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Intellectual Property Law Section

Live Programs

Register Now for the 41st Annual IP Institute "IP on the American Riviera"

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

With presentation of the Annual Vanguard Awards!

Earn 9.25 hours MCLE credit, including 2 hours in Legal Ethics

You can now REGISTER ONLINE for this program! Please note: Online registration will close on November 4.

Essential Information | Hotel Reservations | Program at a Glance | Program Schedule |
IP Vanguard Awards |  Sponsors | Printable Brochure | Mail / Fax Reg. FormOnline Registration

We are pleased to be offering several opportunities to obtain ethics credits, including:

  • Trademark Ethics:  Ethical Considerations in Practicing Before the USPTO. READ MORE
  • Patent Ethics:  Ethical Considerations in Practicing Before the USPTO. READ MORE
  • IP and ADR – Developments, Cases and Trends Every IP Practitioner Should Know About. READ MORE

For more information, see The 41st Annual IP Institute.

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


Webinar: Think B4 U Text: Avoiding Big $$ Liability Under the TCPA

Tuesday, October 25, 2016, 12 noon - 1 p.m.

This program offers 1 hour participatory MCLE credit.
Presented by the In-House Counsel Interest Group.


With the ever-increasing number of lawsuits involving the Telephone Consumer Protection Act of 1991 (TCPA), it's more important than ever to be up-to-date with the latest information surrounding this challenging law. Companies face significant financial liability for failing to comply with the TCPA, which prohibits calling or texting consumers (and businesses) on their mobile phones without appropriate consent. The TCPA provides plaintiffs with an attractive private right of action with uncapped damages of $500 per violation, which can be trebled if willful or knowing.

No industry is immune from this law, where multi-million dollar settlements are almost daily occurrences. An especially problematic part of TCPA compliance is that it can be entirely out of the control of companies. When a company attempts to contact a consumer who had consented to contact but for whatever reason abandons their number, the company can still be held responsible for TCPA violations when the number is reassigned to another party.

Industry experts will advise on how to comply with the law and understand the FCC rules that present more questions than answers for companies that seek to avoid liability.

Moderator: Sophie Cohen
Speakers: Marc Roth More information
               Christine Reilly More information
               Diana Eisner More information

Webinar: Patent Clearance Strategies in the Wake of the Halo & Stryker Decisions

Wednesday, October 26, 2016, 12 noon - 1 p.m.

This program offers 1 hour participatory MCLE credit.
Presented by the Patent Interest Group


This program will discuss the current state of case law on willfullness and enhanced damages, including a discussion of the Halo Elecs, Inc. v. Pulse Elecs, Inc. decision, the Stryker Corp. v. Zimmer, Inc., decision, and recent case law interpreting those decisions. The program will also address practical tips for practitioners in writing freedom to operate opinions or conducting patent clearance efforts in light of current case law.

Moderator: Sanjesh Sharma    More Information
Speaker: Sarah Sheldon Brooks  More Information

Webinar: Copyright: Your Client Got a Book Deal, Now What?

Thursday, October 27, 2016, 12 noon - 1 p.m.

This program offers 1 hour participatory MCLE credit.


Over the last 20-years the publishing industry has gone from a highly lucrative industry to experiencing the biggest downturn ever. Why? The Internet. The digital age impacted book sales in such a way that it was sink or change—the industry changed. Like a Phoenix arising from the ashes, the book industry now reigns supreme. With a renewed sense of confidence comes power; power that may affect your author clients. Join a panel of industry professionals for a thought-provoking session on what every book attorney must know to effectively counsel their author clients. You’ll hear the perspective of a publishing lawyer, literary agent, book editor, and a bestselling lawyer/novelist.

 They will:

  1. Discuss how changes in the book industry legally affect your clients;
  2. Explore important contract provisions and how best to negotiate them;
  3. Identify best practices in counseling your author clients.

Moderator: Francine Ward        More Information
Speakers: Kimberley Cameron  More Information
                Georgia Hughes       More Information
                D.P. Lyle                     More Information

Webinar: A Global Approach to Grey Market Issues: Solutions and Remedies in Europe and in the US

Thursday, November 17, 2016, 12 noon - 1 p.m.

This program offers 1 hour participatory MCLE credit.


The grey market–or parallel import–is typically defined as the unauthorized importing of a genuine product either intended for a different market or through unauthorized channels. Goods that flow through the grey market can have a staggering impact on the revenue, image, reputation, organization or distribution networks of a company.

Against the backdrop of increased globalization and ubiquitous international exchanges, this webinar will offer a brief outline of the approach to grey market issues in Europe and in the US and suggest some of the tools that can be used by brand owners to combat the grey market from a global perspective.

Moderator: Pete Bromaghim
Speakers: Béatrice Martinet  More Information
                Richard Nelson More Information

Webinar: Managing Influencers and Consumer Content on Social Media

Tuesday, November 22, 2016, 12 noon - 1 p.m.

This program offers 1 hour participatory MCLE credit.
Presented by the  In-House Counsel Interest Group.


The use of endorsements and testimonials has become a marketing staple. Brands can leverage an influencer's network and reputation to promote its products and services and use social media to solicit consumer endorsements and encourage consumer interaction. While popular and effective, the use of endorsements and testimonials is replete with legal issues. When do endorsements invite FTC scrutiny? How much responsibility or control do brands actually have? Where have others crossed the line and what lessons have we learned from recent enforcement? This presentation will discuss these issues and provide practical guidance for managing risk.

Speakers: Monique Bhargava More Information
                Mark Leonard

Webinar: M&A-Friendly Technology License Agreements

Wednesday, November 30, 2016, 12 noon - 1 p.m.

