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Upcoming Standing Committee Meetings and MCLE Programs

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Upcoming MCLE Programs and Meetings

Webinar: Current State of Dual Actor Infringement and Inducement of Infringement Patent Law: What you Need to Know to Plead and Litigate this Cause of Action

Tuesday, May 19, 2015, 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 recent developments in dual actor infringement and inducement of infringement patent law. The Commil v. Cisco case pending before the Supreme Court will be discussed which addresses the question of whether a defendant's belief that a patent is invalid is a defense to induced infringement. The recent Federal Circuit case Promega v. Life Tech case will also be discussed which addressed the meaning of "induce" and "substantial portion of the components" as well as techniques for pleading and litigating this cause of action.

Speaker: Sarah Brooks is a shareholder in Stradling Yocca's Intellectual Property group. She received her bachelor of science degree 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. She 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.

Moderator: Sanjesh is IP Counsel at Abbott Medical Optics, where she manages all aspects of patent, trademark, and copyright matters for the company's Refractive and Laser Cataract Surgical Equipment portfolios. Since 2013, she has served as Vice Chair of the Patent Interest Group for the State Bar of California's IP Section.

Webinar: Entertainment: Bringing EU Privacy Compliance to Life for Internal Clients in Media and Entertainment Companies

Tuesday, June 9, 2015, 12 noon - 1 p.m.

Presented by the Intellectual Property Law Section, Entertainment & Sports Law Interest Group

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

Category: Intellectual Property Law A webinar by two experts on dealing with EU privacy compliance for US companies in the media and entertainment sectors. The aim will be to provide an accessible and practical guide to current challenges presented by EU privacy laws, and how US media and entertainment organizations can best approach those challenges. The webinar will be aimed at in-house lawyers as well as their external counsel, and aim to provide tools for increasing engagement with the topic within corporations.

Starting with a scene-setting overview of the current EU data privacy framework, the webinar will discuss several topics in more detail:

  • what rights individuals have over personally identifiable information (PII);
  • data security obligations;
  • data export from the EU to the US, and the various best practice approaches for dealing with this; and
  • how EU data rules apply to different kinds of business uses of PII.

We will also review enforcement and penalties, with examples from around the EU involving media, digital media and entertainment businesses. This will include a discussion of frequently arising issues and typical penalties. Finally we will look ahead to the likely impact of two important upcoming policy developments. The EU Data Protection Regulation is planned for 2016 and will involve stronger and less flexible obligations, substantial increases in potential penalties and the mandatory appointment of Data Protection Officers by many companies. Meanwhile the EU is planning enabling legislation to bring about a border-less "Digital Single Market" within the EU.

Speakers:

  • Mark Owen is partner with Taylor Wessing in London and is a leading specialist in information/privacy and intellectual property law. He is both an English solicitor and a member of the California Bar.
    He counsels and represents clients across a wide range of digital law issues, under both UK and EU laws. Mark has acted on numerous pieces of litigation around IP and digital information law (at all levels, including before the UK Supreme Court). He also has a substantial technology transactional and regulatory practice. Mark is regularly listed as a leading technology and IP lawyer in Legal 500 and Chambers.

  • Kai Westerwelle is a technology and media partner with Taylor Wessing. He co-chairs the firm's US Group and the Menlo Park representative office. As a German Certified Specialist Lawyer in Information Technology Law he advises on all areas of IT, e-commerce, and data protection law. Much of his work involves counselling US corporations on EU data protection compliance. Kai is the author of numerous publications, and lectures at the University of Dresden and Frankfurt School of Business. He is frequently listed by Legal 500, Chambers and the German Association of In-house Counsel as a leading EU data protection specialist.

Moderator

  • Dave Murphy

Save the Date! A Conversation with the EPO and the USPTO

Tuesday, June 2, 2015
Santa Clara University
Mission Room - Benson Center
500 El Camino Real
Santa Clara, CA 95053

Earn up to 7.25 hours participatory MCLE credit.

You can now REGISTER ONLINE for this program. See Conversation with the EPO and the USPTO.

