Intellectual Property Law Section


Intellectual Property Law Section

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39th Annual IP Institute - Celebrating Creativity - November 6-7, 2014, Garden Grove

Congratulations to the Recipients of the 2014 IP Vanguard Awards!

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 Luncheon at the 2014 IP Institute, the flagship event of the Intellectual Property Law Section.

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 Luncheon at the 2014 IP Institute, the flagship event of the Intellectual Property Law Section.


Dean Marks
Senior Vice President, Intellectual Property, Warner Bros. Entertainment Inc.

Private Practice/Outside Counsel

Andrew Bridges
Fenwick & West


Honorable Paul S. Grewal
United States District Court,
Northern District of California

Academic/Public Policy

Diane Peters,
General Counsel
Creative Commons

Diane Peters

Upcoming Standing Committee Meetings and MCLE Programs

Other News

Upcoming MCLE Programs and Meetings

Webinar: ADR & IP: Mediation -- What It Is, How It Works & How to Draft ADR Provisions. (Part 1 of 2)

Wednesday, October 15, 2014, 12 noon - 1 p.m.

Presented by Intellectual Property Law Section, Licensing Interest Group

This program offers 1 hour participatory MCLE Credit. You must register in advance in order to participate.

In the first of two ADR webinars we will examine: mediation v. other ADR procedures; benefits & limits of mediation; preparing for mediation; court-ordered vs. private mediation; and drafting well-drafted mediation clauses. The second webinar in the series will focus on arbitration (2015).

Speaker: Erica Bristol is an attorney and commercial mediator, specializing in intellectual property, commercial contracts and real estate. Erica is the Principal of EB Resolution Services in Encino, California. She received her JD from UCLA and served as corporate in-house counsel for over 11 years and has been a mediator for over 7 years. She currently serves as a Panel Mediator for the US District Court, Central District of California and the World Intellectual Property Organization. Ms. Bristol is a member of the State Bar of California's IP Section Executive Committee and a member of ABA and LACBA.

Moderator: James C. Roberts III is the managing principal of Global Capital Law Group PC and its consulting arm, Global Capital Strategic Group, advising on technology, international and transactional matters. Clients range from large corporations to start-ups in digital media, mobile, software, biotech and greentech. He commutes between California and Milan. Mr. Roberts is Chair of The State Bar of California IP Section's Licensing Interest Group. He frequently writes or speaks on startups and venture capital.

>Webinar:The Ethics of Securing Your Client Data - Locked Down!

Tuesday, October 21, 2014, 12 noon - 1 p.m.

Presented by the Copyright and Technology/Internet/Privacy Interest Groups

This program offers 1 hour participatory MCLE Credit including 1 hour Legal Ethics credit. You must register in advance in order to participate.

Lawyers have an ethical duty to be competent and to keep their client data confidential. It costs money to protect data and businesses frequently resist budgeting for security, even though an ounce of prevention is far less expensive than a pound of cure. Investigating and remediating data breaches is hideously expensive, not to mention the necessity of complying with state data breach notification laws. This session will cover:

  • How to protect copyrighted material in the digital world
  • Specific security incidents involving copyrighted material
  • How data breaches occur
  • How to prevent data breaches using a combination of technology, policies and training
  • Secure computing when you’re on the road
  • Encryption
  • The new rules for strong passwords
  • Common sources of breaches: User Error, Technology Snafus, Insiders, Hackers and Hactivists
With speakers

  • Sharon D. Nelson, Esq., is the President of Sensei Enterprises, Inc., a digital forensics, information technology and information security firm in Fairfax, Virginia. Ms. Nelson graduated from Georgetown University Law Center and has been in private practice ever since, now concentrating exclusively in electronic evidence law. Ms. Nelson was the President of the Virginia State Bar June 2013-June 2014, is now the President of the Fairfax Law Foundation. She serves on the ABA’s Cybersecurity Legal Task Force and on its Standing Committee on Technology and Information Systems. From 2012-2014, she served on the ABA's House of Delegates.

  • John W. Simek is VP of Sensei Enterprises, Inc., and is a nationally known testifying expert in the area of digital forensics. He holds a degree in engineering from the U.S. Merchant Marine Academy and an MBA in finance from Saint Joseph’s University. After forming Sensei, he ended his 20+ year affiliation with Mobil Oil Corporation, where he served as a senior technologist designing and troubleshooting Mobil’s networks throughout the western hemisphere. Mr. Simek has in-depth experience with network troubleshooting, hardware and software implementations, systems integration, and logistical and financial expertise in computer engineering designs and solutions.

  • Francine Ward, Moderator.

Register Now for the IP Institute!

Click here for more information about the IP InstituteRegister now for the 2014 Intellectual Property Institute and 6th Annual IP Vanguard Awards, to be held November 6-7, 2014  at the Hyatt Regency Orange County (Disneyland) 11999 Harbor Blvd, Garden Grove, CA.

Hotel Reservation Deadline: October 22, 2014
Registration Deadline: October 30, 2014
Twitter: #CAIPSection

You can now REGISTER ONLINE for this program.

