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- [00:09]
Host
A lot of us have experience coming up with an idea for a product or service or experience that we are convinced people will love and even pay money for. But we don't know how to protect our idea or as it's legally referred to, our intellectual property. Protecting our intellectual property is super important in the world of business, but there are things that are intellectual property that you may not have realized. Things such as recipes, pictures on your website, even dance routines. My next guest, Anthony Verna, is an intellectual property attorney and he is going to tell us all about his journey and help small business owners protect themselves from branding and copyright infringement. But whether you're an artist and entrepreneur, a writer, an inventor, or simply someone with a great idea, understanding the basics of intellectual property can empower you to take control of your creative destiny and help you navigate the ever changing landscape.
- [01:09]
Dave
Of the digital world. All right, welcome back to another episode of Locally Owned. I have got Anthony Verna of Anthony Verna Law, and he is going to share his entrepreneurial journey with us. Anthony, it's a interesting step into your journey into law because you graduated from, well, I can't remember what university you graduated from, but I graduated from Case.
- [01:47]
Anthony Verna
Western Reserve University, Ohio's nerdiest place of higher institution.
- [01:56]
Dave
Well, in computer science, the nerdier the better. I think so, yeah.
- [02:01]
Anthony Verna
Well, you know, like the women used to say, the, you know, odds are good, but the goods are odd.
- [02:11]
Dave
I love that. But yeah, you graduated there and then went into law, so, you know, that's quite a different transition. And yeah, there are a few of.
- [02:24]
Anthony Verna
Us, but it certainly is not, not the norm, that's for sure.
- [02:28]
Dave
Yeah. So was it something that you, that computer science just bored you or did something happen in your life where you, you know, because being a lawyer, you're, you know, you are placing yourself in a position to defend people who find themselves up against something that they, that's bigger than them and that they can't defend themselves against. And so, sure. So that's, you know, to, to go for that career. Did something happen that pricked your sense of injustice in the world or was it just, it's a good career and I find it interesting and computer science is boring me. So.
- [03:08]
Anthony Verna
Yeah, I mean, at first it was, it was definitely, I mean, first. Yeah, I mean, it was, it was definitely a part of coding all day that, that bored me. You know, just sitting with your computer all day, staring at code, sometimes printing out code. I mean, it gets, it can be very solitary. I mean, while college, especially during the computer science classes, during the programming classes, you know, they really do encourage group participation. Talking about the code, you know, bouncing things off each other. In the real world, that's not always the case. Like everybody has their assignments to do and get done and you really do need to sometimes figure it out yourself. Unless there's some kind of edict from above that says, look, go ahead and talk to everybody and figure it out and do some teamwork to figure it out. So it gets to be very lonely. And I didn't particularly like that. So, you know, so that kind of bored me. Also the culture as well. Like I worked at two separate. I worked at two companies before going to law school. And like, for example, the second company, lunchtime came and we didn't go out, we ordered lunch from a deli, get got it delivered and we would play Starcraft during lunch. And then, you know, and then, you know, if you're able to go home, you know, sometime in the rush hour times and I was able to get my work done for the most part, so I went home, you know, during normal times. I didn't really burn the midnight oil at this company, but still a lot of people didn't go home because they didn't want to deal with the rush hour. So they played Starcraft after work. And like, at some particular point I need to like, look, I need to look past the computer screen. Like, you know, my eyes have never been great, so I need to look past the computer screen, I need to read a book, I need to stare at grass, I need to talk to people and like, I need something more than just this machine all the time. So yeah, I, I bounced. What can I say about. And you know, look, you know, I worked for a year and then I went to law school. So it wasn't that weird, you know, of a timing career path. Might be a little strange to say, hey, I went from, you know, programming and then I went into law, although I think there are more people like, like me, but also I went into intellectual property law and when I found it I was like, oh, this is, this is what, this is perfect. This is what I want to do. But I also think if you're in intellectual property law, for the most part, you have some kind of other background. For the most part, not 100% but you know, you're not generally going to be, you know, a pre law, you know, you know, graduate or philosophy grad and then go into intellectual property. You're probably going to be some kind of nerd or artist and then go into intellectual property.
- [06:16]
Dave
Yeah, yeah. So just give a brief definition for any of our listeners to kind of fill out what. What exactly intellectual property law covers.
- [06:28]
Anthony Verna
It covers anything that your mind creates, frankly. So in. In the legal field, we divided into a few different areas. Patents. Patents cover inventions, right. If you are creating a product or method or, you know, some kind of chemical or some kind of, you know, you know, biomedical engineering thing, whatever you are creating that is new and novel can be protected by what's called a patent, which is a government grant that gives you a monopoly on what's in the patent. We have trademarks. Trademarks are brands. You have a brand for your product, for your services that attaches to your product or services. That's a trademark. Trademark law protects those particular brands. We have copyright law. Copyright law traditionally protects artwork, paintings, books, magazines, movies, scripts, dances, because you gotta actually write how to do the dances, right? You know, music, sheet music, architecture plans. Right. All of that falls under copyright law. And architecture plans is a little narrow coding, right. So in today's world, we put copyright code as a literary work. So. So it falls under books and magazines. All of that is protected by a copyright. So you have the right to make a copy, you have the right to sell a copy. You have a right to make works derived from your original work. So that's what intellectual property is. It's what your mind can create. And it's a little different than actual property, such as your house, real property, or personal property. Like all the guitars that are behind you, Dave. Like, you know, intellectual property is a little different. So. But. But ultimately it's. It's. It's the result of something that your mind creates.
- [08:42]
Dave
Yeah. Okay. All right. So. So that really covers a pretty broad spectrum. I didn't realize that. If you've written a particular dance, now, how do you protect that? You know, how do people protect that if they've written a particular dance and someone's out at a bar doing that dance, you know?
