Intellectual Property Law Section


Intellectual Property Law Section

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Congratulations to the Recipients of the 2014 IP Vanguard Awards!

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 will be presented during a special Awards Luncheon at the 2014 IP Institute, the flagship event of the Intellectual Property Law Section.

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 will be presented during a special Awards Luncheon at the 2014 IP Institute, the flagship event of the Intellectual Property Law Section.


Dean Marks
Senior Vice President, Intellectual Property, Warner Bros. Entertainment Inc.

Private Practice/Outside Counsel

Andrew Bridges
Fenwick & West


Honorable Paul S. Grewal
United States District Court,
Northern District of California

Academic/Public Policy

Diane Peters,
General Counsel
Creative Commons

Diane Peters

Upcoming Standing Committee Meetings and MCLE Programs

Other News

Third-Party Programs

Upcoming MCLE Programs and Meetings

The Copyright Office Comes to California - Register Today!

Link to The Copyright Office Comes to California pageRegister Today! The Copyright Office Comes to California program is set for Monday, October 6, 2014 at the Los Angeles Airport Marriott Hotel and Wednesday, October 8, 2014 at the Julia Morgan Ballroom in San Francisco.

The U.S. Copyright Office is coming to California! Registration is now open for the Intellectual Property Section’s Copyright Office Comes to California program on October 6 in Los Angeles and October 8 in San Francisco. Senior officials from the Copyright Office and other leading copyright experts will provide:

  • an overview of the new Compendium III of Practices
  • updates on current studies and rulemaking activities
  • a review of most important copyright cases of the year
  • an overview on current Congressional legislation, and
  • a discussion on the 21st Century Copyright Office, including what the public, creators and copyright owners want and need.

For more details and to register, visit The Copyright Office Comes to California.

Webinar: A View from a PTAB Judge: An Update on Best Practices

Wednesday, October 8, 2014, 11 a.m. - 12 noon

Presented by the Intellectual Property Section, Litigation Interest Group

This program offers 1 hour participatory MCLE Credit. You must register in advance in order to participate.

Post-grant proceedings are now an important venue for resolving patent disputes. Many programs get the perspective of litigating practitioners. Come hear what an active judge handling these cases has to say! With speaker Peter Chen, Administrative Patent Judge, USPTO and Robert Payne, Moderator.

Webinar: Negotiating the Supply Chain: Licensing and Other Contract Issues

Thursday, October 9, 2014, 12 noon - 1 p.m.

Presented by the Intellectual Property Section, Licensing Interest Group

This program offers 1 hour participatory MCLE Credit. You must register in advance in order to participate.

This program will cover the most heavily negotiated clauses in supply chain agreements, focusing on mixed hardware/software procurement. Topics include:

  • Licensing and new development clauses;
  • Warranties;
  • Indemnities;
  • Limitation of liability;
  • Open source
With speakers:

  • Josh Fisher represents start-up, small and mid-market businesses in transactional and corporate matters, with focus on complex supply-chain and intellectual property agreements. Prior to starting his solo practice in 2009, Josh co-founded a supply-chain negotiations group at Cisco, served as a Managing Attorney in Cisco's legal department, and was a Director of Legal Affairs at Discovery Communications, the producers of Discovery Channel and Animal Planet. Josh began his legal career as a corporate and securities attorney at the law firm of Wilmer, Cutler & Pickering (now WilmerHale). Josh is a graduate of Columbia University School of Law and holds an MS in Information Technology and Telecom from Johns Hopkins University.

  • John Pavolotsky's practice focuses on technology transactions and other intellectual property matters. Prior to joining Intel Corporation, John was Of Counsel in the Intellectual Property and Technology Group of Greenberg Traurig LLP. John is a graduate of the U.C. Davis School of Law and Haas (U.C. Berkeley) School of Business.

  • Ron S. Zollman is Assistant General Counsel at EMC Corporation; he handles all supply chain agreements for EMC, as well as trade compliance and technology agreements. Prior to EMC’s purchase of Iomega Corporation, the global manufacturer behind Zip Drives, Ron was General Counsel and Secretary for Iomega. Ron graduated U.C. Hastings (cum laude) in 1990, clerked for a federal district court judge, and litigated for ten years (trying four jury trials) before going in-house. He was selected to be among the top in-house attorneys in San Diego by the San Diego Daily Transcript, and is chair of the licensing interest group for ACC (Association of Corporate Counsel) in San Diego.

