a specified time period to respond. If infringement is obviously taking place, it’s important to cease those actions immediately. Of course, not every claim of patent infringement is cut and dry, so if there’s any confusion as to whether infringement is occurring, it’s important to consult with a patent law firm to understand the patent owner’s demands and the patent owner’s patent claims.
What Constitutes Patent Infringement?Patent infringement occurs when someone other than the intellectual property owner sells, offers to sell, uses, or manufactures a patented item or process. This must occur during the duration of protection – typically 20 years – and meet all elements of at least one claim within the patent.
Some typical defenses to a patent infringement claim include:
- Prior Art: Alleged infringers may claim that a patent is invalid due to the existence of prior art.
- Non-Infringement: If the device at issue does not utilize all elements of a claim, infringement has not taken place.
- Inequitable Conduct: A patent can be invalidated if the owner acted in bad faith during prosecution.
- Doctrine of Laches: If a patent owner procrastinates in defending its rights, they could lose the ability to do so.
- Estoppel: Individuals are prevented from making assertions contrary to prior claims, actions, or established facts.
Writing a Patent Cease and Desist LetterConsidering the increasing number of design and utility patents granted by the USPTO, there’s little doubt that the frequency of patent cease and desist letters is increasing.
It’s important to include pertinent patent law when sending a cease and desist letter. This lets the recipient know that you’re doing more than just “fishing” for potential infringing behavior. In addition to including specific instances where your patent was infringed, you need to explain how the recipient’s behavior constitutes infringement. This is done through a patent’s claims.
Whenever you file a patent application, you’re required to list several claims that describe the invention. These explain the scope of your patent and thus dictate the protection provided by the U.S. Patent and Trademark Office. If alleged violations don’t meet the criteria of at least one of the claims, then infringement has not occurred.
Parts of a Patent Cease and Desist LetterA well-crafted patent cease and desist letter sent by a patent litigation attorney can bring a quick resolution to a matter. Failing to include appropriate information, though, could result in the notice carrying no legal weight. This is why it’s important to consult with a lawyer. The following are all integral parts of a patent cease and desist letter:
- Contact information for yourself and the infringer.
- Demand that all infringing activities end.
- Demand that infringing activities not be resumed.
- Patent registration number.
- Dates and examples of the infringing activities.
- Additional legal actions that may be taken.
- Deadline for response (often 10 days).
Each of these aspects of a cease and desist letter is geared toward removing all doubt that infringing activities are accidental. At this point, infringers typically acquiesce and end their activities – especially if their misconduct was knowing and willful. Those who engaged in accidental violations usually abide by the requests in these notices as well.
Responding to Patent Cease and Desist LettersIf you’ve received a patent cease and desist letter claiming infringement, it’s important to thoroughly review the information provided. Keep in mind that this document is not legally binding. Patent trolls send out bad faith cease and desist letters frequently. In doing so, they hope to either stifle competition or extort money from individuals engaged in legitimate conduct. You’re not obligated to respond, but failing to do so could lead to litigation, so clearly, every cease and desist letter should be responded to in writing.
If your behavior doesn’t constitute infringement, a patent cease and desist response letter is your opportunity to showcase that fact. In doing so, you may eliminate any further harassment from the alleged patent owner. You’ll also start establishing your own evidentiary trail. This can become useful later if you end up in court.
Always keep in mind that cease and desist letters and their responses are simply meant to enforce the law. If you’re engaged in patent infringement, a cease and desist notice should be viewed as an opportunity to end a conflict before further legal action is taken.
When Cease and Desist Letters Don’t WorkCease and desist letters are among the most effective tools in the intellectual property world, but there will always be instances when an infringer refuses to cease an infringement. This is why around 4,000 patent infringement cases have been filed yearly in federal courts over the last few years. Unfortunately, this may be your only recourse if a cease and desist letter isn’t effective.
If another party is wrongfully claiming that they’re not infringing upon your patent, you’ll have the option to file a complaint to initiate patent litigation in court and have the infringer served. They’ll have time to respond, but if they fail to do so, you may be awarded a default judgment that includes an injunction and monetary compensation. Judgment amounts in patent cases have been trending upwards over the last two decades.
One of the most overlooked issues regarding patent cease and desist letters is the possibility of declaratory judgments. The infringer could seek a judgment of non-infringement in a more favorable court the moment they feel litigation is imminent. This could put you on the defensive side, so at times, you may want to consider filing a lawsuit prior to sending a cease and desist letter. The lawsuit can always be dropped later if an acceptable conclusion is reached.
A cease-and-desist (C&D) letter typically demands that the recipient stop (cease) doing something now and avoid (desist from) doing it in the future, or risk being sued. The steps you take after receiving a C&D letter can critically impact how the potential dispute affects your business (as discussed in our related IP Update regarding trademark and brand protection).
In patent disputes, C&D letters are frequently used to advise the recipient that they are infringing the patent rights of the patent holder and demanding the recipient to stop. Sometimes the patent holder may offer the recipient a license to the patent at issue. A C&D letter may fall across a spectrum of threatening to friendly, depending on the sender, the recipient, and the nature of the allegations/accusations.
Steps to Take if You Receive a Patent Cease and Desist LetterIf you receive correspondence that you believe is a C&D letter, consider these five steps:
- Consult an Intellectual Property Lawyer:If you receive a C&D letter for patent infringement, you should consult with an Intellectual Property (IP) lawyer with expertise in patent infringement litigation. Intellectual property law is a highly specialized practice area. It is important to obtain counsel who is familiar with patent litigation to put yourself in the best position moving forward.
Patent infringement allegations are often rooted in complex and highly technical facts and can take time to properly investigate. Consulting with an experienced IP lawyer quickly after receiving a C&D letter makes for the best use of the time leading to the sender’s proposed deadline and will set you up to properly consider the allegations, gain an understanding of your risk level, and evaluate the next steps. 2. Make Note of the Deadline:A C&D letter will typically include a deadline for you to respond and confirm your compliance with the demands. A deadline may have been chosen randomly or may be intentional and especially important where there is a risk of fast-approaching harm or legal deadlines by which the sender needs to commence litigation.
Even if you do not intend to comply with the demand, there is value in responding by the identified deadline to try to resolve or reduce the conflict, or to demonstrate to a future judge or arbitrator that you did not simply ignore the request.
If the deadline is too quick for you to respond meaningfully, you can consider sending a short-term response that you will need additional time to investigate the allegations and/or seek legal advice. 3. Consider the Merits:Just because someone sent you a C&D letter, it does not mean they have a (strong) claim against you. When evaluating the merits of a C&D letter, consider the sender and the nature of the complaint. Questions to ask yourself include:
* Does the sender appear to have the rights it is asserting?
* Does it seem like your actions infringe on the sender’s rights?
* How important are your allegedly infringing activities with respect to your business interests?
* What is the bigger picture? Is there a relationship between you and the sender that you wish to preserve? Are there other aspects to the dispute between you and the sender beyond the patent infringement allegations, such as employment considerations or allegations of breach of confidence?
* Considering the merits at the outset will give you a better understanding of the possible risks you are facing. Experienced patent litigation counsel can assist you in evaluating your position, including the questions above.
* See, below, a discussion on the possibility of filing a Declaratory Judgment lawsuit.
- Evaluate Your Options and Respond:How you respond to the C&D letter will depend on various factors, including the nature and strength of the allegations and the possible commercial interests at stake. Among other options, you may choose to comply with the demands, deny any wrongdoing through a responding letter, or explore the possibility of mutually agreeable patent licensing terms.
All correspondence with the sender should be made on a ‘without prejudice’ basis to prevent any such correspondence from being used as evidence by the sender in future court proceedings.
You should also be careful not to make any public statements or comments to any third parties about the dispute without first discussing it with an IP lawyer. 5. Gather and Preserve Your Records:Even if you receive a C&D letter that does not expressly threaten litigation, a lawsuit is a possible outcome. For this reason, as soon as you receive a C&D letter, you should put a “litigation hold” in effect, where you preserve all records that may be relevant to a lawsuit later. This will help you avoid any allegations that you intentionally deleted or destroyed records that you would have been required to provide to the other side during the litigation.
What you preserve depends on the nature of the allegations, and you should seek legal advice to ensure that you safeguard the proper records.
Another Consideration: Declaratory Judgment Jurisdiction: A Look at the Totality of the CircumstancesRecipients of a cease-and-desist letter may consider filing a Declaratory Judgment lawsuit against the IP owner who sent the letter, asking the court for a declaratory judgment stating that the recipient is not infringing the patent (and asking for attorney’s fees as damages). Declaratory judgment actions different because they permit a party to seek a court judgment that defines the parties’ rights before an injury occurs. A declaratory judgment differs from other judgments because it does not provide for any enforcement or order a party to take any action or pay damages. Essentially, it states the court’s authoritative opinion regarding the exact nature of the legal matter and whether the parties would be entitled to relief without actually requiring the parties to do anything. For example, a declaratory judgment action could be brought to determine party rights and obligations under a contract or to establish the validity of a patent.
Under Article III of the U.S. Constitution, a federal court may only issue a declaratory judgment when there is an actual controversy. Without an actual controversy, the federal courts do not have jurisdiction to hear the case. For an actual controversy to be found, the plaintiff cannot be merely seeking advice from the court, but instead must show that the controversy between parties is substantial, immediate, and real and that the parties have adverse legal interests.
In MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007), the Supreme Court evaluated Declaratory Judgment (“DJ”) jurisdiction under a totality-of-the-circumstances test, where there must be “a substantial controversy, between parties having adverse legal interests, of sufficient immediacy and reality to warrant relief.” Looking to the totality of the circumstances, courts analyze the contents of a cease-and-desist letter as a key factor—but often not the only factor—in assessing DJ jurisdiction. Other factors include the relationship of the parties, litigation history of the patent owner, actions of the parties, and more, as discussed below in the context of the MedImmune test.
Creating a “Substantial Controversy” through Cease-and-Desist LettersThe “substantial controversy” requirement allows potential infringers to challenge infringement claims and patent validity without “betting the farm” by requiring potential infringers to make (or continue to make) a potentially infringing product. But when do a patentee’s actions create a substantial controversy? In SanDisk v. STMicroelectronics, for example, the U.S. Court of Appeals for the Federal Circuit’s analysis searched for an act by the patent owner indicating it would enforce its rights. The court found that the patent owner provided a clear intent to enforce its rights by, among other things, providing detailed infringement charts explaining how the accused infringer violated its patents. But patentees rarely provide such clear accusations when they want to avoid DJ jurisdiction, and the court refused to define the boundaries in this case.
The court extended its analysis in decisions following SanDisk. The Federal Circuit has consistently stated that “a communication from a patent owner to another party, merely identifying its patent and the other party’s product line” is not enough for a definite and concrete dispute. Still, simply avoiding specific threatening phrases, such as “you are infringing my patent,” generally does not inoculate a patent owner’s letter from creating DJ jurisdiction. Instead, the language of the letter usually must connect the patents with an accused product, and the language or circumstances surrounding the letter must suggest that the patent owner will assert its patent rights. While a strongly worded letter may be sufficient alone to trigger DJ jurisdiction, many letters use less threatening language. In those instances, courts do not stop their analysis at the words of the letters. All communications become relevant, with courts considering informal conversations, the history of the parties (e.g., whether they have a litigious history), later discussions between the parties about the contents of the letters, and more. Courts analyze these facts collectively to determine whether a patent owner signaled an intent to assert its rights, creating a definite and concrete dispute.
As an example where the court found no DJ jurisdiction, in Element Six v. Novatek the patent owner worded its letter as an information gathering tool. It requested information on the accused infringer’s products so that it could determine potential liability. The court did not consider this to be a demand or accusation. Instead, the court viewed it as an attempt to gather information to determine the rights of the patent owner. Further, the patentee did not provide additional information on its patents or a potential infringement analysis until the accused infringer requested the information. The court did not find this later-arising information to contribute to DJ jurisdiction because the accused infringer asked for it as opposed to the patent owner using it to threaten filing suit. The court focused on the information in the original letter and determined that a request for information was not a definite enough threat to enforce the patent owner’s rights and did not create a substantial controversy.
“Sufficient Immediacy and Reality” in the wake of Cease-and-Desist LettersSome view the “sufficient immediacy and reality” requirement to be more straightforward than the “substantial controversy” requirement. In general, if a recipient allows time to pass between receiving a cease-and-desist letter and filing a DJ action, the delay will undermine the immediacy and reality of the dispute. Patent owners seeking to avoid DJ jurisdiction can further bolster this argument by showing that the accused infringer has not taken any corrective action in response to the letter or other communications.
But even with the passage of time, courts might still find sufficient immediacy and reality if the patent owner has taken other actions in the interim. For example, a potential infringer might believe they are a target of the patent owner if the patent owner has sued others in the same market after sending similar cease-and-desist letters. The potential infringer may believe that the patent owner simply has not gotten around to suing it, creating an immediacy and reality to support DJ jurisdiction.
An accused infringer can also retain the immediacy and reality of a controversy if it temporarily takes corrective action to avoid the accused conduct but is still prepared and wanting to revert to its original accused conduct. This is true even if the alleged infringement had abated for many years. In Myriad, for example, the patent owner sent a letter demanding that the accused infringer refrain from performing its patented tests. The accused infringer refrained from performing the tests for 10 years but then filed a DJ action. The court found sufficient immediacy and reality based in part on the fact that the parties’ legal positions had not changed during the abatement. The patent owner had continued asserting its patent rights by demanding that accused infringers run their tests through the patent owner, suing those who violated these terms. The accused infringer in this case succumbed to these threats and did not provide accused services to his patients. The court also noted that the accused infringer wanted to provide and was ready to provide the patented tests. The court even compared this with the fact that it affirmed the dismissal of claims by other accused infringers who stated they may want to provide the tests. Because these facts did not change over the 10 years between the letter and the DJ action, the immediacy and reality of the suit did not dissipate.
It is important to remember that this is not a rigid, formulaic analysis. Courts have said that attorneys cannot simply prevent DJ jurisdiction by avoiding “magic words” such as “litigation” or “infringement.” Instead, courts evaluate the totality of the circumstances and determine whether the accused infringer is reasonably concerned about being sued to the point of satisfying these two requirements. This dynamic prevents the courts from clearly defining a universal set of language that would always avoid DJ jurisdiction in a cease-and-desist letter, further complicating the balancing act that patent owners must perform when sending letters to create notice for damages or knowledge for indirect infringement.
The Interplay Between DJ Jurisdiction and Notice for DamagesTo recover damages for patent infringement, a patent owner must provide actual or constructive notice to the accused infringer. A cease-and-desist letter may provide actual notice, but to do so it must “assure that the recipient knew of the adverse patent during the period in which liability accrues.” The courts focus on the acts by the patent owner to put the accused infringer on notice, not any independent knowledge the accused infringer may have separately developed regarding the patent.
To provide this notice, the Federal Circuit has stated that “the actual notice requirement of § 287(a) is satisfied when the recipient is informed of the identity of the patent and the activity that is believed to be an infringement, accompanied by a proposal to abate the infringement, whether by license or otherwise.”
At first glance, this appears to create a binary choice either to avoid DJ jurisdiction and fail to create notice for damages, or to create both DJ jurisdiction and notice. But courts insist the rules are not coextensive. For example, the Federal Circuit noted the distinct requirements and purposes of these doctrines in SRI International v. Advanced Technology Laboratories:
The criteria for actual notice under § 287(a) are not coextensive with the criteria for filing a declaratory judgment action. These statutory purposes are distinct, serve different policies, and are governed by different laws. The requirement of actual notice under § 287(a) is designed to assure that the recipient knew of the adverse patent under the period in which liability accrues, when constructive notice by marking is absent. Actual notice may be achieved without creating a case of actual controversy.
Despite this recognition, courts generally analyze challenges to DJ jurisdiction and notice for damages at different stages of the litigation, preventing them from providing a direct comparison. Still, analyzing the rules for notice can be instructive.
Identifying the asserted patent is fairly straightforward. While rare cases have not required a patent owner to identify the patent number, it is generally not advisable. Courts allow more flexibility in identifying an accused product, however. Patent owners can generally identify a line of products and often are not required to identify a particular product by its model number. This allows patent owners to be less specific in their letters, which could undermine DJ jurisdiction in some instances. In PCT International v. Holland Electronics, the patent owner identified an entire family of products as potentially infringing its patents. The accused infringer insisted that the patent owner needed to identify specific model numbers the patent owner thought were infringing,
If you have received a cease-and-desist letter based upon patent infringement, please contact us at Verna Law, P.C. at 914-908-6757 or send an e-mail to anthony@vernalaw.com
ConclusionPatent cease and desist letters are powerful tools in protecting intellectual property rights. Whether you are sending or receiving one, understanding the process and taking the correct steps is crucial. By consulting with an experienced IP lawyer, accurately assessing the merits of the situation, and carefully crafting or responding to these letters, you can significantly impact the outcome of any potential disputes.
If you have received a cease-and-desist letter based upon patent infringement, please contact us at Verna Law, P.C. at 914-908-6757 or send an e-mail to anthony@vernalaw.com
It’s a fun Super Bowl weekend!
So this video blog talks about trademarks for the Super Bowl, the NFL, and teams.
Enjoy!
Let’s talk a little bit about the Post cereal lawsuit against OkGo.
I think there’s been a lot of confusion about that. So I figured even though I’m on the road, let’s chat post filed a lawsuit against the band. Okay go. Why Post wants to file a trademark called OkGo for a line of cereals. Probably ready to made cereals is my guess.
The band sent the post a what we call a cease and desist letter. Now, we’ve heard a lot about cease and desist letters, but we haven’t really heard a lot about what happens after you send a cease and desist letter. One of the pitfalls of sending a cease and desist letter is that the potential defendant in a lawsuit who receives that cease and desist letter may have the ability to go to federal court, especially in trademark law, because everything is federal.
We want the court to say “We are not infringing upon this trademark.”
Now, in that particular case, what has to happen then is that the now defendant who asserted the trademark claims, who would have been a plaintiff, also has to file a counter lawsuit for the trademark infringement, as well as answering the the complaint that’s there. So really what’s happened here is that post started using the phrase, okay, go on cereal. Okay, go. The band did not like that particular use of the phrase. Okay, go. Despite the different sets of goods and services, that lawyer said the cease and desist letter. And in response to the cease and desist letter post decided to take that issue to their home district court and they filed a what we call a declaratory judgment asking the District of Minnesota that they are not infringing.
So that’s one of the that’s one of the things that happens when you send a cease and desist letter. It can backfire on you. And you might actually wind up being a defendant in a lawsuit where, you know, they’re being asked to say that they’re not actually infringing. You have to make sure that you write your cease and desist letters calmly. You must make sure that you need to write your cease and desist letters specifically, and you need to make sure that you’re not really going to kick up dust.
But that is certainly one of the things that can happen.
And in this particular case, that is exactly what happened that a lawsuit just started. So we have a lot to to to determine, especially a lot to determine about. Okay. Go’s use of the trademark. Okay. Go ahead. And if it’s a trademark that is famous enough that all other uses should be banned. To me, that’s going to be the one and only question on the trademark case.
The "Law & Business" podcast has returned.
Once again, we are with Heather Abissi, our co-host, from Abissi Law. We discuss domain names:
How domain names are property;How domain names relate to trademark law;In which ways a person or business can challenge the validity of a domain name registration;Arbitration or Federal Court?What happens when the federal government seizes your domain name?
It's a fun conversation! Don't forget to subscribe and rate us 5 stars!
The "Law and Business" podcast is BACK.
And Anthony is joined by his new co-host, Heather Abissi. Heather M. Abissi, an attorney beginning her 15th year of practice, having served as an Executive Assistant District Attorney, Criminal Defense Attorney, Civil Rights Attorney, Tort Attorney, Family Law Attorney, Matrimonial Attorney, and Senior Assistant Corporation Counsel for the City of New York, and Corporate Outside Counsel, has a practice focused on legal writing, editing, contract negotiation, oral argument, trial support and strategy. The goal of her practice is to improve the work-life balance of attorneys by allowing them to outsource time consuming legal documents, and peace of mind to corporate clients who need detail oriented personal attention to their contracts rather than boilerplate.
Heather Abissi
The sensitive topic is revenge porn. Heather tackles the topic from the victim's perspective in terms of criminal law, and how to report such an action. Anthony tackles the problem from the perspective in terms of copyright law and rights of privacy/publicity aka name/image/likeness - how a federal civil lawsuit may help a victim.
Coming aboard the "Law & Business" Podcast is Polina Chtchelok. Polina is an Australian lawyer and engineer. She started her career in the energy sector, where after having lived in 5 different countries and working on various investments and projects, she saw a business opportunity due to lack of specific legal services and she moved from working in-house to creating her own niche market law firm in a controversial and challenging business environment of Bolivia in South America. After completing Executive MBA from HEC Paris with specialization in finance end entrepreneurship her focus now is on development of financial and operational strategies for business growth.
This episode on how to define a business vs. how to define a startup was fun to record and we hope you enjoy it, also.
Anthony Verna: (00:02)All right. Welcome to the Law and Business podcast, the most blandly named podcast out there. With me today is Polina Chtchelok. Polina, how you doing?Polina Chtchelok:I’m good, and you?
Anthony Verna:I’m well. How badly did I butcher your last name?Polina Chtchelok:It was actually quite well.
Anthony Verrna:All right. Oh, good. Okay. That's because your last name is Polish in nature.
Polina Chtchelok:Russian.
Anthony Verna:Russian, I’m sorry, I keep making that mistake. I grew up near our Lady of Czestochowa, which is I believe a Ukrainian saint. So anyway, I've learned a little bit about trying to figure out some of the Eastern Europe…
Polina Chtchelok: (00:53)The region of my last name is Ukrainian Cossacks.
Anthony Verrna: (00:58)Okay. Okay. So, all right. Thank you for the diversion. Uh, Paulina is an Australian lawyer and engineer. Speaking of a diversion. You started your career in the energy sector after having lived in five different countries, working on various investment and projects. Polina, you saw business opportunity due to lack of specific legal services. And you moved from working with in-house to creating your own niche market law firm in a controversial and challenging business environment in Bolivia, in South America. And then after completing your executive MBA from HEC Paris, with specialization in finance and entrepreneurship, your focus is now on development of financial and operational strategies for business growth. So welcome because law and business is exactly where you and I collide and intersect and thanks for being on today.
Polina Chtchelok:Oh, thank you for having me here.
Anthony Verna:Hey, so we're going to talk a little bit about what you think of as an ongoing concern for a business versus a startup. And hopefully our listeners can take away some ideas for thinking about if you're a startup out there thinking about taking your startup, what do I need to do to be an ongoing business concern?
Polina Chtchelok: (02:14)It's a very complex subject, and it's a very current subject because as you know, with COVID-19, there's a lot of businesses being impacted. You have to shut down, but at the same time, COVID-19 accelerated in entrepreneurship. It's accelerated creation of startups. Its accelerated people being innovative and creative because of their restrictions they've been under. They had to think of new ways of doing a business, implement changes to keep the business afloat and, and even the current customers, they change their habits. And you had to adjust to these changes in the habits of your customers.
Anthony Verna: (03:06)I completely agree. And we see that as well. We're seeing a lot more trademark applications come through the door. We're seeing a lot of patent application inquiries, and a lot of people trying to figure out if their invention is something that they want to invest the time and the money to get a patent application. And, that really begins one of the thoughts, like how much have you invested of your own money in your business?
Polina Chtchelok: (03:35)Well, before we get into this point in terms of how much we invest,
It's always fun when your friends drop in for a podcast episode.
My guest this time is my friend, the talented and lovely Andromeda Turre.
Andromeda is a jazz singer whose latest project is called Growing up Jazz, a series about the influence of jazz on the American soul that runs parallel to her life story as the daughter of two jazz musicians.
Andromeda had some copyright questions. These questions came from the musician's perspective, especially as we discussed the need for a copyright registration in the music and a need for a copyright registration in the sound recording (aka "sync license" when musicians license the recording). However, everyone who works in all media should find it informative and we want Andromeda back on soon.
BTW - nobody is allowed to use "poor man's copyright" on the podcast anymore. That term is officially banned.
Anthony Verna: (00:03)And welcome to the Law and Business podcast. I’m here with my friend Andromeda Turre. How you doing?
Andromeda Turre: (00:09)I'm so good. And thank you so much for inviting me on to talk to you today.
Anthony Verna: (00:13)Thank you for coming. Thank you for coming. And by the way, let's tell everybody listening. as Andromeda is a jazz singer and where can everybody find your stuff on the web?
Andromeda Turre: (00:26)You can find it at andromedaturre.com. I'm on Spotify. I'm on iTunes, wherever you download or stream music, you can find my music and, yeah, that's it.