- [09:05]
Anthony Verna
Sure. So the instructions for that dance are protected by copyright. So however. However that is expressed. And there are, you know, sometimes there are just instructions written, you know, on a piece of paper. Step one, two, three, four. You do that. Sometimes it's the actual footprints with instructions on, you know, here, here, here, you know, so there are a few different ways that that can be expressed.
- [09:33]
Dave
Okay. Okay. Yeah. So I've written a couple songs, and I remember years ago, you used to have to record them and send them on a tape to the Library of Congress.
- [09:49]
Anthony Verna
These days, you would open an account with the Library of Congress online and you would upload the sound file.
- [09:56]
Dave
Yeah, yeah. Much easier. But it was always exciting waiting to get something back from the Library Congress.
- [10:05]
Anthony Verna
Oh, you're still going to wait to get something back from the Library Congress. Don't you worry? It will not happen overnight.
- [10:12]
Dave
Yeah. Now, what if somebody doesn't have their. Whatever intellectual property they have, whether it's, you know, a song or.
- [10:24]
Anthony Verna
Right.
- [10:25]
Dave
Dance instructions, if they don't have it, gone through the process to get it copyrighted, but they have it documented when they actually wrote it, and they see that somebody else is now doing that song, that it's a ripoff.
- [10:42]
Anthony Verna
Sure.
- [10:42]
Dave
What, you know, what's the. Is that a much different course if they have actual evidence that they wrote the song on their computer on a certain date?
- [10:53]
Anthony Verna
So here's the difference. Copyright law, your copyright cannot be enforced without registration. Now, you could register your copyright after the infringement happens. That's acceptable, and then file a copyright infringement lawsuit. But copyright law, by the way, this is different. For copyright law, patent law, trademark law, they are all different creatures and animals, so they work differently. Copyright law, if your song is created and somebody else were to infringe. So copy it. Copy too much, you know, make another song that sounds too much, you know, like it. And it's therefore not an independent creation, whatever the case might be. If there's an infringement, you know, I, as a copyright lawyer, yell and scream all the time, create your work, then go file it at the Library of Congress immediately.
- [11:53]
Dave
Okay?
- [11:55]
Anthony Verna
But if you don't, you know, you. You know, here's the. Here's the consequence of not doing that. One, you can't file a lawsuit until you actually have a copyright registration certificate in your hand.
- [12:07]
Dave
Okay.
- [12:07]
Anthony Verna
You could ask the Library of Congress to expedite it. That's going to cost you an arm and a leg in government fees for the expedition. Oh, well, two, once you get it, you are not allowed to ask for attorney's fees or what we call statutory damages. You are only entitled to what we call actual damages under copyright law. So a royalty rate is all you're going to be allowed to sue for. In most situations, that's not enough to justify a copyright infringement suit. Or, you know, and I've done plenty of these where, you know, I'm representing a defendant because they infringe, like, one photograph, and the judge is like, what are you doing here? Seriously? Like. Like you're asking. You're asking your federal court for $20,000. I realize it's copyright law, and this is where you Know, you sit, but like, you're sitting in front of me for $20,000. Like, could you guys like go work this out and like, don't, you know, get away from me, kid. You're bothering me. Like, so you don't want to be in that situation. You really want that registration in hand so that you go to federal court and you can say, well, I'm entitled to attorney's fees. I've had my registration before the infringement happened. Judge still might say, this isn't worth a whole hell of a lot. But that's a totally different calculation at that point. If your order is creation, registration, infringement, you get all of that. You know, you get the ability to ask for all that from the very beginning.
- [13:45]
Dave
Okay. So you can ask for attorneys fees.
- [13:49]
Anthony Verna
In an infringement suit when your registration, you know, happened before the infringement.
- [13:57]
Dave
Oh, okay, okay, gotcha. So that's why you want to make sure you, you get it registered.
- [14:02]
Anthony Verna
Yes.
- [14:03]
Dave
Yeah, immediately. Okay.
- [14:07]
Host
Not registering your intellectual property immediately can really cost you. I love that Anthony is first insistent that this is something that you do immediately, but that he's also willing to help you even if you haven't. Even when his own standing with a judge gets put on shaky ground. That's definitely somebody you want in your corner helping you fight your legal battles.
- [14:28]
Anthony Verna
Yes.
- [14:29]
Dave
Gotcha. Well, what. You know, here's something interesting. So as far as trademarks go, I remember one time, you know, when I had my company, I created a marketing piece that I wanted to mail out. And here in Alabama, you know, you know, right on Thanksgiving weekend is the big rivalry game. It's called the Iron Bowl. It's the Iron Bowl, Alabama and Auburn, and everybody's going to be watching that game.
- [14:58]
Anthony Verna
I once stated an Auburn alumna who, who, who was an Alabama fan, and I asked her, how did that work? And she's like, well, there's a reason I live in New York City. So anyway. Anyway, go ahead.
- [15:12]
Dave
She's a traitor to both sides. But yeah, so on this marketing piece, I, I didn't explicitly. I wanted to get people's attention. So I created. The way I created it was to just use the A that Alabama uses. They use a particular font for it and people would recognize that A in that color. And I couldn't get it printed up. They said it was. I don't remember if they said it was copyright infringement or trademark or whatever, but they wouldn't. I couldn't get it printed right.
- [15:50]
Anthony Verna
It probably.
- [15:52]
Dave
How does a college football team claim you cannot use a certain font on.
- [15:59]
Anthony Verna
A certain letter, you know, without, without really commenting on the situation because it's, it's, you know, hard to put myself in the shoes that you were in. But, you know, design aspects are covered by both trademark law and copyright law, depending upon, you know, the particular reason why that design was, was created. So if it's artistic enough, it'll fall under copyright law as a two dimensional work of visual, you know, visual art. And, you know, you know, when you have a bigger entity, certainly smaller entities don't want to touch that by any stretch of the imagination from a trademark standpoint. Well, it is a registered trademark because, you know, a, it's, you know, a, it's a trademark because it's, you know, a brand attached to goods and services. You know, whether it's a sports exhibition or apparel or. I'm sure there are a million other things that it's attached to. That's what it gets attached to. So it's a trademark there. I know that it's registered, you know, at the library at the Patent and Trademark Office. Excuse me. And so therefore, you know, I would understand if, you know, a printer says, look, we don't really want to go near this because that could be liability for us. I, I, I do, I am sympathetic to, yeah, to that, that particular wish. But ultimately it does fall under both copyright and trademark law for various different reasons.
