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Intellectual Property Law Section

Live Programs

Save the Date! The 2016 IP and the Internet Conference

The 2016 IP and the Internet Conference will be held Tuesday September, 6, 2016 at Salesforce's auditorium in San Francisco.

This popular full-day conference returns with its traditional exploration of the nexus between IP law and technology.

Speakers will include former Facebook Chief Privacy Officer and California Attorney General candidate Chris Kelly; Joanne McNab of the Attorney General's Office; Santa Clara Law School Professor, Eric Goldman, and many others.There will also be a very practical and detailed presentation on how to handle online copyright and trademark infringement on all of the major online platforms.

Of course, there will also be several opportunities for networking, including a table-topic-style luncheon.

Get the date on your calendar now! Program details and registration info to follow.

Save the Date for the 41st Annual IP Institute
"IP on the American Riviera"

Hyatt Santa Barbara November 10-11, 2016
Hyatt Santa Barbara
1111 E. Cabrillo Blvd
Santa Barbara

The Annual IP Institute, "IP on the American Riviera," will be held at the beautiful Hyatt Santa Barbara with a welcome reception November 9.

The conference will cover a wide range of cutting-edge and compelling presentations on trademark, copyright, patent, entertainment, right of publicity, licensing, and internet law, as well as practical sessions and IP-specific ethics panels. The event will also feature the always popular Annual Vanguard Awards luncheon celebrating pioneers in our field in a festive atmosphere.

The program will feature speakers from leading law firms and companies, numerous networking and socializing opportunities, as well as options to experience some of the gorgeous local sites of Santa Barbara.

We hope to see you there! Watch your inboxes and our website for more information!

For questions, please contact IP Institute Program Chair Elizabeth J. Rest at elizabeth@crownllp.com.

Webinars

Webinar: Murky Waters — Navigating a Copyright Termination Case

Wednesday, June 29, 2016, 12 noon - 1 p.m.

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

REGISTER TODAY

The unequal bargaining positions of first-time creators and publishers often results in poor deals for the creators, including the loss of the copyright in their works. Congress has twice tried to remedy this situation, first in the 1909 Copyright Act and then in the 1976 Act. This last effort, found in Sections 203 and 304 of the Act, called the "Termination Statutes," has had very mixed results.

In this webinar, copyright law professor and scholar Marc Greenberg unravels the complex legal history of these efforts, and explains why built-in problems cause the current laws to often fail to live up to Congress' intent.

Attendees will:

  • Learn the backstory of creators "second bite at the apple"
  • Explore best practices in handling termination issues
  • Discuss when to file a termination lawsuit
  • Examine benefits and challenges of filing a termination lawsuit

Moderator: : Francine D. Ward
Speaker: Marc Greenberg More information

Webinar: The New Federal Trade Secret Law: Practical Tips and Strategies

Thursday, June 30, 2016, 12 noon - 1 p.m.

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

REGISTER TODAY

The Defend Trade Secrets Act of 2016 was signed into law on May 11, 2016. It amends the Economic Espionage Act, providing for the first time a federal civil cause of action for trade secret misappropriation. But the statute does not preempt state laws, including the Uniform Trade Secrets Act, and all of the claims you could bring before are still available. Where should a plaintiff bring a trade secrets claim? What other claims can be pursued simultaneously? What can be done to ensure a case stays in state court or in federal court? What can be done if you’ve been sued in state court and want to be in federal court, or vice-versa? And what strategies should guide your request for relief against departing employees, in light of the federal law’s limitations on “threatened misappropriation” injunctions? Also, the DTSA provides immunity under state and federal laws for disclosures by employees (including contractors and consultants) to law enforcement when they suspect criminal behavior. How should you deal with the law’s requirement to give notice of this immunity? And how should you handle a situation where you believe the employee has gone beyond the limited disclosure allowed by statute? Finally, with this new level of trade secret enforcement, what might be the effect on a company’s confidential relationships with other businesses, including foreign partners? All these issues will be addressed during this webinar.

Moderator: Anne-Marie Dao
Speaker: James Pooley

Webinar: A Primer on Reasonable Royalty Damages for Trade Secret Litigators

Thursday, July 28, 2016, 12 noon - 1 p.m.

