Intellectual Property Law Section
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Upcoming Standing Committee Meetings and MCLE Programs
- Trademark and International Interest Groups Webinar: Registering with U.S. Customs and Border Protection, and Enforcement Tips for Trademark Practitioners, Tuesday, June 18, 2013. Click here for more info.
- Trade Secret Interest Group Conference Call, Thursday, June 20, 2013.
- California Solo and Small Firm Summit, June 20-22 in Long Beach.
- Register Now! Intellectual Property in Entertainment & Media, Thursday, June 27, 2013 in Los Angeles.
- Trade Secret Interest Group Webinar: It's Not Just Boilerplate! - Best Practices for Drafting Agreements to Protect Your Trade Secrets and Other IP, Tuesday, July 2, 2013. Click here for more info.
- New! Entertainment and Sports Law Interest Group Webinar: POW! CRASH! IP issues in Licensing Between Comic Books, TV, and Film, Wednesday, July 24, 2013, 12 noon. to 1 p.m.
Other News
Third-Party Programs
Upcoming MCLE Programs and Meetings
Registering with U.S. Customs and Border Protection, and Enforcement Tips for Trademark Practitioners
Tuesday, June 18, 2013, 12 noon - 1 p.m.
Presented by the Trademark and International Interest Groups
You must register in advance in order to attend. This program will offer 1 hour participatory MCLE credit.
Deborah Greaves and Matt Powelson will walk us through the process of registration and enforcement through US Customs and Border Protection -- who should register their marks, how to register, what happens next, what to do when you get a seizure notice, fines and forfeitures handling. They will also discuss recent updates to Customs regulations. This is a program for both those new to enforcement issues as well as more experienced practitioners. Q&A to follow.
Deborah Greaves is the newly elected Secretary of the State Bar's IP Section. Her term will begin this Fall at the close of the Bar's Annual Meeting. Deborah serves as Secretary and General Counsel to True Religion Brand Jeans, a premium apparel company that trades on NASDAQ. She has worked as an attorney representing premium apparel brands for the past sixteen years. Her key practice areas include intellectual property, brand enforcement, corporate governance (public and private, domestic and international) commercial/business transactions, employment matters, litigation and compliance.
Matthew Powelson is the founder of 321 Law, Inc. He specializes in IP and is a recognized leader in his practice areas of trademark, anti-counterfeit, and transactional law. He represents clients in a broad spectrum of industries including consumer electronics, wine, food products, apparel, aerospace, beverage, and retail consumer goods. Matt's practice is worldwide and includes the following: 1) brand management and anti-counterfeit work; 2) trademark prosecution and enforcement; 3) intellectual property litigation and enforcement; and 4) intellectual property transactions. Matt has served on the Executive Committee of the IP Section of the California Bar and as the Chair. He is also the Immediate Past Chair of the State Bar's IP Section.
Trade Secret Interest Group Conference Call
Thursday, June 20, 2013, 12 noon
Note revised time: The Trade Secret Interest Group will hold a planning call on June 20 at 12 noon. The dial in number is:1-855-520-7605 Passcode is:1211276419.
During the Trade Secrets Interest Group call, we will discuss some recent trade secret decisions regarding attorneys' fees, preemption, and the reasonable secrecy efforts. We will also discuss interest group business such as updating the trade secrets treatises, upcoming programming, and other projects.
California Solo & Small Firm Summit
The State Bar of California
California Solo & Small Firm Summit
June 20-22, 2013
Renaissance Long Beach Hotel
May 29 - Hotel Reservation Deadline
June 13 - Pre-registration Deadline
The Summit is the Event of the Year for California's solo and small firm practitioners. The Summit content is geared to California attorneys who are in a solo or small firm practice. One low registration fee gives full choice among 32 workshops and programs, and much more! Group discounts are available.
Earn up to 10 hours of MCLE credit, including credit in Legal Ethics. Select courses also offer legal specialization credit.
For more information, see California Solo & Small Firm Summit.
Intellectual Property in Entertainment & Media
June 27, 2013
The Luxe Hotel
11461 Sunset Blvd.
Los Angeles, CA 90049
Earn 6.25 Hours MCLE Credit
You can now REGISTER ONLINE for this program.
Join us at the IP in Entertainment & Media full day conference, Thursday, June 27, 2013, at the Luxe Sunset Boulevard in Los Angeles.