- [17:33]
Dave
Okay. Wow. Yeah, you know, I, I thought it was interesting. I, I didn't make a big fuss about it. I, you know, sure. Just, you know, okay, I'll move on to something else. But, but it always struck me as how, you know, how can a entity claim a certain font on a certain letter and say, you know, you can't use that without our permission. But, but it makes sense if it's attached to their.
- [17:59]
Anthony Verna
Tried to do an outline of an apple with a bite into it. I bet you I know a computer company, little tiny computer company out of Cupertino, California that might have a problem with it.
- [18:10]
Dave
They'll take a bigger bite out of me.
- [18:18]
Host
Trademarks protect your brand. The idea of branding means that you are instantly recognizable in business. The whole reason for building a brand is because it builds instant trust. People feel like they know the brand and therefore they trust the product or service. Branding is basically your reputation and you want to protect your reputation by trademarking your brand in every area that you can.
- [18:43]
Dave
Yeah. Okay, so walk me through your journey a little bit.
- [18:48]
Anthony Verna
Sure.
- [18:49]
Dave
So you make this change and you choose something that's really niche intellectual property. So what made you choose that? And Then kind of walk me through how you got involved in a law firm and then went out on your own a little bit.
- [19:05]
Anthony Verna
Sure, sure. Well, yeah, I mean, like I said, when I discovered it in law school, I was like, oh, this is what I want to do because it's. It's part, you know, tech nerd, which is, you know, what I am. It's part art. And, you know, I play multiple instruments. And so, you know, I've got some artistic, you know, streak in me. You know, you see the weird glasses on me these days. You know, I will sometimes go into court with different colored suits and, you know, the judges, thankfully don't, don't. Don't act like in my cousin Vinnie when I do that, you know.
- [19:47]
Dave
So, yeah, it's like I immediately thought of that too, when you were saying.
- [19:50]
Anthony Verna
Right, exactly. So it's like, you know, you know, it's kind of like an extension of me. Part art, part tech, part business, part law. And it kind of just struck that, you know, that, that chord in me. So I, you know, you know, I took the patent classes. I took the. I mean, I took the IP survey class. I took the patent classes. I took Advanced Problems in Copyright law. I took the. What did they call it? Cyber Law seminar. Don't ask me what a seminar is versus a class. I still went every week, but the.
- [20:25]
Dave
Difference is about $500. So they get to charge a little more.
- [20:28]
Anthony Verna
Yeah, don't I wish. But anyway, you know, that was, you know, it was what I did. So I just, like, filled up the rest of my law school days as much as I could with anything that, you know, touched intellectual property, which there aren't a ton of IP classes when, you know, regardless of the law school. So, you know, I did what I could. And then one of my classmates, I think we had patent to get patent law one and two together. His. The partner at his firm that he worked under was starting his own firm. So I, you know, I joined first. They called me technical assistant because I hadn't passed the bar yet. And then once I passed the bar, they called me associate. Great, lovely, wonderful. But, you know, the firm, what, frankly, the firm wasn't in very good, very good shape. And so I, you know, left. You know, I got, you know, plus, I was. I was. I was in Philadelphia. You know, look, I love Philly. It's my hometown. But for intellectual property, everybody was like, well, look, if you want the career, you do it in New York. So after talking with my parents, after a year and a half, I left the old firm. I took the New York bar exam and then left the firm and passed the New York bar exam on the first try.
- [21:54]
Dave
Why is New York the place for it, do you think?
- [21:58]
Anthony Verna
Well, I mean, it's New York or California would be two of the places, you know, partially because it's where a lot of corporate headquarters are. It's, it's where a lot of money is. Plus it was easier to uproot and go north and give it a try. And if I, if things didn't work out, I could always move back, you know, into my parents house, you know, so obviously not the case because I'm still in New York.
- [22:25]
Dave
Yeah.
- [22:27]
Anthony Verna
But you know, so I did, so I uprooted myself. I moved. I did find a position at a big firm, Paul Hastings. Now it's just called Paul Hastings LLP. Back then it was Paul Hastings and 78 other names at the end of it. But I found a job at Paul Hastings for two and a half years. I had a contract with the big firm, so it certainly meant that I wasn't on partner track. And ultimately there was an economic slowdown. And so they're like, yeah, well, you know, we have enough work for our associates and you've got a contract, so we'll just terminate your contract. Which was fine because my goal was, you know, starting my own stuff anyway, which I started to do on the side. So nights and weekends I did my own stuff. And so thankfully I was able to build my workload up on my own. So, so once I left Paul Hastings and I still, you know, I'm in touch with some of the people from, from there. And you know, once in a blue moon, if, you know, I, I need some patent advice, I ping the associate, the former associate that I used to work under. So hey, it's, you know, it was great. Still kept in touch with everyone. So I, I hung my shingle and after a couple years, I actually did gain a partner. Robin and I, you know, split about five years after that for a couple reasons, but, you know, she and I still remain friends. And actually a couple years ago I did use her as an expert witness in a case that, where I didn't handle the patent part of the case, but I handled the trademark copyright infringement and the false advertisement side of the case because Robin taught me everything I know about advertising law. And you know, ultimately we were able to settle the case, but plaintiff filed a preliminary injunction against my client and I needed to have some expert declaration, extra testimony. Robin provided it for me. So we are still Friends. Even though we had split five years after we had gotten together, then I had obviously rehung a solo shingle. And in that time, I gained my patent agent. Will J.
