Recent Reports of the IP Section Interest Groups

The interest groups of the IP Law Section are responsible for delivering programming on the designated subject matter of the committee, networking among members, building community, alerting Section members to hot topics and law updates, and increasing the opportunities for Section members to volunteer and become involved with the Section through Interest Group activities.


Report Date: March 10, 2016

Submitted by: Chris Lockard


Chris Lockard, Chair
Francine Ward, Vice Chair
Matthew Neco, Secretary
Cydney Tune, Immediate Past Chair

I. Recent Meetings, Activities and Events:

  1. Networking Mix and Mingle - 2/4/16
  2. The Ethical Considerations of Playing in the Social Media Sandbox - 1/7/15

II. Upcoming Meetings, Activities and Events:

  1. Programs Scheduled:
    1. IG Member Call – 3/22/16
    2. Strategies for the Second Act webinar - educate IP lawyers with basic ideas on tax strategies, and any other death and retirement considerations  – 4/20/16
    3. “Copyright Law in a Transformational World” conference, Universal City – 5/12/16
    4. Copyright and Fair Use in the Academic/Nonprofit Setting webinar – Speakers Kenny Crews and Angus MacDonald – late August/early September
  2. Programs Being Planned/Considered:
    1. Documentary Films (with Entertainment & Sports Interest Group)
    2. IP issues in Social Media
    3. Co-sponsoring Entertainment and Sports IG webinar “Making Friends with Marketing; creating a relationship with internal clients and proper use of marketing data within media companies”
    4. Co-sponsoring TIP IG webinar on DMCA reform.
    5. Co-sponsoring Entertainment and Sports IG webinar “From Contest to Content - Legal Issues and Best Practices for Commercial Use of User Generated Content.”
    6. Co-sponsoring Entertainment and Sports IG webinar on social media issues in entertainment and sports law

III. Matters Requiring Executive Committee Action:


Entertainment & Sports Law

Report Date: Match 19, 2016

Submitted by: Dave Murphy, Chair

Sean M. Sullivan, Chair
Dave Murphy, Vice Chair
Elizabeth J. Rest, Immediate Past Chair

I. Recent Meetings, Activities, and Events

A. Programming

We are planning on presenting our program “IP in Digital Entertainment Startups” on April 14, 2016. We had a webinar entitled “Rise of the DJ/Producer: Best Practices for DJ/Producer Representation” originally scheduled for October, 2015, but are looking for new dates for the program in light of speaker unavailability. We have several webinars in the planning stages.

B. Networking

We participated in the “all IP Section” networking program in February 2016.

We hope to have networking mixers in both Southern and Northern California in in the spring of 2016.

We have discussed hosting additional social events for the group, perhaps in collaboration with another interest group(s).

C. Community Building

We held an open-to-all teleconference on Friday, January 15, 2016, from 12 noon to 1 p.m. to discuss webinars that we are working on, topic and speaker ideas for future programs, and opportunities for members to get involved. We would eventually like to institute bi-monthly telephonic meetings for practitioners.

We participated in the “all IP Section” networking program in February 2016.

We hope to have networking mixers in both Southern and Northern California in spring 2016. The interest group has discussed hosting additional social events for the group, perhaps in collaboration with another interest group(s).

D. Hot Topic/Law Update Alerts

The Interest Group has submitted several law updates/news items to Inevitable Disclosures that are of interest to practitioners, and will continue to periodically do so.

E. Volunteer Involvement

Involvement in the group continues to grow. At the Interest Group in-person meeting at the 2015 IP Institute several members expressed an interest in volunteer activities. All such individuals have been contacted and we are working with them to plan future events. We have also reached out to several individuals in various entertainment industry roles that have expressed interest in getting involved.

F. Succession Plan

We instituted our succession plan in 2014. Elizabeth Rest, former Chair, Sean Sullivan, former Vice-Chair, and Dave Murphy, former Secretary, succeeded to the following positions:

1. Sean Sullivan, Chair
2. Dave Murphy, Vice-Chair
3. Elizabeth J. Rest, Immediate Past Chair

The Interest Group is actively looking for involvement from others and we hope to soon find an appropriate person to serve as Secretary. We will bring this to the Executive Committee at the appropriate time.