Panel highlight: Gamer or Game Developer? The Law of Video Game Transformation. There has been a seismic shift in the world of video games. Hardcore fans are now cloning games, modifying core aspects of them, or even creating new works based on them (machinima). Our speakers will explore whether the fan boys and girls have the right to do this, and what the game developers and publishers can do about it, as well as other related topics.
The full program brochure is now posted online: See IP in Entertainment and Media.
It's Not Just Boilerplate! Best Practices for Drafting Agreements to Protect Your Trade Secrets and Other IP
Tuesday, July 2, 2013, 12 noon - 1 p.m.
Presented by the Trade Secret Interest Group
You must register in advance in order to attend. This program will offer 1 hour participatory MCLE credit.
This program will highlight best practices for exchanging information during a collaboration, and will include a discussion of pitfalls to avoid in drafting agreements, in particular:
- Confidentiality / non-disclosure obligations and exceptions
- IP ownership, inventorship, and improvements clauses
- Scope of license and permitted uses of licensed technology
- Restrictive Covenants
The program will also discuss best practices for addressing trade secrets in due diligence.
Mike Spillner is an intellectual property litigation partner in Orrick's Silicon Valley office. He focuses on trade secret misappropriation and patent infringement disputes, and other complex commercial litigation.
Elizabeth Howard, an intellectual property partner in Orrick's Silicon Valley office, co-chairs Orrick's life sciences practice. Dr. Howard focuses on patent infringement litigation, with an emphasis on the life sciences. Her practice also includes trade secrets disputes and handling anti-counterfeiting matters in the pharmaceutical industry.
Angelique Kaounis is Of Counsel in the Los Angeles office of Gibson, Dunn & Crutcher where she practices in the Firm's Litigation Department, with a focus on intellectual property and technology-related issues. Ms. Kaounis is a member of the Firm's Antitrust and Trade Regulation, Media and Entertainment, and Intellectual Property Practice Groups.
Robert Milligan, Moderator.
POW! CRASH! IP issues in Licensing Between Comic Books, TV, and Film
Wednesday, July 24, 2013 12 noon. to 1 p.m.
Presented by Entertainment and Sports Law Interest Group
You must register in advance in order to attend. This program will offer 1 hour participatory MCLE credit.
Presented by Matthew Berger, Jesse Berger, and Joseph Ford
Our knowledgeable panelists will discuss the IP issues and licensing process involved in creating a comic book based on an existing television property, and adapting and licensing comic books for film and TV.
Matthew and Jesse Berger will discuss the process of creating comic books with iconic stories that could be made into full-length, live action motion pictures. The panelists will discuss working with artists, writers, and editors to bring either a pitch or a fully-conceived story into full realization as comic books and/or graphic novels, with an eye toward turning those stories into a film. They will discuss the marketing of such projects to studios and independent financiers, licensing agreements, pre-production considerations, production elements, IP issues, and ancillary products, such as games and apps. The portion of the presentation will address various issues arising along the way from concept to screen, including some insight in how to manage the cats in the herd.
Joseph Ford will discuss the licensing process for a comic book based on an existing television property. Television creates numerous memorable characters, iconic moments, and lifelong fans. Comic book companies recognize the value of these television properties and seek to license these properties for their comic books. This portion of the program will include details about what to include in the license, how to secure a license, how to manage the license, and potential pitfalls in negotiating the license.
Matthew I. Berger - Matthew Berger is a business lawyer, handling numerous legal matters for entrepreneurs and maturing companies, including trademark, copyright, licensing, and contract matters. He has served as outside general counsel of Radical Studios, a multimedia studio in Los Angeles, CA, with publishing, film, music, interactive, and merchandising divisions, since its inception. Matthew provides representation in all legal matters concerning the corporations, including formation and ongoing issues of the various operating entities, shareholder relations, intellectual property, employment, licensing, and leasing. Mr. Berger has more than 33 years’ experience as an attorney in corporate, business, and intellectual property law, and he has worked extensively with start-up and mature companies in the Silicon Valley and elsewhere in California, as well as India and China. Mr. Berger received a B.A. in Political Science and Sociology (minor) with honors from the University of California Santa Barbara, and a J.D. from the University of Oregon School of Law in Eugene, Oregon.