- [24:54]
Dave
Now, how do you think the partnership shaped you going solo?
- [24:58]
Anthony Verna
Sure. Well, you know, there are, there are a couple things here. One, here are the two big things that really made us split. And it wasn't, you know, some people would, you know, thought maybe our personality was a, a mismatch, maybe our age and generation was a mismatch because she is a year older than my parents. But it really wasn't any of that because, like I said, we are still friends and colleagues to this day. And I try to see her as often as I can, and if I need her, I use her and we team up when we can. The big issue came in two things. One was payments. And as somebody older and as a lawyer, she always saw, say, credit card payments as something lesser or less professional. So that was a bit of an issue. So, you know, that kind of got in the way. The other thing that got in the way is stuff like this. Again, as much as I like Robin, and frankly, she's very professional and would be much better at doing this than I am. I mean, trust me, she taught me everything about putting on my FM voiceover radio voice because she has worked in the ad industry forever. Like, she's got stories of Sean Connery doing, doing, you know, voiceover ads. She's got stories of Whoopi Goldberg doing an advertisement for a client. Like, she's worked in the ad agency. She would be much better than this. But she never did it once, never podcast episode, never a blog post. She always just froze. But I, it, it put that in my mind that that was an important thing to do when we split because she didn't, she didn't do it. It was all, you know, she would start and then, like, stop a sentence in. She always froze on that. For someone who also was a really great writer, loved edit, you know, she, you know, when she edited my, my briefs, I mean, it was always better. So it was just kind of funny that she couldn't, you know, she couldn't start a blog post or, you know, when we tried to do this, she was always like, no, no, no, no, no, no, no, can't talk about it. Those are the two frustrating aspects of it. And, and like, and like I said, she's a great writer. That declaration she had for that brief utterly killed, like, the judge used stuff from her declaration more than from my brief in that case. During the oral arguments of it. So, you know, you know, she's great, but like, yeah, it was just stuff that you couldn't do, and that's stuff you need to do in today's world. You need your website to be, to be, you know, vibrant and alive and moving and like, you know, who knows how Google is actually calculating SEO anymore? They changed it 78 times, you know, you know, four months ago. So. But, but it's, it's a requirement in today's world.
- [28:00]
Dave
Yeah, no, you're right. And Google always has been and always will be a moving target. So, you know, you do have to keep up with that.
- [28:12]
Host
I am sure that there are a lot of great IP lawyers out there, but I gotta believe that you are going to have someone who has a bit of an edge over other IP lawyers when you're hiring one that is a creator of intellectual property as well as being an intellectual property lawyer. He clearly embraces this arena, which I believe shows his passion for what he does as well as his deep knowledge for it.
- [28:39]
Dave
You said that she's taught you everything you know, so you've carried some very valuable skill, I guess, skills and knowledge and, you know, tools that you can use to do what you do. So that partnership was really a big part of you being able to get out on your own.
- [28:56]
Anthony Verna
Well, well, absolutely. And, and, and look, when it comes to, you know, when it comes to everything she taught me on, on advertising law, it really helps me with trademarks and, and it's not something I talk about often, but if some. But, but there was one time we had a client who. How can I describe this without giving away information? So our client worked on, you know, teeth whitening services and the word services. Teeth whitening.
- [29:29]
Dave
Oh, okay.
- [29:29]
Anthony Verna
So you would go, and you, you go in, you'd get your teeth, you know, bleached.
- [29:33]
Dave
Yeah.
- [29:34]
Anthony Verna
You know, and then like they'd shine probably a UV light as well. And that, I mean, like, that was the whole thing. It's like they weren't even a, they weren't even a dentist. They were just there to clean and bleach your teeth. So fantastic. Great. They had the word glow in their first trademark and, you know, we had a long chat with them about it. And this is the kind of thing like, like that second level thinking that, that, that Robin like jumped in with, she goes, is your trademark an advertising law issue? And a lot of people don't think about that. Why? Because the word glow, you know, effectively you're saying, do your teeth glow? And are they Promising to make the teeth glow. And is that trademark effectively an implied service or an implied promise that they may or may not be able to hold themselves to? So, so, you know, therefore it. It could be a false advertisement because you're not going to make everybody's teeth glow. Right. So, so, so she was like, like, you know, when it came to that interaction of how brands, you know, you know, work with, you know, this products and services that companies make, man, she was. She's to this day, still on top of it. On top of it, on top of it. So, you know, yeah, so there's stuff like that, you know, making sure that I. Making sure that I peek under every, you know, under every rock as best as I can to make sure that the client is as compliant as possible is certainly something that I learned from her. Yeah.
- [31:22]
Dave
The whole is greater than the sum of the parts. When you have a situation like that where you've got your strengths, her strengths. And so now, you know, you've, you. You've built a team around yourself. With Anthony's tech background, combined with Robin's.
- [31:41]
Host
Expertise in advertising, they were able to approach this trademark from multiple angles and identify potential risks that might have been otherwise overlooked. You know, each member bringing their superpowers to the table was an important thing that he learned and took with him, because though they parted ways, I love that he recognized the value in having a team. And learning from that experience, he breaks away and he builds a team that's more aligned with his passions and they share their expertise. This way. They're always getting the best results.
