Protecting Your Intellect: A Day’s Work At Revision Legal

Sending subpoenas deep into Vietnam via rickshaw. Debating with the Supreme Court of Moldova. Testifying before the Michigan State Legislature on pornography. All litigation as usual for the Traverse City-based firm Revision Legal. Situated at the nexus of intellectual property (IP), emerging technology and business interests, Revision tackles unique cases for a wide variety of interests.

“It’s a pretty diverse group of clients,” said firm founder John DiGiacomo. “It’s not the standard kind of Traverse City business law practice.”

Located downtown above Talbots and next to the Michigan Land Use Institute, Revision handles concerns from across the country and around the world. DiGiacomo estimated 90 percent of clients originate from outside Traverse City – though it has handled IP concerns for numerous Traverse City businesses, including Daily Medias and eFulfillment Service – and 20 percent of those are foreign interests.

DiGiacamo started the firm in 2012, not long after forgoing a Michigan State University philosophy degree in favor of a law degree, at the suggestion of a mentoring professor. While visiting the educator for a fly fishing trip at his Traverse City home, DiGiacomo fell in love with the area. He later returned and set up shop after completing his education.

Shortly after its formation, Revision merged with a downstate firm. Though they soon separated after disagreements on direction and clientele, one of the other firm’s partners, Eric Misterovich, decided to stay with Revision. Now the two, along with paralegal Jessica Schimpf to round out the team, tackle cases – both preventative and punitive – involving IP.

Though they’re not above protecting a mom and pop shop, the firm’s more typical clients range from $500,000 to $200 million in gross revenue, with large portfolios at stake.

Trademarking And Copywriting

Revision’s mainstay, IP law, includes four distinct types.

A big one is trademarks, or “words, designs, logos, phrases, even colors sometimes, that indicate the origin or source of goods or services,” said DiGiacomo.

He pointed to the eponymous local clothing brand’s M 22 logo as a well known an example in the Traverse City area. He also identified several local breweries as clients with trademark concerns, often revolving around brand names.

“If you don’t get a [trade]mark at the outset and you later try to register it, it becomes a huge problem between you and some brewery in Colorado,” DiGiacomo added.

Local breweries also have a vested interest in another type of IP: trade secrets.

“The great example of a trade secret in Traverse City is brewing recipes,” he said. “Trade secrets are things that have independent economic value from the fact that they are a secret.”

Once contracted by a brewery, DiGiacomo explained, Revision will typically analyze the brewery’s employee agreements, the staffs’ access to confidential recipes and other safeguards. Then the firm will explain where the greatest risk to trade secret theft might occur.

Similar to trademarking, but used to protect an individual work, is copywriting.

“Copyright protection is any work of authorship fixed in a tangible medium of expression, which is basically the ‘lawyered’ way of saying any kind of created work,” he said.

The last type of IP – patents– Revision typically contracts out to independent attorney Jason Young.

When it comes to patents, most often used for mechanical inventions, “Price is always the big thing,” he said, with federal patents ranging from $1,200 to more than $10,000, and can sometimes take years to secure.

Step one is usually to determine if a client’s invention is likely to turn a profit, before deciding on the appropriate method of legal protection. Sometimes, DiGiacomo said, it’s more prudent to simply sell the invention.

“People come in with inventions that require a lot of manufacturing,” he said. “If you’re just an average guy, you’re not going to have the cash to do that.”

The firm also advertises its expertise in internet law. Rather than a separate legal category, DiGiacomo said internet law is traditional law, simply applied to the internet – but added that IP theft online is a growing concern.

“You think, ‘Who’s going to steal my website?’ It actually happens quite a bit,” he said.

One growing target, said DiGiacamo, are free online services such as rate comparing and pricing tools sites offer to customers in hope they will later use their paid services. Digital thieves use computer programs and a method called “scraping” to rebuild these tools on their own sites or sell them to others.

Thanks to the internet, Revision also sees an increasing number of cases involving theft of intellectual property across national borders. Criminals either operate from foreign soil, or flee there to avoid persecution.

“The real difficulty comes where you have to make sure they have notice of the lawsuit, you have to make sure they have adequate right to participate in the lawsuit,” said DiGiacomo. “So we spend an inordinate amount of time doing that.”

Hence the previously mentioned Vietnam rickshaw subpoena, which was served to a hacker who stole a domain name portfolio worth several million dollars from a U.S. client. Or Revision’s ongoing dealings with the high courts of the former Soviet satellite Moldova, to litigate a man attempting to relocate after turning a profit off of stolen IP.

Despite the cost and time involved, DiGiacomo said many clients are willing to incur the costs of long term legal pressure to maintain rightful ownership of their intellectual property.

 

Steps For Protecting IP

Before looking to purchase protection for your IP, first identify its financial viability. How will it turn a profit? (Sometimes it is more prudent to sell your IP to a company, than to try and market it yourself). Next, come up with a broad plan for making your idea marketable. Then:

  • Create a business entity to market your IP.
    • This can be accomplished at michigan.gov/lara/ for as little as $50.
    • If you have partners, create an operating agreement that defines everyone’s roles and expected duties.
  • Start a business bank account, separate from your personal account, to develop and protect your IP.
    • Many banks offer business accounts
    • This allows for limited liability in the event of a lawsuit and protects your assets from seizure.
  • Determine what (if any)  money you have available for IP protection
    • Protection can range from $1200 to more than $10,000, depending on type
  • Approach a firm for consultation. Look for one that has:
    • Experience with large and small companies ( in the event you grow)
    • Experience with litigation (in the event your protected property is infringed upon)

 

Local IP Attorneys

In addition to Revision Legal, the following Traverse City-based attorneys dedicate at least part of their practice to intellectual property: Marcelo Betti, Douglas Bishop, Mark Clark, Michael Conlon, Alan Couture, Brian Hall, Anthony Klemptner, Enrico Schaefer, Andrew Shotwell and Edward Timmer.

Source: State Bar of Michigan

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