Intellectual Property Law Section
Upcoming Standing Committee Meetings and MCLE Programs
- Technology, Interenet & Privacy Interest Group Webinar on Making Sense of the Net Neutrality Conflict on Monday, August 11, 2014, 12 p.m. - 1 p.m.
- Technology, Internet, & Privacy Interest Group Teleconference on Wednesday, August 13, 2014, 12 noon - 1 p.m.
- New! Copyright Interest Group Teleconference on Tuesday, August 19, 2014, 12 noon - 1 p.m.
- Patent Interest Group Webinar on Octane Fitness & Highmark -- The Supreme Court Eases the Standard for Recovering Attorney's Fees in Patent Cases, Tuesday, August 19, 2014, 12 noon - 1 p.m.
- New! Trade Secrets Interest Group Teleconference on Thursday, August 21, 2014, 12 noon - 1 p.m.
- Last Chance for Early Bird Pre-Registration! The State Bar of California 87th Annual Meeting, September 11-14, 2014 in San Diego.
- New! Licensing Interest Group Teleconference on Friday, September 12, 2014, 12 noon.
- Save the Date! The Copyright Office Comes to California will be held Monday, October 6, 2014 at the Los Angeles Airport Marriott Hotel and Wednesday, October 8, 2014 at the Julia Morgan Ballroom in San Francisco.
- Save the Date! The 2014 Intellectual Property Institute and the 6th Annual IP Vanguard Awards will be held Thursday-Friday, November 6-7, 2014 in Orange County.
Upcoming MCLE Programs and Meetings
Webinar: Making Sense of the Net Neutrality Conflict
Monday, August 11, 2014, 12 p.m. - 1 p.m.
Presented by the Intellectual Property Law Section, Technology, Interenet & Privacy Interest Group
This program offers 1 hour participatory MCLE credits. You must register in advance in order to participate.
Net Neutrality has people up in arms, but what are they really fighting about? How does it affect you personally, or your clients? How did we get here, and what are some realistic steps for the future? We’ll break down what’s really at stake in broadband regulation.
Allen Hammond, Speaker
Professor Allen Hammond IV is a well-regarded scholar and professor of law. He holds the Phil and Bobbie Sanfilippo Chair at Santa Clara University and is director of the Law and Public Policy Program at SCU’s Center for Science, Technology, and Society. A professor at Santa Clara University School of Law since 1998, he currently serves as director of the Broadband Institute of California and leads SCU’s popular Broadband Regulatory clinic. He is the author of many articles and the co-editor of a book on improving the Universal Service process.
Hannah Poteat, Moderator
Hannah Poteat is an IAPP-certified privacy, internet, and IP attorney in San Francisco, CA. She is a solo practitioner at Poteat Law, and works closely with start-ups and app developers.
Technology, Internet, & Privacy Interest Group Teleconference
Wednesday, August 13, 2014, 12 noon - 1 p.m.
Call in number: 855-520-7605. Conference Code: 1211276419#
Please join the Technology, Internet, & Privacy Interest Group for its monthly conference call on Wednesday, August 13 at 12 p.m. Can't be on the call? Follow along as we live tweet our minutes by following #CAIPSection, or contact Hannah Poteat at email@example.com.
Copyright Interest Group Teleconference
Tuesday, August 19, 2014, 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 Tuesday, August 19th at 12:00 p.m. During the call we will have open discussion about important new copyright cases and other recent copyright developments. All IP Section members are invited to participate. For more information about the call or the Copyright Interest Group, contact Chair Chris Lockard at Chris.Lockard@clorox.com.
Webinar: Octane Fitness & Highmark -- The Supreme Court Eases the Standard for Recovering Attorney's Fees in Patent Cases
Tuesday, August 19, 2014, 12 noon - 1 p.m.
Presented by the Intellectual Property Law Section, Patent Interest Group
This program offers 1 hour participatory MCLE credit. You must register in advance in order to participate.
This program will discuss the highly anticipated Supreme Court cases--Octane Fitness, LLC v. Icon Health & Fitness, Inc. and Highmark, Inc. v. Allcare Health Management Systems, Inc.--which have eased the standard for recovering attorneys' fees in patent cases and which overruled Federal Circuit precedent in Brooks Furniture v. Dutailier Int'l. The program will also discuss recent district court cases interpreting Octane Fitness, including Kaneka Corporation v. Zhejiang Medicine Co., Ltd. et al. (C.D. Cal).