The 6th Annual IP Vanguard Award Luncheon will be held Friday November 7, 2014, 12 noon - 1 p.m. 

Letter from the Chair: Welcome to the 39th Annual IP Institute!

This year, we get together to “Celebrate Creativity.” As intellectual property practitioners (and let’s face it, IP geeks), creativity is all around us -- whether we represent artists, designers, inventors, publishers, media companies, wineries, internet providers, or tech start-ups. The IP Institute also celebrates the creativity of our nearly 7,000 members, a diverse community of innovative, savvy and passionate professionals, who rarely shy away from sharing their own creative points of view.

Sophie CohenAs forward-thinkers, IP Institute attendees return annually to keep current on cutting legal trends and industry practices. A highlight of the IP Section’s annual programming, the Institute provides invaluable opportunities to meet leaders of the IP community. During two days of lively meetings, breakout sessions, and networking events, you will encounter high level, hands-on CLE and “hot topics” panels covering a great array of topics affecting our community and our clients -- such as trademarks, copyrights, licensing, litigation, entertainment law, right of publicity, trade secrets, sweepstakes, social media, ADR, privacy, and technology law, as well as a separate patent law track.

We are fortunate and excited to bring together preeminent speakers from leading companies and law firms to share with us their tips “from the trenches,” including attorneys from the Department of Justice and the U.S. Department of Commerce who have made the journey from Washington, D.C. to share the Federal perspective on current issues affecting practitioners and rights-holders.

Last, but not least, the IP Institute provides outstanding and unique networking opportunities. The Thursday night reception and strolling dinner will be memorable, not to be outshined by the IP Section’s FIRST EVER IP Trivia Night. Show off your IP and cultural knowledge, and laugh with (or at) your colleagues while competing for prizes and bragging rights, or just sharing a few drinks (if trivia is not your thing). On Friday, join us for the 6th IP Vanguard Award lunch, which will celebrate four outstanding California IP practitioners for their contributions to our community in a high-spirited setting.

Don’t miss another great IP Institute! Looking forward to meeting many of you.

Sophie Cohen
Cobalt LLP
Chair, 2014 IP Institute

Other News

Trademark Office Seeks Comments on Proposal to Allow Amendments to Identifications of Goods and Services Due to Technology Evolution

The USPTO is seeking feedback from U.S. trademark owners, practitioners, and other interested parties about a proposal to allow amendments to identification of goods and services due to technology evolution. View the full Request for Comments, and email any comments regarding the proposal to, with the subject line “Technology Evolution,” no later than November 3, 2014.

Copyright Alert: Outcome of the Fourth Public Multistakeholder Forum Meeting on Improving the Operation of the DMCA Notice and Takedown System and Date for the Fifth Meeting

On September 10, 2014, the Department of Commerce's Internet Policy Task Force held the fourth public meeting of the Multistakeholder Forum on improving the operation of the DMCA notice and takedown system, as proposed in its July 2013 Green Paper on Copyright Policy, Creativity, and Innovation in the Digital Economy. The meeting took place at USPTO headquarters in Alexandria, VA, coordinated by the United States Patent and Trademark Office and the National Telecommunications and Information Administration (NTIA). The primary focus of the fourth meeting was to provide a report to the larger forum on the progress of the efforts of the working group to date. The meeting was also webcast live over the Internet, and an archive of the proceedings is available. Other documentation associated with this meeting can be found HERE.

The working group plans to continue its discussions and work and will provide a progress report at the next public meeting of the Multistakeholder Forum scheduled for October 28, 2014 from 9:00am-12:00pm in Berkeley, California at the UC Berkeley School of Law (Boalt Hall, Booth Auditorium, 215 Bancroft Way, Berkeley, CA 94720). Any party interested in contributing to the work of the group may join by emailing to be added to the working group distribution list.

The USPTO will provide a live webcast of the October 28, 2014 public meeting along with a phone bridge. The final agenda and webcasting information will be made available one week prior to the event HERE. Look for the links under the 2014 Meetings heading.

Thanks to everyone who made The Copyright Office Comes to California program a resounding success!

Here are some photos from our recent The Copyright Office Comes to California program. See larger versions of the photos on the IP Section Facebook page.

Important updates from US Copyright Office from Karyn Temple Clagett (Director of Policy and International Affairs) and Jacqueline Charlesworth (General Counsel).     Second day of the "Copyright Office Comes to California" in the beautiful Julia Morgan Ballroom in San Francisco

Everything a copyright attorney needs to know about recent case law from Prof. Tyler Ochoa (Santa Clara University) and Jacqueline Charlesworth (General Counsel, Copyright Office)     Important updates from US Copyright Office from Karyn Temple Clagett (Director of Policy and International Affairs) and Jacqueline Charlesworth (General Counsel).