- [32:17]
Anthony Verna
Yes. Yeah. So there are three of us in the practice now, and that, you know, and then when I, you know, when we split, I was looking for others because I think that helps as well. So Will Jakes is our patent agent. He writes our patents when we have patent litigation. His thought is the first thought on the patent litigation. In other words, he compares the patents that are at issue to the products that are at issue and gives me a report when somebody comes to us with a new invention that they want to protect via patent. He is the one that does the patent search and says, here's the comparison between the client's new invention and the patents that we. That we were able to find. So he is our, you know, I don't want to say he's our patent department because we're only three, but he's our patent department. And then we have our litigation assistant, which is her. Which is the title that she wants, but I kind of think that that Title really diminishes, you know, her. Judy Endeon is of counsel to the firm. Basically what that means is, you know, when we need her counsel, we bring her in, which is why she likes litigation assistant, you know, much better as a title. But she's licensed Washington, Oregon, California. Whenever I have a piece of litigation that leaves here, Judy, you know, looks at it, scans it, and, you know, sometimes, you know, she sits first chair whenever we've got cases that are out on the west coast as well. So, you know, we've had, you know, since. Since. Since meeting Judy. You know, we've had cases in Seattle, Portland and Los Angeles in federal court. So. So, you know, you certainly have. Have leaned on each other, you know, since. Since meeting. And meeting her was very serendipitous. I had a client that was sued out in Seattle for. For copyright infringement. And, you know, I was looking around for local counsel. Somebody had suggested the firm she was with at the time I called, actually, they had a New York office, a tiny New York office. So they put me in touch with the managing partner. Managing partner said, yeah, you should speak to Judy. I spoke to Judy. Judy laughed. And when I told her the situation, and she goes, I'm Sir Mix, a Lot's lawyer. You know, how many times I hear this situation? So I called my client, I said, would you like Sir Mixalot's lawyer in Seattle as your Seattle lawyer? So we teamed up, and while we were mediating the case, Judy was like, look, I'm leaving the big firm. I've done the big firm thing for 40 years. I'm done. I'm tired. You know, I want to do, you know, I want to still practice law, but I want to do other stuff. I kind of want to do it at a more relaxed pace. Do you need help? And I'm like, yes, I do. So, you know, we teamed up in our, you know, and now we're affiliation the way that we did it.
- [35:31]
Dave
Oh, that's fantastic. That's fantastic. So, you know, I had a small service company as a brick and mortar service company. We. And then we built. We did carpet cleaning, upholstery cleaning, and then we built a rug cleaning plant. And we, you know, but we, you know, got. We were very well known in our area, but I still always felt like I'm flying under the radar. Like, if I accidentally did some copyright infringement, I just felt like, you know, it's really going to. No one's going to notice. But what would you say to someone who might be. Not that I was flippant but I really never did. I never was proactive in making sure that I was doing so.
- [36:21]
Anthony Verna
Of course.
- [36:22]
Dave
So, you know, or do you have any horror stories of a small guy just getting clobbered or just advice to say, hey, at least make sure you got these basics when you're going to do something.
- [36:36]
Anthony Verna
So here's my number one piece of advice. If you have a website, join some kind of stock photograph archive, subscription service, whatever the case might be, use your photographs from there. You know, I've got horror stories before you. And I spoke, I spoke to somebody earlier today who's like, well, I received a, I received a demand letter for copyright infringement, you know, and it happens, you know, all the time. There are a few firms out there who basically represent some of the, the bigger, you know, publications out there. And look, they might be small firms, but yeah, this is what they do. You want to talk about niche, their entire niche is copyright infringement issues for their clients. So whether they're running searches for file names, searches, some kind of AI photo search, something that effect, that lines up with their database, a lot of people get found and they receive a demand letter. And you know, I certainly help with those as well, but I've certainly helped with people who have been sued for the, you know, for not listening to the, or not responding to the copyright demand letter either. So it's, it's out there. Yeah, you know, you know, in today's, in today's world, small web pages get found.
- [38:17]
Dave
Wow. Wow. Well, so along those lines, let me ask you this. This was an odd thing and I never did anything about it because I found out probably within a year or two of selling my company and I just wasn't sure whether it was anything to worry about or not. But I've since found out that a lot of companies will do this.
- [38:43]
Anthony Verna
Right.
- [38:44]
Dave
So what, what it was is like I said, we had been in business, you know, my company was in business and it still is, but I started it 28 years and sold it after 28 years. And so it been around, had a really good reputation and was well known in our area. And so what I found out was that a, another smaller company, you, they not only used the name of my company in their keyword search, they used it on their website to, in a not so flattering way. You know, they, they basically said some things about us that, you know, were their opinion. And it, you know, I guess, you know, that's there's always going to be someone who considers themselves a competitor that needs to put, you Down. So, you know, could you make a case for somebody, one, using your name to, you know, for profit? Because it's, they're, they're getting Google to find it, you know, and point them towards themselves instead of towards me.
- [39:53]
Anthony Verna
So, so a lot of that depends upon wording and posturing. If, you know, if somebody types in, I don't know, Ford Explorer into Google and Chevy buys an ad and says, try a trailblazer instead, there's that, there's nothing wrong there. Because all you're saying is, well, if you like X, try. Yeah. And even though you're obviously using your competitor's trademark as metadata, because obviously if they're searching for X and Y pops up, obviously you're using X as that data to get Y to pop up. It's not that particular use in and of itself that's an issue. The issue is what is said and what creates a false advertisement issue is exactly that. The false advertisement. What can create what we call a violation of section 43A of the Trademark statute could be that you are denigrating your competitor's product. If you're doing that, you might have a few different issues there. So it's all about the actual, you know, language, especially when, when we're dealing with search data and keywords. Like, you can use your competitor's keyword as a way to get your stuff up there, but you gotta be really, really careful as to what you say about it.
- [41:34]
Dave
Ah, okay. Okay. Yeah. Cause I, I have since I did some work with a marketing agency and that was the main thing they did was Google AdWords and they had this software where they could send bots out to a area and tell, they can tell a company. Yeah, this company. This company. This company. They're all using your name as a, in their keyword search. So. But that's perfectly legal. It's just, it's, it's.