Anthony Verna: (00:36)Well, thank you for coming. And so let's talk a little bit about copyright stuff, especially for, for the musician, especially the musician inside. Well, you've got a musicians inside and outside of you, so…
Andromeda Turre: (00:55)But there's so many questions about copyright that I think so many musicians will want the answers to, and I know that you can help us out. So, I've got some questions for you today.Anthony Verna: Hit me with the questions. That's what we’re here for.Andromeda TurreOkay. My first question is: Why do musicians need to copyright their music? It can be expensive. And I know that you can copyright things as a group or as an individual song. Give us the pitch as to why we should do this.
Anthony Verna: (01:24)Sure. So, in the United States… Let's start here… In the United States, without any kind of registration, if there's infringement, you can't file a lawsuit. So, I always say with copyright law, number one, it's the entry for, for a lawsuit and really it's a catalog as well. So, if you register every single song, you will be filing the composer's name, the date that it was composed, chances are where. And so, in that particular aspect, as your career grows, as your catalog grows, your copyright catalog grows. So, you have that barrier court and you have a catalog. So this way, if somebody needs to license something from you… I'm sure a lot of musicians are also members of ASCAP, BMI or SESAC. And therefore, they've got to have that catalog in there for licensing as well.
Having the copyright registration is kind of the glue to making all of that work. Now also, besides just entering court, if you have the registration before any infringement happens, you are entitled to at least the potential for more damages. So for example, if you've registered your song and somebody copies it, whether it's intentional or unintentional, but if somebody copies your song passes it off as their own, and you get no royalties from it, then you can file a lawsuit and you can ask for actual damages. In other words, the loss monies. You can ask for what we call statutory damages, which is an easier accounting of those monies. And you can ask for attorney's fees as well, and this way copyright infringements would be worth it. If you don't file that lawsuit, you will… I mean, if you don't, excuse me, file your copyright before the infringement, you are not entitled to a statutory damages and you are not entitled to attorney's fees...
On Episode 58 of the "Law & Business" Podcast, Anthony sits down with James Kwon, the CEO and Executive Strategy Chef of Figmints, a digital marketing agency in Providence, Rhode Island. Figmints has cracked the code on creating, developing, and delivering the scalable, repeatable marketing, and sales models that create results, drive revenue, and keep its clients smiling.
The conversation is about the Three Items Marketers Need to Know Now - right now, with the COVID pandemic hitting. Earlier, the podcast discussed why now is a perfect time for companies to continue to advertise - here are some thoughts on the strategy of how to advertise and market.
A lightly-edited transcript follows:
Anthony Verna: (00:02)All right, everyone. Welcome to the Law and Business podcast. With me is James Kwon from Figments. How are you doing James?
James Kwon:I'm doing as well as I can be. Thanks, Anthony.
Anthony Verna:You're feeling a little cabin fever lately?
James Kwon:There's certainly the Groundhog Day scenario of repetition. I just had a great morning check-in huddle with the team and just reminding them to break the repetition and to stay sane. And that was my tip for this week.
Anthony Verna:I think that's a very good, good tip for this week and I have to check in with my team as well. Our team is split between the East coast and the West coast. So I generally don't have like a one team phone call.
James Kwon:That makes sense.
Anthony Verna:Yeah. So James, tell us a little bit about yourself and a little about Figments as an agency.
James Kwon: (00:58)Yeah, happy to. So, I run a digital marketing firm, full service digital firm called figments fig M I N T s.com. And, we do storytelling that actually proves revenue results. So start with brand storytelling, logo design, website design development, because of course we have to, but this last part where we're actually proving results for clients by setting up digital automation, content creation, thought leadership so we can drive traffic and see real results happen, and we actually do some of those calls on behalf of the client. So we're really trying to take as much of that funnel responsibility as possible. And I've been running an agency now for, it's our eighth year. We're about 20 full time employees. Since Figments I've started about nine companies so I'm a little bit of a serial entrepreneur. Have a little, some startups and some software companies and some subsidiaries.I just got invited to speak at Inbound. I’m not sure if you're familiar with it.
Anthony Verna:I am certainly familiar. I'm certainly familiar with it. I mean, everybody listening is, sure.
James Kwon:So Inbound, it's the largest marketing conference in the world. It's run by the software tool, HubSpot's, which is very fast growing. It's a hot stock to keep your eye on and just got invited to speak which is flattering.
Anthony Verna:One particular question you certainly said that your agency helps with thought leadership, which is a buzzword, but I'm gonna have you break it down. What does thought leadership exactly mean?
James Kwon:Yeah, great question. So this day…
Anthony Verna:I only try to ask the great ones, man. I try not to ask stupid ones.
James Kwon:Great job so far. So the thought leadership is a principle behind content marketing where today buyers are more informed than ever because they can go online, they can research blogs, they just go to Google and start searching.
Well, what do I need to know if I'm going to hire a great patent attorney? Or what do I need to know if I'm going to hire a great agency? And you can find a lot of information. The person who can author that great content becomes the authority in that world. And so, this is the category we call thought leadership. If you can start to author a lot of great content, all of a sudden your name gets attached to all these great SEO content, all these great keywords when people are search...
Anthony Verna sat down with John Eastwood of Eiger Law in Taipei, Taiwan to talk about some of the effects of the COVID pandemic. Some of the topics covered are intellectual property, especially in relationship to bankruptcy, and employment law across borders and oceans. Supply chains are affected, also.
Anthony Verna: (00:02)And welcome to the Law and Business podcast. On this episode is the most frequent guest, John Eastwood. How are you doing, John?
John Eastwood:Doing well, doing well. I'm here in Taipei. My colleagues in Shanghai have apparently weathered quite a bit of the storm in the sense that Shanghai has not been so heavily affected. Taiwan, in the midst of this Corona virus situation is actually doing really well. It's become a bit of a model for… and it's been getting plaudits from different ends of the political spectrum of the United States. You get like the Wall Street Journal recently from kind of, an editorial perspective. It was lauding that Taiwan could be a model for what other countries could do. And then on the other side of the spectrum, I think we just got a shout out from Barbara Streisand on Twitter.
The entertaining thing for that. The Taiwan government. I mean, I love the job of doing on Corona virus and it was currently, we're still living in the three hundreds at this point. We hear on as we recorded this in early April. But in terms of number of in fact the event, the administrative foreign affairs and Taiwan retweeted Barbara Streisand, so a tweet and said, Oh, you know, you're just basically, you're so awesome. Thank you for saying this. And one can only just look at how exactly the same concept of cooperation to reach great heights together in a mutually working mutually between scientists and government are exactly mirrored in the story for A Star is Born and you haven't seen A Star is Born. Kris Kristofferson does not come out on the ending of A Star is Born.
Anthony Verna:Well at least that version of it, John. This is what the fourth version of that story?
John Eastwood:I was just talking with my wife and kids about that this morning. We're up to four versions of A Star is Born.
Anthony Verna:Actually, I think it's five.
John Eastwood: (02:37)Any of them end well? Well, they're not happy stories, but you know, it's helpful idea. Like a star rises and one falls and you know, so that's not the point of the story is not that two stars rise together and reach their greatest heights and happiness anyway. Any hoo anyhoo yeah, no. See these are things that are the Chinese famous. He said these are interesting times.
Anthony Verna: (03:04)What's it like going in and out of buildings in Taipei? Like are you… I mean, we're stuck at home. We're on an order that if it's not essential, and of course the definition of essential I think is constitutionally problematic because you've got states like New York that says that say that alcohol is not a problem. Pennsylvania says we're shutting down all the alcohol stores cause they're state run. And Massachusetts has said that alcohol is essential. Medical marijuana is not essential. So there might be a little vagueness here as to what, what essential might be, but we're not going out unless it's the grocery store and even then, I hope we stocked up long enough to keep us interested in dinner for a while. That gigantic pack of chicken thighs is not exactly exciting, but you know, it's in the freezer.
John Eastwood: (04:13)We do approach the trips to Costco like it's a military operation, like, you know, in and out and got the masks and don't touch it other than what we're buying. And we do have like for example, right now I'm in the office, but we're in fact coming up this next week, we're implementing, even though Taiwan is in a very fortunate situation that could change at any time. And so we aligned with that. We are implementing a lot of… it's the new acronym for me. W F H - work from home and it's the first time I've had ...
In Episode 56 of the "Law & Business" podcast, Anthony speaks to Jim Frawley of Bellwether (at bellwetherhub.com), an executive coach. Jim helps his clients with that a slight push, or a friendly face when they try something new. Whatever you want Jim and Bellwether to be, that’s what they can be. Don’t just talk about the next steps – take an actual step to getting it done.
Their topic is the hot-button issue is that as life is temporarily changed, our mindsets need to change. Jim loves to help people get stuff done. This can mean at the office, at home or in their community. It’s about getting motivated, disciplined individuals together to share ideas, learn from each other, and have fun. It is said that we are a result of the five people closest to us, so he wants to fish for those five that will challenge and help you improve the most.
Enjoy the episode - don't forget to rate us!
Anthony Verna: (00:04)Welcome to the Law and Business podcast, the least creatively named podcast out there in podcast land. With me is Jim Frawley. How you doing, Jim?
Jim Frawley:Fantastic day. I love being on such a creatively titled show.
Anthony Verna:Thank you very much. And, Jim, you're from Bellwether where you do a lot of business and executive coaching.
Jim Frawley:Yeah, we work a lot with senior executives and teams and organizations and then we work a lot with small businesses on their strategic direction and figuring out what it is that they want to do to get to the next level.
Anthony Verna:Excellent. Well, thank you for being on and for all of you out there who have forgotten what podcast you're listening to, I'm Anthony Verna, managing partner at Verna Law. And so, Jim, a lot of businesses, of course, are adjusting to the current new normal. I hesitate a little bit to call it anything more than the current new normal because I think we'll get back to normal at some point, even if it's in three or four months, I think we'll get back to normal. But, maybe that's my positive thinking.
Jim Frawley:Well, normal is subjective.
Anthony Verna:Well, that's true as well.
Jim Frawley:It's going to be interesting to see what that normal actually is.
Anthony Verna:That's true as well. So, from a coaching standpoint, the hot button items that your clients are coming to you about right now?
Jim Frawley:Well, there are a lot of the small business owners, especially the ones who are sole proprietors…
Anthony Verna:They're probably freaking out and panicking…
Jim Frawley:Incredibly and for good reason, right? Most sole proprietors can't file for unemployment. Most sole proprietors, this is their sole income for their family. And business has just dried up overnight for a lot of them, other than the other businesses that are completely overwhelmed with the type of work. So, it's really dependent on the type of business that you're in and, and where you're shaking out on it.
So, cashflow is obviously one of the big challenges that most of them are focused on, of course. But the other one that they're really interested in, and the one that I like to talk to most of my clients about is remaining relevant. And one of the big tokens of advice I give to my clients is, while you may not have revenue coming in, there is still an opportunity to not be forgotten from a business perspective. So we want to make sure that, you know, people's attention is everywhere right now how do you put your service and product front and center? It's probably just noise at this point. So how do you do it? And you have to do it in a selfless way where you're not trying to sell something because people aren't really buying anything.
So how are you positioning your business to provide value for clients so that you are remembered when these things do get back to normal?
Anthony Verna:It's a little reminiscent of the advertising mantra of: if needing to advertise in good times is important, well,
In Episode 55 of the "Law & Business" Podcast, Anthony speaks with Chelsey Pendock of Innovision Advertising. Innovision is an advertising placement agency and Chelsey discusses the sudden changes due to the COVID-19 pandemic, which includes which businesses are advertising, and why it is still important to advertise in more difficult economic times.
Enjoy!
Anthony Verna: (00:02)And welcome to the Law and Business podcast. You already know I'm Anthony Verna. with me is Chelsea Pendock from InnoVision Advertising. How are you doing, Chelsea?
Chelsey Pendock: (00:12)Hi Anthony. I'm doing well. Thank you for having me on your show.
Anthony Verna:Hey, not a problem. It's the least showy show in all of podcast world. So, it's also the least creatively titled show in all of podcastville as well.
Chelsey Pendock:So it gets right to the point.
Anthony Verna: (00:30)So, uh, InnoVision advertising is a what I would define as an advertising placement agency. How am I doing?
Chelsey Pendock: (00:38)That's correct. We specialize in media buying and media planning. We don't do the creative in house, but we can certainly advise clients with advertising strategy and work with the creative team to make the messages best and most effective as it can possibly be. But our internal specialty is negotiating media rates and placing the media for clients, determining where they should be advertising to see an investment or a return on their investment rather.
Anthony Verna: (01:12)In a time like this, I would assume that everybody's first instinct is to, you know, especially those who are running businesses is to stop their advertising.
Chelsey Pendock: (01:25)Yes. That is usually the first thing. When a panic hits, people always think of advertising as something that's not really a necessity. Depending on the type of business you're in, that actually could be true or it, most of the time actually isn't. Yes, sometimes it is one of the first things to get caught in a recession.
Anthony Verna: (01:54)So, have you been seeing that over the last two to three weeks?
Chelsey Pendock: (02:00)We have, it just depends on the industry. There are certain businesses that are struggling right now and there are certain businesses that are actually thriving right now. Some of the clients that we work with that we're seeing that had to make cuts are particularly in retail, plastic surgery, salons, restaurants, events in particular, and automotive and anything in the luxury sector as well. Travel. But we don't work with a lot of entertainment clients, but we have seen a lot of people shying away too from, you know, Broadway shows. They can't go to movie theaters anymore. So TV productions have been on hold. So we are seeing that. However, there are some businesses that are actually thriving in this type of environment who we work with, like healthcare providers, of course, lenders in particular, grocery stores, accountants, auto repairs, everyone still needs to get their cars repaired. And then of course, technology companies like Zoom I'm sure are doing phenomenally well at this time.
Anthony Verna: (03:13)You know, speaking of grocery stores, a couple of the podcasts that I listened to specifically from Philadelphia and one of the grocery store chains there has started advertising for employees and they are blunt to the point. In this time of need, we have developed a need for more people to come and work for us. And I was really shocked and surprised at how quickly the messaging changed.
Chelsey Pendock: (03:49)Yeah. I mean messaging is 100% key in this situation. If you are a business that's going to keep advertising, it's very important that you tailor your message. So, in the case you're speaking of what the grocery store, they're looking for recruitment at this time, that's great. They definitely have to get that message out there. But there's other companies that rather than holding back on advertising,
It is our final episode with the Nessa Group, even though our relationship will last a long time.
In this episode, the Nessa Group discusses a business with a unique and very special product. The product has the ability to help other businesses greatly. However, the business is built on shaky ground and the discussion revolves around that a business needs more than just a unique product.
Anthony Verna: (00:00)Welcome to our eighth and final episode of our special mini-series with the NESSA Group. We'll start. Hi, Jim Huerta. How are you?
Jim Huerta: (00:08)I’m doing well and I'm happy that we've accomplished the eight episodes and I hope that they draw a lot of attention.
Anthony Verna: (00:14)Thank you, sir. And Barry Kolevzon, the other principle of the NESSA Group. How are you doing?
Barry Kolevzon:I'm doing fine. Getting educated. Learning more than we know now.
Anthony Verna:All right. Wil Jacques, our patent professor.
Wil Jacques:Yes. Always a pleasure to be here.
Anthony Verna:Justin Tripodi, our branding buddy.
Justin Tripodi:Pleasure to be here, Anthony.
Anthony Verna:I'm sorry I couldn't do better than that on the illiteration and Scott Mautner, our corporate attorney. How you doing?
Scott Mautner:Doing well, thank you.
Anthony Verna:And which firm are you with, for attorney ethics?
Scott Mautner:Harrington, Ocko and Monk.
Anthony Verna:I'm managing partner of Verna Law also. So on this particular case study is a former client of the NESSA Group and one that most of us here have experience with. So, let's talk a little bit about the software that this particular client had made. And it did really work very well. It made that client, and that company, I should say a leader in online shopping experiences. Jim, why don't you take it from there?
Jim Huerta:Just give it a backdrop. Sure, sure. The company had been up and around for a while. They actually had established a quite a bit of patents. I'm going to say it's somewhere in the 30s. I'm not totally positive right now how many patents they had. But it was, I think ahead of its time. It was a way that shoppers online cannot lose track of what they had been looking at or what they had been shopping for. You were able to have like a cookie sitting inside the shopping process where it would take you right back to where you left off of what you were interested in depending on the store, whether it'd be a jewelry store or a clothing store. The utilization and the possible additional utilizations were non-ending. I mean, you can keep on thinking about how many things you can do with it.
Anthony Verna: (02:13)So Jim, a user would be able to leave the website store and come back to it with the cart exactly as it was.
Jim Huerta:Correct.
Anthony Verna:And then would the user also see remnants of this cart, for lack of a better word, around the web? So if I close this cart and this store and I went like onto Facebook and I went to Twitter, would I see other ads targeted to me to go back?
Jim Huerta: (02:40)I think it would be more specific and driven to the establishment that were using the app.
Anthony Verna: (02:45)Okay. So, there were also a special ways that if I recall correctly that an ad could be shown to a user as well.
Jim Huerta:Correct.
Anthony Verna:I mean, so there was something unique with this particular, absolutely. And a lot of the, the shop, a lot of the online shopping experience was unique for this particular company as well. What did you think some of the benefits were to the user?
Jim Huerta: (03:12)Well, I just thought the whole concept of the way it would track your history and browsing and your shopping experience was very unique. I mean, until I saw this product, I wasn't someone who shops online, but this really created a point of interest for me. The things that it could do in the areas that it could tackle. It didn't have to stay solely based on shopping.
It is the seventh and penultimate episode of this special mini-series with the Nessa Group, in which the discussion is about a plush toy company that is a start-up. The toy company has been able to services from Verna Law and the Nessa Group in order to get started - a mixture of intellectual property and business know-how. There was even some highly creative market research done at Toy Fair.
Anthony Verna: (00:01)Welcome to the seventh episode of our special mini-series with the NESSA Group. Jim Huerta, how's it going?
Jim Huerta:It's going well. I think we're making great progress. Great conversation. I hope the audience will enjoy some of the points that we're making.
Anthony Verna:I hope so too. Barry Kolevzon, how you feeling?
Barry Kolevzon:Feeling better every time we get involved in this area. And actually, …
Anthony Verna:You've got more…
Barry Kolevzon:where I think that we've got a nice length of time to build relationships. Thank you.
Anthony Verna:Thank you. Barry. Wil Jacques, patent connoisseur. How's it going?
Wil Jacques:Another great day. Great to be here.
Anthony Verna:Wonderful. Justin Tripodi, brand king.
Justin Tripodi:I was wondering if I was going to get a title this time. How you doing, Anthony?
Anthony Verna:Wonderful. Thank you. Scott Mautner, corporate attorney.
Scott Mautner:I'm doing well. Thank you. And I am with Harrington, Ocko and Monk before you ask.
Anthony Verna: (01:03)And I am managing partner at Verna Law. So let's talk about a little bit about the plush toy industry. Wil and I have lots of plush toy experience. Wil, you have written one patent or is it multiple patents…
Wil Jacques:Multiple patents.
Anthony Verna:For the plush toy you're currently holding? Nobody can see that you're holding it. So props don't do very well on audio, but, but you are holding the product.
Wil Jacques:Well, the audience can hear him.
Squeaky Voice:Hi.
Anthony Verna: (01:48)Let's talk about the patent because it's been published. So it is public. So let's talk a little bit about the patent application that was made for this particular product. What makes it so unique?
Wil Jacques:Ah, very interesting. And actually only one of the patents has been published, but, the plush toy industry, you know, has seen some innovation obviously over the last 80 years. But there's been very little has been done recently I think we would look to Jennifer Telfer’s pillow pets as an example of an innovation in the plush toy space. This particular toy actually tells a story, you know, around let's say a fairy tale figure that kids are familiar with, but it provides that story by putting some elements or features as we patent folks like to call it into the plush toy.
Anthony Verna: (02:44)Okay. So, so yeah, just tell us a little bit about what the patent discloses.
Wil Jacques:Okay. So essentially what the patent discloses is that this little bear allows you to take an object, let's say it's a tooth for instance, you're able to put this thing into the mouth of this little bear and it drops down into a little chamber, let's call it a heart section. And then the child is able to kind of, as we would like to say, it's a teaching toy - share and care. So they're sharing and carrying their fallen tooth into this little toy.
Anthony Verna:And there are some people who might have a problem wrapping their head around it, but a lot of people do have their baby teeth saved. And so this is a container that can do that as well as be a toy.
Wil Jacques:As well as be a toy, as well as allow the parents or the child or the user to be able to access and take that tooth or that object out of the toy later on, which is something that generally is not seen in a plush toy.
Anthony Verna: (03:50)I mean it's a plush toy. It's a patent. I have to admit that combination is rare. To me that sounds like a unique selling proposition.
Wil Jacques:Yes, it is.
Be well, everyone. Thank you for listening. Do not forget to rate the "Law & Business" Podcast on your podcast app!
In this roundtable episode with the Nessa Group, we discuss the importance of accredited investors in venture capital, what it means to be an accredited investor, what the possible pitfalls are if the investors are not accredited, and solutions from various disciplines in the case that a business looking for venture capital happens to fall into this trap.
Enjoy the episode.
Anthony Verna: And welcome to episode six of our special mini-series with the NESSA Group. And let's just start this off. Jim Huerta, how are you doing?
Jim Huerta:Hi, I'm wonderful. Enjoying the company and enjoying the conversation.
Anthony Verna:Thank you, sir. Barry Kolevzon, how's it going?
Barry Kolevzon:Going very, very nice. And we're very excited at the movements that we're making to go forward again.
Anthony Verna:All right. I only like going forward never backwards, but I practice law. So, Wil Jacques is with us. How are you doing, Wil.
Wil Jacques:Very good to be here. Hello to our listening audience.
Anthony Verna:Justin, how's it going?
Justin Tripodi:Doing great. Compliments on that joke.
Anthony Verna:Thank you, sir. Justin’s buddy over there, Scott Mautner. How you doing Scott?
Scott Mautner:I'm doing well, thank you.
Anthony Verna:And since you and I are attorneys, what firm are you with?
Scott Mautner:I'm with Harrington, Ocko and Monk.
Anthony Verna:And I'm managing partner of Verna Law, as well. So let's start here. Scott, this situation came from you. An entrepreneur had a great idea. Some friends worked on source code with this entrepreneur to launch an app. There were some issues there and I believe they came to you with already $2 million raised.
Scott Mautner: (01:13)And with unaccredited investors.
Anthony Verna: (01:16)Yeah. So that $2 million came from unaccredited investors.
Scott Mautner:Not all of it, but some of it, yes.
Anthony Verna:So, all right, let's start here. What's the difference between an accredited third party and an unaccredited third party?
Scott Mautner: (01:30)So under the securities laws to be accredited, you need to have income individually for $200,000 per year or with your spouse of $300,000 per year or have net assets excluding your home value of over $1 million. And so when you're raising money, it's a lot easier because you don't have to provide the amount of information for accredited investors that you would for unaccredited. So, when we raise money, we always want to do it with accredited investors. And if you don't meet the security laws, exceptions and rules relating to that, what happens is your investors can rescind their investment at any time. So, you could be running a company for four years and someone finds out that you didn't meet the exemptions you need under the securities laws. And they could say, I want my money back and you have to give them their money back. So it becomes a much bigger problem than just, “Oh, I forgot to give them financials.” or “I forgot to give them this or you know, other information.” So that's the first thing. And, and you know, every sort of company when you're dealing with venture capitalists and angel investors, they're always going to want to deal with accredited investors. It makes it simpler.
Anthony Verna: (02:45)So is that what the definition of bad securities exemptions are, is the ability to take that money back?
Scott Mautner: (02:51)Effectively if you have a bad offering? Yes, it would be rescinded. Rescission of the offering.
Anthony Verna:So basically if somebody is not accredited, could take the money back and if you said a company is working for four years and maybe they're burning through capital, they don't have that.
Scott Mautner:It's a problem. Yes, yes. Yeah. I mean there's ways to fix it, but the best way to fix it is just to make an offering from t...
In Episode 51 of the "Law & Business" Podcast, we take a look at a company that makes a plush product that is also a curtain tie-back. It is a very useful product, but one that also features the ability to be very fanciful. So the group takes a look at how the Nessa Group improved its sales and revenues from many different aspects, and also looks at what to continue to improve.
In this episode: Anthony Verna, Wil Jacques, Jim Huerta, Barry Kolevzon, Justin Tripodi, and Scott Mautner.
Enjoy the stimulating conversation.
Anthony Verna: (00:00)Everyone, welcome back for our fifth episode of the special mini-series with the NESSA Group. I'm Anthony Verna. Chances are you already knew that by listening to this., With us, Jim Huerta, principal of the NESSA Group. How you doing?
Jim Huerta:Hi, I'm doing well. Thank you.