II. Upcoming Meetings, Activities, and Events

The interest group has several programs in the planning stages. For example (some titles to be determined):

1. April 2016 – IP in Digital Entertainment Startups
2. May 2016 – Rise of the DJ/Producer: Best Practices for DJ/Producer Representation
3. Summer 2016 - Trademark Law Issues Across the Entertainment Industries
4. Summer 2016 – Monetization of entertainment media on streaming services (YouTube, Vimeo, etc.); Ad revenue business model for digital entertainment media; royalty society for digital ad revenue model (Licensing would like to co-sponsor)
5. Summer 2016 - From Contest to Content: Contests, Sweepstakes and User Generated Content
6. Fall 2016 - Making Friends with Marketing; creating a relationship with internal clients and proper use of marketing data within media companies
7. Fall 2016 - Social media issues in entertainment and sports law (Copyright and Licensing would like to co-sponsor)
8. Film finance; we are working on narrowing the topic and finding speakers
9. Business entity and tax planning for the entertainment and/or sports client - TBD (Licensing would like to co-sponsor)
10. Copyright Program on Documentary Films – TBD – We would like to co-sponsor this program.
11. In House Program on Negotiating IP Indemnification Agreements – TBD – We would like to co-sponsor this program.
12. Technology, Internet, and Privacy’s Program on DMCA Reform – TBD – We would like to co-sponsor this program.

III. Matters Requiring Executive Committee Action

None at this time.

In-House Counsel

Report Date: March 11, 2016

Submitted by: Derrick Brent


Chair: Georgann Grunebach
Vice-Chair: Derrick Brent
Liaison:  Sharon Glancz, NBC Universal/Television

I. Recent Meetings, Activities, and Events

On March 9, 2016, we hosted Aaron Hurvitz, Of Foreign Counsel for Kangxin Partners (Beijing) for a webinar entitled “Patent and Software Protection in China.” The program went very well.  It was well-attended, and several questions were exchanged with the speaker. Given increasing interest and work in China, we hope to engage Mr. Hurvitz for follow up presentations on specific transactions in the market.

We are continuing to reach out to speakers to get webinars scheduled for the upcoming months.  Topics include:

  • The Life of the “Fractional In House Counsel.” Representing the interests of a company, while still maintaining a distinct private practice. Could be a good Ethics program?
  • In House Counsel Servicing on the Board of Directors of a Public or Private Corporation. What are the metes and bounds of legal advice versus business advice? What are the ethical considerations?
  • MBA in a Day, or How to Read a Balance Sheet in an Hour, with special focus on Intellectual Property assets.
  • Valuation of IP. When to check assets, and how to maintain your ongoing review most cost effectively.
  • Value Added IP, a Risk Assessment and Analysis.
  • Reprise of Indemnity Clauses. We did this program last year, some folks responded that it should or could be an annual program. We can check in with the original presenters to see if there have been enough developments to do an update in March.
  • Antitrust for In-House. Giving in-house counsel a sense of how antitrust considerations play into operations counseling and contracts.
  • Employment and Trade Secrets for In-House; a general overview with special focus on IP.
  • Issues, Considerations and Costs in Managing an IP Portfolio.
  • Care and feeding of outside counsel. How to best manage for your IP assets.
  • Presentations by various Docketing System experts.  A non-endorsement of various types of docketing systems for IP (Trademark, Patents, Domain Name registrations).


No specific networking activity was planned since July.

Community Building

The In-House Interest Group anticipates several jointly held webinars (see above).  More are planned for the future. 

II. Upcoming Meetings, Activities and Events

Speaker:  Mr. Victor Cooper, Esq.
                  Gates and Cooper, LLP

“Maximizing Your Relationship with Outside IP Counsel, Part One-Patents”

Invited, awaiting detailed course description and date.

Speaker:  Mr. Michael Lovitz, Esq.
Lovitz IP Law

“Maximizing Your Relationship with Outside IP Counsel, Part Two – Trademarks, Copyrights, Trade Dress, Internet/Domain Names”

Invited, awaiting detailed course description and date.

III. Matters Requiring Executive Committee Action

None at this time!

International IP

Report Date: March 19, 2016
Submitted by: Rebecca Chen

Rebecca Chen, Chair
David Tseng, Vice Chair       

I. Recent Events

1. Webinars

  • February 17: Patentability Standards Across Jurisdictions – This webinar provided an overview of the key similarities and differences between post-grant review of patents at the PTAB and oppositions at the EPO and JPO, including the scope of review, timing/deadlines, costs, filing requirements, applicable standards, estoppel issues, discovery, appeals, and other aspects.