This program offers 1 hour of participatory MCLE credit
Presented by the Trade Secrets Interest Group.

REGISTER TODAY

In trade secrets cases, reasonable royalties can provide an alternative to lost profit and unjust enrichment damages.  Such an alternative may be useful if trade secret theft is caught before it can be shown that the defendant diverted sales from the plaintiff or gained a profit. In some cases, this may be the only measure of damages available to trade secret plaintiffs because of the unique facts of the case. 

While there has been slow but steady development of case law on reasonable royalty damages in trade secrets cases, most recent developments have occurred in patent cases. This webinar will focus on bringing participants up to speed on these developments and how this case law may influence trade secret damage claims. We will start with a discussion of trade secrets reasonable royalty case law (e.g., Ajaxo and Altavion) and the Georgia Pacific patent royalty factors, followed by a discussion of the two main approaches to calculating a reasonable royalty–-analysis of comparable licenses and analysis of the benefits enabled by the trade secret (be it revenue increases and/or cost savings). Along the way we will cover hot topics such as the Entire Market Value Rule, the Smallest Saleable Unit, apportionment, Uniloc and the 25% rule, and bargaining (including Nash and other methods).

Moderator: Catherine Lui
Speaker: Eric Forister

Interest Group Open Calls

Licensing Interest Group Open Call

Friday, July 8, 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, July 13, 2016, 12 noon
Call-in number: 855-520-7605 Conference Code: 1211276419#.

Please join the Copyright Interest Group for a member call on Wednesday, July 13 at 12 noon. 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 clockard@salesforce.com

News

Vanguard Award Nominations

Your Nominations Sought for the IP Vanguard Awards.  Start thinking about your nominations for the 2016 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 2016 IP Vanguard Awards by July 1, 2016, using the 2016 Nomination Form.

Registration of DMCA Agents, Notice Of Proposed Rulemaking And Request For Comments

Under the Digital Millennium Copyright Act (“DMCA”), the U.S. Copyright Office is required to maintain a current directory of agents that have been designated by online service providers to receive notifications of claimed infringement. Since the DMCA's enactment in 1998, online service providers have used a paper form to designate agents with the Copyright Office, and the Office has made scanned copies of those paper forms available to the public by posting them on the Office's Web site. In 2011, the Copyright Office issued a notice proposing updated regulations governing the designation of agents under the DMCA in anticipation of the creation of a new online system though which service providers could more efficiently designate agents with the Copyright Office and the public could more easily search for such agents. With the development of this electronic system approaching completion, this notice proposes an amendment of the Office's regulations to lower the fee for designating an agent under the DMCA. For more information, click here.

Copyright Office Requests Public Comment on Two New Topics

The U.S. Copyright Office is seeking public comment on potential changes to the mandatory deposit regulations for electronic works not available in a physical format.  Comments are due July 18, 2016.  More info here.

The Office is also seeking public comment on a fee change for designating agents to receive notifications under the DMCA.  Comments are due June 14, 2016.  More info here.

California Assembly Judiciary Committee Considering Copyright for State Works

The October  15, 2015, edition of Inevitable Disclosures included a piece about the City of Inglewood having sued a resident alleging copyright infringement for posting videos of city meetings. The City lost because under California law the City could not hold a copyright in those videos or other works it authors. Now the Judiciary Committee of California's Assembly has introduced a bill proposing legislation that would allow California governmental entities, such as municipalities, to hold copyright in the“works of such entities. (The Federal Government cannot hold copyright in works that it authors.) The proposed legislation may be found here.

Defend Trade Secrets Act of 2016

On May 12, 2016, President Obama signed into law the Defend Trade Secrets Act of 2016, which Congress passed on April 27. For information on what the Defend Trade Secrets Act (DTSA) provides, how it works and its significant provisions, see the full report from the Trade Secrets IG here. Read more.

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 www.calbar.org/self-study 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 newmatterjournal@yahoo.com

MCLE Catalog

Featured CLE Program from Our Catalog!

Online
CLE

Did you miss it? All programs from IP Protection & Social Media Issues in the Workplace now available On-Demand

For other Intellectual Property Law Section programs, see www.calbar.org/online-cle 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
415-538-2375
IP@calbar.ca.gov