- [42:09]
Anthony Verna
Yeah. I mean, again, it's the key because there had been lawsuits about it and, and effectively it's what we call nominative use. Right. Like, you know, you. Sometimes the only way that you can discuss a trademark is by naming a trademark. And you know, the more traditional uses are, you know, where gross, you know, you know, grocery store advertising says you can buy, you know, a Hershey's bar or you can buy Nestle Crunch Bar, you know, only way you're going to be able to do that is by naming it. So we allow that. It's the same thing here. If a competitor is able to get some space based upon a keyword that's acceptable. But then you got to be careful about what you say about it. And sometimes competitors aren't because they're competitors, but that happens. And look, I had a false advertising case where it was very clear my client did, you know, basically what happened was my client made a change to the product, my client changed the advertising with the product, the advertising flowed with the product and the competitor was just kind of, you know, angry that changes were made to the product. Rather than showing something false with the advertising or showing that my client used their, you know, the competitor's trademark in, in any kind of malicious way, like none of that was there. You've got to, you know, if they were very careful about it, same thing here. You, you can, you can, you know, ping those keywords, but you really have to, you really have to know what you're allowed to say about it. And that really comes down to what a lot of small businesses, you know, do tend to not employ. And that is that, that compliance review that, you know, bigger companies certainly do.
- [44:09]
Dave
Yeah, yeah. So I would imagine an intellectual property lawyer is, is a growing field to get into because we're, you know, you know, take 20, 30 years ago, the someone saying that they're a content creator just falls to the floor. No one knows what that is. You know, now that's, that's a, you know, it's a very lucrative way of making a living if you're good at it, you know. And so.
- [44:40]
Anthony Verna
Sure, sure, I'm, I mean, you know, look, we're a small law firm and, and our businesses are small, you know, small businesses as well. I hope that our clients see the value what we do in protecting their intellectual property, especially doing it as early as possible and also as well as possible. And I certainly think that they see the rewards down the line.
- [45:13]
Dave
So like when you say as early as possible if you're going to create something thing online or you have an idea for a business and, but it's going to involve a lot more who's than house. Like you're going to have to involve other people that know how to do what you need done. How do you protect your idea from someone who has the skill to make it materialize and cut you out?
- [45:44]
Anthony Verna
Well, you know, there, there are a couple things. One, non disclosure agreements, you know, do exist. Now I understand that not everybody's going to sign a non disclosure agreement. Especially like, especially like if a small business is, is pitching to angel investors, venture capitalists, things like that. You know, you might not be able to sign an NDA, you might need to figure out ways to fund your business early in other alternative ways until you get there. So, you know, it's a little, you know, sometimes it can be very tricky. Obviously if what you're doing is new and novel, you know, you got to talk about patent protection and you know, the, you know, patent costs can range for sure. But if what your product is really truly is new, novel fits every other checkbox for a patent, you really should file that patent. Because once your patent is granted, your protection is retroactive to the day that you filed it, number one. And number two, if you're pitching to investors, they want to see that your patent is pending anyway. They don't, you know, they, they don't want you to be, you know, just kind of sitting there twiddling your thumbs, wondering how to get this off the ground. You know, if you're, you know, dealing with a lot of brands, you got to make sure that you know, your brands are protected. Especially at the patent and trademark office, make sure you do a trademark search. Make sure you know that what you are branding is protectable. You know, if something falls under copyright law, you know, register it because you can't file a lawsuit without that registration trade. You know, if something needs to be a trade secret, then you got to make sure you have the right protections, else it's not a secret. So again, that counts about, that counts towards non disclosure agreements. What needs to be password protected, what needs to be password protected four times, you know, whatever the case might be, what kind of encryption, what makes it a secret, things like that. What procedures do you have in place to make it a secret? You know, there are things that are available, you know, to you, but it's very highly fact based depending upon your business situation.
- [48:09]
Dave
So how do you patent something that's just an idea in your head?
- [48:13]
Anthony Verna
Well, you can't patent something that is just an idea in your head. You have to be able to describe how it works. So you don't need to create a prototype. Okay, but you can't just say, well I want to patent a transporter because it's going to carry matter from there to over there and then it's going to recombine it. Well, you know, if you don't know how to take the molecules and then move the molecules across and then you know, reform it in the exact same order, well then you kind of have, you know, a problem, right? You can't actually explain it. So you know, yeah, you've got to be able to explain what you do so that's why we also use the phrase with patents, you know, somebody who is skilled in the art of this particular, you know, technology. So, you know, it's one thing to say, you know, we're going to write software that does X, Y and Z, it's another thing to actually say, all right, let's go. Get me the X's, the Y's and the Z's, and tell me about the processor time. You're saving the man hours, you're saving the money, you're saving whatever, you know, the description is how you get the patent that protects your product or your method. That's what matters there. As long as you can describe it so that somebody who is skilled in the art can make it okay.
- [49:37]
Dave
Okay. So, yeah, so let's say, you know, I came out of the industry of cleaning area rugs and I. Over 20 years of doing it. I realized that the flaws in the equipment and the technology that we're using, and if they, you know, if you could have a technology that did X, Y and Z, you know, and do it, you know, I wouldn't know how to create it. But I can say, if it can do this and then this and then this, it would be a better way of doing it. As long as I can explain that and describe what needs to be done, that I can get that patented and then I can find people that can do it.
- [50:16]
Anthony Verna
Yes.
- [50:17]
Dave
Okay. Okay.
- [50:19]
Anthony Verna
So, you know, like, one time somebody called us about, about a potential patent infringement case, and, you know, they sent me, you know, they sent me their patent. They sent me to the website, and again, without going into. Into great detail, I was looking at the patent, reviewing the patent, and I said, hey, I think your patent is written very narrowly. And I kind of think that the product on the website actually doesn't do, you know, do it in the same way that your patent does it. I actually think they do things a little differently. And, you know, I was like, can we have a longer conversation about that? And, you know, they said, no, they didn't want to have the longer conversation, which went, okay, fine, but like, like, the patent is the key and what's written in the patent is the key, right? Like. Like, it's not what's in the product, it's what's written in the patent. And you've got to make sure the patent is as broad as possible so that it can, you know, so yes, you can describe it, and then you can, you know, figure out ways to figure out how many embodiments, you know, this Patent can. Can encompass. It's. It's, you know, a very difficult area of law because you've got to have this balance all the time.
