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Intellectual Property Law Section

Live Programs

Save the Date! The 2016 IP and the Internet Conference

The 2016 IP and the Internet Conference will be held Tuesday September, 6, 2016 at Saleforce's auditorium in San Francisco.

This popular full-day conference returns with its traditional exploration of the nexus between IP law and technology.

Speakers will include former Facebook Chief Privacy Officer and California Attorney General candidate Chris Kelly; Joanne McNab of the Attorney General's Office; Santa Clara Law School Professor, Eric Goldman, and many others.There will also be a very practical and detailed presentation on how to handle online copyright and trademark infringement on all of the major online platforms.

Of course, there will also be several opportunities for networking, including a table-topic-style luncheon.

Get the date on your calendar now! Program details and registration info to follow.

Save the Date for the 41st Annual IP Institute
"IP on the American Riviera"

Hyatt Santa Barbara November 10-11, 2016
Hyatt Santa Barbara
1111 E. Cabrillo Blvd
Santa Barbara

The Annual IP Institute, "IP on the American Riviera," will be held at the beautiful Hyatt Santa Barbara with a welcome reception November 9.

The conference will cover a wide range of cutting-edge and compelling presentations on trademark, copyright, patent, entertainment, right of publicity, licensing, and internet law, as well as practical sessions and IP-specific ethics panels. The event will also feature the always popular Annual Vanguard Awards luncheon celebrating pioneers in our field in a festive atmosphere.

The program will feature speakers from leading law firms and companies, numerous networking and socializing opportunities, as well as options to experience some of the gorgeous local sites of Santa Barbara.

We hope to see you there! Watch your inboxes and our website for more information!

For questions, please contact IP Institute Program Chair Elizabeth J. Rest at


Webinar: Recent And Proposed Changes To Consumer And Copyright Law In The EU

Tuesday, June 21, 2016, 12 noon - 1 p.m.

This program offers 1 hour of participatory MCLE credit.
Presented by the International Interest Group.


This presentation will provide an overview of recent and proposed changes to consumer and copyright law in the EU, with a particular focus on the Digital Single Market initiative, which promises to make it easier (and cheaper) for businesses to buy and sell digital products and services across the EU.

The EU's Digital Single Market Strategy, which aims to "create a Digital Single Market where everything that is also possible in the physical Single Market is possible in the digital world," has gathered significant momentum since its announcement in May 2015. We expect significant legislative reforms to be implemented in 2016. Given the pace of the strategy and the large number of topics covered, it can be difficult to stay up to date with the latest developments or to assess what they mean for your business. The speaker will guide you through the whole strategy, from an explanation of what it is and why it has been proposed to an overview of each of the individual initiatives, with a particular focus on consumer and copyright reform.

Moderator: Rebecca Chen
Speaker: John Davidson-Kelly

Webinar: Campus to Commerce -- The Challenges of Licensing from Universities

Thursday, June 23, 2016, 12 noon - 1 p.m.

This program offers 1 hour of participatory MCLE credit.
Presented by the Licensing Interest Group.


Colleges and universities are the source of some of the world's greatest innovations, but it can be difficult to transfer that ingenuity from the ivy-strewn walls of campus to a market that obeys a different set of rules. In this webinar, Kyle Welch, a Licensing Associate at the San Diego State University Technology Transfer Office, will discuss what is meant by the term "technology transfer." Then, he'll share some of the unique challenges and considerations faced when licensing from universities, including the regulatory scheme faced by non-profit institutions including the Bayh-Dole Act, the interests and internal hurdles of universities in licensing transactions, tips for overcoming obstacles and negotiating successful licenses with universities, and the ongoing role of licensing university IP in regional economic development.

Moderator: Teri Karobonik More Information
Speaker: Kyle Welch More information

Webinar: Murky Waters - Navigating a Copyright Termination Case

Wednesday, June 29, 2016, 12 noon - 1 p.m.

This program offers 1 hour of participatory MCLE credit
Presented by the Copyright Interest Group.


The unequal bargaining positions of first-time creators and publishers often results in poor deals for the creators, including the loss of the copyright in their works. Congress has twice tried to remedy this situation, first in the 1909 Copyright Act and then in the 1976 Act. This last effort, found in Sections 203 and 304 of the Act, called the "Termination Statutes," has had very mixed results.

In this webinar, copyright law professor and scholar Marc Greenberg unravels the complex legal history of these efforts, and explains why built-in problems cause the current laws to often fail to live up to Congress' intent.

Attendees will:

  • Learn the backstory of creators "second bite at the apple"
  • Explore best practices in handling termination issues
  • Discuss when to file a termination lawsuit
  • Examine benefits and challenges of filing a termination lawsuit

Moderator: : Francine D. Ward
Speaker: Marc Greenberg More information

Interest Group Open Calls

Licensing Interest Group Open Call

Friday, June 10, 2016, 12 noon

To participate in the meeting, the dial-in number is 855-520-7605, passcode 1211276419#.

Monthly "All Hands" Licensing IG conference call. We'll discuss upcoming webinars and conferences, opportunities for members to get involved and Hot Topics. Please note: Our monthly calls are the 2nd Friday of every month.