Anthony Verna:And Barry Kolevzon second principle of the NESSA Group.
Barry Kolevzon:I’m listening to all of this.
Anthony Verna:I'm glad. I'm glad that you are. Also Wil Jacques. How are you, Wil?
Wil Jacques: Very good.
Anthony Verna: Justin Tripodi…
Justin Tripodi: How are you doing Anthony?
Anthony Verna: I’m well, thank you. And the well-dressed Scott Mautner there. How you doing, Scott?
Scott Mautner: I'm doing well, thank you.
Anthony Verna:All right. And for attorney ethics since you and I are a part of firms, what firm are you with as well?
Scott Mautner: I'm with Harrington, Ocko and Monk.
Anthony Verna:All right. And, of course, I'm the managing partner of Verna Law. But again, chances are you knew that. All right. So today we're going to talk a little case study here. And NESSA Group had a client, one that I'm familiar with as well. We won't mention it by name, but we will just say that their product is a curtain tie back. Jim, how'd I do with describing the product?
Jim Huerta: Perfect.
Anthony Verna: The current tie back has a plush cover and on top of that plush cover, I would say, is a plush figure as well. How am I doing?
Jim Huerta: You're doing well. It's amazing how well you are doing . I'm just listening.
Anthony Verna:Thank you, Jim. And basically, the plush part of this, what makes it attractive is that it's in different animal shapes. Again, how am I doing with describing the product?
Jim Huerta:You’re doing very well.
Anthony Verna:Okay. Jim, Barry, let's start with you two. This company, when you met them, was having problems. Can you describe, let's start here a couple of the problems that this company was having?
Barry Kolevzon: (01:55)Oh, there, there are a bunch of issues that are involved. I don't believe that they were staffed to carry on what they had. They’re in business 15 years, 20 years, 30 years. I'm not sure. And basically they were evidently happy with where they were. Then they woke up and said, “Hey, you know, we got a problem.”
Anthony Verna: (02:19) Well, I think a lot of a lot of business owners are like that. You're in business for a while and it seems okay.
Barry Kolevzon: (02:25) Well that's a problem. That's a big problem there. You know, they go to their buddies and talked to them and hey know everything, and the problem is evidently they don't.
Anthony Verna: (02:39) All right, so what would be another problem?
Barry Kolevzon: (02:42) Well, could be the problem of whether they make the product or the sample or whatever it is in house or out house. It depends on getting…
Anthony Verna: That sounds like a supply chain issue.
Barry Kolevzon: A supply chain issue, yes. Anthony Verna: (02:57) All right. So let's start here. When you say that the company was in existence for 10 to 15 years, but not exactly where the business owners wanted you're talking revenue?
Barry Kolevzon: Yeah, they were short on revenue. That was a problem.
Anthony Verna: Okay. So let's start here. Was there a sharp decline in the revenue or was it just the revenue wasn't good eno...
In our big 50th episode of the "Law & Business" podcast, Anthony sits down with Amy Birks, a strategic growth advisor for businesses. Amy has over a decade of experience in corporate finance, developing strategies and managing projects, and six years creating digital marketing and growth strategies for online businesses. That's what makes her the purposeful CEO’s secret weapon for growth and results.
Amy and Anthony talk about how the novel coronavirus that causes COVID-19 has caused a "new normal," debate whether this is around for a long time, how businesses are already quickly adapting to it, and how businesses need to continue to adapt, regardless of what a "new normal" looks like. After all, no matter what happens, technology will continue to develop and change business. Enjoy!
Anthony Verna: (00:19) Welcome listeners to the Law and Business podcast. Once again, I'm Anthony Verna, but you knew that if you've been listening to the podcasts. With me is Amy Birks. How you doing, Amy?
Amy Birks: I'm terrific. Thank you.
Anthony Verna: Amy, I see you as a business consultant, somebody who is helping people to think of ways to grow. Am I being too wordy about what you do?
Amy Birks: Am I too wordy or are you too wordy?
Anthony Verna: No, am I being too wordy?
Amy Birks: No, I think you summarized it really well. I think you did a great job.
Anthony Verna: Well cause you have people just go intellectual property lawyer. You can get me in a couple of words. I can never see if I can get you in a couple words. So let's start here. A lot of us are hunkered down. A lot of us are cooped up. You are. I am. And I guess a lot of businesses are changing because of that. Amy Birks: (01:19) Yeah. At the time that we're recording this right now, we're kind of in the height of all the unknowns around the coronavirus and so everything is uncertain and it seems to keep changing on a day to day basis, hour by hour, really. I mean right now, especially in our country and really across the world. So we're seeing this very, very interesting shift in how everything is done. And what I'm noticing is that there's a couple of different opportunities. One is that we can all react from a space of fear of the uncertainty because unknowns and change and uncertainty create a good amount of discomfort for most people. But I think the other opportunity is looking at how we can, as business owners, especially how we can respond creatively to what's happening. And rather than seeing it as like, Oh, wow, our business could be in danger. Our economy could be in some real danger to seeing what the possibilities are instead. And that's what I'm most excited about because I am somebody who sees opportunities. I find them like a heat seeking missile and so I just keep seeing them everywhere I go. I see them and especially for small businesses cause that's who I support.
Anthony Verna: (02:45) I've always seen you seen you, Amy as a bit of an optimist as well.
Amy Birks: (02:49) Yes. That is also true. That is also true. But I think that's needed right now. You know, like you said, we're all hunkered down. I'm sitting outside on the back porch of my home right now because the children are home from school and they're very noisy which is also wonderful. Like it's great that we're all getting opportunities to connect more with our families, but there's a lot of uncertainty and I think that if we can find those moments to be optimistic and hopeful, then that is what is really required. I think for all of us right now to move on and to continue to grow. Growth is my business, right? That's what I do is I help companies grow. And so in order for us to grow, we have to be able to adapt to change and be willing to do that. And that's sometimes hard when we're afraid.
Anthony Verna: (03:36) So let's get into specifics. What are some really specific things about change that businesses have to do? I mean number one.
In Episode 49 of the "Law & Business" podcast, we have a chat with John Knebels. Knebs - as he is affectionately known - is a long-time local sports journalist in the Philadelphia metropolitan area.
Anthony and Knebs sat down in the public view in a local Panera and talked about: How has his job changed as technology changed? What keeps him going in journalism? How are journalism and law - and being a journalist and being a lawyer - similar?
Enjoy!
Anthony Verna: All right. We are live and kicking in our favorite Panera. Welcome to the Law and Business podcast. Everybody out there knows I'm Anthony Verna. With me, John Knebels. How are you doing, sir?
John Knebels: I'm doing well. Nice to be here.
Anthony Verna: Thank you very much. And look, just to get everybody up to speed… You've got local journalism in your blood, right? Who are you writing for right now?
John Knebels: So right now I'm doing Catholicphilly.com. It is a diocesan website in Philadelphia. I've been doing that since 1982. Basically covering all of Catholic stories: Catholic schools, personality profiles, features, news stories, sporting events, and then I'm writing for a wonderful website and it’s called Philadelphiasportsdigest.com and it's run by a mother-daughter team. Like every human being on the planet should have bosses like this. They just really, really great people. And that covers in Philadelphia the Philadelphia Catholic league, and inter-academic league are the two that have maiden leagues. So, the boys and girls they cover and there's a tremendous amount of opportunity for people who get involved with them because there's so much to do.
Anthony Verna: Sure. I mean, I've totally forgotten the Philadelphia high school athletics in my time. So, what else needs to be covered? If you're saying there's a lot of work to do in the local scene, what else wants to be done?
John Knebels: There's a couple of different things. It's interesting like the Philadelphia Inquirer no longer really has a high school sports section.
Anthony Verna: That's still amazes me.
John Knebels: Yeah. Now let me be clear, they'll do stories and they have a couple of really good writers, but they no longer do things like standings and updates and previews and we'll do a preview for maybe a tournament. But back in the day you would get so much information about what happened the night before: who did what, the box scores. They don't have that anymore.
Anthony Verna: Sure, sure. I remember when I was first home from college and in law school I was part time at the Bucks County Courier Times and that's all they had me do was go write high school sports.
John Knebels: And, and you know, it's interesting because 95% of high school athletes are not going to play in college. So, mom and dad are going to really like seeing Bobby Schmidt's name scoring two points in the box score. There's something to be said for that. I'm sure if my kid had scored two points for St Joe's prep, I'd be like, Oh my God, I'd be taking pictures and sending them or his name mentioned somewhere. So, what you're finding is that a lot of these companies are desperately trying to find good strategies to get readers, but the problem is the monetary part of it. So, people are not making a whole lot of money doing this, obviously from the advertising standpoint is the most important part of it. But you're seeing these people, you have a lot of people who are pretending to be journalists. And I would say that they have no training and they're like, you know what, how hard is it to sit there and cover a wrestling event and they'll go up and you know, say, Oh this one did that, that would that with no training which is a little aggravating for people who've done it for their whole life, but some companies are just taking whatever they can get.
Anthony Verna: But there still is a bit of a hole in the market for people who are invested in high school sports.
On Episode 48 of the "Law & Business" podcast, it's Tina Vignali of the blog Traveleidoscope.
We have a friendly chat about what the blog means from a business model standpoint and some hot travel topics as the world is beginning to not be friendly to travel for the time being.
Here is a lightly-edited transcript of the conversation:
Anthony Verna: All right. Listeners, this is Anthony Verna back with you for another episode of the Law and Business Podcast. We are with today, Tina Vignali. How'd I do?
Tina Vignali: Pretty good.
Anthony Verna: All right. That, that silent G in Italian always throws me.
Tina Vignali: Well, you're Italian. You should…
Anthony Verna: I know, but that silent G always gets me.
Tina Vignali: That's okay.
Anthony Verna: You know, even when I was taking Italian lessons, that silent G just gets me a little.
Tina Vignali: Well, I won’t hold it against you.
Anthony Verna: Thank you, my friend. Thank you. Tina is the main blogger at the Travelidoscope blog. All right. And my tongue is not caught up yet. So, Tina talk to me a little bit. Let's start here. What specific niche and travel do you blog about?
Tina Vignali: So, Anthony, thanks for having me. I typically blog about active travel, so that folds in with my personal interests. I'm an avid skier. I like to scuba dive, I like to hike, anything active, but I also keep in mind that there's a broader audience. And so, I also like to blog about good food, great restaurants, and there's even a travel related recipe in there from time to time.
Anthony Verna: So what does active travel specifically mean?
Tina Vignali: It can mean a lot of different things. As I mentioned, my personal interests are in very sporty activities, skiing, scuba diving, hiking, kayaking, anything like that. But it doesn't have to specifically address those topics. It can just mean I'm not passive. So not in a tour group perhaps. But that's not to say that I exclude going on a tour. I've done tours myself and they're frequently very active. So, it can mean a lot of different things.
Anthony Verna: Let's wake up at 6:00 AM to catch the bus. But, I'm not working. I don't want to wake up at six.
Tina Vignali: You need a vacation from your vacation.
Anthony Verna: Yes. I think I've made that joke a few times after tours. So, let's move to the business side of this. Since this is the Law and Business podcast, how do you make money as a blogger? That's always the first question around the blogging industry.
Tina Vignali: Sure. I think it depends on what your personal goals are.
Anthony Verna: Oh, and absolutely. That's correct. Cause everybody's blog is different. As we know, this podcast is a supplement to my law practice, same with my blog. I mean, all of that is in a way advertising, but for some people, blogging is their career.
Tina Vignali: And I admire that. That ability to do that. Unfortunately, I think that it's better for me to supplement my career as a blogger. the way that I take a couple of different approaches. So, we know each other from PHL bloggers and that's a great way to network because while traditional networking is more face to face, as we are today, but, you can also network through social media and I think that's a really important way to find business, create business help others in the blogging world. And so, I think that's a valuable way to produce and assist others. The other thing that I like to do is I like to get out and do work with libraries. So for example, I've done workshops at libraries where I discuss how you can use your library as a travel planning tool, not just for guidebooks but for things like if you are interested in finding out what kinds of foods you'll like, get a recipe book from the destination that you'll be traveling to or even music. Frequently libraries have CDs or records. So, you can find out what kind of music you'll be hearing or even what kind of different movies or books.
Anthony Verna and Wil Jacques visited Toy Fair 2020. This is Anthony's eleventh Toy Fair and Wil Jacques' fifth Toy Fair. They opened the phone and recorded their thoughts for intellectual property trends they saw from the smaller businesses.
Anthony Verna at Toy Fair 2020
Anthony Verna:
Welcome to the “Law & Business” podcast. I'm Anthony Verna, Verna Law Managing Partner.
Chances are that if you're listening, you already knew that.
I am here at toy fair, 2020 with Wil Jacques, my patent agent.
Wil Jacques:
Good afternoon listening folks! Great to be here.
Anthony Verna:
All right, well, so let's talk a few items, a few big idea items for intellectual property and toys.
One item that I noticed from maybe a patent side is the fact that there are plenty of companies that have patents filed, or at least they told us they had patents filed, but the patent is number is not noticed on the packaging. So let's talk a little bit about what that means for them.
Wil Jacques:
Yeah. Kind of disturbing, actually, but, as you said, a lot of companies claim that they had a few utility patents that were filed and or issued.
But, the designation of those patents or markings were not on the packaging that they had. And what I wanted to bring out to them is that it really plays significantly or importantly in whether or not they were able and how much damages they might be able to capture from market infringers if in fact they never notified the market that the product that was being copied in fact had patents on it.
And so that's the whole idea of marking your product, with your patent numbers: so you send a signal to the market that if you copy this particular product, you're copying one that's already patent protected.
Anthony Verna:
I would also be worried from an infringement standpoint that, without giving notice of the number that a defendant would possibly have a complete defense to patent infringement anyway, because without that particular notice.
Wil:
It is onus on patent owners to notify any infringer, of copying or infringing on their patents.
I mean, there's, there's no patent police, you know, there's no one that goes around to see whether or not people are actually infringing on your patent is actually your responsibility to, to police that. So, you know, there are many strategies that you need to employ. But one of the first strategies is you can't extract damages from someone until you notify them that they are actually infringing on your patent.
Part of the marking of your product is a notification to the marketplace that you have a patented product.
Anthony Verna:
And, remember, “There is no patent police” is a trademark of Wil Jacques, because if you listen to this podcast you have heard “There is no patent police” at least 10 other times from, from Wil in past episodes.
So let's talk about the utility versus design issue.
We spoke to several companies that said they had design patents, but I think you and I probably wanted to try to push them a little further to see if that design actually had utility.
Wil Jacques:
Yeah. Actually, it was very interesting conversation with a number of people that we talk to and, you know, again, in full disclosure and without disclosing what they were, telling us there were a number of companies that had what we thought to be utility features for their toys, their products, their inventions.
And for whatever reason they never sought, they never looked into the opportunity to exploit the potential value of those utility, of potential utility claims and those patents. And I was kind of surprised to hear that there were various excuses, some around cost and what it would potentially cost to do something like that, which can be somewhat erroneous. It's almost like asking how much is a brain surgery going to cost before you get, before you get the x-ray.
And so, you know,
It is Episode 46 of the "Law & Business" Podcast. This is a continuance of our mini-series with the Nessa Group. Here, the group talks about businesses who are resistant to change. One trademark infringement lawsuit comes to Anthony's mind on the topic, because after the trademark infringement lawsuit, Anthony sent the client to Nessa Group because the client had a loss of one million dollars a year.
Anthony Verna: Welcome to our fourth episode of our special mini-series of podcasts, a series on the NESSA group. And, once again, we're here with the same team. My name is Anthony Verna. Jim Huerta, how are you doing? Jim Huerta: I'm doing fine. I'm glad to be here. Anthony Verna: All right, Barry Kolevzon, how are you doing? Barry Kolevzon: Great. Anthony Verna: Wonderful. Wil Jacques, what's happening? Wil Jacques: Oh, not a whole lot, but I'm glad to be here. Anthony Verna: Glad to have you here as well. Justin Tripodi. Justin, how's it going? Justin Tripodi: Doing great. Excited for the conversation today. Anthony Verna: Yeah, me too. Me too. So today we're going to be talking about clients who are resistant to change and businesses who are resistant to change. And hopefully we will find businesses who are not resistant to change because change sometimes, especially when you bring in a group like us is what helps a business grow. Jim, Barry, the three of us worked on a particular business a few years ago and I know it's more than a few years ago, but let's talk about that for a second. This was a client, a company that was sued for trademark infringement. This was a case where it wasn't a full brand, but it was an apparel company that was using a design on its clothing that was similar enough to a registered trademark where the trademark owner filed a lawsuit. It really wasn't worth defending. We were able to settle. The good news is that we were able to settle for $20,000 over a period of time and the company was able to destroy the offending products, we'll call it that cause I don't necessarily think it was infringing and move on with life. That part was I think was a great settlement. The three of us looked at this particular company's books and the three of us saw a company that was $1 million in the red. They're selling jeans. A company that is selling jeans, in my opinion, should not be $1 million in the red. One area that I noticed was that they were buying too much product from their factories. They were not selling the product fully. And when they would sell their product, they would sell it over at overstock.com for a loss from what they bought it from the factory. So, Jim, let's start here. What are some ways to avoid that red number when you know you're purchasing too much from the factory? Jim Huerta: No, in this case it was tricky. I mean obviously inventory becomes a very important thing. I think a lot of companies don't realize that if you have an excessive amount of inventory and you're carrying too much inventory, that you're not moving, it starts working against your P. and. L. it just has to you releasing prices that you can't really work with. This company had more unique things going on when it came to this red number. They had a parent company offshore and the parent company was trying to move their inventory back to the local company. So, in order for them, the parent company to look better that they will be moving inventory, they will house it back into the local company who was getting beat up and was going into the red. But there was no communication what was going on. There was no idea where the stages of different inventory levels were at. There were an incredible amount of transportation costs. When we looked at it and we looked at some of it, we didn't get enough information, we started to realize that a lot of this inventory was in transit because of the way they were structuring this movement. You couldn't really track the inventory and the dollars just kep...
Our special mini-series at the “Law & Business” Podcast with the Nessa Group continues.
In this special episode, we take a case in which a company must rebrand. The company's actual name is changed, but the situation is based from a real case. Quite often, in trademark infringement lawsuits, companies are facing a difficult choice: Rebrand or Fight. Fighting trademark infringement lawsuits are quite expensive with many procedural moves in federal district court. These procedural moves raise legal fees so that smaller companies have issues in fighting these infringement lawsuits.
How can a business consulting group help a company rebrand? Or at least begin to see the benefits of rebranding? This podcast episode starts that discussion.
Anthony Verna: Welcome to episode three of our special podcast mini-series. I'm Anthony Verna and we're here with the gang from the NESSA group. Jim, pleasure to see you again. Jim Huerta: It’s a pleasure of being here. I find this will be very interesting. Anthony Verna: Barry, thanks for being here. Barry Kolevzon: Well, thank you for having me here and I think that we have exciting discussion to discuss. Anthony Verna: Good. Thank you. Wil, great to see you, sir. Wil Jacques: Yeah, I got a ditto that from Barry. But yeah, this is going to be exciting. I like real live case studies. Anthony Verna: We like dittos. We don't like mega-dittos. Justin, it's a pleasure. Justin Tripodi: I'm not going to hold this up. Let's get into this. Jim Huerta: Good follow up. Anthony Verna: All right, so let's start doing our case study section of our mini-series. So, let me tell you a little story about a client of mine. And the names here are changed to protect not just the innocent but what is private as well. So, we're going to call this Bronze and Bourbon. And I wish I'd thought of that in real life. But Bronze and Bourbon is a company that was sued for trademark infringement. They're an apparel company. They make not revolutionary materials, but they make apparel. So fancy, fun tee shirts, fun sweatshirts, caps, a lot of caps, a lot of accessories. And some of them do have sayings. The aesthetic, the Uber of this apparel is very traditionally manly. Certainly cars, certainly a lot of motoring type of imagery in it. The plaintiff was a Bronze and Coke and so, from that particular standpoint, they're also an apparel company. Totally different type of apparel though. I would say that they sell a very expensive apparel, very good dress shirts, very good dress, pants, shoes, ties, things that are very much more upscale than the client in this case. So Wil, let's start with you as to some thoughts here. Wil Jacques: You know, again, I'm a novice and certainly don't understand trademark law as you would. But the first thought that came to mind was you gotta be kidding me. Anthony Verna: So let's talk about that for a second. No, and I understand exactly where you're coming from because a lot of people don't understand trademark law and a lot of people don't understand what the what the reasoning is for a trademark infringement lawsuit like this. So let's talk about that for a little bit. The plaintiff needs to have one) a trademark that is registered with the United States patent and trademark office. So that trademark has the brand in it. That trademark will have the goods and services listed in it. And obviously the owner is listed in it. So, those are keys. And then when you're filing a trademark infringement suit, you obviously have to listen to the defendant as to why is there infringement? So you're going to have to discuss some of those areas. The trademarks are similar. The goods and services are similar in a very simple explanation, similar trademarks, similar goods and services equals trademark infringement. Now you're probably saying, you gotta be kidding me because the trademarks do have some differences to them.
Our special mini-series at the "Law & Business" Podcast with the Nessa Group continues. We have heard that you have an idea - you probably have multiple ideas. Here is how a business consulting group handles ideas from the beginning.
Anthony Verna: (00:03) All right, everyone. Thank you for listening to episode number two of our special podcast mini-series with the NESSA group. My name is Anthony Verna. I'm an IP lawyer and I handle branding issues along with Justin Tripodi, when we are a part of the NESSA group. We'll start over here. Jim Huerta say hello.
Jim Huerta: (00:23) Hi. Hi, I'm Jim Huerta and I'm one of the managing partners of the NESSA group.
Anthony Verna: (00:27) Thank you very much. Barry Kolevzon please say howdy to our audience.
Barry Kolevzon: Howdy.
Anthony Verna: I like his literalism. Our patent agent is Wil Jacques.
Wil Jacques: Hi everybody.
Anthony Verna: And, of course, the aforementioned Justin Tripodi.
Justin Tripodi: Present and accounted for.
Anthony Verna: All right, lovely. So, let's talk about having an idea. I have an idea, which means I really have a solution to my problem. Justin, can I make this a business?
Justin Tripodi: Maybe.
Jim Huerta: Good answer. There's, there's a lot of things that need to be taken to account on. If your idea to a problem that you have is, is it a problem that a lot of people have? Is the market, as I mentioned in episode one, is it large enough for you to invest your time and potentially your money into taking the solution to market? You could do your research, you could talk to people within the industry to begin your process of learning and then you have to understand your process of well, what is going to be the cost and timeframe for me to make this idea reality.
Anthony Verna: One of the things that I would say about talking to people in the industry is make sure that you don't blab about what you're looking to do because now you're going to set off some, some statutes, which we'll get to in a minute or two. But Jim and Barry, what advice would you have for the person who has an idea, has a solution to a problem in terms of talking to industry people and getting that experience that's needed without blabbing about it and turning this into a business?
Jim Huerta: (02:09) You know what? Years ago, one of the things that I thought was important was to, if someone had an idea, was to test the marketplace. What I mean by this is not tell the people what it was, but talk about a disruptive kind of technology that could affect people in general just to see what their reaction would be and to see that maybe there was something there. I mean, and I'll mention Wil and I experienced that many years ago when we worked together that there was a way we were doing that we were getting the demand coming from the people who might be interested in being customers as opposed to from the top down saying, I have this patent isn't it great? No, you had to start getting a demand where people were saying, you know, I heard this conversation and I liked that and how can I help make that happen? Or what is it going to mean to me? So, I think the idea for me would be start feeling out if you have something that has demand and I'm not sure when I say the word disruptive I say that cause it's in vogue to say that now.
Anthony Verna: Buzzword alert.
Jim Huerta: I don't know what that really means. You guys will probably correct me on that but…
Anthony Verna: (03:19) Yeah, go ahead, Justin.
Justin Tripodi: Yes, I think, I think when you talk about a solution, there could be a lot of different reasons why it's a solution. It's an absolute need that you or a large group of people have or it could be more as a luxury or an entertainment property. And a lot of times you don't know exactly how your solution becomes a product until you begin to test it as Jim mentioned in market and a lot of very successful companies now do ...
Welcome to the Law & Business Podcast. Episode 43 begins a special mini-series with the Nessa Group, discussing what it means to work with a business consulting group and how that consulting group can help a business improve in all its areas.
We at Verna Law and the "Law & Business" Podcast hope you enjoy this special mini-series and that it tackles your business' needs.
Anthony Verna: (00:02) All right, and welcome to our special podcast mini series. My name's Anthony Verna. We're here with the NESSA group.
