Intellectual Property Law Section
Upcoming Standing Committee Meetings and MCLE Programs
Upcoming MCLE Programs and Meetings
Webinar: Oops, How Did That Happen? Five Common Business Transactions and THeir Unforeseen IP Litigation Consequences
Wednesday, December 3, 2014, 12 noon - 1 p.m.
Presented by the Intellectual Property Law Section, In-House Counsel Interest Group
This program offers 1 hour participatory MCLE credit. You must register in advance in order to participate.
This program will review five common business transactions involving IP that can have significant impact on issues arising in litigation that takes place later.
- Jeffrey I.D. Lewis is a Past President of the American Intellectual Property Law Association (AIPLA) and a partner at Patterson Belknap. He is a chemical engineer and registered patent attorney, concentrating his practice in patent litigation and other patent-related matters, such as transactions and providing opinions. A graduate, cum laude, of Benjamin N. Cardozo School of Law, Mr. Lewis served as an Alexander Judicial Fellow to Hon. Marion T. Bennett of the U.S. Court of Appeals for the Federal Circuit.
- Derrick Brent is Vice-President and Associate General Counsel for Masimo Corporation, a medical technology company where he provides counsel and handles legal matters relating to intellectual property, employment, compliance and public policy. Prior to joining Masimo, Derrick served as a Senior Trial Attorney in the Civil Rights Division of the Department of Justice, and Senior Counsel to Sen. Barbara Boxer of California.
- Georgann Grunebach is Vice President, Intellectual Property, Fox Group Legal. She provides domestic and foreign patent, trade secret and transactional advice, education, training and support to the family of Fox Companies including; Fox Filmed Entertainment, Fox Digital Media, Fox Sports, Fox Broadcasting Company, Fox Network Engineering and Operations and Blue Sky Studios.
Congratulations to the Recipients of the 2014 IP Vanguard Awards!
Senior Vice President, Intellectual Property, Warner Bros. Entertainment Inc.
Fenwick & West
Honorable Paul S. Grewal
United States District Court,
Northern District of California
The Executive Committee of the IP Law Section is pleased to honor outstanding legal professionals who are spearheading new developments in the world of intellectual property.
The IP Vanguard Awards were presented during a special Awards Luncheon at the 2014 IP Institute, the flagship event of the Intellectual Property Law Section.
More photos of the reception are posted on the IP Section Facebook page.
Thanks to everyone who made The IP Institute a resounding success!
Here are some photos from our recent IP Institute. See larger versions of the photos on the IP Section Facebook page.
Hot News: Contaminated Dog Treats Case Proceeds
By Sam Gunning, 3L, Benjamin N. Cardozo School of Law
A District Court Judge in the Western District of Pennsylvania upheld a Magistrate Judge’s opinion denying a motion to dismiss a class action suit against a dog food manufacturer for false advertising, unfair competition, and other claims. In In re Milo’s Dog Treats Consolidated Cases, 9 F.Supp.3d 523 (W.D. Pa. 2014), the plaintiff class alleged that the defendant Milo’s and Del Monte’s (parent company) jerky treats “are neither 100% jerky nor wholesome as advertised, but rather contain contaminants that sicken and/or kill dogs.” The named plaintiff alleged that after eating Milo’s jerky treats, her dog became so ill that it needed to be euthanized a few days later.
The packaging of the dog treats contained declarations that the contents are “100% Real- Wholesome and Delicious” and further establishing the various “real” ingredients. However, plaintiff contended that the declarations are false. The FDA released numerous warnings about dog treats made in China, like those of defendant. Plaintiff argued that even after these warnings, defendants did not respond to the potential contamination.
Although parent companies are usually not liable for the actions of a subsidiary, claims against defendant Del Monte were allowed to proceed because they “speak to Del Monte’s own conduct and/or participation in the wrongdoing.” Plaintiff also made claims under California’s consumer protection act because of statements on the dog treats’ packaging, which defendant argued were “mere puffery.” The Court, however, determined that these statements “have the potential to deceive and thus remain viable.” For claims of false advertising and unfair competition, defendants made two arguments, both of which failed. The Court found the allegations sufficient under FRCP 9(b), which requires pleading with specificity for fraud claims, and the plaintiff adequately plead reliance on the misrepresentations with required specificity. An unjust enrichment claim was dismissed because restitution is available under the plaintiff’s statutory claims.