Jesse Berger - Jesse Berger is co-founder and Executive Vice President of Radical Studios, a multimedia licensing and production entity centralized around a catalog of stories and characters. Mr. Berger is currently producer on a slate of films under the Radical banner based on Radical graphic novel properties. He is also executive producer on Oblivion, starring Tom Cruise and Morgan Freeman for Universal Pictures, and Hercules, starring Dwayne “The Rock” Johnson for MGM/Paramount Pictures. Mr. Berger received his B.A. degree in film and video production, with a minor in business entrepreneurship from Brooks Institute of Photography.
Joseph Ford - Joseph Ford is a sole practitioner who provides legal advice in connection with entertainment licensing, distribution and production, including merchandising, publishing, copyright, trademark and piracy. Currently, Mr. Ford serves as a Legal Consultant for NBCUniversal Media, where he provides counsel to its Television Consumer Products Group, advising high-level executives and attorneys, and in addition, has closed numerous transactions with high-profile companies, such as Dark Horse Comics, Dynamite Comics, Lion Forge Comics, and Titan Publishing. Joseph is a member of the California Bar and is a licensed patent attorney. Joseph is a lifelong comic book reader and owns over 5,000 comic books.
Other News
TTAB Releases ACR Roundtable Transcript
The Trademark Interest Group notes that the Trademark Trial and Appeal Board has made the transcript available from its roundtable session last fall on Accelerated Case Resolution (“ACR”). The transcript, available here, contains valuable feedback from practitioners on real world examples of ACR options that did, and did not, work in their particular cases. This is an excellent resource for both new and veteran TTAB practitioners to learn more about how ACR may expedite or simplify TTAB proceedings.
Your Nominations Sought for the IP Vanguard Awards
Please submit your nominations for the 2013 IP Vanguard Awards by July 8, 2013, using the 2013 Nomination Form.
Achievements are honored in the following categories:
- In-House Counsel
- Private Practice
- Academic
- Judicial
The full criteria and information about past honorees are available at
IP Vanguard Awards.
PTO Solicits Ideas and Feedback About RCEs
The USPTO currently has a backlog of applications awaiting examination after a Request for Continued Examination (RCE) has been filed, and is actively pursuing efforts to address this backlog. But as it addresses that backlog it is also testing initiatives that may reduce the number of RCEs that need to be filed.
To further assist and help shape future RCE backlog reduction efforts, the USPTO desires to learn more about the root causes for RCE filings and related pressure points experienced by the stakeholder community. In close collaboration with the Patent Public Advisory Committee (PPAC), the Patent Office recently initiated an RCE Outreach program which seeks to gather input from stakeholders about RCEs.
The purpose of this effort is not to eliminate RCE practice or in any way disadvantage it, but rather enable applicants to use RCE practice when needed and avoid it when equal or better options may be available. The RCE Outreach program web page has a wealth of data about RCE filing and prosecution behaviors, an online collaboration tool for submitting comments, and a series of questions about RCE practice. Patent practitioners nationwide are invited to become part of the conversation and future solutions.
The RCE Outreach initiative will also feature a series of roundtables and smaller focus sessions in Silicon Valley, Dallas, New York, Chicago, and at USPTO headquarters in Alexandria, Va. As they become available, the details on how to participate will be listed on the Office's RCE Outreach Web page. http://www.uspto.gov/patents/init_events/rce_outreach.jsp
Here is the link to the dashboard: http://1.usa.gov/Y75v24 The USPTO welcomes feedback on this resource, which can be sent to TTABdashboard@uspto.gov.
Important Dates from the US Copyright Office
The Copyright Office has announced several important deadlines for comments on a variety of issues. More information can be found on the Copyright Office's website, http://1.usa.gov/VtwnT9.
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June 24, 2013: Due date for reply comments on revision to proposed regulation on auditing statements of account and royalty fees
USPTO Announces TTAB Dashboard
The USPTO has added the TTAB Dashboard to its Data Visualization Center. The dashboard provides easy access to the average pendency of contested motions; the average pendency of appeal and trial cases being decided on the merits; and additional data that tracks new filings and inventory. The data will be updated every quarter and will provide comparisons with prior quarters.
There are 3 main sections in which the data is presented: first, key pendency measures, information on new filings with the board, and pending inventory; second, information about the docket of ex parte appeals, which is the source of approximately 3/4 of the final decisions on the merits issued each year by the TTAB; and third, information on oppositions and cancellations, and the Board's trial cases, including contested motions.Users will be able to identify trends, and track, by age, various types of motions.