- Sarah Sheldon Brooks is a Shareholder in Stradling Yocca Carlson & Rauth's Intellectual Property group. Ms. Brooks received her bachelor of science in Biology from Tufts University and worked as a laboratory research technician at the Children's Hospital Boston before attending law school at Tulane University. Ms. Brooks started her legal career at the intellectual property boutique of Fitzpatrick Cella Harper & Scinto in New York. Ms. Brooks is an experienced trial attorney and recently served as lead trial counsel in a patent infringement action on behalf of the patentee and secured a jury verdict of willful infringement against the competitor for its patent infringement and copyright infringement. In connection with this action, Ms. Brooks recently had the opportunity to submit briefing requesting attorneys' fees and citing Octane Fitness
- Sanjesh Sharma is Intellectual Property Counsel at Abbott Medical Optics, where she manages intellectual property matters for the company's Refractive and Laser Cataract Equipment portfolios. Since 2013, Ms. Sharma has served as the Secretary of the Patent Interest Group for the State Bar of California's IP Section.
Trade Secrets Interest Group Teleconference
Thursday, August 21, 2014, 12 noon - 1 p.m.
Call in number: 855-520-7605. Passcode: 1211276419#
During the call, we will discuss some new trade secret and restrictive covenant cases.
We will also discuss the new trade secret treatise, potential topics for MCLE webinars, topical teleconferences, social/networking events, ideas and volunteers for articles for New Matter and other potential activities. Participation in these calls is a great way to learn about the IG, get involved and steer it in the direction that serves your needs.
All IP Section members interested in getting involved or learning about our activities are welcome. You need not have already signed up, and there is no charge.
The call will be moderated by Robert Milligan, Chair of the Trade Secrets Interest Group. If you can’t make it but are interested in finding out more, please contact Robert at firstname.lastname@example.org.
The State Bar of California Annual Meeting
The State Bar of California 87th Annual Meeting
September 11-14, 2014
Grand Hyatt San Diego
1 Market Place
San Diego, California
Earn up to 18 hours of MCLE credit and legal specialization, including credit in all MCLE subfields.
- Early Bird Pre-Registration
& Final Hotel Registration Deadline: August 13, 2014
- Pre-Registration Deadline: August 21, 2014
- Two-Day Registrations Available!
The four-day meeting will showcase an education agenda consisting of 143 MCLE seminars covering a variety of substantive topics, legal technology, access to justice, UPL, attorney advertising, and other key areas of interest.
The IP Section is pleased to present the following programs:
- Program 28: Intellectual Property and the First Amendment
- Program 74: Current Developments in Trade Secret Law
- Program 81: Characters: Intellectual Property and Other Protection Issues
- Program 92: What You Always Wanted to Know about Patents, Trademarks, Copyrights and Trade Secrets
- Program 122: Shattering Trademark Myths for Non-Intellectual Property Lawyers
- Program 132: What to do When the Client Says “You Mean that’s a Protectable Intellectual Property Asset?”
See the full schedule at 2014 State Bar of California Annual Meeting.
Licensing Interest Group Teleconference
Friday, September 12, 2014, 12 noon
Call-in number: (855) 520-7605 Conference Code: 1211276419#
Please note: The monthly Licensing IG calls are now being held on the second Friday of every month at noon. The next meeting will be Friday, September 12th at noon with a "featured speaker" and a discussion of hot topics. There will be no meeting for August.
The Copyright Office Comes to California - Save the Date!
Save the Date! 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.
This popular full-day conference returns with programming on the activities and priorities of the Copyright Office, useful advice for copyright practitioners, analysis of recent copyright litigation and discussions about the future of copyright law. Speakers will include senior officials from the U.S. Copyright Office as well as other leading copyright experts.
Get the date on your calendar now! Program details and registration info to follow.
IP Institute Save the Date!
Save 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.
Copyright Office Seeks Further Comments on Rights of “Making Available” and “Communication to the Public”
The Copyright Office has published a Federal Register notice requesting additional written comments on how current U.S. law recognizes and protects “making available” and “communication to the public” rights for copyright holders. A comment submission form is posted on the Copyright Office website at http://www.copyright.gov/docs/making_available/. Comments are due by 5:00 p.m. EDT on August 14, 2014. For the complete notice, which provides instructions for submitting comments, see http://www.copyright.gov/fedreg/2014/79fr41309.pdf.
August 15, 2014: Deadline to submit comments on the Changes to Recordation Practices rulemaking
Entertainment and Sports Law Interest Group Update
Supreme Court - Aereo Violates Networks’ Public Performance Right
On June 25, 2014, the U.S. Supreme Court issued its much-anticipated decision in ABC, Inc. v. Aereo, Inc., holding that Aereo violates copyright holders' exclusive right to perform their work publicly by retransmitting captured network broadcasts to paid subscribers without paying license fees. Justice Breyer, writing for the majority, based the decision on the public performance right (17 USC § 106(4)), the Transmit Clause (17 USC § 101), and perceived Congressional intent involved in enacting the 1976 Copyright Act.