Jim Huerta, you're one of the principals in the NESSA group. Please introduce yourself. Jim Huerta: My name is Jim Huerta. I’ve been with the NESSA group for about 10 years when we started the company. Not much to say other than that. We've hopefully have provided a new avenue for people who are looking for help and starting new businesses.
Anthony Verna: Wonderful. And Barry, you're one of the other principals of the NESSA groups. So go ahead and say hello.
Barry Kolevzon: (00:32) Hello. It's a delight to be here and we have some information that we'd like to mention to you to see if it would help you. And we're very excited about this.
Anthony Verna: (00:45) Great. And also with us is the patent agent of the NESSA group. Wil Jacques, how's it going, Wil?
Wil Jacques: Everything's going fine. It's a pleasure to be here and hopefully we'll be able to share some information that'll be helpful to people.
Anthony Verna: I know that we will, Justin as a part of the brand consulting side of the NESSA group. How you doing, Justin?
Justin Tripodi: I'm doing very well, Anthony. Thank you. I think it's going to be quite fun to share with you how we kind of tackle the jungle of small businesses and startups leading them to success today.
Anthony Verna: Oh, I like that analogy. It's a jungle out there for small businesses and startups and a group like the NESSA group is meant to help those businesses find success, find goals. Jim, one of the things you've told me in the past is that starting and running a business is the ultimate team sport. Unlike your Giants. I'm very sorry, sorry about that. But talk to me a little bit about that ultimate team sport about starting and running a business.
Jim Huerta: (01:45) Well, I mean I've been certainly a jock all my life and I look at it, of success in my career, whether it be in sports or in business, has been because they were teams who understood their plan, who knew how to execute those plans and stay on top of what they were doing. And I think a lot of failures that have caused, and the Giants are a good example. There's a team has a playbook, they’re just not executing and then not having the leadership that they need to really become a powerhouse in what they're trying to accomplish. Though I do believe that business is a sport and if played well, it could be very successful.
Anthony Verna: (02:25) Barry, what are you looking to do as a consultant for the small business? What's your goal for that business?
Barry Kolevzon: (02:34) My goal is to save them for their own folly and starting up a business by not really knowing what they want to do. Most of the time says, let's start a business. And by the way, what is the business that we're going to start? They don't make definitive questions that have to be answered. They go, they get their best pal, bring them on because they know him and he's a dud and he hurts the whole company that they're starting up. They don't plan ahead philosophically, they don't have money, which is hard to run a business when you don't have any money.
Anthony Verna: Oh, don't we all know that?
Barry Kolevzon: Yes. And, but they do it worse. You know, most of them fail. This statistic is that 2 to 3% of startup companies succeed. The rest of them go down the drain.
Anthony Verna: (03:34) Justin, how can a group like this help a small business be realistic about expectations?
Justin Tripodi:
In this episode of the "Law & Business" podcast, Jim Cushing and Anthony Verna talk about judges. In a recent video blog post, Anthony Verna talked about one judge helping to settle one trademark and copyright infringement lawsuit.
Sometimes, judges are able (under the rules of procedure of their court) to aid the parties in litigation to settle their lawsuits. Jim Cushing and Anthony Verna talk about some of the cases both have had in which judges have helped and have hurt in trying to settle cases. It is a little comparing and contrasting between family law (custody issues) and intellectual property issues and the different kinds of procedure and judges the two lawyers have experienced.
Here is a lightly-edited transcript of the podcast episode: Anthony Verna: All right, welcome back to the Law and Business podcast and welcome back, Jim Cushing. How are you doing, sir? Jim Cushing: How ya doing, Anthony? Thanks for having me back, it’s been a while. Anthony Verna: Hey, I know it's been a while, but the podcast is a little intermittent than I would like. So, thank you so much for being back. Recently I had an appearance in federal court in the beautiful city of Binghamton, New York, where they're so used to intellectual property lawsuits. To the point that the magistrate judge was asking me about, about a provision in the Lanham Act that is little used and the look of shock and horror on his face was something I don't think I've ever seen before. Jim Cushing: It’s never good when you're teaching the judge the law. Anthony Verna: That's true. But I think that happens a little more for me than for you, which led to this magistrate saying, okay, this is a trademark and copyright infringement case. It's something that he was fully admitting that he was not used to, but that there two magistrates in the Northern District of New York that have intellectual property expertise and experience and wondering if the parties would want to have one of those magistrates hold a settlement conference. Andin this particular case, my client was all for it because we're dealing with a pro se litigants. So, a litigant who's representing himself. Right. And as I'm sure you're aware a pro se litigant can be a little on the extreme side. Jim Cushing: Well, you know, they go into it thinking this is going to be my day in court and I'm going to go all the way and they don't really understand the process or where they've got a weakness. Anthony Verna: Exactly. So, I think this was a smart time that, um, that a judge is forcing us into settlement. And, of course, since then, I think the litigant has realized that yes, he's not going to be going all the way and he's not going to be really getting his day in court. And so, he's actually sent me a couple different settlement options since then. So have there been times when a judge has forced you, someone who's in family law into settlements that you think are good and help the case rather than dealing with litigation? Jim Cushing: I think that as I said, I'm a family attorney or you said I'm a family attorney and I think family is kind of unique in the legal field because it really, a lot of the times the object of a family case is someone who's not even in court, you know, your son or your daughter or whomever and obviously not in divorce, but in the custody or support context, sure. Is you're dealing with somebody who's not present, who's the object to the case. It's not just money or like, no offense to your practice, but like a copyright. It's like a real human being whose life is going to be affected. And when it comes down to it, we're trying to do what's best for that person and sometimes what's best for that person, it's not necessarily some legal one-upsmanship. It's just a practical consideration. And you know, when you have a decent judge, they look at this and they see the legal arguments from both sides, but they're also, if they're worth their salt,
Shad B. Ewart has been a professor and administrator at Anne Arundel Community College since 2001.
Prior to that, he was a professor of business at Mount Vernon College in Washington, DC. At Anne Arundel Community College, he has served as Department Chair and Director of Business Programs. As chair he designed the curriculum for the Business Support Specialist program and the Transportation Logistics and Cargo Security program. Many of his curricular innovations have been replicated in other parts of the college. Mr. Ewart has also served the college on a variety of committees including being chair of the Academic Forum and other college committees.
Professor Ewart has also been responsible for the design and developments of the first course to explore the entrepreneurial opportunities created by the legalization of cannabis for medical use in the state of Maryland. A number of students who have successfully completed the course have already found employment in the industry, have started their own businesses and in one case, own a dispensary. Professor Ewart is currently developing the first college credit program for those interested in entry level jobs in the cannabis industry.
Our full conversation transcript is below:
Anthony Verna: Okay. I am here with Professor Shad. You are, how are you doing professor?
Shad Ewart: I'm doing fine. Yeah, I it's nice to see you.
Anthony Verna: It's a pleasure to see you and talk to you as well. We're not big on introductions here, but just to be quick you're a professor and administrator at Anne Arundel community college in Maryland, correct?
Shad Ewart: That is correct. And Arundel was the, a wife of Lord Baltimore. So there is our connection.
Anthony Verna: And you are, a business professor, entrepreneurship professor, correct.
Shad Ewart: A business professor and department chair. I run the business management department here at Anne Arundel.
Anthony Verna: Wonderful. And as a part of this, you've created courses for entrepreneurship in cannabis.
Shad Ewart: Yeah. Started about, if you don't mind, I'll tell you a little bit of history here.
Anthony Verna: Please, please. Cause, to me, getting, getting into cannabis is just as interesting as the cannabis industry itself.
Shad Ewart: So I had a class here at Anne Arundel. It was called small business management. Uh, I taught that quite often and um, we focused on rain barrels, uh, here in there, Anne Arundel county. We are near the Chesapeake Bay and these people love their water. So saving debate, 55 gallons at a time. It was a, an interesting class that, um, uh, it was real. You can't just talk about widgets these days in college and, and, and the rain barrel class made it real. And I was getting these questions while I was teaching this class. And this goes back about five years ago. The students were simply interested in, in what was going on in the cannabis world. I think, uh, probably what they were looking at more was a, a Colorado, Colorado coming online, uh, with their medical program 2012 and 2014 with their adult use or recreational program.
Anthony Verna: That's what I was going to say. I think Colorado tends to be a unicorn for a lot of people.
Shad Ewart: It is. It is. And it's a unique, it's unique, uh, islands of legality in a sea of illegality. And we'll get that, uh, that statement there. But, uh, um, uh, the students were just interested in it. And I had a former student that had come back to the college to just visit and I asked him what he was doing and he, he mentioned that his father, uh, was a farmer out in California, uh, grew artismal lettuce. I have no idea how his dad got sick, though. His Dad got cancer and Tyler had to go out to California and take over the farm and he converted it to a medical cannabis farm, a licensed medical cannabis farm, uh, growing a,
In Episode 40, Anthony speaks with Vik Rajan, the co-founder of Phoneblogger.net.
Vik is also the creator of Inner Circles, the free LinkedIn networking add-on: Focus your time on engagement & reciprocity. Vik started Practice Marketing Advisors and its blog as he realized attorneys, CPAs, and related professionals required specialized marketing help that accounts for clients’ professional code of conduct, ethics, and model rules. Vik is a columnist for AICPA’s largest publication for accountants and frequently helps to present CLE classes through various Bar Associations. Vikram’s book, “365 Personal Brand Marketing Thumb-Rules” published in 2008, is available through any bookstore. Vik lives in Harlem, NYC.
Here is a full transcript of our conversation:
Anthony Verna: Welcome to the lawn business podcast. I'm here with Vikram Rajan. Vik, how are you doing today?
Vik Rajan: I'm well Anthony, how are you doing?
Anthony Verna: I'm doing all right. Thanks for coming on.
Vik Rajan: Yeah, thanks for having me.
Anthony Verna: So, Vik, you're the co founder of phoneblogger.net ,which is an internet referral service for finance professionals, accountants, and attorneys. How is it having professionals as your main consumer?
Vik Rajan: It's a lot of fun. You know, sometimes people it and like and you work with lawyers. "Why would you want to do that?" I think maybe you said that to me.
Anthony Verna: No, but
Vik Rajan: That's funny. I wanted to be a lawyer. I'm not an attorney, you know, full disclosure, but I was a political science major and did great in my con law class and had hopes and dreams of potentially going to law school, but ended up working with my dad right out of school. So I never achieved the ultimate American dream of being an attorney. But I love working with predominantly lawyers and, um, and really helping them succeed in their practices, growing their firm. It's a lot of fun. I mean, it's, I like what you guys do for a living. I liked that area of, uh, you know, I guess maybe I romanticize it. Maybe it's not awesome all the time.
Anthony Verna: I'll let you romanticize it all. All you want. I'll take that smoke.
Vik Rajan: I mean, it's, a lot of us grew up being, geeks and nerds and I tend to say that affectionately and I, and I very much, I can relate to that. So from that aspect, I like working with smart people.
Anthony Verna: Wonderful. And yeah, some of us are, some of us layers are geeks and nerds and, and, and you know, it was funny, my friend Doug, when I first was accepted to law school, he looked at me and he said, "This means you're not going to be a nerd anymore." And I looked at him and I said, "I didn't know that that would go away."
Vik Rajan: Yeah, yeah.
Anthony Verna: Phoneblogger quickly, what's, what's your business model and, and we'll go from there.
Vik Rajan: Yeah, sure. So in our clients, as you mentioned, they are, they're practicing professionals. They need to stay top of mind with your referral relationships, you know, out of sight, out of mind, out of referrals. So we help our clients do that. They're usually busy working with their clients. So a lot of the marketing stuff fall by the wayside. So phone blogging is kind of a term we made up. It's by which we brainstorm article ideas with our clients over the phone of course, and then set up a series of telephone interviews where if you can say it in five minutes, they can read it in five minutes. So they're are short five to seven minute telephone interviews on a variety of blog topics that we brainstorm. We audio record it, transcribe, edit and optimize those articles and then review
In Episode 39 of the "Law & Business" podcast, Anthony speaks to Connie Steele of Flywheel Associates. We talk to Connie about her "Agile Marketing" philosophy.
Marketing, Advertising, and Intellectual Property go hand-in-hand. Many clients of Verna Law have had frustrations taking their patents and trademarks and moving their ideas into the marketplace. Managing and adapting to change can be a daunting challenge. With business operations being more interconnected internally and externally, marketing and advertising require not just a macro view of your environment, but also micro-understanding of the unique way an organization runs.
This is the crux of Connie Steele's philosophy of Flywheel Associates and her Agile Marketing philosophy.
With over 20 years of experience working in start-ups, Fortune 500 companies, B2C and B2B businesses, Connie understands how to propel business forward by not only developing their business and marketing strategies but also ensuring the successful execution of those efforts.
Connie started her business strategy and marketing consultancy Flywheel Associates as well as her internationally downloaded podcast, the Strategic Momentum Podcast to help business leaders identify how to work through challenges commonly impacting organizations today. Her cross-industry, cross-functional experience has provided a unique perspective on what it takes to realize change in organizations. Having worked as a corporate executive and outside consultant, strategist, and project implementation lead, she’s seen the challenges from all sides that have inhibited people and the companies they work for from achieving their goals.
Connie fundamentally believes that no one solution fits all, which is what makes this discussion all the more pertinent. Marketing and advertising is a process of continuously learning, iterating, and adapting those solutions based on data-driven insights. It also involves combining that knowledge with what works best in an organization’s culture. She thrives off of working intimately with her clients to provide the insights that will create the catalyst for forward movement.
Because it’s about understanding the ‘how’ that will create the strategic momentum you are striving for. And with the right resources, businesses don’t just move forward, businesses will accelerate.
Law & Business - Episode 38 - Anthony sits down with the Rev. Mark Schaefer, the Chaplain of American University. Yes, that means that this episode takes a little different path than the usual episode of the "Law & Business" podcast.
Mark talks about his history from practicing law to being a member of the Methodist clergy. Mark also discusses some of his philosophy and how law and religion relate to each other.
Mark's book is The Certainty of Uncertainty: The Way of Inescapable Doubt and Its Virtue, published by Wipf & Stock. The book takes a look at our desire for certainty, explores the unavoidable nature of uncertainty, and reveals how embracing uncertainty and doubt is transformative for our selves and for our world. Of course, the book can be found in bookstores and on Amazon.
Rev. Mark Schaefer is the tenth University Chaplain in American University's history, appointed to the position in September 2016 after having served for 14 years as AU's United Methodist Chaplain. He is a graduate of Wesley Theological Seminary and is an ordained elder in the Baltimore-Washington Conference of The United Methodist Church. Mark has also been teaching as an adjunct professor in the Philosophy and Religion Department since fall 2006. He has also been a summer instructor in Biblical Greek and New Testament at neighboring Wesley Theological Seminary. Prior to his ecclesiastical career, Mark was a practicing attorney in the District of Columbia and is a graduate of the George Washington University Law School. Mark holds a B.A. and an M.A. in Russian Language and Literature from the State University of New York at Albany. A native of New York State, he was born in Buffalo and grew up in Center Brunswick, near Albany.
Here is the full transcript of the conversation:
Anthony Verna: Thanks for listening everybody. Welcome to the law and business podcast. We are recording in DC this week at chatter, the only podcast studio restaurant hybrid I've ever known. I'm here. Marc, you're recording. Thanks for recording for us. Yes, we are recording. We're rolling live right now. Our guest today is the American University chaplain, Mark Schaefer. Mark, thanks for, for being with us. Thanks for having me here. One of the, the most interesting facts about you and the reason why, why I have you here with me is because you used to practice law. Technically, I still do. I still, I still pay my bar dues so I still can hang a shingle outside my office I suppose. But yes, I don't practice nearly as much as I used to. I mean, this seems like a waste of money if that's correct. Well, it's, it's honestly it's so that because I know people are going to ask me for legal advice from time to time.
Mark Schaefer:It's to avoid committing malpractice by offering legal advice without the license to practice law. And you know, because if ever my family or friends gets into trouble, I want to be able to help them in some meaningful way. So that's why I keep the license up to date and that way I've got that in my back pocket.
Anthony Verna:So let's go here. How do you go from practicing law to, to a vocation? I mean, what changed? What, what clicked in your mind? What flipped there? I was going to ask how did I switch sides, which is a little unfair.
Mark Schaefer:I'm still a lawyer. I take that a little personally, but, honestly it was the intersection of questions of justice that did it. I was working in a law firm here in DC, a smaller practice, with an attorney who is very active in the DC voting rights movement. Um, and so we would have conversations about DC voting rights, about, um, possible solutions to the issue. And one of the things that occurred to me in our conversations was that there had not yet been laid a sufficient moral argument for district voting rights. And that is before you get to the legal and political solutions for how you enfranchise the citizens of the district of Columbia,
In Episode 37 of the "Law & Business" podcast, Anthony sits down with John Eastwood, partner of Eiger Law in Taipei, Taiwan. Anthony and John discuss "worldwide patents," a common misunderstanding that does lead to the scamming of those who have patents in a jurisdiction or wish to have patents in more than one jurisdiction. For example, Anthony discusses several companies that have recently asked him about obtaining worldwide patents. Then the topic turns to Matthew Whitaker, the former United States interim attorney general appointed to take the place of Jeff Sessions. For about 3 years, Whitaker had been on the advisory board of a company called "World Patent Marketing", a company that was shut down by the Federal Trade Commission in 2017 and forced to pay out about $26 million for bilking customers of WPM out of millions that they thought were going for registering patents and getting licensing deals. How did WPM bilk them? The invention-promotion racket is actually an old con, going back to the 1960s or so -- you put out ads promising to help inventors develop their ideas, get them into the market and to turn the inventions into money through license deals. The FTC has been shutting these down pretty actively since the 1970s, and Congress even passed a law in 1999 called the "American Inventors Protection Act" that put out a lot of disclosure requirements for invention-promotion firms, including their success rates, which in truth were pretty abysmal. They promise non-existent things like "global patents," take in money from inventors, barely review the inventions, do nothing about getting them registered while demanding more and more money -- until the inventors are sucked dry. Some of these poor guys took out loans and refinanced their houses. The FTC registered over 600 complaints from consumers. From the FTC complaint: "A few days after consumers submit their ideas in writing, salespeople typically call consumers and inform them that Defendants have accepted their inventions. and reiterate that they are great ideas. Salespeople ingratiate themselves with consumers and build up consumers' confidence through praise for their ideas. Salespeople represent that if consumers buy Defendants' invention-promotion services, consumers are likely to realize financial gain by licensing their future patents, or through the manufacture, distribution, and sale of their inventions in well- known stores, including Walmart. Salespeople often make projections about how much money consumers will make. Sales people may also talk about t he good consumers' inventions could bring to society." Also from the FTC complaint: "Defendants also generally fail to procure patents for consumers. Though Defendants use offshore drafting services and contracted patent agents and attorneys to file patent applications, those applications arc of poor quality, and are often not approved by the United States Patent and Trademark Office ("PTO"') on its first review. Requests for more in formation or corrections from the PTO on Defendants' customers patent applications often go unanswered by Defendants and their contractors, and eventually the PTO rejects the patent applications or considers the patent applications to have been abandoned. 33. In the end, after months or even years of stringing them along, Defendants leave most of their customers with nothing. A very few receive a patent, some receive an assortment of useless marketing materials; but none successfully enter into third-party licensing or manufacturing agreements brokered by Defendants, and none actually make money. Indeed, many of Defendants' customers end up in debt. or losing their life savings or inheritances, after investing in Defendants' broken promises." More from the complaint: "Defendants fail, in almost every case, to provide many of the other promised invention-promotion services, such as promoting consumers' inventions at trade shows and other events,
In Episode 36 of the "Law & Business" Podcast, Anthony and producer Marc Sterne talk about the MillerCoors lawsuit against AB InBev over its "corn syrup" campaign, which started during the Super Bowl. This episode (minisode? miniwebisode?) was recorded at Chatter in Washington, D.C. Thank you, Marc for recording and helping with all the episodes at Chatter.
MillerCoors is suing Anheuser Busch InBev, seeking injunctive and other relief for what it calls "a false and misleading advertising campaign targeting Miller Lite and Coors Light."
It's the latest step in a brewing marketing feud that began during the Super Bowl. Bud Light, in three spots that aired during the game, attacked MillerCoors' Coors Light and Miller Lite brands by name, noting that those brews use corn syrup.
MillerCoors, in its complaint filed in federal court in Wisconsin, said the ads are meant to deceive beer drinkers into thinking its beers contain corn syrup and high-fructose corn syrup in order to boost sales of Bud Light. Plus, it says the ads dilute its trademarks, which would be in violation of the Lanham Act. MillerCoors seeks a halt to the "false and misleading" ad claims and "willful trademark dilution," saying that the ads have diluted the goodwill associated with its brands and have damaged the reputation of the brands.
Anthony and Marc discuss the complaint, the false advertising claims, the possible harms to the MillerCoors trademark, and defenses for AB.
"AB's purported rationale for this campaign, 'transparency,' is a classic example of corporate double-speak," says AB's complaint.
A predicted defense for AB is going be the plain meaning of the words in the advertisement. AB is saying that its Bud Light is not brewed with corn syrup and that MillerCoors' Coors Light is. Predictably, AB will just stick with the plain meaning of those words and that consumers should only hear the words in their denotations, and not their connotations, which is what MillerCoors' lawsuit focuses on.
Smaller businesses need to understand that advertising and the use of a competitor's trademark do come with risk. Managing the risk is necessary and understanding the limits of what is not a deceptive and not a misleading ad are necessary also.
Here is a lightly-edited transcript of the podcast episode:
Anthony Verna: Welcome to this mini episode of the Law and Business podcast. We're still recording from Chatter in DC. How you doing, Marc? Marc Sterne: I'm doing great. Technically, is this not a mini webisode? Anthony Verna: Oh, I see. Okay. Marc Sterne: I'm just trying to stay hip man. Anthony Verna: I know, I know. Marc, thank you for recording with us. And I know we've got a question from the audience. Marc Sterne: Yes, we do have a question regarding the lawsuit involving Budweiser, Miller Coors and corn syrup. Anthony Verna: Let's talk about this particular suit for a second because it's Miller Coors versus Anheuser Busch filed in federal court in Wisconsin and yes, it's about the no corn syrup ads. So, went from dilly dilly and do you have an impression of that one? Marc Sterne: I don't have it. I do like the ads. I don't have an impression for the dilly dilly. I hated them to start. And then they grew on me and I was like… Anthony Verna: No, I could easily see that because it's a very, it's a well-crafted campaign that, of course, has now mutated into a second campaign. And Anheuser Busch even did some really fun things with that ad campaign. Like when there was a trademark infringer on a dilly dilly, Anheuser Busch actually sent a guy in a knight's outfit and he even opened a scroll and he read aloud the cease and desist letter. Marc Sterne: And that's how you deal with issues. Anthony Verna: It was absolutely fantastic. And that turned into a viral video, so you could even find that online, but it's now mutated from this dilly dilly, but keeping the same characters and it started during th...
In Episode 35 of the "Law & Business" Podcast, Anthony talks (all by himself) about why a person or business must register a copyright in a work that qualifies under copyright law.
Yes, the Supreme Court recently ruled that a copyright infringement lawsuit can only be instituted after registering a copyright. That blog post was already written.
However, Anthony is all by himself in Episode 35 of the "Law & Business" Podcast in order to discuss all the reasons why one needs to file a copyright and have that registration.
The requirement to have the registration before any lawsuit is started.Cataloging.Statutory damages.
Ease of cataloging, licensing and assigning. This is a thought that not many people have. If a work is registered, then there is a registration number. That number is a simple reference in licensing, use, sale, and transfer agreements.
Damages. Statutory damages require the registration. Only a person or business who has registered a work with the U.S. Copyright Office before the infringement (or within three months of publication) may receive statutory damages.
Statutory damages are damages that can be awarded by a judge or jury to a copyright owner in a copyright infringement suit. They are called “statutory damages” because the range of damages is established by the statute, specifically section 504 of the Copyright Act. Statutory damages are usually between $750 and $30,000 per work, as determined by the court. However, the damage amount can be increased up to $150,000 per work if the infringement is found to be willful (intentional). If the infringement is “innocent,” meaning the infringer did not know they were violating copyright law, the damages can be reduced to a minimum of $200 per work (if the work did not contain a proper copyright notice).
Statutory damages are awarded “per work” infringed (i.e., each individual copyrightable work, like a single song, book, or photograph). This means that if five songs, or five photographs, are infringed, the copyright owner would be able to recover a statutory damage for each one, for a total of five awards. So statutory damages of at least $750 per work, for five works would yield a minimum (non-innocent) total award of $3,750 ($750 x 5 songs = $3,750) or a maximum (non-willful) award of $150,000 ($30,000 x 5 songs = $150,000).
Awards of Actual Damages in a Copyright Infringement Case.