Webinar: Best Practices For Trademark License Agreements

Tuesday, October 14, 2014, 12 noon - 1 p.m.

Presented by Intellectual Property Law Section, Trademark Interest Group

This program offers 1 hour participatory MCLE Credit. You must register in advance in order to participate.

The fundamentals of proper trademark license agreements as well as how to address specialized issues such as licensees' use of marks in social media will be covered. This program will be a valuable resource to both new and experienced trademark practitioners.

Speaker: Pat Jennings is a partner in Pillsbury Winthrop Shaw Pittman's Intellectual Property practice and is located in the Washington, DC office. His practice focuses on all aspects of trademark law, including counseling, clearance, domain name disputes, domestic and foreign trademark prosecution, opposition and cancellation proceedings before the Trademark Trial and Appeal Board, enforcement, licensing, portfolio maintenance and management, domain names, and litigation. Active on the firm's Social Media & Games team, Mr. Jennings has handled trademark matters for a number of social media companies and mobile application developers.

Moderator: Mark Leonard is one of the founding partners of Davis & Leonard LLP, an IP boutique in Sacramento. Mark's practice is focused on trademark and copyright registration, general intellectual property counseling, e-commerce, licensing, and litigation in the areas of trademark and copyright infringement, computer intrusion, Trademark Trial and Appeal Board proceedings, and ICANN Internet domain name disputes. In addition to serving as Immediate Past Chair of the IP Section Executive Committee he is also the Chair of the IP Section's Trademark Interest Group and Vice-Chair of the Legislation Interest Group.

Webinar: ADR & IP: Mediation -- What It Is, How It Works & How to Draft ADR Provisions. (Part 1 of 2)

Wednesday, October 15, 2014, 12 noon - 1 p.m.

Presented by Intellectual Property Law Section, Licensing Interest Group

This program offers 1 hour participatory MCLE Credit. You must register in advance in order to participate.

In the first of two ADR webinars we will examine: mediation v. other ADR procedures; benefits & limits of mediation; preparing for mediation; court-ordered vs. private mediation; and drafting well-drafted mediation clauses. The second webinar in the series will focus on arbitration (2015).

Speaker: Erica Bristol is an attorney and commercial mediator, specializing in intellectual property, commercial contracts and real estate. Erica is the Principal of EB Resolution Services in Encino, California. She received her JD from UCLA and served as corporate in-house counsel for over 11 years and has been a mediator for over 7 years. She currently serves as a Panel Mediator for the US District Court, Central District of California and the World Intellectual Property Organization. Ms. Bristol is a member of the State Bar of California's IP Section Executive Committee and a member of ABA and LACBA.

Moderator: James C. Roberts III is the managing principal of Global Capital Law Group PC and its consulting arm, Global Capital Strategic Group, advising on technology, international and transactional matters. Clients range from large corporations to start-ups in digital media, mobile, software, biotech and greentech. He commutes between California and Milan. Mr. Roberts is Chair of The State Bar of California IP Section's Licensing Interest Group. He frequently writes or speaks on startups and venture capital.

Webinar:The Ethics of Securing Your Client Data - Locked Down!

Tuesday, October 21, 2014, 12 noon - 1 p.m.

Presented by the Copyright and Technology/Internet/Privacy Interest Groups

This program offers 1 hour participatory MCLE Credit including 1 hour Legal Ethics credit. You must register in advance in order to participate.

Lawyers have an ethical duty to be competent and to keep their client data confidential. It costs money to protect data and businesses frequently resist budgeting for security, even though an ounce of prevention is far less expensive than a pound of cure. Investigating and remediating data breaches is hideously expensive, not to mention the necessity of complying with state data breach notification laws. This session will cover:

  • How to protect copyrighted material in the digital world
  • Specific security incidents involving copyrighted material
  • How data breaches occur
  • How to prevent data breaches using a combination of technology, policies and training
  • Secure computing when you’re on the road
  • Encryption
  • The new rules for strong passwords
  • Common sources of breaches: User Error, Technology Snafus, Insiders, Hackers and Hactivists
With speakers:

  • Sharon D. Nelson, Esq., is the President of Sensei Enterprises, Inc., a digital forensics, information technology and information security firm in Fairfax, Virginia. Ms. Nelson graduated from Georgetown University Law Center and has been in private practice ever since, now concentrating exclusively in electronic evidence law. Ms. Nelson was the President of the Virginia State Bar June 2013-June 2014, is now the President of the Fairfax Law Foundation. She serves on the ABA’s Cybersecurity Legal Task Force and on its Standing Committee on Technology and Information Systems. From 2012-2014, she served on the ABA's House of Delegates.