II. Upcoming Meetings, Activities and Events

1. Webinars

  • Webinars
    • March 15: Global Dossier – The USPTO-hosted Global Dossier platform launched last year and is now up in running. Dossier Access is a user-friendly online interface, which will make it easier for patent applicants to quickly and easily view, monitor, and manage intellectual property protection around the world by providing access to the dossiers of related applications filed at participating offices. The Office of International Patent Cooperation (OIPC) is hosting an information session on the use and development of the Global Dossier. [Note: this session will be hosted by the USPTO via WebEx]
      • Speaker: Jessica Patterson, OIPC Program Manager
      • Speaker: Nelson Yang, OPIC Patent Business Analyst

    • March 30: Inventor Compensation in Japan: Reducing Litigation Risk – In the early 2000s, a string of inventors, to include Shuji Nakamura the winner of the 2014 Nobel Prize in Physics for inventing the blue LED, sued their former employers, arguing that they were not fairly compensated for their patent contributions. In many cases, the courts ruled in favor of the employee-inventors, which gave rise to employers’ concern that they would be dragged into costly litigation and forced to provide large sums of remuneration. Over a decade later, the Japanese Patent Act has now been amended, aiming to protect inventors’ rights under new “business-friendly” regulations. With the amended Act, patent rights can now belong to employers under certain circumstances. In turn, an inventor is entitled to receive “reasonable remuneration or other economic profit.” The Japan Patent Office recently released guidelines to determine the criteria for such “reasonable remuneration or other economic profits.” US corporations with R&D facilities in Japan must familiarize themselves with these guidelines. This webinar will provide insight as to the procedures corporations should follow in light of these new rules to minimize litigation risk from employee inventors.
      • Speaker: Tatsuya Sawada

    • April: Gray Areas in the IP Law in Latin America – [Summary forthcoming]
      • Speaker: Mariana Paula Noli

2. Webinar Ideas (speakers and/or time not confirmed)

  • Patent Validity in US, Asia and Europe
    • Speaker: Clint Conner
  • Patent Term Extension Practices across Jurisdictions (joint program w/ Patent IG)
    • Changes in Japan anticipated—awaiting JPO proposal
  • Russian IP
    • Speaker: Alla Crowley
  • Open Source Software
    • Speaker: Etienne de Villiers
  • Import-Export Issues in Licensing
    • Speaker: Jennifer Spaith
    • Speaker: Lawrence Ward
  • International Contracts: Determining Choice of Law
  • Design Protection Law in Europe
  • US Department of Commerce [potential speaker(s): Joanne Vliet]
    • Export document requirements and foreign import regulations
    • US controls, compliance, and trade financing options
    • Overcoming trade obstacles to enter international markets
  • Notorious Markets Reports
  • IP Trade Barriers: How to Monetize Your IP in Brazil, India, and China
  • Trademarks in China: with a focus on squatters and oppositions
    • Access to China trademark database no longer open to public 2 years ago
  • International Trade Secrets
  • CCTLD International Domain Disputes

III. Matters Requiring Executive Committee Action

None at this time.


Report Date: Marck 19, 2016
Submitted by: Ben Borson and Mark Leonard

Federal Legislation: Trans Pacific Partnership Agreement (TPP)

The Administration has negotiated a new agreement with many of the “Pacific Rim” countries. It has been submitted to the Senate for ratification. The Treaty is quite long, running to more than 100 pages. Among the provisions of the agreement relating to trade, tariffs and the like, some provisions are of significance to intellectual property matters. 

            This report will focus on Chapter 18 entitled “Intellectual Property.”  Portions of the Treaty are provided below. The first section (A) of this report includes certain general provisions. The Second section (B) includes substantive provisions which may be important to California practitioners in trademarks  (B)(1) and patents (B)(2). This report is not intended to be comprehensive.

            A.        General Provisions

Article 18.2: Objectives
The protection and enforcement of intellectual property rights should contribute to the promotion of technological innovation and to the transfer and dissemination of technology, to the mutual advantage of producers and users of technological knowledge and in a manner conducive to social and economic welfare, and to a balance of rights and obligations.

Article 18.3: Principles
1. A Party may, in formulating or amending its laws and regulations, adopt measures necessary to protect public health and nutrition, and to promote the public interest in sectors of vital importance to their socio-economic and technological development, provided that such measures are consistent with the provisions of this Chapter.

2. Appropriate measures, provided that they are consistent with the provisions of this Chapter, may be needed to prevent the abuse of intellectual property rights by right holders or the resort to practices which unreasonably restrain trade or adversely affect the international transfer of technology.

