Untitled Document

41st Annual IP Institute: IP on the American Riviera

Santa BarbaraPresented by The State Bar of California Intellectual Property Law Section

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

With presentation of the Annual Vanguard Awards!

The conference provided 9.25 hours MCLE credit, including 2 hours in Legal Ethics

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

Letter from the Chair

Elizabeth RestWelcome to the 41st Annual IP Institute, IP on the American Riviera, in beautiful Santa Barbara! This year’s Institute, the State Bar of California’s IP Law Section’s premiere annual multi-day event, celebrates the many diverse areas of IP by offering a full slate of exceptional educational programming as well as multiple enjoyable networking events.

Come to the conference hotel, the Hyatt Centric Santa Barbara, on Wednesday evening to join fellow attendees, speakers, Vanguard Award winners, and members of the IP Section Executive Committee for a networking welcome reception featuring a delicious selection of appetizers and local Santa Barbara wines.

Two days of outstanding educational programming begins Thursday morning. We offer two full tracks of programming, and several general sessions that are sure to interest all attendees. This year’s Institute provides a wide range of cutting-edge and compelling presentations on trademark, copyright, patent, entertainment, right of publicity, open source software licensing, IP-specific ethics issues, and more. Our speakers are prominent individuals from leading law firms, law schools, and companies (Twitter, DreamWorks Animation, IBM, Intel, and more!). We are also honored to have William J. Griffin, Deputy Director, Office of Enrollment and Discipline, and John Cabeca, Director, Silicon Valley Office, both of the United States Patent and Trademark Office, who will be speaking on issues significant to USPTO practitioners.

Santa Barbara HyattIn addition to two days of engaging educational sessions, the Institute promises several unique networking opportunities. On Thursday afternoon, we are excited to offer a guided walking tour of the beautiful and historic Santa Barbara Courthouse and Gardens. A delightful trolley will transport attendees to and from the hotel. The tour will allow attendees to network in a social setting, while seeing one of Santa Barbara’s most famous and exquisite sites. And Thursday you're invited to an evening of entertainment, Late Night on the Riviera. Both events are free to all attendees and all are welcome.

You are also invited to join the IP Section Thursday afternoon, as we will be celebrating this year’s four Vanguard Award winners with a light-hearted, entertaining, and memorable lunch ceremony in honor of the award recipients.

Looking forward to an unforgettable IP Institute on the American Riviera!

Elizabeth J. Rest
Crown, LLP
Chair, 2016 IP Institute

Student Reviews of the 2016 IP Institute

Tal Kapelner, UCLA

I am very grateful to have attended the 2016 IP Institute. Judging by the accolades I heard from many of the attendees, I fear I may have been spoiled by having this be my first Bar Conference. The 2+ day event had the perfect mix of wonderful speakers discussing interesting topics, a beautiful location, fun activities and many opportunities to discuss all matters of the legal and non-legal world with attorneys along whom I hope one day to be a colleague.

Wednesday evening I had the opportunity to meet Hannah Poteat of GitHub, an Executive Committee member who specializes in privacy law. This is a burgeoning area of the law but one that is not given much time or notice at the law school level. Law schools simply have not caught up yet – although that is changing with a course offering at a few schools – so it was great to get a chance to meet with an attorney who works in house but deals with these issues as part of her professional capacity, and see how these issues play out in a day-to-day basis for a corporate client. I got another brief chance to hear her thoughts on the matter at the In-house Interest Group lunchtime breakout session on Friday.

Thursday started with a panel on IP and ADR. I was not aware of the downsides of arbitration – other than to plaintiffs’ trial lawyers and their potential clients who would have preferred to go to court on an employment or consumer dispute – and so it was surprising to me to hear about how mistakes of law or fact are typically not reviewable, let alone overturnable, by a court. An informal follow up discussion with another attendee, Matthew Berger (the opportunity for such follow up facilitated by this conference and another example of this conference’s value), allowed me to discuss the ability in certain circumstances to contract around such restrictions on court review. It also pointed up the value in mediation as an alternative to arbitration.

A wonderful interactive presentation from William Griffin of the Office of Enrollment and Discipline at the USPTO followed. Mr. Griffin brought some great scenarios – adapted from real situations he has encountered – of errors both grave and small made by counsel over the years that served as important reminders for attorneys practicing in this area. I especially appreciated that the focus was not just on the most scandalous or extreme errors, but also on the most routine and mundane errors and ethical lapses as well. For example, as Mr. Griffin pointed out, many attorneys fall ill and/or get overloaded, and filing deadlines pass. The solution, he explained, is not to lie about not getting the Office comment letter, but instead to file a Petition to Revive. I was not taught that in any of my IP or Professional Responsibility classes; this is incredibly valuable, straightforward help which I found – so far, for me – only at this conference. Mr. Griffin concluded with a description of his office’s informal guidance offerings for attorneys struggling with an ethically-close case. He said that this is part of his office’s effort to make sure attorneys who want to do the right thing can do so. Awesome stuff; great for an attorney, or an aspiring attorney, to hear.