  • John W. Simek is VP of Sensei Enterprises, Inc., and is a nationally known testifying expert in the area of digital forensics. He holds a degree in engineering from the U.S. Merchant Marine Academy and an MBA in finance from Saint Joseph’s University. After forming Sensei, he ended his 20+ year affiliation with Mobil Oil Corporation, where he served as a senior technologist designing and troubleshooting Mobil’s networks throughout the western hemisphere. Mr. Simek has in-depth experience with network troubleshooting, hardware and software implementations, systems integration, and logistical and financial expertise in computer engineering designs and solutions.

  • Francine Ward, Moderator.

IP Institute Save the Date!

Hyatt Regency, Link to IP Institute PageSave the Date for the 2014 Intellectual Property Institute and 6th Annual IP Vanguard Awards will be held November 6-7, 2014  at the Hyatt Regency Orange County (Disneyland) 11999 Harbor Blvd, Garden Grove, CA.

The 6th Annual IP Vanguard Award Luncheon will be held Friday November 7, 2014, 12 noon - 1 p.m. 

Other News

Copyright Office Has Released Its Long-awaited Compendium

On August 19, 2014, The Copyright Office released a public draft of the Compendium of U.S. Copyright Office Practices, Third Edition (the “Third Edition”).

The first major revision in more than two decades, the draft presents more than 1200 pages of administrative practices and sets the stage for a number of
long-term improvements in registration and recordation policy. It will remain in draft form for approximately 120 days pending final review and implementation,
taking effect on or around December 15, 2014. The link to the compendium is here:

Hot News: Court of Appeals Rules Sherlock Holmes is Squarely in the Public Domain

By Sam Gunning, 3L, Benjamin N. Cardozo School of Law

On August 4, 2014, the Seventh Circuit Court of Appeals issued its decision in Klinger v. Conan Doyle Estate, Ltd, holding that the Doyle estate must pay 100% of the legal fees-- totaling $30 million--to Leslie Klinger. Klinger is an author and editor who rejected the demands of the Doyle estate for licensing fees on a Sherlock Holmes anthology that was composed of stories that were all written before 1923.

Klinger arranged to publish an anthology of Sherlock Holmes’ stories. As the copyright had expired he did not believe he needed to obtain a license. The Doyle estate told Pegasus, the publisher, that it would have to obtain a $5,000 license from the estate to legally authorize the book. The estate made latent threats to sue, and informed Klinger that “if you do proceed to bring out (the sequel) unlicensed, do not expect to see it offered for sale by Amazon, Barnes and Noble, and similar retailers.”

Klinger sued the estate instead of obtaining a license and on June 16, 2014, the Seventh Circuit Court of Appeals issued a declaratory judgment in favor of Klinger, holding that Klinger would not be infringing copyrights on fictional works “published by Doyle before 1923 by anthologizing stories written long after Doyle’s death in 1930 that feature Holmes and other characters depicted in the pre-1923 fiction.” In the latest ruling, issued on August 4, 2014, the estate was ordered to pay all of Klinger’s legal fees. Posner’s quite scathing opinion described the Doyle estate’s requests for licenses as “extortion,” and further suggests that the estate may be violating antitrust laws through their collusion with booksellers to cooperate with it in enforcing its “nonexistent copyright claims.”

Approaching the case from an economic standpoint, Posner praises Klinger for bringing the suit, advocating that by “exposing the estate’s unlawful business strategy, Klinger deserves a reward but asks only to break even.” In contrast, a copyright holder would obtain damages by winning a suit, but if they lose they do not pay damages.” However, the case will no doubt significantly affect the practices of the Doyle estate in the future.