Article 18.4: Understandings in Respect of this Chapter
Having regard to the underlying public policy objectives of national systems, the Parties recognise the need to:

(a) promote innovation and creativity;
(b) facilitate the diffusion of information, knowledge, technology, culture and the arts; and
(c) foster competition and open and efficient markets, through their respective intellectual property systems,

while respecting the principles of transparency and due process, and taking into account the interests of relevant stakeholders, including right holders, service providers, users and the public.

Article 18.5: Nature and Scope of Obligations
Each Party shall give effect to the provisions of this Chapter. A Party may, but shall not be obliged to, provide more extensive protection for, or enforcement of, intellectual property rights under its law than is required by this Chapter, provided that such protection or enforcement does not contravene the provisions of this Chapter. Each Party shall be free to determine the appropriate method of implementing the provisions of this Chapter within its own legal system and practice.

            B.         Substantive Provisions
                        1.         Trademarks

Article 18.18: Types of Signs Registrable as Trademarks
No Party shall require, as a condition of registration, that a sign be visually perceptible, nor shall a Party deny registration of a trademark only on the ground that the sign of which it is composed is a sound. Additionally, each Party shall make best efforts to register scent marks. A Party may require a concise and accurate description, or graphical representation, or both, as applicable, of the trademark.

Article 18.19: Collective and Certification Marks
Each Party shall provide that trademarks include collective marks and certification marks. A Party is not obligated to treat certification marks as a separate category in its law, provided that those marks are protected. Each Party shall also provide that signs that may serve as geographical indications are capable of protection under its trademark system.

Article 18.20: Use of Identical or Similar Signs
Each Party shall provide that the owner of a registered trademark has the exclusive right to prevent third parties that do not have the owner’s consent from using in the course of trade identical or similar signs, including subsequent geographical indications ,for goods or services that are related to those goods or services in respect of which the owner’s trademark is registered, where such use would result in a likelihood of confusion. In the case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed.

Article 18.21: Exceptions
A Party may provide limited exceptions to the rights conferred by a trademark, such as fair use of descriptive terms, provided that those exceptions take account of the legitimate interest of the owner of the trademark and of third parties.  

Article 18.22: Well-Known Trademarks
1. No Party shall require as a condition for determining that a trademark is well-known that the trademark has been registered in the Party or in another jurisdiction, included on a list of well-known trademarks, or given prior recognition as a well-known trademark.
2. Article 6bis of the Paris Convention shall apply, mutatis mutandis, to goods or services that are not identical or similar to those identified by a well-known trademark, whether registered or not, provided that use of that trademark in relation to those goods or services would indicate a connection between those goods or services and the owner of the trademark, and provided that the interests of the owner of the trademark are likely to be damaged by such use.
3. Each Party recognizes the importance of the Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks as adopted by the Assembly of the Paris Union for the Protection of Industrial Property and the General Assembly of WIPO at the Thirty-Fourth Series of Meetings of the Assemblies of the Member States of WIPO September 20 to 29, 1999.
4. Each Party shall provide for appropriate measures to refuse the application or cancel the registration and prohibit the use of a trademark that is identical or similar to a well-known trademark,14 for identical or similar goods or services, if the use of that trademark is likely to cause confusion with the prior well-known trademark. A Party may also provide such measures including in cases in which the subsequent trademark is likely to deceive.

Article 18.25: Classification of Goods and Services
Each Party shall adopt or maintain a trademark classification system that is consistent with the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, done at Nice, June 15, 1957, as revised and amended (Nice Classification). Each Party shall provide that:
(a) registrations and the publications of applications indicate the goods and services by their
names, grouped according to the classes established by the Nice Classification; and
(b) goods or services may not be considered as being similar to each other on the ground that, in any registration or publication, they are classified in the same class of the Nice Classification. Conversely, each Party shall provide that goods or services may not be considered as being dissimilar from each other on the ground that, in any registration or publication, they are classified in different classes of the Nice Classification.

Article 18.28: Domain Names
1. In connection with each Party’s system for the management of its country-code top-level domain (ccTLD) domain names, the following shall be available:
(a) an appropriate procedure for the settlement of disputes, based on, or modelled along the same lines as, the principles established in the Uniform Domain-Name Dispute-Resolution Policy, as approved by the Internet Corporation for Assigned Names and Numbers (ICANN) or that:
(i) is designed to resolve disputes expeditiously and at low cost;
(ii) is fair and equitable;
(iii) is not overly burdensome; and
(iv) does not preclude resort to judicial proceedings; and
(b) online public access to a reliable and accurate database of contact information concerning domain-name registrants, in accordance with each Party’s law and, if applicable, relevant administrator policies regarding protection of privacy and personal data.
2. In connection with each Party’s system for the management of ccTLD domain names, appropriate remedies17 shall be available at least in cases in which a person registers or holds, with a bad faith intent to profit, a domain name that is identical or confusingly similar to a trademark. 