The courthouse tour was a great idea, and enjoyed by all. And it provided me an opportunity to meet Mary Robinson of the Trademark Office who came all the way from Virginia to attend. After a brief chat at the courthouse and during the trolley ride back, she informed me of job opportunities at her office. A perfect example of how both attorneys and students benefit from networking opportunities here.

The Thursday night entertainment was a great chance to simply have fun with no pressure. Networking opportunities often suffer under the weight of pressure to network. This often comes as an accidental by-product of the organization and structure of the networking event itself, e.g. “Here is a room with some beers and nothing else to do. Network.” This event was completely different. By simply giving people a chance to turn their focus towards playing games with no stakes other than entertainment, the pressure was off. Conversations flowed easily, and people couldn’t help but smile and joke around (the very friendly and accomodating dealers helped in that regard). People had a good time, were in a good mood. This is the stuff of a most successful networking event. And indeed, I had lovely conversations with a number of folks, in particular Vanguard winner Heather Meeker, with whom I discussed, in detail, her days as an undergrad playing card games in her dorm, to her recent efforts to collect her old musical recordings still in storage from her time as a musician and band manager.

Friday brought a whole new day of great speakers on relevant issues and very prominent companies and organizations. Even as someone with no practice experience, I was able to find great value in the IP and VC talk given by Dennis Loomis, Joe Agiato and Deborah Greaves. Even just a parting discussion of how to valuate new companies spoke to a question I just had recently in another context.

Adam Berry and Christopher Miller come from two of the most important IP and tech companies in the world, Twitter and Comcast NBCUniversal, respectively. They had a ton of great information to share, including some information about how Twitter licenses the content generated by its users, which was a question that actually came up in my copyright class at school recently.

The breakout lunchtime Interest Group meetings were another perfect opportunity to meet with people sharing the same interest in very specialized areas. Just being able to meet these attorneys and getting to know them a bit while being able to introduce myself to them was a real perk of the event. And in signing up on their contact sheets, I can now look forward to hearing more about additional informational opportunities soon. It is astonishing to me how much continuing legal education there is and how serious the people leading these breakout sections are in making great attorneys even greater and more knowledgeable! I am really grateful for people like Elizabeth Rest, Sean Sullivan, Sophie Cohen and others at the Sports/Entertainment breakout and the In-House breakout for all they do for us.

The Open Source talk was very informative. I appreciated Heather Meeker beginning the talk with a history of how we got to the current state of affairs. This is an incredibly important subject that is not discussed enough at the law school level in my experience but should be, and not just in patent law classes.

The closing panel was a very interesting discussion of a very accessible topic, and contained a great interactive component that helped me understand patent law better, even without ever having taken a class in it.

Although not chronological, I wanted to talk about the Vanguard Awards last. I am embarrassed to say that I did not give this event much thought when I first looked at the itinerary. My focus was on the panels. But I have to say, the stories that Andy Stroud delineated on behalf of each of the winners really meant a lot to me personally. It made their successes more approachable without making them any less incredible – in fact, their backgrounds, which highlighted the incredible hard work and diverse interests that came without any special privilege that I could discern, showed that achieving great things was possible for anyone with talent, work and desire.

Finally, primary among the great pleasures of the past 2+ days was the chance to meet those organizing the event. Elizabeth Rest, Christine Kopitzke, Barbara Friedman, Matt Spark, Erica Bristol, all the Executive Committee members and so many others put in so much time and work and made it really look easy. Having Erica as our liaison was a true pleasure; she is an amazing professional and getting to know her was a highlight of the event. I want to thank all of them for this incredible experience and opportunity. I met dozens of professionals in a space I would like to practice in, all in a couple days’ time, had fun, felt productive and learned a lot. Thank you.

Eva Freel, UCLA

The IP Section of the State Bar of California recently held its 2016 Section conference, IP on the Riviera, at the Hyatt Centric Santa Barbara. The first night of the IP on the Riviera experience included a Wine Welcome Reception. I enjoyed some great snacks and conversations with the attending attorneys, with a picturesque view of the pool surrounded by palm trees.

On the first full day of the conference, the morning began with a panel called “IP and Alternative Dispute Resolution.”  During this panel, we learned about California’s mediation and arbitration rules and decision trends. Next, I attended the breakout session on “Patent Practice: Using Recent IPR Decisions to Better Defend and Defeats Patents and Maximize Portfolio Strength.” This panel looked at the recently released (November 3, 2016) Patent and Trial Appeal Board statistics on Inter Partes Review to discuss the trends in IPR institutions and final decisions, and what role the IPR should play in a patent attorney’s toolbox. To wrap up the morning’s panels, I attended “Patent Ethics: Ethical Considerations in Practicing in front of the US Patent and Trademark Office,” where William J. Griffin (from the Patent and Trademark Office) illustrated common ethics mistakes and what to do if you make one while practicing in front of the Patent and Trademark Office.

After the morning’s panels, the attorneys gathered at the Vanguard Luncheon, with a beautiful view of the Santa Barbara beaches. Four legal minds were honored for their contributions to IP: Heather J. Meeker, the Honorable Ronald M. Whyte, Fred von Lohmann, and Professor Kevin J. Greene. Following the awards, the attorneys were given the opportunity to tour the historic Santa Barbara courthouse, which included the ornately decorated “mural room” and a panoramic view of the city from the courthouse rooftop.

