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Upcoming Standing Committee Meetings and MCLE Programs

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Upcoming MCLE Programs and Meetings

Webinar: Care & Feeding of CEOs and Senior Execs by In-House Counsel

Wednesday, April 22, 2015, 12 noon - 1 p.m.

Presented by the Intellectual Property Law Section, In-House Counsel

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

Interacting and communicating with senior executives and CEOs are important skills for in-house counsel. This program will feature a discussion of best practices and tips for things such as making recommendations, communicating legal issues and risks, and effective ways to keep them informed on projects and litigation.

Speaker: David C. Milne Chief Administrative and Compliance Officer, General Counsel and Corporate Secretary for Symmetry Surgical, a surgical instrument company. Previously, he served as General Counsel and Corporate Secretary for The Steak 'n Shake Company, and practiced employment law for private firms. Dave received his undergraduate degree from Wabash College (IN), and both a master's English Literature and JD from Indiana University, Bloomington.

Moderators:

  • Derrick Brent
  • Georgann Grunebach

Licensing Interest Group Teleconference

Friday, May 8, 2015, 12 noon - 1 p.m.

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.

Webinar: Export Controls and the In-House Counsel - What You Don't Know Can Certainly Hurt Your Client

Wednesday, May 13, 2015, 12 noon - 1 p.m.

Intellectual Property Law Section, In-House Counsel Interest Group

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

Does your in-house client ever work with people outside the United States? Do they communicate, ship or sell outside our borders? Did you know that certain intellectual property can't be shared with non-US persons without first securing government permission? Did you know that failure to secure those critical licenses could expose your clients to criminal charges, penalties, and contractual sanctions? A general overview of export controls will be discussed. Clear terms the obligations of In-House counsel as they support their companies' contracts in military, dual-use or commercial programs will be described. Questions like, "When does an export occur, and when do I need a license? When and how will I encounter export issues on a day-to-day basis? Will I encounter issues, even if my company is only providing services, training and education? Who and what are the prohibited individuals and countries to whom my company cannot provide technical data, without risking sanctions? What you don't know can indeed hurt you and your client!

Speakers:

  • Kathleen C. Little concentrates her practice in export controls and government contracts. Kathleen counsels on a wide variety of international issues, including compliance with the International Traffic in Arms Regulations (ITAR), the Export Administration Regulations (EAR), sanctions regulations administered by the Office of Foreign Assets Control (OFAC), and the Foreign Corrupt Practices Act (FCPA). A graduate of George Washington University Law School and The University of Maryland, Ms. Little brings thirty years of experience to the field of providing intellectual property to foreign persons or across borders.
  • Derrick Brent, Moderator
  • Georgann S. Grunebach, Moderator

Webinar: Advertising Law in the Digital Age - Part 3

Thursday, May 14, 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.

The discussion will focus on promotional and advertising issues in social media (other than sweepstakes/contests) such as coupons, rebates, gift cards, "free" offers, endorsements, negative-options, dot.com disclosures, IP and right of publicity in social media content, etc.

Speakers:

  • Ed Chansky focuses his practice in the areas of intellectual property (particularly development, selection, protection and licensing of trademarks worldwide) and advertising, sales promotion, and trade-regulation law, including charitable promotions, cause-related marketing, sweepstakes, contests, gift cards, eCommerce, substantiation of advertising claims, social gaming, social media, and all aspects of unfair or deceptive trade practices in a wide variety of industries.
  • Patrick Downes is a partner at Loeb and Loeb in San Francisco and focuses his practice on complex commercial litigation, including consumer class actions brought by the FTC.

Moderator

  • Francine Ward, is a business & IP attorney with a focus on copyrights, trademarks, publishing & entertainment law issues, as well as social media legal issues. A 1989 graduate of Georgetown University Law Center, Francine is admitted to practice in New York, California, and the District of Columbia. She is the vice chair of the IP Section's Copyright Interest Group.

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.

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

Tuesday, June 2, 2015 at Santa Clara University

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

U.S. Copyright Office Posts Second Comments Received for Section 1201 Rulemaking

On December 12, 2014, the Copyright Office published a Notice of Proposed Rulemaking initiating three rounds of public comment on exemptions that have been proposed in the sixth triennial rulemaking proceeding under the Digital Millennium Copyright Act ("DMCA"), 17 U.S.C. 1201. Section 1201 provides that the Librarian of Congress, upon the recommendation of the Register of Copyrights, may exempt certain classes of works from the prohibition against circumvention of technological measures that control access to copyrighted works.