Entertainment and Sports Law Interest Group Update: California Labor Commission Decision--Deals Between Artists and Producers Not Covered by the Record Contracts Exemption to the Talent Agencies Act

On August 6, 2014, the California Labor Commission issued its decision in Lindsey v. Marie holding that the recording contracts exemption from the California Talent Agencies Act (“TAA”) does not apply to contracts between artists and producers. The case, which pitted Steve Lindsey, a songwriter, record producer, and recording artist, against Marie Music Group, LLC (“MMG”), Lindsey’s former management company, may have widespread repercussions for managers and the music industry in general.

Bennett Kaufman, Lindsey’s manager and an employee of MMG, procured two record production jobs for Lindsey during their management relationship. Lindsey contracted directly with the artists, but was paid from royalties arising out of the sale and distribution of recordings from the artists’ record companies. The record companies were not parties to the agreements. The TAA requires that people be licensed “who engage in the occupation of procuring, offering, promising, or attempting to procure employment or engagements for an artist or artists”. California Labor Code §1700.4(a). The Act, however, includes an exemption for “activities of procuring, offering, or promising to procure recording contracts for an artist.”  Id.

In short, managers are not allowed to procure jobs for their clients unless those jobs are recording contracts. MMG argued that since Lindsey was actually being paid by royalties generated from the artists’ recording agreements, the jobs fell within the recording contracts exemption of the TAA, even though the agreements were not made directly with a recording company. 

Lindsey argued that MMG’s procurement of his production jobs was a violation of the TAA because the agreements were not “recording contracts” since the record companies were not a party to the contracts.

The Commission agreed with Lindsey, stating that the recording contracts exemption was implemented specifically so that managers could act as a liaison between a record company and an artist, not as a blanket exemption for any agreement related to a master recording that will ultimately be distributed by a record company. Citing Marathon Entertainment v. Blasi, the Commission held that the management agreement between Lindsey and MMG was void ab initio because MMG “engaged in substantial procurement activities that are inseparable from the lawful managerial services provided.” Marathon gives discretion to judges to decide whether to sever invalid portions of management contracts or hold them entirely invalid based on whether the “central purpose of the contract is tainted with illegality.” Marathon Entertainment v. Blasi (2008) 42 Cal.4th 974. Finding that the manager’s violation of the TAA was substantial, rather than sever the unlawful clauses, the Commission voided the contract in its entirety, resulting in no royalties to the manager.

This decision may result in a dramatic change in how artists, producers, and record companies contract. It may compel record companies to become parties to producer/artist agreements or to hire producers directly for their recording artists.

Copyright Office Extends Period for Submission of Further Comments on Rights of "Making Available" and "Communication to the Public"

The Copyright Office has published a Federal Register notice extending the deadline for public comments that address topics listed in the Office's July 15, 2014 Request for Additional Comments on the rights of "making available" and "communication to the public." Comments are now due by 5:00 p.m. EDT on September 15, 2014. For more information, including the complete notice and the comment submission form, please see

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.

The Section thanks you for your membership!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.

Elimination of Bias in the Legal Profession

  • Navigating Diversity
Detection and Prevention of Substance Abuse and Emotional Distress
  • Coping with the Unique Challenges of Legal Practice
Legal Ethics
  • 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!

Featured CLE Program from Our Catalog!

Online CLEListen 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 and select Intellectual Property Law Section.

Did you miss this program? It's available in our online catalog for CLE credit!

Copyright Termination Rights and Sound Recordings

Artists and record companies are preparing to go to the mat on the question of whether termination rights under Copyright Act §203 apply to sound recordings. If artists prevail, they will recapture ownership of their masters in the USA. This program examines the underlying principles of termination rights and how they might apply to such issues as whether sound recordings qualify as works made for hire, who are the authors entitled to terminate, effect of joint authorship, intent of the parties to recording agreements, relevance of Copyright Act §504(c)(1) and the future of phonorecord exploitation if artists become co-owners of masters together with the labels.

1 hour participatory MCLE credit; $35
More Information 

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 Winter 2013 issue, you can earn credit for the article Top 10 Ethics Violations Resulting in Discipline by the USPTO: An Update. 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.

 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 for more details.