            B.         Patents

Article 18.37: Patentable Subject Matter
1.  Subject to paragraphs 3 and 4, each Party shall make patents available for any invention, whether a product or process, in all fields of technology, provided that the invention is new, involves an inventive step and is capable of industrial application.30

Footnote 30: For the purposes of this Section, a Party may deem the terms “inventive step” and “capable of industrial application” to be synonymous with the terms “non-obvious” and “useful”, respectively. In determinations regarding inventive step, or non-obviousness, each Party shall consider whether the claimed invention would have been obvious to a person skilled, or having ordinary skill in the art, having regard to the prior art.

           2. Subject to paragraphs 3 and 4 and consistent with paragraph 1, each Party confirms that patents are available for inventions claimed as at least one of the following: new uses of a known product, new methods of using a known product, or new processes of using a known product. A Party may limit those new processes to those that do not claim the use of the product as such.
3. A Party may exclude from patentability inventions, the prevention within their territory of the commercial exploitation of which is necessary to protect ordre public or morality, including to protect human, animal or plant life or health or to avoid serious prejudice to nature or the environment, provided that such exclusion is not made merely because the exploitation is prohibited by its law. A Party may also exclude from patentability:
(a) diagnostic, therapeutic and surgical methods for the treatment of humans or animals;
(b) animals other than microorganisms, and essentially biological processes for the production of plants or animals, other than non-biological and microbiological processes.
4. A Party may also exclude from patentability plants other than microorganisms. However, consistent with paragraph 1 and subject to paragraph 3, each Party confirms that patents are available at least for inventions that are derived from plants.


Article 18.38: Grace Period
            Each Party shall disregard at least information contained in public disclosures used to determine if an invention is novel or has an inventive step, if the public disclosure:
(a) was made by the patent applicant or by a person that obtained the information directly or indirectly from the patent applicant; and
(b) occurred within 12 months prior to the date of the filing of the application in the territory of the Party.

Article 18.40: Exceptions
A Party may provide limited exceptions to the exclusive rights conferred by a patent, provided that such exceptions do not unreasonably conflict with a normal exploitation of the patent and do not unreasonably prejudice the legitimate interests of the patent owner, taking account of the legitimate interests of third parties.

Article 18.46: Patent Term Adjustment for Patent Office Delays
1. Each Party shall make best efforts to process patent applications in an efficient and timely manner, with a view to avoiding unreasonable or unnecessary delays.
2. A Party may provide procedures for a patent applicant to request to expedite the examination of its patent application.
3. If there are unreasonable delays in a Party’s issuance of patents, that Party shall provide the means to, and at the request of the patent owner shall, adjust the term of the patent to compensate for such delays.
4. For the purposes of this Article, an unreasonable delay at least shall include a delay in the issuance of a patent of more than five years from the date of filing of the application in the territory of the Party, or three years after a request for examination of the application has been made, whichever is later. A Party may exclude, from the determination of such delays, periods of time that do not occur during the processing of, or the examination of, the patent application by the granting authority; periods of time that are not directly attributable to the granting authority; as well as periods of time that are attributable to the patent applicant.

Comment:       The Author believes certain provisions of the TPP may be different from certain decisions and procedures currently in the U.S. For example, the current scheme of USPTO and Federal Circuit law of Section 101 is apparently different from the patent eligibility recited in Paragraph 3(a). In some other jurisdictions, including Japan, China, and some other Pacific countries, diagnostic claims are ineligible if they require direct contact with a human or animal body. In some of these countries, “direct methods of diagnostic, therapeutic, and surgical methods” are not eligible, but other methods that to not “touch the body” may be eligible. It may be eligible to have a diagnostic claim of the form: “… detecting X in a sample..,” whereas a claim that includes a step of “drawing a sample from a patient and then detecting X” would not be eligible. “Drawing a sample” “touches” the body, whereas without claiming that step, “detecting X in a sample” could be eligible. The AIA retained a nominal 1-year “grace period,” yet the scope of this grace period is uncertain. Due to the move to “First Inventor to File (FITF)” provision, and with the institution of a new “Derivation” procedure, it may be possible for a member of a pre-filing disclosure to make a variant of the disclosure, publish that variation, and therefore create a prior art publication against the patent application, with the argument that the invention disclosed in the patent application is obvious over the publication. The Author suggests considering refraining from making any public disclosures prior to filing a patent application. Thus, until there are court decisions relating to grace period and pre-filing disclosures, the safest course may be to make the first disclosure in the form of a patent application. Additionally, the Author believes the US may be moving towards a more clear separation between priority and prior art. A claim of priority to a prior-filed application (e.g., provisional) may be ineffective if the prior filed application does not fully disclose and enable the claims to a later-filed application. In a recent US decision (Dynamic Drinkware LLC v National Graphics, Inc.(, the Federal Circuit held a provisional application did not fully support the claims of an issued patent. Therefore, the Author suggests carefully analyzing evolving statutory and case law before committing to a particular course of action.