Sometimes known as compensatory damages, "actual damages" consists of the dollar amount of any demonstrable loss the copyright owner suffered as a result of the infringing activity. This loss may be from lost sales, lost licensing revenue, or any other provable financial loss directly attributable to the infringement.
17 U.S.C. § 504(b) provides: "The copyright owner is entitled to recover the actual damages suffered by him or her as a result of the infringement, and any profits of the infringer that are attributable to the infringement and are not taken into account in computing the actual damages. In establishing the infringer’s profits, the copyright owner is required to present proof only of the infringer’s gross revenue, and the infringer is required to prove his or her deductible expenses and the elements of profit attributable to factors other than the copyrighted work."
Usually, plaintiffs in infringement actions would offer expert testimony to establish their actual financial damages to the court.
Awards of Infringer's Profits.
This second form of damages consists of any money made by the infringer as a result of the infringement. These damages are awarded only if they exceed the amount of profits lost by the copyright owner (actual damages) as a result of the infringement.
Here is a lightly-edited transcript of the podcast episode:
Welcome to another episode of the Law and Business podcast. I'm Anthony Verna. I'm here by myself today because we're going to be talking a
In Episode 34 of the "Law & Business" podcast, Anthony Verna talks to John Eastwood, a partner at Eiger Law in Taipei, Taiwan. They discuss the issuance of the Trump trademarks in China, if there appears to be any issues outside of the normal issuance of trademarks in China, and what any business moving into China should keep in mind about its trademarks.
Ivanka Trump probably didn't get special treatment from the Chinese: Based on what John Eastwood has seen, it appears that Ivanka's trademark applications (which will not have much use for her given that she's announced that she's shutting down her brand) were approved in a fairly normal time frame.
The Trump Organization probably did get special treatment, but that doesn't mean that they shouldn't have gotten the trademarks: The first part of the case involves the Trump Organization's application for construction-related services that had languished for something like 10 years of struggles against the weight of several Chinese bad-faith filers who had apparently been using the "TRUMP" name to market all sorts of products.
Now, anybody who's doing business in China knows that there's a big industry. Chinese companies and individuals are extremely fast to file for iconic western marks -- or even not-so-iconic marks. (Eiger Law and John Eastwood have a lot of clients that are up-and-coming or niche brands, and even they have problems.)
To some folks, it looked suspicious that China approved Trump's trademark in the first month he was in office as president -- it looked bad, like "oh, now you're president of the United States, here's your trademark." This caused folks to worry about there being a breach of the Emoluments Clause, the part of the Constitution (Article 1, Sec. 9, Para. 8), which prohibits federal officeholders from getting anything of value from a foreign state.
Be there also must be an examination at what was happening right before Jan. 2017.
In December 2016, Michael Jordan got good news in a 15-year struggle to get back the Chinese name commonly used to refer to him -- "QIAODAN" -- from a Chinese company that used the name to sell sports clothing very successfully. Why? Because when Nike started selling Air Jordan products in China, only the English name "JORDAN" got registered by them -- they didn't bother to go for the Chinese name that everybody in China who cares about basketball chose to call him. The lesson for trademark owners is not to skip registering a Chinese name.
In October 2016, C.F. Martin & Co, the nearly 200-year-old company that's made the iconic acoustic guitars used in blues, country, folk and rock, famous around the world, finally got back its marks after years of pursuing action through official channels. This was a case that had caused profound annoyance and frustration for IP professionals working in China, as it was used for years as an example of the Chinese government allowing a copycat local company to brand-jack a famous American brand. Part of the problem perhaps was that the old measure for "famous mark" protection was whether you were a true household name in China -- you couldn't just be famous within an industry, among musicians or music lovers, you had to be what John Eastwood used to call "Coca-Cola" famous but now could probably say is "Jordan" famous or "Trump" famous. But the trademark law was amended a few years ago to refer more generally to "bad-faith" trademark filings, and that gave some more room for action.
OK, so back to Trump -- within a relatively quick period, one can see China clearing away a bunch of these cases on their appeals docket that, frankly speaking, were an embarrassment to the country. And you get them releasing their decision in January 2017 when he'd just become president for that mark for construction services, the one that had been part of the decade-long battle.
So where was the special treatment?
Well, a couple of months later in March 2017,
Diane Kennedy, CPA, joins Anthony Verna for episode 33 of the Law & Business podcast.
Diane has written a dozen or so books and had the fortune of hitting the New York Times, Wall Street Journal and Business West best seller lists with some of them. That’s even more remarkable because her books are about tax, accounting and investing. They aren’t your typical beach books.
Diane and Anthony talk about the need for corporate structuring and the possibility for licensing within holding and parent-child companies for intellectual property use.
Diane does recommend having holding companies that own IP and fully discusses the asset protection that is in place for the business. Ownership and licensing matter greatly to the tax ramification.
Here is a lightly-edited transcript of the podcast episode:
Anthony Verna: Hey everyone, welcome to the Law and Business podcast. We’re conferencing with Diane Kennedy, CPA as everybody knows her, right?
Diane Kennedy: Well, I don't know about that, but your listeners will soon meet me.
Anthony Verna: Yeah, but nobody just calls you Diane. It's always Diane Kennedy, CPA.
Diane Kennedy: Yeah, typically. Yeah, I make my kids call me that too. So, just so you know. I’m kidding.
Anthony Verna: As you should, that power trip, wherever your kids is always important. Yes. Says the guy who doesn't have any. So, Diane, why don't you tell everyone a little bit about your practice. I know you can be found over at ustaxaid.com but a little more than a plug. Why don't you tell everybody about yourself?
Diane Kennedy: So I've been a CPA for a lot of years and I have a practice that focuses exclusively with small business owners and their businesses, obviously, and or real estate investors. So, with that focus, then we're able to really just hone in on how do we help you with strategies that build up the value of your business, create cashflow, and most importantly, how do you legally save on taxes? And I also write a lot of books. My latest is Tax Again 2018: How to Brace for the Trump Tax Plan. And the, the whole viewpoint of books I write is it's not an argument about whether tax law is right or fair or overthrow this or whatever. It's just simply how do you make use of the things that are in law right now? The rich have lots of advisors and they pay a lot of money for those.
The average guy who's got a business and is working hard or trying to build up some real estate investments, they can't afford the team of experts that the rich have. And yet those same exact legal tax loopholes exist for everyone as a business owner or a real estate investor. So, it's just simply taking that arcane language and changing it so it's more accessible to everybody. That's the idea. By the way, I just turned down a client who had $1.1 billion in assets. So that's it. And I should say net worth of 1.1 billion simply because he didn't fit the model. And it's like, you know, you can hire a lot of really expensive people. You don't need me, but I want to work with the guys who can't get the experts or can't afford them normally. So, these are ways that we can provide you those services most efficiently.
Anthony Verna: Wonderful. So today, let's talk a little bit in my wheelhouse. Let's talk a little intellectual property. And one of the discussions I like to have with my clients is I say you need to sit down with your business’ CPAs and you need to talk about what is right for your intellectual property. Meaning, is it right for your company to spin off a parent or spin off a child, some kind of sibling company? And what does that mean for your taxes? And the usual setup is that intellectual property sits in a holding company and in the regular company there's a licensing agreement so that a payment is made from the original company to the holding company for a license. And then this way there's a payment made and there are tax ramifications. None of which I ever handled in my practice. So, Diane,
It's Episode 32 of the Law & Business Podcast.
Anthony Verna and Wil Jacques talk about the possibilities of a provisional patent application (PPA). Many potential clients call asking for a provisional without really understanding that the provisional patent application only gives a one-year extension to the deadline of filing a full patent application.
Law & Business Podcast with Wil Jacques
Pros of a provisional:
a way to initiate the patent process is because they are cheaper to prepare (because there are no formal requirements) and the filing fee due to the United States Patent Office at the time of filing is only $130 for small entities (i.e., individuals, universities and companies with 500 or fewer employees), which saves you several hundreds of dollars compared to the filing fees for a non-provisional patent application. Indeed, the filing fee is even less — just $65 — if you qualify as a micro entity cost less to prepare from an attorney fee perspective because there are no formal requirements, which means we can focus on disclosing the invention in its full detail while still preparing an exceptionally detailed application that costs a fraction of the cost of a nonprovisional patent application it is a filing that counts in a first-to-file scheme - used to secure an early filing date A PPA is also held in confidence with the USPTO, even if it is not converted to a regular application. More specifically, a PPA will not be published by the USPTO unless a later filed published application or issued patent claims the benefit of the PPA’s earlier filing date. no requirement that a PPA include any claims to an invention.
35 U.S.C. 112 (a). Those requirements can be divided into an “enablement requirement” and a “best mode requirement.” Section 112 (a) specifically states:
The enablement requirement
“the specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and”
The best mode requirement
“shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.”
In other words, a PPA must disclose enough information that a person having ordinary skill in the same technology would recognize that the invention claimed in a later-filed non-provisional application is described in the PPA upon which it relies. If the PPA description is inadequate and does not meet these requirements, than a later filed regular application cannot claim the benefits of the PPA’s earlier filing date.
Cons:
pre-filing disclosures permitted by the USPTO may in fact disallow patenting in some foreign countries. Furthermore, even in the U.S., if the pre-filing disclosures are made more than one year before the filing date of the provisional patent application, patenting in the U.S. is likewise precluded. Although the initial cost is low, the required follow-up non-provisional filing fee means that the applicant is actually paying two fees to achieve what an initial non-provisional filing might have accomplished. The provisional patent application preserves the date and renders temporary protection but does not fully protect the invention unless and until the subsequent non-provisional filing or conversion filing meets all of the formal requirements for patent protection. Accordingly, some applicants may gain a false sense of patent protection when they in fact may wind up with no protection at all if the latter application or conversion does not meet with the examiner’s approval (No formal examination and no issuance)
Here is a lightly-edited transcript of the podcast episode: Anthony:
Okay everyone. Welcome to the Law & Business Podcast. Anthony Verna here with our patent agent. Wil Jacques, how are you doing?
Wil:
Law & Business Podcast with Wil Jacques
On the new episode of the Law and Business podcast, Wil and Anthony talk about when clients have an idea.
Episode 31 starts with the first words many clients and potential clients have: “I Have an Idea”. What is next in the intellectual property development process? What are the first questions that a potential client is asked in a consultation?
Law & Business Podcast with Wil Jacques
-What is your business plan?
-Is this a product or is this an idea that deserves patent protection?
-Patent: What makes this idea or product useful? -Utility: How do we know that a product is new?
-We need to do a search. Patents. Patent applications. Journals. Pictures. Videos. Can this invention be found in action?
-Looking at keywords, concepts, elements of the idea or product. -Are there differences between what is found and what is disclosed by the client? -Looking for suggestions in the prior art that is relevant to see if any prior disclosures teach the invention that the client has developed. -Looking for material that is new, useful, and not disclosed.
-Design patents: Ornamentation may be different. The design has to be different, even if the utility is the same as another product.
-Copyright law: Can a product fall under copyright law (for example, a three-dimensional work of art)? This protection is of what is not useful in a product. For example, a lamp that has a statue. So the light bulb is on top of the statue. So there is a portion of the product that is a work of authorship; it is a work of art and would fall under copyright law. But there is also a useful part of the product (the lamp) which does not fall under copyright law.
-Trademark law: Branding and selling a product. Think of a box of Pepperidge Farm cookies. In these mixed boxes of cookies, the company name is a trademark – Pepperidge Farm cookies. However, all of the brands of the cookies are trademarks, also. Be it Milano, Chesapeake, Chessmen, etc. Customers are able to create the relationship of the brand to the product. Trademarks can include color, sounds, shapes.
-Trade dress law: How the packaging of a product matters and creates that relationship to consumers.
Wil and Anthony talk specific examples of intellectual property development and enforcement. Here is a lightly-edited transcript of the episode: Anthony Verna:
All right, everyone. Welcome to the Law & Business Podcast where we continue with our quest to talk more about intellectual property. It is a journey. I have to say that when I litigate, I know a lot of litigants are looking for that instant response and it's not an instant response. It's a long journey. When people file a trademark, they want that instant response, but it's not an instant response.
It's a six month journey.
When we file a patent, it's not an instant response.
Wil Jacques:
I have to agree with you, Anthony. It's certainly not in the first question that comes out of my inventors’ mouths or can I get a patent? Well, we'll have to see.
Anthony:
This is Anthony Verna. I'm here with Wil Jacques, patent agent for Verna law. And we're talking about ideas today. What happens when somebody calls our office and says, “I have an idea”?
Wil:
This is the foundation, this is where it begins.
Anthony:
When a client tells me or potential client tells me, “I have an idea”, I ask what the idea is, I then ask, what's Your Business Plan? Because ultimately after everything we're going to talk about, I want a client to be able to say, yes, I want to make money on this and I want to sell it and it's going to be sold to people A of X ages Y incomes, and they're going to have a need for this product because enter your reason here.
Wil:
Agreed.
Anthony:
If I don't hear that, I'm going to try to do some little coaching and counseling so I can get some answers like that. Just to kind of plant ideas in the head.
It's Law & Business Episode 30: The Costs of Litigating.
Law & Business Podcast with Wil Jacques
Wil Jacques, patent agent to Verna Law, P.C., and Anthony Verna, managing partner of Verna Law, P.C. talk about the costs of litigating and the benefits of litigating. They talk about damages in patent infringement, copyright infringement, and trademark infringement cases.
In patent infringement lawsuits, there are two overall theories: Lost Profits and a Reasonable Royalty for infringement. Since 1952, 35 U.S.C. § 284 has governed the award of damages in patent cases: Upon finding for the claimant [patent holder] the court shall award the claimant damages adequate to compensate for the infringement, but in no event less than a reasonable royalty for the use made of the invention by the infringer, together with interest and costs as fixed by the court. Lost Profits
Lost Sales: Lost profits from sales are the classic and most common type of lost profits damages. Lost sales constitute sales that the patent owner failed to make due to the infringement, as well as sales the infringer made that the patent owner would have made but for the infringement. Price Erosion: Price erosion damages arise where the patent owner was forced to lower its prices or offer discounts to meet the infringer’s competition and where the patent owner was unable to raise its prices due to the infringement. Unpatented Items: A patent owner may seek lost profits on unpatented items. For example, if the accused product is a multi-function device of which the patent covers only one feature, the patent owner may seek lost profits for the entire device. Entire Market Value Rule: The “entire market value rule” is used to determine if a patent owner can recover lost profits where the patent covers only a feature of a multi-faceted device – the patent owner must prove that the patented feature drives demand for the overall device. Future Lost Profits: Projected (or future) lost profits are losses that the patent owner expects to incur in the future due to the infringement. The importance of future lost profits is demonstrated by its potential for large awards, as the patent owner may be able to project substantial losses far into the future. Damage to Reputation and Goodwill: Another lost profits theory that patent owners have advanced, albeit infrequently, is damage to the reputation and goodwill of the patent owner and/or patented product. The patent owner argues that the infringer’s product is inferior to the patent owner’s patented product and, as a result, has caused damage to the reputation of the patented product or the patent owner. In other words, the patent owner claims it has suffered damage because of the inferiority of the infringing product.
Reasonable Royalty Damages The term “reasonable royalty” is susceptible of two definitions. The first is an actual licensing rate, to which the patent owner and a licensee would have negotiated and agreed entirely apart from any litigation or damages question. This can be thought of as the “reasonable royalty” used in § 284. This negotiated reasonable royalty is the minimum amount of patent damages the patent owner can recover, equal to what the patent owner would have negotiated as a royalty in the first place. The second meaning of “reasonable royalty” applies whenever the patent owner is unable to prove actual damages (i.e., its lost profits). The money awarded to the patent owner (however it is computed) is usually called a “reasonable royalty.” Interest and Enhancement of Damages A patent owner may also obtain relief in the form of collateral assessments, which include prejudgment interest and discretionary enhancement of damages up to three times the amount found or assessed – enhancement may be based on willful infringement or litigation misconduct. (A separate sub-page in this damages website addresses prejudgment interest and post-judgment interest.) In exceptional cases,
On Episode 29 of the Law & Business Podcast, Wil Jacques and Anthony Verna talk about copyright infringement, trademark infringement, patent infringement, and some thoughts to avoid infringement.
What one needs to do is to assess the amount of damages that may be awarded because lawsuits can be expensive.
Copyright infringement occurs when a copyrighted work is reproduced, distributed, performed, publicly displayed, or made into a derivative work without the permission of the copyright owner.
Trademark infringement is the unauthorized use of a trademark or service mark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services.
Patent infringement is the commission of a prohibited act with respect to a patented invention without permission from the patent holder.
Wil Jacques, Patent Agent
Wil discusses the need to understand how a product functions and works and solves problems. That deep dive into the inner workings of a product is the only proper method to draft a patent and understand who may be infringing on that patent.
Counterfeiting is the act of creating a fake. Counterfeit products are fakes or unauthorized replicas of the real product – especially in relation to the trademark and use of the exact, same trademark.
Wil and Anthony also talk about monitoring intellectual property.
Wil Jacques: https://www.linkedin.com/in/wiljacques/
Anthony Verna: https://www.linkedin.com/in/anthonyverna/ Here's a lightly-edited transcript of the episode: Anthony Verna:
Welcome to the Law & Business Podcast. We keep continuing with season two. We're here with my own patent agent. Wil Jacques, please say hello.
Wil Jacques:
Hello. Good to be here again.
Anthony:
Thanks for making some more time to come on.
Wil:
Always nice to talk with you, Anthony. We have such a great topic. I couldn't afford to miss this one.
Anthony:
So both you and I have had to deal with infringers and counterfeiters; the possibility of copying in some aspect in our past and our current lives. And what I want to do today is talk about either finding, dealing with infringers counterfeiters and some solutions that you and I have seen throughout our careers.
The first thing I do want to talk about though is defining what infringement is and on a soft IP basis in copyright law infringement is basically an authorized copy of a work that's protected under copyright law.
That unauthorized copy, it could be made, it could be sold, it could be publicly displayed. Any particular amount of rights that's unauthorized in a copy, that's a copyright infringement. Trademark infringement is very similar. Now it's a little different because in trademark law we do see similar trademarks, not the same and trademark could infringe and certainly there has to be some kind of economic relationship between the plaintiffs’ and defendants’ marks and their products.
We kind of have a formula that we look at to determine if there is infringement, but basically infringe on means similar mark on similar goods and services. And we also have some other trademark thoughts such as trademark dilution, which is somehow harming the value of a famous trademark. So that's what it is on the softer side of IP, on the harder side of IP, how do you look at similarities in product fest patented and a product that might copy or have some similarities to that?
Wil:
Oh, I got to say that a, you've made a comment and I had to laugh first when you talked a little bit about the amount of damages or money that would be there. Certainly this is not a game you want to get into unless there is sufficient dollars on the table, too.
Anthony:
Absolutely right. Make it a worthy effort.
Wil:
But, I would say that, in what we would call the hard IP world, or patents, in particular, we kind of parallel what you do: essentially copying is copying.
In the "Law & Business" podcast, Episode 28, Raj Goel of Brainlink International talks about Operational Maturity in business.
What is Operational Maturity and what are the levels of Operational Maturity (OML)? The difference between the OMLs of businesses depends upon the standardization of the internal and external processes they employ, their competency in the services they provide, and the value they place upon industry investments. A firm with a low OML (level one or two) generally lacks the uniformity of resources and knowledge of operations to run a business effectively.
Businesses with level two OMLs have generally reached a point where processes are more standardized and repeated but complete uniformity has not been achieved.
In this podcast episode, Raj Goel talks about where his business, Brainlink International ranks on the OML chart, what his business did to climb to that level, and what can still be done to grow.
At a level three OML, the business has established an overall consistency throughout the organization and within the services it delivers. The business is capable of developing strategic plans to drive its services as opposed to merely keeping them afloat.
Businesses that have reached the operational maturity of a level four or five have learned to leverage their industries' products or services effectively. The firm will deliver consistent service and support, a stable business environment, and proactive monitoring of its services or products.
The difference between a level four and a level five business exists primarily in the more mature businesses' ability to enhance its customers gain a competitive edge within their industries. A firm with a high operational maturity level will act as a trusted provider and a trusted partner for its customers or clients.
Raj Goel also discusses Brainlink's need for standard operating procedures (SOPs) and how following standard operating procedures helps build efficiencies and helps continue to grow the OML of Brainlink and build the business overall.
Raj Goel, CISSP, is an author, entrepreneur, IT expert and industry leader that specializes in the field of cyber security and privacy law. As founder of Brainlink, Raj has spent more than 20 years developing proven IT solutions for a range of high-profile clients in the financial, construction, architectural and property management industries.
His uniquely developed SOPCulture Process (winner of 2015 SmartCEO’s Culture Award) has changed the way his clients think about documentation by showing them how to develop processes for documentation of each and every task, allowing them to rapidly increase productivity, eliminate redundancies and increase quality of service to their clients.
Here's a lightly-edited transcript of the podcast episode:
Anthony Verna:
Welcome to the Law & Business Podcast. I am here with Raj Goel from Brainlink International. How are you doing, Raj?
Raj Goel:
I'm doing great. How are you doing Anthony?
Anthony:
I am well, thank you Raj. Why don't you tell everybody who's listening about Brainlink?
Raj:
Brainlink is based in New York City and is an IT and cybersecurity consulting firm. We work with hedge funds, construction firms, and fast-growing businesses that are operationally mature/
Anthony:
And I want to get into this topic of operationally mature businesses. You and I were having dinner and we talked about it for a little bit and it was a fascinating topic to me about how a business owner thinks about his or her business. There is a difference between that operational maturity and not having that operational maturity. So why don't you give me your general thoughts on, on the topic?
Raj:
As far as the beginning, it's just not my revelation.
General thought: There's a whole body of business literature that talks about OMs, operational maturity levels, and essentially there are five stages in every business is life cycle,
The special guest in Episode 27 of the "Law & Business" podcast is John Eastwood, a partner at Eiger Law in Taipei. John and Anthony discuss the issues that many American businesses have when they start production of their products in the Greater China Market.
As a senior partner of Eiger’s Greater China Practice, John has headed up the firm’s intellectual-property and technology practice for the past several years, assisting clients with trademark, patent, copyright and trade-secret matters. In John’s role chairing the the European Chamber of Commerce Taiwan (ECCT) Intellectual Property Rights Committee for the past many years, he has worked closely with the European Commission, U.S. State Department, prominent academics and local government authorities on intellectual-property policy matters.
John Eastwood, Partner, Eiger Law, Taipei
Our first topic is about having a sourcing agent, distributor, or other local agent in China file a trademark application for the American business. There are several pitfalls in having that local agent file a trademark application. Chances are the trademark application is badly drafted, only covering part of the product line or part of the scope of the planned-for business activities. John and his firm have seen filings that completely omitted key products and service activities because even a well-intentioned trading counterparty may not understand the business well. Local trading counterparts often don’t know how to respond to queries from the Taiwan IP Office (TIPO), meaning that they miss deadlines or don’t know that some of these TIPO queries can be easily enough resolved.
This issue does not just happen in the the Greater China Market. For example, Anthony discusses a case in which his firm represented a Germany company, whose local agent filed trademark application in his own name and was required to be a party in a trademark cancellation proceeding, despite not having worked for the company for several years.
Another topic John and Anthony discussed was the failure to supervise the manufacturing company in the Greater China Market. There is some truth to the notion that when a foreign company makes goods in China, that business is basically training its own future competitors. John and Anthony discuss how a business owner is able to make sure those issues do not begin. After all, John's view is his firm has found that the pool of counterfeit manufacturers includes formerly authorized manufacturers, whose exact skills in making authorized products in the past make them able to make dangerously close counterfeits of products in the future.
When a local manufacturing partner starts to realize that the American business is not paying attention, that’s when they start to evaluate their own rational self interest in the form of under-reporting, running extra lines of unauthorized product, inflating costs, or other such games. Typically, such situations continue onwards until finally a day of reckoning comes where the European brand owner terminates the local manufacturer, whereupon the local manufacturer speedily moves on to making straight-out counterfeits of the product. John gives some tips on how to keep that manufacturing company in the Greater China Market happy. Relationships still matter and having feet on the ground helps build those relationships.
This was another fun episode to record. It is chock full of excellent advice for any company trying to move outside of their home market and bring their manufacturing to the Greater China Market.
Here is a lightly-edited transcript of the podcast episode:
Anthony Verna: All right, and welcome to the Law and Business podcast where we continue our series here at the International Bar Association’s annual convention from beautiful Sydney, Australia. I'm here with John Eastwood. How you doing, John?
John Eastwood: Hey, g’day.
Anthony Verna: Wow. After we just had an Australian solicitor on last time,
In the Law & Business Podcast Episode 26, Australian barrister Ed Heerey helps to compare U.S. and Australian Rights of Privacy and Publicity law and issues.