This full-day event will cover recent global patent prosecution and harmonization issues, with a focus on practical tips and strategies for US practitioners. Speakers will include top-tier representatives from the European Patent Office (EPO) and the United States Patent and Trademark Office (USPTO), including Mark Powell, Deputy Commissioner for International Patent Cooperation and John Cabeca, Director of the USPTO Silicon Valley Office. Interactive panels will take place throughout the day, and audience participation is encouraged. Opportunities for networking include a luncheon and a reception. Watch your inboxes or our website for more information.

Other News

Vanguard Award Nominations

Your Nominations Sought for the IP Vanguard Awards Start thinking about your nominations for the 2015 IP Vanguard Awards! Achievements are honored in the following categories:

  • In-House Counsel
  • Private Practice
  • Academic/Public Policy
  • Judicial

The full criteria and information about past honorees are available at IP Vanguard Awards . Please submit your nominations for the 2015 IP Vanguard Awards by June 26, 2015, using the 2015 Nomination Form.

B&B Hardware Increases the Significance of TTAB Proceedings

By Melis Atalay

Last week's Supreme Court decision in B&B Hardware should be of great interest to trademark practitioners. B&B Hardware, Inc. v. Hargis Industries, Inc.,No. 13-352, 2015 WL 1291915 (Mar. 24, 2015). The main issue presented was whether Trademark Trial and Appeal Board ("TTAB") determination of likelihood of confusion should preclude subsequent federal court findings on that same issue. In addressing this issue, the Court evaluated whether the two proceedings' likelihood of confusion standards were effectively the same.

B&B Hardware argued in favor of preemption. It argued there is no meaningful distinction between likelihood of confusion standards of the TTAB and federal courts. Moreover, it contended that since both parties participate in TTAB proceeding and are given the right to appeal to a federal district court de novo, there is ample opportunity for due process.

Hargis argued key distinctions between the courts' respective analyses render the standards fundamentally different, making preemption inapplicable. The TTAB considers the marks and their respective products or services only as they appear in an application or registration, whereas federal courts compare the broader issue of the two marks' use in commerce. Accordingly, federal courts consider factual questions concerning use that are often irrelevant in TTAB proceedings, such as actual marketing and distribution channels, the similarities of consumers, and how the marks appear in the marketplace. Further, Hargis argued, there are stark procedural differences between the two courts, with more expansive discovery and live testimony in federal court that is not present during TTAB proceedings.

Ultimately, the Court concluded that the TTAB and federal courts apply effectively the same likelihood of confusion standard, and therefore preclusion may apply. The majority noted that the doctrine of preclusion is not affected when there are slight variances between standards. So long as the other elements of issue preclusion are met, the Court found that TTAB determinations may preclude federal court review of likelihood of confusion.

Justice Ginsburg's concurrence narrowed the majority's application of issue preclusion, noting that "for a great many registration decisions issue preclusion obviously will not apply" because "contested registrations are often decided upon 'a comparison of the marks in the abstract and apart from their marketplace usage.'"

Justice Thomas' dissent employed separation of powers arguments to suggest that TTAB preclusion may be unconstitutional. The dissent argues that whereas trademark registration is a quasi-private right that is appropriately decided by administrative courts, the right to adopt and exclusively use a trademark is a private property right that must be reserved for Article III courts. Because only Article III courts should render decisions affecting core private rights, he concluded preclusion is inappropriate.

B&B Hardware has definitely increased the importance of TTAB proceedings. Facing the possibility of issue preclusion on some or all likelihood of confusion factors, practitioners may wish to create a more complete evidentiary record in opposition or cancellations actions. Given the increased costs of doing so, and to avoid a potentially preclusive finding that does not take into account all marketplace realities, counsel may find that going directly to district court may be more prudent. While it will take some time to see how lower courts apply B&B Hardware, when counseling clients on whether to institute a TTAB action, trademark practitioners should inform them of the potential for issue preclusion so that clients can make an informed decision about the proper forum for their trademark dispute.

