1. Presented by: Randy Kay of DLA Piper October 19, 2006 Protecting IP in Dealings With Third Parties

2. Protecting IP Today’s goals  Identify risks  Explore techniques to reduce exposure Corporate culture Records creation Records retention

3. Pioneering Case – W.C. Fields Plaintiff sued W.C. Fields for using jokes submitted by plaintiff on Fields’ radio show 1940’s California jury awarded $8,000 as value conferred

4. Typical Corporate Case Taco Bell sued by two marketing executives claiming idea for “Yo Quiero Taco Bell” campaign $41 million judgment

5. Typical Business Deal Case Disney sued by two businessmen over the idea for building Disney’s Wide World of Sports Complex Disney had rejected the plaintiffs’ plans Florida jury awarded $240 million

6. Typical Entertainment Industry Claim Claim that Twentieth Century Fox used ideas from high school biology teacher’s script in making film “Jingle All the Way” 2001 Michigan jury verdict for $19 million Verdict subsequently reversed

7. Where is the Exposure? Partnerships Joint Ventures Alliances Collaborations Outside submissions Customer feedback Subcontracts

8. Industries High technology Entertainment Any product or service organization Any industry

9. Exposures “Make” versus “buy” analyses Outside submissions Business partners Any time a potential collaborator is cut out of the final project Licensor/licensee relationships Company email

10. Sample Exposures Claim against West Publishing over enhancement to Westlaw Claim against insurer by technology provider Third party subpoenas Patent prosecution

11. Documents and email Email, email, email (smoking guns of the era) “He will send us the prototype to review” “We are returning all copies of your proposal” “File – Next Gen” “I circulated your proposal to various departments for review” “Let’s discuss the merits of supporting this proposal” “We need this to be competitive”

12. Exposures to legal claims Trade secret misappropriation Contract claims  Express contracts  Implied contracts Breach of confidence Copyright Patent

13. partner Reducing Exposure Eliminate the word “partner” from the vocabulary

14. Reducing Exposure Corporate culture is key – What outside information will the company see?  Define the corporate culture  Promote the corporate culture  Drill it into employees’ heads Sales force, R&D department, executives, customer service personnel, business units  Police it

15. Reducing Exposure Carefully manage “Make-Buy” analyses  Timing  Personnel  Documentation Create protocols for use of email Attorney-client privilege

16. Reducing Exposure NDA v. “Non-confidentiality Agreement” (See sample) Confirming letters (See sample) Memorialize independent development Maintain proof of independent development Assess records retention protocols

17. Reducing Exposure Contracts  Written agreements Confidentiality, definitions, prior dealings, disclosures, consultants, limits on use, orally exchanged information, time limits on duties, ownership provisions, licenses, presumptions, burdens of proof, noncompetes or conflict of interest provisions, escrows, etc.

18. Presented by: Randy Kay of DLA Piper October 19, 2006 Questions??? Protecting IP in Dealings With Third Parties