Third-Party Programs

Copyright Office Software-Enabled Consumer Products Study Roundtable

The Copyright Office will be conducting a public roundtable to gather input for its study on software-enabled consumer products in San Francisco on May 24, 2016. More information. Request to participate here.

Copyright Office Section 1201 Study Roundtable

The Copyright Office will be conducting a public roundtable to gather input for its study on Section 1201 of title 17, including the triennial rulemaking process, in San Francisco on May 25. Note that this is a date change from the previous announcement. More info here. Request to participate here.


Vanguard Award Nominations

Your Nominations Sought for the IP Vanguard Awards.  Start thinking about your nominations for the 2016 Vanguard Awards! Achievements are honored in the following categories:

  • In-House Counsel
  • Private Practice
  • Academic/Public Policy
  • Judicial

The full criteria and information about past honorees are available at IP Vanguard Awards. Please submit your nominations for the 2016 IP Vanguard Awards by July 1, 2016, using the 2016 Nomination Form.

Defend Trade Secrets Act of 2016

On May 12, 2016, President Obama signed into law the Defend Trade Secrets Act of 2016, which Congress passed on April 27. For information on what the Defend Trade Secrets Act (DTSA) provides, how it works and its significant provisions, see the full report from the Trade Secrets IG here. Read more.

Thank You for Being a Section Member - Here's 6 Hours MCLE in Legal Ethics!

We're very grateful for your membership in the Section. As a token of that, we're offering six hours of self-study MCLE credit in the area of Legal Ethics. The programs are posted in our Member's Only Area.

Simply watch the programs and read the accompanying materials, and keep track of having done so. You can report this to the State Bar when it's time to demonstrate your compliance with the MCLE requirements.

IP Section's 2016 Washington DC Delegation

The IP Section's 2016 Washington DC delegation has just returned from Washington DC after very informative meetings with the House, the Senate, the FTC, the DOJ Criminal Division, the Copyright Office, the Patent and Trademark Office, and the White House. Look for the Delegation's full report in the Summer issue of New Matter. Bigger versions of the photos are posted on our Facebook page. Just click on them.

The IP Law Section's Washington DC Delegation at The  White House on April 20th, 2016. From left to right: Deborah Greaves, Rebecca Chen, Heather Antoine, Bennet Kelley, and Thomas Hassing (missing: Peter Bromaghim). (photo credit: The White House)

The IP Law Section's Washington DC Delegation meeting with Under Secretary of Commerce Michelle Lee at the USPTO on April 19th, 2016. From left to right: Thomas Hassing, Bennet Kelley, Rebecca Chen, Michelle Lee, Deborah Greaves, Heather Antoine, and Peter Bromaghim. (photo credit: USPTO)

Miscellaneous Changes to Trademark Trial and Appeal Board Rules of Practice

The USPTO has published a Notice of Proposed Rulemaking entitled "Miscellaneous Changes to Trademark Trial and Appeal Board Rules of Practice," Federal Register, Volume 81, No. 64, pp. 19296-19324 (available here)  There are numerous proposed changes, including that service of papers between parties be made via email, limiting document and admission requests to 75 each, an option to permit submission of witness testimony at trial in inter partes cases by affidavit or declaration, and permitting the Board to grant judgment for a defendant sua sponte when the plaintiff has not submitted evidence and its time for taking testimony has expired. As these are just a few of the proposed changes, practitioners are encouraged to review the complete list. The deadline for comments is June 3, 2016 and may submitted via email,, or at the above website by following the "Submit a Formal Comment" link.

One Hour MCLE Is Available in the Latest Issue of New Matter

Self-Study CLE Tests One hour of MCLE is available in the current issue of New Matter, the State Bar IP Section's quarterly magazine.

For the Spring issue, you can earn credit for the article Policing the Boundaries of Copyright: Is It Time for the Supreme Court to Step In? by William J. O'Brien. One hour of MCLE credit can be obtained by answering a set of True/False questions.

Log on to the webiste for details. Watch for other MCLE credit available in future issues of New Matter.

Did You Know You Can Track Your CLE Through Your State Bar Profile?

Log into your profile and click on CLE Summary and Tracking Tool. This summary reflects all in person and online participatory classes completed through the State Bar of California.

Note: Future releases will allow you to manually add courses completed through other providers.

Even if this summary reflects you have completed the required 25 hours of MCLE within your compliance period, you must still formally report compliance by submitting your MCLE compliance declaration through My State Bar Profile.

The Trade Secret Treatise Is Available for Order

Members $115/Non-Members $155. Go HERE for a description, and HERE to order. You will need to click on Intellectual Property.

Writers Wanted for New Matter

Inquiries about writing for New Matter, please contact

MCLE Catalog

Featured CLE Program from Our Catalog!


Did you miss it? All programs from IP Protection & Social Media Issues in the Workplace now available On-Demand

For other Intellectual Property Law Section programs, see and select Intellectual Property Law Section.

Contact Us

We invite you to contact a member of the Executive Committee, or an Interest Group Officer. The IP Section has Interest Groups on:

Or contact the Editors of Inevitable Disclosure, Barbara Friedman and Aurelia Schultz.

The Intellectual Property Law Section
The State Bar of California
180 Howard Street
San Francisco, CA 94105