Here is the link to the dashboard: http://1.usa.gov/Y75v24 The USPTO welcomes feedback on this resource, which can be sent to TTABdashboard@uspto.gov.
Meet your Executive Committee Members -- This Month: Elizabeth Rest
Elizabeth is an attorney at Hiaring + Smith in San Rafael. Elizabeth’s practice is focused on representing clients in trademark prosecution and enforcement, copyright, entertainment, rights of publicity, domain name disputes, business entity formation and maintenance, and the licensing of intellectual property. Elizabeth is a member of the State Bar of California Intellectual Property Law Section Executive Committee, and serves as Chair of the IP Section’s Entertainment and Sports Law Interest Group.
Elizabeth is also a member of the American Bar Association’s section on Intellectual Property, and its Forum Committee on the Entertainment and Sports Industries, the Bar Association of San Francisco, and the Marin County Bar. Elizabeth is a regular writer and speaker on intellectual property and entertainment law issues. When she isn’t working, Elizabeth enjoys live theatre and music, hiking, and trying to learn to dance ballet.
Update from the Legislation Interest Group
The USPTO has requested comments from the public on a Notice of Proposed Rulemaking (NPRM) on the recently enacted Patent Law Treaty, the Hague Treaty on Industrial Designs. Some provisions of the PLT are:
- A claim is not required for a non-provisional application (other than for a design patent) to be entitled to a filing date (a claim is currently not required for a provisional application to be entitled to a filing date).
- A non-provisional application may be filed ‘‘by reference’’ to a previously filed application in lieu of filing the specification and drawings. The applicant will be given a period of time within which to supply a claim and/or claims or a copy of the specification and drawings of the previously filed application.
- Revival of abandoned applications and acceptance of delayed maintenance fee payments may be based solely on ‘‘unintentional’’ delay. The PLT eliminates the provisions of the patent statutes relating to revival of abandoned applications or acceptance of delayed maintenance fee payments on the basis of a showing of ‘‘unavoidable’’ delay.
- If a subsequent application is filed after the expiration of the twelve-month period (six-month period in the case of a design application) set forth in 35 U.S.C. 119(a), but within two months from the expiration of the twelve-month period (six-month period in the case of a design application), the right of priority in the subsequent application may be restored upon petition and payment of the applicable fee if the delay in filing the subsequent application within the twelve- or six-month period was unintentional.
- If the subsequent application is filed after the expiration of the twelve-month period set forth in 35 U.S.C. 119(e), but within two months from the expiration of the twelve-month period, the benefit of the provisional application may be restored upon petition and payment of the applicable fee if the delay in filing the subsequent application within the twelve-month period was unintentional.
- Patent term adjustment rules provide for a reduction of any patent term adjustment if an application is not in condition for examination within eight months of its filing date (or date of commencement of national stage in an international application).
The Notice can be found in the Federal Register at http://1.usa.gov/13tp5nw
Photos from The Trademark Office Comes to Caifornia
The Trademark Office Comes to California was held in Los Angeles on April 16 and in San Francisco on April 18.
In the top photo, Trademark Commissioner Debra Cohn (in pink) is pictured with Sharon Marsh, Deputy Commissioner for Examination Policy.
In the photo below, IP Section Chair Mark Leonard presents the 2012 Vanguard award for In-House counsel to Twitter's General Counsel, Alexander Macgillivray.
Photos from the IP Interest Group April 10 Multi-City Mixer
On Wednesday, April 10, the IP Section Interest Groups held a multi-city Networking Mix & Mingle. Sponsoring groups were the In-House Counsel Interest Group, in cooperation with the Licensing; Patent; Copyright; Trade Secrets; Technology, Internet, and Privacy; Entertainment & Sports, International Law, and; Litigation Interest Groups.
IP attorneys, young lawyers and other interested persons simultaneously gathered at Wokcano in Santa Monica, Sens Restaurant in San Francisco, The X Bar in Century City, The LumberYard in Laguna Beach, and McGregor's in San Diego.
Photos have begun to trickle in, and here's the first batch. Larger versions of the photos can be found on our Facebook page: www.facebook.com/calbaripsection.