The decision separately addresses whether Aereo's behavior is a performance, and whether that performance is public. Regarding the performance issue, the majority likened Aereo's service to the cable TV providers in Fortnightly Corp. v. United Artists Television, Inc. and Teleprompter Corp. v. Columbia Broadcasting Systems, Inc. In both of those cases, the defendant captured broadcast TV signals with large antennas and delivered the programing to its customers via cable. The Supreme Court in both of those cases found that the defendants did not violate the plaintiffs’ right to public performance because they did not actually perform copyrighted works. Those cases turned on the fact that the defendants neither created nor selected the content, but simply delivered programing created and selected by others. The majority in Aereo noted that "[i]n 1976 Congress amended the Copyright Act in large part to reject the Court's holdings in Fortnightly and Teleprompter." Pg. 7. Congress brought companies that merely deliver content under the auspice of the Copyright Act by broadening the definition of "perform" and enacting the Transmit Clause, "which specifies that an entity performs publicly when it 'transmit[s] ... a performance ... to the public.'" Thus, the Court held that Aereo's service constitutes a performance under the Act.
Aereo argued, and the dissent agreed, that the fact that Aereo's system "remains inert until a subscriber indicates that she wants to watch a program" distinguishes it significantly from the cable services in Fortnightly and Teleprompter, which constantly delivered their services regardless of consumer behavior. This difference, argued Aereo, means that it is the consumer, not Aereo, that transmits the performance and, thus, Aereo does not perform the program and cannot be found to infringe the public performance right of the copyright holders. The majority found that this argument amounted to a distinction without a difference under the policy of the Copyright Act because Aereo serves largely the same purpose as the defendants in the Fortnightly and Teleprompter, albeit in a different technological context.
Regarding the nature of the Aereo's performance, the majority held that its service constitutes a public performance of copyrighted content to its subscribers and, therefore, violates the Act. This was also based on the Transmit Clause, Aereo's similarities to the defendants in Fortnightly and Teleprompter, and the policy of the Copyright Act. Dismissing Aereo's argument that the performances were private because each transmission of content to each subscriber was unique, the majority stated that, "[i]n terms of the Act's purpose, these differences do not distinguish Aereo's system from cable systems, which do perform 'publicly.'" Pg. 12.
The majority also addressed fears by Aereo, the dissent, and various amici that their decision is overreaching, and will stifle innovation, by stating that its narrow holding only addresses unlicensed retransmission of content. The holding does not extend to those who already own content or content storage companies and is limited by the doctrine of "fair use."
The dissent, written by Justice Scalia and joined by Justices Thomas and Alito, maintains that the majority is incorrect from the outset by analyzing Aereo's behavior as direct infringement. The dissent argues that internet service providers, such as Aereo, that merely provide a platform on which users may infringe should be held to a secondary liability standard, which requires volitional conduct to induce or encourage third party infringement. Aereo, the dissent claims, does not perform and thus cannot be found to directly infringe the public performance right. Notably, the dissent does express uneasiness with Aereo's service, but states that it is not the Court's job to "distort the Copyright Act to forbid it." Dissent Pg. 12. The dissent writers feel that it is the job of Congress to address failures in the Copyright Act through amendment.
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.
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
Detection and Prevention of Substance Abuse and Emotional Distress
- Coping with the Unique Challenges of Legal Practice
- 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!
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.
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One Hour MCLE Is Available in the Latest Issue of New Matter
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 www.calbar.org/self-study for details. Watch for other MCLE credit available in future issues of New Matter.
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.
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 email@example.com for more details.
For more information, please contact our editorial staff at firstname.lastname@example.org.
Featured CLE Program from Our Catalog!
Listen 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 www.calbar.org/online-cle and select Intellectual Property Law Section.
Did you miss this program? It's available in our online catalog for CLE credit!
Registering with U.S. Customs and Border Protection, and Enforcement Tips for Trademark Practitioners
Speakers Deborah Greaves and Matthew Powelson will walk us through the process of registration and enforcement through US Customs and Border Protection – who should register their marks, how to register, what happens next, what to do when you get a seizure notice, fines and forfeitures handling. They will also discuss recent updates to Customs regulations. This is a program for both those new to enforcement issues as well as more experienced practitioners. Q&A to follow. Moderated by Mary Harris.
1 hour participatory MCLE credit; $35
Save Money with CEB
Continuing 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.
Intellectual Property Law Section
The State Bar of California
180 Howard Street
San Francisco, CA 94105-1639