State Legislation Update

           As of March 11, 2016 the Legislation Interest Group has identified the following bills which may be of interest to the Section. The official summary and status of those bills are as follows:

AB 1687   (Calderon D)   Customer records: age information: commercial online entertainment employment service providers.

Existing law requires a business that owns, licenses, or maintains personal information about a California resident to implement and maintain reasonable security procedures and practices appropriate to the nature of the information, to protect the personal information from unauthorized access, destruction, use, modification, or disclosure. Existing law provides specified civil penalties for a violation of these provisions.
This bill would prohibit a commercial online entertainment employment service provider, as defined, that enters into a contractual agreement to provide specified employment services to an individual paid subscriber from publishing information about the subscriber's age and would require the provider to remove any information regarding the subscriber's age from any Internet Web site under the provider's control if requested by the subscriber. (Based on text date 1/20/2016)
AB 1687 has been referred to the Assembly Arts, Entertainment, Sports, Tourism, and Internet Media and Privacy and Consumer Protection Committees.

SB 889   (Gaines R)   Trademarks.
Existing law, the Model State Trademark Law, provides for the registration of trademarks and service marks with the Secretary of State and requires an application for registration of a mark to provide specified information on the application. Existing law requires an action to require cancellation of a mark registered under that law to be brought in the superior court. This bill would make nonsubstantive changes to that provision.  (Based on text date 1/20/2016).
SB 889 has been referred to the Senate Rules Committee.

SB 1137   (Hertzberg D)   Computer crimes: ransomware.
Existing law establishes various crimes relating to computer services and systems, including, but not limited to, knowingly introducing a computer contaminant, as defined. Existing law makes a violation of those crimes punishable by specified fines or terms of imprisonment, or by both those fines and imprisonment. This bill would define ransomware as a computer contaminant that restricts access to the infected computer and demands that the user pay a ransom to remove the restriction.
The bill would make it a crime for a person to knowingly introduce ransomware into any computer, computer system, or computer network. The bill would make a violation of this provision punishable by imprisonment in a county jail for 2, 3, or 4 years and a fine not exceeding $10,000. This bill contains other related provisions and other existing laws.  (Based on text date 2/18/2016).
SB 1137 has been referred to the Senate Public Safety Committee.


Report Date: March 19, 2016
Submitted by: John Pavolotsky, Vice Chair

James C. Roberts III, Chair
John Pavolotsky, Vice Chair
Sean Hogle, Director of Programming
Teri Karobonik, Direct of Communications (pending)

I. Recent Meetings, Activities, and Events


- Drafting IP Agreements: Best Practices from a Litigator's Perspective (1/26/16)
- EU/US Privacy Law: With t he "Safe Harbor” Invalidated, What Next? (2/9/16)


- Monthly conference calls
- 2/12/16: Discussion on The First Sale Doctrine in the context of the Oracle v. UsedSoft decision by the Court of Justice of the EU
- 3/11/16: Discussion on Tips and Tricks for working with University Technology Transactions Offices

Community Building:

- See B above

Hot Topic/Law Update Alerts:

Volunteer Involvement: Open “officer” slots available; invitations to conference call attendees to submit hot topics/alerts and articles; announcements of in-person conferences; invitations to manage a conference call or to provide oral updates


II. Upcoming Meetings

- Programming
- Networking
Monthly conference calls will continue
Community Building: See B above
- Hot Topic/Law Update Alerts:
- Volunteer Involvement: Open "officer" slots available; invitations to conference call attendees to submit hot topics/alerts and articles; announcements of in-person conferences; invitations to manage a conference call or to provide oral updates.