This is one of the most fun episodes of the podcast. Anthony visits Ed Heerey, an Australian barrister, to discuss Australian rights of privacy and publicity. Anthony and Ed compare famous Australian cases with famous American cases.
Ed Heerey, Barrister, Australia
Australian rights of privacy and publicity are completely judge-made, stemming from Paul Hogan (famous as Crocodile Dundee) suing an Australian company for a parody advertisement that it made.
Here is the original scene from "Crocodile Dundee":
Here is a terrible advertisement for a shoe company in Australia. But, as one can see, the mise-en-scene is taken from "Crocodile Dundee."
In this case, the majority of Australian judges found the defendants liable in "passing off." The relevant issue on appeal, according to the majority, was "whether a significant section of the public would be misled into believing, contrary to the fact, that a commercial arrangement had been concluded between the plaintiff and the defendant under which the plaintiff agreed to the advertising", a question which was co be answered in the affirmative. Another judge in the case said that character merchandising "should not be seen as setting off a logical train of thought" in the minds of the public, and its importance lies in the creation of an association of the produce with the character, not in making precise misrepresentation.
Accordingly, to ask whether the consumer reasoned that the plaintiff had authorized the advertisement was to ask a question which was "a mere side issue." What mattered was the fact that the consumer wished to identify with the character or personality and was moved "by the desire to wear something belonging in some sense to Crocodile Dundee (who is perceived as a persona, almost an avatar, of Mr. Hogan)." According to the majority, the arousal of such a feeling by Hogan himself could not be regarded as misleading, since "the value he promises the product will have is not in its leather, but in its association with himself." An unauthorized advertisement, on the other hand, would be misleading since it would lack the valuable association between the product and the celebrity.
This is very similar to the Vanna White case from California. The difference is that there are statutes in California (and in almost all U.S. states). However, the California court similarly ruled for the plaintiff in stating that the advertising (despite not using any aspect of the actual person, just hinting at/parodying the person). Click here for more on that ad campaign from Samsung. Click here for the court's full decision.
Samsung Ad that Vanna White sued about
These cases provide ripe discussion for debate on the rights of privacy and publicity and how Australian and American courts may appear to treat them similarly or differently. This is a fun episode.
Next time Ed is on the podcast, we'll be talking about an advertisement featuring former Olympian Ben Johnson in Australia that was banned (and why it would not be in the United States). Here's that advertisement:
This is our first "Law & Business" podcast episode recorded during the International Bar Association annual convention. This year it was in Sydney, New South Wales, Australia.
With John Rubinstein of Rubinstein Phillips Lewis Smith Ltd. of London, Episode 25 of the "Law & Business" podcast covers differences between the American and British trademark systems and differences in law. One particular example is "The Prince of Comfort" (originally in German) and how it may have a lack of distinctiveness in. John Rubinstein had interesting issues in registering "GQ" as a trademark.
This was John's first podcast episode ever - and he did a fantastic job. John and Anthony also discuss how other trademarks are registered and how strong, for example, the "Burger King" trademark is. (Please note: In Australia, it's Hungry Jack's, so there's no doubt that the trademark there is arbitrary.) John's particular focus is disputes concerning publishing, intellectual property, the media, art, commercial contracts, professional negligence and IT. Over the years John has applied existing and evolving legal principles to deal with technological developments in IT, electronic media and communications. He has also promoted, and developed an expertise in privacy related law.
John Rubinstein, Rubinstein Phillips Lewis Smith Ltd. A member of the International Bar Association since 1989, John served as Co-Chairman of the Art and Cultural Property Law Committee from 1998 to 2001. He speaks fluent French and conversational Italian. Here is a lightly-edited transcript of the podcast episode:
Anthony Verna: And welcome to the Law and Business podcast. I'm here with John Rubenstein from Rubenstein Phillips Lewis Smith in London. How did I do?
John Rubenstein: That is brilliant, Anthony. And we are both in Australia and we're all jet lagged.
Anthony Verna: I've been here for a couple of days. That jet lag for me is…
John Rubenstein: So you reckon that if we put up for an Australian trademark called jet lag, we'd be ruled out for descriptiveness.
Anthony Vera: Well, what are we selling with jetlagged?
John Rubenstein: Travel services?
Anthony Verna: I think that might be a little on the descriptive side of life.
John Rubenstein: Well, I'd argue that this was exclusive to the exercise of traveling and the selling of traveling services. So, this provides us with a suitable entry to the topic of, whether a mark is registrable because it is inherently incapable of being distinctive and whether it is descriptive. And I guess that when you travel, part of the quality of traveling is being jetlagged.
Anthony Verna: Not always. If you're going North and South in the same time zone, there's, there's no jet lag. Go New York to Miami. There's no jet lag.
John Rubenstein: Ahh, but see, quality doesn't have to be consistent quality. And, we have a number of cases in the United Kingdom, where we are subject to the European union regime on trademarks. Regulation 40 of 1994 and Trademarks Act 1994 which has stood the test of time.
It's become an interesting battleground between brand registrars and the trademarks registrar who is fighting a rear guard action, using the swing doors of sections three, one B, which is an absolute prohibition. If the mark does not distinguish the goods as belonging to one particular owner, it will be ruled out, and section three one C of the act, which rules out marks which are descriptive of what is being offered.
Anthony Verna: So it sounds like that the UK intellectual property office as compared to the United States patent and trademark office likes to kick things out a little bit more. And it sounds as if there are some brands that the UK IPO doesn't like even though they would technically qualify as trademarks.
John Rubenstein: Well, the reality is you have to work quite hard in some cases to persuade the assessor that the mark is capable of being registered. And it is to my mind,
Episode 24 of the "Law & Business" Podcast features Wil Jacques, the patent agent of Verna Law, P.C. We discuss the patent application in three thoughts. Wil Jacques, Patent Agent After filing the patent application, there is an office action (rejection from the United States Patent and Trademark Office).
First office action: The job of the patent examiner is to determine whether or not a patent application complies with the legal requirements for patentability. In particular, the examiner is to evaluate whether the claims in a patent application are enabled by the application's specification, and whether the claims particularly point out and distinctly claim the invention. In addition, the examiner will conduct a search of United States patents and published applications, foreign patent documents, and available literature, to see if the claimed invention is new and nonobvious. Applicant’s amendment and response: In responding to the first office action, the applicant's patent attorney or agent will draft a response document that points out perceived errors in the office action. Frequently, this response document will include an amendment to the claims in order to clarify the invention and, in some cases, to narrow the claims so as to overcome the prior art cited in the office action. The response will also contain arguments as to how the pending claims are patentable in spite of the prior art references cited or the objections made. Final Rejection: In some cases, the patent office is not persuaded by the applicant's response. Instead, the patent examiner either continues to reject the application on the same grounds identified in the first office action, or develops new reasons why the application still does not meet the legal requirements for patentability. The applicant is notified of this continued rejection through a second office action. In most cases, this second office action will be made "final." When an office action is final, the applicant's response is then limited.
Here is a lightly-edited transcript of the podcast episode:
Anthony Verna: Welcome to the Law and Business podcast. I'm Anthony Verna with Verna Law PC, focusing on intellectual property and advertising law. With me is my patent agent, Wil Jacques. Wil Jacques: Good afternoon. How are you? Anthony Verna: I'm well, thank you. And Wil is also the monetization expert for intellectual property at Emanus LLC, not just the patent agent for Verna law. Well, let's talk a little bit about the patent application processes. We kind of give our listeners a patent 101 overview with a few episodes. When we're filing a patent application, what's our heaviest emphasis on in filing that patent application? Wil Jacques: Well, certainly you want to make sure that it's in the best condition possible. You've described everything according to the law, there are two basic ones that patent agents, attorneys want to keep at the forefront. And that 35 USC 101 which says that you're patenting in a certain allowable area, that is, it's a process. It's a machine, it's an article of manufacturer or devices. People might know it, you know, or a composition of matter. So, you want to make sure that you address, you know, one of the subject matter areas in your patent. And then you know, the next thing is 35 USC 112 and there are many others that impact your ability to get a patent or not get a patent. But in terms of just that basic document, you know, 35 USC 112 is that you must have a written description, that clearly describes in a concise manner what it is you've invented. And it has to be innately. Anthony Verna: So, once we get this application drafted and we file it with the patent and trademark office, same thing on the trademark side. Like, we're going to wait a while.. On the patent side, we're going to wait a lot longer on the trademark side, aren't we? Wil Jacques: Yeah. We're going to wait. Many years ago,
In Episode 23 of the "Law & Business" podcast, Verna Law's own patent agent, Wil Jacques, speaks with Anthony about the three items that make a patentable invention. Wil Jacques, Patent Agent The three items for a patentable invention are:
It must be new or "novel": the invention must never have been made in public in any way, anywhere, before the date on which the application for a patent is filed. It is almost always preferable to file a patent application before any public disclosure of the invention. Most patent attorneys will try diligently to file a patent application prior to any public release or announcement in order to allow international patent filings. The invention must involve an inventive or "unobvious" step: this step must not be obvious to others with good knowledge and experience of the subject of the invention. This determination is made by deciding whether the invention sought to be patented would have been obvious "to a person having ordinary skill in the art to which the claimed invention pertains." In other words, the invention is compared to the prior art and a determination is made whether the differences in the new invention would have been obvious to a person having ordinary skill in the type of technology used in the invention. The invention is capable of industrial/useful application: an invention must be capable of being made or used in some kind of industry. The invention must have a useful purpose. In most cases, the usefulness requirement is easily met.
Here is a lightly-edited transcript of the podcast episode:
Anthony Verna: Hey everyone, welcome to the Law and Business podcast. We're in the middle of season two and it's a pleasure to have you with us. My name's Anthony Verna, Verna law where we focus on intellectual property and advertising law. Today with me is my patent agent. Wil Jacques. Wil Jacques: Hello everyone. Anthony Verna: Hey, Wil, thanks for coming. Wil Jacques: Yeah. Pleasure to be here. Thanks, Anthony. Anthony Verna: And Wil is not just the patent agent for Verna law. He's also a patent marketer and as well as monetization expert over at Emanus LLC. How did I do? Wil Jacques:Yeah, you did very well. We always try to tell folks how to make money from their IP rather than just filing, it's a good thing. Anthony Verna: Well, I think that's something a lot of people don't quite realize is that, is that getting the patent is the first step, but you also have to make money with all of your intellectual property. That's the part of having the business. Wil Jacques: Absolutely. It's an asset of value and you should try to monetize that. If you're going to spend the time in dollars to actually go about getting the patent, it should at least you know, allow you to protect a product that you can sell in the marketplace, either you or your licensee. Anthony Verna: I wholeheartedly agree with that. I know that you're not going to disagree. Wil Jacques: No, not at all. Anthony Verna: I want to start everybody with patent basics because that's not something we've covered on the podcast before. It's also, our relationship is fairly new in the clock of time. Yeah, and so let's bring everybody up to speed with a little bit of patent basics and let's talk about what makes an invention patentable. Wil Jacques: Kind of three broad classes, Anthony. I would say the first thing is you gotta at least assure yourself that what it is that you believe is an invention is actually an invention. That means it's new or it's novel and we'll get into some questions around what makes something new or novel. But that's the first thing that people should try to consider. The next thing is does it involve something that would not be obvious, and obviousness is a very interesting part of patent law. Anthony Verna: Don't we know? Wil Jacques: Yes, yes. You know, obviousness really depends on how people who are skilled in the art may view what it is that you've invented. So,
On Episode 22 of the Law & Business podcast, I chat with Sarah DeGeorge of Socially Dedicated. It's a part of our Philly Bloggers series. Sarah and I chat about her blog, Socially Dedicated, and what it means for business. Sarah has tips on her blog, such as how to stay on a client's money habits, how to balance your work and life properly, and what it means to be a freelancer. We also chat about how Sarah uses her blog and her social media consulting concurrently. You can find Sarah's blog, Socially Dedicated at http://www.socdedicated.com Twitter: https://twitter.com/socdedicated
Here is a lightly-edited transcript of the episode:
Intro: You're listening to the Law and Business podcast hosted by Anthony Verna. We tackle the difficult questions where business and the law intersect to help you run a smarter business and avoid costly mistakes. Brought to you by Verna Law, PC a full-service law firm, focusing on patents, trademarks, copyrights, domain names, and advertising law. For more information, call (914) 908-6757 or send an email to Anthony@Vernalaw.com.
Anthony Verna: And welcome to the Law and Business podcast. We're in the middle of our Philadelphia bloggers series. You like the side of that, Sarah, don't you? Yeah, right with me is Sarah DeGeorge of the Socially Dedicated blog. How’d I do?
Sarah DeGeorge: Good. Great. Made it sound better than I ever do. So that's what counts.
Anthony Verna: Wonderful. Wonderful. Once again, the Law and Business podcast is brought to you by Verna Law, focusing on intellectual property and advertising law. You already heard that in the introduction. So, Sarah, let's start here. Tell us about your blog and what you do.
Sarah DeGeorge: So my blog is kind of an extension of my career, so I freelance and socially dedicated. It came from both my initials are SD and I do social media marketing.
Anthony Verna: That’s very handy.
Sarah DeGeorge: Yeah, I know, right? There was, there was a plan to incorporate a logo when I finally put it together and have my signature being the SD part of the logo. But that's a completely different story. But anyways, my freelancing is like I said, then carried over to my blog because I wanted to be able to kind of talk about it, and a lot of people that are bloggers tend to, and, I see a lot of them, they are freelancing on the side more so with content creation because of their writing and everything like that. So, it was kind of like a three-sided venture because it's it's a portfolio page, it's a blog itself, , I put it as like a business front too. So, it shows the services that I do alongside the information that I put out with the blog. So that's kind of how I positioned the website itself. Whole package kind of.
Anthony Verna: Yeah, I understand. I understand that completely. So, when I look at your blog, I see topics like best business practice of being yourself, freelance truly isn't free, staying on top of client's money habits. Are these topics that you draw from your experiences in work?
Sarah DeGeorge: Yeah, I'd say so. Sometimes something might happen and instead of me being grumpy and spiteful and being all you know, write a blog to inform others about the situation and how to do it in a way where you have your freelancing career and your reputation behind you and it's good, everything like that. Like sometimes it is inspired by my own personal experiences in a way that I can almost, it's a teachable lesson. Oh, unfortunately I have to go through said lesson, but I'd like to help other people not have to go through it. Yeah, Basically I think most of it is kind of like personal experience. Some of it is just I see something, or something sparks my interest. Maybe nothing happened personally to me, but I'm like, hmm. Like that's something we should talk about. And I tried to put my own spin on it. I'm still young so I'm, I'd like to say I'm kind of in like that mid-level part right now. I'm no longer, I
That's right. Season 2 of the "Law & Business" Podcast is back. We start with Episode 21, in which we have a discussion with Chrystina Cappello, the founder of the Chrystina Noel blog and of PHL Bloggers. The Chrystina Noel blog is all about party hosting and various tips and tricks to experiment with parties. PHL Bloggers is an organization based in the Philadelphia metropolitan area that helps bloggers with networking and ideas by hosting meetings and conventions all about blogging as a business.
Chrystina's blog can be found at https://chrystinanoel.com/
Chrystina's Twitter can be found at https://twitter.com/chrystinanoel
Chrystina's Instagram can be found at https://www.instagram.com/chrystinanoel/
This is a part of our special Philadelphia Bloggers series and there is more to come.
Here is a lightly-edited transcript of the episode:
Intro:You are Listening to the Law and Business podcast hosted by Anthony Verna. We tackle the difficult questions where business and the law intersect to help you run a smarter business and avoid costly mistakes. Brought to you by Verna Law, PC, a full-service law firm focusing on patents, trademarks, copyrights, domain names, and advertising law. For more information, call (914) 908-6757 or send an email to Anthony@vernalaw.com. Anthony Verna: All right, welcome to the Law and Business podcast. We're here doing our Philadelphia bloggers series. We're here with Chrystina Cappello. How are you doing, Chrystina? Chrystina Cappello:Doing pretty well today. Anthony Verna:All right. You are the founder of PHL Bloggers and you have a blog of your own. Chrystina Cappello:I do.Anthony Verna:And you have a full-time job.Chrystina Cappello: That as well.Anthony Verna:So the first question is, is do you sleep? Chrystina Cappello:Sometimes. Less than usual this week. I try. It's definitely always a balance trying to figure out what means the most, what's the most important to get done, and which things inevitably get shoved to the wayside along the way. Anthony Verna:I understand very well with having the practice, doing this podcast, having the blog guests. No, there are things that you certainly have to prioritize as you're putting all of this together. So, let's start here. Let's talk about the blog first. So, tell everybody about your blog. Chrystina Cappello: Sure. So, I blog at Chrystina Noel and that's just Chrystinanoel.com. It's about hosting parties, handmade greeting cards, and how to stay in touch with people you love. So, I've been blogging for six years now and I started the blog at the same time that I started my full-time job. So, essentially, I started it because my day job is a construction consultant and my background is in architectural engineering. So, I've a very left brained day job and that is the space that I live in during the day. And I wanted to make sure I wasn't going to go crazy having only that to do after graduating college with having so many activities going on at the same time. And so, I decided to start the blog at the same time. so I had a place to record my, my more right brained antics while living the left brain day job. Anthony Verna:It is a very artistic, lifestyle kind of blog. Would you agree with that? Chrystina Cappello:Yes, that definitely. For years it actually was very specifically by very specifically, I mean vaguely lifestyle and I realized recently that it actually for the first four or five years of it, it became sort of like a journal, a place for me to record all of my thoughts and sort of in more recent years I've been really making the pushover to talking just mostly about parties and greeting cards and staying in touch, which was always there along the way. But now it's just more of the focus as opposed to telling people about 10 things that I did this week or something along those lines. Anthony Verna: Right. Like your most recent post is about Thai inspired food for the dinner party,
It's Episode 20 of the "Law & Business" podcast. In this episode, Janine Just of Janine Just, Inc., "chief connectologist." Janine defines a connectologist as an agent of digital gap-bridging; a person who brings real life to digital relationships with in-person interactions and shared experiences, integrating both public relations and social media savvy along the way.
In this episode, Janine talks about the strategies her public relations firm implements strategies so her clients can work with social media strategies and influencers. From a legal aspect, we talk about trademark issues with hashtags in Twitter and FTC disclosure requirements for influencers.
Here is a lightly-edited transcript of the episode:
Intro: It's the Law and Business podcast hosted by Anthony Verna. We tackle the hard issues where law and business intersect to help you run a smarter business and avoid costly mistakes. Verna Law PC is an intellectual property law practice, focused on trademark, copyright, advertising law, and domain name disputes. Contact Anthony at Anthony@vernalaw.com.
Anthony Verna: All right, welcome to the Law and Business podcast. How are you doing, Janine?
Janine Just: I'm good. Thanks so much for having me, Anthony.
Anthony Verna: No problem. So, I'm here with Janine Just. Janine, why don’t you to tell everybody what you do first.
Janine Just: Sure. So I’d call myself the chief connectologist of Janine Just, Inc.
Anthony Verna: I love that that title you've given yourself.
Janine Just: Well, that’s what it’s all about, leveraging the relationships to your best advantage. So, we work with small businesses, emerging brands. Fashion, beauty and technology are our specialties and we work with them on non-traditional PR campaigns, marketing, influencer marketing, and a lot of events. That's particularly where we really shine with clientele and the brands that we work with. And we also have a passion project that's actually gone, gotten bigger and bigger as we've progressed with it called Textile NYC, which is another event series that basically talks about fashion and beauty and how technology is fusing into it more so ever. And it's really becoming predominant in fashion.
Anthony Verna: And, and here you are talking to me cause when you think of fashion and beauty, you think of Anthony Verna Law. Gosh, don't tell my apparel clients that.
Janine Just: You know, I won’t tell them what you're wearing right now.
Anthony Verna: Okay, thanks. You can, you can tell Ralph Lauren what I'm wearing right now. He'll be very, very happy to hear that.
Janine Just: The pink looks amazing.
Anthony Verna: Wow. Thanks. Thank you, my friend. So, you said a couple of key things that perked up to my years and that is non-traditional marketing and influencer marketing. What does specifically does that mean?
Janine Just: We're very strategic in what we do. We don't want to take on a brand unless we have a clear sense of how we want to tackle it and how we want to go about it. So, I know a lot of agencies out there and you know, bless their hearts with what they do, They're continually pitching, you know, different outlets of traditional PR publications, editors, bloggers, all that wonderful stuff. But we really hone in on something that we can do specifically with the brand.
Anthony Verna: Social media campaigns, then?
Janine Just:: Yeah. As long as we can come up with something that we know is going to be, you know, it's going to be out of the park as far as what we put into it, they're going to get their ROI because it's really hard to quantify public relations and marketing. And it's a gray line because a lot of people come to us and they think that we're sales, you know, we're a sales team, but, it's making sure that you manage their expectations to say, no, we're not. And if you want to, I would probably lean towards a salesperson or you know, a sales force to kind of get you to where you need.
In Episode 19 of the "Law & Business" podcast, I am joined by Angel Quintana. Angel is a business advisor who helps business owners be tastemakers, rebels, or visionarys, which might not be the get-rich-quick guide that all those other marketing experts are using to promote their businesses, but it produces everlasting results, dissipates the boredom and lack of creativity that many seasoned business owners are feeling today, and it removes all the competition. We talked about how businesses should market themselves, the importance of e-mail marketing, and the legal issues involved.
Here is a lightly-edited transcript of the episode:
Anthony Verna: Welcome to the Law and Business podcast. I am here with Angel Quintana. Angel, how you doing? Angel Quintana: I'm fabulous. Thanks for having me. Anthony Verna: No problem. Thank you for calling in and hope you like our fancy setup where you get to call in. So, Angel, I know that you are a business advisor but, I'm never really very good, so why don’t you describe your business to everybody who's listening. Angel Quintana: Okay, great. So, I have a business that's called holistic fashion needs and it was actually born from the lengthy time that I've been a business mentor for the past, I don't know, 10 years or so. I started holistic fashion needs said to basically support my clients, give them exposure online, let them write bomb magazine, to do their advertising campaigns. We promote them in a podcast, or our HF TV shows that we do on online. So, there's just lots of different ways where we'd just basically promote people that we think are amazing. I normally just work with holistic leaders, people that really want to help people get to the root of their problems, not just a quick fix or a bandaid solution but really dig in, ask those hard questions and get people really to a place of transformation. So, I'm really kind of grandiose in my endeavors here that I want to change the world. I want to help other people change the world. We all live in this, you know, energetic field together. And if we can make it better than what it is today, you know, I've done my job. Anthony Verna: And the fashionista part comes in. You dress really well. Angel Quintana: Oh, thanks. Well, I was a clothing designer before I started basically a little coaching and consulting other entrepreneurs. So, there's always just a huge place in my heart for looking amazing and feeling amazing. I think they kind of walk hand in hand. Anthony Verna: Yeah, you need to help us schlubby guys. You know, my wife loves it when I put on a suit, but, other than that I kind of find it hard to… Angel Quintana: I got it easy though. I mean girls have so many options and it gets a little overwhelming. You know, guys who just have a great pair of jeans and a collared shirt and some cute, little tennis shoes and they’re still like looking sharp, you know. Anthony Verna: I know what you're saying, but you know, we still need to be careful too because even when I'm just wearing a polo shirt, I will say that when I buy like a nice Polo Ralph Lauren shirt versus a cheaper one, the, the difference shows very well. So, even us guys need to be a little careful when we're on the casual side of life. So, let's move onto to our businesses. And a lot of the listeners out there are entrepreneurs, are solopreneurs. And recently we've been talking about why small and medium businesses fail here on the podcast with other guests. And I would say what tips do you have for the small business, the medium size business to help market those businesses? And, and of course I'll be jumping in and talking about some of the legal ramifications of the marketing. Angel Quintana: Well, I actually have had a failed business, so I definitely can relate to this topic. And one of the biggest things that is the biggest lesson that I learned is you've got to be good at sales and marketing.
In Episode 18, Anthony sits down, again, with Jim Huerta of the Nessa Group. This episode is about failing to market properly. A business must not only create a business plan, but must create a marketing plan. That marketing plan includes what kinds of consumers are target markets and what the brands behind the products mean. The marketing plan must include what the budget for marketing and what channels of marking will be used. One of the bigger issues in creating a marketing plan is not segmenting the markets properly, which is what Jim and Anthony discuss. Anthony discusses how businesses failing to target their markets properly can mean disaster in trademark law.
Here is a lightly-edited transcript of the podcast episode:
Anthony Verna:
Hey Jim, how are you doing?
Jim Huerta:
Doing fine, Anthony. Thank you.
Anthony:
All right, we're back with Jim Huerta of the Nessa group.
