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Save the Date for the 41st Annual IP Institute

IP on the American Riviera

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

With presentation of the Annual Vanguard Awards!

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

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

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

Program Highlights

Trademark Ethics:  Ethical Considerations in Practicing Before the USPTO. Please join William J. Griffin, Deputy Director, Office of Enrollment and Discipline and Office of the General Counsel, U.S. Patent and Trademark Office, and well-known trademark attorney and blogger John L. Welch as they explore some of the common ethical issues faced by practitioners when filing and prosecuting trademark applications before the USPTO and appearing before the Trademark Trial and Appeal Board. This panel will examine recent cases brought by the PTO’s Office of Enrollment and Discipline and review its guidelines.

Top 5 IP & Technology Concerns of In-House Counsel and How to Address Them. We welcome in-house counsel from Wikimedia Foundation, Twitter, Inc., and DreamWorks Animation SKG, Inc. to discuss recurrent and topical issues seen in an in-house legal practice and how such issues are typically addressed. The discussion will include a review of key transactional strategies and recent case law.  Our panelists will address the IP concerns that they have in their capacities as in-house counsel for well-known companies, particular IP issues that arise in their particular industries, and how they utilize outside counsel to assist with those issues.

Your Guide to Penguin Super Heroes – Open Source Software Advantages, Compliance, and Enforcement. Join experts Heather Meeker, Dave Marr, and Jim Markwith to discuss issues in open source software. The technology press says open source software is “eating the world.”  Once the domain of hackers and hobbyists, open source software development is now ubiquitous in the technology industry, and an understanding of open source licensing is now an essential tool in the skill set of all IP licensing lawyers. Our panel of experts will discuss the “origin story” and basic paradigm of open source software licensing, provide practical and effective tips for license compliance, and discuss the latest in license enforcement activities.

Patent Ethics:  Ethical Considerations in Practicing Before the USPTO. William J. Griffin, Deputy Director, Office of Enrollment and Discipline and Office of the General Counsel, U.S. Patent and Trademark Office, will provide an overview of common ethical issues faced by practitioners who file and prosecute patent applications before the USPTO, and appear before the Patent and Trademark Appeals Board. Deputy Director Griffin will share OED guidelines as well as best practices for developing an ethical and competent patent practice that steers clear of OED scrutiny.

IP and ADR – Developments, Cases and Trends Every IP Practitioner Should Know About. This panel will provide IP practitioners with important developments, cases, and trends in arbitration and mediation affecting the practice of IP law, such as: the California Law Revision Commission’s proposed revisions to mediation confidentiality in California; differences in mediation confidentiality and privilege between state and federal courts affecting IP matters; ethical considerations when advising clients on mediation confidentiality in IP cases; and an update on significant mediation and arbitration cases affecting IP disputes.

The Road to Ex Parte Appeal: From Final Office Action to Notice of Appeal. Join John Cabeca, Director of the Silicon Valley office of the United States Patent and Trademark Office, and attorney TJ Singh, to answer the question: You’ve received a Final Office Action, now what? You’re ready to appeal but you still have options to give it at least one last shot to advance prosecution before you file that appeal brief. Our panelists will discuss strategies and options available as applicants move towards filing a Notice of Appeal. They will also review and explore the use of the various pilot program options available to applicants after prosecution has closed.

Surf’s Up!  Patents, Trademarks, Trade Dress, Copyrights, and Rights of Publicity in Surf and Board Sports. The world surfing market is forecast to reach $13 billion by the year 2017. Leading this growth are apparel makers, equipment manufacturers, marketers, and associations focused on making surfing and other board sports more accessible to a broader demographic. Since we will be in Santa Barbara, the heart of surf culture, this panel presents practitioners who regularly work with patent, trademark, trade dress, copyright, and right of publicity issues for surf and board sport manufactures, distributors, athletes, and sponsors. The panelists will discuss industry-specific IP issues relating to surfboards, paddle boards, and sail boards and the athletes who ride them. The panel will include an inside account of the patent and other IP issues surrounding the latest innovation and “next big thing” in the surf world -- professional surf legend Kelly Slater’s man-made “perfect” wave technology. The panelists will also address various issues relating to sponsorship and endorsement of surf and board sport athletes.