III. Matters Requiring Executive Committee Action



Report Date: March 12, 2016

Submitted by: Bob Payne –           
Officers: Bob Payne, Anne-Marie Dao, Philip Samouris

  1. Recent Meetings, Activities, and Events:
    • Programming. The last program featured retired judge and JAMS mediator, James Kleinberg.  He spoke on “70 (or so) Courtroom Tips and Tools”
    • Networking:  The Section’s Mixer was held February 4. Chair Robert Payne was co-coordinator of the San Jose meetup.
    • Community Building: See above.
    • Hot Topic/Law Update Alerts: n.a.
    • Volunteer Involvement: n.a.
  2. Upcoming Meetings, Activities and Events:  The next webinar program will be entitled, “The Wonderful, Wacky World of Willfulness.”  Robert Payne will speak. It is scheduled for March 31.
  3. Matters Requiring Executive Committee Action:  None


Report Date:               March 10, 2016

Submitted by:             Sanjesh P. Sharma      

Officers:                      Thomas Allen Ward (Chair), Sanjesh P. Sharma (Vice Chair), Enrica Bruno (Vice Chair), Karin Peterka (Secretary)

I. Recent Meetings, Activities, and Events

The Patent IG presented the following webinar program in 2016:

  • February 11, 2016:  Slaying the Dragon: Understanding and Effectively Managing the Use of the Model Order on E-Discovery in Patent Cases

Speaker:  Mieke Malmberg, Partner, Glaser Weil
Moderator:  Sanjesh Sharma, Vice Chair, Patent IG

II. Upcoming Meetings, Activities and Events:

The following programs have been planned and/or scheduled:

  • March 28, 2006): Apportionment in Patent Damages:  Daubert Proof Patent Damages Using the CAFC Valuation Methodology – Careful Apportionment Using Facts and Circumstances

Speakers:  Jim W. Bergman, Managing Director, Conway MacKenzie, Inc.
Mieke Malmberg, Partner, Glaser Weil
Moderator:  Sanjesh Sharma, Vice Chair, Patent IG

  • May 2016 [DATE TBD] –Allocation of Damages in Cases Involving Multiple IP Causes of Action Reaching the Same Products

Speakers:  Jim W. Bergman, Managing Director, Conway MacKenzie, Inc.
Mieke Malmberg, Partner, Glaser Weil
Moderator:  Sanjesh Sharma, Vice Chair, Patent IG

  • June 2016 [DATE TBD] – Topic: Wilful Infringement and Treble Damages in View of Halo and Stryker

Speaker:  TBD

  • July 2016 [DATE TBD] – Section 101:  Where Have We Been, Where Are We Going?

Speaker:  TBD

  • August 2016 [DATE TBD] – Unitary Patent

Speaker:  TBD

  • September 2016 [DATE TBD] – Post-grant Proceedings in the U.S. and Oppositions in Europe:  A Comparative Analysis

Speaker:  TBD

  • October/November 2016 [DATE TBD] – Patent Law Year in Review – Recent Supreme Court Decisions

Speaker:  TBD

  • December 2016 [DATE TBD] – Ethics for Patent Lawyers

Speaker:  TBD


III. Matters Requiring Executive Committee Action:

Officer positions for the Patent IG:

Tom Ward is the current Chair of the Patent IG. Once he steps down, Sanjesh Sharma will take over the Chair position, and Tom will become the Immediate Past Chair. The Patent IG is exploring candidates for the remaining officer positions, and will announce them as soon as a decision has been reached.

Technology, Internet, and Privacy Law

Report Date: March 11, 2016

Submitted by: Bennet Kelley

Chair: Hannah Poteat
Vice-Chair: Bennet Kelley
Program Chair: Heather Antoine

I. Recent Meetings, Activities, and Events:

  • Intellectual Property Law Section Mix and Mingle!    (Feb. 4)          
  • Webinar: EU/US Privacy Law: With the "Safe Harbor” Closed, What Next? (Feb 9). Joint sponsor with Licensing Interest Group.

II. Upcoming Meetings, Activities and Events

  • Proposed Social Media Panel for Small Firm Summit
  • Proposed Internet Law Update Panel for Annual Meeting   

III. Other Programs

  • Apple Encryption Controversy (Webinar)
  • Addressing Diversity Issues in Tech
    Talking with Licensing IG about webinar
  • What You Need to Know About the Cybersecurity Information Sharing Act (CISA) (webinar)
  • IP and the Internet (Sept. 6)

IV. Matters Requiring Executive Committee Action

a. None.