- [51:53]
Dave
Yeah.
- [51:53]
Anthony Verna
And it goes, you know, with. In both directions, with when clients come to us for something new and when clients come to us saying they think their patents in French.
- [52:04]
Dave
Okay, now I want to go back to something that we talked about a little bit earlier, but, you know, you seem to really embrace the idea of modern marketing of, you know, podcasting, blogging, you know, and getting yourself out there that way, which, you know, most the thought of a. You know, I mean, everybody. You can find a podcast on just about anything. And, you know, there's a lot of good information for whatever field you're going in. So it's, you know, and as a podcaster, of course, I get it. You know, I listen to a lot of podcasts. So what. In your mind, what. How do you see, you know, your. Your podcast and, you know, you can tell the listeners that your name, the.
- [52:54]
Host
Name of it as well.
- [52:54]
Dave
I'd appreciate if you did that. But, like, what problems are you trying to solve? Or when somebody tunes into your podcast, what are they? How is that helping you? How do you see that helping you as a lawyer? What are the listeners can. What can they expect to receive when they're listening to your podcast?
- [53:12]
Anthony Verna
Sure. So. So first off, the. The most boringly named podcast out there, the Law and Business Podcast. Law and Business. You'll probably find it under my. Anthony Verna. Try it. Try searching both ways. What I think people will get when they listen is a. That I'm able to communicate these strange, weird, niche areas of law to the listener. And I really hope that is something that they get and understand from listening. Number two, these are areas of law that. I mean, there are business people who are keyed into intellectual property, and then there are business owners who aren't. And I really hope that the business owners who listen to the podcast understand that, you know, there's probably stuff out there that they're missing, whether it's intellectual property, advertising, communications. I mean, because. Because we have friends. We have friends from around the world. One of the episodes coming, coming out soon was one of my friends and colleagues from New Zealand who's also an IP attorney, and we nerd out on. On differences in trademark procedure. Now, is that exciting and scintillating? Probably not for most people, but I think if you're a business owner, you probably want to understand that, you know, halfway around the world that. That there are people who also Do IP law in other countries and other countries handle it differently. And hey, in today's world, the world is smaller than it's ever been. Chances are somebody from Australia is going to ping your website at some particular point. You might think about these particular issues. Maybe not in Australia, but maybe for you, because, you know, these are the things we talk about. These are the things that we think about all the time. I understand that not every episode is for everybody, but what I want, what I want my listeners to do is kind of like engage and say, huh, here's something that maybe I haven't thought about before. One of the episodes that is yet to come out is a friend of mine who's a musician who just has a bunch of random copyright questions. And it's not the first time. She's just come on to have her list of copyright questions and she and I snark off to each other and laugh way too much. But I hope that the artists that are out there kind of say, oh, hey, those are copyright questions I have. Or if you're a business owner, hey, guess what? You create a website, you create photographs, you create advertising. All of that falls under copyright law. I want you to think about these things.
- [56:01]
Dave
Yeah, no, that's, that's great. And that can be, you know, sounds like it can provide a lot of really good information that people need and be entertaining at the same time. And, and that's.
- [56:15]
Anthony Verna
I certainly hope so.
- [56:16]
Dave
Yeah. Now, you know, you've been practicing law for how long now?
- [56:24]
Anthony Verna
22 years.
- [56:25]
Dave
22 years. So you're, you're, you're graduated from.
- [56:29]
Anthony Verna
I graduated in 2003.
- [56:32]
Dave
Yeah. So you should be beyond practicing at this point. You should be doing it. But, but so, so you've got a lot of mileage under your, under your belt sometimes there's things that happen along the way. And this might, I'm going to ask you a question. This might be a little challenging because it might require a little vulnerability, but is there a case or is there something that you think about? I wish I handled that differently. I wish I knew then what I know now. I could have really helped that person.
- [57:16]
Anthony Verna
Certainly there are a couple settlement negotiations where, you know, maybe I miscalculated, you know, what the tenor of the settlement negotiations, you know, were to, you know, look like, be like, sound like. And look, you know, sometimes you kind of like, say, oh, gee, could I have done better there? But the one thing about settlement negotiations are one, I mean, at least the parties are talking about trying to settle a case rather than you know, litigating or continuing to litigate. I certainly had one case where we filed a motion to dismiss the complaint, then accepted an invitation by the district judge to mediate with the magistrate judge, which happens often in. In. In federal court. Probably happens more often on the east coast than the West Coast. But anyway, so. So, you know, we did that, and when the magistrate judge had, you know, had us in the room, they were kind of like, I don't know about this motion to dismiss. This motion to dismiss seems kind of, kind of, you know, frivolous to me, even though I can't really use the word frivolous here, but it feels frivolous to me. And it's like, well, he's already beating us on the head, you know, from the very beginning. So, you know, there's. There's kind of a situation where it's like, well, gee, should I have filed the motion? Should I just, like, answered and rolled over? Like, I, you know, like. Like. I don't think, like, sometimes, you know, the tenor of American litigation is that you fight everything tooth and nail. And I think a lot of people who are defendants aren't used to needing to fight tooth and nail over every little bit. And sometimes that fighting over every. Every. Every little, you know, procedural aspect over, you know, it does get to be, you know, wearying and grating and not necessary. So sometimes I will, you know, maybe, you know, do something that's, you know, tell the client, look, this is cheaper. A is better, but more expensive. B is cheaper, but, you know, probably, you know, hurts your position, especially in settlement negotiations. So I try to have a fuller conversation these days than I did way back when I had that particular, you know, settlement negotiation because I went tooth and nail and. And, you know, the. The magistrate judge just kind of like, you know, hammered us for. For doing it, you know, and that. And then, like, when the magistrate judge hammers you for doing it, gee, it's kind of like, well, now I look silly in front of my client. You know, our position is kind of weakened, things like that. So, yeah, I mean. I mean, yeah, there's certainly, you know, certainly a few times when, during settlement negotiations, I wonder if I handled the, you know, the tenor of it correctly. But, you know, ultimately, when we're dealing, you know, dealing with IP settlement negotiations, it's usually some kind of, you know, monetary amount and, you know, maybe is there, you know, destruction of product. So, you know, I'm not sure if my tenor would have, you know, moved the needle all that much, but I do think about it.
