Author Archives: Mark Kaufman

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About Mark Kaufman

Mark Kaufman is a lawyer and founder of Kaufman and Kahn, LLP in New York New York.
EMAIL: kaufman@kaufmankahn.com
BIO: About Mark
PHONE: (212) 293-5556

Leaving Your Job to Start Your Own Shop?
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Leaving Your Job to Start Your Own Shop? | Mark Kaufrman

{4:48 minutes to read} It’s exciting to find yourself in a place where you can start your own business—exciting and frightening. But, if you’re leaving a place of employment to start your own shop, it’s very important to be sure that your present employer is not inadvertently going to own a piece of the work that you do for yourself, or have a claim against you for taking clients. If you have a non-compete agreement in place, that would give a pretty clear sign that you couldn’t take clients whom you met while you were working for the employer. But even if you don’t have a non-compete agreement, you still have restrictions on what you can do, if you do it during your regular business hours and use your employer’s facilities.

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Are You a Nigerian Prince, or Do You Just Want My Money?
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Are You a Nigerian Prince, or Do You Just Want My Money? | Mark Kaufman

Attorneys beware: The equivalent of the so-called “Nigerian prince who has been trying to contact you” has found out where you work! Recently I received a referral for a potential client from another attorney. The first email from this potential client, whom I will call Mr. Jones, explained that he had matters pending in three different jurisdictions.

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Characters and IP Law: The Personalities of Stephen Colbert
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Characters and IP Law: The Personalities of Stephen Colbert by Mark Kaufman

When he was on Comedy Central’s The Daily Show and The Colbert Report, Stephen Colbert committed to a character that has the same name as his. The character is a greenback conservative who keeps an American shield under his desk—a character who popularized the word “truthiness” (yes, it’s a real word). When Colbert took over David Letterman’s job on CBS’s Late Night, he announced that he would retire the character and be himself.

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Atlantic v. Reddit: A Principled Stance or a Fool’s Errand?
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Atlantic v. Reddit: A Principled Stance or a Fool’s Errand?| Mark Kaufman

Atlantic Recording Corp. has filed a petition in the New York State Supreme Court seeking to compel the internet message board Reddit to reveal who posted a link that directed the user to a pirated version of a song that hadn’t been released yet. The recording is named “Heathens,” performed by a hip-hop duo named 21 Pilots, and is part of the soundtrack to the movie Suicide Squad. According to the papers Atlantic filed with the court, the leak resulted in substantial damages, because Atlantic was no longer able to execute its strategic promotional prerelease and, as a result, suffered a loss of sales. The filing seeks permission to subpoena Reddit in order to determine the IP address of the user who leaked the song. Atlantic argued that Reddit is the only entity that can tell who posted the link.

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The Top 5 Provisions That Should Be in Your Contract Agreement
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The Top 5 Provisions That Should Be in Your Contract Agreement | Mark Kaufman

When we negotiate contracts with large corporations on behalf of computer programmers, app developers, and website developers, it’s like playing chess with someone who’s very good at the gameyou have to assume that everything you write is going to be considered carefully. You’re not going to squeeze something by a big company; it has experienced, in-house counsel just for this purpose. Let’s assume it’s going to be an ongoing relationship and not simply one project. In that case, you want to have a master agreement that has general provisions, and a task order or Scope of Work (SOW) for each specific project.

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How (Not) to Handle a Disgruntled Client
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How (Not) to Handle a Disgruntled Client|Mark Kaufman

Let’s say I have a client who does landscaping. Their customer paid for part of the job by credit card and part of it in cash and was told to wait several weeks to see how things grow. A few days later, the customer emailed the landscaper:

This is a terrible job. I’m disputing the credit card charge. I also want a refund of the portion paid in cash. And if you don’t pay it back, I’m going to ruin you on social media.

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Domain Names: Use ‘Em or Lose ‘Em
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Domain Names: Use ‘Em or Lose ‘Em| Mark Kaufman

Recently a client of mine was approached by a company that buys and sells domain names. It was claiming to represent another company that wanted to buy my client’s domain name—but remain anonymous. I was intrigued and took to the internet to search through all of the new products coming out with names that were similar to my client’s domain name. I narrowed it down to one product that is sold by an extremely large company—a product that was 100% wholesome and was featured alongside great Americana imagery like people playing baseball, going out for picnics, and standing around in gazebos.