Report Date: March 11, 2016

Submitted by: Mark Leonard, Chair


Mark Leonard, Chair
Carole Barrett, Vice Chair
Peter Bromaghim, Secretary   
Mary A. Harris, Immediate Past Chair

Recent and Upcoming Meetings, Conferences, Activities, and Events

A. Programming

The TMIG officers have participated in two conference calls with John Cabecca regarding potential opportunities for the USPTO to present in-person panels at one or more conferences in 2017 on advanced trademark topics. John is looking into the possibility of hosting Trademark Office Comes to California 2017 at the Silicon Valley USPTO office and offering a panel for the January 2017 Practice Tips conference.

B. Networking

We appreciated Elizabeth Rest’s promotion of the IG at the recent Section mixer.

C. Community Building

We hope to plan a TMIG social event in 2016.

D. Hot Topic/Law Update Alerts

We have included a number of announcements in Inevitable Disclosures regarding updates from the USPTO.

E. Volunteer Involvement

We continue to try identify potential volunteers.

F. Upcoming Meetings, Activities and Events

Trademark Law Issues Across the Entertainment Industries (planned Entertainment & Sports IG webinar co-sponsored by TMIG)

Potential topics for future webinars:

  • Update on changes to Canadian trademark law.
  • Update on gTLD trademark related issues.
  • Best practices on foreign trademark portfolio management for small/medium sized firms.
  • Use issues with “Zombie” marks.

G. Matters Requiring Executive Committee Action

None at this time.

Trade Secrets

Report Date: March 10, 2016
Submitted by: Angelique Kaounis, Chair

Angelique Kaounis, Chair
Michael Spillner, Vice-Chair
Robert Milligan, Secretary

I. Recent Meetings, Activities, and Events

A. Programming

The IG presented two trade secret programs at the IP in the Workplace day long program in San Francisco on January 19th. The first was: “Ownership of I.P. in the Workplace,” and the speakers for this program were: James Pooley, Principal, James Pooley, a Professional Law Corporation, Menlo Park; David Tollen, Attorney, Sycamore Legal, P.C., San Francisco; and Kenneth Baren, Corporate Counsel, US Foods, Inc., Rosemont, Illinois. The second was “Addressing I.P. Theft in the Workplace.” Speakers for that program were: Pamela Passman, President and CEO, Center for Responsible Enterprise and Trade (, Washington, D.C.; Christian Scali, Principal, The Scali Law Firm, Los Angeles & San Diego; and James D. Vaughn, Managing Director, Silicon Forensics, Pomona. The session was well attended. The IG is also considering several webinars, including a trade secret damages webinar for the Spring/summer, which may be co-sponsored by the litigation interest group, an ethics webinar for the Summer/Fall, as well as a “Trade Secrets at Trial” program we would like to offer at the IP Institute. We are also considering a program comparing protection of trade secrets and patents, which we are proposed for next year’s “Tips and Tricks” CLE conference.

B. Networking

Several IG members attended the section-wide mixer last month and were introduced to a few potential new members. We also are collaborating on several projects, including updating the trade secrets webinars available on InReach, tracking trade secret legislation, and generating additional press for the 3rd edition of the trade secret treatise, which was published last year.

C. Community Building

See networking.

D. Hot Topic/Law Update Alerts

Members are alerted to law updates via Inevitable Disclosures, quarterly telephonic meetings, and informal networking. Members often provide overviews of hot cases/developments during the IG call. We also encourage members to submit articles to New Matter and Inevitable Disclosures during our regular meetings.

E. Volunteer Involvement

Over 30 attorneys participated in creation of Third Edition of the Treatise. We have had several members participate in live programs and webinars.

II. Upcoming Meetings, Activities and Events

We have our next committee meeting (via conference call) on April 27, at 12:00 pm. The other planned meetings this year will take place on July 27, at 12:00, and in November at the IP Institute (in person).

III. Misc

The treatise received a very favorable write-up in the Daily Journal in February. We are requesting that the Executive Committee authorize a re-printing of 100 books and the sending of treatise reminder postcards to capitalize on this good press. We have gotten permission from the authors of the review to use a good quote for the postcard and will seek permission from the Daily Journal as well. As of Mid-February, there were 11 books in stock (nineteen (19) books were sold between July 2015 and January 2016). The reprinting cost will be approximately $5000. Typical costs for designing a postcard (without printing and mailing fees) is approximately $500. We are also requesting that other IGs promote the sale of the treatise. The publisher indicates that treatises have been sent to authors and editors and 40 judges/law libraries.