On the second day of the conference, I attended the breakout panel on “Global Patents: Best Practices for your International Portfolio.” The panel elaborated on the criteria for choosing to file abroad, how to navigate a foreign filing, and how to maintain a foreign patent. The next panel of the morning brought together the in-house counsel from Dreamworks Animation and Twitter to discuss the “Top 5 IP Concerns of In-House Counsel and How to Address Them.” The panel taught about how fiscal limitations of companies shape legal strategy and the consequences of enforcing IP rights on your company’s brand. In the third panel of the morning, “The Road to Ex Parte Appeal: From Office Action to Notice of Appeal”, the panel taught what the new PTAB statistics say about the success and strategy of using ex parte patent appeals.

After the morning’s panels, the attorneys broke out into small Interest Groups to brainstorm future IP Section events. I attended both the Technology, Internet & Privacy and the Patent small group sessions. To close out the conference, the attorney’s reconvened for two final panels. The first, “Your Guide to Penguin Super Heroes: Open Source Software, Advantages, Compliance and Enforcement,” was led by 2016 Vanguard winner, Heather Meeker. The second panel, “Surf’s Up” discussed IP concerns in the surfing realm.

Overall, a wealth of IP legal knowledge was shared in the span of a short three days, and the views of the beautiful Santa Barbara beaches didn’t hurt the experience.

Martin Hirshland, Loyola Law School

The State Bar of California Intellectual Property Law Section’s flagship program, the IP Institute, celebrated its 41st year with a well-balanced, thought-provoking and relevant legal discussion. The mood was relaxed, as established IP attorneys from across California and the nation gathered in picturesque Santa Barbara for three nights by the beach.

The institute began on Wednesday night with a great wine reception poolside at the Hyatt Centric. The wine reception was a perfect way to kick off the three days of programming. Thursday morning, Elizabeth Rest, Chair of the IP Section, delivered enthusiastic opening remarks and thanked all the attorneys for coming. The first panel of the institute focused on alternative dispute resolution, which can be very effective in the intellectual property context. The rest of the morning was split between patent and soft IP. I stayed on the trademark track, discussing ethical consideration of practicing before the USPTO and alcoholic beverage IP.

The vanguard award luncheon was a lighthearted and enjoyable affair. Every year, the IP Section honors vanguard in the industry, attorneys who are blazing trails and making a difference in IP law. This year, the section honored KJ Greene, Fred Von Lohmann, Heather Meeker, and Hon. Ronald Whyte.

One of the highlights of the three days was the tour of Santa Barbara’s gorgeous courthouse. With beautiful frescos and murals, a large courtyard garden and a working mechanical clock, it is definitely one place I wouldn’t mind having jury duty. Friday, the last day of the conference, was packed full of information. Some of the highlights for me were: the panel on “zombie licensing” and the IP issues that come with deceased celebrities and musicians, and a presentation of a newly-patented wave machine dreamt up by Kelly Slater, one of our generation’s premiere surfers.

The institute’s well-crafted blend of contemporary legal issues, basic doctrines of IP law, and entertaining speakers kept me engaged throughout the conference. The food was excellent; the location was idyllic and the people there were passionate and friendly. The sponsors and affiliated firms should be proud to be associated with the program. As a law student, I was thrilled to experience what a real attorney conference is like and to get a heavy dose of trademark review before my final in a couple weeks. Thank you California Bar for a great experience.

Marianne Hanna, Golden Gate School of Law

The IP Section of the State Bar of California brought together IP practitioners, representatives from the USPTO, entertainment industry elites, recent law school graduates, law students, and distinguished leaders within the IP community for its 41st Annual IP Institute-“IP on the American Riviera”-conference in Santa Barbara, California.

Over the course of two days there were several colorful panels that discussed niche areas of IP law, such as: IP Law and New Ventures in the Surf Industry, Nuts and Bolts of Alcohol and Beverage IP, and Copyright and Trademark Issues in Fan Fiction and Fan Art. The conference also provided practitioners with several practical insights about how to deal with the USPTO, as well as, handle practical matters such as patent and trademark ethics, IP and advanced dispute resolution, as well as, top IP concerns of In-House counsel.

There were several prominent panelists ranging from practitioners, professors and artists within the entertainment industry, as well as, this year’s Vanguard Award winners: Kevin Greene, Professor of Law at Thomas Jefferson School of Law; Heather Meeker, partner at O’Melveny & Myers, LLP; Honorable Ronald M. Whyte; and Fred von Lohmann, Legal Director, Copyright at Google, Inc.

During the course of the conference, there several opportunities for attendees to network with each other, including the morning breakfasts, interest group meetings, ‘Late Night on the Riviera’ event festivities, and the walking tour of the Santa Barbara courthouse and gardens.

The conference was broadcasted extensively on various platforms on social media allowing those, who could not attend the conference, to experience the conference over internet-waves.