Copyright Alert: Outcome from Fifth Meeting of the Multistakeholder Forum and Date of Sixth Public Meeting
Department of Commerce Multistakeholder Forum on Improving the Operation of the DMCA Notice and Takedown System Outcome of Fifth Public Meeting and Date of Sixth Public Meeting
On October 28, 2014, the Department of Commerce's Internet Policy Task Force held the fifth public meeting of the Multistakeholder Forum on improving the operation of the DMCA notice and takedown system, as proposed in its July 2013 Green Paper on Copyright Policy, Creativity, and Innovation in the Digital Economy. The meeting took place in Berkeley, California, coordinated by the United States Patent and Trademark Office (USPTO) and the National Telecommunications and Information Administration (NTIA). The primary focus of the fifth meeting was to provide a report to the larger forum on the progress of the efforts of the working group to date. Representatives of the stakeholders' working group reported progress in the group's work on a paper describing best practices for the submission and processing of notices to Internet service providers to take down infringing material, and the program also included discussions on trusted sender programs and on an academic project reviewing notice-and-takedown procedures.
The meeting was also webcast live over the Internet, and an archive of the proceedings is available at: http://new.livestream.com/uspto/multistakeholderOCT2014. Other documentation associated with this meeting can be found here: http://www.uspto.gov/ip/global/copyrights/index.jsp.
The working group plans to continue its discussions and work and will provide a progress report at the next public meeting of the Multistakeholder Forum scheduled for December 18, 2014 from 9:00am-12:00pm at USPTO headquarters in Alexandria, VA. Any party interested in contributing to the work of the group may join by emailing Rjones@copyrightalliance.org to be added to the working group distribution list.
The PTO will provide a live webcast of the December 18, 2014 public meeting along with a phone bridge.The final agenda and webcasting information will be made available one week prior to the event at: http://www.uspto.gov/ip/global/copyrights/index.jsp. Look for the links under the 2014 Meetings heading.
For more information about the Multistakeholder Forum, please visit the Multistakeholder Tab at: https://www.signup4.net/public/ap.aspx?EID=THEG32E&OID=148.
News from the Copyright Office:
Proposed Regulations Are Available for Comment
The regulations govern the rates and terms for digital performances of sound recordings and the making of ephemeral recordings by noncommercial education webcasters under sections 112 and 114. Comments are due November 26, 2014. For more information, see http://1.usa.gov/1GLWvCD and http://1.usa.gov/1sxdj5H. The Copyright Royalty Judges announced their upholding of the $500 minimum fee for noncommercial webcasters during the licensing period of 2006 - 2010. The ruling is effective as of October 31, 2014.
PTO Issues New Edition of Trademark Manual of Examining Procedure
On October 30, 2014, the USPTO issued the October 2014 TMEP, which incorporates USPTO trademark practice and relevant case law reported prior to October 1, 2014. The policies stated in this revision supersede any previous policies stated in prior editions, examination guides, or any other statement of USPTO policy, to the extent that there is any conflict. View the October 2014 TMEP Highlights at www.uspto.gov/trademarks/notices/TMEP_Oct2014_Highlights.doc. For a listing of all the changes, see the “Changes in the TMEP October 2014 Edition” document that is posted as part of the TMEP.
Hot News: Lanham Act does not Extend to Rights Protected Under Federal Copyright Law
By Sam Gunning, 3L, Benjamin N. Cardozo School of Law
An Oregon federal Magistrate Judge recommended on September 4, 2014, in Slep-Tone Entertainment Corp. v. Canton Phoenix, Inc., 3:14-cv-00764, that trademark claims under the Lanham Act be dismissed for failure to state a claim upon which relief can be granted because the Lanham Act does not extend to rights protected under federal copyright law.
The plaintiff, Slep-Tone Entertainment Corp., alleged that the defendant, Canton Phoenix Inc., provided karaoke services to its customers without a license for over 24,000 tracks it held on a hard drive. The tracks are allegedly “marked” with Slep-Tone’s “trademark and distinctive trade dress.” Because Slep-Tone cannot bring a copyright claim, an issue outside the scope of the Court’s opinion, it brought state and federal trademark claims. Canton Phoenix argued that this was a copyright claim that was brought improperly under the Lanham Act. The judge agreed, stating that “not all potential consumer confusion involving commercial use of a product bearing an enforceable trademark . . . can give rise to a Lanham Act claim.”
The Court, in deciding whether Canton Phoenix’s conduct infringed on Slep-Tone’s trademark rights in “a manner likely to cause ‘consumer confusion’ the enjoinment of which would not impermissibly intrude on the exclusive bailiwick of copyright law,” held against Slep-Tone for two reasons. First, the Court found that trademarks at the beginning of each track served the purpose of “correctly identifying the provenance of the tracks.” Second, after a review of relevant case law, the Court concluded that Canton Phoenix’s conduct did not contravene the Lanham Act. In addition to recommending that the Court dismiss Slep-Tone’s federal claims, it also recommended a dismissal of state law claims. Although the Court noted that it could dismiss for lack of subject-matter jurisdiction, it recommended a dismissal with prejudice because much of the Lanham Act jurisprudence is also applicable in Oregon.