We need to look at markets for small businesses. What I do in my practice is a lot of arguing about who the consumers are for goods and services for a business. What are the channels of, of trade as we call it. Basically, what does your supply chain look like? What does your advertising look like? What does your marketing look like? Because all of that matters when you're talking trademark law. Because, for example, if you're putting the word “mercury” on speedboats, it's a radically different set of consumers. It's a radically different set of price points. It's a radically different set of places of advertising than if you're going to stick the word “mercury” on cars, even though there's going to be some overlap. There still are going to be those differences.
I would say that I think a lot of small and medium sized businesses tend to miss their proper customer base, miss their proper channels of advertising to get their biggest bang for the buck. So how can we help small, medium sized businesses to really hit the right channels of advertising? They're right customer base for the product, the right, um, you know, the right supply chain to get the product built the best. What thoughts do you have on the topic?
Jim Huerta:
I'm a person who thinks very highly of doing your homework and doing research or due diligence or whatever word people use depending on whatever kind of department they're in or whatever the subject is. I think a lot of small companies - when we've talked about it before - could have a great product and in doing the great product, and I'm really sitting down and looking at, okay, we have this product, we got to know who our targeted market are. If it's a segmented market, if it's a straight targeted market, we get into the demographics that exists within that market. What I always strongly recommend is, again, you have to know where you're going with that product. I mean you, your comment about “mercury” is right on you hear that you've been looking for who want speed boats as opposed to fishing boats.
So you lost a big audience already and it's not done necessarily the way it should be. I think the research is very, very important. Even the specific location that you have in order to take an elevated view of what you're doing is important. You go into a location, you're trying to find out if that's the place you want to put your product down and you want to do a Beta of your product there, the test market, you really have to do some homework and it does not hold true just for SMEs. We can sit here and have some very funny stories about some very major corporations that in their expeditious way of getting their product out there, they have lost a lot of advantage because they did the wrong thing. They said the wrong thing, whether they didn't take the time to prepare for it. SMEs need to be very attentive that their product matches the demographics and marches and matches the targeted market that they're looking at and, and don't take it for granted. You know,
Once again, Anthony sits down with social and interactive media strategist, Oz Sultan.
Oz and Anthony talk about Periscope. It's a great business tool, but are there some legal issues?
Episode 16 of the "Law & Business" podcast is about How Small Businesses Fail and Why It's Too Important. Anthony Verna sat down with Jim Huerta of the Nessa Group,
The newest trend is daily fantasy sports.
Taking a step back, what makes a game used in promotion not gambling? And what, then, makes a daily fantasy sports business model not gambling?
In order to use a game for promotion, the sponsor of the game must remove one of three key elements of the game:
Chance Prize Consideration
So, daily fantasy sports like Draft Kings and Fan Duel must be able to do that in order to run a non-gambling game.
But those games also must have a set of rules and must also be run fairly, with a level playing field.
Would you like to run a game in order to promote your business? Call or send an e-mail. 914-358-6401 or anthony@vernalaw.com
[display_podcast]
In Episode 14 of the "Law & Business" podcast, Anthony and Oz Sultan (Sultan Interactive Group LLC) talk about the sale of 4chan and how that intersects with Internet privacy.
Internet privacy is an oxymoron. Any website that is accessible for free means that there's a product involved. (In this particular case, it is the services of Verna Law, P.C.) In many cases, if there is user-generated content, the content and the user are the products. Meaning that the website can only monetize by keeping track of the users and understanding the users' behavior, and, ultimately, selling that information to other websites that need the same information.
Oz Sultan
Anthony Verna appeared on Change Your Attitude, Change Your Life on May 31, 2015.
Anthony discussed the importance of registering a trademark and the difference between "TM" and (R) in trademark protection. Listen here!
Here is a lightly-edited transcript of the appearance:
Does putting "TM" on my website do anything to help protect my business?
I'm Anthony Verna, managing partner at Vern Law, P.C. We focus on Patent, Trademark, Copyright and Advertising Law.
The short answer is: no.
Many businesses place "TM" on their websites' advertising and packaging. However, if a business has not done its due diligence and registered its name, slogans, logos, or product lines with the United States Patent and Trademark Office, then its trademarks may not be enforceable.
Due diligence includes a performing a trademark search to find a potential plaintiffs who may already be using similar marks. Then the business may file an enforceable trademark with the United States Patent and Trademark Office.
A trademark registered with the patent and trademark office receives the R-in-a-circle symbol and can be enforced under federal law. The trademark owner may have the possibility of retrieving high amounts of damages for infringement.
I'm Anthony Verna and to talk to me about patents, trademarks, copyrights, advertising law or other areas of intellectual property.
You may call Verna Law, P.C. at (914)908-6757.
Verna Law, P.C. is at 80 Theodore Fremd Ave., Rye, NY, 10580. anthony@vernalaw.com
Episode 13 of the "Law & Business" podcast welcomes Oz Sultan again.
Oz Sultan
In this episode, Oz and Anthony talk about three internet policy thoughts.
Domain Name Issues Management and Enforcement of Intellectual Property Economic Rationals for Enforcement
Also - was .sucks a good idea or a bad idea and can registering a .sucks domain name bring legal action?
Here is a lightly-edited transcript of the podcast episode:
Anthony Verna: So welcome again to the Law and Business podcast. I'm here again with Oz Sultan. And how you doing?
Oz Sultan: Hello. Good to be catching up.
Anthony Verna: So let's start here. Plug yourself once again for those who may have missed your previous appearance.
Oz Sultan: Sure. I am Oz Sultan and I focus on digital strategy, brand management, the execution and development of social campaigns and lead generation. And we have a new analytics dashboard product. So if you have a big data problem or a social digital data problem or a brand problem, SCM, that kind of stuff, we can probably help you develop your KPIs and look at all of that stuff in a simple way that your executives will love.
Anthony Verna: What is a KPI? I do advertising law and I never heard that phrase before.
Oz Sultan: Key Performance Indicator. It's basically what are your metrics? It's like what's important to you?
Anthony Verna: I can't keep up with the TLAs today.
Oz Sultan: I know. At least that's better than, than trying to keep up with the TLDs. Anthony Verna: Those I can keep up with.
Oz Sultan: And the TMCs…
Anthony Verna: Quick aside, speaking of TLS…
Oz Sultan: What's your P's and Q's?
Anthony Verna: Yes, exactly. Speaking of top level domains, there are some issues because apparently I can allow the .sucks. And, of course, a lot of companies are up in arms because who wants to…
Oz Sultan: Let's talk about the most important person who is up in arms, Taylor Swift.
Anthony Verna: Why? Did somebody register TaylorSwift.sucks?
Oz Sultan: No, as soon as the TLDs came out, Taylor Swift went out and registered a lot of those for herself and it kind of hearkens back to in 2000 going back to yesteryear or going back to a 2001- 2002 When I was running, fye.com, which had to be purchased from the Fye family of Australia.
And that was a Trans World property back when Trans World was a $3 billion company, and had all of the music stores in the country and then bought Tower and Warehouse and sort of imploded like a flan in the cupboard. I had to sit there with this much older than I woman and explain to her in graphic detail why we had to buy swear word permutations of the domain. She was sitting there basically just ghost faced with the list I gave her, cause there was about 75 different permutations, but it was basically F a F coconuts, F FYE because they owned every single music store back then.
Anthony Verna: Right. I understand.
Oz Sultan: So one of the things that you know, that harkens back to is reputation management and piracy and some of the things I guess you want to discuss today.
Anthony Verna: Sure, we can easily slide into that because talking about management of intellectual property, and that's one way of managing trademarks and managing brands. And as many brand owners will tell you, you have to make sure that people can can't come at you in other ways. And having all those, owning all those domain names, regardless of the permutations, is one way of getting people to not, not talk about.
Oz Sultan: Just out of curiosity, how much are the dot sex domains?
Anthony Verna: Dot sex?
Oz Sultan: Dot sucks.
Anthony Verna: Sorry. Some were going for $2,500. Let's take a look cause I know some are going for really high numbers here, but, Joel Wilcox. sucks. So, whoever owns that now with selling it for about $4,000. Wow. Yeah. So, some people are buying domains like ADP. Dot sucks. Applecare.sucks and you know, eharmony.sucks. But, I'll go and do something that I did a long time ago and I...
In Episode 12 - Comic Books, Geek Life, and Trademark & Copyright Law, Jim Cushing joins Anthony Verna to talk about comic books, some history of comic books (Jim and Anthony let their geek sides out), and the intellectual property issues of comic books. James Cushing, Esq.
A lightly-edited transcript of the podcast episode appears below:
Anthony Verna: Welcome to the Law and Business podcast. I'm here with Jim Cushing. How are you doing, Jim? Jim Cushing: Hi, Anthony. Doing well, thanks. How are you? Anthony Verna: doing great. Thank you. Tell everybody how to find you again. Plug away. Jim Cushing: Thanks. Jim Cushing, you can find me as James W. Cushing on the Internet. And I work for the law office of Faye Riva Cohen, f a y e r i v a c o h e n in Center City, Philadelphia, Pennsylvania. I specialize in, or my office specializes in employment law, family law, and estate practice, mainly, and some smattering of other plaintiff's side stuff. I also have a blog, at judicialsupport.wordpress.com. Oh, my firm’s website is fayerivacohen.com and you can reach me on the telephone at (215) 563-7776. Thanks, Anthony. Anthony Verna: No problem. And of course, if anybody listening has questions for me, I can be reached at anthony@vernalaw.com. Jim Cushing: This is my third time doing this and it seems like you ask me to come on when you have nerdy subjects to discuss, so… Anthony Verna: Well, you know, you're a part of my advanced circle of friends. So, having first met many years ago and I think yes, there are a lot of nerds in our circles of friends. Jim Cushing: We're being polite and that's good. Anthony Verna: Of course, of course, but that's half the fun. But yeah, so our nerdy topic today is of course the Marvel issues, for lack of a better word. And you know, to take that out to a further context because I actually did have a comic book case and there's stuff about that that I can bring into this discussion and of course stuff that that is still, you know, attorney client privilege. But I think we can easily talk about some of those issues in general. And here, let's start with Marvel. Jim, I'm going to let you take it away on describing exactly what's going on with Marvel comics and ownership. Jim Cushing: Well, there's a couple of things, one of which I find to be terribly confusing, but another one, not so much. Anthony Verna: Welcome to intellectual property law. As my friend Dave says, you guys live in a special level of hell. Jim Cushing: What? The intellectual property lawyers? Yeah. Well, Marvel comics and I think you can explain the legalities of this a better than I can, but there is a difference between owning a character and owning movie rights to that character. And, so Marvel comics, the characters are owned by three separate movie… I was going to say movie franchises, but it’s movie companies, I guess. Disney which owns Marvel owns ironically what they believe to be the lesser characters of the Avengers, which is suddenly now the complete opposite. I mean, when Marvel… Basically back in the late nineties, Marvel were struggling to get movies going because they really couldn't get anything sort of live action happening that was productive. As opposed to DC, which has, you know, the long history of Superman and Batman and so on. Anthony Verna: Absolutely. Jim Cushing: But Marvel… Anthony Verna: But really only Superman and Batman have been successful in the movies. Jim Cushing: Yeah. Of the high-end sort of success or Dick Tracy's in there. I don't know who owns Dick Tracy, but I don't know if that was successful. Anthony Verna: Yeah, well it was, and it was only one movie. Jim Cushing: That's true. That's true. And just thought it, for whatever reason that Disney came up, the Rocketeer was in there somewhere. Anthony Verna: Yes. No, that's true. Jim Cushing: Swamp Thing was somewhere in there. Anthony Verna: Did anybody see Swamp Thing?
Anthony Verna and Daron Jenkins talk about film, entrepreneurship and creating a business, and intellectual property issues. Daron Jenkins Topics included:
Dreaming without money Business plans Originality Expressions of ideas/Copyright law Protection of expressions of ideas Importance of contracts in guiding relationships in business Work-for-hire agreements The importance of doing due diligence Music copyright litigation issues Film copyright litigation issues
Here is a lightly-edited transcript of the podcast episode:
Anthony Verna: Thank you for listening to the Law and Business podcast. I'm Anthony Verna. I've recorded this episode with Daron Jenkins at the Citizen M hotel right in the lobby where Daron was working that day. We talked about film and entrepreneurial issues in film. I understand that there'll be plenty of ambient noise in the background. I certainly hope you'll enjoy listening to this episode. It's full of wonderful substance and wonderful tips for the entrepreneur. Thank you.
Welcome to the Law and Business podcast. I am with Daron Jenkins. How are you doing, Daron[KR1] ?
Daron Jenkins: What's going on today?
Anthony Verna: It's a work day except we're podcasting instead. Anyway, Daron, I'll let you plug away and you can tell everybody who you are, what you do. Besides the fact that I know you do everything.
Daron Jenkins: So, I’m an entrepreneur in New York City, who is the founder of CMPR, which is kind of a networking collective for entrepreneurs and I’m also the co-founder of the New York Film Loft which is a coworking and an incubator for film, television, and digital projects.
Anthony Verna: So, in the film and television business, you're dealing with a lot of people who have a dream, have an idea, probably don't have money.
Daron Jenkins: None of them have any money, are you kidding me? Just this morning, you know, I got at least three or four emails from different people asking me either about money or distribution. It was something related to the process of trying to get their film or television project done. I mean, no one has money, but everyone has money. It's kind of a very strange situation, right.
Anthony Verna: From my particular standpoint, when somebody comes to me with a dream and we're talking film and television, I would say my first step is asking if you're protected and we do that from an intellectual property standpoint. What’s your first question for somebody who has the dream but maybe not the money?
Daron Jenkins: I come from kind of the creative slash business end of the mind, right? So, my first question is to kind of, so I stand in between them and the money and the distribution, right? So, the money people are asked, ask me certain things that I need to kind of then… Then, the distribution people have what they need. Right. So, my question is kind of like, “Is it viable?” It's almost, I'm almost like the Mark Cuban of film. I sit there and I have to kind of poke holes in this thing that they want to produce to kind of see if t’s as viable. Cause unfortunately these days digital world is such that is very easy to make content now. Right? So everyone's doing it. Talented or not, they’re doing it.
Anthony Verna: Yes. Well, like we're doing right now. Right. So, when somebody comes to you, do you help them set up a business plan?
Daron Jenkins: I'll tell you what my first thing is from you to tell them that they need to be the king. My first, my first advice to them is that you need to be business people before creators.
Anthony Verna: I'm glad I'm not the only one telling creative people that.
Daron Jenkins: Well that, no. I was at SXSW this past month and you sort of listening to Christine DeShawn of Killer Films, we was in her keynote. She says a lot of similar things where filmmakers need to be more than just creative people and you've got to come at this from a business side of things. You've got to get your money right,
Oz Sultan joins the "Law & Business" podcast to speak with Anthony Verna about social media and legal issues.
Oz Sultan
How do businesses use social media? What is the changing face of social media? How do business interact with customers and potential customers in social media? What are the legal issues that revolve around social media in today's world?
Here is a lightly-edited transcript of the podcast:
Anthony:
Welcome to the Law & Business Podcast.
Oz Sultan:
Thank you.
Anthony:
I'm, I'm here with Oz. I will let you plug away.
Oz:
Sure. I am Oz Sultan, I am a digital media and strategy consultant that does three things.
We build strategy for startups and mid-tier to large brands.
We put together exciting social media programs like what we've done for Xbox and The Economist and recently we're launching an analytics dashboard, which I'll probably be talking about more on the next few weeks.
If you have big data problems, I have a solution that makes them simple and easy to present to your executives. And we all have big data problems.
Anthony:
Exactly.
Oz:
I'm glad we're putting this together. So Phil, so we're on periscope. If you're watching live and if you're listening then it's the podcast and it's not locked.
It’s also because periscope records and you can go back and watch this later at your leisure.
Anthony:
So welcome. Welcome to the Home Office.
All right, so social media. I think a lot of people thought, think of social media as Facebook and Linkedin and maybe Twitter. I mean we see Twitter as social media, but I think a lot of people are locked into that.
Today we're seeing Instagram obviously pop up. Pinterest and Instagram being very different ways of sharing photos. Right. And I mean obviously other social media and, Yik Yak coming around now that Periscope is here and really know your periscope is used often.
So, how has social media change happening? Let's start there. How has social media changed?
Oz:
I think we can look at and look at kind of two things. So social used to be conversational, going back to 08, it was conversational mediums for which you can find other people talking to other people. Then it became brand-building across conversational mediums. I'm the next Senate into Facebook with Facebook ads becoming, , brand platforms. Now what we have is brandy commerce on Facebook through Shopify. Nice plug for at Alberton’s there. A variety of other mediums and kind of bringing into this foray. We saw the popularity mere cat itself by this year. We're also seeing Periscope a couple of days later just launching. I think what you're looking at is you're looking at the same shifts and social that you saw in radio and television maybe about 60 years ago. So all of a sudden, when radio came out, people were like, no television.
Anthony:
Wow.
Oz:
And, and now what you have is you have brand adoption problems, right? Because things are shifting. So we have, we've shifted from a conversation economy to a platform economy with Linkedin and Facebook and like, and now we're, we're shifting to a video economy. There's also a secondary conversation economy coming with things like Twitch with their acquisition of Justintelevision as well as looking at all of the associated gaming plays that are now coming into the foray.
Anthony:
A couple of a couple of thoughts come, come to mind.
One is that with my clientele and, and for those of you who don't remember my, my law focus is intellectual property and Advertising Law.
We met at an apparel and fashion event. I always think of that as intellectual property for the fashion rather than fashion law. Like to me that there's no such thing as fashion law. But anyway, anyway, I'm digressing: the television show, these things, they have fashion. Gotcha. But one for my clientele, they're not really seeing a return of things like Facebook ads or even having a Facebook page. They're not really seeing a return on their time investment.
Episode 9: Three Ways in Which Business Hurt Themselves in Online Marketing
In this episode, I speak with Darcy Knapp, who is an Search Engine Optimization Expert and consultant, about the issues that businesses have in marketing themselves online, especially in search engine optimization.
One issue that we touch on is using competitor's trademarks for metadata, which is a bad idea. From a practical standpoint, Darcy points out the difficulty in lowering online marketing prices if a business uses competitors' trademarks. From a legal standpoint, the issue is that using competitors' trademarks can lead to an infringement lawsuit.
Here is a lightly-edited transcript of the episode:
Intro: It's the Law and Business podcast hosted by Anthony Verna. We tackle the hard issues where law and business intersect to help you understand your business’ legal obligations better. Anthony's law practice is focused on trademark, copyright, other intellectual property and advertising and promotion law. You can contact him at anthony@vernalaw.com and at 914-908-6757. And now, the Law and Business podcast.
Anthony Verna: Welcome to the Law and Business podcast. I'm Anthony Verna. I am here with Darcy Knapp. How are you doing, Darcy?
Darcy Knapp: Doing fabulous, Anthony. Glad to be here.
Anthony Verna: Fantastic. Good. Well thank you for calling in. And how can everybody find you? Let's plug you first.
Darcy Knapp: Just Google me. I’m everywhere.
Anthony Verna: Yeah.
Darcy Knapp: Darcy Knapp - K N A P P You'll find one of my various iterations out there. No problem.
Anthony Verna: Fantastic. Darcy-
Darcy Knapp: If they want to call me, if I'm on the phone, like right now, you're just gonna get my service, so keep trying. You'll get me.
Anthony Verna: Darcy, you're an SEO expert for lack of a shorter phrase.
Darcy Knapp: That's pretty short.
Anthony Verna: Yeah. Well, exactly.
Darcy Knapp: Yeah, a search engine optimization, online marketing, everything from web design through optimization. How to get your business found. We can make it bigger, better, faster, stronger.
Anthony Verna: So let's start here. Let's start with a couple mistakes that businesses generally make in either getting a website up or doing online marketing. How does that sound?
Darcy Knapp: I can give you the biggest mistake.
Anthony Verna: Go ahead. Let's start there.
Darcy Knapp: People start with a concept. They named their product. They go through all of their work and they never checked to see if a domain name is available.
Anthony Verna: All right.
Darcy Knapp: I can tell you their answer, as well. I put abc.com in the search bar and it didn't come. Nothing came up, so I assumed it was available. That's the biggest mistake. It’s the assumption of the name you want is available just because there was no website on it.
Anthony Verna: Absolutely, yeah. Going to a domain name registrar, they all have a little search box and if you type it in and it's taken, then it's taken. And if you type in whatever domain name your dream is and it's available, then buy it. Exactly. But you know, we've got a lot of new extensions coming out, a lot of new top-level domains coming out. Darcy Knapp: The only problem you have with a new top level domains, yes, they're fabulous. But what you have to deal with is if your audience is 35 plus (the target audience for your business), unless you're targeting college kids, you're targeting the newly married, the homeowners, the accumulators, we all have embedded muscle memory. We type in the business name and our hands automatically type .com enter [bark! Bark!] Sorry, that's my four-legged office assistant. She's now outside. So, where did she bark?
Anthony Verna: Oh, don't worry. Just keep going.
Darcy Knapp: Okay. So, if your target audience is in the accumulating stage of their life, even in the downsizing stages, we all have embedded muscle memory. We have been trained since the Internet first came out to type what ...
In Episode 8, I finish the discussion of the copyright infringement case between Roger Dean - famous for his 70s album covers - and James Cameron (and other producers of the movie "Avatar") with James Cushing of the Law Office of Faye Riva Cohen in Philadelphia, PA.
Then we talk about two ways in which bands are businesses:
Bands need trademark protection for their names Bands need partnership agreements.
Here is a lightly-edited transcript of the podcast episode:
Anthony Verna: Welcome to the Law and Business podcast. Once again, we have Jim Cushing. How are you doing, Jim?
Jim Cushing: Greetings everyone and I'm well, thank you
Anthony Verna: Jim, once again, tell everybody how to find you.
Jim Cushing: All right. Uh, Jim Cushing. Uh, but I think, uh, my professionally on Google, you'll find me as James W. Cushing. My law firm is the law office of Faye Riva Cohen. That's F as in Frank, A, Y, E R I V as in Victor, A Cohen and my email address is jwc@fayerivacohen.com. And (215) 563-7776 is how you reach me. And I keep a blog called judicialsupport.wordpress.com where I talk about law and a smattering of religion and music and some other things.
Speaker 2: All right, so last time you were on, we were talking about a copyright infringement case and it involved, the album designer for I would say your favorite band. Yes.
Jim Cushing: Yes, correct. My favorite band is the progressive rock or a prog rock band, Yes. But he's also the cover artist for other related bands like Asia and A Gentle Giant. And he's done other things like architecture and stage designing.
Anthony Verna: So, as we had discussed, he filed a lawsuit against James Cameron and other production companies involved in making Avatar, basically claiming that the design, the mise en scene was taken from a lot of his artwork. And ultimately the federal court threw the case out on a motion to dismiss because the ability to make that claim that the mise en scene copied his artwork was really not able to be made.
Jim Cushing: Right. I don't think there's any doubt that, either consciously or subconsciously, James Cameron had Roger Dean's paintings in his mind when he made Avatar. They’re very, very similar. Anthony could probably explain it, expanded on it more than the last time we did this, but I don't think it meets the muster of a copyright infringement or anything like that, but they are very, very similar. And as a Yes man, as a Roger Dean fan, I can tell you from reading all the websites, there is lots of great wailing and gnashing of teeth over this decision. But Roger Dean posted a, I’m a friend of quote unquote on Facebook of Roger Dean… And he posted an update a couple of weeks back about the case and lamenting the fact that he lost and he thinks that James Cameron clearly uses work and et cetera.
But he had a certain number of days to file an appeal. So, I decided to hold off until writing an update until I saw what had what happened in terms of the appeal. And the today I checked the dockets and discovered that a few weeks back, a couple of weeks back, Roger Dean and James Cameron decided to conclude the case. Roger Dean gave up his right to appeal and that the adverse decision about any sort of about any case against Jim Cameron regarding Avatar and the copyrights. And in exchange for that, James Cameron agreed not to pursue Roger Dean for any attorney's fees or costs or anything like that. So, the case is now over and completed much to the chagrin of Roger Dean and Yes fans the worldwide about this way, what we believe to be a… I don't know. I was going to say grave injustice, but I guess according to copyright law it is not.
Anthony Verna: That's fine. Well, yeah, I mean as we discussed last week, it's, it's a matter of… I was kind of surprised that they didn't really amend the pleadings to discuss how it was… how each element may have been copied. And so therefore they kind of went with a very broad general copyright infringement cl...
In this episode, I speak to J. Thorn, horror and dark fantasy author.
J and I talk about what inspires his writing. I laughed heartily when he said that the most-asked question to him is, "How do you sleep at night?"
But J is an author who sees himself as an entrepreneur and uses many avenues of marketing.