The IP Section's Annual Washington D.C. Delegation
IP Section’s annual delegation from the Executive Committee recently went to Washington DC to meet and greet with federal agencies, judges and officials at the USPTO, the ITC, and the U.S. Copyright Office to discuss IP related issues important to our members.
Cydney Tune, Mark Leonard, George Borkowski, Karen Canady, Anthony Craig, and Deborah Greaves
Featured CLE Program from Our Catalog!
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.
Did you miss this program? It's available in our online catalog for participatory CLE credit!
A New Trademark World: Opportunities And Challenges for Trademark Owners in New Media
The proliferation of new and social media technologies empowers content owners with more mechanisms to promote their programming and brands with powerful ways to partner with content. But it also creates significant risk for trademark abuse and infringement. In this session, top lawyers will discuss some hot trademark issues emerging in these new worlds:
- Abuse of trademarks on Twitter, Facebook and other social media platforms
- Trademark rights in augmented reality
- Brand integration with multi-platform programming
1 hour participatory CLE; $35
Online Seminar : More Information
Faculty: Deborah Henderson, Adam Hime, and Charles Steinberg
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.
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 Spring 2013 issue, you can earn credit for the article Willfully Blind: The Causation Anomaly in Patent Lost Profits Awards. One hour of MCLE credit can be obtained by answering a set of True/False questions.
See all of the self-study articles available in our catalog at www.calbar.org/self-study. Watch for other MCLE credit available in future issues of New Matter.
Now Available! 2011 Supplement to Trade Secret Litigation and Protection in California (Second Edition)
The IP Section proudly announces publication of its 2011 Supplement to the practice guide "Trade Secret Litigation and Protection in California (Second Edition)" published by the State Bar of California in 2009. Written by California practitioners, this treatise explains the fundamentals and intricacies of California trade secret law. The treatise is a resource for anyone working with trade secrets prior to or during litigation.
The 2011 Supplement updates the statutory and case law in the Second Edition of the Trade Secret Protection and Litigation in California practice guide. The updates include additional practical tips for protecting trade secrets and for handling trade secret disputes.
Recent developments addressed in this supplement include:
- Discussion and analysis of more than fifty new cases on topics including misappropriation, preemption, identification of trade secrets, injunctions, damages, and attorneys fees;
- New content regarding social media policies and measures to protect against trade secret theft;
- New and updated jury instructions from the Judicial Council's official California Civil Instructions (CACI) for use in use in trade secret misappropriation cases applying California law.
The cost of the treatise and supplement together is $105.00 and the supplement alone is $10.00. You can
order online now (click on "Order Sections Products," then "Intellectual Property") or use the
publications mail order form.
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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.
Third-Party Programs
Patent Law Developments in China
The New York Intellectual Property Law Association presents
Patent Law Developments in China
Monday, June 3, 2013 (All Day)
Benjamin N. Cardozo School of Law
55 5th Avenue
New York, NY 10003
Cost: $50.00
Keynote Address by China's State Intellectual Property Office (SIPO) Commissioner Tian Lipu. CN IP topics addressed by senior SIPO officials and speakers from the All China Patent Agent Association (ACPAA) and the SIPO/US Bar Liaison Council. Simultaneous translation Chinese and English to be provided; nation-wide CLE accreditation being sought. CLICK HERE TO REGISTER
Viva Vegas!
Friday, June 7 - Sunday, June 9, 2013, Las Vegas
The IP Section is Co-Sponsor of "Viva Vegas!" -- an exciting educational and social event at the beautiful Four Seasons Hotel in Las Vegas, June 7-9, 2013. The seminar features nine hours of panel discussions and presentations on the latest developments in intellectual property law, provides excellent networking opportunities, cocktail receptions and dinners, and allows time for relaxation and enjoyable outdoor activities. Speakers and panelists include federal judges, leading practitioners (including in-house attorneys), academics, and the highest-level official at the US Patent Office. Bring the whole family to one of the great IP events of the year. IP Section members can register at the same discounted rate as members of the Los Angeles Intellectual Property Law Association. For a brochure and registration, visit http://www.laipla.net/event/spring-seminar-2013/ or www.laipla.net
Contact Us
Intellectual Property Law Section
The State Bar of California
180 Howard Street
San Francisco, CA 94105-1639
415-538-2375
415-538-2368 fax