1. Presented by The Jacobs Law, LLC
Legal Issues in Startups: From Company Formation to Intellectual Property Rights
Presented by The Jacobs Law, LLC
Travis Jacobs
Stefano D’Agostino
Robert Mihail

2. Company Formation and Choice of Entity
Domicile
Massachusetts vs. Delaware.
Types of Entities
Series LLCs
Massachusetts – Similar Statute to DE, but worth it?
Delaware
well-developed case law
board protections
ease of corporate filings and related state-law administrative issues

3. State Formation Fees

4. Company Formation and Choice of Entity
State Fees
Massachusetts
Official fees:
LLC: $500 to incorporate plus $500 each year (plus $20?)
C Corp: $275 to file articles of organization up to 275K shares, $100/100K additional shares, plus $100 each year to file annual report (plus $9), $125 + $10 if late.
Delaware
Official fees: Faster Service = Higher Cost
LLC: plus $90 to form plus $250 each year (franchise tax)
C Corp: $89 to incorporate plus annual tax that depends on number of authorized shares or assumed no-par capital

5. FORMATION FACTORS

6. FORMATION FACTORS How will Capital be obtained? Angel / VC / Other
Current vs. Future Goals & Plans
Tax Considerations – Entity Level vs. Pass-Through
Owners – S-Corp Trap (Tax Exceptions, Citizenship, # of Members)
Management Structure
Type of Business – Insurance, Finance, Professional, Services
Cost – Upfront and Annual

7. Company Formation and Choice of Entity
LLCs vs. C Corporations
LLCs are not taxed at the entity level
LLC documentation is more elaborate and costly than corporate documentation
State fees are higher for LLCs
No stock options incentives for LLC employees
Less corporate housekeeping required, faster decision making at management level
IPO will likely require conversion to corporate form
Why could a C Corporation be the best form for startups looking for investors?
VCs and other investors usually do not invest in pass-through entities such as LLC’s. 
It is expensive and complex to convert from LLC to a C corporation.

8. Company Formation and Choice of Entity
When to incorporate
The sooner the better so that the startup can issue shares for a nominal purchase price before shares pick up value due to later financing – avoid tax issues.
The sooner you incorporate, the faster you get protection for your assets if your business is already up and running
If business is already up and running it may be more cost efficient to incorporate rather than continue paying Medicare and Social Security as self-employed

9. Company Formation and Choice of Entity
Equity Split
Equal shares rarely make sense – split should be based on prior and future expected contributions
Questions to ask:
Who’s idea was it?
Who is funding the startup?
What is the shareholder’s role in the company?
Does the shareholder take a salary?

10. Financing Crowdfunding What is crowdfunding? Pros Cons
More time on developing the business and less time on fundraising
Greater and more diverse investor pool
Niche ideas can get funding
Cons
Investors lack the depth and due diligence tools available to VCs and sophisticated angels
Only accredited investors can invest in equity crowdfunding
High cap table

11. Financing Preferred Crowdfunding Models
Product in return for contribution
Equity/Debt
Choose a model that has an SPV that is itself the sole investor in your startup in order to keep the cap table low.
Beware Federal and State Securities Laws
Only accredited investors can invest in startups via public calls.
Don’t pay anybody a commission for raising funds unless they are a registered broker-dealer.

12. Financing VCs and Angel investors how to find them?
Networking and warm introductions
AngelList
you should have your own lawyer

13. Product Development, Marketing and Operations

14. Product Development, Marketing and Operations
Have an invention disclosure program in place
Conduct freedom-to-operate before starting on product development direction and at set milestones
Copyright notices
Even after 1989, it is better to Include ©, date of first publication, name of author(s) and “All Rights reserved” on all copyrightable materials.
Proper use of trademarks
Nouns vs. adjectives
TM vs. ®
Consistent use with registration and across media

15. Product Development, Marketing and Operations
Social media and the use of trademarks
Hashtags, domain names and even stylized QR codes may contain trademarks
Keyword triggering
Definition: Purchase of another party’s trademark as a keyword to trigger an advertisement – ex: if you search for an iPhone and there is an ad for Samsung Galaxy in the search results
Placing the name of the competitor in the banner advertisement without identifying the true source of the advertisement – likelihood of confusion
No problem if you merely and openly compare goods/services