- [60:30]
Dave
Yeah. Well, I appreciate your, you know, your answer and your vulnerability and, you know, I mean, it's, you know, it's a good reminder that what you do for a living, you know, you're human. You know, we kind of have this expectation that a lawyer is going to do everything perfect, you know, to the letter of the law. And, you know, and you're human, you know, you're doing. You're doing what you think is the best and you're learning as you go and getting, you know, getting much, you know, much better at. At what you do, you know, so. And there's certainly something to be said for somebody who's been doing it for 22 years, you know, that's. Yeah. So anything new and exciting coming up for your law firm that you feel like is a big change that you want people to know about?
- [61:25]
Anthony Verna
Well, I don't necessarily know if it's for the law firm. What I do say is, overall, obviously most of the patent discussions we've had lately are software with some kind of AI integration. And I understand that a lot of our clients get excited about that. I know a lot of people overall get really excited about that. And two things I say is, don't forget I've got a bachelor's in computer science. So there's a lot of AI that I think is garbage rather than helpful. So I certainly hope so. I certainly want people out there thinking about integrating AI into whatever they do to be. To be really thoughtful about that particular issue and the results and the output that you're going to get. And B, just because you add AI to something doesn't mean that you're going to be able to get a patent on it. You've got to be able to give me the steps and give me what's new and novel about it, what's inventive about it. You've got to give me what, you know, what does your product save, Manpowers, processing power, you know, money, things like that. You've got to be able to give me those examples. So I'm always excited about something, you know, about clients giving me something new and digging into it. You know, what I just want to say is, gee, I'm not as excited about AI because I think too many people are just going to lean on it. But I'm excited to get to the heart of what people want to do.
- [62:57]
Dave
Yeah, no, it's amazing. It is in every field. And yeah, the, you know, it's only as good as the person, you know, putting in the prompts and you know.
- [63:10]
Host
There is nowhere in any business that AI is not being used. Anthony with his computer science background is really good at spotting those instances where AI is being used superficially versus where it's truly driving innovation. It raises questions of who the rightful owner is. For an IP case you have the creator of the digital asset who used AI to help facilitate the creation of it, but then you have the developer of AI that generated the asset. This is still an open field of innovation. But what a huge advantage Anthony brings to the table in this fast paced field because of his computer science background.
- [63:51]
Dave
You know, as we're talking, I've realized that it is a complicated matter. Maybe not to you because you've been doing it for so long, but you know, just getting a patent written up in a way that is proper, you know, so that it could be submitted, that there's a lot more to it that you'd have to learn how to do in order to submit a patent. Do you have anything on your website that somebody can download like hey, these are the steps to applying for a patent or getting something ready to discuss with me so that to make the process streamline it or as a matter.
- [64:28]
Anthony Verna
Of fact, yes, we have, we have an invention disclosure form on our patent, I think, I think actually it's called Invention Submission form on our website. So if you go to Verna Law, you go to the little search box at the top right corner, you type Invention Submission form, push enter, you will get our invention submission form. Or you can send me an email anthonyrnalaw.com and I'll send you a direct link to our invention submission form.
- [64:55]
Dave
I'll include it in the show notes as well.
- [64:57]
Anthony Verna
So thank you, I will, I will certainly give it to you. And the invention submission form obviously asks for, you know, a lot of high level, you know, information, you know, what does it do? Have you done, you know, any, any kind of consumer research? What do you think this is going to improve? You know, things like that. Like it is actually really detailed and I think there's, you don't need to fill everything out out, but There are about 50, you know, boxes full of questions. We've got lots of questions about, you know, not just what it does, what do you improve, what problems are you trying to solve? How did you think about it? What are your notes on it, what are you. So that it goes through a lot of, you know, a lot of, a lot of thinking about what you've created, which is what you're going to have to do with me one way or the other.
- [65:55]
Dave
Right.
- [65:56]
Anthony Verna
You've got to think about what you've created one way or the other. So you can do it through the form, you can do it through phone calls. But yes, the form does kind of streamline it. I know some people get overwhelmed by having. But the good thing is it's a web form. It's 128 bit encryption coming to us. So we're confident that nobody is going to see it. I've never had any reports of a data breach through the form. So we do have a secure web form which we call the Invention Submission Form.
- [66:31]
Dave
Oh, cool. Sounds good. Well, hey, this has been great. I've really enjoyed talking to you and getting to hear your journey and everything about you.
- [66:41]
Anthony Verna
Thank you so much. It's been a pleasure being here.
- [66:44]
Dave
Yeah, it's been a pleasure having you.
- [66:46]
Anthony Verna
Thank you so much.
- [66:48]
Dave
You're welcome.
- [66:49]
Host
Even seasoned professionals like Anthony are constantly learning and evolving, refining their approach based on their experiences and the challenges they that they encounter. Anthony's example is not just for running a business, but for any kind of collaborative endeavor. His journey highlights how those lessons can apply not just to the legal field, but to any creative endeavor or entrepreneurial pursuit. His journey is also a great reminder that IP law is not just about legal battles. It's about fostering creativity, encouraging innovation, and assuring that the fruits of human ingenuity are protected and celebrated. Thanks for listening to another episode of Locally Owned. I hope you found this episode to be helpful and offer quick, actionable strategies. Please don't forget to hit the subscribe button and leave a review. You can find more episodes on Apple Podcasts or Spotify, or go to our website, Street Smart Entrepreneurship Biz to find show notes and links and more.