The IT / Digital Legal Companion: A Comprehensive Business Guide to Software, IT, Internet, Media and IP Law

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The IT / Digital Legal Companion: A Comprehensive Business Guide to Software, Internet and IP Law

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THE AUTHORS AND PUBLISHER MAKE NO EXPRESS OR IMPLIED WARRANTY OF ANY KIND and assume no responsibility for errors or omissions. No liability is assumed for incidental or consequential damages in connection with or arising out of the use of the information or digital fi les contained or supplied with or for use with this book. Changes occur in legal matters and in the interpretation of law. Some legal matters are subject to opinion and judgment rather than defi nite rules. If you require legal, accounting, or other expert assistance, you should consult a professional advisor.

Knowledge is power.

—Sir Francis Bacon, philosopher

Knowledge shared is power multiplied.

—Robert Noyce, co-inventor of the semiconductor, co-founder of Intel

Acknowledgment by Gene Landy

This work is founded on the insights and experience of many.

Most important is the contribution of Amy Mastrobattista, who edited the text, contributed forms, and provided many suggestions for improvements. You can find Amy’s touch throughout the book.

I also gratefully acknowledge the help of persons who contributed ideas and insight or kindly reviewed the text, including:

Mike Dornbrook, Executive Vice President, Harmonix Music Systems, Inc.

Peter Duflo, President and CEO, Strategic Ventures, LLC

Andrew Feinberg, General Counsel, Brightcove, Inc.

Jim Geisman, CEO, Marketshare, Inc.

George Grey, CEO & Founder, Mobicious Inc.

Beth A. Marcus, Ph.D., CEO and Director, Zeemote, Inc.

David Marglin, San Francisco attorney; formerly General Counsel, Gracenote, Inc.

Charles Nesson, Professor, Harvard Law School and Founder and Co-Director of the Berkman Center for Internet & Society

Jeffrey Steefel, Franchise Executive Producer, The Lord of the Rings Online, Turbine, Inc.

G. Venkatesh, Chief Technology Officer, Sasken Communication Technologies Ltd.

Aaron von Staats, Senior Vice President and General Counsel, Parametric Technology Corporation

Anyone who wants to reaffirm their belief in the essential goodness of human nature should write a book. Of course, any inadequacy in this work is solely my own responsibility.

I am indebted to Chris Williams and Amy Pedersen and all the other good people at Elsevier who helped with this book.

I am also grateful to my assistant Cindy Scolamiero and the others at my law firm that suffered through proofing of the text.

In addition to these individuals, I thank the countless innovators and risk takers in digital technology companies around the world. Their creativity and effort advances and continually renews the world that this book describes.

Finally, I owe the greatest debt to my wife Sylvia who put up with me while I worked on this book.

A Note from the Authors

We would like to hear from you about the ways in which this book has helped you and about ways that it could be improved.

We are always interested in new technologies, innovative legal techniques, new legal issues, and new problems to solve. If you have a need for business law services that require a sophisticated understanding of digital technology business and legal issues, please let us know.

Feel free to write us at our firm:

Gene K. Landy

Chair, Technology Business Group

e-mail: gkl@riw.com

or

Amy J. Mastrobattista e-mail: ajm@riw.com

Ruberto, Israel & Weiner, P.C.

100 North Washington Street

Boston

Massachusetts 02114

USA

www.riw.com

About the Authors

Gene K. Landy is a shareholder of Ruberto, Israel & Weiner, P.C., Boston, Massachusetts, USA and Chair of the firm’s Technology Business Group. His practice has a concentration on technology companies and digital technology transactions. He is a graduate of the Massachusetts Institute of Technology (SB 1969) and Harvard Law School (JD 1975 cum laude).

Mr. Landy handles domestic and international transactions for high technology businesses, from start-ups to publicly traded companies. He represents companies in software, integrated circuits, telecommunications technology, IT hardware, Internet applications, e-commerce, computer games, and other technology fields.

His work includes licensing, intellectual property, technology transfer, business sales and acquisitions, and investments. He has served non-US technology firms that operate in the United States, including companies in India, Australia, Ireland, England, Switzerland, and Scotland. Mr. Landy also works with investors in technology opportunities.

In addition to this book, Mr. Landy is the author of an earlier lay person’s guide to software law entitled The Software Developer’s and Marketer’s Legal Companion, published by Addison-Wesley in 1993, as well as a number of articles in the field of information technology law published in law journals and other publications.

Mr. Landy frequently lectures on legal topics and has spoken at e-Commerce Expo, Lotusphere, the Computer Games Developer Conference, and other industry trade shows, as well as the Massachusetts Technology Leadership Council, Massachusetts Continuing Legal Education, and the International Federation of Computer Law Associations. He has spoken at the invitation of the Comsware Communications Technology Conference in Bangalore, India and the Irish Software Association in Dublin, Ireland. He has been named a Massachusetts Super Lawyer in 2004 to 2007.

Amy J. Mastrobattista is a shareholder at Ruberto, Israel & Weiner, P.C. and a member of the Corporate Department and Technology Business Group. She is a graduate of Smith College (A.B. 1988 magna cum laude and Phi Beta Kappa) and New York University School of Law (JD 1991).

Ms. Mastrobattista has extensive experience structuring financings, including seed rounds, angel investments, and venture capital transactions. She has represented both emerging companies and investors. She is also very active in technology licensing for companies small and large.

Ms. Mastrobattista has successfully structured and negotiated the purchase and sale of numerous businesses. She was recognized as one of Boston’s Top 10 Lawyers in Women’s Business Boston reader’s poll, January 2006.