In this intersection of law and business, copyright law is the target. Copyright law doesn't protect inspiration, only the expression of ideas. It is an important area of law for artists because artists control the results of their work - the fruits of their labors. Without copyright law, would art proceed at the rate that it does proceed? Someone else using another's work seems to intrude upon our internal sense of fairness.
Here is a lightly-edited transcript of the episode:
Intro: It's the Law and Business podcast, hosted by me, Anthony Verna. We help your business understand its legal obligations better. My practice focuses on trademark, copyright, intellectual property, and advertising and promotion law. Contact me at Anthony@vernalaw.com.
Anthony Verna: Welcome to the Law and Business podcast. I'm here with J. Thorn, dark fantasy, horror writer. And that's basically the same genre, correct?
J. Thorn: Uh, pretty much.
Anthony Verna: All right. Cause I remember Phillip K. Dick once said that science fiction and fantasy are the same genre as well. And, as you know my law practice is intellectual property, so we like to protect. -well, we can't protect ideas, but we like to protect the expression of the idea and we effectively protect inspiration. So, let's start with where your inspiration comes from.
J. Thorn: Sure. Inspiration is, it's really kind of hard to describe. I think, like a lot of artists, I feel compelled to create and for better or worse, sometimes that compulsion is out of your control. So, I think I'm sort of inspired by just life in general and, I'm compelled to kind of to tell stories and so the inspiration could be as something as complex as a major life event or it could be as something as simple as a stroll through the woods. It's really, it's really sort of unpredictable, but it's also exciting at the same time.
Anthony Verna: So what are some, let's talk about a little life event, something daily that has inspired you in the past.
J. Thorn: Sure. Have you ever woken up at night and you're not really sure what woke you up?
Anthony Verna: Of course.
J. Thorn: Yeah. Well that's a perfect example. And being a horror, dark fantasy writer, you can imagine the depth to which you can take that experience. Most of us, most of the time we'll roll back over and go to sleep or go get a drink of water or look out the window. But you can take that one little moment, that everyday moment that we all have, and you could really turn that into something else.
Anthony Verna: Okay. And, and how about something more grandiose that has inspired you?
J. Thorn: You know, I'm a parent and I have two children and I think that experience… No, not a specific experience, but just being a parent, I think, fundamentally changes your outlook. And it's not in a judgmental way. I'm not suggesting that. I just think it really alters the way you view the world. And so, I think that having children is a pretty significant life change and I think that's I can draw inspiration from that as well.
Anthony Verna: So, taking your inspiration, putting it down on paper, this is what you do, this is your career, correct?
J. Thorn: Yes.
Anthony Verna: So how did you you take this from, well, I hate to use the phrase hobby, but, as they say, if you don't make money, it's a hobby. How did you take this from hobby to career?
J. Thorn: Well, it's not a, it's not a straight line and it's not a very clear line either. Never a straight line. No, no. It's never, it's never what you planned, right? It's never what you set out to do. I consider myself more of an entrepreneur than I do a writer.
In Episode 6, I talk with Paul Lukas, ESPN's uniform reporter and the host of the UniWatch blog. We discuss classic logo design and what makes classic logo design. Paul digs deep into his repository of design critique to offer some tips to the logo designer about how a business should go about designing a new logo for a new brand.
I discuss how this affects trademark law. Trademarks should be "fanciful" or "arbitrary" to be their strongest. It is easier to protect trademarks that are stronger than ones that are "descriptive", as consumers should not have a preconceived connectedness between the goods/services behind the brand and the brand itself.
Paul's conclusions about classic logo design being equivalent to a business' longevity seem to echo how trademark law works. The best logos work because there is not a relationship between the logos and the business - the business makes that connection in consumers' minds.
Here is a lightly-edited transcript of the podcast episode:
Anthony Verna: All right. I have theme music. Sounds really good. Thank you for listening to the Law and Business podcast. This is episode number six. And in it I speak with Paul Lukas, ESPN’s uniform reporter, and we speak about design and what makes design happen and what's memorable in design. And what are some tips that businesses who are looking at creating new brands can think of when designing those new brands. And a lot of what Paul has to say talks about not overdoing it and that for a lot of businesses, what is iconic extends from longevity. And we certainly have, I think, experienced a lot of marketing advice that says that a logo has to tell the story of the business or that the business name or the branding has to tell the story of the business. And trademark law disagrees with that. And I think what Paul has said in the interview that you're about to hear really emphasizes what trademark laws says, even though he may not really have that link in mind. And that is in trademark law, marks that are fanciful are easiest to protect. And a fanciful mark is one that has no relationship at all between the product and the mark itself. And it's created in only for this actual use. And this use in relating to the brand. A fanciful trademark helps because the relationship is created by the business between the brand or the logo and the products, the goods, or services offered by that business. An arbitrary trademark is one that is already in existence and the relationship comes from this particular good, this particular business.
Think of Apple. That really is the traditional arbitrary mark. The word Apple has nothing to do with computers and the design of an apple has nothing to do with computers, but this company has created that particular relationship. So, think about how trademark law relates to these particular design tips. And I think you'll see that how law is set up is probably how we already perceive a lot of the world around us. Thanks very much for listening. I'm Anthony Verna. You can reach me at anthony@vernalaw.com or at 914-908-6757. Once again, my law practice focuses on intellectual property, trademark, copyright and advertising promotion law. Thanks very much for listening.
Anthony Verna: So welcome to the Law and Business podcast. I'm joined by Paul Lukas. How are you doing, Paul?
Paul Lukas: Very good, thanks. Thanks for inviting me on. I'm happy to be here.
Anthony Verna: Not a problem. Thanks for calling in. And Paul is the… shall we say you're the uniform reporter for ESPN. How does that sound?
Paul Lukas: Yeah, yeah.
Anthony Verna: Wonderful. And your blog is uniwatchblog.com, correct?
Paul Lukas:: Yes. I write a column for ESPN called ”Uni Watch”. And then that column, which runs about once a week, it's supplemented by a daily blog, also called “Uni Watch” for people who can't wait a whole week to get their latest uniform news.
Anthony Verna: Wonder. Yeah, I'm one of those people who …
Paul Lukas: Yeah,
In this episode, Michelle Carter and I discuss some of the mistakes that bloggers make which result in a lawsuit. This can include trademark infringement (naming a blog after a registered trademark), copyright infringement (in pictures and music), and defamation. Here is a lightly-edited transcript of the episode: Anthony Verna:
Hi there. Welcome to the Law & Business Podcast. I'm joined with the lovely, beautiful, smart, intelligent Michelle Carter. How you doing?
Michelle Carter:
I am great. Thanks for having me again.
Anthony:
Anytime. I'm going to let you kick it off cause this topic was kind of your idea wasn't it?
Michelle Carter:
Indeed it was. I think today we're going to be talking about the five things as a blogger that can get you sued.
Anthony:
And I'm sure there's more than five now that I think about it, but we've got five in mind though.
Michelle:
You're the attorney so you would know better than I, but, I think that we have both found that there are five common mistakes that bloggers make that will tend to get them in hot water if not right away then in time because eventually they will find you and catch up with you.
Anthony:
We'll go with that.
I'll say this is a caveat to the show topic is that we're giving five tips or five things to be wary of, but ultimately there's always more than that. And these are five main ideas and five main thoughts. But, but anybody out there who has a blog in order to make money in order to advertise in order to keep business going, there's just more than these five.
Michelle:
Fair enough. So number one on our list of five things that can get you sued as a blogger is naming your blog after another business.
Anthony:
Some examples that come to mind are IkeaHacker.
Michelle:
I can answer you Forever 21.
Anthony:
That's a good one.
Michelle:
A Kindle Fire Department. One of my favorites of all time is Regretsry.
Anthony:
Right. And Regretsy is not around anymore.
Michelle:
No. April has moved on, but it was a great blog while it lasted. So, so why is it that naming your blog after another business could get you sued?
Anthony:
Well, for a lot of these businesses, obviously the business name is, is a trademark. And let me take a step back because I know not everybody listening has been listening since episode one. But the trademark is a business name, a business, a slogan, a logo that relates back to a business. Usually business people can own trademarks, but it basically identifies the source of goods and services and the quality of those goods and services. So something like Ikea, you think of Swedish furniture there. There you go. Swedish, that's made in China. Right? Okay. Isn't it all? But the idea of, of, of more than just Swedish furniture is I would say modular furniture, modern furniture. And what a website like - was it Ikea Hacks, Ikea hackers.net did, and I'm still not sure why you would want to do this, but they basically had their own ways of putting together Ikea furniture so that you could put together your bookshelf as a desk instead.
They had a lot of different projects, like they had one where you could buy an end table and make a guitar out of it. Is this fair use, or, why not? Yeah. Honestly, it may be. It's, I know I read at least one comment where people said it was cheaper to buy Ikea furniture than it was to go to your local home improvement store and buy wood. So, and it's already cut. It's already polished. It's already finished there. There are a lot of different projects. We certainly can't fault them for their creativity.
I wouldn't want to do anything like that, though.
Michelle:
Okay. Your opinions on this website aside the, the fact is it was a very popular website. They had a lot of readers.
Anthony:
Yes, absolutely. And there is delineation here as to why Ikea decided to stay away from a lawsuit. And then they went to start the trademark infringement suit because ikeahackers.
In this episode, I speak with Daniel Sollecito, who has had a distinguished career in law, handling antitrust and commercial litigation. We discuss preparing for litigation, document retention, and communications between the attorney and the client with litigation ongoing.
Here is a lightly-edited transcript of the episode:
Anthony Verna: Welcome to the Law and Business podcast, Episode Four. I'm Anthony Verna, the Managing Partner at Verna Law, P.C. . You can reach me at anthony@vernalaw.com. This episode was recorded outside at the request of my guest Daniel Sollecito, an attorney who's had a very long and distinguished career. So, you will hear some outside noises and I hope that doesn't affect the content of the episode. Thanks very much for listening and hope you enjoy.
Welcome to the Law and Business podcast. I'm Anthony Verna. I'm here with my good friend, Dan Sollecito. Dan, am I still allowed to call you an attorney-at-law?
Dan Sollecito: Nope. Attorney-at-law, retired.
Anthony Verna: Emeritus attorney-at-law. How does that sound?
Dan Sollecito: Emeritus? Yes, I am definitely Like Pope Benedict. I am an emeritus attorney-at-law.
Anthony Verna: Dan has had a long career of litigation and heartache and heartburn.
Dan Sollecito: I've had a legal career about 43 years of which every single day was spent in litigation. I was not a transactional lawyer. I didn't do wills. I didn't do real estate closings. I did only lawsuits. I told my clients, unless it begins with a summons and complaint, it has nothing to do with me.
Anthony Verna: So let's start here. Because a lot of businesses are sued every day. So, when a business receives that summons and complaint and that business is now a defendant in a lawsuit, what are some steps that you think that business should take besides picking up the phone and calling the lawyer immediately?
Dan Sollecito: I would think, first of all, we would've backtrack a little. Generally, commercial disputes between businesses start with an exchange of letters. You were supposed to ship me a hundred sacks of flour. I only got ninety. Where was the other ten?
Anthony Verna: Or sometimes with my clients, we think you're infringing upon our client’s trademark. Please tell us how much of this you've sold.
Dan Sollecito: Yep. So at that stage, a client of mine who was a small business, and I represented many small businesses, I would expect to call me on the phone. If you get a letter which says, unless we can work this out, I'm going to have to sue you. That is a litigation letter and that should immediately be turned over to an attorney. Now if we go into the next step… The next step your opponent gets dissatisfied with your answer.
Now their attorney writes to you. That's called an attorney demand letter. That, to me, if you are businessman, and a good businessman that absolutely requires you, like a forcing bid in bridge, you have to then call your attorney. Once you get that attorney demand letter, if you have a regular attorney who does your litigation or who does all your legal work, he is going to expect that if you get a lawyers letter from another party, you will contact him immediately. Because now in effect, the clock is running, tape is running. Now we're making legal history. So, once you get the letter from your opponent and it looks like a threat of litigation, you're infringing on copyright or a trademark or you know, you sent us the wrong goods or whatever. If you're a head’s up businessman, you might call your lawyer at that point. That's not a bad idea. And then he can help you draft your non-lawyer answer to that to try to keep it out of litigation, you know, but once you get the letter from the other side's lawyer, then you have to be crazy not to contact your lawyer.
Anthony Verna: Well, of course, but I also think this goes to another area that you and I have experience in, which is that if an attorney is involved for the other side,
In Episode 3, I am joined by Jim Cushing. Jim is a lawyer at The Law Office of Faye Riva Cohen, P.C. , focusing on family, real estate, and unemployment law. Jim is a big fan of the band Yes and discussed a copyright infringement case that a frequent artist for the band filed against James Cameron, the film director, over the scenery in "Avatar." You can read Jim's blog here. Through this episode, I discuss the requirements for filing a copyright infringement lawsuit and what materials in visual works are protected under copyright law and what is not protected under copyright law.
Here is a lightly-edited transcript of the podcast episode:
Episode 3:
Anthony Verna: Welcome to the Law and Business podcast. I'm with James Cushing. James, you can say hello. Jim Cushing: Hello. How are you doing? Anthony Verna: I'm well, thanks. Thanks for calling in. Jim, tell us about your practice. We'll start there. Jim Cushing: Thanks. You know, I met Anthony way back in college through a mutual friend, Steve. Do you remember? Anthony Verna: There's only one mutual friend? Jim Cushing: Well, I think we developed many mutual friends through that, I guess. I the people there and I've been in practice in Philadelphia since 2002. My practice and my office Faye Riva Cohen’s sort of claim to fame as a labor employment side practice, civil rights type of stuff. But I am sort of been relegated to a lot of a domestic, family divorce, custody support, unemployment comp, small claims sort of thing. I do a lot of landlord-tenant and contracts up to sort of the garden variety every day, a real person type stuff. Usually plaintiff's side. Anthony Verna: So, you're claiming I'm not every day or a real person? Jim Cushing: I guess not everyone's patenting things every day, but yeah. So, I've been doing that since about 2002 for the same law practice, which sounds crazy to me. Actually, just yesterday was my 12 year anniversary at this office. Anthony Verna: Congratulations. Jim Cushing: Thank you. And my 15th anniversary practicing law. What's that? Anthony Verna: Do you get a pin? Do you get a framed certificate? Jim Cushing: I wish I got a gold watch or something, but it was just more of a, Hey, good, nice, go on. Thanks for not asking for more money. Something like that. And I've been, you know, I’ve been maintaining a blog, which is I think what sort of inspired this cast, but it’s judicialsupport.wordpress.com where I've been writing about some copyright infringement issues, which I guess you'll get to, Anthony. Anthony Verna: Yeah, absolutely. I can break those down for you. I've got all the paperwork up here and what you've been talking about is a case called William Roger Dean Against James Cameron, 20th Century Fox, student entertainment, blah, blah, blah, blah, blah. And lots of other people who put money behind movies. Who is William Roger Dean? Jim Cushing: Roger Dean. He's not usually known as Roger Dean. In fact, it wasn't until I, I've been a big fan of his for years and it wasn't until I saw this lawsuit that I knew his name was William. But, Roger Dean… Anthony Verna: Stage names, aren't they wonderful? Jim Cushing: What's that? Anthony Verna: I said stage names, they’re wonderful.
Jim Cushing: Right? Yeah. He goes by his middle name. So, Roger Dean. He's been around as an artist, as a surrealist artist for I would say 45 years. His claim to fame is doing art for album covers mainly, although he's done some other things on television, movies, and architecture, but his main art avenue is going to be album covers for rock bands. So, he's been the primary artist for the band Yes, the progressive rock band. Yes. He's done their logo and many, many album covers for them and their stage set design. Anthony Verna: I was going to say you're a big Yes fan. Jim Cushing: I'm a huge Yes fan. Anthony Verna: You're allowed to admit this here. Jim Cushing: And I was going to say that nowaday...
Welcome to Episode 2 of the "Law & Business" podcast: An Introduction to Copyrights. In this edition, I talk about what a copyright is, what rights a copyright owner has, and some thoughts for businesses that create works that fall under copyright law. It is a short and simplistic review of copyright law. If you have any questions, please send me an e-mail at anthony@vernalaw.com. A lightly-edited transcript of the podcast episode: Hi there. Welcome to the Law and Business podcast. This is officially episode 2. I’m Anthony Verna. I’m the Managing Partner at Verna Law, P.C.. You can visit the Law & Business podcast website at vernalaw.com and you can contact me with any questions at anthony@vernalaw.com. Thanks very much for joining us and this is going to be one of those episodes where I'm talking all the time. I have plenty of guests coming up in upcoming episodes. I've been asked to talk about copyright law by a few listeners and friends as it is a big part of our practice, which focuses on trademark and copyright advertising and promotion law. I spoke earlier today to somebody with some copyright questions and I look to pass those on to you. But before I do, I'm going to define what copyright law is and it's I know a little confusing for a lot of people, but a copyright law effectively protects works of art and it's a right that an author or composer or writer or artist has and it allows that artist or author, I mean, I'm just going to stick to the word author because that's what we do in copyright law. It allows the author to take that work that falls under copyright law and make copies and sell copies and publicly perform copies of that work. It allows that author to receive royalties for the licensing that work when it appears in other forms. So, from that particular standpoint, copyright law is very powerful, especially for a business that owns copyrights and works in copyrights. Some of the articles that fall under copyright law are literary works and in today's world, computer programs are defined as literary works, musical works, dramatic works, and that includes any music that's in a dramatic work. Pantomimes, choreographic works, pictorial graphic sculptural works of visual arts, motion pictures, and other audio-visual works. Any sound recordings, and, by the way, the musical work is separate from the sound recording itself. There is a separate copyright in any sound recording as there is in the content of the sound recording. Architectural works also count as works with copyrights, but it’s a little different. So, the person who asked me a copyright infringement question, it really was an infringement question, is an author and the author said, “I sell my book. And generally, I like to say, you know, I don't have a problem if there's a site out there that has taken my work and is giving it away because it creates other avenues of revenue for me. It creates more eyeballs, it creates more fans, it allows other work to be sold.” and that's the wonderful, wonderful flexibility of copyright law. Enforcing it doesn't really affect your, excuse me, not enforcing. it doesn't really affect your business plan. You can choose to ignore any infringement. Now, I will say, I don't particularly like the idea of ignoring infringement. If your business plan is to give away copies or to allow other mediums or other media, then it should be released under what's called a creative common license. The traditional copyright law says the author/ copyright owner, because they could be different, and I'll explain that in a bit, has these rights and anybody who does not have written permission to sell copies, distribute copies, etc. has no rights whatsoever and is infringing. To look a little bit aside from the infringer is effectively what's called a Creative Commons license. And that is if the person who traditionally would be infringing is not making money off that infringement, then we'll look aside.
In this episode, guest Michelle Carter joins me to talk about trademark licenses and a basic idea of what a likelihood of confusion is.
In trademark licenses, it is imperative that the licensor insists upon having standards in the product and intellectual property in order to have the trademark license stand for goods or services. In the meanwhile, it is incumbent upon the trademark licensee to meet those standards lest there be liability for trademark infringement and breach of contract.
Speaking of trademark infringement, we discuss a couple basic cases of what a likelihood of confusion is between trademark owners. Then I discuss the need for a trademark search and due diligence before use of a trademark.
Here is a lightly-edited transcript of the discussion:
Anthony Verna: And we're off, aren't we?
Michelle Carter:
Indeed. We are.
Anthony Verna:
Welcome to episode one, not zero of the Law & Business Podcast. I'm Anthony Vernon. I have a special guest with me. Say Hi.
Michelle:
Hello, listeners!
Anthony:
With me is Michelle Carter. What business are you in, Michelle?
Michelle:
I do public relations for select clients.
Anthony:
Yes. Very good. Welcome. Thank you. Of course. I've known you for a long time now. It is a pleasure to be here.
For those of you who forget who I am, I'm Anthony Verna. I'm a managing partner at Verna Law, PC where we do intellectual property, patent, trademark, copyright and advertising and promotion law. That's a mouthful.
I am also going to be speaking at the Small Business Albany Exposition. October 1st I'm doing the opening remarks and I'm doing a seminar on trademark and copyright law for the small business owner. Although I never really liked the idea of being just a small business attorney, but, this is a small business exposition, isn't it?
Michelle:
And it's a good thing you're not just for small business, but in all seriousness, it is a wonderful event. If you have a chance to check it out, you really should.
Anthony:
It's October 1st in Latham New York. Did I pronounce it correctly? Okay, very good. And you can go to smallbusinessalbany.com if you want to register. Excellent.
This is the Law & Business Podcast.
It's, what I find interesting is this intersection that a lot of people find that sometimes maybe law stifles their business. Sometimes they find that law helps their business and sometimes people are just confused because all they want to do is business and not worry about, what laws do you have any confusion in, in these particular areas?
I would say that, , I have seen with, with multiple clients that their, their ignorance of the law can certainly come back and bite them. So I always advise people to do the legal on the front end. You will thank yourself later. I promise.
Michelle:
That almost sounds like: you should hire an expert as well.
Anthony:
It does because experts have the, the, uh, ability to be expert in their field and actually know what they're talking about.
Hmm. Now, now let's go to people who, who sound as if they don't know what they're talking about. Because I heard, I have, you and I were talking earlier about Donald Trump obviously before we were recording, and he has sued Trump entertainment, which he doesn't own. And part of, part of the issue is that he's, he's only minority shareholder of Trump entertainment. What he says doesn't go, however, because it's still called Trump Entertainment. It's a license for the name Trump. And Trump is, has many federally registered trademarks. You can find “Trump” for the casinos, obviously for real estate. And, I'm sure for, I forget the Trump board game.
Do you remember? Do you remember Trump airlines?
Michelle:
I do. Yeah.
Anthony:
He was trying to set up something like a semiprivate charter starting out of Atlantic City to luxury spots, although I guess that didn't really stick well. Did it?
Michelle:
Apparel.
Anthony:
I know there's, there's Trump apparel out there.
This is an introduction to the "Law & Business" podcast. My focus in my law practice is on intellectual property. So, I wanted to discuss a series of questions that a potential client asked me on the phone earlier in the day: What do I need to do to protect the trademark? What is a trademark, actually? These are a few thoughts to introduce the "Law & Business" podcast.
Here is a lightly-edited transcript of the podcast episode:
Hi there. I'm Anthony Verna. Thank you for listening to the Law & Business Podcast.
This first entry, consider an episode zero. It's an introduction to what the Law & Business Podcast is.
I am an attorney. I practice intellectual property: patents, trademark, copyright, trade dress and advertising and promotion law.
I wanted to create this podcast to discuss issues of law and business because most of my clients are business and we see a wave of entrepreneurship in today's world and it's, it's a wonderful wave and I think many business owners have this idea of barging into business, into the business world, like a bull in the China shop. You need to be a little more gentle than that sometimes. And that's the point of this podcast: to discuss issues that I see as I practice law and as other colleagues of mine see as they practice law and I'm going to have guests and I'm going to be able to discuss issues fully that the intersect with what I do and intersect with what my colleagues do.
I look forward to having fruitful discussions and I look forward to having um, your interaction. You can reach me at anthony@vernalaw.com
I'm the managing partner at Verna Law, P.C. in Rye, New York, outside New York City. This may be considered attorney advertising. You can reach us at (914)908-6757.
If you have any questions, don't hesitate to pick up the phone and call. My first topic is really going to be a little on the basic side with what I do. And that's because somebody asked me a question today and that question is, well, when, when should I trademark something and when should I tell my clients about trademarks? And, and want to unpack that a little bit. A trademark is anything that relates back to a business.
And that can be a name, it can be a logo, it can even be a color or a sound. And that relationship back to the business is so that consumers understand quality of goods and services. So number one, I don't want businesses to wait until there's a problem cause usually if there's a problem then by then it's too late. I don't want that to happen. That's issue one. Issue two is understanding that a trademark is a noun not of her and that trademark rights are in fact created when this name, logo, slogan, color or sound is associated with goods or services that our business provides to consumers and whether the consumer is a person or another business, that's okay. So I don't want somebody to just sit there and say, “I'll wait till I'm in trouble”, because by then it might be too late.
One of the first steps that that we take and, and I advise all businesses to, to, to really be diligent and being defensive because there are so many other businesses out there. There are so many competitors. And in this particular instance, the first step that we do when a client gives us a trademark or a proposed trademark is a trademark search. I want to find out what's out there and I want to see what possible competitors, I don't want an infringement lawsuit for our client. They're nasty. I handle plenty of trademark disputes when somebody comes to me and they're not in the middle of the dispute. The idea is: Can we not be in one? I want to find out what competitors are out there with something similar. I want to see what outside of the industry, because trademarks are divided by industry. I want to see what else is out there that might bleed into this industry.
And I've advised clients, that they might want to change the trademark. Why? Because if it's early on,