For more information, please contact our editorial staff at

Interested in Advertising in New Matter?

If you're interested in advertising in New Matter, please note our ad rates.

Eligible Advertisers:

Law Firms,
Court Reporting Services,
IP Search Services,
IP Insurance Services,
eDiscovery Service Companies,
Legal Research Companies,
Legal Staffing Companies
And any other legal service company.

Ad Size/ Issues 1 Issue 2 Issues 3 Issues 4 Issues
¼ Page $1,200 $2,300 $3,300 $4,000
½ Page $1,600 $3,000 $4,200 $5,000
Full Page $2,400 $4,500 $6,300 $7,500

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.

Now 50% Off! 2011 Supplement to Trade Secret Litigation and Protection in California (Second Edition)

The Trade Secret Treatise is now on sale at 50% off. IP Section members can purchase the Supplement and Treatise together for $55. Or you can get the Treatise for $45 and the Supplement for $10. Non members can get theTreatise and the Supplement for $75.

To take advantage of the special offer, use the Special Offer -- IP Treatise Order Form and return it to The IP Section, The State Bar of California, 180 Howard Street, San Francisco, CA 94105; or fax it to 415-538-2368.

Save Money with CEB

CEB Discount Program for Section MembersContinuing 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

USPTO announces Biotechnology, Chemical and Pharmaceutical Customer Partnership meeting on September 17th in San Jose

Biotechnology/Chemical/Pharmaceutical Customer Partnership

The United States Patent and Trademark OfficeThe First Bicoastal Biotechnology,Chemical and Pharmaceutical (BCBCP) Partnership Meeting

Wednesday, September 17, 2014
9:00am to 2:00pm (PDT)
12:00pm to 5:00pm (EDT)

The USPTO is pleased to announce its first Bicoastal Biotechnology, Chemical and Pharmaceutical Customer Partnership (BCBCP) Meeting. This inaugural BCBCP expands its long-standing partnership in this industry sector to customers across the country. The meeting will be held on September 17th and will be simultaneously available at locations on both the EAST (Alexandria, VA) and West (San Jose, CA) coasts. During the BCBCP, participants will be able to interact with Office personnel in person on both coasts, or alternatively, via webcast. Please see below for registration information on how you can participate.


Date and Location: The Partnership Meeting will be held on September 17th from 12 noon - 5 p.m. on the east coast and, at the same time, from 9 a.m. - 2 p.m. on the west coast.

East Coast Location:

USPTO Headquarters
Madison Auditorium
600 Dulany Street
Alexandria, VA

West Coast Location:

San Jose State University
College of Engineering
Conference Room E285/287
San Jose, CA

The Biotechnology, and Chemical and Pharmaceutical Customer Partnership was developed to create a collaborative forum for USPTO customers in this industry sector to share ideas, experiences, and insights with USPTO staff. The BCBCP is intended to be informal in nature and will include participants from across the industry.
Some of the topics to be discussed by USPTO staff and industry customers will include:

  • Markush claim practice
  • Patent application filing best practices
  • RCE practice
  • Overview of patent application initiatives
  • Panel discussion on U.S. Supreme Court decisions
    (e.g. Alice Corp., v. Cls Bank International. 134 S. Ct. 1537 (Supreme Court March 21, 2014); and Association for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 186 L.Ed. 2d 124 (2013))

Please check back and click here to view the final BCBCP Agenda once posted. The USPTO looks forward to hearing the individual views from its customers and does not intend to use this forum to seek or arrive at any consensus. This customer partnership is formed with full recognition of the USPTO's responsibility under the Federal Advisory Committee Act (FACA), and accordingly, is not established as FACA compliant committee.

Registration Information

Please email USPTOBCP1600@USPTO.GOV to register by September, 12th. Please include “BCP Registration” in the email subject line. In the email body, please include the following information:

  • Your name, title and organization
  • Contact information (e-mail, phone, etc.)
  • Your attending location (Alexandria, San Jose, or online).

Directions and Parking information

EWest Coast location: San Jose University College of Engineering, San Jose, California


Campus map: (B3-Engineering Building)

Parking Options:

Contact Us

Intellectual Property Law Section
The State Bar of California
180 Howard Street
San Francisco, CA 94105-1639
415-538-2368 fax