A Portion of California's Resale Royalty Act Facially Violates the "Dormant" Commerce Clause

By Sam Berrin

Several plaintiff artists brought three class actions against sellers of "fine art," Sotherby's, Inc., Christies Inc., and Ebay, Inc., alleging that they failed to comply with the California Resale Royalty Act (hereinafter, the Act). The United States Court of Appeals for the Ninth Circuit ruled in favor of the defendant sellers because a portion of the Act facially violates the Commerce Clause but further ruled that the offending provision is severable from the remainder of the Act.

The Act is a unique creation of the Golden State that allows artists of "fine art" to collect a five percent royalty upon a resale of their work. Specifically, the Act requires that "whenever a work of fine art is sold and the seller resides in California or the sale takes place in California, the seller or the seller's agent shall pay to the artist of such work of fine art or to such artist's agent five percent of such sale."

The Court focused on the portion of the Act that concerns whether the seller "resides in California" because that portion can encompass sales that have no necessary connection with the state other than the residency of the seller. This triggers the dormant Commerce Clause, which precludes the application of a state statute to commerce that takes place wholly outside of the State's borders. In this case, the Court pointed out, the Act can encompass a sale between a temporary New York resident, domiciled permanently in California, who purchases a sculpture from a North Dakota artist and later sells the sculpture to a friend in New York. For this reason, the royalty requirement, as applied to out-of-state sales by California residents, violates the dormant Commerce Clause.

When a portion of a state act is in violation of the Commerce Clause, a court must first look to any severability clause that exists in that state to determine how to proceed. In California, there is a presumption in favor of severability. The California legislature enacted a law that allows a violative provision to be severed if those provisions do not affect any other provisions or applications of the Act.

The criteria for severance is much more specific. First, the provision must be grammatically separable. Second, the provision must be functionally separable. And third, the provision must be volitionally separable. The Court found the provision to be both grammatically and functionally separable because the invalid portion can be removed without affecting the wording or coherence of what remains and the remainder is complete in itself. The third test, volitional separability, also is met because the legislature likely would have adopted the remainder of the Act had it foreseen the partial invalidation of the statute. To make this conclusion, the Court looked to the legislative history including letters to the bill's legislative sponsor and to the governor warning of such violation. Despite these warnings, the California legislature enacted the bill but made the in-state and out-of-state sales in easily separable clauses.

The case was remanded to the three-judge district court panel in order to consider the other issues in the case.

The New Trade Secret Treatise Is Available for Order

The new Trade Secret Treatise is available for order!  The IP Section proudly announces publication of the Third Edition of its practice guide “Trade Secret Litigation and Protection in California.”  This twenty-seven chapter treatise provides a comprehensive review and analysis of California trade secret law.  Written by California practitioners, this treatise explains the fundamentals and intricacies of California trade secret law.  The treatise is a resource for anyone working with trade secrets in litigation or providing counsel on trade secret issues.  The Third Edition includes two new chapters on digital forensics and the pursuit of trade secret claims at the International Trade Commission, as well as a model non-disclosure agreement and protective order.  The new edition also provides updates of the recent case developments in the trade secret law since the 2nd Edition.

Members $115/Non-Members $155. Order here: http://bit.ly/1HDi20P. If you have any trouble with that link, go HERE and click on Intellectual Property.

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 www.calbar.org/self-study for details. Watch for other MCLE credit available in future issues of New Matter.

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 anye@lawyersatlargellc.com for more details.

For more information, please contact our editorial staff at newmatterjournal@yahoo.com.

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

Did You Miss One of Our Webinars or Self-Study Tests?Online CLE

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.

Featured CLE Program from Our Catalog!

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

Characters: Intellectual Property and Other Protection Issues

New media and other cutting edge developments have presented significant consequences for characters. This program will address the legal protections afforded to characters, copyrights, trademarks and rights of publicity. Learn how the legal analysis is affected by the historical or fictional nature of characters, and understand the legal issues presented by the creation, exploitation and enforcement of rights in characters.

1 hour participatory MCLE credit in Legal Ethics; $35

More Information

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.

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
IP@calbar.ca.gov
415-538-2375
415-538-2368 fax