USPTO Announcement: USPTO to Issue Courtesy Email Reminders of Registration Maintenance Filing Deadlines
Beginning in late January, the USPTO plans to begin sending courtesy email reminders of upcoming post-registration maintenance filing deadlines to registration owners who have provided a valid email address to the USPTO and authorized email communication. View the full notice at http://1.usa.gov/1wCnPi2, including information regarding eligibility for receipt, the content of the courtesy reminders, and how to opt out of receiving them.
6 Hours of Self-Study CLE in the Specialty Areas -- Complimentary for Members of the IP Section!
As a 2014 benefit of Section membership, we are pleased to offer six hours of MCLE credit, offering credit in all of the MCLE subfields.
If you were purchasing these courses individually in our Online Catalog, they would cost $210 -- so that's your Section membership more than paid for, and then some!
Just watch these programs, and keep a record of having done so in the event you're audited for MCLE compliance.
You can access these programs and the accompanying written materials any time this year in the Members Only Area.
Detection and Prevention of Substance Abuse and Emotional Distress
Elimination of Bias in the Legal Profession
- Coping with the Unique Challenges of Legal Practice
- Avoiding the State Bar Disciplinary System
- Client Trust Accounting Fundamentals
- Ethical Implications for Lawyers in Cyberspace and Social Media
- Ethics and Civility: Want an Extension? Forget about It!
One Hour MCLE Is Available in the Latest Issue of New Matter
One hour of MCLE is available in the current issue of New Matter, the State Bar IP Section's quarterly magazine.
For the Summer issue, you can earn credit for the article The Next Battle Over FRAND: The Definition of FRAND Terms and Multi-Level Licensing by
Karl D. Belgum One hour of MCLE credit can be obtained by answering a set of True/False questions.
Log on to the webiste www.calbar.org/self-study for details. Watch for other MCLE credit available in future issues of New Matter.
WRITERS WANTED for New Matter
New Matter invites you to write and submit original articles on current issues relating to intellectual property, such as reasoned opinion, practice tips, or scholarly analysis.
New Matter is looking for articles between 1500-6000 words. Please contact the Acquisitions Editor, Amanda Nye email@example.com for more details.
For more information, please contact our editorial staff at firstname.lastname@example.org.
Interested in Advertising in New Matter?
If you're interested in advertising in New Matter, please note our ad rates.
Court Reporting Services,
IP Search Services,
IP Insurance Services,
eDiscovery Service Companies,
Legal Research Companies,
Legal Staffing Companies
And any other legal service company.
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Did You Miss One of Our Webinars or Self-Study Tests?
Listen to Intellectual Property Law Section programs over the internet for participatory MCLE credit. Choose from more than a hundred hours of IP-related programs, and hundreds of other official State Bar of California MCLE programs.
For more information, see www.calbar.org/online-cle and select Intellectual Property Law Section.
Featured CLE Program from Our Catalog!
Did you miss this program? It's available in our online catalog for CLE credit!
Ethics Post -- AIA: Surviving the AIA Apocalypse -- A Guided Tour of the Brave New World
Patent Ethics treatise co-author, Dr. Mercedes K. Meyer will provide an examination of the patent practitioner’s world post-AIA. Her examination will place an ‘ethical lens’ over day-to-day procedures for both patent prosecution and claims drafting. Dr. Meyer will review the shift of duties, new duties, changes to averments and date relevance under AIA. The America Invents Act (AIA) was enacted into law on September 16, 2011 with portions of the Act became effective. Others portions became effective on September 16, 2012 or March 16, 2013. The USPTO Office of Enrollment and Discipline (OED) has had no complaints that practitioners have committed any ethical violations under the newly enacted AIA laws. Nor are there any legal malpractice claims arising under the AIA that we are currently aware of. However, some aspects of the AIA pose greater concern than other areas. Concerns fall into one of three areas: (1) new dates to miss; (2) new averments or certifications that pose heightened risk; and (3) failures to comply with a new duty under the AIA. In addition, we will discuss the effect of the new statute of limitation on OED proceedings.
1 hour participatory MCLE credit in Legal Ethics; $35
Did You Know You Can Beef Up Your Member Record on the State Bar's Website?
Were you aware of the feature on the State Bar's website that allows you to add a photo and otherwise expand your State Bar profile?
Using a secure link within My State Bar Profile, attorneys may add information to their public record to include area(s) of practice, any additional language(s) spoken, their law firm's website address and a photo.
To get started, log in to My State Bar Profile, and click on the “Expanded Profile” link.
Save Money with CEB
Continuing Education of the Bar, California (CEB) is extending some special discount offers to our section. As a member of the Intellectual Property Law Section, you're eligible for:
- 10% off selected CEB print or online books
- A rebate on your section dues that can be applied to the cost of a CEB Gold CLE Passport or a CLE program ticket
A complete list of the products eligible for a discount is available on a CEB web page accessible through our Members Only Area. Information about the section dues rebate program can be found on the CEB Web site.
Intellectual Property Law Section
The State Bar of California
180 Howard Street
San Francisco, CA 94105-1639