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Showing Use Online: The Proof Is in the Order Page
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Showing Use Online: The Proof Is in the Order Page|Mark Kaufman

We all know that web pages often serve as retailers. With that in mind, an intellectual propertyattorney from Turkey asked me a great question at the INTA 2016 conference in Orlando: “Can showing products online be enough to show use of a trademark in the United States?” Fortunately, U.S. trademark guidelines for the U.S. Patent and Trademark Office (PTO) and decisions of the TTAB have adapted to reflect the marketplace. According to the Trademark Manual of Examining Procedure (TMEP):

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A Little or a Whole Lotta Imitation? Makes You Wonder.
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A Little or a Whole Lotta Imitation? Makes You Wonder | Mark Kaufman

Recently, a copyright case years in the making has come back into the news. The heir to the composer of a song called “Taurus,” performed by a band called Spirit, had filed suit against a little-known band called Led Zeppelin over something called “Stairway to Heaven.” In March, a court in California denied Led Zeppelin’s motion for summary judgement, so the case can now go forward toward a jury trial. The judge not only determined that the songs were sufficiently similar for a jury’s determination, but also that the claim was not barred by laches (the doctrine that a delay in bringing a lawsuit unfairly prejudiced the defendant). The 2014 re-release of Led Zeppelin recordings, including this “greatest hit”, helped plaintiff demonstrate that the infringement was within the 3-year statute of limitations, so it wasn’t vulnerable to the laches defense.

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“Close the Door, Please.” Preventing Accidental Waiver of the Attorney-Client Privilege
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“Close the Door, Please.” Preventing Accidental Waiver of the Attorney-Client Privilege|Mark Kaufman

To best protect clients, we need to be sure the attorney-client relationship is clear, to avoid any potential problems that could arise during litigation. In most cases, where a client comes to you for advice about a specific matter and then retains you for a particular case, the rules governing attorney-client privilege can be quite straightforward.  Other matters are not nearly as simple.

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Which Came First, the Registration or the Infringement?
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Which Came First, the Registration or the Infringement? | Mark Kaufman

Filing for copyright registration is extremely important for a number of reasons. Most people already know that they cannot sue for infringement until after registration. What they might not realize is that they are not entitled to statutory damages or attorney’s fees for any infringement that occurs prior to registration. This distinction should not be underestimated:

  • The potential for having to pay the plaintiff’s attorney fees is often enough by itself to motivate a defendant to settle out-of-court in an infringement case.
  • A number of statutory damages are normally at the discretion of the judge and can vary greatly, but it can range up to $150,000 for infringement (if the plaintiff demonstrates that the infringement was willful).

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Trademark Demand Letters: Sometimes More Bark than Bite
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Trademark Demand Letters: Sometimes More Bark than Bite | Mark Kaufman

A client of mine recently received an email from someone saying that since the 1990s, he had been using the same trademark she’s using now, so she should stop using it. The two trademarks were not exactly the same, but they were very similar, and for related goods and services. However, I wouldn’t recommend my client change her brand just because someone says, “I got there first.” There is more to it than that.

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Trademark Demand Letters: Sometimes More Bark than Bite
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Trademark Demand Letters: Sometimes More Bark than Bite | Mark Kaufman

A client of mine recently received an email from someone saying that since the 1990s, he had been using the same trademark she’s using now, so she should stop using it. The two trademarks were not exactly the same, but they were very similar, and for related goods and services. However, I wouldn’t recommend my client change her brand just because someone says, “I got there first.” There is more to it than that.

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Piercing the Corporate Veil
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Piercing the Corporate Veil | Mark Kaufman

Corporations are designed to protect the individuals who work there from personal liability. Naturally, it’s difficult to hold an individual owner of a corporation liable for the corporation’s acts. Even in cases where plaintiffs are able to obtain a judgment against a corporation, they’re often discouraged from trying to enforce it against the individuals who own the business – and plaintiffs who do attempt to enforce the judgment are only occasionally successful. Recently K&K successfully pierced the corporate veil in a case involving the sole shareholder of a professional corporation. We represented a client who had already won a judgment against the PC, but could not collect from it. Although we attached the PC’s bank account, there weren’t enough funds to pay the judgment. So, we couldn’t force the corporate entity to comply with the judgement.

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8 Things All U.S. Trademark Owners Should Know
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8 Things All U.S. Trademark Owners Should Know | Mark Kaufman

{Read in 5:35 minutes} So you’ve just gotten your U.S. trademark registered. Congratulations! Now there are some things you should know… 1. The trademark needs to be maintained. Between the 9th and 10th year after registering your trademark, and every 10 years thereafter, you must file a combined “Declaration of Use and Application for Renewal.” This might seem like a long way off, but therein lies the danger: deadlines can sneak up on you. One advantage to working with an attorney who does a lot of trademark work (as opposed to one who does this work only occasionally) is that we typically have an automated system for keeping track of deadlines and reminding clients of renewal periods.

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