Hot News: Google Succeeds in Fighting off Genericness Challenge

By Sam Gunning, 3L, Benjamin N. Cardozo, School of Law

The Arizona District Court ruled on September 10th that “google” and the verb “to google” are not generic terms. Elliot v. Google, Inc., 2014 U.S. Dist. LEXIS 127352 (D. Ariz. Sept. 10, 2014). (See:

The plaintiffs, Elliot and Gillespie, had sought cancellation of two of Google’s U.S. trademark registrations based on the grounds of genericism. Google had previously won a UDRP ruling that over 700 domain name registrations combining the word “google” with another word, term, or person, such as <> were confusingly similar to the Google mark, and as a result they were ordered to be transferred to Google. Elliot and Gillespie had argued that the term “google is, or has become, a generic term universally used to describe the action of Internet search with any search engine.” Underlying the arguments was the notion that verbs are incapable of distinguishing one service from another, and as such can only refer to a category of services. Google argued that regardless of how the term was used grammatically, Google is still highly recognizable and identifiable as an indicator of source.

The court granted summary judgment in Google’s favor. The court found that “google” is used as a verb, but weighing a number of factors found that the primary significance of the word “google’ is in fact the company. The court found that plaintiffs couldn’t find a dictionary whose definition of the word “google” neglected to mention the trademark significance. In addition, plaintiffs did not find a major media outlet referring to using one of Google’s competitors as “googling,” and there was no evidence of Google’s competitors using the word “google” as a descriptive term themselves.

Parody now a Fair Dealing in UK

The UK has amended its Copyright, Designs and Patents Act 1988 to make parody a legal act of fair dealing. The new sections, 30A "Caricature, parody or pastiche" for copyright works and corresponding section in Schedule 2 for performing rights allow users to incorporate small bits of existing works into parodies without requiring permission from the rights holders. There is also provision that forbids contracting away this right. The official amendment can be viewed here (

The Intellectual Property Office defines parody as being humorous, in line with the EU Directive 2001/29/EC. However, the statue itself does not specifically define parody. The full guidance report from the Office is available here (

This change comes into effect October 1st, but has been in the works for quite awhile. The 2013 report on its expected economic effects is available here (

Report of the Delegation of the IP Section to Washington, D.C., May 5 - 7, 2014

Read the full report from the 2014 Washington Delegation!

For the last dozen years or so the Executive Committee of the IP Section has sent a delegation to Washington, D.C. to visit officials and other persons in the federal government of importance to intellectual property law. The delegation does not lobby or take positions on any issues. The purpose of the delegation is to establish and maintain contacts that will assist the Section in carrying out its educational mission and to gather information and encourage the dissemination of information on an ongoing basis that will enable the Section to carry out its functions and inform its members. Continuing this practice, the Section sent a delegation in May 2014 that met with selected legislators, and officers and staff of the federal government involved in intellectual property in Washington D.C. and Alexandria, Virginia. Read more...

Copyright Office Has Released Its Long-awaited Compendium

On August 19, 2014, The Copyright Office released a public draft of the Compendium of U.S. Copyright Office Practices, Third Edition (the “Third Edition”).

The first major revision in more than two decades, the draft presents more than 1200 pages of administrative practices and sets the stage for a number of long-term improvements in registration and recordation policy. It will remain in draft form for approximately 120 days pending final review and implementation, taking effect on or around December 15, 2014. The link to the compendium is here:

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.

The Section thanks you for your membership!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

  • Navigating Diversity
Detection and Prevention of Substance Abuse and Emotional Distress
  • Coping with the Unique Challenges of Legal Practice
Legal Ethics
  • 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!

 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 for more details.

For more information, please contact our editorial staff at

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 Summer issue, you can earn credit for the article The Next Battle Over FRAND: The Definition of FRAND Terms and Multi-Level Licensing by Karl D. Belgum 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.

Interested in Advertising in New Matter?

If you're interested in advertising in New Matter, please note our ad rates.

Eligible Advertisers:

Law Firms,
Court Reporting Services,
IP Search Services,
IP Insurance Services,
eDiscovery Service Companies,
Legal Research Companies,
Legal Staffing Companies
And any other legal service company.

Ad Size/ Issues 1 Issue 2 Issues 3 Issues 4 Issues
¼ Page $1,200 $2,300 $3,300 $4,000
½ Page $1,600 $3,000 $4,200 $5,000
Full Page $2,400 $4,500 $6,300 $7,500

Featured CLE Program from Our Catalog!

Online CLEListen 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 and select Intellectual Property Law Section.

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

Chasing Ghosts: Protecting Brands in the Digital Space

Category: Intellectual Property Law Protecting trademarks in the ever-changing digital space is like hitting a moving target. It presents new challenges for brand owners every day. This webinar will explore changes and best practices for online trademark enforcement in this constantly evolving landscape.

1 hour participatory MCLE credit; $35
More Information

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.

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.

Save Money with CEB

CEB Discount Program for Section MembersContinuing 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.

Contact Us

Intellectual Property Law Section
The State Bar of California
180 Howard Street
San Francisco, CA 94105-1639
415-538-2368 fax