This program offers 1 hour participatory MCLE credit.
Presented by the Licensing Interest Group.


Maximizing shareholder value may mean selling the company or its intellectual property. Ensuring that the company's outbound license agreements are M&A-friendly is a paramount objective for tech company counsel. It's especially important to appreciate the unique challenges posed by an exit in the form of an asset purchase, in which the buyer leaves the seller's customer licenses in place after closing. This webinar explores those aspects of technology license agreements that are conducive to such an exit, and those aspects that are not.

Speaker: Sean Hogle More Information

Webinar: Intellectual Property Transactions in Israel

Monday, Decenber 5, 2016, 12 noon - 1 p.m.

This program offers 1 hour participatory MCLE credit.
Presented by the Licensing Interest Group and the International Law Interest Group.


Technology and intellectual property are a significant percentage of Israel’s exports. This program will address the negotiation of transactions involving intellectual property developed in Israel or held by Israeli entities. Topics include: (1) aspects of Israeli commercial, contract and tax law significant to intellectual property transactions, (2) the role and regulations of the Israel Innovation Authority, and (3) transactions involving intellectual property developed at Israeli research, academic and medical institutions.

Speaker: Eli Greenbaum More Information

Webinar: Using Surveys and Market Research in IP Litigation

Tuesday, December 6, 2016, 12 noon - 1 p.m.

This program offers 1 hour participatory MCLE credit.
Presented by the  Litigation Interest Group.


Surveys and other market research are increasingly used by courts in assessment of intellectual property damages. This webinar discusses a variety of survey and complimentary market research methods, how they have been used in patent and trademark cases, some guidelines for admissibility, and approaches for validating results.

Moderator: Anne-Marie Dao
Speakers: Anjali Oza More Information
                Peter Hess More Information

Interest Group Open Calls

Licensing Interest Group Open Call

Friday, September 9, 2016, 12 noon
To participate in the meeting, the dial-in number is 855-520-7605, passcode 1211276419#.

Monthly “All Hands” Licensing IG conference call. We’ll discuss upcoming webinars and conferences, opportunities for members to get involved and Hot Topics.  Please note: Our monthly calls are the 2nd Friday of every month.

Copyright Interest Group Open Call

Wednesday, October 5, 2016, 12 noon - 1 p.m. 

Call-in number: 855-520-7605; Conference Code: 1211276419# 

Please join the Copyright Interest Group for a member call on Wednesday, October 5, 2016 at 12 noon. During the call we will discuss current cases and copyright developments, and opportunities for getting involved, from writing articles, presenting on relevant copyright related issues, coordinating panels, and more! Copyright is everywhere in the news. Join us and meet other members of your Copyright IG and discuss what’s on the horizon.


Congratulations to the 2016 IP Vanguard Award Recipients

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 ceremony at the 2016 IP Institute, the flagship event of the Intellectual Property Law Section.

Join us at the 2016 Intellectual Property Law Section Annual Institute on November 10-11 at the Hyatt Santa Barbara. The 2016 honorees are:

In-House Counsel

image of Fred Von Lohmann

Fred Von Lohmann
Legal Director, Copyright
Google, Inc.

Private Practice

image of Heather J. Meeker

Heather J. Meeker
Technology Transactions Partner
O’Melveny & Myers LLP


image of  Honorable Ronald M. Whyte

Honorable Ronald M. Whyte
United States District Court
Northern District of California

Academic or Public Policy

image of Kevin J. Greene

Kevin J. Greene
Professor of Law
Thomas Jefferson School of Law

Thank You for Being a Section Member - Here's 6 Hours MCLE in Legal Ethics!

We're very grateful for your membership in the Section. As a token of that, we're offering six hours of self-study MCLE credit in the area of Legal Ethics. The programs are posted in our Member's Only Area.

Simply watch the programs and read the accompanying materials, and keep track of having done so. You can report this to the State Bar when it's time to demonstrate your compliance with the MCLE requirements.

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 Spring issue, you can earn credit for the article Policing the Boundaries of Copyright: Is It Time for the Supreme Court to Step In? by William J. O'Brien. 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.

Did You Know You Can Track Your CLE Through Your State Bar Profile?

Log into your profile and click on CLE Summary and Tracking Tool. This summary reflects all in person and online participatory classes completed through the State Bar of California.

Note: Future releases will allow you to manually add courses completed through other providers.

Even if this summary reflects you have completed the required 25 hours of MCLE within your compliance period, you must still formally report compliance by submitting your MCLE compliance declaration through My State Bar Profile.

The Trade Secret Treatise Is Available for Order

Members $115/Non-Members $155. Go HERE for a description, and HERE to order. You will need to click on Intellectual Property.

Writers Wanted for New Matter

Inquiries about writing for New Matter, please contact

MCLE Catalog

Featured CLE Program from Our Catalog!


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

Ethical and Privacy Challenges in Internet Policy

Drawing from his many high profile roles in the business and legal community, Chris Kelly, former Chief Privacy Officer and General Counsel at Facebook, will provide a unique exploration of many of the ethical and privacy challenges that arise from establishing and complying with internet policy.

1 Participatory MCLE Credit in Ethics
More Information

For other Intellectual Property Law Section programs, see and select Intellectual Property Law Section.

Contact Us

We invite you to contact a member of the Executive Committee, or an Interest Group Officer. The IP Section has Interest Groups on:

Or contact the Editors of Inevitable Disclosure, Barbara Friedman and Aurelia Schultz.

The Intellectual Property Law Section
The State Bar of California
180 Howard Street
San Francisco, CA 94105