About the Authors’ Law Firm

SERVICES OF THE TECHNOLOGY BUSINESS GROUP

Focus on Technology and Business

Ruberto, Israel & Weiner is a Boston-based business law firm. Our Technology Business Group is focused on information technology, digital products and services, and high technology manufacturing.

We understand the interaction of intellectual property and technology in a global marketplace

We have sector-specific knowledge. We understand technologies, business practices, intellectual property assets, and transactions

We can execute sophisticated and complex technology sector deals

Technology Sectors that We Serve

Our firm has clients in many technology product and service fields. They include both US-based and non-US businesses. RIW represents emerging technology companies as well as established players expanding into new technologies. Specific industry segments served include:

Software including business products, infrastructure, financial software, Internet, open source and communications products

Consumer products, social applications, Web sites, and content, including Web and mobile media and games

IT services and consulting

Web businesses and software-as-a-service (SaaS)

Communications technology

Silicon products, including semiconductors, ASICs and MEMS

High tech materials and manufacturing companies

Business Services for Technology Companies

Our services for technology companies include:

Company Formation

Incorporation, tax strategy, capital structure, shareholder agreements

Formation and operation of US-based subsidiaries of non-US companies

Financing Transactions

Seed capital, angel and venture financing, commercial loans, private placements, and securities offerings

Employment

Employment law generally, employee agreements, option plans and other equity compensation plans

Trademarks and Copyrights

US and worldwide trademark registration

Management of global trademark portfolios

Copyright registration

Technology M&A and Strategic Licensing Transactions

RIW handles technology merger and acquisition transactions. We also can carry out strategic licensing deals, including acquiring or granting key licenses for product line expansion, patent portfolios, or enabling technologies.

Strategic Guidance

We provide advice and guidance on legal aspects of:

Technology and intellectual property strategies

Distribution strategies

Branding strategies

Information Technology Transactions

We handle domestic and international transactions for technology businesses ranging from start-ups to publicly-traded companies that are essential for technology companies, such as:

Licensing and technology transfer

Customer, reseller, VAR and OEM agreements

Development agreements

Technology acquisitions and transfers

Outsourcing agreements

Internet and mobile distribution deals

Web agreements and online documentation

Patent, copyright and trademark licensing

Open source licensing

International distribution arrangements

Strategic alliances and joint ventures

Multimedia, entertainment and game deals

Content acquisition and licensing

Litigation

We provide civil litigation services, including trade secret matters, copyright and trademark infringement, contract disputes, and non-competition and confidentiality agreements

Global Affiliations

Through our network of affiliations across the globe, we partner with other law firms as needed for global distribution agreements, trademarks, partnerships and other international matters.

Contact

Contact us to discuss your technology business needs and strategies. Please feel free to contact Gene Landy, Technology Business Group Chair, .gkl@riw.com

Ruberto, Israel & Weiner, P.C. 100 North Washington Street, Boston, MA

02114 USA

(617) 742-4200 Phone / (617) 742-2355 Fax

www.riw.com

Form Downloading Instructions

About the Forms in The IT/Digital Legal Companion

There are 38 contract and web forms in the Appendix at the end of this book. The purchaser of this book can download the forms from a special web page at no additional charge. The forms are available in PDF and Microsoft Word format. You can also download a zip file on the web side that includes all of the forms in both formats.

To get the forms, you need to register and then downloading just requires a few clicks.

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Find the 8-digit passcode listed at the back of this book inside the cover.

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Downloading Forms

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Use of Forms

Please note that the forms are subject to copyright and are provided for your own personal or business use. You should not use them for distribution or sale.

Table of Contents

Cover

Title Page

Copyright

Dedication

Acknowledgment by Gene Landy

A Note from the Authors

About the Authors

About the Authors’ Law Firm

Form Downloading Instructions

Chapter 1: Introduction: Using this Book to Build Value

Your Need to Know Digital Business Law

Who is this Book For?

Organization of this Book

Approach of this Book

Understanding and Using Intellectual Property

Doing Deals

Understanding and Dealing with Legal Risk Factors

Global Perspective

Focusing on Your End Game From the Beginning

How to Use this Book

Using the Legal Forms

Limits to the Contents of this Book

Legal Counsel

Chapter 2: Digital Copyright Basics

Some History

Copyright Counts!

In this Chapter

The Nature of A Copyright

Public Domain

Infringement

Derivative Works

Works Made for Hire

Fair Use

The First Sale Rule

Thin Copyright Protection for Computer Databases

Copy Protection Technology and Anticircumvention Law

Registering your Copyright

Advantages of Copyright Registration

Criminal Copyright Violations

More on Copyright Law

Conclusion

Chapter 3: Copyrights on the Internet, for Software Protection and Around the World

In this Chapter

Topic One: Copyright and the Internet

Topic Two: Copyright and Software Protection

Topic Three: International Copyright Protection

Chapter 4: Trademarks and Domain Names

In this Chapter

Trademark Registration Process

Do-It-Yourself Registration of us Trademarks

Essential Actions to Protect your Trademarks

Taking Trademarks Global

Exploiting Trademarks in Distribution, Licensing, and other Deals

Domain Names

Trademark Infringement Litigation

Conclusion

Chapter 5: Patents and Digital Technology Companies

In this Chapter

The Power and Use of Patents

Nature of United States Patents

Software Patents and Business Method Patents

The Patent Application Process

Inventing and Patent Strategically

Getting Serious about Patents

Your Strategy for Us