The Office has posted the second round of comments - from parties who oppose the adoption of a proposed exemption - on its website at http://copyright.gov/1201/2015/comments-032715/. Written reply comments from supporters of a proposed exemption and parties that neither support nor oppose a proposed exemption are due May 1, 2015.

Commenters should carefully review the guidance provided in the Notice of Proposed Rulemaking regarding the format and content of submissions. For more information, including template comment forms, please visit www.copyright.gov/1201/.

Is Foie Gras protected as free speech? Animal Legal Defense Fund v. LT Napa Partners LLC, 2015 WL 1004423, No. A139625 (Cal. Ct. App. Mar. 5, 2015)

By Sam Gunning

A California appeals court has ruled that the Animal Legal Defense Fund (ALDF) can sue a Napa restaurant for serving foie gras. The production of foie gras has been illegal since 2012 in California, but the ALDF were concerned with the enforcement of the law. From 2012-13 the ALDF hired an investigator on three occasions to determine whether foie gras was being served in the restaurant, La Toque. Determining that it unlawfully sold foie gras, the ALDF pursued an Unfair Competition Law (UCL) claim.

The chef of La Toque was personally opposed to the foie gras ban. During his visits, the investigator was informed that if he ordered the expensive tasting menu they offered, he would receive foie gras. It was described on two occasions as a "gift" from the chef. Defendants argued that as a result UCL should not apply. Furthermore, the chef from La Toque purports that his actions are protected under the First Amendment. "In the exercise of my constitutionally protected right of petition and free speech, my restaurant, La Toque, is protesting the law, not breaking it, by giving away foie gras to customers I choose to give it to. … [W]hat I do give away to customers is my way of dumping tea in the harbor, so to speak." Despite this, the investigator was not told that the serving of the foie gras was a protest against the ban, and was not given any information regarding the chef's personal opposition to the foie gras ban.

First, the court found that ALDF had a genuine interest in enforcing the statute. Its efforts to enforce the statute inadvertently and unfairly directed its resources away from other pursuits. Although the serving of foie gras may be protected under the First Amendment, the court did not find so with the circumstances at hand. The court was unconvinced that there was no "sale" here. Although the customers were informed that they were receiving the foie gras as a gift, the court held that such "gifts" that accompany the purchase of another good, to be a sale, despite no additional charge. To hold otherwise, would negate the legislative intent. Indeed, "the receipt of foie gras was part of the tasting menu offered to him prior to his decision to order it. Thus, the foie gras was part of the property he was offered for the price he agreed to pay."

The victory for ALDF may be short-lived. In January a federal judge overturned the 2012 ban on foie gras, allowing for sales to go ahead in California. Judge Stephen Wilson of the U.S. District Court for California's Central District ruled that the California law is pre-empted by the federal Poultry Products Inspection Act, and does not allow for states to impose more stringent regulations. The act requires the federal government to inspect all domesticated birds when killed and processed into products for human consumption.

The district court ruling is a disappointment for ALDF. It will still be able to pursue its UCL claim against La Toque for past injuries, however, ADLF will not be able to claim any further injury now it is again legal for California restaurants to serve (and explicitly charge for) foie gras unless the federal ruling is overturned. Kamala Harris, the California Attorney General, has appealed Judge Wilson's ruling.

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.

Copyright Office Releases Comprehensive Music Licensing Study

On February 5, the U.S. Copyright Office released a 245-page landmark study proposing significant changes to the music licensing framework that are intended to "bring both clarity and relief to songwriters, artists, publishers, record labels, and digital delivery services." The report was issued in response to the widespread feeling among the entire music industry-from artists and publishers to labels and online music services-that the existing system is broken, although there is not agreement on how to fix it. It follows a series of roundtables and public comment period held by the Copyright Office last year.

According to the study, there is broad consensus that music creators should be fairly compensated, that the licensing process is too inefficient, that there is insufficient access to data about works and that royalty information should be more transparent. Among the Copyright Office's recommendations are proposals to extend the public performance right to terrestrial radio stations, bring pre-1972 sound recordings within the federal copyright law and reevaluate the role of performing rights organizations (and the consent decrees under which ASCAP and BMI operate). The report also proposes changing the compulsory licensing scheme (including allowing bundled licensing), establishing a uniform market-based rate setting standard, allowing owners of musical works to opt-out of compulsory licensing for interactive streaming and downloads, giving SoundExchange an expanded role, creating a public database of rights ownership data and providing greater transparency for song writers and recording artists in direct licensing deals. The study has no regulatory force, but serves as a recommendation to Congress on potential legislative changes. The full report is available at http://copyright.gov/docs/musiclicensingstudy/.

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