Fan Fiction and Fan Art: Copyright and Trademark Issues Involving User-Generated Content. Very few areas of IP are as contentious as fan art and fan fiction. Generating a number of copyright and trademark issues, it is a topic that not only pits copyright and trademark owners against fans, but pits lawyers against lawyers. Whether it’s the creation of fan fiction for a well-liked fantasy book series, fan art related to a popular movie, or user-generated fan creations based on copyright protected music, creators’ rights are at the core of this messy dispute.

Patent Practice: Using Recent IPR and Court Decisions to Better Defend or Defeat Patents and Maximize Your Portfolio Strength. Recent Patent Trial and Appeal Board (PTAB) decisions and Federal Court rulings are changing the best practices for developing and maintaining defensible patent portfolios, or for defeating overly broad patents. Our speakers will discuss the new legal realities facing patent practitioners, including how to best obtain timely and effective patent coverage or else defeat overly broad patents in this rapidly changing landscape.

Zombie Licensing: Rock & Roll, Intellectual Property, and Raising the Dead Without Getting Dirt Under Your Fingernails (Copyright, Right of Publicity, and Trademark Interplay When Dealing with “Zombie Licensing”). Esteemed panelists in this field will “raise the dead” to confront the macabre topic of “Zombie Licensing”: beyond the grave performances by beloved, deceased musicians we can’t live without. Tupac at Coachella was just the beginning. Now, he’s got company: Buddy Holly, Judy Garland, Whitney Houston to name a few. Touching on all of the major legal issues surrounding this ghostly topic (name/likeness licensing; copyright licenses; music sync, mechanical, and master use licenses; and the technical creation/licensing of the deceased’s holographic performances), this panel promises great visuals, good music, and possibly even a ghoulish surprise.

Alcoholic Beverage IP:  Nuts and Bolts. Nowhere are IP issues more complex and hotly contested than in the heavily-regulated alcohol and beverage industries. Come learn the “nuts and bolts” from two IP practitioners who have extensive experience with these industries. Topics will include trademark, trade dress, copyright, and labeling issues, and the presentation will highlight unique concerns such as Certificates of Label Approval and prohibited terms and images, while focusing on practice pointers for attendees.

Sink or Swim: IP Advice for New Ventures. The “next big thing” can become “opportunity lost” if an entrepreneur fails to identify and properly protect the critical information assets that comprise a new venture, or falls into the unseen traps that can erode or even forfeit essential intellectual property rights. This panel will focus on how a sound IP strategy must go beyond registration, and will share insights on the impact of IP on early stage capital raising, building and protecting brand value and market share, and long-term business success. Non-obvious risks will be discussed, including:  how the IP should be owned; the impact of equity incentive programs; dealing with employees, independent contractors, and “volunteers”; avoiding the “on sale bar”; the risks of overvaluing and undervaluing IP assets; problems with work for hire and non-disclosure agreements; foreign law issues; and planning for succession or business exit.

Networking Opportunities

• On November 9, 2016, please join us for a welcome reception: Wine From the American Riviera!  We will be offering a selection of local Santa Barbara wines and appetizers. Come early and get to know your fellow attendees, our speakers, and members of the IP Section Executive Committee. The reception is free to attend, and open to all attendees.

• We hope that you will also join us in celebrating this year’s Vanguard Award winners with a memorable lunch ceremony on November 10, 2016, in their honor. Tickets are required; ticketing information will be in the brochure.

• During the afternoon of our first full day of programming, November 10, 2016, we are excited to be offering a walking tour of the beautiful and historic Santa Barbara Courthouse and Gardens, led by an experienced guide. A delightful trolley will transport attendees to and from the hotel. The walking tour is free to attend, and open to all attendees, although RSVP is required to reserve space on the trolley. Information will be in the brochure.

• Last, but certainly not least, don’t miss out on an evening testing your luck at our Casino Royale on Thursday, November 10th!  The event is free to attend, and open to all attendees.

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

For questions, please contact IP Institute Program Chair Elizabeth J. Rest at elizabeth@crownllp.com.

THE AMERICAN RIVIERA is a registered trademark of Visit Santa Barbara.