16. Product Development, Marketing and Operations
Social media and the use of trademarks
Guidelines:
Monitor your competitors’ use of your trademark
Submit complaints to search engines on improper use of keywords
Action against competitor/advertiser
Consider context, pros and cons (misguided fan or intentional harm?)
Do take action against counterfeiters, and misleading/inaccurate information
If cost-effective, outbid competitors on keywords that are confusingly similar with your trademark
Do a clearance search before using hashtags, domain names or any other marks online
Avoid using third party famous marks (blurring/tarnishment)
Be truthful and avoid confusion in comparative advertisement

17. Product Development, Marketing and Operations
Social media and the use of trademarks
Beware of imposters/fake reviewers
Most social media platforms will take action and remove imposter postings
Parody exception (Twitter)
Action against improper use of trademarks on social media platforms is limited under Lanham Act and UDRP
Current law is focused on second level domain names but not user names.
Mark must be “used in commerce” which may not be the case with facebook or twitter accounts
Solution:
register your brands as usernames on popular/used the most by your consumers social media sites
Create your own pages and use your mark commercially on such social media websites

18. Product Development, Marketing and Operations
Privacy policy for collected customer information
Ensure that IP discussed in marketing materials has been protected prior to marketing release
Ensure that customer communication strategy complies with CAN-SPAM
Ensure that use of social media complies with their terms of service
Agreements with employees, consultants and outside developers must contain:
Confidentiality and
IP Assignment provisions

19. Intellectual Property Rights

20. Intellectual Property Rights
The danger of wearing two hats:
Review employment agreement with current/previous employer and look for IP assignment provisions
Any pre-incorporation IP should be assigned to the company in writing
tax-free transaction under Section 351 of the Internal Revenue Code
Founders, employees and consultants should sign NDA and IP assignment agreements with the startup, otherwise this will become a problem in later investor due diligence.

21. Intellectual Property Rights
Conduct a freedom-to-operate IP due diligence BEFORE choosing a brand, or selling a product.
Just because the Secretary of State’s Office approves your business name for registration it does not mean you should not conduct a trademark clearance search.
Sec of State does not consider the USPTO’s federal register, other states trademark registers or even your own state trademark register.
Beware of Open Source Software
When you use OSS, you enter into a license.

22. Intellectual Property Rights
Develop an IP Strategy
Build
License
Monitor
Enforce

23. Intellectual Property Rights
Building your IP portfolio
Why build an IP portfolio?
Investors like assets and barriers to entry since they provide security and leverage.
Consider patents and trade secrets before any publication
Register your copyrightable materials with the US Copyright Office (35USD) as this will give you benefits such as , standing to sue for copyright infringement, statutory damages and attorneys fees, presumption of originality and authorship.
Choose abstract or fanciful marks not suggestive or descriptive

24. Intellectual Property Rights

25. Intellectual Property Rights
Licensing
Monetize your IP portfolio
Cross Licensing
Expand your market reach

26. Intellectual Property Rights
Monitoring
Why should you be on the lookout?
Laches
Early licensing opportunities
Stop infringers before they pick up steam (and financial leverage)
Protect your brand
Oppose newly published/granted patents and trademarks while you still can
Sources:
USPTO, trade publications, icerocket (social media), technorati (blogs)
Third party monitoring services:
Thomson, Mark Monitor, Corsearch

27. Intellectual Property Rights

28. Intellectual Property Rights
IP Enforcement
Patents
The dangers of sending out letters accusing others of patent infringement
You can still enforce your patent even if you don’t practice your invention
Don’t sit on your patent rights and if you threaten sue, you should follow up
Trademarks
Don’t sit on your trademark rights and if you threaten sue, you should follow up
Don’t send or respond to cease and desist letters without consulting competent counsel

29. Thank You! The Jacobs Law, LLC
Legal Issues in Startups: From Company Formation to Intellectual Property Rights
Thank You! The Jacobs Law, LLC